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Category: Trademark

Can I trademark a scent?

The short answer is yes, Scent Trademarkbut it can be very difficult. A scent mark is considered a nontraditional or non-conventional trademark. This category covers a broad spectrum of marks which includes any type of trademark that does not currently belong to a conventional category. Conventional marks are words, names, logos, and the like. Scents, sounds, colors, packaging – things like this fall under the non-conventional mark category. Non-conventional marks are not per se more difficult to register as trademarks, but they pose unique challenges not encountered when registering a more traditional mark.

One of the largest complications in attempting to register a scent mark is that the perception of odor can vary from person to person. This subjectivity can lead to considerable argument when deciding whether the scent actually functions as a trademark. After all, trademarks are consistently used symbols that identify in a consumer’s mind the source of the product or service. Key to the ability to identify the source is that the mark be used consistently, or that the consumer experience the mark in a consistent way. If a scent can potentially vary each time it is experienced, a question is created as to whether it is sufficiently consistent so as to function as a trademark.

Another complication is whether the mark is functional. Functional portions of marks cannot be registered. This is most often seen with trade dress, where the Office refuses to protect portions of a product which are formed or shaped purely for functional reasons. This issue can arise with smell marks. For example, the distinct smell of a perfume cannot be protected with a trademark because it is a functional part of that particular perfume.

Acronyms as Trademarks

Guest author Jordon Trapnell, currently a second-year law student at Gonzaga, writes this nugget about trademarks embodied in acronyms:

Acronyms are very commonly used in the commercial world, but present a number of complications when it comes to trademark law. First, there would seem to be an increased likelihood of confusion (which inhibits the chances of registration) since the letters comprising an acronym could have any number of different meanings. Still, there is no law that completely prohibits registering an acronym as a trademark.

The USPTO does have a specific rule that affects how it decides if an acronym can qualify as a trademark. The rule states that “an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents” (TMEP 1209.03(h)). The key to understanding how acronyms can be trademarked therefore actually lies in understanding descriptiveness.

Potential trademarks are categorized along a continuum that ranges from distinctive to descriptive. Arbitrary or fanciful marks that are inherently distinctive are generally easiest to register; marks that are only descriptive are very difficult to register. A merely descriptive mark is one that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services it is used in connection with. An example could be a window company trying to trademark the name “Clear Glass Windows.” These marks are refused registration in order to prevent the owner of a mark from suppressing competition and to make sure the public is free to use the language involved. So in the context of the acronym rule, “considered descriptive” means the application would be denied.

Determining whether the wording is merely descriptive is relatively simple compared to determining if relevant purchasers usually perceive the acronym to be synonymous with that wording. In the 2003 case Capital Project Mgmt. Inc. v. IMDISI Inc., the Trademark Trial and Appeals Board upheld the objection and denied registration of the mark “TIA.” It was determined to be synonymous with the descriptive term “time impact analysis.” Time impact analysis is not a term that would be readily recognized by the general public, which shows how the wording “relative purchasers” refers to people in the field being discussed. An acronym “CPL” standing for computerized potential log – a term that appears comparable in descriptiveness to time impact analysis – was allowed registration by the TTAB because there was not enough evidence to suggest that relevant people would perceive it to be only an abbreviation for computerized potential log.

To summarize, there are a few questions that should be asked before filing a trademark application for an acronym. What does the acronym stand for, and does the term(s) directly describe the product or service with which the mark is used in connection? Do those who work in the same field have any familiarity with the term and its acronym? If the answer to both of these questions is yes, trademark registration may not be possible.

Specimens Showing Use of Service Marks

As part of the trademark application process, trademarkalmost all marks must be used to eventually be registered. The Trademark Office requires that a trademark applicant submit evidence in the application showing acceptable use of the mark. This evidence is called a specimen, and there are many requirements for what it must show.

The Trademark Office yesterday released examination guidelines for Service Mark Specimens, which attempts to describe the elements of an acceptable specimen for services, discusses specific issues and potential refusals, addresses commonly submitted specimens for modern technology-related services, and provides examples of acceptable and unacceptable specimens. The examination guidelines are manuals for trademark examiners to use when evaluating a trademark application, and together, with the TMEP and other trademark laws and rules, inform how an application is received and analyzed. You can read the new guidelines here.

Rare Federal Circuit Case Upholds Rejection of Trademark as Disparaging

Trademark applications, when rejected, are most frequently rejected because the are directed to marks which are confusingly similar to marks already registered. Consequently, many people believe that as long as there isn’t an earlier-registered similar mark, their trademark can be registered. However, there are a whole host of formal, procedural, and substantive requirements in a trademark application, any of which can trip the application up and cause it to be abandoned.

