Archive for January, 2020

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.

 

 

Selecting a Strong Trademark

Friday, January 10th, 2020

Not all trademarks are created equal. Certain types of marks are entitled to little or no protection, while others are afforded a strong scope of protection against competing marks. The purpose of a trademark is to inform consumers of the source of the goods or services. Strong trademarks can be used to prevent others from using confusingly similar marks (i.e. source identifiers) in connection with similar goods or services, so the consumer is not confused as to the source. Regardless of whether a mark is a common law mark or a registered mark, the strength of the rights acquired in the mark depends on its level of distinctiveness. There are five categories of trademarks within the spectrum of distinctiveness. Each category will be addressed from the weakest type of mark to the strongest.

Generic Marks: These marks are the weakest and an owner cannot use this type of mark to identify the source of his/her goods or services or register a generic mark with the USPTO. A generic term is one that describes a whole category or a group of goods or services. For example, an owner cannot register the trademark “COLA,” because the generic term describes an entire category of beverages. Because a generic term is simply a descriptor, no one owner can claim exclusive rights to it.

Descriptive Marks: These are the second weakest type of mark and often convey an immediate idea of the ingredients, qualities or characteristics of a good or service. Much like generic terms, these are words or phrases that are commonly used in connection with goods and services and can be difficult to distinguish from one another. An example of a descriptive mark would be “Clean Shower” for a shower cleaning product.  The mark is simply identifying what the product does and uses a descriptive term that is not unique to one specific product. Under the common law, a descriptive mark is entitled to little or no protection, with certain exceptions. The USPTO may not register “merely descriptive” marks. This is because registration would possibly prevent competitors from describing their own products. Sometimes, descriptive marks can become associated with the goods or services with which they are used. After a minimum of five years of using a mark in commerce with goods or services, the mark may be said to have acquired distinctiveness or secondary meaning because purchasers have come to associate the descriptive words with one source for the products or services. At the USPTO, an owner may attempt to show that they used the mark for at least five years exclusively and continuously. If it can be shown that by the fifth anniversary, the mark has acquired distinctiveness/secondary meaning, it may qualify for registration with the USPTO. Two examples of descriptive marks that have acquired a secondary meaning are AMERICAN AIRLINES and KENTUCKY FRIED CHICKEN. Surnames fall in the descriptive category as well, such as the hotel chain HILTON Hotel. Aside from famous marks, when descriptive marks are afforded protection, it is usually very narrow.

Suggestive Marks: These marks often suggest an aspect or feature of an owner’s goods or services without directly describing the product.  There is sometimes a fine line between suggestive marks and descriptive marks. Suggestive marks require more thought to grasp the connection between the mark and the good or service. They are more vague than descriptive marks, which directly describe the product. Suggestive marks have a higher chance of being approved by the USPTO because standing alone, the word or phrase does not immediately convey the goods or services to which it is connected. These marks, which are more unique or creative, can be afforded a broader scope of protection. An example of a suggestive mark would be “COPPERTONE,” for the brand of sunscreen. The mark “COPPERTONE,” suggests the outcome of the product, without directly describing it. Another example is “PLAYBOY.” Some of the most contentious litigation hinges on whether a mark is descriptive or offensive.

Arbitrary Marks: These are existing words or phrases that would not normally be associated with an owner’s goods or services. These are terms or phrases that are unrelated to the good or service itself. They are the second strongest type of mark because the owner is giving a common word or phrase a new or unique meaning by associating it with his/her product. An example of a strong arbitrary mark would be “UBER” for the ridesharing service. While the term “uber” is now associated mainly with the ridesharing service, Merriam Webster’s Dictionary defines the term “uber” as, “being a superlative example of its kind or class.” Other examples include “APPLE” for technological products and “CAMEL” for tobacco products.

