Westchester Women's Bar Association
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Receiving an Office Action that refuses your trademark application can be overwhelming. Most importantly, trademark applicants should be armed with knowledge of the general rules that apply so effective arguments can be crafted for a response to the Office Action. A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. See our firm page entitled, Likelihood of Confusion Refusals, 2(d) Refusals, to review the 13 factors considered in this analysis. Below are ten critical rules for trademark applicants to keep in mind when confronted with a likelihood of confusion refusal.

Rule 1- What if you have legally identical or virtually identical marks? If this is the case then, a lesser degree of similarity between the goods and services will suffice to find a likelihood of confusion.  In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). See also, In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

Rule 2- What if the goods or services overlap or if the goods or services are identical or virtually identical, then a lesser degree of similarity between the marks is necessary to support a determination that confusion is likely. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); See also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

Rule 3- What if only one good or service of a long list overlaps with the cited registration? As long as there is an overlap with any one good or service, the other goods or services in that particular class need not be examined. Typically, likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).

Rule 4- Another important rule dealing with goods or services that overlap or are identical is that the Board will presume that the distribution channels and the classes of consumers are the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011).

Rule 5- Be aware of the “Something More” Rule – When the relatedness of the goods and/or services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. See, In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. There is no per se rule as to what type of evidence will suffice under “something more”. Examples of types of “something more” evidence may include, a famous mark, actual use of a mark for both the goods and services at issue, or evidence of a large number of third-party registrations covering both the goods and services at issue. See, In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063.

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In 2014, the Trademark Trial and Appeal Board (“TTAB or the “Board”) issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not sections 1, 2 & 45 of the Lanham Act. See our blog post entitled, The TTAB’s Recent Decision Clears A Path For Titles Of Single Works, where we discuss the matter, In re King Productions, Inc., Serial No. 76703458 (November 19, 2014)[not precedential]. In re King Productions, Inc., opened the door for the Board to abandon its previous position that any single title to a creative work, such as a book, movie or play would not be able to function as a trademark and therefore not be able to register on the Principal Register or the Supplemental Register. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127.

The Federal Circuit Court of Appeals (“CAFC”) has affirmed the position that single titles of works cannot act as source indicators. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). The Board had issued consistent decisions such as,  In re Arnold, 105 USPQ2d 1953, 1954 (TTAB 2013) (“It is well settled that the title of a single creative work is not considered a trademark and is, therefore, unregistrable….”), until late 2014. Consistency broke in 2014, with the Board’s In re King Productions, Inc., decision that stated single titles are descriptive marks that may be able to acquire secondary meaning. However, the latest Board decision makes it clear that single creative titles cannot acquire distinctiveness. See In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential].

The applicant in In re Rothman, was seeking to register the mark, THE NEUROTIC PARENT’S GUIDE, in standard characters, for books on colleges and college admissions. Applicant’s mark was refused on the traditional grounds that the mark was a title to a single creative work. Applicant asserted that in addition to the book shown in the specimen the mark has been used on her blog in connection with colleges and the admissions process since 2008. The applicant argued that the blog although it is in a different medium would constitute use for a series. The Examining Attorney argued that to qualify as a series, the works must be in the same medium. Applicant, then made an argument in the alternative that the mark had acquired distinctiveness over the course of eleven years of use. The Examining Attorney made the refusal final and applicant appealed.

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This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an inherently distinctive mark and ensuring it is registered on the Principal Register with the United States Patent and Trademark Office. This blog will explain why registration is essential for acquiring strong legal rights, being able to efficiently enforce one’s trademark rights, and deterring others from infringing on your legal rights. If a trademark owner decides not to register its mark, and wants to enforce its rights, this becomes challenging. This challenge will also be encountered if a trademark is only registered on the Supplemental Register of the Trademark Office and not the Principal Register. See our firm page entitled, Filing Your Trademark On The Principal Register And Supplemental Register, for more information on this topic. The reasons why a trademark owner can benefit from registration are due to the presumptions that attach under the Lanham Act, specifically Sections 7(b) and 7(c) (15 U.S.C. §1057).

Under Section 7(b) of the Lanham Act, “[A] certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” These same rights are conferred on a trademark owner who initiates the application process as an intent-to-use applicant, assuming the mark matures to a registration (the intent-to-use filing date would act as the constructive use date for priority purposes under Section 7(c) of the Lanham Act).

