Posts Tagged ‘trademark’

Is MALIBU SUPPER CLUB Geographically Descriptive?

Tuesday, April 20th, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a refusal of registration for the mark MALIBU SUPPER CLUB (SUPPER CLUB disclaimed) for restaurant and bar services and found the mark to be geographically descriptive under §2(e)(2).

To establish that a mark is geographically descriptive, the must satisfy three elements: (1) The primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) The services originate in the place named in the mark and (3) The public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place. See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015). Moreover, geographic descriptiveness “‘must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which [the mark] is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use.’” In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

The Board began its analysis by stating the facts that were set forth in the recorded evidence: (1) The term MALIBU in the applied-for mark is a generally known geographic location, (2) The phrase “supper club” is commonly used by restaurants and bars to identify a type of restaurant, (3) Applicant’s services will originate in Malibu and (4) Relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.

However, the Applicant argued that the term MALIBU would not be seen primarily as a place by consumers, but rather as a common reference to luxury or relaxation. The Applicant’s argument relied on the definition a “[glitzy] area that Hollywood movie stars flock to,” which was taken from a “Pop Culture Dictionary” excerpt from The Board negated the argument as the full “Pop Culture Dictionary” passage made it clear that the primary significance of MALIBU was the geographic location, and the passage even began with “Malibu variously refers to a wealthy beach city near Los Angeles….” So, the Board found that consumers would immediately perceive the mark MALIBU SUPPER CLUB, in connection with the Applicants listed services, as designating the location of Applicant’s restaurant.

The Board then looked at the third-party registrations submitted by the Applicant that contained the term MALIBU. It found that the applications were not relevant to the issue at hand as one group of registrations involved goods or services that were unrelated to restaurant or bar services, and the second group of applications contained additional or distinctive wording and the Applicant’s additional wording, SUPPER CLUB, had already been disclaimed. Ultimately the Board stated, “As none of the marks featured in the above-referenced registrations is analogous to the applied-for mark, the third-party registrations submitted by Applicant do not change the result in this case.” See, e.g., In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).  

In conclusion, the mark MALIBU SUPPER CLUB satisfied each of the three elements under the §2(e)(2) geographically descriptive test. The mark primary significance of the mark, not including the disclaimed terms, MALIBU SUPPER CLUB is the name of a place generally known to the public, the applied-for services originated in Malibu and as the Board previously stated, relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.  So, in light of the information at hand, the Board affirmed the §2(e)(2) refusal of registration.

TTAB Decision for Likelihood of Confusion Case – MASTERRANCHER v. RANCH MASTER

Sunday, January 17th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed a §2(d) refusal of registration on the Principal Register for True Value’s (Applicant) mark MASTER RANCHER, for footwear, as it so resembled the registered mark RANCHMASTER, for footwear as well.

The Board began its analysis of the two marks starting with the first Dupont Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Citing Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971), the Board focused on the “recollection of the average consumer, who normally retains a general rather than a specific impression of trademarks.” As both descriptions of the goods were “footwear,” the average purchaser is a general consumer.

Starting with the term MASTER, the Board found the Applicant’s mark MASTER RANCHER, was too similar to RANCHMASTER, and the transposition of the terms did nothing to change or create a new meaning, nor did the addition of the suffix “er” to the end of “Ranch.” The Applicant used the alternative definition of the term “master,” and defined it as “a man in charge of [a particular ranch].” It attempted to argue that this definition created a distinct difference in the meaning and commercial impression. However, the Board countered that the way in which it was used in the registered mark RANCHMASTER, may also possibly conjure the impression of a “greatly skilled or professional rancher,” with no contrary evidence.

In an attempt to further distinguish the mark, the Applicant asserted the term “master” was a house mark and claimed that the use of a house mark created a distinct commercial impression, and moreover, distinguished the mark in terms of appearance and sound. The Applicant made reference to five other marks in its appeal brief: MASTER MECHANIC, MASTER ELECTRICIAN, MASTER PLUMBER, MASTER PAINTER and MASTER TRADEMASMAN. Though the marks were referenced, no evidence was submitted to prove use of the marks, thus, the argument was empty. See In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017), where the Board “declined to take judicial notice of registrations owned by applicant.”

