Westchester Women's Bar Association
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In the United States trademark common law rights are significant rights that cannot be overlooked. Our trademark system recognizes legal rights from trademark registration and from trademark use in commerce. Common law trademark rights can be used to prove priority in a priority determination and such rights can be the basis to oppose a trademark application or to cancel a trademark registration. In addition, a party in a trademark dispute does not have to demonstrate technical trademark use to prevail in an opposition or cancellation proceeding. Instead, a party can rely on “use analogous to trademark use”. See our Web page entitled, Priority Determinations Based on Common Law Use, where we discuss how common law rights must be pleaded in the Notice of Opposition or the Petition to Cancel.

Technical trademark use is the type of use required to file a federal trademark application with the United States Patent & Trademark Office (“USPTO”). This means for goods the trademark must be placed on a container, the display associated with the product, the tag, label, packaging or associated documents. The goods have to be sold or transported in “commerce” as defined by the Trademark Act.

For services, there must be use in the sale or advertising of the services and the services must be rendered in commerce. Use analogous to trademark use is a looser requirement. Examples of this type of use would include pre-sales activities, use at a trade show, use in promotion or advertising, use in catalogs or brochures, use in trade publications, direct mail use, use directed at prospective purchasers, or trade name use. Use analogous to trademark use has to have an impact on consumers and prospective purchasers to create an association between the mark and the goods and services in the minds of the public. This association must have been created with more than an insubstantial number of potential consumers. The use must be visible to the public and if the public exposure is lacking, the use will not be sufficient even for a priority determination.

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Equitable considerations play a role in the Trademark Trial and Appeal Board’s (the “Board”) deliberations when determining whether or not to grant a Petition to Cancel a trademark registration. See Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 TTAB (2006) [precedential], where the Board denied a cancellation petition based on laches even though the petitioner established by a preponderance of the evidence that confusion was likely. This is a notable precedent of the Board and a respondent facing a Petition to Cancel should be aware of the facts and prior Board findings so parallels can be drawn between relevant circumstances and precedential decisions.

Teledyne Technologies, Inc. (“Petitioner”) petitioned the Board to cancel Western Skyways, Inc.’s (“Respondent”) registration for the mark GOLD SEAL for aircraft engines based on grounds of likelihood of confusion between the sources of the goods and prior rights. The Petitioner’s mark is identical (GOLD SEAL) to Respondent’s and the mark is used for “airplane parts, namely ignition harnesses”. There was testimony from Petitioner’s senior project manager that an ignition harness is an essential part of an aircraft’s engine. There was further evidence that the Petitioner commenced use of the mark with ignition harnesses in 1991 while the Respondent’s use was not until 1994. The Board held that the Petitioner had priority of use and the Respondent did not contest this fact.

Regarding likelihood of confusion, the Board commented that the identical marks impact the relatedness requirement to the effect that the degree of similarity required between the parties’ goods declines. The Board held that the goods were commercially related. It was further held that aircraft engines and ignition harnesses for aircraft engines travel in the same or similar channels of trade. However, the Board found two du Pont factors that weighed in the Respondent’s favor: a sophisticated consumer base and the absence of actual confusion despite the marks simultaneous use in the same trade channels for about ten years. However, after weighing all the du Pont factors the Board determined that Petitioner proved its likelihood of confusion claim by a preponderance of the evidence. See our web page entitled, Likelihood of Confusion Refusals – 2(d) Refusals, to review all the factors involved in this analysis.

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If an organization is offering products or services under a trademark in another country or plans to enter a market abroad in the future, consideration should be given to registering your trademark in that country. There should be an inquiry as to whether the mark is currently in use in that country or how soon will use commence abroad. Many foreign countries allow 3 years after registration for use to commence (very different from the U.S.) A question that comes up time and time again with our trademark practice is: should the trademark application our organization is filing abroad be filed directly with the Trademark Office of a particular country (a national application) or should the application be filed based on our U.S. application or registration through the Madrid Protocol (international registration). This is a complex question and many factors should be considered before making a determination.

