Benefits of Copyright Registration

May 29th, 2020

Copyright exists automatically in an original work of authorship as soon as it is fixed in a tangible medium. The copyright affords the author six exclusive rights that are protected by U.S. law. Although not mandatory, an author can enhance the protections of copyright by registering the work with the United States Copyright Office. Once a work is registered it establishes an author’s claim to copyright with the Copyright Office, which allows the author to defend and enforce the rights of the work through litigation. Notice of registration most commonly consists of the copyright symbol © or the word “Copyright,” along with the name of the copyright owner and the year of first publication. While placing a copyright notice on any original work is good practice, placing a copyright notice on a work does not substitute for registration.

An application for registration can be filed by the author or owner of an exclusive right in a work, the owner of all the exclusive rights or an agent on the author or owner’s behalf. (see this post for copyright ownership) There are three essential parts to a registration application: a completed application, a nonrefundable filing fee and a nonreturnable deposit. The deposit is a copy, or copies, of the work being registered and “deposited” with the Copyright Office.

The certificate of registration is important because it creates a public record containing all of the critical information relating to the original work and the author or owner. The information that becomes public record includes the title of the work, the author of the work, the name and address of the claimant or copyright owner, the year of creation and other information regarding the status of the work, such as whether it’s been published, has been previously registered or includes preexisting material. Since registration is not mandatory, it can be done at any time within the life of the copyright. (see this post for the lifespan of copyright)  There are certain benefits to timely filing a copyright application addressed in benefit three below.

Aside from establishing a public record of a copyright claim, registration has multiple advantages. Following, are four of the most critical statutory benefits as stated by the Copyright Office. First, before an infringement suit can be filed in court, the work must be registered with the Copyright Office. Second, registration establishes prima facie evidence of the validity of the copyright and the facts stated in the certificate when registration is made before or within five years of publication. Third, when a registration is made prior to infringement or within three months after publication of a work, a copyright owner is eligible for statutory damages, attorneys’ fees and other related costs. Lastly, registration allows a copyright owner to establish a record with the U.S. Customs and Border Protection for protection against the importation of infringing copies.

The effective date of registration to the certificate of registration is the day the Copyright Office receives a completed registration application. If the registration does not contain all of the required elements, as mentioned above, the date will not be set until the Copyright Office is in possession of those elements. Though there is no deadline for this, copyright registration (or refusal) from the Copyright Office is necessary prior to filing a lawsuit for copyright infringement. An applicant may seek statutory damages and attorneys’ fees in an infringement suit if the action began after the effective date of registration. Though collection can only take place after the effective date of registration, the law provides a three-month grace period after publication wherein full remedies may be recovered for any infringement action that began during those three months after publication if registration is made before the period ends.

Although registration is not mandatory since copyright is instilled in a work as soon as it is fixed in a tangible medium, registration (indeed timely registration) has many benefits.

What is Not Protected by Copyright

May 27th, 2020

Copyright protection is granted to authors of original works that are fixed in a tangible medium and the protection is automatically granted to an author upon creation of the work. This protection affords the author six exclusive rights to protect his work. Work that can by copyrighted includes literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings, which are works that result from the fixation of a series of musical, spoken or other sounds and architectural works.

For work to be copyrightable, not only does it need to original, but it must meet a certain minimum level of creativity. While as seen above most works meet these criteria, some works may not meet the necessary level of creativity or are not within the scope of copyright as defined by the law. This post will cover five areas of work that are not copyrightable.  These areas include ideas, methods and systems; names, titles and short phrases; typeface, fonts and lettering; blank forms and familiar symbols and designs.

When it comes to ideas, methods and systems the U.S. Copyright Office states, “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied.” However, a literary, graphic or artistic description, explanation or illustration of an idea, procedure, process, system or method of operation may be copyrightable so long as it is original and meets the required level of creativity. It is important to understand that only the original expression in the work is copyrightable, not the underlying ideas, methods or systems being detailed.

