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A Case in Which Two Marks Are Not Confusingly Similar

Sunday, 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.

The End of the Disparagement Clause

Saturday, February 8th, 2020

Under Section 2(a) of the Lanham Act, there are certain types of marks that may never be registered with the USPTO. Last week, one of the posts discussed deceptive marks, under Section 2(a), which is one type of mark that may not be registered. Under 15 U.S.C. §1052(a) other marks that may not be registered include those which consist or are comprised of “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods …”

The Disparagement Clause was brought into question in the case Matal v. Tam, 137 S. Ct. 1744 (2017).  In that case, the U.S. Supreme Court held that the Disparagement Clause violates the First Amendment’s Freedom of Speech Clause and that it is no longer a valid ground on which to refuse registration or cancel a registration.

In 2015, Simon Tam applied to register his trademark THE SLANTS for the name of his Asian-American band. The registration was denied under §2(a) of the Lanham Act because it was considered disparaging to those of Asian descent. When determining whether or not a mark is potentially disparaging, an examining attorney conducts a two-prong test, (1) The likely meaning of the mark at issue and, “if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols,” the examining attorney will move to the second part of the test, (2) “Whether that meaning may be disparaging to a substantial composite of the referenced group …” If the examiner finds that a “substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark…to be disparaging in the context of contemporary attitudes,” a prima facie case for disparagement is created. At that point, it is the applicant’s burden to prove that the trademark is not disparaging.

Tam argued that he was using the mark to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. Regardless, his mark was denied, and he appealed to the Trademark Trial and Appeal Board that affirmed the refusal for registration. Ultimately, Tam appealed to the Supreme Court that concluded that the Disparagement Clause was unconstitutional. The majority found that the clause: “engages in viewpoint-based discrimination, regulates the expressive component of trademarks, and consequently cannot be treated as commercial speech and that the clause is subject to and cannot satisfy strict scrutiny.”(Citation omitted) Justice Alito, who wrote the majority opinion, said: “We have said time and again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.’”

In Matal the central issue was how the public would perceive the potentially offensive mark. While Tam’s goal was to “reclaim” the disparaging phrase, the USPTO originally denied the trademark registration because it was worried that instead of helping dissolve the negative connotation of the term “slant,” it would have the opposite effect for those who identified as Asian American. Something of note that this case has brought to light, is the portion of the two-prong disparagement test which says, “…to be disparaging in the context of contemporary attitudes.” In 2017, 71 years after the Disparagement Clause was written, contemporary attitudes may be shifting and by finding the Disparagement provision a violation of the First Amendment’s Freedom of Speech Clause, it can potentially help in contributing to a more liberal marketplace of ideas.

One of the most immediate and potent effects of the Supreme Court’s official ban on the Disparagement Clause under §2(a) of the Lanham Act, was in regard to the Washington Redskins football team. The Washington Redskins, founded in 1932, was originally named the Boston Braves until they relocated to Washington, D.C. and took on their current moniker in 1933. Between 1967 and 1990, the USPTO registered six trademarks affiliated with the Washington Redskins, each trademark containing the term REDSKIN. Since 1992, the registrations, the previous team owners and current owner, Dan Snyder, have been in constant legal battle with Native American groups who’ve opposed the name and contended that it is in fact disparaging. In 2015, a federal judge canceled the trademark registrations and revoked their trademark protections. However, in light of the 2017 Matal decision, in 2018,  the U.S. Court of Appeals for the Fourth Circuit vacated the decisions that had previously canceled the Washington NFL team’s federal trademark registrations.

In wake of the Matal decision, the portions of the Trademark Manual of Examining Procedure (TMEP) §1203, that specifically apply to the disparagement provision no longer apply. The USPTO Examination Guide 01-17  provides examination guidance after Matal v. Tam for the Disparagement Clause and was issued on June 26, 2017. The guide states: “Applicants that received an advisory refusal under the disparagement provision and were suspended pursuant to Examination Guide 01-16 will be removed from suspension and examined for any other requirements or refusals. If an application was previously abandoned after being refused registration under the disparagement provision, and is beyond the deadline for filing a petition to revive, a new application may be filed.”

