U.S. TRADEMARK LAW PART 2. Presented by Hershkovitz & Associates, LLC H&A Intellectual Property Law, PLLC

U.S. TRADEMARK LAW PART 2 Presented by Hershkovitz & Associates, LLC H&A Intellectual Property Law, PLLC Copyright 2011 Hershkovitz & Associates, LLC All Rights Reserved 1

U.S. Trademark Law Part 2 Brian Edward Banner Adj. Professor, George Mason University H&A Intellectual Property Law, PLLC Alexandria, Virginia 2

Let s continue down the road... 3

When use ends rights end. How did they die? Abandonment (omission or comission) "A Different Kind of Car Company" 1991-2011 Naked Licensing Became Generic Examples: Nylon for fiber; Concorde for airlines; Saturn for autos; Internet for reservation services. 1976-2003 4

In the U.S., goodwill in a brand dies when the public no longer sees the brand in use in commerce association with the original goods and/or services. No trade = no trademark. 5

Federal Registration We turn now to securing a federal registration of a trademark at the U.S. Patent and Trademark Office (USPTO). Once registered the trademark should be followed by the symbol. Only licensed attorneys may represent you before the U.S. Patent and Trademark Office (USPTO). If you hire someone to represent you, he or she must be an attorney licensed to practice law in a U.S. state and be a member in good standing of the highest court of that state. Attorneys from other countries, except certain Canadian attorneys and agents representing Canadian filers, may NOT practice before the USPTO. 6

Statute & Regulations 15 U.S.C. 1051 et seq. This is the Trademark Act of 1946 or the Lanham Act. Title 37 of the Code of Federal Regulations Trademark Manual of Examining Procedure (TMEP) This is the official guidelines and procedures for examination followed by all Examining Attorneys. Internet access is at http://www.uspto.gov/trademarks/index.jsp TMEP search trademarks general trademark guidance file documents electronically 7

Information For Filing A U.S. Trademark Application REQUIRED INFORMATION (TMEP 202) Applicant (including name, address, entity type and citizenship) Identification of Goods/Services http://tess2.uspto.gov/netahtml/tidm.html Filing fee for at least one class Paper vs. Electronic Clear Drawing of the Mark Typed/Standard Characters, Design, Stylized 8

Other Information Description of the Mark Color claim (if applicable) Translation (if a foreign word) Claim of Ownership of Prior Registrations TEAS/TEAS PLUS filing indication for fees 9

Other Information Cont d OPTIONAL INFORMATION Basis for the application Use Section 1(a) Intent to Use Section 1(b) Foreign Application/Registration Section 44(d) and (e) For Use Based Application Specimen showing use of mark on the goods or in connection with the services for each class Date of first use in commerce Information regarding Foreign Application/ Registration Priority filing date claim under Paris Convention Registration date/number and copy of Registration 10

Classification U.S. CLASSIFICATION 45 classes see TMEP 1401 Class headings not permitted IDENTIFICATION OF GOODS/SERVICES see TMEP 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 prior registered marks, no vague terms e.g., including Handling issues Talk to the Examining Attorney Explain industry terms Look at recent third party registrations for similar wording 11

Possible Filing Basis 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 12

Forms of Filings for Applicants The USPTO accepts applications from applicants based on 1) actual use or 2) intent-to-use or 3) a combination of actual and intent to use. It classifies goods and services according to the NICE International Classification system. The USPTO charges applicants a filing fee for each class of goods and services listed in an application. The government filing fees are normally not refundable once an application is filed. 13

Cont d... Government Fees Vary There are three (3) levels of government filing fees for single class applications. One is $375 per class for new applications filed in paper form and prosecuted by mailed correspondence. Another is $325 per class for an electronically filed application using a identification of goods/services not in the USPTO Accepted Listing of Identifications and prosecuted electronically. This is knows as a Trademark Electronic Application System (TEAS) application. The last fee level is $275 per class electronically filed and prosecuted application with a identification listed in the USPTO Accepted Listing of Identifications. This is knows as a Trademark Electronic Application System PLUS (TEAS PLUS) application. 14

Cont d... Government Fees Vary We therefore strongly encourage clients to authorize new filing to be made as a TEAS PLUS application, electronically filed and prosecuted using an approved identification from the Accepted Listing of Identifications. In our experience, a TEAS PLUS application is usually less expensive for the applicant and examined quicker and registered earlier than the other two types of filings permitted by the regulations and procedures of the USPTO. 15

Foreign Applicant s Other Basis 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 Section 66 (Madrid) Extension of Protection from International Registration Foreign Applicants do not need to submit proof of use in commerce prior to issuance of the Certificate of Registration. U.S. Applicant s (citizens of the USA) with few exceptions may not use these basis for filing applications. 16

What Is Use For Application Purposes? 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. 17

Application flow through USPTO 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 - Discussed in the next hour) 18