One such requirement is that the application not be disparaging. “No trademark … shall be refused registration … unless it (a) [c]onsists of or comprises … 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.” 15 USC 1052(a). This provision is rarely argued, but a recent case brought it into focus, perhaps in anticipation of the WASHINGTON REDSKINS disparagement decision from the Trademark Trial and Appeal Board. Applicants Geller and Spencer attempted to register the mark STOP THE ISLAMISATION OF AMERICA in connection with “providing information regarding understanding and preventing terrorism.” The TTAB held, and the Federal Circuit agreed, that the mark was disparaging to Muslims, primarily because of the association it perpetuates of Muslims with both violence and terrorism. Notably, Geller and Spencer have very publicly opposed the construction of a mosque near Ground Zero. And while the US has merely refused registration of their trademark, England actually prohibited the two from entering the country to speak at an English Defence League rally in London last year.

Is a Comprehensive Clearance Search for Your Trademark Worth the Money?

This post written by guest author, attorney Gianni Pattas.

Everything is perfect. You paid a graphic designer to design your brand new logo for your business. You paid the radio to run ads advertising the grand opening of your business. You paid a small fortune to have that brand new sign outside your business that makes you stand out from your competitors. There’s no turning back now, and why would you? You have spent thousands and thousands of dollars and are now ready to start your brand new business. Everything is perfect.

Suddenly, things do not seem so perfect. You get a letter after your first day of opening from an attorney telling you to cease and desist the use of your new businesses name because you are infringing the trademark rights of their client.

This is a harsh reality that many small business owners have faced. In order to save money in the short term, they did not adequately plan ahead for the long term.

Many times trademark applicants will be presented with the option of a comprehensive trademark clearance search to make sure their proposed mark is clear for use. And often, in order to save money, people will forego this option and proceed with filing of their trademark application, “blind” to what else is out there. They believe that they can scour the Internet and the federal trademark database for potential problems that they might face when using their own mark. Many businesses believe it is an important step to take. But it may not be sufficient, and in some cases, a self-guided search can even be dangerous.

A trademark attorney who deals with this subject matter on a daily basis has the resources and knowledge to do a thorough search and ensure that future problems do not arise with the use of your proposed trademark. A trademark attorney can advise you whether there are identical or similar marks already registered that may present problems downstream in the trademark application process, or whether there is use in particular geographic locations that may be specially problematic for your business, or whether there are filing strategies you can adopt when writing a trademark application based on the presence – or lack of presence – of other marks on the federal trademark registry.

So is a comprehensive clearance search for your trademark worth the money? As the common saying goes, “An ounce of prevention is worth a pound of cure.”

Telescoped Trademarks

Picking a trademark is an incredibly trademarkimportant part of starting a business or bringing a new product line to market. The ability to protect the mark depends on its distinctiveness. Some marks are generic or descriptive, while others are highly distinctive. Distinctive marks are entitled to protection as registered trademarks. Telescoped trademarks are often registrable marks.

Some marks have registrable components and unregistrable components. For instance, TOM’S COOKIES used with my awesome chocolate-chip cookies has a registrable component (TOM’S) and an unregistrable component (COOKIES). COOKIES is unregistrable because describes the products I sell, but TOM’S has nothing to do with the product. When a mark has an unregistrable component, that component generally has to be disclaimed, and the trademark owner will claim no part of that mark as it may appear apart from the mark.

In some cases, those marks are considered “unitary,” and the unregistrable component is an integral part of the commercial impression that the whole mark creates. For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning. An example is the term “Black Magic,” which has a distinct meaning of its own as a whole. The word “black” is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.

A telescoped trademark is always considered unitary and often considered to be registrable. A telescoped trademark is one which has two words which share a letter. Sort of like Wheel of Fortune’s Before and After. Examples are HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY. Telescoped words make excellent choices for a trademark, however, some can still provide problems, so please consult a trademark attorney before a trademark is settled on.

Obtaining Consent to Register a Trademark in a Name

When a mark in a trademark application includes a name, portrait or signature of a living individual, that person’s consent must generally be sought before the Trademark Office will register the application. This is to prevent the registration – and thus the binding up – of someone’s own name. Trademark law recognizes that we should all be free to use our own names.

Consent is provided by having the person with the name signing a document stating that they give consent to use their name. Not all applications that contain a name require consent, however. If the name plainly appears fictitious (such as SpongeBob SquarePants), the Trademark Office should recognize that the name is not a real one.

If the applicant is applying for a mark in his or her own exact name, consent is presumed and need not explicitly be made of record. Further, if the mark comprises a portion of the applicant’s name (like if I, Tom Galvani, tried to register Galvani Legal), then consent is also presumed to be granted. Consent also does not have to be sought if the name is that of someone who is deceased (though this is not the case for US Presidents), but a statement must be made that the name does not identify a living individual.