An example of an uncopyrightable procedure is a recipe. In its most basic form, a recipe is simply a list of ingredients and a set of directions and neither the list nor the directions may be copyrighted. However, a recipe that is creatively written or uses artistic concepts to depict the procedure may be copyrightable. An example is cooking directions written in poetic verse.   The creativity of the poetry would be protectable but there would be no protection for the steps of preparation.   In this case, the portion that is protected is the creative explanation, along with any illustrations or pictures owned by the author. The list of ingredients, bare-bones directions and final products are still not subject to copyright protection.

Names, titles and short phrases are not copyrightable because they do not meet the minimum requirement of original authorship. In this instance, this is where the last series of posts come into play. Individual words and short word combinations may not be copyrighted, even if the word or phrase is novel, distinctive or creates a double meaning. However, these terms may be trademarked if they meet the trademark criteria set forth by the USPTO. According to the Copyright Office, some examples of names, titles or short phrases that are not copyrightable include the name of an individual (including pseudonyms, pen names or stage names), the title or subtitle of a work, such as a book, song or a pictorial, graphic or sculptural work, the name of a business or organization, the name of a band or performing group, the name of a product or service, a domain name or URL, the name of a character, catchwords or phrases and mottos, slogans or other short expressions. If the title of a book is actually the name of a series of books and the name indicates the source of those books, the title can be protected by trademark law even though the title is not subject to copyright.

Copyright law does not protect typeface, fonts and lettering. Typeface refers to a set of letters, numbers or other characters with repetitive design elements that are intended to be used in creating text or other compilations of characters including calligraphy. Since typeface, fonts and lettering are commonly used to create original works of authorship, the Office cannot provide protection to an author trying to establish ownership of any type of lettering, whether it is common or unique. If in a slim set of circumstances, the work may be copyrightable, if the author is able to describe the original aspects of the work and explain how the original work is distinguishable from the typeface characters. Similar to the recipe example above, the decoration or ornamentation may be protectable, but not the underlying material.  Think of an illuminated manuscript.

Similar to typeface, fonts or lettering, layout and design are not copyrightable, because the general layout or format of a book, page, book cover, slide presentation, web page, poster or form is the template for expression, much like how typeface is the basis of expression.

Blank forms, such as timecards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms, datebooks and planners may not be copyrighted. The aforementioned blank forms are not copyrightable because they are designed to record information and do not convey any information in and of themselves. By contrast, any blank form that incorporates design or creativity that is not standard or functional and meets the minimum level of creativity and original authorship may be copyrighted. However, a blank form itself will never be afforded protection, only the unique portions may be protected.

Lastly, familiar symbols and designs, or a combination thereof are uncopyrightable and may not be registered with the Office. However, if an author incorporates familiar symbols or designs into a larger original work, the work as a whole may be registered if there is a sufficient amount of creative expression. Examples of familiar symbols and designs include, but are not limited to keyboard characters, abbreviations, musical notations, numerals, currency and mathematical symbols, arrows and other coordinate or navigational symbols, common symbols and shapes including playing card characters and the yin yang, common patterns, well-known and commonly used symbols that contain a minimal amount of expression or are in the public domain, including peace symbols, gender symbols or basic emoticons, industry designs such as hazard symbols and familiar religious symbols.

Though the five areas described are not copyrightable, there are certain exceptions in cases that meet the minimum original authorship and creativity requirements. In these cases, when attempting to submit a registration claim, it is imperative to focus on what in the work is copyrightable such as the text, illustrations or drawings. Any work that is simply a template or basis for works of original authorship may never be registered with the U.S. Copyright Office.

Copyright Ownership

May 27th, 2020

The previous post explained that copyright is a type of protection that entitles authors of “original works of authorship” that are fixed in a tangible medium to six exclusive rights.

This post will discuss copyright ownership.  In most cases, the author is the person who created the copyrightable work and puts it in a tangible medium. However, two separate scenarios can occur as well.

