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The U.S. Patent and Trademark Office

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  1. The U.S. Patent and Trademark Office Cynthia Henderson Attorney-Advisor Office of Intellectual Property Policy and Enforcement (571) 272-9300 Overview of Trademarks

  2. Topics • International Standards of Protection under TRIPS • Introduction to Trademark Protection in the United States • Procedures to Obtaining a U.S. Federal Trademark Registration • Distinctiveness and other Common Refusals

  3. Article 15, TRIPS • Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs shall be eligible for registration as trademarks.”

  4. Definition of a Trademark • Any word, name, symbol or device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source

  5. Types of Trademarks • Word Marks KODAK • Design Marks • Composite Marks containing both words and design

  6. Unusual Trademarks • Shape: Bottle shape for soda pop • Color: Pink color for insulation • Sound: Three chimes sound for television broadcasting services • Scent: Plumeria flower blossom scent for sewing thread • Motion: Flying pegasus for movie studios

  7. Types of Trademark Protection in the U.S. • Common Law • protection derived from use • State Registration • registered with one or more U.S. states • Federal Registration • registered in the United States Patent and Trademark Office

  8. Statutory Authority • The Federal Trademark Registration Act of 1946, known as the Lanham Act (or Trademark Act) provides the statutory framework for federal examination and registration of trademarks

  9. Federal Registration of a Trademark • Provides notice to others of marks in use in commerce in the U.S. • Provides access to the federal courts • Provides prima-facie evidence of ownership • Provides access to anti-counterfeiting statutes • Permits enforcement of rights • Provides a basis for foreign filing

  10. Registration May be Applied To: • trademark associated with goods or products • service mark associated with the delivery of services • certification mark associated by the characteristics of someone’s goods or services • collective mark indicated by membership in an organization

  11. Applications May be Filed Based on: • Existing use of the mark in commerce • Intention to use the mark in commerce • Foreign applicationor registration

  12. Trademark Office Mission • Our mission is to register trademarks • The Trademark Act provides that “no trademark shall be refused registration on the Principal Register unless…”

  13. Examination Process at USPTO 1. File Application. 2. Examination by Examining Attorney – Allowed, Amended, or Refused. 3. If Allowed, Notice of Allowance and publication in the Official Gazette. 4. If Refused, appeal to the Trademark Trial and Appeal Board. 5. If Refusal is affirmed: • Appeal to U.S. District Court de novo; or • Appeal to Federal Circuit on administrative record.

  14. Examination Process at USPTO 6. The Office of the Solicitor defends Director of USPTO in ex parte appeals of TTAB decisions. 7. After publication, Opposition period. Both parties (Opposer and Applicant) have right to appeal the TTAB decision. 8. If no Opposition, Registration issues. 9. Cancellation proceeding available to cancel a registration. Both parties have right to appeal TTAB decision. In general, USPTO not involved in inter partes appeals of TTAB decision.

  15. POST-REGISTRATION REQUIREMENTS Requirements in the First Ten Years First Filing:A Declaration of Continued Use or Excusable Nonuse, filed between the 5th and 6th years after the registration date. Second Filing:A Combined Declaration of Continued Use or Excusable Nonuse and an Application for Renewal*, filed between the 9th and 10th years after the registration date. *For Registrations under §66(a), only a Declaration of Use is required. Renewal must be made at the International Bureau, under Article 7 of the Madrid Protocol.

  16. Most Common Grounds for Refusal • Lack of Distinctiveness • Likelihood of Confusion

  17. Article 15, TRIPS • “Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.”

  18. U.S.: Section 2(e)(1) of the Lanham Act “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 . . . unless it . . . consists of a mark which, when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them. . .”

  19. Capable of Distinguishing Goods or Services?

  20. A proposed mark is merely descriptive if it describes any significant aspect of the goods/services Purpose Characteristic Quality Use/Users Ingredient Function Feature The Merely Descriptive Test

  21. Examination for Distinctiveness: Merely Descriptive? • One of the most difficult determinations is often whether the proposed mark is “suggestive” or “merely descriptive”. When looking at the applicant’s proposed mark, if some imagination, thought or perception is required to determine the nature of the goods or services, the proposed mark is considered suggestive and no refusal is issued. However, if there is no such “step” in reasoning required and the proposed mark instead “immediately identifies” some attribute of the goods or services, it is merely descriptive.

