Archive for the ‘Trademarks’ Category

Section 15 Declaration of Incontestability

Sunday, October 18th, 2020

The last two articles discussed the §8 Declaration of Use affidavit and the §9 Application for Renewal affidavit. Both of these documents must be filed within the timeline given and are necessary in order to maintain federal trademark status. This post will discuss the §15 Declaration of Incontestability document, which unlike the other two, is not necessary, but beneficial.

As discussed, prior, the §8 must be filed between every fifth and sixth anniversary of the trademark registration. During the first anniversary deadline, the trademark owner may choose to file a §15 Declaration of Incontestability. After five years of consecutive use, an owner may file a §15, which declares the trademark may be incontestable. When a mark becomes incontestable, it means that the mark is immune from challenge. In order to maintain this status, the owner must continue to file all of the proper paperwork within the allotted time, because a generic mark or a mark abandoned for nonuse may not be declared incontestable.

Simply, when a mark is declared incontestable, it means that it is immune from legal challenge, yet a situation may arise where grounds for legal challenge are allowed. This will be discussed below. When a trademark owner is seeking incontestability, he must be able to show that (1) no final legal decision has been issued against the mark; (2) there is no challenge pending against the mark; (3) the §15 was filed within the deadline (between the fifth and sixth anniversary of the mark’s trademark registration) and (4) the mark has not been deemed generic.

For a mark that has achieved incontestability, the registration can only be challenged for invalidity on limited grounds: (1) the registration or the incontestable right to use the mark was obtained by fraud; (2) the registrant abandoned the mark; (3) the mark is used to misrepresent the source of its goods or services; (4) the infringing mark is an individual’s name used in his/her own business, or is otherwise prohibited or reserved under the Lanham Act; (5) the infringing mark was used in commerce first – prior to the incontestable mark’s registration;  (6) the infringing mark was registered first;  (7) the mark is being used to violate the antitrust laws of the United States; (8) the mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion; (9) the mark is functional in nature or (10) any equitable principles apply, including acquiescence, estoppel or laches.

It is imperative that throughout the life of the registration, the owner must continue to enforce his/her registration rights. Just because the mark has been declared incontestable, does not mean that the owner may neglect to file the appropriate documentation in a timely manner. Even with the §8, §9 and §15 a mark may still be canceled if the owner fails to keep up with the post-registration maintenance for the mark.

Application for Renewal under §9 of the Trademark Act

Sunday, October 18th, 2020

The previous post discussed filing a Declaration of Use under §8 of the Trademark Act, its importance and when it must be filed. This post will explain when and why it is necessary to file an Application for Renewal under §9 of the Trademark Act.

Simply, an Application for Renewal is a written request, by the trademark owner, submitted to the USPTO to keep the trademark active. The application must be filed within one year prior to the expiration of the registration, or within the six-month grace period after the expiration, which will come with a grace-period fee. However, if the §9 affidavit is not filed before the end of the grace period, the trademark registration will expire.

Every 10 years, the trademark owner must submit a combined Declaration of Use and Application for Renewal filing to the USPTO. The combined filing, along with a supporting specimen must be filed on a date that falls on or between the ninth and tenth anniversaries of registration. Or, for an extra fee of $100 per class, the documentation can be filed within the six-month grace period following the registration expiration date. Following the tenth anniversary of the trademark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

The combined filing must include the following: The trademark registration number; the name and address of the current trademark owner and a filing fee of $425 per class of goods or services listed in the registration.

Failure to submit any of the above documentation and supporting evidence will result in a trademark registration cancelation. Once the mark is canceled, the owner cannot have it revived or reinstated and must file a new trademark registration.

 

 

 

 

Filing a Declaration of Use under §8 of the Trademark Act

Sunday, October 18th, 2020

In a much earlier post on maintaining a trademark, filing a §8 affidavit was briefly touched on. However, this post will go more in-depth regarding what it is, what it does and why it’s required.

As a brief refresher, once an owner is granted a federal trademark registration, his rights can last indefinitely, as long as the mark is properly registered and continuously used in commerce in connection with the listed goods and services. Moreover, the owner must stick to a strict post-registration maintenance schedule. Understanding when and why to file a Declaration of Use is paramount to the maintenance of a trademark registration.

