Articles Posted in Trademark Registration

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This week I addressed one issue repeatedly with prospective clients and the dialogue prompted me to write this blog. Generally, trademark attorneys counsel clients to avoid descriptive marks that will register on the Supplemental Register. For the basic facts regarding the Principal and Supplemental Registers, see our webpage entitled, Filing Your Trademark On The Principal And Supplemental Registers.

The Trademark Trial and Appeal Board (the “Board” or the “TTAB”) has held that neither an opposer nor a petitioner can prevail in a likelihood of confusion proceeding based solely on its Supplemental Register Registration. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. This is because the opposer must prove he has proprietary rights to be successful. If proprietary rights do not exist, then there cannot be likelihood of confusion as to source. An owner of a Supplemental Registration must prove ownership, validity of the mark, and exclusive right to use the mark, and acquired distinctiveness. Conversely, a Principal Registration is entitled to certain presumptions under the law such as the registration is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, the exclusive right to use the mark in commerce, and of the continued use of the mark in commerce since the filing date of the application.

A Supplemental Registration is not prima facie evidence of anything except that the registration issued. If a mark is on the Supplemental Register, it is presumed to be descriptive, at least at the time of registration and the owner must demonstrate subsequent to registration that the mark acquired distinctiveness in order to show proprietary rights. To review how a trademark owner can prove acquired distinctiveness, see our webpage entitled, What Is Acquired Distinctiveness & Secondary Meaning?

Without a Principal Registration, a trademark owner of a Supplemental Registration attempting to enforce its rights in an infringement proceeding will be placed in a similar position to an owner of common law rights. Ownership of a Supplemental Trademark Registration may impose “standing” to bring an opposition or cancellation before the TTAB, but it does not mean the presumptions attendant under section 7(b) will be given to a supplemental registration.

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Trademark applicants should be mindful of the statements made during a trademark prosecution at the United States Patent & Trademark Office (“USPTO”). In fact, an applicant’s words may be used against them in a later proceeding before the Trademark Trial and Appeal Board (the “Board”) or in a court. A party may have made a statement during the prosecution that is inconsistent with a position later asserted before the Board. One scenario may include a party entering into a consent agreement, settlement agreement or consent judgment wherein the terms of the agreement or judgment are inconsistent with the position the party is currently asserting. This type of a prior inconsistent statement can constitute an admission against interest. Such statements become problematic in a future proceeding when the party is asserting likelihood of confusion against another party.

Often parties forget that any arguments or statements made in the prosecution of their trademark application become a public record. Statements made in a response to an Office Action can be particularly useful to an adversary. For this reason, a party should always scrutinize their opponent’s original trademark application and any responses submitted to an Examining Attorney.

The typical scenario will involve an Examining Attorney refusing an application based on likelihood of confusion with a prior trademark registration for the same or similar trademark. The applicant in response to the refusal will make statements attempting to overcome the refusal. Example arguments may include a term within the mark is suggestive or descriptive and thus weak, many similar marks co-exist on the trademark register indicating a crowded field, since the mark uses a suggestive or descriptive term it is entitled to a narrow scope of protection, and lastly slight differences between the marks will suffice to distinguish the trademarks. These statements often support the reasoning that the two trademarks can coexist because there is no likelihood of confusion between the sources of the marks. Such statements may constitute admissions against interest and they can serve to restrict the scope of protection of the applicant’s mark.

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Under Section 2(e)4 of the Trademark Act a mark that is primarily merely a surname can not be registered on the Principal Register absent a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. See Suisman, Shapiro, Wool, Brennan, Gray & Greenberg P.C. v. Suisman, 80 U.S.P.Q.2d 1072, 2006 WL 387289 (D. Conn. 2006), where the law firm’s name developed secondary meaning and was protectable as a trademark. The reasoning behind the refusal rule for surnames is that the law recognizes that many may share the same last name, and each of whom may have an interest in using their last name as a brand.

