Articles Posted in Frequently Asked Questions

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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.

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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.

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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.

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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.

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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.

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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.

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This question is one that is frequently asked by our trademark clients. Once a Final Refusal has issued in an Office Action, a trademark applicant can file a request for reconsideration with the Examining Attorney, file an appeal with the Trademark Trial and Appeal Board (the “Board)”, or the applicant can file both a request for reconsideration and an appeal simultaneously. In the latter case, the trademark applicant should indicate in its Notice of Appeal that it has filed a request for reconsideration in conjunction with the Notice of Appeal. Moreover, we recommend that once the two filings are made that the applicant file with the Board a request to suspend the appeal until there has been a decision on the request for reconsideration and specifically request that the application be remanded to the Examining Attorney.

A request for reconsideration is a tool that is often overlooked by trademark practitioners. Often, it can be an effective strategy to avoid the need for an appeal or it can build a stronger record for an appeal, if in the end an appeal is required. To use this strategy effectively, a trademark applicant should raise new arguments in the request for reconsideration. In fact, the applicant would be wise to introduce additional evidence and even request an amendment intended to overcome the refusal in the request for reconsideration.

For example, if an Examiner refused an application based on the mark being merely descriptive of the goods or services, then an applicant could amend the application to claim acquired distinctiveness or the applicant could request to amend the application to the Supplement Register instead of the Principal Register. Yet another example would be if there was a likelihood of confusion refusal issued, then in this case the applicant could amend the application to narrow the identification of goods, limit the trade channels, or the applicant could acquire consent from the registrant and submit the consent with its request for reconsideration.

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We frequently receive inquiries from our clients regarding what if any methods exist to submit evidence to the USPTO to prevent the registration of a third party’s mark. The answer of course is it depends on the type of evidence you wish to submit and the reason for submission. The proper method for submission of evidence is a letter of protest. This is an informal procedure utilized by the United States Patent & Trademark Office (“USPTO”). It enables a third party to bring evidence to the attention of the Examining Attorney during the ex parte examination, if the evidence is relevant to the registration of the mark. Of course, you can wait until publication and file an opposition proceeding as well.

This is a useful procedure if you have a matter that is clear-cut. This procedure will be much less expensive than filing a Notice of Opposition. It is also another bite at the apple. If your letter of protest fails to persuade the Deputy Commissioner or the Examining Attorney, you still can file a Notice of Opposition and make the same arguments to the Trademark Trial and Appeal Board (“TTAB”).

Letters of Protest are first reviewed by the Office of the Deputy Commissioner for Trademark Examination Policy to determine if the evidence (declarations or affidavits) submitted should be given to the Examining Attorney. A small percentage of letters of protest are granted. The Deputy Commissioner will consider the letter of protest and grant it before publication, if the evidence is relevant and supports a reasonable ground for refusal in an ex parte examination. If the application in question already published, then there has to be prima facie evidence supporting a refusal of registration.

Appropriate subjects for a letter of protest include: (1) if the mark in the pending application is generic or descriptive and if this is the case, then the letter must be accompanied by evidence which is objective, independent and factual; (2) if a federally registered mark or prior pending application exists that causes a likelihood of confusion with the mark in the pending application; or (3) if there is pending litigation claiming infringement of the applicant’s mark, then the letter must include a copy of the pleadings. Normally a court proceeding is not considered relevant to the registration of a trademark unless the remedy requested in the court proceeding is cancellation, abandonment or amendment of the application.

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The answer to this question is similar to the answer to many other legal questions, it depends on a number of factors. The central inquiry is what is the primary significance of the term to the purchasing public. Under §2(e)(4), of the Trademark Act, 15 U.S.C. §1052(e)(4) a trademark that is primarily merely a surname cannot register on the Principal Register of the United States Patent & Trademark Office (USPTO) absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f). However, a trademark that is primarily merely a surname can register on the Supplemental Register. In some of my earlier postings, I have discussed some of the types of marks appropriate for the Supplemental Register. These marks include descriptive terms that are capable of acquiring distinctiveness, geographic terms, trade dress that is not functional or distinctive, and certain surnames. See our webpage entitled Filing Your Trademark On The Principal Register And Supplemental Register.