Coined or Fanciful Marks: These marks are the strongest, and most well-protected marks. A fanciful mark is a made-up term that does not have a previously existing dictionary definition. A coined term is a new and unique combination of words without a previous meaning. Since these terms did not exist prior to their usage, they are extremely difficult, or even impossible to challenge. Examples include: EXXON, ROLEX, LEXUS, XEROX and CLOROX.

In conclusion, when choosing a trademark, it is important for an owner to come up with a creative name for his/her goods or services.

Benefits of a Federal Trademark Registration over Common Law Rights

Friday, January 3rd, 2020

So long as there is not a federal registration or pending federal application for a similar mark for similar goods or services when an owner uses his/her mark in commerce, he/she establishes common law rights in the geographic area of use, if he/she is the first user of the mark in that area. Common law rights give the owner exclusive rights to the mark in a specific geographic location. These rights do not protect the mark throughout the state, or nationally. Common law rights afford limited mark protection within the area of use. Under common law, an owner can send a cease and desist letter in an attempt to prevent infringement by a secondary user of the mark.  Common law trademark rights can be enforced in federal court under the Lanham Act or in state court under state statutes.

Though federal trademark registration is not required, it can enhance and extend the owner’s common law protections in many ways. First, federal registration of the mark gives the owner legal presumption of the exclusive rights to use the mark throughout the United States and its territories in connection with the goods or services identified in the registration. This is advantageous when the owner is attempting to police his/her mark in and out of court.

Second, because it is a federal registration, the mark is listed in the USPTO database. Others will see the owner’s mark in the database when conducting a search prior to filing their own. This can help to prevent others from using a mark that is too similar to the one already registered. It also puts secondary users on constructive notice of the registrant’s rights. Moreover, the USPTO uses the database when conducting its own searches during trademark examination and will cite the owner’s mark against a confusingly similar one in a later-filed application.

Third, a federal registration allows the owner the right to record his/her trademark with the U.S. Customs and Border Protection. The agency will then have the ability to use the trademark registration to help prevent others from importing infringing or counterfeit foreign goods.

Finally, a federal trademark registration means that the owner has the benefit of using the encircled “R” with his/her mark. The mark is usually added to the right side of the mark and indicates that the owner has federally registered the mark with the USPTO. The encircled “R” acts as actual public notice of the owner’s exclusive nationwide rights in the mark.

How long does Federal Trademark Registration last? How do I maintain my Registration?

Friday, January 3rd, 2020

An owner’s federal trademark registration rights can last indefinitely as long as he/she has properly registered the mark and continues to use the mark in commerce in connection with the listed goods and services and stays on a strict post-registration maintenance schedule. To maintain a trademark registration,  an owner must file a Declaration of Use and/or Excusable Nonuse of Mark under §8 of the Trademark Act along with a specimen evidencing the use. This 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).

The owner must file a §8 Declaration of Use with a supporting specimen and an Application for Renewal under §9 of the Trademark Act, on a date that falls on or between the ninth and tenth anniversaries of registration (or 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.

Failure to file each of the three components in a timely manner (including the six-month grace period) will result in a cancellation of the mark; once a mark is canceled, it cannot be revived or reinstated. If the owner wishes to reinstate the mark, he/she must file a brand-new trademark application.

In addition to filing a §8 between the fifth and sixth anniversary of registration, an owner may choose to file a §15 Declaration of Incontestability, which is not required but gives the owner the benefits of incontestability. The §15 Declaration serves as conclusive evidence of the validity of the registered mark, of the registration of the mark,  of the owner’s ownership of the mark and the owner’s exclusive rights to use the mark with the goods or services, as stated by the USPTO.

The §15 Declaration of Incontestability may be filed at any time after the fifth year of registration so long as: No final legal decision has been issued against the mark, there is no challenge to the mark pending and the mark has not become generic.

Since the date to file the §8 and the first availability to file the §15 coincide, they may be filed together. The §15 affidavit gives a registrant the status of incontestability. Once incontestable, a registration can only be challenged for invalidity based 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. Throughout the life of a registration, the owner must continue to enforce his/her registration rights.

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