1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree
Under Section 1(a)(1) of the Trademark Act, 15 U.S.C.
§1051(a)(1), an application based on use in commerce must be filed by the owner
of the mark. A §1(a) application must include a verified statement that the
applicant believes it is the owner of the mark sought to be registered. 15 U.S.C.
§1051(a)(3)(A); 37 C.F.R. §2.33(b)(1). An application that is not filed by the
owner is void. See
TMEP §1201.02(b).
An application under §1(b) or §44 of the Act, 15 U.S.C. §1051(b)
or §1126, must be filed by a party who is entitled to use the mark in commerce,
and must include a verified statement that the applicant is entitled to use the
mark in commerce and that the applicant has a bona fide intention to use the
mark in commerce as of the application filing date. 15 U.S.C. §§1051(b)(3),
1126(d)(2) and 1126(e); 37 C.F.R. §2.33(b)(2). When the person designated as
the applicant was not the person with a bona fide intention to use the mark in
commerce, the application is void. See
TMEP §1201.02(b).
In a §1(b) application, before the mark can be registered, the
applicant must file an amendment to allege use under 15 U.S.C. §1051(c) (see
TMEP §§1104
et seq.) or a statement of use under 15 U.S.C. §1051(d) (see
TMEP §§1109
et seq.) that states that the applicant is the owner of the
mark. 15 U.S.C. §§1051(b)(3)(A) and (B); 37 C.F.R. §§2.76(b)(1), and2.88(b)(1).
In a §44 application, the applicant must be the owner of the
foreign application or registration on which the United States application is
based as of the filing date of the United States application. See
TMEP§1005.
An application under §66(a) of the Trademark Act (i.e., a
request for extension of protection of an international registration to the
United States under the Madrid Protocol), must be filed by the holder of the
international registration. 15 U.S.C. §1141e(a). The application must include
a verified statement that the applicant has a bona fide intention to use the
mark in commerce. 15 U.S.C. §1141(5). The verified statement in a §66(a)
application is part of the international registration on file at the
International Bureau of the World Intellectual Property Organization ("IB").
The IB will have established that the international registration includes this
verified statement before it sends the request for extension of protection to
the United States Patent and Trademark Office
("USPTO"). See
TMEP §804.06.
The request for extension of protection
remains part of the international registration, and ownership is determined by
the IB. See
TMEP §501.07
regarding assignment of §66(a) applications.
In an application under §1 of the Trademark Act, an applicant may
base its claim of ownership of a trademark or a service mark on:
(1) its own exclusive use of the mark;
(2) use of the mark solely by a related company whose use
inures to the applicant's benefit (see
TMEP §§1201.03
et seq.);
or
(3) use of the mark both by the applicant and by a related
company whose use inures to the applicant's benefit (see
TMEP §1201.05).
Where the mark is used by a related company, the owner is the
party who controls the nature and quality of the goods sold or services
rendered under the mark. The owner is the only proper party to apply for
registration. 15 U.S.C. §1051. See
TMEP §§1201.03
et seq. for
additional information about use by related companies.
The examining attorney should accept the applicant's statement
regarding ownership of the mark unless it is clearly contradicted by
information in the record. In re Los Angeles Police Revolver and Athletic
Club, Inc., 69 USPQ2d 1630 (TTAB 2004).
The Office does not inquire about the relationship between the
applicant and other parties named on the specimens or elsewhere in the record,
except when the reference to another party clearly contradicts the applicant's
verified statement that it is the owner of the mark or entitled to use the
mark. Moreover, where the application states that use of the mark is by a
related company or companies, the examining attorney should not require any
explanation of how the applicant controls such use.
The above provisions also apply to service marks, collective
marks and certification marks, except that, by definition, collective marks andcertification marks are not used by the owner of the mark, but are used by
others under the control of the owner. 15 U.S.C. §§1053 and 1054. See
TMEP §§1303.01
,
1304.03
and
1306.01(a).
See
TMEP §1201.04
for information about when an examining
attorney should issue an inquiry or refusal with respect to ownership.
The applicant may be any person or entity capable of suing andbeing sued in a court of law. See
TMEP §§803
et seq. for the
appropriate format for identifying the applicant and setting forth the relevant
legal entity. See
TMEP §1201.03(a)
regarding the form for indicating
that the mark is used solely by a related company.