Even before the issue of how to register is discussed, there should be a dialogue about what type of trademark clearance search will be conducted. Verifying what databases or common law sources will be utilized for the search is also an important query, depending on which country or countries are being searched. Some countries have a “first to use” trademark system like the U.S. This means searching unregistered marks (common law) is important because if one party used the mark before a similar mark is filed by another party, then possibly the senior user would be the party using the mark in commerce first. Other countries have a “first to file” system and do not recognize prior use rights.

There are some drawbacks to utilizing the Madrid System, for example if you file through the Madrid Protocol, the U.S. mark is open to attack for the first five years of the life of the international registration. If the mark does not register or should it be invalidated or cancelled, then all of the extensions of protection (applications or registrations) in other countries will be cancelled as well. You should consider the strength of your trademark and whether it is a pending U.S. application or U.S. registration. If the mark is weak and still a pending application, it may not mature to a registration or be attacked in an opposition which would cause your foreign applications or registrations to be cancelled as well. If cancellation occurs, there is an opportunity to convert the international registrations to national registrations and this will preserve the priority date of the international registration, but it is a very expensive process.

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In a recent case at the Trademark Trial and Appeal Board (the “Board” or “TTAB”), Watercraft Superstore, Inc. (the “Applicant”) took a different approach in convincing the Board that the subject trademark had acquired distinctiveness. See In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedential], where the Applicant filed an application for the mark WATERCRAFT SUPERSTORE in standard characters for online retail store services featuring personal watercraft parts and accessories. The Applicant requested registration on the basis that the mark, although descriptive had acquired distinctiveness under Section 2(f) of the Trademark Act (15 U.S.C. §1052(f)), but the Examiner refused the application on the ground that the trademark was merely descriptive of the Applicant’s services and secondary meaning had not been proven (acquired distinctiveness). The Applicant appealed to the Board.

Since the Applicant requested registration under Section 2(f), this is an admission of the fact that the mark is merely descriptive of the services and the only remaining issue is if the mark has acquired distinctiveness (secondary meaning). See our web page entitled: Factors To Be Considered When Determining If A Mark Is Descriptive  before submitting your trademark application to the USPTO. The Applicant must prove that consumers have associated the mark with a single source when attempting to prove acquired distinctiveness. The Trademark Act does not set forth specific types of evidence that should be produced in order to meet the burden of proof.

However, it is clear that more evidence will be required if the mark is highly descriptive of the goods or services because consumers in that case will be less likely to believe the mark functions as a source indicator. In this case, it is patently clear that the mark is highly descriptive. The term “superstore” is disclaimed from the mark because it refers to a large retail store offering a variety of merchandise and that is the nature of the Applicant’s store. “Watercraft” by definition means a vehicle used for water transportation. Applicant’s identification of services state that he offers an online store featuring watercraft.

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The Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted The Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) to resolve any disputes that arise between parties over the registration and use of domain names. The Policy was adopted by all ICANN accredited registrars and is incorporated by reference into your Registration Agreement with your registrar.

Since the wake of the new generic top-level domains (gTLD) another system has been put into place to facilitate trademark owners in policing their brands, the Uniform Rapid Suspension System (URS). As technology continues to grow and evolve we strive to keep pace and the URS was designed to provide a quick and cost effective procedure for clear-cut infringing domain names. It was designed to complement the existing UDRP. See our web page entitled: Update On The New Generic Top Level Domain Name Program for details regarding the new program.

To be successful and obtain relief under ICANN a complainant must prove all of the following prongs:

(i) that the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and

(ii) that the respondent has no legitimate interest in the domain name: and

(iii) the domain name has been registered and used in bad faith.

Regarding the first prong, its purpose is essentially to demonstrate standing. Typically, if you own a federally registered trademark or if you can prove you have common law rights and have acquired secondary meaning you will have standing to bring a UDRP complaint if the mark you have rights in is confusingly similar to the domain name registered by the respondent. To compare the domain name and trademark, there is a visual and aural comparison. Panels have agreed that if the dominant feature of the mark is similar or identical then adding a subsidiary word to the dominant element will not typically obviate the confusion for the purposes of the first prong requirement. If the complainant is asserting common law rights, it must show the mark has become a distinctive identifier associated with the goods or services and that secondary meaning has developed.

