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Category: Trademark

Acquired Distinctiveness Requires Both Continuous and Exclusive Use of a Trademark

When you file a trademark application for a mark that is descriptive of the goods and services – or a quality or characteristic of the goods and services – the Trademark Office will refuse to register it initially. You can still generally achieve registration by amending the application to the Supplemental Register. Or, if you can show long, continuous, and exclusive use, you can keep the application on the Principal Register by claiming acquired distinctiveness under Section 2(f) of the Lanham Act. Basically, you are asserting that the public has come to recognize your mark as indicative of the source of your goods or services because of the efforts you’ve made over several years to associate your brand with a certain quality.

Until recently, it was common that five years of continuous and exclusive would generally satisfy a Trademark Examiner such that you could successfully make a 2(f) claim. However, a discussion I had recently with an Examiner revealed that the Trademark Office has sent down orders to the examining corps that longer use is now going to be necessary, absent other factors such as massive branding or marketing expenditures relative to revenues.

This indicates that showing an adequate length of use is going to be more difficult moving forward. However, a recent ruling within the Trademark Office has raised a new issue. An application was just defeated in an opposition proceeding because it lacked the requisite exclusivity that is part of the 2(f) test. There, an opposer asserted that, while the trademark applicant had used the mark for a long time, it had not done so exclusively, presenting evidence that the opposer and several third parties had used the identical trademark. This was enough to weigh against the application. While absolute exclusivity – likely an impossible standard – is not required, widespread use is inconsistent with a 2(f) claim.

Patent Office Power Outage Shutdown

The Patent Office went down hard on December 22, 2015. A subdued Facebook post initially said: “We are currently experiencing some technical difficulties with some of our online systems, but we are hard at work and intent on having services back on line as soon as possible. Thank you for your patience, and stay tuned for details.” However, very quickly it became clear that the incident was major – catastrophic really. For some time, most (if not all) of the pages at upsto.gov were displaying 404 messages, including even the blog directed toward posting updates about the status of the electronic filing systems.

Apparently, the power supply lines at the USPTO incurred a “malfunction,” causing significant damage to two power filtration systems which otherwise provide power in a regulated form to the USPTO. These filtration systems are huge and could not be replaced quickly or easily.

The outage took out all of trademark and patent filing, searching, payment, and examination capabilities, effectively shutting down nearly everything the Patent and Trademark Office, and patent and trademark lawyers, do. For some of us, it was a nice week-long break when many of are taking holiday. For others, however, it was a stressful nightmare of re-learning Priority Mail Express (formerly Express Mail) rules and trying to get the Post Office – sometimes through horrible weather – to make filing deadlines. Filing by mail was still an option – but very few, if any, practitioners file by paper anymore, and I would guess that most who don’t file by paper have no clue how to file by mail. Another good reason to file early! The Office eventually did declare a few of the down days as federal holidays, purportedly giving applicants until the next (operational) business day to file. However, I cautioned colleagues not observe this PTO-granted grace period, as it was not clear that the PTO had the statutory authority to declare a holiday in this manner to toll both domestic and foreign deadlines. Better to mail it in that to find out years from now in litigation that the PTO “holiday” counted for nothing.

The systems are now up, but I have been warning clients this week to get me everything early because I believe the filing system is extremely fragile right now, given that it will probably be more heavily loaded by backed-up filings from the past week.

While the explanation that the Patent Office providfed is not entirely clear – and few details beyond this have been revealed – I am sure the Office did work tirelessly to get the systems back up. And now they are. What we can learn from this how fragile the filing system is. Yes, it apparently took a major power surge to destroy the electronic systems, but when it did, there was no backup. Or, there was a backup, but the backup was tied to a backbone common to the main system – which really isn’t a backup at all.

Practitioners have complained for years that the electronic filing system is antiquated, but the Office has failed to update it. Perhaps this will instigate a technology change at the office that represents innovation leadership in the world.

Trademark Law Ruled Unconstitutional

The Trademark Office’s prohibition phoenix trademark applicationsagainst the registration of disparaging trademarks was struck down as unconstitutional yesterday. Many have questioned for a long time how a statute could legitimately refuse to register some marks because of their moral quality. Nevertheless, for decades, federal statute has stated that a trademark will be refused registration if it “consists of or comprises 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.”

The US Court of Appeals for the Federal Circuit has declared that Section 2(a) of the Lanham Act unconstitutional as violating the First Amendment. The majority stated that “”The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.”

The case arose when a band applied to register the mark THE SLANTS in connection with live music entertainment services. The Trademark Office, however, refused protection of the mark as derogatory of people of Asian descent. The band appealed the case through several layers of administrative and judicial courts. At the Federal Circuit Court of Appeals, the government advanced an academically interesting argument: that the Lanham Act does not actually prohibit speech at all, but rather only prohibits the registration of some types of speech. It reasoned that because the government acts as the gatekeeper for trademark registrations, registered trademarks become government speech and can thus be regulated without implicating the First Amendment at all. The trademark owner remains free to practice the speech, whether registered or not. The Federal Circuit disagreed, finding that the law was impermissibly “created and applied in order to stifle the use of certain disfavored messages.”

A similar question arose most recently in the public eye when the Washington Redskins lost their 60-some year-old trademark registration because it was deemed disparaging of Native Americans. The team has appealed the decision, and it is expected that this newest case will give them some heavy ammunition. However, the REDSKINS case is now in front of the Fourth Circuit Court of Appeals, which is neither above nor below the Federal Circuit. That means that THE SLANTS decision is non-binding on the Fourth Circuit Court, but can still be persuasive. If the Fourth Circuit finds that Section 2(a) of the Lanham Act is not unconstitutional – which it may or may not do depending on the questions presented to the court and the sua sponte aggressiveness of the judges – the question will be ripe for the Supreme Court to settle.

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.