The reasoning behind this rule is that exclusive rights in a surname cannot be established without a showing of a long history of exclusive use so that the meaning to the public changes from that of a surname to that of a trademark for specific goods or services. Public policy recognizes that many people can share the same surname and multiple parties may have an interest in utilizing the name as a brand in business. Therefore, it is fair to ask the party requesting exclusive rights to the surname to demonstrate that the name has acquired secondary meaning.

It is not always easy to ascertain whether a last name is primarily merely a surname and even the experts at the USPTO struggle with this determination. A couple of weeks ago, the Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed a refusal to register a trademark based on finding that the proposed mark was not primarily merely a surname. See In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential]. In that case, the applicant was seeking registration of the mark ROMANOV for decorative eggs, porcelain boxes, jewelry, and picture frames. The Examiner refused the application claiming that the term was primarily merely a surname.

In these types of refusals, the Examiners bear the burden of proving a prima facie case and then the burden shifts to the Applicant to rebut the showing. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).  The TTAB reviews five factors when determining if a name is primarily merely a surname:

(1) Is the surname rare (See Trademark Manual Of Examining Procedure “TMEP” §1211.01(a)(v));

(2) Is the proposed mark the surname of the Applicant or anyone connected with the Applicant;

(3) Does the proposed mark have any recognized meaning other than a surname;

(4) Does the term have the “look and feel” of a surname (See TMEP §1211.01(a)(vi)); and

(5) Is the stylization of the lettering in the proposed mark distinctive enough to create a separate commercial impression.

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In the recent case of In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential] the Trademark Trial and Appeal Board (TTAB) held that the slogan “HOURS OF ENERGY NOW” for dietary supplements and energy shots did not function as a trademark.   After the Examining Attorney made its final refusal to register Hours Of Energy Now based on its opinion that the mark was incapable of functioning as a trademark to identify the source of origin of the goods, the Applicant appealed to the TTAB.  A slogan or an advertising phrase can register at the United States Patent & Trademark Office (USPTO) on the Principal Register, if it is capable of acting as a source indicator.  See In re Morganroth, 208 USPQ 284, 287 (TTAB 1980), where the Board held that an advertising phrase may register if it did not fall within one of the restrictions under Sections 2(a), (b), (c), (d), and the subsections of Section 2(e) of the Trademark Act. When discussing slogans and advertising phrases, it’s important to keep in mind that even an inherently distinctive mark can be refused for failing to function as a trademark.

In In re Innovation Ventures, LLC  the Examining Attorney first refused the trademark application on the basis of merely descriptiveness and failure to function as a trademark. However, after further consideration the Examiner withdrew the descriptive refusal and relied on the stronger basis of refusal, failure to act as a source indicator. Slogans can be refused for either descriptiveness or for failing to function as a trademark.  A good example of a slogan that was refused due to descriptiveness is the case of In re Sanda Hosiery Mills, 154 USPQ 631 (TTAB 1967).  In that case, the Board held that the slogan THE BABY BOOTIE SOCK THAT WILL NOT KICK OFF for socks was merely descriptive of the goods and thus, refused registration on the Supplemental Register. For more on descriptive refusals, see our blog post entitled King.com Limited Abandons Its Federal Trademark Application For CANDY, where this subject is discussed in more detail. Since the Examining Attorney withdrew the descriptive refusal, the only issue on appeal was whether the mark HOURS OF ENERGY NOW could function as a trademark and distinguish its goods from others.

The critical inquiry in determining this issue is how will the public perceive the proposed trademark. Relevant factors to consider would be specimens in use and third party use of the relevant advertising phrase. Applicant’s specimens used the phrase Hours Of Energy Now in conjunction with other informational text and in a less prominent position than the trademark 5-Hour Energy. Their packaging contained a listing of the following phrases: Hours of energy now, No crash later, Sugar free and 0 net carbs. This use appears to be merely informational and not capable of registration as a mark. The slogan is not set apart from the other laudatory phrases in anyway and simply describes characteristics of the product. The TTAB found that this usage underscored the informational nature of the trademark.

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