Articles Posted in Frequently Asked Questions

Published on:

This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an inherently distinctive mark and ensuring it is registered on the Principal Register with the United States Patent and Trademark Office. This blog will explain why registration is essential for acquiring strong legal rights, being able to efficiently enforce one’s trademark rights, and deterring others from infringing on your legal rights. If a trademark owner decides not to register its mark, and wants to enforce its rights, this becomes challenging. This challenge will also be encountered if a trademark is only registered on the Supplemental Register of the Trademark Office and not the Principal Register. See our firm page entitled, Filing Your Trademark On The Principal Register And Supplemental Register, for more information on this topic. The reasons why a trademark owner can benefit from registration are due to the presumptions that attach under the Lanham Act, specifically Sections 7(b) and 7(c) (15 U.S.C. §1057).

Under Section 7(b) of the Lanham Act, “[A] certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” These same rights are conferred on a trademark owner who initiates the application process as an intent-to-use applicant, assuming the mark matures to a registration (the intent-to-use filing date would act as the constructive use date for priority purposes under Section 7(c) of the Lanham Act).

If the mark is registered on the Principal Register, the trademark owner doesn’t need to prove its proprietary rights if involved in litigation in court or before the Trademark Trial and Appeal Board (“TTAB” or the “Board”). In other words, if you only have common law rights or a mark on the Supplemental Register, you will need to spend time and resources to first prove you have proprietary rights in the trademark before attempting to enforce your rights in an infringement action or under a claim for likelihood of confusion at the TTAB. The proprietary rights must be acquired before the opposing party’s priority date. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1378 (Fed. Cir. 2002); Otto Roth & Co. Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Keep in mind that a Supplemental Registration will provide a basis for standing and perhaps priority may not need to be proven, but proprietary rights must be demonstrated. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. A mark on the Supplemental Register is presumed to be merely descriptive of the goods or services identified in the registration, unless the trademark owner can prove acquired distinctiveness. The Opposer in Otter Products LLC, did not prove it possessed proprietary rights to the mark.

Continue reading →

Published on:

Many clients inquire about whether an acronym or an abbreviation can function as a trademark. The answer to this inquiry will depend on several factors. The first question is does the acronym or abbreviation stand for specific wording. If it does, is the specific underlying wording merely descriptive of the services or goods identified in the trademark application? If it is, will the relevant purchasers recognize the acronym or abbreviation as the merely descriptive underlying wording it represents. If the answer to all three questions is yes, then it is probable that the Acronym or abbreviation will be found to be merely descriptive of the goods or services. Merely descriptive marks will be refused on the Principal Register of the United States Patent and Trademark Office (“USPTO”). For more on this topic see our firm page entitled, When Will Acronyms Be Considered Merely Descriptive?

The issue of whether an acronym is merely descriptive or not may arise in an Office Action if the Examining Attorney refused the application on this basis, or it may arise in a proceeding before the Trademark Trial and Appeal Board (the “Board”). An opposition or cancellation proceeding may cite merely descriptive grounds as the basis to oppose or cancel the mark. To have standing to bring such a proceeding, the Opposer or Petitioner would only need to prove that they are in the same business as the applicant or registrant and are competitors. Often, the answers to the first two questions are an easy yes, and cannot be disputed. However, the difficult inquiry is whether the relevant consumers will readily recognize the acronym as the descriptive underlying wording. In other words, the purchasers have to immediately understand upon seeing the mark with the goods or services, that the mark/acronym stands for the underlying phrase, and that it is substantially synonymous for the words it represents.

Examining Attorneys will introduce definitions for the acronym that show the underlying term, in an effort to prove the third element of the test is satisfied. In addition, Examiners will introduce evidence that third parties are also using the acronym in conjunction with the underlying phrase or to represent the underlying term for the same goods or services. See In re Pre-Paid Legal Services, Inc., Serial No. 86423483 (May 11, 2017) [not precedential], where the applicant filed for the mark PPL for “business administration of legal expense plan services, namely, arranging certain legal services covered by a membership contract for a member through a provider or referral third-party attorneys; arranging and conducting incentive or reward programs to promote the sale of pre-paid legal expense plans”, and the mark was refused. The Board affirmed the refusal, finding the mark PPL merely descriptive of the Applicant’s services since it was a well-recognized acronym for “pre-paid legal”. One obstacle in this case was that the applicant used the underlying phrase in its identification of services in the trademark application.