In some instances, two or more authors may collectively create an original work, and assuming the intent is to merge the separate contributions into an indivisible and interdependent whole, the authors of the united work become co-owners of the copyright unless otherwise expressed. However, if multiple authors contribute to a collective work, that does not come to form a unitary whole, such as an anthology, each author’s individual contribution is distinct from the copyright ownership of the collective work as a whole. Simply put, in such an instance, each author is granted copyright ownership of his individual work, whereas the authors of a united and indivisible whole co-own the entire work.

In another scenario, “works made for hire,” are an imperative exception to the general rule of copyright ownership. In this case, the original creator is not the author of the work, nor is he the owner of the copyrighted work. Whether a work is made for hire is decided by the facts that exist during the time the work was created.

There are two situations in which a work may be made for hire. First, a work may be made for hire when the work is created by an employee in the course of his or her regular duties. Second, a work may be made for hire when a third-party contributor and a hiring party enter into a written contract that clearly states that the work is to be considered a “work made for hire” and the work is commissioned or specially ordered for use as a compilation, a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, an instructional text, a test, answer material for a test or an atlas.  Of significance is that an independent contractor, hired for a specially ordered work that is not one of the enumerated types of works, will own the copyright despite a written agreement.  In such cases, the commissioning party must obtain an assignment.

In either work for hire situation, the hiring party that paid for the created work, and agreed to take all the financial risks associated with it, is the owner of the copyright and is entitled to the six exclusive rights that are a product of the ownership. Though these are the situations that may determine a work made for hire, the concept as an entirety can be more complicated and may result in unintended consequences for both parties. A later post will look more closely at the topic and detail the different risks associated with this type of ownership.

In conclusion, generally, the author of an original work fixed in a tangible medium is the copyright owner and entitled to the six exclusive rights that are fixed into ownership. However, a copyright may be co-owned, pieces of a whole, but collective work, may all be separately owned or a work may be created for hire. In any case, there should always be a contractual agreement between all involved parties.

What is a Copyright

May 27th, 2020

The last series of posts served as an in-depth look at trademarks. This next segment of posts will delve into copyrights; starting with what is a copyright.

A copyright is a type of protection granted to authors of “original works of authorship” that are fixed in a tangible medium. An “original work of authorship” is simply an original creation by a human author and possesses at least a minimal degree of creativity. The phrase, “fixed in a tangible medium,” means that the original work of art is captured in a sufficiently permanent medium. A sufficiently permanent medium is any work that can be perceived, reproduced or communicated for more than a small amount of time.

A copyright gives the owner of any copyrighted original work six exclusive rights: the right to reproduce and make copies of an original work; the right to prepare derivative works based on the original work; the right to distribute copies to the public by sale or another form of transfer, including rental and lending; the right to publicly perform the work; the right to publicly display the work; and the right to perform sound recordings publicly through digital audio transmission.

Copyright protection also provides the owner of the copyrighted work the right to authorize others to exercise these rights, subject to certain limitations. The two most common forms of transferring rights are license and assignment. If the transfer is exclusive, it must be in the form of a written agreement that is signed by the copyright owner. If it is a nonexclusive transfer, it does not need to be a written agreement. If any of the six exclusive rights are infringed upon, the owner may bring on a copyright infringement lawsuit to enforce the rights of ownership.

When it comes to what counts as an original work, the categories are not narrowly defined and should be viewed broadly for registration purposes. Examples of copyrightable works include literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings, which are works that result from the fixation of a series of musical, spoken or other sounds and architectural works.

Copyright protection, like any other form of protection, has a life span. In general, works created on or after Jan. 1, 1978 are protected for the life of the author plus 70 years after death. If the work a collective effort with multiple authors, it is protected for life plus 70 years after the last surviving author’s passing. For “works made for hire,” the work is protected for 95 years from the date of publication, or 120 years from the time it was created, whichever is shorter.

Though copyright automatically exists in an original work once it is fixed in a tangible medium, a copyright owner can enhance the works’ protection further than the six rights above. The most important step is registering the work with the U.S. Copyright Office. A later post will detail the benefits of copyright registration, and another will delve more deeply into the duration of a copyright and how to renew one.