An application must be filed by the party who is the owner of (or
is entitled to use) the mark as of the application filing date. See
TMEP §1201.
An application based on use in commerce under 15 U.S.C. §1051(a)
must be filed by the party who owns the mark on the application filing date.
If the applicant does not own the mark on the application filing date, the
application is void. 37 C.F.R. §2.71(d). Huang v. Tzu Wei Chen Food
Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988).
If the record indicates that the applicant is not the owner of
the mark, the examining attorney should refuse registration on that ground.
The statutory basis for this refusal is §1 of the Trademark Act, 15 U.S.C.
§1051, and, where related company issues are relevant, §§5 and 45, 15 U.S.C.
§§1055 and 1127. The examining attorney should not have the filing date
cancelled or refund the application filing fee.
In an application under §1(b) or §44 of the Trademark Act, 15 U.S.C.
§1051(b) or §1126, the applicant must be entitled to use the mark in commerce
on the application filing date, and the application must include a verified
statement that the applicant has a bona fide intention to use the mark in
commerce. 15 U.S.C. §§1051(b)(3)(A), 1051(b)(3)(B), 1126(d)(2) and 1126(e).
When the person designated as the applicant was not the person with a bona fide
intention to use the mark in commerce at the time the application was filed,
the application is void. American
Forests v. Sanders, 54 USPQ2d
1860 (TTAB 1999), aff'd, 232 F.3d 907 (Fed. Cir. 2000) (intent-to-use
application filed by an individual held void, where the entity that had a bona
fide intention to use the mark in commerce on the application filing date was a
partnership composed of the individual applicant and her husband). However, the
examining attorney will not inquire into the bona fides, or good faith, of an
applicant's asserted intention to use a mark in commerce during ex parte
examination, unless there is evidence in the record clearly indicating that the
applicant does not have a bona fide intention to use the mark in commerce. See
TMEP §1101.
When an application is filed in the name of the wrong party, this
defect cannot be cured by amendment or assignment. 37 C.F.R. §2.71(d);
TMEP§803.06.
However, if the application was filed by the owner, but there was a
mistake in the manner in which the applicant's name is set forth in the
application, this may be corrected. See
TMEP §1201.02(c)
for examples
of correctable and non-correctable errors.
See
TMEP §1201
regarding
ownership of a §66(a) application.
If the party applying to register the mark is in fact the owner
of the mark, but there is a mistake in the manner in which the name of the
applicant is set out in the application, the mistake may be corrected by
amendment. U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183
USPQ 613 (Comm'r Pats. 1974). However, the application may not be
amended to designate another entity as the applicant. 37 C.F.R. §2.71(d);
TMEP§803.06.
An application filed in the name of the wrong party is void andcannot be corrected by amendment. In re Tong Yang Cement Corp., 19 USPQ2d
1689 (TTAB 1991).
The following are examples of correctable errors in identifying
the applicant:
(1) If the applicant identifies itself by a name under which
it does business, which is not its name as a legal entity, then amendment to
state the applicant's correct legal name is permitted.
(2) If the applicant mistakenly names an operating division
that is not a legal entity as the owner, then the applicant's name may be
amended. See
TMEP §1201.02(d).
(3) Clerical errors such as the mistaken addition or
omission of "The" or "Inc." in the applicant's name may be corrected by
amendment.
(4) If the record is ambiguous as to who owns the mark,
e.g., an individual and a corporation are each identified as the owner in
different places in the application, the application may be amended to indicate
the proper applicant.
(5) If the owner of a mark legally changed its name before
filing an application, but mistakenly lists its former name on the application,
the error may be corrected because the correct party filed, but merely
identified itself incorrectly. In re Techsonic Industries, Inc., 216 USPQ
619 (TTAB 1982).
(6) If an applicant has been identified as "A and B, doing
business as The AB Company, a partnership," and the true owner is a partnership
organized under the name The AB Company and composed of A and B, the
applicant's name should be amended to "The AB Company, a partnership composed
of A and B."
(7) If an applicant has been identified as "ABC Corporation,
formerly known as XYZ, Inc.," and the correct entity is "XYZ, Inc.," the
applicant's name may be amended to "XYZ, Inc.," as long as "ABC Corporation,
formerly known as XYZ, Inc." was not a different existing legal entity.
Cf. Custom Computer Services Inc. v. Paychex Properties Inc., 337 F.3d
1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003).
To correct an obvious mistake of this nature, a verification or
declaration is not normally necessary.