Continue reading →

Published on:

My clients frequently inquire about using a geographic term as part of a trademark. Incorporating geographic words into a trademark places the applicant in a position where the application may be refused. There are two primary refusals often issued by Examining Attorneys at the United States Patent & Trademark office when marks include geographic terms. These are known as a Section 2(e)(2), geographically descriptive refusal and a Section 2(e)(3) geographically deceptively misdescriptive refusal. See also our firm page entitled, Common Grounds For Refusal Of A Trademark, for more information on Office Action refusals.

A mark is found to be geographically descriptive if: (1) the primary significance of the mark is a geographically known location; (2) the goods or services originate in the geographic location named in the mark; and (3) the purchasers would believe the goods or services originate in the location named in the mark. It should be noted when the mark names a known geographic location and the goods or services are from that location, it’s presumed that consumers would believe the products or services originate from the place named in the mark. If the mark is a composite mark and includes other elements besides the geographic place, and the other parts of the mark are inherently distinctive this may carry the mark. Under this circumstance a refusal may be avoided. However, adding descriptive or generic wording to the name of a geographic place will not alter its primary geographic significance.

Typically, the most challenging part of the analysis is determining if there is a goods place association when the goods or services are not from the geographic location. For example see In re Zeller, Serial No. 77544307 (September 30, 2009), where the applicant was seeking to register the mark CATALINA ISLAND GRANOLA & Design for granola. The Board found that the primary significance of the mark was geographic. The applicant lived on Catalina island, but declared the goods did not originate on Catalina Island, and the goods would not be manufactured there, but may be sold on the island. The next inquiry is would there be a goods place association. The record did not contain evidence that Catalina Island was known for producing food products like granola. The record showed that Catalina Island had agricultural concerns and did very little manufacturing. The fact that the applicant lived on Catalina Island, and would sell her goods there was not enough for a goods place association. The geographic place named in the mark would have to be associated with the granola in a way that the consuming public would believe that the granola originated there. The Board reversed the refusal.

Continue reading →

Published on:

Typically, trademark applications and registrations can be assigned in whole or in part. For general information on trademark assignments, see the web page entitled, Trademark Assignments, where important concepts such as the chain of title and recording an assignment are discussed. However, there are special rules for intent-to-use applications under §10 of the Trademark Act. The statute is referred to as the anti-trafficking provision of the Lanham Act, 15 U.S.C. §1060(a)(1). It specifically states:

[N]o application to register a mark under section 1051(b) of this title shall be assignable prior to the filing of an amendment under section 1051(c) of this title to bring the application into conformity with section 1051(a) of this title or the filing of the verified statement of use under section 1051(d) of this title, except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.

The policy behind the statute is to ban assignments of intent-to-use applications (prior to the filing of an Allegation of Use or Statement of Use), unless the application is assigned with the business associated with the mark. Assuming there is an ongoing and existing business, the assignee of the intent-to-use trademark application, must purchase the whole business (assets, business location if one exists, employees etc.) affiliated with the mark. If the assignment is held to be invalid, it will void the underlying application or registration under §10 of the Trademark Act. See Clorox Co. v. Chem. Bank, 40 USPQ2d 1098 (TTAB 1996).

The following factors will be considered when determining if the assignee is a successor to the business of the applicant, was there a transfer of the business and the good will of the trademark, is there continuity of management, is the assignee producing products or rendering services similar to the applicant, has there been a transfer of assets, and are there documents supporting these facts. The fact finder will look to determine if the assignment was part of a larger transaction between the applicant and the assignee. In the matter of Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108 USPQ2d 1134 (TTAB 2013) [precedential], this was part of the problem. An assignment was recorded with the Assignment Division of the United States Patent & Trademark Office (“USPTO”), but the assignment constituted the entire agreement between the parties, and was not part of a more significant transaction. In this case, the assignee was not the successor to the business of the applicant. In fact, the Assignor continued in the same business after the transfer, including producing and selling the same products branded with the mark that was the subject of the assignment.

Continue reading →

Published on:

If an organization is offering products or services under a trademark in another country or plans to enter a market abroad in the future, consideration should be given to registering your trademark in that country. There should be an inquiry as to whether the mark is currently in use in that country or how soon will use commence abroad. Many foreign countries allow 3 years after registration for use to commence (very different from the U.S.) A question that comes up time and time again with our trademark practice is: should the trademark application our organization is filing abroad be filed directly with the Trademark Office of a particular country (a national application) or should the application be filed based on our U.S. application or registration through the Madrid Protocol (international registration). This is a complex question and many factors should be considered before making a determination.