 

Examining The Dupont Factors on a Case-by-Case Basis

April 5th, 2020

Under §2(d) of the Lanham Act, marks that are confusingly similar may not be registered with the USPTO.  When it comes to determining likelihood of confusion, the examining attorney considers the Dupont Factors. Often, the first two: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s), hold the most weight. However, there is no precedent that states that the first two are the most important. All of the factors must be considered equally in light of the evidence provided in each case. In the case below, a decision made by the Trademark Trial and Appeal Board was vacated and remanded by the U.S. Court of Appeals for the Federal Circuit, because the Board failed to consider all of the factors for which there was evidence.

In 2017, the Trademark Trial and Appeal Board affirmed the §2(d) refusal of the mark GUILD MORTAGE COMPANY for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” (MORTGAGE COMPANY was disclaimed) Finding it confusingly similar with the registered mark GUILD INVESTMENT MANAGEMENT for “investment advisory services.” (INVESTMENT MANAGEMENT was disclaimed) In light of this, the Applicant appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC).  In 2019, The CAFC issued a decision that vacated and remanded the TTAB’s decision “for further proceedings consistent the [its] opinion.” The CAFC stated that the Board failed to address the applicant’s arguments and evidence related to the eighth Dupont Factor, which examines the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

In a 2020 precedential opinion, on remand from the CAFC, the Board issued a final decision in regard to the mark GUILD MORTGAGE COMPANY.  As instructed, the Board reexamined the case giving more consideration to the eighth Dupont Factor. Starting with the first factor, the Board found that the dominant term in both marks was “guild.” Therefore, it ultimately found that the similarities between the marks, in accordance with “guild(‘s)” dictionary definition and overall commercial impression, outweighed the differences in sight and sound. The Board found that the first Dupont Factor weighed in favor of a finding of likelihood of confusion. As to the second factor, which examines the parties’ involved services, submissions of third-party registrations covering both mortgage banking and investment advisory services were enough to convince the Board that the services are related. Moreover, in accordance with the third factor, the Board found that the same consumers who seek mortgage banking services may also seek investment advisory services. Therefore, the channels of trade and classes of consumers are likely to overlap. Moving to the fourth factor, which examines the degree of purchaser care, the Board made its determination in light of Stone Lion Capital, 110 USPQ2d at 1163, which states that the decision must be based on the least sophisticated consumer. Regardless, the Board found that “consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded.” In sum, the fourth factor weighed mildly against finding a likely confusion.

Finally, the Board turned to examine the factor for which the case was remanded, the eighth factor. This factor looks at the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The eighth Dupont Factor requires consideration of the actual market condition, as opposed to the other factors in this case that require analysis based on the application and cited registration and do not consider evidence of how the Applicant and Registrant actually rendered their services in the marketplace. Considering the actual market condition, both services were based in Southern California and operated there for approximately 40 years with no evidence of actual confusion. Not only did both parties conduct businesses in the same state, they ultimately expanded into other states as well. However, there was no evidence to indicate any specific geographical areas of overlap between the consumer markets for the different services. Ultimately, though the parties both conducted business in California, and potentially in some of the same states nationwide, there was not enough evidence to show that “in the actual marketplace, the same consumers have been exposed to both marks for the respective services…” In conclusion, the Board deemed the eighth Dupont Factor neutral and after balancing the other relevant factors, found confusion likely and affirmed the refusal to register under §2(d) of the Lanham Act.

Though the Board ultimately ended up at the same conclusion as it did in 2017, it may have turned out differently if both parties had been heard from. In an ex parte context, there was not an opportunity for the Board to hear from the Registrant in regard to whether or not it was aware of any reported instances of confusion. Since the Board was only able to get “half of the story,” it gave limited probative value to the evidence provided for the eighth factor. This case demonstrates that the weight of each factor varies on a case-by-case basis.