A §8 affidavit is simply a statement from the owner made to the USPTO affirming that the registered mark has been in continuous use for a five-year period. Along with the statement, the owner must also submit a specimen as evidence of use in commerce. The Declaration of Use, along with the specimen must be filed on a date that falls on or between the fifth and sixth anniversaries of registration (or for an extra fee of $100 per class,  it can be filed within the six-month grace period following the sixth anniversary).

If the owner fails to file the affidavit within the allotted time period, including the six-month grace period, the owner’s federal trademark rights will be canceled. If the rights are canceled, the only way to reclaim them is to file a new application for registration. However, it is important to note that simply because the federal trademark rights will be canceled, the trademark itself is not terminated and is still protected under common law and state rules.

Aside from the five-year mark, a Declaration of Use must also be filed along with a specimen when filing an Application for Renewal under §9 of the Trademark Act. The owner must file both affidavits on a date that falls on or between the ninth and tenth anniversaries of registration. (For an extra fee of $100 per class, it can be filed within the six-month grace period following the registration expiration date). Following the tenth anniversary of the mark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

In conclusion, a Declaration of Use under §8 of the Trademark Act is necessary for an owner to maintain federal trademark rights in his mark. The affidavit, along with the specimen serves as evidence to the USPTO that the mark has been used continuously in commerce for five years, for the goods and services listed. Failure to submit the declaration within the aforementioned deadlines will result in a cancelation of the mark’s federal trademark rights, and in order for them to be renewed, the owner must file a new trademark application. The following post will take a closer look at the importance of an Application for Renewal under §9 of the Trademark Act.

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

Sunday, 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

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.

Another Case Involving Likelihood of Confusion

Saturday, 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

Sunday, 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

Sunday, 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

Saturday, 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.

Geographically Deceptive Marks

Saturday, March 7th, 2020

An earlier post discussed deceptive marks, marks that may not be registered with the USPTO under §2(a) of the Lanham Act. This post will discuss marks that are geographically deceptive, which may not be registered on the Principal Register or the Supplemental Register.

There are four elements of a §2(e)(3) refusal under the Lanham Act: (1) The primary significance of the mark is a generally known geographic location (2) The goods or services do not originate in the place identified in the mark (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (4) The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.

In regard to the first three elements, the determination of whether the primary significance of the mark is a generally known location can be made “by showing that the mark in question consists of or incorporates a term that denotes a geographical location which is neither obscure or remote.” See In re Sharky’s Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992). For this element, the inquiry is whether the term at issue is primarily geographic respective to the mark, not whether the geographic reference dominates the mark. Thereafter, the focus shifts to the fourth element: determining materiality – whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods or services.

When it comes to determining materiality, which must be established to prove a geographic term is primarily deceptively misdescriptive under §2(e)(3) of the Act, or deceptive under §2(a), the tests differ slightly between determining materiality in cases involving goods, and those involving services.  To establish the materiality portion for goods, the evidence must show that: (1) The place named in the mark is famous as a source of the goods at issue, (2) The goods in question are a principal product of the place named in the mark; or (3) The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

In terms of determining materiality in cases involving goods, the Board has stated that it “looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods.” Evidence to establish a basis for materiality may be found on places such as third-party websites and magazine/gazetteer entries. If the evidence shows that the geographic area named in the mark is sufficiently known to lead purchasers to make a goods/place association, yet the record does not show that the relevant goods are a principal product of the location, the deception will likely be found not material. However, deception will most likely be found to be material if the relevant, or related goods, are a principal product of the geographic location named in the mark. Where locations that are “famous,” “renowned,” “well-known,” or “noted for” goods are in the mark, the location is clearly material.

Determining materiality in services is similar to the process used when determining the materiality in goods. However, when it comes to cases involving services, simply showing that the geographic location named in the mark offers a service is not sufficient, except for in cases where it rises to the level of fame. This quantifier is especially true when dealing with restaurant services. When customers attend a restaurant, they are aware of the location of the services and are less likely to associate the services with the place identified in the mark. However, if a customer sitting in a restaurant in one location would believe that: (1) The food came from the place named in the mark; or (2) The chef received specialized training in the place identified in the mark; or (3) The menu is identical to a known menu from the geographic location named in the mark. Regarding the question of fame, it can heighten the association between the services and the geographic location identified in the mark, which then raises the possibility of deception or materiality in the service mark, the location is material.  The Federal Circuit stated that “the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis…” See Les Halles De Paris, 334

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