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There are many reasons to encourage applicants to select inherently distinctive trademarks. Adopting a mark that is merely descriptive will not allow an applicant to acquire the majority of benefits granted by federal trademark registration. In addition, an applicant selecting a descriptive mark must demonstrate that the mark has acquired distinctiveness if the trademark is to be registered on the Principal Register.

In a recent precedential decision from the Trademark Trial and Appeal Board (the”Board”), the applicant’s mark was refused because the Board held that the mark was merely descriptive of the goods and the applicant failed to show there was acquired distinctiveness. Reckitt Benckiser LLC (the “Applicant”) filed applications to register two marks, MINIMELTS and MINI-MELTS for pharmaceutical preparations for use as an expectorant in international class 5. Mini Melts, Inc. (the “Opposer”) objected on the grounds that the Applicant’s marks would cause confusion with his mark MINI MELT for ice cream and that it is merely descriptive of Applicant’s goods. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016) [precedential].

Opposer was able to establish standing for its likelihood of confusion claim, by proving that it had a “real interest” in the opposition proceeding, a “direct personal stake”, and a “reasonable basis” for its belief that it would be damaged if the Applicant’s trademark was registered. This burden was met because the Opposer demonstrated his use and registration for the mark MINI MELTS for ice cream. Since the standing criteria was met for likelihood of confusion, Opposer may assert any other ground that may demonstrate the Applicant is not entitled to register its mark.

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On first glance, this decision appears to be an unexpected result especially in light of the prior registration owned by the Appellant for the word mark CHURRASCOS for the same restaurant services. However, when viewing general principles of trademark law, maybe the outcome is not so unexpected. Regardless of your opinion, perhaps the easiest way to understand this ruling is to conclude that the mark has become generic over time. The Appellant in this matter, Cordua Restaurants, Inc. (“Cordua”) owns five restaurants marketed under CHURRASCOS. The restaurants feature South American dishes, including chargrilled Churrasco Steak. Years earlier, Cordua applied to the United States Patent & Trademark Office (“USPTO”) for the mark CHURRASCOS in standard character format for restaurant and bar services and catering. CHURRASCOS, the word mark registered on the Principal Register on June 3, 2008 under Section 2(f) after showing the mark acquired distinctiveness.

A few years later, Cordua attempted to register CHURRASCOS for the same restaurant services, but in a stylized format and it was refused. Cordua appealed to the Trademark Trial and Appeal Board (the “Board”) and it affirmed the Examiner’s refusal on the grounds that the mark was generic for restaurant services. See In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential]. Cordua argued that its prior registration should be prima facie evidence of the mark acquiring distinctiveness. However, the Board responded by stating that if the mark is highly descriptive, additional evidence is required to prove distinctiveness. Cordua appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”). See In re Cordua Restaurants, Inc., 118 USPQ2d 1632 (Fed. Cir. 2016).

The CAFC affirmed the finding of the Board, holding there was substantial evidence to find the mark CHURRASCOS was generic for restaurant services. A generic term is a common descriptive name for a class of goods or services. The critical issue is whether the relevant consumer base primarily understands the subject term to refer to the class of goods or services in question. Proof of the public’s understanding of the subject term should be submitted into evidence from reliable sources such as dictionaries, online sites, publications, and newspapers. The USPTO bears the burden of proving that the mark is generic by clear and convincing evidence.

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Janco, LLC (the “Applicant”) applied to the United States Patent & Trademark Office (the “USPTO”) to register the mark FLATIZZA for pizza in international class 30. Doctor Associates, Inc. (the “Opposer”) filed an opposition with the Trademark Trial and Appeal Board (“the Board” or the “TTAB”) claiming prior use of the mark FLATIZZA for flat sandwiches. Opposer claimed that the Applicant did not use the mark in “commerce” prior to filing its trademark application. If Opposer can prove this allegation the application will be deemed void ab initio.

