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Since about 90 percent or more of 2(d) cases appealed are affirmed by the Trademark Trial and Appeal Board (the “Board”), it is unlikely that the Board disagrees with the Examining Attorney’s conclusions. However, the Board did not see eye to eye with the Examining Attorney on this recently decided matter. In my opinion, the Board got this one right.  The Applicant was seeking to register the mark SIMONIZ CERAMICSHIELD for paint sealant for exterior surfaces of vehicles. The Examining Attorney refused registration based on the mark PLATINUM CERAMIC SHIELD in standard characters and PLATINUM CERAMIC SHIELD & Design for clear coating protectant for use on vehicles with the term “Ceramic”`disclaimed. The Board reversed finding the dominant word in each mark was the first term, SIMONIZ and PLATINUM respectively which allowed consumers to distinguish the sources of the sealant products. See In re Simoniz USA, Inc., Serial No. 85865135 (TTAB November 3, 2020).

In this case, the relatedness of the products was not disputed. Both products are used on vehicles to protect the exterior of the vehicle from environmental elements such as water, air etc. The analysis focused on the similarities and dissimilarities of the marks, since both the Applicant and the Examining Attorney agreed that the first du Pont factor was dispositive in this case. Often, properly identifying the dominant portion of the mark will lead to the ultimate conclusion of whether there will be confusion between the sources of two goods and/or services.

The Examining Attorney argued that the first terms in the respective marks, SIMONIZ and PLATINUM were suggestive and that the more distinctive terms were the shared terms “CERAMIC SHIELD”. The Examining Attorney submitted dictionary definitions for the words Simonize (meaning to polish) and Platinum (of a superior quality). However, the Board, did not agree with the Examining Attorney’s argument that the first terms were suggestive. The Applicant’s mark SIMONIZ CERAMICSHIELD does not use the spelling listed in the dictionary “Simonize”. In addition, the dictionary definition states that the term SIMONIZE has an origin in the term SIMONIZ which is a trademark for metal polish referring to Applicant’s mark. The Board also emphasized the fact that Applicant owns multiple SIMONIZ registrations for coating products for automobiles, including paints, sealants and polishes. The mark SIMONIZ has been in commerce in use with these types of products for over 100 years. SIMONIZ is the oldest brand of automobile products in the marketplace.

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The case I am blogging about today, illustrates why federal registration is so important and how failing to register a mark can have devastating effects for your business. See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained despite the Applicant having senior common law rights. The Applicant was seeking to register the mark JEAN LEON’S LA SCALA for restaurant and cafe services and the registrant filed a Notice of Opposition. The Registrant/Opposer owned the mark JEAN LEON for wines. The Applicant opened a restaurant under the name JEAN LEON’S LA SCALA in Beverly Hills and started using the mark in 1962 but did not register the mark.

Clearly Applicant is the prior user of the mark at common law for restaurant services. However, that fact does not help Applicant with regard to the issue of priority in the opposition. Section 2(d) of the Trademark Act prohibits registration of a trademark if a mark resembles another mark as to cause confusion. See 15 U.S.C. §1052(d). One must remember that the policy behind Trademark law is not only to prevent consumer confusion, but it is also to encourage registration of marks.

The United States Court of Appeals for the Federal Circuit declared in part: “the board’s requirement that the registrant-opposer also be a prior user impermissively negates the statutory distinction (“or”) in Section 2(d) between a registered mark and a previously-used-but-unregistered mark, would permit simultaneous registration of the same mark for the same goods to different parties, and disregards–in effect conflicts with–Patent Office Rule 2.106(b), which forbids any attack (other than a request for cancellation) on the validity of a registration in an opposition;”, see King Candy Co., v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974). Therefore, Applicant’s prior use at common law is irrelevant to the question of whether Applicant can register its mark with the USPTO.

This highlights an important lesson that a senior first user must either oppose a confusingly similar mark when it publishes, or initiate a cancellation proceeding within five years from the registration date, or else the first user can lose the opportunity to effect cancellation. The first user of the mark is then penalized by the law and is unable to register its mark. However, the right to exclusive use may be determined in district court. If an opposition is sustained, then the Applicant-senior user is forced to undertake the financial burden to initiate a court action.

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On June 30, 2020, the U.S. Supreme Court issued a long-awaited significant decision in trademark law. Justice Ginsburg wrote the majority opinion. The United States Patent and Trademark Office (“USPTO”) refused registration to the applicant, Booking.com B.V. (“Booking.com”) on several trademark applications involving services for travel reservations in classes 39 and 43.  The USPTO concluded that BOOKING.COM was a generic name for online hotel reservation services. The case made its way from the District Court, to the Fourth Circuit and finally to the U.S. Supreme Court.