If the mark is registered on the Principal Register, the trademark owner doesn’t need to prove its proprietary rights if involved in litigation in court or before the Trademark Trial and Appeal Board (“TTAB” or the “Board”). In other words, if you only have common law rights or a mark on the Supplemental Register, you will need to spend time and resources to first prove you have proprietary rights in the trademark before attempting to enforce your rights in an infringement action or under a claim for likelihood of confusion at the TTAB. The proprietary rights must be acquired before the opposing party’s priority date. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1378 (Fed. Cir. 2002); Otto Roth & Co. Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Keep in mind that a Supplemental Registration will provide a basis for standing and perhaps priority may not need to be proven, but proprietary rights must be demonstrated. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. A mark on the Supplemental Register is presumed to be merely descriptive of the goods or services identified in the registration, unless the trademark owner can prove acquired distinctiveness. The Opposer in Otter Products LLC, did not prove it possessed proprietary rights to the mark.

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Many clients inquire about whether an acronym or an abbreviation can function as a trademark. The answer to this inquiry will depend on several factors. The first question is does the acronym or abbreviation stand for specific wording. If it does, is the specific underlying wording merely descriptive of the services or goods identified in the trademark application? If it is, will the relevant purchasers recognize the acronym or abbreviation as the merely descriptive underlying wording it represents. If the answer to all three questions is yes, then it is probable that the Acronym or abbreviation will be found to be merely descriptive of the goods or services. Merely descriptive marks will be refused on the Principal Register of the United States Patent and Trademark Office (“USPTO”). For more on this topic see our firm page entitled, When Will Acronyms Be Considered Merely Descriptive?

The issue of whether an acronym is merely descriptive or not may arise in an Office Action if the Examining Attorney refused the application on this basis, or it may arise in a proceeding before the Trademark Trial and Appeal Board (the “Board”). An opposition or cancellation proceeding may cite merely descriptive grounds as the basis to oppose or cancel the mark. To have standing to bring such a proceeding, the Opposer or Petitioner would only need to prove that they are in the same business as the applicant or registrant and are competitors. Often, the answers to the first two questions are an easy yes, and cannot be disputed. However, the difficult inquiry is whether the relevant consumers will readily recognize the acronym as the descriptive underlying wording. In other words, the purchasers have to immediately understand upon seeing the mark with the goods or services, that the mark/acronym stands for the underlying phrase, and that it is substantially synonymous for the words it represents.

Examining Attorneys will introduce definitions for the acronym that show the underlying term, in an effort to prove the third element of the test is satisfied. In addition, Examiners will introduce evidence that third parties are also using the acronym in conjunction with the underlying phrase or to represent the underlying term for the same goods or services. See In re Pre-Paid Legal Services, Inc., Serial No. 86423483 (May 11, 2017) [not precedential], where the applicant filed for the mark PPL for “business administration of legal expense plan services, namely, arranging certain legal services covered by a membership contract for a member through a provider or referral third-party attorneys; arranging and conducting incentive or reward programs to promote the sale of pre-paid legal expense plans”, and the mark was refused. The Board affirmed the refusal, finding the mark PPL merely descriptive of the Applicant’s services since it was a well-recognized acronym for “pre-paid legal”. One obstacle in this case was that the applicant used the underlying phrase in its identification of services in the trademark application.

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My clients frequently inquire about using a geographic term as part of a trademark. Incorporating geographic words into a trademark places the applicant in a position where the application may be refused. There are two primary refusals often issued by Examining Attorneys at the United States Patent & Trademark office when marks include geographic terms. These are known as a Section 2(e)(2), geographically descriptive refusal and a Section 2(e)(3) geographically deceptively misdescriptive refusal. See also our firm page entitled, Common Grounds For Refusal Of A Trademark, for more information on Office Action refusals.

A mark is found to be geographically descriptive if: (1) the primary significance of the mark is a geographically known location; (2) the goods or services originate in the geographic location named in the mark; and (3) the purchasers would believe the goods or services originate in the location named in the mark. It should be noted when the mark names a known geographic location and the goods or services are from that location, it’s presumed that consumers would believe the products or services originate from the place named in the mark. If the mark is a composite mark and includes other elements besides the geographic place, and the other parts of the mark are inherently distinctive this may carry the mark. Under this circumstance a refusal may be avoided. However, adding descriptive or generic wording to the name of a geographic place will not alter its primary geographic significance.

Typically, the most challenging part of the analysis is determining if there is a goods place association when the goods or services are not from the geographic location. For example see In re Zeller, Serial No. 77544307 (September 30, 2009), where the applicant was seeking to register the mark CATALINA ISLAND GRANOLA & Design for granola. The Board found that the primary significance of the mark was geographic. The applicant lived on Catalina island, but declared the goods did not originate on Catalina Island, and the goods would not be manufactured there, but may be sold on the island. The next inquiry is would there be a goods place association. The record did not contain evidence that Catalina Island was known for producing food products like granola. The record showed that Catalina Island had agricultural concerns and did very little manufacturing. The fact that the applicant lived on Catalina Island, and would sell her goods there was not enough for a goods place association. The geographic place named in the mark would have to be associated with the granola in a way that the consuming public would believe that the granola originated there. The Board reversed the refusal.