The parties do not contest that the marks are confusingly similar and that the goods are related. Therefore, the only issue to resolve in this matter is who maintains priority of use over the mark FLATIZZA. Applicant filed its trademark application on February 24, 2014. At this time, Applicant owned one restaurant in a single location. Under the Trademark Act Section 1(a) the owner must use the trademark in “commerce” and “commerce” has a legal definition. The definition includes the following types of commerce: (1) interstate; (2) territorial (commerce within a territory of the United States, Guam, Puerto Rico, American Samoa or the U.S. Virgin Islands or between the U.S. and a territory of the U.S.); and (3) between the United States and a foreign country. Commerce within one state only will not qualify as a basis for filing a federal trademark application unless it impacts one of the three types of commerce that Congress can regulate. If there is only intrastate commerce, see our web page entitled, State Trademark Registration, for details on how to file a state application.

In prior holdings, courts and the Board have found that a single restaurant location using its mark for restaurant services is engaged in commerce that Congress can regulate. See Larry Harmon Picture Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), where the court held that a single restaurant location used its mark in commerce based on customers traveling across state boundaries to reach the restaurant location. In that case, it was shown that the restaurant was approximately one hour from a city that contained a population from three different states and that the restaurant had been featured in publications from different states. The Court concluded that while there is no requisite level of interstate commerce required before filing a federal trademark application, some use in commerce must be shown.

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One of the most frequently asked questions in our law practice is who should be the legal owner of a trademark. It is hard to believe that the “name section” of the trademark application is the section most frequently incorrectly completed of all the sections of the trademark application. If the wrong entity is named as the trademark owner, the application and registration may be void. In other words, a trademark registration may be invalid if the owner is not the person or entity that controls the nature and quality of the goods or services provided under the mark. If there is no business entity formed and you as an individual control the nature and quality of the goods and services, then the proper owner is you the “individual”. You will need to indicate your legal name and an address, in addition to recording your citizenship on the trademark application.

The general principal of trademark law is that the individual or legal entity that uses the mark owns the mark, unless use is by a related company or licensee. U.S. law recognizes use by a related company or licensee if the use inures to the benefit of the trademark owner. Often the reason for having another entity use the mark and another entity own the trademark is to protect a trademark or trademark portfolio from being forfeited in litigation, should there be a money judgment against the legal entity using the trademark. It should be noted, that in any license agreement it must be clear that the owner of the trademark will control the nature and quality of the goods or services and the license agreement should explicitly state how the control is exercised.

In addition, to an individual, a corporation, partnership, sole proprietorship, LLC, trust, estate, joint venture or joint applicants may be the proper legal owner of a trademark. When recording information on a trademark application, with respect to a business entity that is formed you must indicate the state where it is formed and the name and address of the business entity. For a sole proprietorship you must name the name of the sole proprietorship, provide the address, the state where it was formed and the name and citizenship of the sole proprietor.

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Florists’ Transworld Delivery Inc. (the “Applicant”) attempted to register its mark, a slogan, SAY IT YOUR WAY for two types of services. Only one service is at issue on appeal before the Trademark Trial and Appeal Board (the “Board”). The Examining Attorney refused the application for “creating an on-line community for registered users to participate, in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products, and gifts” in international class 42. The refusal was based on the applicant’s specimen failing to show the mark used with the services identified in Applicant’s trademark application. Applicant attempted to submit a substitute specimen that also failed to evidence the mark used with the relevant services. See In re Florists’ Transworld Delivery, Inc. Serial No. 85164876 (May 11, 2016).

Applicant’s specimen consisted of pages from his Twitter account located at https://twitter.com/ftdflowers. Applicant argued that the pages reflected discussions between the Applicant, its fans and customers. He further argued that Twitter is a social media service that permits its users to post short messages and for the messages to be viewed by those who follow that user’s account. In circumstances of a service mark application, the specimen must show the trademark as used in the sale or advertising of the services. See In re Graystone Consulting Assocs., Inc. 115 USPQ2d 2035 (TTAB 2015), where it was held that a service mark must be used in a manner that is readily perceived as identifying the services by relevant consumers. This is determined by a thorough review of the specimens.

Service mark specimens typically consist of advertising, promotional, and informational material and these may include pages from a website or pages from a Twitter account. However, the pages must show the mark in the advertisement of the services identified in the trademark application and create an association between the mark and the services. Use of the trademark must also identify and distinguish the services. This point is illustrated in the case In re Johnson Controls, Inc. 33 USPQ2d 1320 (TTAB 1994).

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