The Applicant then asserted ownership of a family of MASTER-formative marks, but this argument failed for two main reasons. First, in order to prove the existence of a family of marks, an applicant must prove that the alleged family meets the following criteria: “(1) has a recognizable common characteristic; (2) that is distinctive and (3) that has been promoted in such a way as to create ‘recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.’” See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The Applicant made no showing of any of the above criteria. Second, “a family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal.” See In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).

In light of the above arguments, the Board found that the first Dupont Factor weighed in favor of finding a likelihood of confusion.

The Board briefly turned to the second and third Dupont Factors, the similarity or dissimilarity of the goods in connection with the marks, and the similarity or dissimilarity of the likely-to-continue trade channels. In analyzing these factors, the Board looked to the goods cited in the application and registration. The description for both sets of goods is “footwear,” therefore, since the description of the goods is identical, the Board presumed that the trade channels and purchasers were similar as well. Ultimately, these two Factors weighed very heavily in finding a likelihood of confusion.

Finally, the Applicant argued that its ownership of a prior registration of the mark MASTER RANCHER, for gloves, should provide a basis for registration. In citing  In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB 2012), the Board noted, “[w[here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion.”

However, in the Strategic Partners case, the applicant’s existing registration coexisted with a cited registration for more than five years, and the goods in the prior registration were identical to those in the new registration. In this case, however, the Applicant’s prior registration was only two years old, and it was for gloves, not footwear, which moved it closer to the cited registration. Therefore, as opposed to the finding in Strategic Partners, the Board found that the Applicant’s prior registration did not negate the finding of a likelihood confusion between the Applicant’s mark, MASTER RANCHER and the registered mark RANCHMASTER.

In sum, the first three Dupont Factors weighed heavily in finding a likelihood of confusion, and the Applicant’s prior registration did not cancel this finding. Therefore, the Board affirmed the refusal to register under §2(d).

Post-Registration Proof of Use Audit Program

Monday, January 4th, 2021

Starting as a pilot program in 2012, the auditing program used by the USPTO is essential in maintaining the reliability of the user-based trademark register as an accurate reflection of marks in use in commerce. Registrations in the database are entitled to be maintained only for goods and services for which the mark is used in commerce or registrations for which temporary nonuse is excused due to extenuating circumstances. Since the registration is user-based, it is up to the user to maintain the registration, which can invariably lead to error. The occurrence of improper or inaccurate registration maintenance filings can jeopardize the validity of an owner’s registration, may unnecessarily block future applications and diminish the trademark registration’s ability to provide accurate information the public.

If an owner of a mark is audited, the USPTO will require the owner to show proof of the mark in connection with additional goods and services listed in the registration. If the owner cannot provide such proof for the specified goods and services, they will be removed from the registration. Which, as mentioned above, can help to negate the chances of unnecessarily blocking future applications.

Any owner of a trademark can be subjected to an audit if their registration meets the following requirements: The owner filed a §8 or §71 declaration of use in the appropriate timeline, and the registration includes at least one class with four or more goods or services. A registration including at least two classes with or more goods or services may be audited as well.

If a registration owner is audited, they will receive an office action from a post-registration examiner. The action will inform the owner that they’ve been selected for auditing and it will also identify two goods or services for each audited class. The owner must then submit proof for each of the identified goods or services.

If the USPTO accepts the submitted evidence, a notice of acceptance will be issued. If there are issues, or failure to provide sufficient proof, a second action will be sent. If an owner cannot provide sufficient proof, they must remove all goods and services from their registration for which they cannot provide proof of use, note, this does not simply mean the ones identified for audit, but for all goods and services that cannot be proven to be connected the mark in use.  The deadline for responding to a first or second office action is whichever of the following comes later: Six months after the issue date of the office, or the end of the statutory filing period, not including the grace period.

If an owner fails to respond to either a first or second office action by the deadline above, the registration may be canceled in its entirety. If extraordinary circumstances prevent an owner from responding on time, the owner may file a Petition to Director, asking for a waiver of timely response. For a fee, this petition may also be filed if an owner is dissatisfied with the post-examiner’s final decision. Following the submission of this petition, the Director will then review the record and determine whether or not the examiner made an error.