After the official barring of the Disparagement Clause, another trademark case, Iancu v. Brunetti, 139 S. Ct. 2294 (2019), was heard before the Supreme Court. The trademark, FUCT,  was previously deemed unregistrable under §2(a) which bars registration of marks that consist of or comprise immoral or scandalous matter.   On June 24, 2019, the Supreme Court held that the Scandalous Clause violates the First Amendment of the Constitution because it “impermissibly restricts free speech.” Much like the Disparagement Clause, the Supreme Court held that the scandalous provision was unconstitutional under the First Amendment’s Freedom of Speech Clause because it was facially viewpoint-based. On July 3, 2019, the USPTO issued Examination Guide 2-19 which provides guidance for §2(a)’s Scandalous Marks Provision after Iancu v. Brunetti. The Examination Guide states: “that a mark may consist of or comprise “immoral” or “scandalous” matter is no longer a valid ground on which to refuse registration or cancel a registration.”  As stated by the Harvard Law Review, “If other provisions are invalidated due to their content-based nature, there will be little left for the government to use as a basis for restricting trademarks.” 133 Harv. L. Rev. 292 (2019)

 

Deceptiveness Cases

Saturday, February 8th, 2020

The last post covered deceptive marks, which are marks that are unregistrable under §2(a) of the Lanham Act. The Trademark Manual of Examining Procedure specifies that “Neither a disclaimer of the deceptive matter nor a claim that is has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter.”  A deceptive mark can be a single deceptive term, a deceptive term within a composite mark which also features non-deceptive elements or a term or portion of a term that suggests a deceptive quality, characteristic, function, composition or use. Deceptive marks can also be marks that falsely portray the material content of a product and marks that are geographically misdescriptive.

As discussed in the post on deceptive marks, the Court of Appeals for the Federal Circuit created a three-prong test to determine whether or not a mark may be deceptive and therefore unregistrable under §2(a) of the Act; see In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). If a mark meets the first two prongs of the test, it may be considered deceptively misdescriptive under §2(e)(1) of the Lanham Act. If a mark satisfies all three prongs of the test, it may be considered deceptive. If an examining attorney has found a mark to be deceptive, and therefore unregistrable with the USPTO, an applicant may go before the Trademark Trial and Appeal Board on appeal. The Trademark Trial and Appeal Board will either affirm the refusal for registration or reverse the decision in favor of the applicant. Below are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §2(a) of the Lanham Act:

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the deceptive mark NU DOWN, for pillows and bedding “made in whole or substantial part of synthetic down or down alternatives.” For the first element of the three-prong test, the applicant did not argue that the term DOWN was descriptive and had disclaimed it previously. However, the applicant argued that the mark NU DOWN was not misdescriptive because the term NU could imply something aside from natural down. The Board found that the term “down,” in the dictionary presumptively meant natural down, and if not precisely natural down, something comparable. It was found that when used in commerce, relevant purchasers believed the term “down” to mean natural down unless otherwise stated.  Turning its attention to the term NU, the Board held that even if it was understood as the phonetic version of the term “new,” it could simultaneously mean “an updated or modern version” of natural down instead of new and substitute material. The Board found that the applicant’s mark satisfied the first prong of the test and was misdescriptive of the identified goods. “The addition of the word ‘NU’ to the word ‘DOWN’ would not inform purchasers with any clarity that Applicant’s goods are not filled with down.” Regarding the second element of the test, relating to whether or not prospective purchasers are likely to believe that the misdescription actually describes the goods, the applicant admitted that the term “down” is often used in the particular industry in reference to products containing natural down. In satisfying the second prong of the test, the Board concluded that although the applicant’s packaging explained the products were down alternative, there was no guarantee that consumers would read the provided explanation. Furthermore, those purchasing the goods online may not read the fine print labeling required by the federal Textile and Wool Acts. “The mark standing alone must pass muster and this it fails to do.” Finally, the third element of the test, in regard to whether or not the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase, the Board found that a significant number of relevant consumers would likely be interested in knowing what material was used in the applicant’s goods for multiple reasons including thinness or bulkiness of the fill, allergy issues, animal cruelty issues and monetary factors. Because of this, the Board concluded that the misdescription in the applicant’s mark would likely affect the purchasing decisions of a significant portion of relevant consumers. In summation, the Board affirmed the Examining Attorney’s refusal of registration for deceptiveness under §2(a) of the Lanham Act.