See our blog post entitled, Can You Use A Surname (Last Name) As A Trademark? for the five factor test used by the Trademark Trial and Appeal Board (TTAB or Board) for making this determination. A mark that is primarily merely a surname may be registered on the Supplemental Register in an application under Section 1 or Section 44 of the Trademark Act. To avoid the Supplemental Trademark Register, a trademark applicant with a mark containing a surname should consider several options. For more details on the Supplemental Register, see our web page entitled, A Comprehensive Overview Of The Supplemental Register. The Supplemental Register offers only a few benefits of federal trademark registration and it is reserved for descriptive marks.

A combination of two surnames is not primarily merely a surname within the meaning of §2(e)(4), unless evidence is presented showing that the combination would be perceived by the public as merely a surname. See Application of Standard Elektrik Lorenz Aktiengesellschaft, 54 C.C.P.A. 1043, 371 F.2d 870, 152 U.S. P.Q. 563 (1967), where it was held that the proposed mark SCHAUB-LORENZ was not primarily merely a surname. The Court noted that there was no evidence submitted that the mark as a whole was merely a surname. Some evidence was put forth to demonstrate that the individual terms “SCHAUB” and “LORENZ” had surname significance, but the Court insisted that the mark be considered as a whole and not dissected.

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Trademark applicants must be cautious when relying too heavily on third–party uses. This is an area where an experienced trademark attorney will be able to guide a trademark applicant in the right direction. Do not make the mistake of arguing that the existence of third-party registrations with similar terms can justify the registration of another confusingly similar trademark. Examining Attorneys utilize third-party registrations to show that the Registrant’s goods and the Applicant’s goods often have been covered in the same registration under the same trademark. The Examining Attorney submits this proof when refusing an application based on likelihood of confusion to show the relatedness of the goods or services and that the goods or services are of the type that may originate from a single source.

Applicants can also use third-party registrations as probative evidence as to the meaning of a mark or a term in the trademark. Essentially, the argument is that a term in the mark has a well-known meaning and this has been recognized by the Trademark Office by registering marks containing this common term for closely related goods. Other elements (apart from the common term) in the marks distinguish the trademarks. Thus, a finding of likelihood of confusion based on the common term is a flawed determination. In other words, third- party registrations may be relevant to show that the mark or a portion of the mark is descriptive, suggestive, or frequently used so that consumers will look to other elements to distinguish the source of the goods or services. See Plus Products v. Star-Kist Foods, Inc. 220 U.S.P.Q. 541, 544, 1983 WL 51884 (TTAB 1983). Evidence of third-party use falls under the sixth factor of the du Pont factor analysis. When determining likelihood of confusion, an Examining Attorney or the Board will consider the number of similar marks in use on similar goods or in use with similar services. However, third-party registrations do not prove the mark is in use.

Further evidence must be presented to demonstrate this fact. For example, an Applicant may submit testimony or declarations showing that through telephone contact it was verified that a number of the marks in the registrations or in the website evidence are in fact in use for the goods or services indicated. See Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 1271 USPQ2d (TTAB 2009), aff’d 415 Fed. Appx. 222 (Fed. Circ. 2010), where there was evidence of third party registrations and telephone listings that showed extensive use of the name Anthony for Italian restaurants and pizzerias. The evidence was persuasive because 29 of the listings were proven to be currently in use in commerce and this was confirmed via telephone. As a result, the Board determined that the name “Anthony” in connection with restaurant services would be given a restricted scope of protection.