The following are examples of non-correctable errors in
identifying the applicant:
(1) If the president of a corporation is identified as the
owner of the mark when in fact the corporation owns the mark, the application
is void as filed because the applicant is not the owner of the mark.
(2) If an application is filed in the name of entity A, when
the mark was assigned to entity B before the application filing date, the
application is void as filed because the applicant was not the owner of the
mark at the time of filing. Huang v. Tzu Wei Chen Food Co. Ltd., 849
F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (application filed by an individual
two days after ownership of the mark was transferred to a newly formed
corporation held void).
(3) If the application is filed in the name of a joint
venturer when the mark is owned by the joint venture, the applicant's name
cannot be amended. In re Tong Yang Cement Corp., supra.
(4) If an application is filed in the name of corporation A
and a sister corporation (corporation B) owns the mark, the application is void
as filed because the applicant is not the owner of the mark.
An operating division that is not a legal entity that can sue andbe sued does not have standing to own a mark or to file an application to
register a mark. The application must be filed in the name of the company of
which the division is a part. In re Cambridge Digital Systems, 1 USPQ2d
1659, 1660 n.1 (TTAB 1986). An operating division's use is considered to be
use by the applicant and not use by a related company; therefore, reference to
related-company use is permissible but not necessary.
See
TMEP Chapter 500
regarding changes of ownership andchanges of name subsequent to filing an application for registration, and
TMEP§§502.02
et seq. regarding the procedure for requesting that a
certificate of registration be issued in the name of an assignee or in an
applicant's new name.
Section 5 of the Trademark Act, 15 U.S.C. §1055, states, in part,
as follows:
Where a registered mark or a mark sought to be registered is or
may be used legitimately by related companies, such use shall inure to the
benefit of the registrant or applicant for registration, and such use shall not
affect the validity of such mark or of its registration, provided such mark is
not used in such manner as to deceive the public.
Section 45 of the Act, 15 U.S.C. §1127, defines "related company"
as follows:
The term "related company" means any person whose use of a mark
is controlled by the owner of the mark with respect to the nature and quality
of the goods or services on or in connection with which the mark is used.
Thus, §5 of the Act permits applicants for registration to rely
on use of the mark by related companies. Either a natural person or a juristic
person may be a related company. 15 U.S.C. §1127.
The essence of related-company use is the control exercised over
the nature and quality of the goods or services on or in connection with which
the mark is used. When a mark is used by a related company, use of the mark
inures to the benefit of the party who controls the nature and quality of the
goods or services. This party is the owner of the mark and, therefore, is the
only party that may apply to register the mark. Smith International, Inc.
v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981).
Reliance on related-company use requires, inter alia, that
the related company use the mark in connection with the same goods or services
recited in the application. In re Admark, Inc., 214 USPQ 302 (TTAB
1982) (related company use not at issue where the applicant sought registration
of a mark for advertising agency services and the purported related company
used the mark for retail store services).
A related company is different from a successor in interest who
is in privity with the predecessor in interest for purposes of determining the
right to register. Wells Cargo, Inc. v. Wells Cargo, Inc., 197 USPQ 569
(TTAB 1977), aff'd, 606 F.2d 961, 203 USPQ 564 (C.C.P.A. 1979).
See
TMEP §1201.03(c)
regarding wholly owned related
companies, §1201.03(d) regarding corporations with common stockholders,
directors or officers, §1201.03(e) regarding sister corporations, and§1201.03(f) regarding license and franchise situations.
If the mark is not being used by the applicant but is being used
by one or more related companies whose use inures to the benefit of the
applicant under §5 of the Act, then these facts must be disclosed in the
application. 37 C.F.R. §2.38(b). See Pease Woodwork Co., Inc. v. Ready
Hung Door Co., Inc., 103 USPQ 240 (Comm'r Pats. 1954); Industrial
Abrasives, Inc. v. Strong, 101 USPQ 420 (Comm'r Pats. 1954). Use that
inures to the applicant's benefit is a proper and sufficient support for an
application and satisfies the requirement of 37 C.F.R. §2.33(b)(1) that a §1(a)
application specify that the applicant has adopted and is using the
mark.