In a 2018 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the deceptive mark P6 CHROME, for “dietary and nutritional supplements that do not contain chromium.” The Board found the mark to be deceptive because it was a misdescription of the identified goods which could lead consumers to believe that the supplements contained chromium and would, in turn, affect a significant portion of relevant consumers. In an effort to rebut this, the applicant claimed that the term “chrome” simply referred to the color of the packaging. The Board then turned to the three-prong test created by the Court of Appeals for the Federal Circuit to determine whether or not a mark is deceptive. To satisfy the first element of the test, the Board must decide whether or not the term misdescribes the character, quality, function, composition or use of goods. In this instance, both the applicant and the Examining Attorney submitted dictionary definitions that established that the term “chrome” meant chromium. It had been previously established that the applicant’s goods did not contain chromium, therefore the term was misdescriptive. The applicant argued that the term “chrome” had more than one meaning, but the Board held that alternative meanings held no merit in the context of the goods for which the mark was used. The record supplied evidence showing that there were already many dietary and nutritional supplements containing chromium sold under marks that used the term “CHROME.” Though the applicant argued that term “chrome” was in regard to the color of the packaging, the Board dismissed it saying that not all potential purchasers would see the packaging, only the mark and would likely perceive the term “CHROME” to be a description of an ingredient in the identified goods. The second prong, which asks if consumers are likely to believe the misdescription, was satisfied since the applicant’s goods did not contain chromium, however, it was previously established that many dietary and nutritional supplements do contain chromium. The Board went on to explain that not only average customers but “sophisticated purchasers” as well would be likely to believe the misdescription. “Sophisticated” customers would likely be familiar with the health benefits of chromium and be aware of other dietary and nutritional supplements that contained chromium and were sold under marks containing the term “CHROME.” The third prong of the test, regarding whether or not the misdescription would affect the purchasing decisions of a significant portion of relevant consumers, was satisfied as well. The Board found that though not all consumers would be aware of the potential health benefits of chromium, consumers who frequently purchased supplements “would find Applicant’s supplements more desirable because of the perceived representation that they contain chromium.” In this manner, all three prongs of the test were satisfied, and the Board affirmed the refusal of registration for deceptiveness under §2(a) of the Lanham Act.

Deceptive marks may not be registered with the USPTO under any circumstance. Unlike marks that have been deemed deceptively misdescriptive under §2(e)(1) of the Lanham Act, marks found to be deceptive under §2(a) cannot be federally registered even with a claim of acquired distinctiveness under §2(f) of the Lanham Act; nor is it enough for the applicant to disclaim the deceptive material.

Deceptive Marks

Friday, January 31st, 2020

An earlier post discussed marks that were found to be deceptively misdescriptive under §2(e)(1) of the Lanham Act. This post will discuss marks that are found to be deceptive under §2(a) of the Act. The Lanham Act, 15 U.S.C. §1052(a), bars registration of deceptive matter on either the Principal Register or the Supplemental Register. The Trademark Manual of Examining Procedure specifies that, “Neither a disclaimer of the deceptive matter nor a claim that is has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter.”

A deceptive mark can be a single deceptive term, a deceptive term within a composite mark which also features non-deceptive elements or a term or portion of a term that suggests a deceptive quality, characteristic, function, composition or use. Deceptive marks can also be marks that falsely portray the material content of a product and marks that are geographically misdescriptive.

To determine whether or not a mark consists of or comprises deceptive matter, the Court of Appeals for the Federal Circuit created a three-prong test; see In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The test is the same one used to determine whether or not a mark is deceptively misdescriptive. The three parts, as outlined in the Trademark Manual of Examining Procedure, are as follows: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

If the first two prongs are satisfied, then a term is deceptively misdescriptive under §2(e)(1) of the Lanham Act. If the first two, and the third prong are met, then the mark is deceptive. A deceptively misdescriptive mark may feature a misdescription that is a relevant factor that may be considered in the purchasing decision. However, if a mark features a misdescription that is a material factor considered in the purchasing decision, it is deceptive under §2(a).  In any case where it is not clear whether or not a misdescription would materially affect a decision to purchase, an examining attorney should refuse federal registration under both §2(a) and §2(e)(1) of the Lanham Act.

In order for an examining attorney to establish a prima facie case of deceptiveness, he/she must supply sufficient evidence to show that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a “significant portion of the relevant consumers.” To supply such evidence, the examining attorney must produce evidence that the misdescriptive quality or characteristic would make the goods or services “more appealing or desirable to prospective purchasers.”

When determining whether a mark is deceptive or not, there are certain objective criteria that an examining attorney must analyze in deciding if a misdescriptive term is a material factor or not. Often, if there is evidence of “objective inducement to purchase” within or comprising the mark, it supports a notion that a reasonable number of relevant consumers would likely be deceived. Five common objective criteria considered when materiality are, (1) Superior Quality, (2) Enhanced Performance or Function, (3) Difference in Price, (4) Health Benefit and (5) Religious Practice or Social Policy. If an examining attorney can provide evidence showing that the goods or services for which the mark is being used do not contain the above criteria, then the mark will be deemed deceptive.