For more information regarding the post-registration proof of use auditing program visit

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.

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.

Generic Marks

Saturday, March 7th, 2020

As discussed in an earlier article, under the Spectrum of Distinctiveness, there are five distinct types of marks. The weakest type of mark is a generic mark. These are terms that the relevant purchasing public understands foremost as the common identification for goods or services. Under §§1,2 and §45 of the Lanham Act a generic term may never be registered on the Principal Register, nor may it be registered on the Supplemental Register under §§23(c) and 45. Generic words are incapable of functioning as source identifiers.  The purchasing public will never come to associate the generic term for just one source of goods or services.

A mark may be deemed as generic if its primary connotation to the relevant public is the class or category of goods or services on or in connection with which it is used. In determining genericness, the relevant public refers to the consuming public for the identified goods or services. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) sets forth a two-part inquiry to determine whether a mark is generic: (1) What is the genus of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? When looking at the second portion of the test, the inquiry is not asking whether or not the relevant public uses the term to refer to the genus, but whether or not the relevant public would understand the term to be generic.

In applying the two-part inquiry, the examining attorney bears the burden of proving that the term is generic. This evidence may be gathered from including dictionary definitions, research databases, newspapers and other publications. When determining whether or not a term is generic, it is not relevant that there may be more than one generic term for a particular category of goods or services. Any term that the relevant public understands to refer to the category is considered generic.

A generic mark is not limited to one-word designations, the two-part inquiry is the same for compound terms and phrases. If possible, the examining attorney should include evidence showing the use of the mark as a whole. Yet, if there is no evidence of third-party use of the exact compound term or phrase, that does not, alone, negate a finding of genericness for a particular mark.  An examining attorney may find that a mark comprised of a compound or shortened term is generic by showing evidence that each portion of the mark is generic and that when joined, each portion of the mark retains its generic meaning. In re WM. B. Coleman Co., Inc. 93 USPQ2d 2019 (TTAB 2010) the Trademark Trial and Appeal Board affirmed the finding that ELECTRIC CANDLE COMPANY was merely the combination of two generic terms put together to create a compound mark. As stated above, if both portions of the term retain their generic significance, then the mark may be deemed generic.

Aside from compound and telescoped words, mnemonic telephones numbers and Internet domain names are studied as well. In regard to mnemonic telephone numbers, an examining attorney must show that the relevant public would perceive the mark as a whole to have a generic significance. In reference to Internet domain names, an examining attorney must determine whether or not all parts of the name, including the Internet domain name, are generic, and if in sum, the mark itself is generic. In certain isolated instances, the addition of a top-level domain indicator (“TLD”) may make an otherwise generic mark, distinct. An example of this is In re, 415 F .3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005). In this case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision that STEELBUILDING.COM was generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems.” In this rarified instance, the Court chastised the Board for looking at each piece of the mark individually, but not as a whole. When adding the “TLD” it expanded the meaning of the mark beyond that of just selling steel buildings. With the addition of the “TLD,” the mark took on the meaning of internet services as well, including beforehand modeling’s of the buildings and price calculations. This again reinforces the notion that the relevant public must take the entire mark to have generic significance, therefore an examining attorney must focus on the mark as a whole, rather than multiple generic components.

As stated by the Trademark Manual of Examining Procedure (TMEP), the expression “generic name for the goods or services,” is not contained to noun forms, but also captures “generic adjectives” as well; see Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) which held FOOTLONG generic for sandwiches, excluding hotdogs. In a comparable manner, evidence that shows a singular form of a term to be generic can suffice to demonstrate that the plural is also generic.

In conclusion, generic marks are the weakest types of mark and may not be registered with the USPTO either on the Principal Register or the Supplemental Register. A mark may be deemed generic whether it is comprised of a phonetically spelled term, multiple generic terms, mnemonic telephone numbers, Internet domain names or generic adjectives. An examining attorney must use the two-part inquiry to determine whether a mark is generic, and the mark must be examined as a whole. If, as a whole, the mark retains its generic significance to the public, it may be considered generic, and therefore unregistrable on either the Principal Register under §§1,2 and §45 of the Lanham Act or the Supplemental Register under §§23(c) and 45 of the Lanham Act.

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)


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.

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