Even before the issue of how to register is discussed, there should be a dialogue about what type of trademark clearance search will be conducted. Verifying what databases or common law sources will be utilized for the search is also an important query, depending on which country or countries are being searched. Some countries have a “first to use” trademark system like the U.S. This means searching unregistered marks (common law) is important because if one party used the mark before a similar mark is filed by another party, then possibly the senior user would be the party using the mark in commerce first. Other countries have a “first to file” system and do not recognize prior use rights.

There are some drawbacks to utilizing the Madrid System, for example if you file through the Madrid Protocol, the U.S. mark is open to attack for the first five years of the life of the international registration. If the mark does not register or should it be invalidated or cancelled, then all of the extensions of protection (applications or registrations) in other countries will be cancelled as well. You should consider the strength of your trademark and whether it is a pending U.S. application or U.S. registration. If the mark is weak and still a pending application, it may not mature to a registration or be attacked in an opposition which would cause your foreign applications or registrations to be cancelled as well. If cancellation occurs, there is an opportunity to convert the international registrations to national registrations and this will preserve the priority date of the international registration, but it is a very expensive process.

Continue reading →

Published on:

One of the most frequently asked questions in our law practice is who should be the legal owner of a trademark. It is hard to believe that the “name section” of the trademark application is the section most frequently incorrectly completed of all the sections of the trademark application. If the wrong entity is named as the trademark owner, the application and registration may be void. In other words, a trademark registration may be invalid if the owner is not the person or entity that controls the nature and quality of the goods or services provided under the mark. If there is no business entity formed and you as an individual control the nature and quality of the goods and services, then the proper owner is you the “individual”. You will need to indicate your legal name and an address, in addition to recording your citizenship on the trademark application.

The general principal of trademark law is that the individual or legal entity that uses the mark owns the mark, unless use is by a related company or licensee. U.S. law recognizes use by a related company or licensee if the use inures to the benefit of the trademark owner. Often the reason for having another entity use the mark and another entity own the trademark is to protect a trademark or trademark portfolio from being forfeited in litigation, should there be a money judgment against the legal entity using the trademark. It should be noted, that in any license agreement it must be clear that the owner of the trademark will control the nature and quality of the goods or services and the license agreement should explicitly state how the control is exercised.

In addition, to an individual, a corporation, partnership, sole proprietorship, LLC, trust, estate, joint venture or joint applicants may be the proper legal owner of a trademark. When recording information on a trademark application, with respect to a business entity that is formed you must indicate the state where it is formed and the name and address of the business entity. For a sole proprietorship you must name the name of the sole proprietorship, provide the address, the state where it was formed and the name and citizenship of the sole proprietor.

Continue reading →

Published on:

Yes there are differences between a refusal issued on deceptive grounds and one issued because the mark is deceptively misdescriptive. Under the Trademark Act, Section 2(a) a mark cannot register on either the Principal or the Supplemental Register if it is held to be deceptive. An example would be a mark that falsely describes the material content of a product. The following marks were held to be deceptive TEXHYDE AND SOFTHIDE for synthetic fabrics and imitation leather material. See Intex Plastics Corporation, 215 U.S.P.Q. 1045 1982 WL 52076 (TTAB 1982). Compare this finding with A.F. Gallun & Sons Corp., where it was held that the trademark COPY CALF was not deceptive for billfolds and wallets even though it was not made of leather because it was found to be a play on words. The rationale was that consumers would understand COPY CALF to be a pun related to the phrase copy cat insinuating the goods were made of imitation material.

The Federal Circuit has enunciated a test utilized to determine if matter is deceptive and thus not registrable at the United States Patent & Trademark Office:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If it is misdescriptive, then would a potential consumer likely believe that the misdescription actually describes the goods?

To prove this prong of the test an Examining Attorney could produce evidence that consumers regularly encounter goods or services containing the characteristic alleged in the mark. For example, in a case where the mark was LOVEE LAMB for seat covers and the seat covers were not made of lambskin, the Examiner provided evidence that seat covers can be and sometimes are made of lambskin. In that case, the Examiner concluded that the mark LOVEE LAMB was deceptive for seat covers.