Application flow through USPTO Cont d 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 (5 th - 6 th year) Combined Declaration of Use and Application for Renewal (9 th 10 th year) 19

Substantive Examination Issues Under Section 2 For Marks Registrable On The Principal Register Marks in applications shall be refused registration if they are: a) immoral, deceptive, or scandalous; or 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...; b) the flag or coat or arms of other insignia of the United States, any State or municipality, or any foreign nation, or any simulation thereof; c) a name, portrait, or signature of a living individual (absent that person's written consent) or the name, portrait, or signature of a dedeased President of the U.S. durig the life of his widow (absent her consent); d) confusingly similar to a trade name or mark previously used in the U.S. by another and not abandoned...; 20

Cont d e) (i) merely descriptive or deceptively misdescriptive of the goods/services; (ii) primarily geographically descriptive; (iii) primarily geographically deceptively misdescriptive; (iv) primarily merely a surname; (v) functional f) except as expressly excluded in (a), (b), (c), (d), (e)(iii) and (e)(v), nothing in this chapter shall prevent the registratio of a mark used by the applicant which has become distinctive of the applicant's goods/services. 21

Likelihood of Confusion initially found during examination Every application is examiner for the above substantive grounds for refusal. The most common ground is likelihood of confusion determined by the examiner using the factors listed in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). If the examiner detects a prior mark that is confusingly similar to the mark in the application a refusal of the mark must be issued. This gives the applicant notice of the refusal and six months to (1) purchase the cited registration, or (2) obtain a mutual use and registration agreement from the owner of the cited mark, or (3) prepare and file traversing arguments against the citation (and we will review this aspect next hour) or (4) abandon the application. The six month response term may not be extended and the application will become abandoned if some response is not filed on time. 22

Likelihood of Confusion Factors from DuPont case (1) The similarity or dissimilarity of the marks as to sound, sight and meaning [or commercial impression] (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 23

Likelihood of Confusion Factors from DuPont case cont d (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. 24

Examination Descriptiveness refusal 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). Laudatory marks like GREAT, SUPER, BEST are also descriptive. Descriptive marks may be registered on Supplemental Register or may be registered on Principal Register based on claim of acquired distinctiveness. 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). These marks should not be refused because as we saw last hour on the Spectrum they are inherently distinctive. 25

Primarily Geographically Deceptively Misdescriptive There are three elements to a primarily geographically deceptively misdescriptive refusal under Section 2(e)(3): (i) the mark refers primarily to a generally-known geographical location; (ii) the relevant public would likely believe that the goods or services originate from that location, when they do not; and (iii) the misrepresentation must be material to the purchasing decision. For example, JPK PARIS 75 & Design for "sunglasses not made in Paris illustrates all three elements so registration was refused. In re Jonathan Drew, Inc. d/b/a Drew Estate, Serial No. 77099522 (January 28, 2011) 26

Examination Primarily Merely a Surname Refusal Refusal of the mark will be made under the following 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 See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). For example, the surname McKie has no meaning so it would initially be refused registration on the Principal Register absent evidence of acquired distinctiveness. On the other hand, Banner is not primarily merely a surname since it has a dictionary meaning. 27

Examination Geographically Descriptive Refusal Registration will be refused where the goods actually come from the place named in the mark, and the following two-prong test is met: (1) The primary significance of the mark is a generally known place; and (2) The public makes a goods/place association, i.e., believe that the branded goods for which the mark is sought to be registered originate in that place. FRENCH LINE refused registration for an extensive list of goods because the public knows FRANCE is a major manufacturing nation and the goods would be associated with FRANCE. 28

Examination Functional Refusal With trade dress mark the examiner asks if the design 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) If so, then the trade dress is functional and not registerable. Evidence expired utility patents claiming the design feature is strong evidence of functionality. Are there alternative designs available? If so, maybe not functional. The companion issue is often the inherent distinctiveness of the mark. 29

Examination All other substantive basis for refusal Generic terms will NOT be registered. These are terms that the relevant purchasing public understands primarily as the common name and noun 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). 30

Procedural Examination Refusals Identification of goods issues such as wording or classification often lead to refusals. Disclaimers of descriptive terms also lead to refusals. Required Amendments (i.e., submission of a translation of the mark; whether the mark has any significance in the relevant trade, etc.) which not complied with lead to many aviodable refusals. 31

Once the examination is completed The Examiner will forward the application for publication when it is in acceptable condition. The mark will then be published in the Official Gazette for Trademark for a thirty day term in which anyone can file an Opposition against the registration of the mark. If no opposition is filed and the application was based on use in commerce or a foreign registration, the application will mature into a registration. If the application was filed as an intent-to-use application, a Notice of Allowance will be issued. Applicant has six months to file the Statement of Use, date of first use, specimen and government fee. Five extension of time (for six more months) are permitted. Once the SOU is filed and accepted the application matures into a registration and enforcement is permitted as of the original filing date of the ITU application. 32

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