The same evidence used to show that a term is deceptively misdescriptive can also be used to establish that a mark is deceptive. This includes Internet searches using the objective criteria and applicant’s own advertising materials including specimens, brochures, web pages, press releases or product or service information sheets. An examining attorney must also record any instances in which an applicant attempts to benefit as a result of the potentially deceptive term. Instances wherein advertising materials contain false ascertains pertaining to the deceptive wording must be recorded as well. An applicant’s intent to deceive may also provide strong evidence in determining whether or not a mark is deceptive, though showing intention is not a requirement under §2(a) of the Act.

A mark that is found to be deceptive under §2(a) of the Lanham Act may, under no circumstance, be registered on either the Principal Register or the Supplemental Register. However, if a mark is found to be deceptively misdescriptive, it may be eligible for registration under §2(f) of the Act if it has acquired distinctiveness, or on the Supplemental Register if appropriate.

Most Recent Rulings on Descriptiveness

Friday, January 31st, 2020

As discussed on the post regarding merely descriptive marks, when determining whether a mark is merely descriptive or not, the decision must be made in direct relation to the goods or services with which it is being used. An examining attorney at the USPTO must look at the possible significance that the mark would have to the general consumers of the goods or services in the marketplace. Often, marks are considered merely descriptive under §2(e)(1) of the Lanham Act because they are terms that could be used to describe an entire category of goods or services. If a mark has been deemed merely descriptive and therefore unregistrable with the USPTO, an applicant may go before the Trademark Trial and Appeal Board on appeal. The Trademark Trial and Appeal Board will either affirm the refusal for registration or reverse the decision in favor of the applicant. Below are some of the most recent 2019 Trademark Trial and Appeal Board decisions affirming refusal for registration under §2(e)(1) of the Lanham Act:

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark 19 CRIMES, for video and audio works and production, distribution and rental of recorded entertainment. The Board agreed with the Examining Attorney that the mark conveys an immediate knowledge of a feature of the goods or services, “namely, that the information and entertainment provided relates to the 19 crimes of 18thand 19th Century Britain that led to involuntary colonization in Australia.” The applicant argued that the mark was more suggestive than descriptive because the term 19 CRIMES does not directly provide any information about the goods or services for which it is being used. He explained that though his intended goods and services may revolve around that period of time, the material will be centered on unique stories of a few “incorrigible rogues” and their lives. The Board then stated that the mark could not be looked at in such a specific light, but in the context of the applicant’s goods and services. Continuing, the Board said that mark was broadly worded and encapsulated the 19 crimes wholly. In turn, the applicant argued that the mark was suggestive because his goods and services related to the individuals who were transported to Australia, not the crimes themselves; therefore, the mark does not “immediately or directly describe any feature, characteristic or quality of those goods or services.” The applicant said it would take the consuming public some stretch of the imagination to relate the mark to the goods and services for which it is being used. The Board disagreed but still gave an observation on the mark: “…merely describe[s] the nineteen crimes themselves under the broadly stated subject matter of Applicant’s goods and services.” In this fashion, the Board held the mark to be merely descriptive.

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark SKEETER BAND, in connection with “mosquito repellent bracelets.”  In the first step of examination, the Examining Attorney submitted dictionary definitions for each term, “skeeter” and “band.” In doing so, the Examining Attorney found “skeeter” to mean a mosquito and “band” to mean “a flat, narrow band of material that you put around something.” Not only did the Attorney submit dictionary definitions, but multiple third-party registrations where either the word “skeeter” or “band” was disclaimed. The Board concurred that the terms SKEETER and BAND were merely descriptive when used in connection with the product. Furthermore, the Board also found that the two words taken together did not create a new or incongruous meaning, they held their original meaning and merely conveyed knowledge of a quality, feature, function or characteristic of the good. The applicant argued that SKEETER had more than one meaning in the dictionary, but the Board pointed out that the meaning of the term must be determined in direct relation to the goods, not in the abstract. Following, the applicant argued that SKEETER is an informal term meaning “mosquito,” however, the dictionary recognizes SKEETER as a common synonym for mosquito and, “is not so informal or obscure as to defy consumer understanding.” In a final argument, the applicant argued that SKEETER BAND did not instantly translate to “mosquito repellent band,” but the Board dismissed this argument in saying, “it is well settled that consumers have a habit of shortening names.” In light of this, the Board held that the mark was merely descriptive.