Continue reading →

Published on:

Word Marks

One of the most frequently asked questions in our practice is how do you evaluate trademarks to determine if a likelihood of confusion would result in the marketplace. The applicable rules will vary based on the type or types of marks in question. For example, if both marks are word marks and contain no design elements, then the points of comparison are appearance, sound, meaning, and commercial impression. See our web page entitled Similarities In Trademarks for a detailed description of the analysis for each of the points of comparison for word marks.

The general rule is that similarity as to one factor alone may be enough to support a holding that the marks are confusingly similar. If the mark is a compound trademark (contains multiple words), one must determine if a portion of the mark is dominant in creating the commercial impression. The dominant portion of a mark will be the fanciful, arbitrary, or suggestive portion of the mark and not the descriptive or generic portion. Therefore, descriptive or weak terms are only entitled to a narrow scope of protection. Another view is that the first word in a multiple word mark is dominant. The reasoning is that consumers are more inclined to focus on the first word of a trademark.

Another general rule often cited by Examining Attorneys at the United States Patent & Trademark Office (USPTO) is that by merely adding or deleting a house mark or other term that is suggestive or descriptive of the goods or services, will not avoid a finding that the marks are confusingly similar. In other words, if the dominant portion of both marks is the same, adding or deleting other terms does not obviate the similarity between the marks. There are exceptions to this rule. Here an exception will arise if the marks in their entireties convey significantly different commercial impressions or if the term in common in the two subject marks is weak (due to descriptiveness or dilution) and not likely to be perceived as distinguishing source.

Continue reading →

Published on:

A frequently asked question in our trademark practice is what filing basis should the trademark applicant rely on when filing its trademark application with the United States Patent & Trademark Office. There are five filing bases to choose from to fulfill the statutory requirements when filing a trademark application. For details on the five bases, see our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application. This blog post will focus on Section 44 of the Trademark Act that allows a trademark applicant to utilize a previously filed foreign application or a previously issued foreign registration as a filing basis.

Section 44 of the Trademark Act (15 U.S.C. §1126) applies to two types of trademark applications. Section 44(d) pertains to applications relying on foreign applications to secure a priority filing date in the U.S. Section 44(e) is relevant to applications relying on the ownership of a foreign registration for U.S. registration. A trademark applicant asserting 44(d) must assert another basis for registration since 44(d) provides a basis for a receipt of a filing date, but not a basis for publication or registration. For more details on this concept, see the Trademark Manual of Examining Procedure (“TMEP”) §1003.03. If an applicant asserts 44(d) and 44(e) as filing bases the applicant must assert a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration (see TMEP §1009).

If a trademark applicant wishes to rely on Section 44 of the Trademark Act, it is prudent to consult with experienced trademark counsel. This section of the Trademark Act has a tendency to be misunderstood. As stated above Section 44(d) only applies to receiving a priority filing date. Therefore, if you include Section 44(d) as a basis for filing the application, before the application can be approved for publication or registration, the applicant must establish a basis under another section of the Trademark Act. In addition, the U.S. trademark application must be filed within six months of the filing date of the foreign application.

Continue reading →

Published on:

Several of our clients have recently inquired as to whether their mark can function as a certification trademark. The Trademark Act provides for registration of certification marks under Section 4. It can be any word, symbol, name or device or any combination thereof used by a person other than its owner or one where the owner of the mark maintains a bona fide intent to permit others to use the mark in commerce and the owner registers the mark on the Principal Register at the United States Patent & Trademark Office (“USPTO”). A certification mark differs from a standard trademark in that the owner does not use a certification mark and a mark of this nature does not indicate commercial source nor does it distinguish the goods and services among trademark owners. In fact, if a trademark owner uses the mark then pursuant to the statutory definition it is no longer a valid certification trademark.

There are three types of certification marks. The first category certifies that the goods or services emanate from a specific geographic region. An example would be COGNAC for distilled brandy from a region in France. The second category certifies that the goods and services meet certain standards in connection to the quality, materials, or mode of manufacture. For example, the certification mark UL certifies that samplings of electrical equipment meet certain safety standards. See Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). The third category certifies that the work or labor of the goods or services was performed by a member of a union or other organization or that the worker or laborer meets the required standards. For example, CRNA functions as a certification mark used to certify that a person who meets certain standards and tests of competency is performing anesthesia services.

Another common question we receive is can the same mark simultaneously function as a standard trademark and a certification mark. Most practitioners believe that the same mark may not be used both as a certification mark and as a trademark or service mark for the same goods or services. The rationale is that using the same term for both purposes would result in confusion about the meaning of the mark.

Continue reading →