 

A Case in Which Two Marks Are Not Confusingly Similar

March 29th, 2020

In the past two posts, two examples of likelihood of confusion were examined. In both cases, the Trademark Trial and Appeal Board affirmed the decision for refusal to register under §2(d) of the Lanham Act. In the first case, and in the second case, the first two Dupont Factors weighed heavily against the applicant and weighed in favor of finding a likelihood of confusion refusal. However, in the case below, the Trademark Trial and Appeal Board dismissed the opposition and found that the two marks were not confusingly similar.

The Trademark Trial and Appeal Board dismissed a §2(d) opposition against the mark FULL OF FLAVOR FREE OF GUILT for “vegetable based food products, namely, vegetable based snack foods; meat substitutes.” Prior to the case the applicant, Outstanding Foods, disclaimed FULL OF FLAVOR. The Board found that the opposer, Yarnell Ice Cream, failed to prove likelihood of confusion with their registered mark GUILT FREE for frozen confections. Turning first to the fifth Dupont Factor, the number and nature of similar marks in use on similar goods, the opposer submitted 15 additional registrations for GUILT FREE in correlation with an array of other products to show that their mark was licensed for use on a diverse array of products. However, not only did the applicant object to the consideration of any products aside from Yarnell’s frozen confections, the Board refused to consider them because the opposition had not informed the applicant that they intended to rely on the additional registrations. Moving onto the third Dupont Factor, the similarity of established likely-to-continue trade channels, the opposer submitted evidence of a single website depicting vegetable-based snacks and frozen confections being sold under the same mark. But the Board found there was “no testimony or evidence showing what sort of commercial impact these products have made.” The opposer relied solely on the fact that parties’ goods were “snacks,” but it did not convince the Board that the involved goods were related.

In looking at the channels of trade, the Board presumed that “both parties offer vegetable based snacks or frozen confections in all channels of trade normal for those products and they are available to all classes of consumers for those products.” However, the Board found that this factor weighed very little in favor of the opposer because there was no evidence to show that the same consumers would encounter the products in close proximity, given that they are entirely different products. In this case, although the products are sold in similar trade channels, it does not mean that they would be near each other in the market. Therefore, it would be hard to find them confusingly similar. In a quick glance at the fourth Dupont Factor, the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing, the Board agreed with the opposer that both parties’ goods were low-cost items and purchased with less care than expensive products. The Board then turned to the strength of the opposer’s mark, which encompasses the seventh Dupont Factor, the fame of the prior mark. The Board found that when the opposer used GUILT FREE in relation to “frozen confections or frozen dairy confections, it suggests that a person may enjoy the frozen treat [without] remorse, shame or guilt due to the calories in the frozen treat.” The applicant submitted 25 third-party registrations incorporating the word “Guilt” used in connection with food, and 13 websites using marks that invoked the “Guilt Free” commercial impression. As mentioned previously, the opposer licensed others to use the GUILT FREE mark, however, the uses were such that the Board found them “unlikely to point to Applicant as the source of the products.” Ultimately, given the commercial impression of the mark GUILT FREE, on the spectrum of distinctiveness, it would be suggestive. In considering the marks commercial strength, through the opposer’s evidence of sales of GUILT FREE frozen confections and its advertising and marketing efforts, the mark made “little, if any, commercial impact.” This commercial impact circles back to the seventh Dupont Factor. When looking at the fame of the prior (or registered) mark, it was found that there was hardly any. In many cases, the first Dupont Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, weighs heavily in a finding of likelihood of confusion. However, not all of the factors must be considered and there is no order in which the factors must be examined. In this case, the Board found that the marks created similar commercial impression but there were obvious differences between the two that weighed against this factor. When compared in their entireties, the Board ultimately found that the Applicant’s mark was distinguishable from the opposer’s mark. In conclusion, given the narrow scope of protection afforded to suggestive marks, including the opposer’s mark GUILT FREE, the Board dismissed the opposition and found the marks different enough to avoid being confusingly similar.