The U.S. District Court for the Eastern District of Virginia ruled that BOOKING.COM was not generic, but descriptive of booking services for hotel reservations. It also held that BOOKING.COM acquired secondary meaning for hotel services. The USPTO only appealed the District Court’s holding that BOOKING.COM was not generic. The Court of Appeals for the Fourth Circuit affirmed the District Court’s decision, and the USPTO petitioned the Supreme Court to review the decision.

A generic name is one that is the name of the class of products or services, and therefore will be refused trademark registration at the USPTO. The parties did not dispute that the term “booking” was generic for hotel reservation services. The USPTO’s decision was based on its position that a generic term added to a “.com” will not change the meaning of the term, it will still be generic. The U.S. Supreme Court disagreed. The Supreme Court pointed out that consumers do not perceive the term BOOKING.COM to indicate hotel services as a class. The relevant meaning of a term is its meaning to consumers. In addition, since the term BOOKING.COM is a compound term, its meaning must be evaluated from the perspective of the mark as a whole and not in its isolated parts. Lastly, the mark must be able to function as a source indicator and distinguish Booking.com’s services from the services of a competitor.

Although, the USPTO was enunciating a per se rule that the combination of a generic term with a “.com” (or other top-level domain) would be generic, its previous practice and actions did not support this far reaching policy. Justice Ginsburg pointed out several registrations on the Trademark Register in conflict with this general rule, U.S. RN 3,601,346 ART.COM on the Principal Register for  “[o]nline retail store services” offering “art prints, original art, [and] art reproductions”), and U.S. RN 2,580,467 DATING.COM on the Supplemental Register for dating services. The Supreme Court could not find policies or precedents to support this sweeping rule.

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A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application. This post will delve into some of the more technical requirements for applicants relying on a foreign application or a foreign registration for a U.S. trademark filing. Please consult with trademark counsel if you plan to file under Section 44 of the Trademark Act, 15 U.S.C. §1126, as there are many nuances an applicant should understand before determining the appropriate basis for filing your U.S. trademark application.

For example, if an applicant wants to file based on Section 44(d) relying on priority of a foreign trademark application, the following requirements must be met:

(1) the applicant must have a country of origin (defined as “the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.) that is a party to an international treaty or agreement with the U.S. that extends a right of priority or must extend reciprocal rights to nationals of the U.S. (See the TMEP Appendix B for qualifying treaties and Agreements); and

(2) the foreign application which is the basis of the priority claim must be filed in a country that is a party to an international treaty or agreement with the U.S. that extends a right of priority or must extend reciprocal rights to nationals of the U.S., but the application does not have to be filed in the applicant’s country of origin (as long as the applicant alleges either 1(a) or 1(b) as a basis for registration) UNLESS the applicant plans on relying on 44(e) for a basis for registration; and

(3) the applicant must file a claim of priority (file its U.S. application) within six months of the filing date of the FIRST filed foreign application (See TMEP 1003.01); and

(4) the goods and services (scope of the identification) of the U.S. trademark application cannot exceed the goods and services of the foreign filed application; and

(5) the applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce as of the U.S. application filing date.

An applicant filing under Section 44(d) will be asked in the TEAS application form if the applicant intends to rely on Section 44(e) as a basis for registration. If the applicant indicates that it will rely on §44(e), then the Examining Attorney will request the applicant submit a “true copy” of the foreign registration when it becomes available or the Examining Attorney may suspend the application while awaiting receipt of the foreign application. Thereafter, the Examining Attorney will issue inquiries via an Office Action, and the applicant will have six months to respond. If the applicant does not respond, the trademark application will be abandoned for failure to respond to an Office Action.

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A recent decision from the U.S. Court of Appeals from the Federal Circuit (“CAFC”) reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir. February 28, 2020) [nonprecedential], where the CAFC agreed with the Trademark Trial and Appeal Board’s (the “Board”) decision finding the mark THE JOINT (in standard character format) merely descriptive of “restaurant, bar, and catering services” and “entertainment services, namely live musical performances, shows and concerts, and nightclub services.” The CAFC determined that substantial evidence supported the Board’s conclusions, on the grounds of merely descriptiveness and not acquiring distinctiveness, but did not address the Board’s finding of genericness.

The Board relied on several dictionary definitions and news articles, and determined that the mark immediately conveys the concept of a business establishment offering restaurant, bar, and entertainment services. The applicant raised the argument that the mark should register since it is a double entendre. Applicant insisted that THE JOINT was a reference to prison. However, there wasn’t enough evidence to show a relationship between a prison and bar and restaurant services.