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Last week the U.S. Supreme Court issued its long awaited decision in Iancu v Brunetti   588 U.S. ____, 2019 USPQ2d 232043 (2019).  The Lanham Act Section 2(a) states that trademarks should be refused on the Principal Register if the trademark consists of immoral or scandalous matter. Erik Brunetti was seeking to register the mark, “FUCT” for various apparel items. The Examining Attorney refused to register the mark because it was the phonetic equivalent of a vulgar term.

Brunetti appealed to the Trademark Trial and Appeal Board (the “Board”), and it affirmed the refusal based on the mark, “FUCT” being prohibited under Section 2(a) of the Lanham Act for being immoral or scandalous. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”), and the Court reversed the Board’s holding. Since the CAFC invalidated Section 2(a) of the Lanham, the U.S. Supreme Court agreed to hear the case. Now the U.S. Supreme Court has ruled that Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment.

Undoubtedly, the decision in Matal v. Tam influenced this ruling. See our blog post entitled, Two Significant Court Decisions Impacting USPTO Trademark Practice, for a more detailed analysis of the Tam case. In Tam, the U.S. Supreme Court held that Section 2(a) of the Lanham Act is unconstitutional under the Free Speech Clause of the First Amendment. Section 2(a) of the Trademark Act has been used to deny federal registration to trademarks that disparage or bring into contempt any persons living or dead. The applicant in Tam wanted to register the mark THE SLANTS for his Asian rock band. The Tam decision was a unanimous ruling holding the Disparagement Provision to discriminate based on viewpoint.

After the Tam decision, the USPTO had to remove certain cases from suspension (those refused on the Disparagement Provision) and reexamine the cases for other requirements. The Justices rendering the decisions of both cases (Tam & Brunetti) agree on the core principal that the government cannot discriminate against speech based on the ideas or opinions that the speech conveys. One of the Justices explained in Tam that the disparagement bar only allowed an applicant to register a mark if it conveyed a positive idea about a party, but not if it conveyed a derogatory message. In other words, the government cannot deny registration of a trademark based on views expressed by the mark.

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A couple of weeks ago, the Board issued a decision (although not precedential) that will be helpful to those applicants submitting Responses to Office Actions to surname refusals, see In re Fair Isaac Germany GmbH, Serial No. 87424333 (May 28, 2019). This case is interesting because it reverted back to placing emphasis on the rareness factor (see our blog post entitled, TTAB’s Precedential Decision That Further Shifts Surname Case Law). In addition, it accorded particular weight to the fact that no one associated with the applicant used the mark as a surname. Finally, I believe this decision may be the tipping point wherein the Board has determined that simply pointing out that no dictionary definition exists for the mark, will not be sufficient to prove that the mark will be perceived primarily as a surname with no other meaning.

In this case, the applicant was attempting to register the mark SIRON for anti-fraud computer software. Among the factors to be considered in determining whether a term is primarily a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant uses the term as a surname; (iii) whether the term has any other recognized meaning other than a surname; and (iv) whether the term has the “look and feel”’ of a surname or the structure and pronunciation of a surname; and (v) whether the term is sufficiently stylized to remove its primary significance of that of a surname. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). See also, Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].  For more information on this topic, see the firm page entitled, Can You Use Your Name As A Trademark?

These factors are not exclusive, any relevant circumstances may be considered in the determination. There is no rule about the kind or the amount of evidence that is necessary to show that the applied for mark would be perceived as primarily a surname. If there are any doubts, doubts should be resolved in favor of the applicant. See In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). 

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A recent case from the Trademark Trial and Appeal Board (the “Board” or “TTAB”) focuses attention on part of the Lanham Act, which is not often the subject of many Board Decisions. Section 2(c) prohibits registration of a mark if it consists of or comprises a name, portrait, or signature identifying a particular living individual without written consent,  Lanham Act §2(c) , 15 U.S.C. §1052(c). The applicant filed an application to register the trademark MANIKCHAND for tobacco. The opposer, (a corporation formed under the law of India) cited Section 2(c) of the Lanham Act, stating MANIKCHAND is the personal name of the founder of the opposer, Rasiklal Manikchand Dhariwal, and there is no consent to use the name. See, M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd. and Global Technology & Trade Marks Limited, Opposition No. 91231033 (April 26, 2019) [precedential].