Universal Symbols and Trademarks

John Welch writes over at TTABlog today about the recent refusal of Craigslist’s application to register a trademark for the peace symbol. It is a very interesting post on a not-frequently-seen area of trademark law. While generally a trademark can be registered on anything that functions to differentiate the source of a product or service, some things don’t fit that meaning. Universal symbols are symbols which convey informational messages or are ornamental. Such marks are generally important for what their messages convey, rather than for what the marks themselves convey. And the peace symbol is an easy example: it conveys a message of peace.

Universal marks are registrable if the applicant adds something distinctive. A good example of this might be the Infiniti car company’s variation on the infinity mark.

Trademark Universal Symbol

Reviving an Abandoned Trademark Application

A trademark application will be abandoned by the Trademark Office if a deadline passes without you taking certain action. This can happen, for instance, if the Trademark Office has issued you an Office Action that requires a response, and the normal 6-month period for response elapses. It will also happen if you filed an intent-to-use trademark application, the Trademark Office sent you a Notice of Allowance, but you failed to submit a Statement of Use within 6 months showing that you were properly using the mark in commerce.

 An abandoned trademark application isn’t necessarily lost and gone forever. While in some cases you may have to re-file the application anew, in other cases, you may be able to petition for the revival of the application.

There are limitations on these petitions to revive. They must be filed within 2 months of the abandonment, or within 2 months of the Notice of Abandonment. Your failure to make the original response deadline must have been unintentional, and you must swear to this. The petition has to be accompanied by a petition fee, and by whatever response or action was due on the original deadline.

Time is of the essence when a trademark application has been abandoned. It is therefore important that you act quickly to revive the application if it is your intent to do so. Additionally, you should respond correctly. For those reasons, consider hiring a trademark attorney to handle the petition to revive, to help ensure that the time and money you’ve already invested in the trademark application up to this point isn’t unnecessarily wasted.

Trademark Likelihood of Confusion, in Triathlon Products

Today, a basic primer on trademark infringement and an example of something that seems pretty clear. A registered trademark gives the owner the right to prevent anyone from using a mark in a way that is likely to cause confusion. This “likelihood of confusion” is fleshed out in a multi-factor analysis of the similarity of the marks, the products, the channels of commerce, and other aspects of the use.

Importantly, a likelihood of confusion analysis is not solely based on whether two marks have a similar name or appearance. The strength of the registered mark, the similarity of the goods or services on which the marks are used, the similarity in the sight, sound and meaning of the marks, evidence of actual confusion, the similarity of the channels through which the products or services are marketed, the sophistication of the consumers and their ability to distinguish between two marks, intent of the other party, and the likelihood of market expansion by the parties are all considered. However, frequently, the two most important factors in the analysis are: 1) the similatiry of the marks, in sight, sound, and appearance, and 2) the similarity of the goods or services on which the marks are used. Indeed, strong similarity, or even identity, between two the appearance of two marks can dominate the analysis and reduce the need for similarity in the other factors.

Occasionally, you will see two marks that are identical, and infringement is clear. This is often the case where a product is copied wholesale. However, you will often see unfortunate coincidences. I believe the below is an example of that.

Polar is a company that manufactures fitness electronics, such as GPS watches, cadence and power meters, and heart rate monitors. It is well known in the running, cycling, and triathlon communities as one of the leading electronics developers. A lot of athletes use and love Polar products. Polar has a registered trademark (No. 1,836,604) for a stylized design of its name, shown here:

Mark Image

The mark is registered in connection with “computer interfaces and software to be utilized with heart rate monitors for athletic and medical use” and for “heart rate monitors for athletic and medical use.” You most often see the mark in this form:

On the way to Ironman 70.3 Oceanside in California last March, my racing buddy was looking through a triathlon magazine. He was thumbing through the pages looking for his national ranking. Out of the corner of my eye, I spotted what I thought was that distinctive black-red-black logo Polar, and I looked over. I saw this:

ROLA trademark

Now, these marks are not identical. But they are close! First of all, the literal element of the mark is nearly the same: POLAR versus ROLA. Three letters the same, with the only different letter R being only very, very slight different from the letter P. Then, the same second letter is red, contrasted with black in the rest of the word. Arguably, the POLAR trademark registration makes no claim of color, but one can’t argue that the same colors typically used don’t contribute to at least a first impression, perhaps causing an initial interest based on color confusion. Once the colors have grabbed the onlooker’s attention, then the protected aspects of the trademark registration play a heavier role. Lastly, both marks have a negative strikethrough element running through all of the letters, and at the same height in each mark. All of these elements combined present a case of near identity between the marks.

Now, the products are not that similar. POLAR is used for heart monitors, and ROLA is used for cargo baskets. But they do both have an athletic focus. Further, both products are routinely marketed, as seen here, through triathlon channels. The case of infringement is strong here, but I think (or hope) that ROLA’s adoption of the mark was coincidental or perhaps was unknowingly, subconsciously inspired by POLAR.