In another 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark BIKESTYLE, in connection with cycling apparel ranging from gloves to cycling jerseys and rainwear. The Examining Attorney found that the mark’s “wording merely describes a characteristic of applicant’s goods, specifically, a type of fashion made for riding a bicycle.” To support this statement, the Attorney provided dictionary definitions for the terms “cycling,” “bike” and “style.” In response, the applicant said that the mark did not refer directly to “fashion made for riding a bicycle…” rather it referred to the cyclists’ “way of life.” The applicant went on to argue that the mark was suggestive because it did not immediately convey the idea of clothing, and it would take the consuming public a moment to connect the mark with the goods. In consensus with the Examining Attorney, the Board maintained that the terms together, as a composite, were merely descriptive and did not evoke a “new or unique commercial impression.” As a result, the applicant argued that the term “style” had multiple meanings. Again, the Board rejected this argument saying, “That a term may have other meanings in different contexts is not controlling.” Simply, the mark is to be examined in direct relation with the goods or services for which it is used, not in the abstract. In a final argument, the applicant reasoned that no other third-party used the terms “bikestyle,” “bike style” or “bicycle style.” However, the Board reiterated that it is not necessary for the USPTO to show that others have used the mark or term in a similar fashion. The Board stated, “it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.” In sum, the Board concluded that the mark was merely descriptive in accordance with the three reasons above.

When it comes to determining whether or not a mark is merely descriptive, each case is determined based upon its own set of facts. The three cases above were all deemed merely descriptive and therefore the marks were not afforded protection under §2(e)(1) of the Lanham Act. In order for a merely descriptive mark to be afforded protection, it must acquire a secondary meaning. However, even if a mark acquires a secondary meaning, it is not a guarantee that it will be eligible for registration with the USPTO.

Deceptively Misdescriptive Marks

Tuesday, January 28th, 2020

Under §2(e)(1) of the Lanham Act, there are several types of marks that may not be registered with the USPTO: merely descriptive marks, deceptively misdescriptive marks, primarily geographically descriptive marks, geographically deceptively misdescriptive marks, marks that are primarily a surname and marks that compromise any matter, used wholly, is functional. This article will explore marks that are deceptively misdescriptive. A mark is deceptively misdescriptive if it immediately conveys a certain idea, but the idea is false, although plausible. Simply, a mark may not be registered, if people who encounter the mark, in connection with the goods or services for which it is being used, are likely to believe the misrepresentation. Deceptively misdescriptive marks fall somewhere between marks that consist of (or) comprise immoral, deceptive or scandalous matter, which may not be registered under §2(a), and arbitrary marks which may be registered on the Principal Register.

The Federal Circuit devised a two-prong test to determine whether a mark is deceptively misdescriptive or merely deceptive.

The trademark examining attorney must first decide if the term is misdescriptive of the character, quality, function, composition or use of the goods or services for which it is being used.  It is the examining attorney’s job to record evidence demonstrating why the mark is misdescriptive. Specifically, the record must show the meaning of the term in question, and that the identification indicates that the applicant’s goods or services do not have the feature or characteristic. Several examples of evidence are dictionary definitions, Internet websites, point-of-purchase displays, advertising materials, product information sheets, hang tags and trade journals. An applicant’s statement in reference to his/her goods or services may also satisfy the first component of the test. An example of a misdescriptive term is APPLE for computer products. However, the consuming public is unlikely to believe the misrepresentation conveyed through the mark. This would make the misdescriptive term an arbitrary mark.

The second component of the test examines whether the idea conveyed is plausible, and how likely the consuming public would be to believe the misrepresentation of the mark in connection with goods or services for which it is being used. In order to prove this prong of the test, an examining attorney must provide evidence that the description conveyed by the mark is plausible by demonstrating that potential consumers regularly encounter goods or services that contain the features or services in the mark. For example, in a 1988 Federal Circuit case, an applicant attempted to register the mark LOVEE LAMB for seat covers that were not made of the lamb. In order to demonstrate the believability of the idea conveyed in the mark, the examining attorney provided evidence that seat covers can be made of lambskin and sometimes are made of lambskin, therein proving that the consuming public would be likely to believe the misrepresentation conveyed by the mark. Much like the first prong, an applicant’s hangtags, labels, advertising and product information may also provide evidence of the believability of the misdescription.

Furthermore, the fact that the true nature of the goods or services is revealed by other elements on the labels, advertisements or other materials with which the mark is connected does not preclude a determination that a mark is deceptively misdescriptive.

Following is an example of a mark that was refused registration because it was deceptively misdescriptive under §2(e)(1) of the Lanham Act.