The amount of evidence required to prove acquired distinctiveness (secondary meaning) is directly correlated with the degree of descriptiveness. To determine how much evidence is required for showing acquired distinctiveness, the Court or Board must assess the degree of descriptiveness in relationship to the goods or services. Here, the Board held THE JOINT in relationship to the services (bar and restaurant services) was highly descriptive. See our web page entitled, What Is Acquired Distinctiveness & Secondary Meaning, for general information on this topic. Many factors will be considered when evaluating if secondary meaning exists. Some of these factors include: (1) the market share held by the applicant; (2) consumer surveys or studies; (3) the length, degree and exclusivity of use; (4) the amount of applicant’s sales compared to competitors’ sales in the same industry; (5) the amount the applicant spent on advertising compared to its competitors’ advertising expenditures in the same industry; (6) intentional copying; and (7) unsolicited media coverage and the extent the press information was circulated to the general public.

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American University (“Petitioner”), a college located in Washington, DC filed a petition with the Trademark Trial and Appeal Board (the “Board” or “TTAB”) to cancel the mark AUK American University Of Kuwait & Design for educational services for college level courses. The grounds for cancellation were likelihood of confusion and priority, and nonuse, and counterclaims were asserted by American University of Kuwait (“Respondent”). The Petitioner owns several trademark registrations, including formatives of the mark American University where acquired distinctiveness is claimed.

These registrations were pleaded in the cancellation petition, including American University (standard characters) and AU (standard characters and a stylized mark) for educational services, namely courses of instruction on the college and graduate level. The Board did not decide the likelihood of confusion issue since it determined that the Respondent failed to use its mark “in commerce” prior to its application filing date. Thus, the TTAB determined that the mark AUK American University Of Kuwait & Design was void ab initio. See American University v. American University of Kuwait, Cancellation No. 92049706 (January 30, 2020) [not precedential].

This was a very lengthy decision by the Board. This blog will discuss only some of the many legal issues addressed in the Board’s decision. Regarding nonuse, if a use based application matures to a registration, it can still be challenged for nonuse. If an applicant files a use based application and fails to use the mark “in commerce” before the filing date of the application with any of the alleged services in a particular international classification, the entire class of goods will be held void ab initio. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009). See also, our blog posts entitled, Proving Nonuse Of A Trademark Prior To The Application Filing and Trademarks Can Be Cancelled For Nonuse, for more on this topic. If the mark is a service mark then, “use in commerce” must include: (1) use of the mark in the sale or advertising of the services; and (2) rendering of the services in a manner that it impacts interstate commerce, rendering the services in more than one state in the U.S. or in the U.S. and in a foreign country.

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The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. The decision underscores a point that cannot be emphasized enough in trademark practice; descriptive marks severely restrict the scope of protection for those terms. The Board focused on the descriptive and generic terms in the registered mark.

The applicant was seeking registration on the Principal Register for the mark ANTARTICA MARATHON, in standard characters for “travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; and making transport reservation.” The applicant claimed acquired distinctiveness under 2(f) of the Trademark Act. The Examining Attorney accepted the 2(f) claim. However, the Examining Attorney cited the mark ANTARCTIC ICE MARATHON & 100K and Design for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races,” as likely to cause confusion with the applicant’s mark. The cited registration had a disclaimer for the term “ANTARCTIC ICE MARATHON & 100K” and for the design of the geographic representation of Antarctica. Upon issuance of a final refusal, the applicant appealed the refusal to register.

In its decision, the Board focused first on the marks. The shared terms in the parties’ marks were variations of “Antarctica” and “Marathon”. These terms are weak in relationship to the services. Registrant had to disclaim the terms since one describes the geographic location of the services and the other the type of race. Determining the strength of the terms is an important part of the analysis. See our recent blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, wherein it was emphasized, if shared terms are descriptive, additions to a mark may suffice to avoid likelihood of confusion. See also, the Trademark Manual Of Examining Procedure §1207.01(b)iii which discusses this point.

This rule emphasizes that if the terms common to both marks are generic or descriptive, it is unlikely that the terms will be perceived by consumers as source indicators, and that other differences between the marks may be adequate to obviate confusion. In other words, if consumers will not rely on the shared terms to distinguish source, additional terms in the mark may be able to differentiate the sources. Since the registrant’s mark contains generic and highly descriptive terms, the mark will receive a narrow scope of protection. The board concluded that applicant’s mark did not fall within the narrow scope of protection and therefore, the first du Pont factor weighed against finding confusion.