  22. Examination for Distinctiveness: Merely Descriptive? • What factors are considered? • Third party registrations are not conclusive on the question of descriptiveness (each case must stand on its own merits, and not simply registered because other such marks appear on the register). • First and only user: simply because an applicant may be the first user does not alone justify registration

  23. Examination for Distinctiveness: Merely Descriptive? • What factors are considered? • If the mark is a composite mark, does the combined term evoke a new and unique commercial impression? Does it create a unitary mark, or does it have a bizarre or incongruous meaning? SNO-RAKE held not merely descriptive of a snow removal hand tool; LA YOGURT held registrable with a disclaimer of “yogurt”

  24. Examination for Distinctiveness: Is the Term Merely Descriptive? • What factors are considered? • The fact that a term is not found in a dictionary is not controlling on the question of registrability; i.e., BREADSPRED held merely descriptive of jellies and jams. • A determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. What significance will the mark would have on the average purchaser of the goods or services in the marketplace?

  25. Additional Considerations… • Acronyms may be arbitrary, descriptive or generic. • DJ : Generic for disc jockey services • DJ: Merely descriptive of the subject matter of magazines for disc jockeys • DJ: Arbitrary for “diamond jewelry” since no one uses the acronym to refer to diamond jewelry

  26. Examination for Distinctiveness: Deceptively Misdescriptive? • In U.S. practice, a mark may be deceptively mis-descriptive if it: • Mis-describes some aspect of the goods; and • Consumers are likely to believe the mis-description. • Note that if the mis-description is false, but not believable, the mark is not mis-descriptive; it’s arbitrary. Likewise, if the description is not false, the mark is descriptive rather than mis-descriptive.

  27. Examples • Examples: • WOODEN: • For plastic furniture. Consumers might believe that the furniture is indeed made of wood. Hence, WOODEN may be mis-descriptive. • For soft drinks. Consumers would not believe that the mark describes the goods, and the term is thus neither descriptive nor mis-descriptive. • SILK: • For cotton shirts. • For computers.

  28. Examination for Distinctiveness: Would These Be Refused? • SPANISH CUISINE for restaurants? • THE HUNTER’S FRIEND for hunting gloves? • LEMON AID for lemon scented dish detergent? • SMOOTH HANDS for skin cream? • JEWELTASTIC for jewelry? • ELECTRIC OUTLET for retail electronics store?

  29. Is it Ever Possible to Register a Non-Distinctive Designation in the U.S.? • It is possible to register a merely descriptive designation on the Principal Register if it has acquired distinctiveness (descriptive matter may also be disclaimed if mark contains other distinctive components). • Generic matter cannot be registered (unless the mark contains other distinctive components and the generic matter is disclaimed).

  30. Acquired Distinctiveness • If a proposed mark is merely descriptive, it may be registered on the Principal Register only with a showing of acquired distinctiveness – proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce, i.e., that to the consuming public the word has come to mean that the product is produced by one particular manufacturer.

  31. Acquired Distinctiveness • There are three types of evidence that may be used to establish acquired distinctiveness: • A claim of ownership of one or more prior registration on the Principal Register of the same mark for goods or services that are the same or related to those named in the pending application; • A statement that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made; • Actual evidence of acquired distinctiveness.

  32. TRIPS Article 16 • “The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods and services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.”

  33. U.S.: Section 2(d) of the Lanham Act “No trademark . . . shall be refused registration . . . unless it . . . so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods [or services] of the applicant to cause confusion, or to cause mistake, or to deceive . . .”

  34. COMPARE THE MARKS Identical Marks Similar Marks Sound Appearance Meaning COMPARE THE GOODS/SERVICES Identical Goods/Services Relatedness of Goods/Services Similar types Use of the goods/services together Channels of Trade/Marketing 2-part Test for Likelihood of Confusion

  35. Likelihood of Confusion • STRATEGYN vs. STRATEGEN • goods: computer software for business strategy plans vs. computer software for marketing and sales management • Likelihood of confusion exists? • SPRAYZON vs. SPRAY-ON • Goods: industrial cleaners and degreasers vs. cleaner for floors and woodwork • Likelihood of confusion exits? • LITTLE PLUMBER vs. LITTLE PLUMBER • Goods/Services: liquid drain opener vs. advertising services related to plumbing • Likelihood of confusion?

  36. Likelihood of Confusion • LASERSWING vs. LASER • Goods: golf clubs vs. golf balls and golf clubs • Likelihood of confusion exists? • COUNTRY ROCK CAFÉ vs. HARD ROCK CAFÉ • Goods/Services: Clothing vs. restaurants and clothing • Likelihood of confusion exists? • EL SOL vs. SUN • Goods: clothing vs. footwear • Likelihood of confusion exists?

  37. Thank you!