In a 2006 precedential opinion by the Trademark Trial and Appeal Board, the Board affirmed refusal for registration of the deceptively misdescriptive mark SEPTEMBER 11, 2001, for books and media services. The examining attorney provided evidence that established that the date of Sept. 11, 2001, “acquired special significance in America.” The examining attorney went on to clarify that the date was used as a common reference to the terrorist attacks that occurred on that date. In satisfying the first prong of the two-prong test, the Board determined that the term was misdescriptive in connection to the applicant’s goods which did not in any way cover the events that took place on Sept. 11, 2001. In a similar fashion, the second prong was satisfied when the Board ruled that in light of the many books, articles and shows about the events that took place on that date, it would be likely for consumers to believe the misdescription of the mark. The Board concluded, “While the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services, that does not prevent the mark from being deceptively misdescriptive.”

Marks that have been refused registration under §2(e)(1) of the Lanham Act on the ground of deceptive misdescriptiveness may be registerable under §2(f) of the Act if they have acquired distinctiveness, or on the Supplemental Register if appropriate. Marks that have been found deceptive under §2(a) of the Act may not be registered on either the Principal Register or the Supplemental Register in any case.

 

The Line Between Merely Descriptive Marks and Suggestive Marks

Tuesday, January 28th, 2020

Distinguishing a merely descriptive mark and a suggestive mark is crucial to determining whether protection is afforded under the Lanham Act. Since the categorization is a question of fact, each case must be analyzed based on its own merit. If a trademark examining attorney deems a mark merely descriptive an applicant may respond and argue that the mark is suggestive. If the Examiner maintains the refusal, the applicant may appeal to the Trademark Trial and Appeal Board. The TTAB will either affirm the original decision or reverse it in favor of the applicant. Two types of cases with similar considerations and different outcomes are presented below:

The first set of examples pertain to considerations relating to terms in the dictionary. Simply because a term is not found in the dictionary, does not control whether or not it is eligible for registration. If an examining attorney can show that the term has a well understood and recognized meaning, it may be merely descriptive. Moreover, if the term is found in the dictionary, the matter at hand is establishing what the term means to consumers and its current usage, which may hold more weight than an older definition.

In a 2017 precedential opinion by the Trademark Trial and Appeal Board, the decision by an examining attorney that the mark WELL LIVING LAB was merely descriptive was affirmed. Starting with “lab,” defined as a “room or building equipped for scientific experiments, research…” the Board agreed that the term simply referred to the location where the applicant’s research services were held. Regarding the phrase “well living,” its meanings in the Oxford Dictionary are all similar, for example, “the action or fact of leading a good life, especially with respect to moral virtue.” Though the definitions included remarks referring to the outdatedness of that meaning, the Board turned to evidence provided by the examining attorney that the term “well living” was essentially synonymous with the descriptive phrase “health and wellness” in the mind of the consumer. The Board held that the mark WELL LIVING LAB constituted “no more than the sum of its parts.”

By way of contrast, in a 2020  non-precedential opinion, the Trademark Trial and Appeal Board found the mark ORIGINAL GRAIN suggestive. The Board analyzed both terms in the mark that was being used to distinguish an applicant’s restaurant service, separately. First looking at the noun, “grain,” the Board in concurrence with the examining attorney found that the term in itself was merely descriptive because the average consumer would find the term to mean a type of food in the context for which it was being used, both in a commercial light and as listed on the applicant’s menu. In regard to the word “original,” the examining attorney argued that the term, understood by others in the food and beverage industry and by consumers, referred to whole grains or unrefined grains. However, the Board found that there was insufficient evidence to show that the consuming public would automatically associate the mark ORIGINAL GRAIN with whole grains or unrefined grains. Conclusively, the Board found that taken as a whole, the term may be suggestive of “wholesome grain-based menu items” or “healthy eating” based on the grains served at the applicant’s restaurant.

The second set of examples relate to the consideration of terms with more than one meaning. When determining descriptiveness, the trademark examining attorney must look at the mark in relation to the goods or services for which registration is sought. If the term’s primary significance is descriptive in relation to at least one of the owner’s goods or services and does not create either a double entendre or an incongruity, then the mark is merely descriptive.

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark ARKIVE, for a data sharing and cloud computing backup service. Unlike the previous cases which involved dictionary meanings, the applicant, in this case, did not try to dispute that ARKIVE was simply a misspelling of the defined term “archive.” The applicant argued that the term was a unique combination of the two terms “ark” and “archive” which together, created a double entendre. The applicant reasoned that the term “ark” in reference to the Ark of the Covenant and Noah’s Ark, would convey a sense of security and stability in the minds of the consuming public. However, the Board concurred with the examining attorney that the meaning of the mark, referencing the Ark of the Covenant or Noah’s Ark,  suggested by the applicant, would not be apparent to the consuming public in connection with the services for which the mark was used. ARKIVE was held merely descriptive.