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In a recent Trademark Trial and Appeal Board (the “Board” or “TTAB”) decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the “related services doctrine (services provided in connection with the same goods) has no application here.” See In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential]. In this case, the applicant was seeking registration of the mark GROW WITH US in standard characters on the Principal Register. The application identified the following goods, “Live flowers and living plants in International Class 31”. The Examining Attorney cited the mark, GROW WITH US in standard characters for the following services, “Distributorship services in the field of wholesale horticulture supplies and accessories” in International Class 35. The applicant appealed after the Examining Attorney issued a final refusal on likelihood of confusion grounds.

The Board, as in all decisions based on likelihood of confusion, stated that the two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Another important consideration is the similarity of the trade channels and whether there would be the same customers for the goods and services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). If there are DuPont factors that are not relevant to the facts of a particular case, the Board will only consider the pertinent factors. The other factors are treated as neutral.

Since the parties’ marks were identical, the Board focused on the similarities and differences of the goods and services. On this point, the law requires that the goods and services be related in some manner and/or that circumstances involving the marketing give rise to a mistaken belief that the goods and services come from the same source. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Analysis of the relatedness of the goods and services is based on the language used in the application and registration. One special rule that will apply here will be since the marks are legally identical there will be a lesser degree of relatedness required between the goods and services. See our blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, for more strategies in responding to Office Actions involving 2(d) refusals.

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In a recent Trademark Trial and Appeal Board (the “Board”) decision the Board granted the petition in part for partial cancellation for the mark POLO GIRL for the following services, “[e]ntertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle in International Class 41”. See  American Polo Association, LLC v. Elizabeth Scripps, Cancellation No. 92066032 (December 19, 2019) [not precedential]. However, the Board held the Respondent did not abandon the mark for organizing and conducting polo events for fund raising, even though there was two years on nonuse. The Board held that the Petitioner did not prove that the Respondent had intent not to resume use for the organizing and conducting of polo events.

The Petitioner alleged that the Respondent did not use the mark for the subject services prior to filing the use application or in the alternative abandoned its rights after the filing of the trademark application. It was proven that the Respondent had not used the mark prior to the filing date (March 3, 2011) for an ongoing television program for polo sports events. Prior to the filing date, the Respondent had produced three videos on the subject matter in hopes of it leading to a television series. Two of the three videos were posted on Facebook® and YouTube®.

The three videos did not constitute ongoing television programing. It was not broadcast over the air or via cable, only the Internet. The three videos were not part of an ongoing program aired on television. Plus, there was no dialogue on the first two videos and none of the three videos were connected to each other. Thus, the petition to cancel as to “entertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle” was granted.

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As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office (“USPTO”), and act as its representative at the Trademark Trial and Appeal Board (“TTAB” or “Board”). This rule also applies to Canadian trademark filers, attorneys and agents. Many countries around the world have a similar rule, and the USPTO has decided to follow suit for several reasons. It is in the public interest to maintain a Trademark Register that accurately reflects those marks that are in use in U.S. commerce for the goods and services identified in the registrations. An accurate Trademark Register will not only protect consumers, but will allow U.S. businesses to grow their companies while being able to invest in their brands with the security that the USPTO maintains and monitors the integrity of the Trademark Register. Lastly, prospective applicants rely on the Trademark Register to provide critical information on trademark clearance.

A frequently asked question in my practice is what does it mean to have a foreign domicile? An individual or an entity can have a foreign domicile. This means that such domicile is not located in the U.S. or its territories. An individual’s domicile is the place a person lives or resides, and the individual views the domicile as its principal home. An entity also maintains a domicile and that is where it has a principal place of business. A principal place of business is where the entity’s officers or senior management directs and controls the operating activities of the company. Applicants and Registrants must maintain current addresses for their respective domiciles.

The USPTO will be proactive if they discover a domicile address outside the U.S. without representation by a licensed U.S. attorney, and the Trademark Office will issue an Office Action. This applies to post registration as well. The Office Action will require the applicant or registrant to appoint a U.S. attorney. It should be noted that currently, P.O. Boxes as domicile addresses are generally not acceptable any longer. Although, if there are multiple owners and one owner has a U.S. domicile then a U.S. licensed attorney is not required. Foreign domiciled applicants who submit an application based on Section 66(a) (a Madrid application) must also appoint a U.S. licensed attorney. Applications filed through the Madrid Protocol are submitted with the International Bureau of the World Intellectual Property Office, and then transmitted to the USPTO. However, the current Madrid application does not have a provision to designate a U.S. attorney, therefore until it does, the USPTO will not enforce the appointment of U.S. trademark counsel prior to publication. But, if the Examining Attorney issues an office action in a 66(a) application, then the Examining Attorney will require an appointment of a U.S. attorney.

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