New York Trademark Attorney Blog

When Should A Trademark Applicant Appeal To The TTAB From A Refusal?

Published on: January 6, 2014 | By Nikki Siesel

This is a question many trademark applicants struggle with once they receive a final refusal from an Examining Attorney. An example of an appropriate time to appeal to the Trademark Trial and Appeal Board (TTAB) is when the Examining Attorney does not submit sufficient evidence into the record to meet its burden of making a prima facie showing that the mark is not registrable under the Rules of the Trademark Manual of Examining Procedure. Let’s examine the recent case of In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not citable as precedent], where the Examiner needed to prove that the proposed mark, JIN-JA for herbal tea was merely descriptive of applicant’s identified goods.

The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute, or feature of the product or service in connection with which it is used or intended to be used. Moreover, it is not necessary for the mark to describe each feature or function, only that it describes a single important attribute of the goods or services. This analysis must be made in relation to the goods or services identified in the trademark application. Lastly, one must determine the significance the term will have to the average consumer of the goods or services in the context of the specific manner of use. Refusal based on the trademark being merely descriptive of the applicant’s goods is a common ground for refusal. In the case of In re Canada Enterprises LLC, the fact that one of the significant ingredients in the herbal tea was ginger was not contested. Thus, ginger is merely descriptive of the applicant’s tea. The issue that the Board had to determine was whether the applied for mark JIN-JA will be perceived by the average consumer as a misspelling of the phonetic equivalent of the ingredient and descriptive word “ginger”.

In trademark law, there is a general rule that a creative spelling of a mark that is the phonetic equivalent of a “merely descriptive” word for the mark, would be considered descriptive as well, if the average purchaser would perceive it as the descriptive word (TMEP 1209.03(j)). See In re Dean S. Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (where the Board found that the mark URBANHOUZING would be perceived by consumers as the equivalent of the descriptive term Urban Housing). Here, the applicant argued that U.S. consumers would not pronounce the mark JIN-JA as “ginger”, and therefore cannot be the phonetic equivalent of the descriptive word ginger. Applicant argued that the mark was a play on the word “ninja” because the tea’s spicy flavor packs a powerful punch.

New Rules For Examining Trademark Applications For Marks Incorporating Generic Top-Level Domains

Published on: December 30, 2013 | By Nikki Siesel

In June 2011, ICANN (Internet Corporation for Assigned Names and Numbers) approved a plan to expand the number of new gTLDs (generic top-level domains) in the domain name system. A generic top-level domain is one of the categories of top-level domains maintained by the Internet Assigned Numbers Authority for use in the domain name system. Before the expansion, the core group of the generic top-level domains consisted of com, info, net, and org. The USPTO’s (The United States Patent & Trademark Office) policy had been that if a mark was comprised solely of a TLD for domain name registry services, the USPTO would refuse it on the basis that it could not function as a source indicator.

In June 2008, ICANN began considering a plan to expand the number of gTLDs in the domain name system. In the next several months, there is an impending launch of 1,400 new gTLDs. Large companies such as McDonald’s Corporation and Nike have applied to operate new gTLDs based on their brand names (.MCDONALDS and .NIKE). These companies will have the responsibility of operating an online registry similar to .com or .org. Once the registries are open then third parties can register domain names in the new gTLD. Based on this expansion of the domain name system, the USPTO has decided to update its policy with respect to registering gTLDs as trademarks. With this new landscape in mind, possibly a new gTLD could serve a source identifying function. To properly distinguish between those gTLDs that can serve as source identifiers and those that can not, the USPTO will utilize the following evaluation system for review of trademark applications that are comprised of gTLDs and that file for protection for domain name registration or registry services.

Under those circumstances, the trademark applicant must be able to satisfy all three of the following criteria:

1) The applicant must prove that the proposed trademark will be perceived as a source identifier;

2) The applicant must demonstrate that it entered into a valid agreement with ICANN (a “Registry Agreement”); and

3) Show that the identified services will benefit others.

Can A Flavor Or A Scent Receive Federal Trademark Protection?