In a 2008 precedential opinion, the Trademark Trial and Appeal Board reversed the refusal to register the merely descriptive mark THE FARMACY, in connection organic herbs and products sold in the equivalent of a pharmacy. The examining attorney argued that the mark was simply a phonetic misspelling and merely descriptive of the location where the goods were sold. The applicant contended that the mark was intended to be a “whimsical term” playing on the two words “pharmacy” and “farm.” The mark was meant to convey the idea that the applicant sold “…natural, pure and completely unprocessed products.” The Board agreed with the applicant that mark held a dual meaning in regard to the nature of the goods and the combination of the two separate terms “pharmacy” and “farm” thereby creating the double entendre FARMACY. In this fashion, the Board held that the mark was suggestive.

The four cases detailed above highlight the thin line between marks that are merely descriptive and those that are suggestive. The considerations to mere descriptiveness determine whether a mark is eligible for registration on the Principal Register or the Supplemental Register. A merely descriptive mark may still be eligible for registration if it acquires secondary meaning. A suggestive mark is afforded greater protection under the Act because it is eligible for registration on the Principal Register without acquiring a secondary meaning.

Merely Descriptive Marks

Monday, January 20th, 2020

Under the Trademark law, merely descriptive marks are not entitled to registration on the Principal Register. Merely descriptive marks are marks that describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Unlike suggestive marks that take a certain amount of thought to associate the mark with a good or service, merely descriptive marks convey an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services in question. Both types of marks (Descriptive and Suggestive) are discussed at length in the post on the Spectrum of Distinctiveness.

As discussed in the post on Secondary Meaning, a merely descriptive mark may not be afforded the protections afforded under the Lanham Act without having acquired distinctiveness. Simply because an owner may be the first and only user of a mark that may be descriptive does not mean the mark is entitled to registration by the U.S. Trademark Office or even protection by the courts.

When determining whether a mark is merely descriptive or not, the decision must be made in direct relation to the goods and services with which the mark is used. An Examining Attorney at the Trademark Office must look at the possible significance that the mark would have to the general consumers of the goods or services in the marketplace. When searching for the context in which a mark may be used, sources include websites, publications, labels, packages, advertising material, explanatory text on specimens for the goods or services and consumer surveys.  Marks that are merely descriptive, are often terms that could be used to describe an entire category of goods or services; therefore, they are not inherently associated with one specific brand of goods or services. For example:

In 2016, the Trademark Trial and Appeal Board affirmed an examining attorney’s decision in finding the mark “BEST PROTEIN,” merely descriptive of the owner’s dietary and nutritional supplements. In addition to other elements, the examining attorney pointed out that protein is a common and heavily promoted element in dietary and nutritional supplements, he furthered his argument documenting several products that included the term protein not only in the marks themselves but listed on the ingredients label as well.

Furthermore, a term does not have to describe all of the purposes, functions, characteristics or features of a good or service to be considered merely descriptive. It can be classified as such if the term describes one important function, attribute or property. In a similar fashion, the term does not need to describe all of the goods or services identified on the application, so long as it describes one of them. An example of this can be seen in this decision:

In 2018, the Trademark Trial and Appeal Board affirmed a trademark examining attorney’s decision that the mark “BUYER ENGINE” was merely descriptive in reference to the owner’s real estate marketing services. Along with numerous other reasons, the Board stated that the mark refers “to a significant feature of the services themselves…”

A mark may also be considered merely descriptive if the listed goods or services fall within a subset of the of their respective class identified by the term.

Assessing whether a mark is merely descriptive depends upon the facts in each case.

 

Our Office can help you determine whether your mark is merely descriptive or suggestive for the goods and services with which it is connected.

 

What is Secondary Meaning/Acquired Distinctiveness?

Monday, January 20th, 2020

When it comes to choosing a trademark, it is important to understand that trademarks are categorized on the Spectrum of Distinctiveness. There are five categories of marks from weakest to strongest: generic, descriptive, suggestive, arbitrary and fanciful. Generic terms may not be trademarked.

Descriptive marks, which are the second weakest, may become eligible for trademark protection under the Lanham Act if they acquire a secondary meaning (i.e. acquires distinctiveness). A secondary meaning is when a descriptive term having a common meaning, takes on a different meaning so that, over time, in the minds of the public, the term becomes synonymous with an owner’s specific goods or services. An owner is required to prove that the term’s secondary meaning is associated with the owner and not the goods or services in general. An example of a descriptive mark that has acquired a secondary meaning is SHARP for the brand of televisions. While the general public knows the meaning of the term “sharp” as a general descriptor, that is descriptive of the picture on the television, it has acquired a secondary meaning, and is now associated with the specific brand of televisions, not just televisions in general.