Another Case Involving Likelihood of Confusion

March 28th, 2020

In keeping with the likelihood of confusion theme, this post will detail another case where a mark was refused under §2(d) of the Lanham Act. Like the previous case, the examining attorney along with the Trademark Trial and Appeal Board both used the Dupont Factors to determine whether the marks were confusingly similar.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark JUSTICE NETWORK. The Board agreed that the mark was confusingly similar to JUSTICE CENTRAL. Both parties used their marks for various forms of television programming. The Board started with the second Dupont Factor which focuses on the similarity of services provided. While both parties used their marks for various forms of programs, the opposer, and owner of the mark JUSTICE CENTRAL, used the mark for a narrower scope of programming consisting of “programs in the field of law and courtroom legal proceedings.” However, the applicant, and owner of JUSTICE NETWORK, did not specify the range of programs offered, therefore there was overlap in the parties’ services and the Board found the services to be “legally identical.” Next, the Board moved onto the first Dupont Factor which is the similarity of the marks. Ultimately, the Board found the two marks, JUSTICE CENTRAL and JUSTICE NETWORK, similar and therefore the first Dupont Factor weighed in favor of finding a likelihood of confusion. In examining the first factor, the Board started with the term justice, which is the dominant word in both marks. The Board stated, “[c]onsumers in general are inclined to focus on the first word or portion in a trademark.” Equally important, the Board concluded that the term network was highly descriptive, if not generic and therefore “has less source-identifying significance and is clearly subordinate.” In finding this, the Board discredited any differences between the two terms “network” and “central.” The opposer, and owner of the mark, JUSTICE CENTRAL, argued the seventh, eighth and ninth Dupont Factors as well. The seventh being the fame of the prior mark, the eighth being the nature and extent of any actual confusion and the ninth being concurrent use. In regard to the seventh factor, the Board found very little compelling evidence from either side and deemed both the eighth and ninth factors neutral. Turning back to the first two factors, the Board found that the marks gave the “same overall impression” and the parties’ offered “overlapping services offered in the same trade channels to the same classes of customers.” In summation, the Board sustained the opposition and affirmed the refusal for registration.

Likelihood of Confusion Case

March 15th, 2020

In the post on likelihood of confusion, the Dupont Factors were discussed. Though there are nine factors, not all of them are relevant or applicable in every case. The first two factors are the most important across the board. After taking them into consideration, an examining attorney will look to the remaining factors in order to support a finding of likelihood of confusion. If there is enough evidence to support such a finding, a mark may be deemed unregistrable with the USPTO under §2(d) of the Lanham Act. The following is a case that was taken before the Trademark Trial and Appeal Board on the grounds of likelihood of confusion.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark HARDROK EQUIPMENT INC. for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board found confusion to be likely with the previously registered mark HARDROCK for “rock drills, drill bits, and other drilling equipment.” Turning to the first factor in the Dupont Factors, the Board found that the two marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties.” In that manner, the first factor was satisfied. The second factor, relating to the relatedness of the goods and services, is examined based on what was described in the registration and application. The Board concluded that even though the applicant and the cited registered mark owner did not have identical goods, “they substantially overlap, which weighs in favor of finding a likelihood of confusion.” Therefore, the second factor was satisfied. The applicant then cited the fourth factor: The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. In this case, the fourth factor supported a finding that confusion was not likely, however, the first two factors are the most heavily considered. Simply because other factors may be relevant or applicable, does not mean they outweigh the first two. In summation, the Board found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.” So, the Board affirmed the §2(d) refusal for registration.

Likelihood of Confusion

March 15th, 2020

As discussed in a much earlier post, it is important to select a strong trademark. The purpose of a trademark is to distinguish an owner’s goods and services from another’s goods or services. Since the purpose of a trademark is to act as a source indicator, it is important that two trademarks are not so similar, that the consuming public believes them to be related, or confuses them, this is known as likelihood of confusion. Under §2(d) of the Lanham Act, marks that are found to be confusingly similar are unregistrable with the USPTO.

