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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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Under the Lanham Act, specifically 15 U.S.C. §1051(b) a trademark applicant may apply for registration, even if they have not commenced use of the trademark in commerce. This provides the trademark applicant with a critical advantage. The applicant may use its filing date as a “constructive use” date for purposes of nationwide priority. See our post entitled What Constitutes Use In Commerce For A Service Mark? where we discuss how a trademark applicant can rely on their trademark filing date to establish priority.  The trademark applicant must carefully document their bona fide intent. Most trademark applicants are not aware of this requirement and as a result, could have their application refused registration if challenged.

The party challenging the trademark applicant (the “opposer”) has the burden of demonstrating by a preponderance of the evidence that the applicant lacks the requisite intent to use the trademark in connection with the services or goods in commerce. See SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300 (TTAB 2010). If the trademark applicant cannot rebut the prima facie case, then summary judgment will be granted. The determination as to whether there is a bona fide intent to use the mark in commerce, is an objective one based on all the circumstances.

The Trademark Trial and Appeal Board (TTAB) recently determined that the trademark applicant did not satisfy its burden to come forward with documentary evidence of a bona fide intent to use the mark in commerce and granted the opposer’s motion for summary judgment. See PRL USA Holdings, Inc. v. Rich C. Young, Opposition No.91206846 (October 16, 2016) [not precedential]. In this case, the opposer was the owner of RALPH LAUREN POLO & Design and the trademark POLO. The trademark applicant filed for IRISH POLO CLUB USA & Design for shirts. Because the opposer was successful in showing that the applicant lacked a bona fide intent to use the mark, the TTAB did not have to determine the issues of likelihood of confusion and dilution. Generally, whether a trademark applicant possesses a bona fide intent to use the mark in commerce is not suitable for summary judgment disposition. However, if there is no genuine dispute of material fact as to the trademark applicant’s lack of intent to use the trademark as of the filing date, then the motion for summary judgment will be granted. In PRL USA Holdings, Inc., the opposer through its discovery requests demonstrated that the applicant could not produce any documents to support its mere allegations of intent.

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