When determining whether or not a mark has acquired distinctiveness the courts consider four factors: (1) the length and nature of a mark’s use, (2) the nature and extent of advertising and promotion of the name, (3) the efforts of the owner to promote a conscious connection between the name and the business and (4) the degree of actual recognition by the public that the name designates the owner’s product or service.

Regarding the length and nature of a mark’s use, the mark must be used for a minimum period of five years exclusively and continuously in order to be considered eligible for protection. However, even if the owner has met the five-year minimum period of exclusive and continuous use, it is not a guarantee that the Trademark Office and courts will accept that the mark has acquired distinctiveness.

In terms of the second factor, the Trademark Office and courts consider the extent to which the owner advertised and promoted the name in connection with his/her goods or services. Examples of what courts consider when assessing this factor include the geographical extent of the advertisements and promotional efforts, advertising expenditure reports and the number of sales or consumers in correlation with the advertisements and promotions.

The third factor, the owner’s efforts to promote a conscious connection between the name and the business, relates to what steps the owner has taken to make his/her mark synonymous with his/her goods or services. Promotional films highlighting the product or service’s unique strengths and qualities in connection to the mark are an example of this.

Finally, the fourth and often most telling factor is the degree of actual recognition by the public that the name designates the owner’s product or service. Actual recognition can be proven through direct evidence such as consumer testimonies and market surveys. Testimonies or signed statements by other providers in the industry are powerful indicators of actual recognition as well.

Though these are the four criteria that the Trademark Office and courts assess when considering if a mark has acquired secondary meaning, there are no absolutes. Meaning, an owner who can provide minimal evidence to support each of the four components may be denied protection, while an owner who can provide strong evidence for three of the four components may be deemed eligible for protection. If the Trademark Office or a court fails to find secondary meaning strong enough for federal protection, an owner can continue to use his/her mark under common law use.

 

The Difference Between the Principal Register and the Supplemental Register

Tuesday, January 14th, 2020

There are two separate and distinct federal trademark registers: the Principal Register and the Supplemental Register.

Fanciful, arbitrary, suggestive marks and marks that have become distinctive through exclusive and continuous use in commerce for more than five years are eligible for registration on the Principal Register.  Once a mark is on the Principal Register, it is afforded the full range of benefits and protections under the Lanham Act. A successfully registered mark is prima facie evidence of registrant’s ownership and exclusive nationwide right to use the registered mark in connection with the specified goods or services. 15 U.S.C. § 1057(b).  The registration provides constructive notice of a claim of ownership which means that an opposing litigant cannot raise a defense of good-faith adoption against a mark on the Principal Registration. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072.  Once a mark on the Principal Register has been in continuous use in commerce for five years, it may become incontestable and immune from certain attacks and defenses. 15 U.S.C. § 1065.  In a successful infringement action, the registrant may seek increased statutory damages.  15 U.S.C. § 1117 and 18 U.S.C. § 2320.  Finally, marks registered on the Principal Register can be used to stop the importation of infringing goods or services into the United States. 15 U.S.C. § 1124. There are additional benefits to registration on the Principal Register which are held in common with marks on the Supplemental Register.

The Supplemental Register is often an option for weak marks that can potentially identify goods or services from a particular source. These are the marks that are already in use in commerce and have been refused registration on the Principal Register because they are merely descriptive, deceptively misdescriptive, primarily geographically descriptive or primarily merely a surname. The Supplemental Register is preferential to merely continued common law use because it affords certain protections.  Marks on either the Principal Register or on the Supplemental Register may give notice of federal registration by using the encircled “R;” the registrants have the right to assert claims of infringement of a registered mark in federal court; the registration provides notice to those conducting clearance searches; the registration bars registration of subsequently filed confusingly similar marks and the registration may serve as the basis for foreign filing.

However, marks on the Supplemental Register do not enjoy a presumption of validity, ownership and exclusive right to use the mark, they may not be recorded with Customs to prevent importation of counterfeits and they may not become incontestable after five years of exclusive and continuous use.  After five years of exclusive and continuous use in commerce, a Supplemental Register registrant is eligible to file for registration of his/her mark on the Principal Register, only if the mark has acquired a secondary meaning. Only if the mark has become distinctive in connection with the goods or services will registration on the Principal Register be allowed.

When registration is not available on the Principal Register, trademark owners should explore the option of Supplemental Registration because it affords many advantages over common law use.

 

 

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