When determining likelihood of confusion, the key factors an examining attorney relies on are known as the Dupont Factors. The two most important factors to consider are: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s).  When looking at these two factors, the order in which they are considered is important, because the more similar the marks are, the less related the goods or services need to be in order to support a finding of likelihood of confusion.  The following are the remaining seven factors that should be considered if applicable and relevant: (3) The similarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. (5) The number and nature of similar marks in use on similar goods. (6) The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. (7) Fame of the prior mark. (8) Nature and extent of any actual confusion. (9) Concurrent use without evidence of actual confusion: length of time and conditions. It is important to note that not all of these factors will be applicable in every case.

When determining likelihood of confusion, the standard is confusingly similar. Two marks need not be identical to support a finding of likelihood of confusion. This means that a new mark may be confusingly similar to a previously registered mark even if it is not identical. There is no guarantee that changing or removing portions of a new mark will make it sufficiently distinguishable and therefore registrable with the USPTO.

Registration Refusals for Geographically Deceptive Marks

March 7th, 2020

The previous post discussed marks that are geographically deceptive. Marks that are primarily geographically deceptively misdescriptive under §2(e)(3) and those that are deceptive under §2(a) are the same. Therefore, marks that are primarily geographically deceptively misdescriptive of goods or services are considered deceptive and deemed unregistrable with the USPTO under §2(e)(3) of the Lanham Act.  There is a three-prong inquiry to determine whether a mark is primarily geographically deceptively misdescriptive in connection with the goods for which it is being used: (1) The primary significance of the mark is a generally known geographic location; (2) The goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) The misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.  Following is an example of a geographical deceptiveness refusal which was affirmed by the Trademark Trial and Appeal Board.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the geographically deceptive mark EMPORIO ITALIA, for “bedsheets; pillowcases; comforters; bedspreads,” finding the mark to be primarily geographically deceptively misdescriptive. The applicant made two non-compelling arguments that the Board quickly dismissed. The applicant first argued that the mark merely suggested goods of high quality or style, and second, due to the high price of Italian bedding, only a select number of consumers would make the connection between Italy and bedding.  Before applying the three-prong analysis to determine whether or not a mark is primarily geographically deceptively misdescriptive, and therefore unregistrable under §2(e)(3) of the Lanham Act, the Board determined that the doctrine of foreign equivalents applied in this case, where the mark, EMPORIO ITALY translated into EMPORIUM ITALY. The Board found that not only would Italian-speakers stop and translate the mark, but also, “non-Italian speaking American consumers would readily perceive the mark as ‘Emporium Italy’ because the English translation is substantially similar in appearance and sound to Applicant’s mark EMPORIO ITALY.”

Starting with the first prong of the inquiry the Board found that, when considering the mark in its entirety, the primary significance of EMPORIO ITALIA is the generally known geographic location, Italy.  The examining attorney provided internet and gazetteer evidence showing that bedding and textiles are among Italy’s main exports. In submitting such evidence, he met the initial burden of establishing a goods/place association between the applicant’s goods and the generally known location, Italy. The applicant argued that his mark was “suggestive, arbitrary, or fanciful, such as when a geographic mark may indicate that a product is stylish or of high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.” The Board did not accept the reasoning

The second prong of the inquiry considers whether the relevant public would be likely to believe that the goods originate from the location identified in the mark, though they do not. This prong was satisfied with the applicant’s statement that the goods will originate from India. “The goods are not and will not be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.”  Therefore, given this statement and the satisfaction of the first prong, it is likely that relevant consumers would believe the goods originated from the place identified in the mark. The third and final prong of the test, which questions the materiality of the misrepresentation, was satisfied as well. The Board said, “We infer from this evidence that a substantial portion of customers in the market for ‘bedsheets; pillowcases; comforters; bedspreads’ will be motivated to purchase Applicant’s goods because of the mistaken belief that the goods originate in Italy.”  In light of the evidence provided, the Board affirmed the refusal for registration under §2(e)(3) of the Lanham Act.

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