Published on: December 23, 2013 | By Nikki Siesel

This recent Trademark Trial and Appeal Board (TTAB) precedential decision offers guidance to companies determining whether to seek trademark protection for flavor or scent trademarks. On February 25, 2013, in In re Pohl-Boskamp GmbH & Co., 106 USPQ2d. 1042 (TTAB 2013) [precedential], the TTAB affirmed the USPTO’s refusal to register the flavor and scent of peppermint for pharmaceutical formulations of nytroglycerin. The Trademark Act does not preclude registration of scents and flavors as trademarks. See In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990), where the TTAB held that the scent of Plumeria blossoms for thread and yarn was registrable. The key issues in In re Pohl-Boskamp GmbH & Co., centered around whether the mark functioned as a trademark and whether peppermint affected the quality of the product.

Under the Supreme Court’s decision in Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844 (1982), a product feature is functional if it is essential to the use or the purpose of the goods or if it affects the cost or quality of the goods. With respect to functionality, the applicant argued that peppermint flavor had no therapeutic properties and that the peppermint did not function to mask the product’s flavor, because nitroglycerin is generally odorless and tasteless. Conversely, the Examining Attorney introduced U.S. Patent No. 6,559,180 to demonstrate that even though peppermint oil is inactive in the spray, peppermint oil used in nitroglycerin spray could enhance the spray’s effectiveness. The TTAB held that this evidence was enough to prove that the proposed mark was functional. It showed that adding peppermint oil may be a means to improve the spray’s effectiveness. That being the case, then competitors may also want to take advantage of this enhancement. If the applicant has the exclusive right to use the peppermint flavor, a competitor would be at a disadvantage, having to forego using the peppermint oil to improve the spray’s effectiveness.

The second ground for refusal was failure to function as a trademark. Flavor and scent marks can never be inherently distinctive. In order to prove acquired distinctiveness, there must be a substantial showing to demonstrate that a flavor or a scent is registrable. To prove acquired distinctiveness, the applicant here stated that the use of the peppermint flavor and scent was “substantially exclusive” since 1989. The applicant also submitted 23 declarations of physicians and pharmacists to show that the peppermint flavor and scent acquired recognition. The Board did not give much weight to the declarations, because they were basically identical in form, and not created individually for each declarant. Another factor, cutting against the applicant was the existence of a competing product in the pharmaceutical industry using a peppermint flavor and scent. The Examiner explained that this would allow consumers to believe that the peppermint flavor and scent was a mere physical characteristic of the product, instead of a source indicator.

TTAB Finds Wine And Water Related Goods Under Likelihood Of Confusion

Published on: December 16, 2013 | By Nikki Siesel

For some time, there has been a line between alcoholic and non-alcoholic beverages, and applicants have relied on this lack of precedential finding at the Trademark Trial and Appeal Board (TTAB), when clearing trademarks in the beverage industry. However, Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., Opposition No. 91197659 (June 26, 2013) [citable as precedent], has modified the landscape for clearing alcoholic and non-alcoholic beverages such as wine and water. Before this decision applicants were relying on Cielo S.p.A. V. Austin House of Prayer, Opposition No. 91166590 (September 14, 2007) [not citable as precedent] for guidance. In the latter case, the Board dismissed an opposition that challenged the registration of the mark CIELO for drinking water, finding that there was no likelihood of confusion with the identical marks CIELO, one registered for wine and the other seeking trademark registration for drinking water. The applicant admitted the marks were identical, the products were sold through similar trade channels, and that the two products may be served together. Yet, the Board did not find enough evidence to hold that water and wine originate from the same source, or that circumstances surrounding the sales of the two products are such that consumers would believe that they come from the same source. However, a different holding (citable as precedent) is found in Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc.

In Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., the Board held that the applicant’s registration of the mark GOTT LIGHT for various water beverages is likely to cause confusion with opposer’s previously used and registered marks for wine, under the brands GOTT and JOEL GOTT. It held that the dominant term in both marks was “Gott” and that the marks were similar in sound, spelling and overall commercial impression. Regarding the goods, the TTAB held that “they have been shown to be related, to move through the same channels of trade, and to be available to the same classes of consumers.” The opposer submitted third-party registrations showing that the goods were of the type that would originate from a single source. Further opposer demonstrated that winery branded water is sold in the tasting rooms of wineries. Therefore, consumers can expect that water and wine will emanate from the same source.

