TRADEMARK BOOTCAMP The Application Process By Jennifer Fraser Connolly Bove Lodge & Hutz LLP

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1 TRADEMARK BOOTCAMP The Application Process By Jennifer Fraser Connolly Bove Lodge & Hutz LLP TRADEMARK REFERENCES 15 U.S.C et seq. Trademark Act of 1946 or the Lanham Act Title 37 of the Code of Federal Regulations Trademark Manual of Examining Procedure (TMEP) guidelines and procedures for examination PTO Web Site Link: TMEP search trademarks general trademark guidance file documents electronically PTO HOME PAGE TRADEMARKS HOME PAGE 1

2 MANUALS TEAS INFORMATION FOR FILING TRADEMARK APPLICATION REQUIRED INFORMATION (TMEP 202) Applicant (including name, address, entity type and citizenship) Identification of Goods/Services Filing fee for at least one class Paper vs. Electronic Clear Drawing of the Mark Typed/Standard Characters, Design, Stylized 2

3 OTHER INFORMATION Basis for the application Use Intent to Use Foreign Application/Registration Madrid Protocol For Use Based Application Specimen showing use of mark on the goods or in connection with the services Date of first use in commerce Information regarding Foreign Application/Registration Priority filing date Registration date/number and copy of Registration Description of the Mark Color claim Translation Claim of Ownership of Prior Registration(s) TEAS/TEAS PLUS electronic forms on the PTO Website TEAS PLUS requires more information to obtain filing fee discount TEAS INPUT FORM 3

4 INFORMATION FOR APPLICATION and relevant sections in the Trademark Manual TMEP SECTION 800 Applicant TMEP Section 803 Signature TMEP Section 804 Basis TMEP Section 806 Identification of Goods/Services TMEP Section 806 Drawing TMEP Section 807 Fee TMEP Sections 405, 810 BASIS OF THE APPLICATION Use Intent to Use Will need to file Amendment to Allege Use (before Publication) or Statement of Use (after Notice of Allowance) Foreign Application/Foreign Registration FOREIGN APPLICATION/REGISTRATION Section 44(d) priority filing date for filing in 6 months Provide application date, number Section 44(e) Basis for U.S. application and registration Submit copy of foreign registration, translation CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES CLASSIFICATION 45 classes see TMEP 1401 Class headings IDENTIFICATION OF GOODS/SERVICES TMEP Section 1402 Philosophy specify so understood by average person Use Acceptable ID of Goods/Services Manual Provide common names or functions Words that are rejected as indefinite or improper No registered marks, vague terms e.g., including Handling issues Talk to the Examining Attorney Explain industry terms Look at recent 3P registrations 4

5 USE IN COMMERCE TMEP SECTION Use in commerce means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce-- (1) on goods when-- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Dates of Use TMEP SECTION 903 Date of use anywhere/in commerce Date when the goods were first sold or transported, or the services were first rendered List of goods/services specify date goods/services to which it applies Specimens TMEP SECTION 904 Each class Goods tags, labels, packaging, software screen shots, catalogs with ordering info Services advertising, brochures, web pages 5

6 EXAMINATION PROCESS Serial Number/Filing Receipt Assigned to Examining Attorney to Determine Compliance with Statutory Requirements Search Identification of Goods/Services Proper use - specimens Various informalities Substantive issues - Likelihood of confusion, Descriptiveness, Functionality, Ornamentation, Immoral or Deceptive, Surname, Title of Single Work, etc. Office Action 6 months to respond Priority Action Response to Office Action (amendment, arguments) Examiner s Amendment Final Office Action Request for Reconsideration file early, make record Appeal to Trademark Trial and Appeal Board (TTAB) Notice of Publication published for 30 days in Official Gazette Opposition at TTAB Notice of Allowance for Intent to Use Applications Extension Requests (5 up to 3 years; recite good cause for 2nd-5 th Extensions) or Statement of Use Certificate of Registration Cancellation at TTAB Post Registration Declaration of Use/Affidavit of Incontestability (5th - 6th year) Combined Declaration of Use and Application for Renewal (9 th 10 th year) RESPONSES 6

7 SUBSTANTIVE EXAMINATION ISSUES Likelihood of Confusion 15 U.S.C No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it... (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive... DU PONT FACTORS In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973) (1) The similarity or dissimilarity of the marks as to sound, sight and meaning (2) The similarity or dissimilarity and nature of the goods or services described in an application or registration (3) The similarity or dissimilarity 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 fame of the prior mark (sales, advertising, length of use) (6) The number and nature of similar marks in use on similar goods (7) The nature and extent of any actual confusion (8) The length of time and conditions under which there has been concurrent use without evidence of actual confusion (9) The variety of goods on which a mark is or is not used (house mark, family mark, product mark) (10) The market interface between applicant and the owner of a prior mark: (a) a mere consent to register or use. (b) agreement provisions designed to preclude confusion, i. e. limitations on use (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i. e., whether de minimis or substantial (13) Any other established fact probative of the effect of use. 7