Opposer argues that consumers in the United States refer to Rasiklal Manikchand Dhariwal as the Manikchand Group. The opposer pleaded ownership of an application for MANIKCHAND GUTKA for chewing tobacco. Regarding standing for a 2(c) claim, this may be established by asserting facts that that show that opposer is a competitor of the applicant and has a right to use the subject name. Opposer testified that MANIKCHAND has been used in connection with tobacco products in the U.S, and that some U.S. vendors sell it under the mark RMD MANIKCHAND. The registrability of a mark is determined on the basis of facts that exist at the time the issue is under consideration (i.e. throughout the pendency of ex parte and inter party proceedings). In re Thunderbird Prods Corp., 406 F.2d 1389, 160 USPQ 730 (CCPA 1969).

The rationale behind 2(c) is that the law wants to extend protection to living individuals so they can commercially exploit their names, and this is why written consent is required. To sufficiently allege a 2(c) claim, a plaintiff must allege that the mark consists of the name, likeness, image or signature of a particular individual. In addition, a plaintiff must have pleaded that the individual is so well known that the public would reasonably assume a connection between the mark and the individual or that the individual is publicly connected with the business or the field for the goods and services, so that the connection would be assumed.

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This recent precedential decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) cautions applicants to be in a position to show documentary proof contemporaneous with the trademark filing date that there was a bona fide intent for use of the proposed mark. See A&H Sportswear Co., Inc. v. William W. Yedor, 2019 USPQ2d 111513 (TTAB 2019) [precedential]. See our firm page entitled, How Does An Applicant Prove A Bona Fide Intent To Use A Trademark, for more information on this topic. The applicant was seeking to register MIRACLE ON 35TH STREET in standard characters for printed matter, photographs, posters, etc. and clothing. The matter comes to the TTAB from a Notice of Opposition filed by A&H Sportswear Co., (“Opposer”) Inc. on the grounds of priority and likelihood of confusion and dilution by blurring. Opposer pleaded 15 registrations for the mark MIRACLE for various apparel. Opposer simultaneously filed for summary judgment and to amend its pleadings to add a claim for no bona fide intent to use the mark in commerce.

Under Section 528.07(a) of Trademark Trial and Appeal Board Procedure (“TBMP”), a party can seek summary judgment on an unpleaded claim if they simultaneously move to amend the pleadings to include that claim. The TTAB liberally grants leave to amend pleadings if justice so requires it, unless the amendment to the pleadings would violate case law or prejudice one of the parties. Six weeks after receiving the last of the written discovery, opposer moved to amend the pleadings. Applicant did not produce any evidence that the delay would prejudice his rights, likely because the documents needed to defend the claim were in the applicant’s possession. Leave to amend the pleadings was granted.

To show that a party has a bona fide intent to use the mark in commerce, there has to be an objective determination based on a totality of the circumstances. The absence of documentary evidence regarding an applicant’s bona fide intent to use the trademark in commerce establishes a prima facie case that the applicant lacks the intention required under trademark law. The applicant produced one image of a prototype of a T-shirt as a response to a request for production of documents. The applicant couldn’t identify documents that showed use of the mark on the goods in commerce. The applicant couldn’t identify any retail shops, distributors, or resellers that would offer the goods with the trademark; nor could he produce a business or marketing plan associated with the branded apparel or other printed goods. Lastly, there was no evidence of any websites that displayed the goods or intended to display or sell the goods in the future.

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In a recent decision issued by the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the CAFC affirmed the Trademark Trial and Appeal Board’s decision (the “Board”) to refuse a specimen under the Lanham Act.  See In re Siny Corp., 2019 USPQ2d 11362 (Fed. Cir. 2019) [precedential].  The court stated that the specimen did not qualify as a display associated with the goods. The applicant had tried to register the mark CASALANA for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories”. The applicant argued that its specimen, images of its website should be acceptable as a point of sale display associated with the goods. The Examining Attorney objected because the specimen did not include a means for ordering the goods.

The image of the webpage showed the goods with the mark CASALANA, and an explanation of the goods. Near the bottom of the webpage it stated, “For sales information” and there was a telephone number and email address in close proximity inviting customers to call. The Board relied on the case of In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the rule that an invitation to call the applicant for additional information, including obtaining a quote for an order, does not provide a means for ordering the product. The rationale for this rule is that before acquiring this information via telephone, the customer did not have enough information to place an order.

Typically a display associated with the goods will contain information such as pricing details, order size, payment options, and information about shipping. If such information is provided, enough to allow the customer make a purchasing decision, along with contact information, it’s possible that a website could act as a display associated with the goods (assuming purchasers actually placed orders over the phone or through an email after viewing the information).  If all the important information to purchase the goods was acquired through another means other than the website, the website did not function as an example of use of the mark in commerce. See our webpage entitled, For Purposes Of Trademark Law, What Is Use In Commerce, for more information on this topic.

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