Considering Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., is a precedential decision, practitioners and applicants alike would be wise to seriously consider the implications of the decision when clearing marks in the beverage field. Those looking to clear marks in the wine industry, particularly need to proceed with caution, as the TTAB has found a variety of goods and services related to wine for the purposes of a likelihood of confusion analysis. Although there is no per se rule stating beverages and restaurant services are likely to cause confusion when offered under the same trademarks, confusion is found more often than not. Regarding goods, the TTAB has found the following goods to be related to wine: soft drinks, other alcoholic beverages such as tequila, beer, and gelatin shots, food products such as certain sauces and vinegar, and now you can add water to the list.

Trademark Common Law Rights Can Prevail Based On Priority Against Registered Rights

Published on: December 9, 2013 | By Nikki Siesel

To receive the broadest type of trademark protection, we recommend registration with the United States Patent and Trademark Office. However, in the United States, if you have not registered your trademark rights, but you can prove trademark use in commerce, you will build common law (unregistered rights) rights. Common law trademark rights have been developed under a system of rights governed by state law. However, they will be limited to the geographic area in which the trademark is used. Of course in today’s global economy, common law rights are defined slightly differently due to trademark use on the Internet. Although, the same principal of a case-by-case analysis that is applied to infringement matters, will also apply to define one’s common law rights when Internet use is involved.

It can be particularly difficult to discover whether a third party has common law trademark rights in a specific mark. It is critical to search, not only state and federal registers, but also unregistered use. Common law trademark rights can prevail against a registrant based on priority of use. The two cases discussed below demonstrate this point.

In a recent Trademark Trial and Appeal Board decision, Barnhardt Manufacturing Company v.Wildwood Gin, Inc., Cancellation No. 92053237 (June 17, 2013) [not citable as precedent], the Board ruled that the petitioner established priority by a preponderance of the evidence, based on its common law rights. The petitioner proved that it shipped its product to a customer in Israel before the registrant/respondent first used the mark in interstate commerce. The Board held that in order to establish priority, a plaintiff is only required to show prior use, not continuous of its mark, unless the defendant has asserted the affirmative defense of abandonment. Here, the sale to a single foreign customer was enough to win on priority, and thus the Board granted the cancellation petition.

Trademark Applicants Have Another Reason To File For Federal Protection

Published on: December 2, 2013 | By Nikki Siesel

There are multiple benefits of filing for federal trademark protection. In the recent decision of the Trademark Trial and Appeal Board (TTAB), Central Garden & Pet Company v. Doskocil Manufacturing Co., Inc. Opposition No. 91188816 (August 16, 2013) [citable as precedent], one more reason is given to trademark applicants to encourage filing for federal trademark protection. In this decision, the Board clearly states that a trademark applicant is entitled to rely on its trademark application filing date as “constructive use” of its mark in commerce, in a Trademark Trial and Appeal Board proceeding, to establish priority of use. This applies to applicants filing either use applications or intent-to-use applications with the United States Patent and Trademark Office (See 15 U.S.C. §§1057(c) and 1141f(b)).

This is significant for several reasons. The first reason is that the applicant may reserve his or her first use date, at the time the trademark application is filed, even if the applicant has not actually used the trademark in connection with the goods or services in interstate commerce. This permits an applicant to gain priority for purposes of use of the trademark, while building their business without actual use. The second reason is that it is extremely costly to prove first use in commerce through testimony and business records, and using your filing date as your first use date allows you to avoid that expense. Lastly, the Examining Attorneys at the USPTO cannot start to work on the applicant’s behalf, until the trademark application is filed. Once filed, the USPTO Examiners will refuse an incoming trademark application, if it will cause a “likelihood of confusion” with the proposed mark in the applicant’s earlier filed trademark application.

We frequently counsel our clients to file a trademark application as soon as reasonably practicable subsequent to clearing the mark. Applicants should not delay a filing, waiting for a first use date. This will only expose the applicant to the risk of a third party filing for a similar trademark in a related industry. We encourage our clients to file intent-to-use applications for the very reason that the filing date will act as “constructive use” of the mark in commerce, as long as the application matures to a registration (See TMEP §201.02).