8 TMEP Section 1207 How to Respond Address key DuPont factors in concise manner Compare marks and goods/services Sound, sight and meaning Relatedness of goods/services 3P registrations show narrow scope of protection and relatedness of goods/services Examine goods/services are they the same? Only use marks that are in use (i.e., not 44(e)) Review File History Any instances of confusion? Amend identification of goods/services Consent agreement More than naked consent TMEP Section (d)(viii) Prior-filed Applications May be cited if mature to registration Notice of Suspension Suspension inquiry = Office Action MERELY DESCRIPTIVE 15 U.S.C No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them... A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) (GASBADGE merely descriptive of device for monitoring exposure to gaseous pollutants). Suggestive marks require thought, imagination or perception to reach a conclusion as to the nature of goods/services. See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO- RAKE held not merely descriptive of a snow removal hand tool). Laudatory marks also descriptive SUPER, BEST Descriptive marks may be registered on Supplemental Register or may be registered on Principal Register based on claim of acquired distinctiveness 8

9 TMEP SECTION 1209 How to Respond to Descriptiveness Refusal Vague definitions does not immediately describe, use other definitions Mark requires deliberation to ascertain relation to goods/services Doubt in favor of Applicant Amendment to Claim Acquired Distinctiveness under Section 2(f) TMEP (a)(ii), years of substantially exclusive use Prior registrations similar goods/services Other evidence advertising $, declarations, surveys, use Raises new issue cannot go final Supplemental Register TMEP Section (a)(i) New issue Must be based on use or foreign registration Careful of new filing date Not a mark, but use, PTO can cite DECEPTIVENESS TMEP SECTION U.S.C No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) 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;. TEST: (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? In re Spirits Int l, N.V., 563 F.3d 1347, 90 USPQ2d 1589 (Fed. Cir. 2009); In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff g 8 USPQ2d 1790 (TTAB 1987). 9

10 HOW TO RESPOND: address factors and rebut evidence 2(e)(1) Deceptively Misdescriptive do not need to show #3 SURNAME REFUSAL Primarily Merely a Surname TMEP SECTION 1211 TEST: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the look and feel of a surname; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). HOW TO RESPOND: address the above factors review evidence, other meaning GEOGRAPHIC ISSUES TMEP SECTION U.S.C No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-- (e) Consists of a mark which... (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them... 10

11 TEST FOR GEOGRAPHIC MARKS GEOGRAPHICALLY DESCRIPTIVE TEST 1. the primary significance of the mark is a generally known geographic location; 2. the goods or services originate in the place identified in the mark; and 3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. See In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). GEOGRAPHICALLY DESCEPTIVELY MISDESCRIPTIVE TEST 1. the primary significance of the mark is a generally known geographic location; 2. the goods or services do not originate in the place identified in the mark; 3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and 4. the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services. See In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh'g denied, 2003 U.S. App. LEXIS (Fed. Cir. Aug. 20, 2003). HOW TO RESPOND: Explain place is remote, no goods/place association GENERICNESS Generic terms are terms that the relevant purchasing public understands primarily as the common name for the goods/services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). (1) What is the class of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). CANNOT be registered on Supplemental Register 11

12 FAILURE TO FUNCTION AS A MARK 15 U.S.C. 1051, 1052, and 1127 Ornamentation: TMEP Section does not serve a source indicating function people buy because decorative, attractive or funny e.g., t-shirt designs, mugs HOW TO RESPOND: commercial impression, trade practice, secondary source Functionality: TMEP ; also, 15 U.S.C. 1052(e)(5) essential to the use or purpose of the product or if it affects the cost or quality of the device. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) Evidence patents (utility vs. design), cost, alternative designs, copying Other issue is often distinctiveness TIPS FOR STREAMLINING EXAMINATION & EFFICIENCY Call the Examining Attorney Examining Attorneys can provide comments on what will be accepted o Especially informalities o Examiner s Amendment/Priority Action o Do not argue but you can explain an issue (e.g., discuss amendment to goods for 2(d) refusal) o Form glitches Amendment to Allege Use o Final Office Actions Examining Attorney can help you o Be polite o Consider time constraints on the Examining Attorney o Concise, to the point Templates Sample responses, cases for particular clients, etc. Use appropriate detail Handle at once, while it s fresh Think one step ahead anticipate issues to minimize additional correspondence 12