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This recent precedent of the TTAB involves concurrent use registration. This trademark concept allows two unrelated trademark owners to co-exist with legally identical trademarks, each having a registration limited to a distinct geographic area. As practitioners we work with clients with concurrent use issues. However, the TTAB does not render many concurrent use decisions and even fewer are precedential. For these reasons, it is important to pay close attention to the Board’s Findings in Boi Na Braza LLC v. Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa, Concurrent Use No. 94002525 March 26, 2014 [precedential].  In 2002 Boi Na Braza Inc. (hereinafter “Plaintiff”) registered two marks for the term BOI NA BRAZA (one word mark, the other a design mark incorporating the term “Boi Na Braza”) for restaurant services. Terra Sul Corporation (hereinafter “Defendant”) petitioned to cancel the word mark for BOI NA BRAZA, based on priority of use of its mark BOI NA BRASA for restaurant services and other related services. The Board granted the cancellation petition. Then, Plaintiff initiated a concurrent use proceeding for a geographically restricted registration.

Concurrent use proceedings are governed by the Trademark Act, Section 2(d) of 15 U.S.C. §1052. There are two conditions precedent to the issuance of concurrent registrations. These two conditions are as follows: (1) the parties must be entitled to concurrent use of the marks in commerce, and (2) there would be no likelihood of confusion, mistake, or deception as to the source of the goods or services in the market place resulting from the continued concurrent use of the marks. See America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540 (TTAB 2013). In addition, the Plaintiff’s use must have commenced prior to the filing date of the Defendant’s trademark application.

The first requirement means that one must adopt the trademark in good faith without the knowledge of a prior user in another geographical area, without any confusion as to source and there must be a level of public recognition. See Woman’s World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985 (TTAB 1988). The Plaintiff satisfied this mandate. The second condition precedent requires that there be no likelihood of confusion if a geographic restriction is applied to the registration. To determine this the Board looks to how long the parties coexisted without evidence of actual confusion. Here, there has been 15 years of coexistence without confusion as to source. This weighs in favor of allowing concurrent use. In addition, the Board and Courts have held that with certain types of services, specifically restaurant services, confusion can be avoided with identical trademarks and like services if there are geographic restrictions. See Pinocchio’s Pizza v. Sandra Inc., 11 USPQ2d 1227 (TTAB 1989); Nark Inc. v. Noah’s Inc., 212 USPQ 934 (TTAB 1981). The reasoning is that restaurant services by definition are rendered in a particular geographic area. Therefore, the second requirement was also satisfied.

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There are multiple benefits of filing for federal trademark protection.  In the recent decision of the Trademark Trial and Appeal Board (TTAB), Central Garden & Pet Company v. Doskocil Manufacturing Co., Inc. Opposition No. 91188816 (August 16, 2013) [citable as precedent], one more reason is given to trademark applicants to encourage filing for federal trademark protection. In this decision, the Board clearly states that a trademark applicant is entitled to rely on its trademark application filing date as “constructive use” of its mark in commerce, in a Trademark Trial and Appeal Board proceeding, to establish priority of use. This applies to applicants filing either use applications or intent-to-use applications with the United States Patent and Trademark Office (See 15 U.S.C. §§1057(c) and 1141f(b)).

This is significant for several reasons. The first reason is that the applicant may reserve his or her first use date, at the time the trademark application is filed, even if the applicant has not actually used the trademark in connection with the goods or services in interstate commerce.  This permits an applicant to gain priority for purposes of use of the trademark, while building their business without actual use. The second reason is that it is extremely costly to prove first use in commerce through testimony and business records, and using your filing date as your first use date allows you to avoid that expense. Lastly, the Examining Attorneys at the USPTO cannot start to work on the applicant’s behalf, until the trademark application is filed.  Once filed, the USPTO Examiners will refuse an incoming trademark application, if it will cause a “likelihood of confusion” with the proposed mark in the applicant’s earlier filed trademark application.

We frequently counsel our clients to file a trademark application as soon as reasonably practicable subsequent to clearing the mark. Applicants should not delay a filing, waiting for a first use date.  This will only expose the applicant to the risk of a third party filing for a similar trademark in a related industry. We encourage our clients to file intent-to-use applications for the very reason that the filing date will act as “constructive use” of the mark in commerce, as long as the application matures to a registration (See TMEP §201.02).

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