The party who controls the nature and quality of the goods or
services on or in connection with which the mark is used should be set forth as
the applicant. In an application under §1(a) of the Trademark Act, the
applicant should state in the body of the application that the applicant has
adopted and is using the mark through its related company (or equivalent
explanatory wording). In a §1(b) application, the statement that the applicant
is using the mark through a related company should be included in the
amendment to allege use under 15 U.S.C. §1051(c) (see
TMEP §§1104
etseq.) or statement of use under 15 U.S.C. §1051(d) (see
TMEP §§1109
etseq.).
The applicant is not required to give the name of the
related-company user unless it is necessary to explain information in the
record that clearly contradicts the applicant's verified claim of ownership of
the mark.
The applicant may claim the benefit of use by a related company
in an amendment to the application. Greyhound Corp. v. Armour Life
Insurance Co., 214 USPQ 473, 475 (TTAB 1982).
If the applicant and a related company both use the mark, and it
is the applicant's own use of the mark that is relied on in the application,
then the applicant does not have to include a reference to use by a related
company in the application. See
TMEP §1201.05.
Where the application states that use of the mark is by a related
company or companies, the Office does not require an explanation of how the
applicant controls the use of the mark.
Similarly, the Office does not inquire about the relationship
between the applicant and other parties named on the specimens or elsewhere in
the record, except when the reference to another party clearly contradicts the
applicant's verified statement that it is the owner of the mark or entitled to
use the mark. See
TMEP §1201.04.
Related-company use includes situations where a wholly owned
related company of the applicant uses the mark or the applicant is wholly owned
by a related company that uses the mark.
Frequently, related companies comprise parent and wholly owned
subsidiary corporations. Either a parent corporation or a subsidiary
corporation may be the proper applicant, depending on the facts concerning
ownership of the mark. The Office will consider the filing of the application
in the name of either the parent or the subsidiary to be the expression of the
intention of the parties as to ownership in accord with the arrangements
between them.
Either an individual or a juristic entity may own a mark that is
used by a wholly owned related company. See In re Hand, 231 USPQ 487
(TTAB 1986).
Corporations are not "related companies" within the meaning of §5
of the Trademark Act, 15 U.S.C. §1055, merely because they have the same
stockholders, directors or officers, or because they occupy the same premises.
In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) (statement that
both the applicant corporation and the corporate user of the mark have the same
principal stockholder and officer held insufficient to show that the user is a
related company).
If an individual applicant is not the sole owner of the
corporation that is using the mark, the question of whether the corporation is
a "related company" depends on whether the applicant maintains control over the
nature and quality of the goods or services such that use of the mark inures to
the applicant's benefit. A formal written licensing agreement between the
parties is not necessary, nor is its existence sufficient to establish
ownership rights. The critical question is whether the applicant sufficiently
controls the nature and quality of the goods or services with which the mark is
used. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981) (detailed
written agreement and substantial evidence in the record indicating that the
applicant, an individual, exercised control over the nature and quality of the
goods sold under the mark by the user corporation held sufficient to show that
the corporation was a related company).
Similarly, where an individual applicant is not the sole owner of
the corporation that is using the mark, the fact that the individual applicant
is a stockholder, director of officer in the corporation is insufficient in
itself to establish that the corporation is a related company. The question
depends on whether the applicant maintains control over the nature and quality
of the goods or services.
See
TMEP §1201.03(c)
regarding use by wholly owned related
companies.
The fact that two sister corporations are controlled by a single
parent corporation does not mean that they are related companies. Where two
corporations are wholly owned subsidiaries of a common parent, use by one
sister corporation is not considered to inure to the benefit of the other
unless the applicant sister corporation exercises appropriate control over the
nature and quality of the goods or services on or in connection with which the
mark is used. In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987);
Greyhound Corp. v. Armour Life Insurance Co., 214 USPQ 473 (TTAB 1982).
See
TMEP §1201.03(c)
regarding use by wholly owned related
companies.
The Office accepts applications by parties who claim to be owners
of marks through use by controlled licensees, pursuant to a contract or
agreement. Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981).
A controlled licensing agreement may be recognized whether oral
or in writing. In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983).
If the application indicates that use of the mark is pursuant to
a license or franchise agreement, and the record contains nothing that
contradicts the assertion of ownership by the applicant (i.e., the
licensor or franchisor), the examining attorney will not inquire about the
relationship between the applicant and the related company (i.e., the
licensee or franchisee).
Ownership rights in a trademark or service mark may be acquired
and maintained through the use of the mark by a controlled licensee even when
the only use of the mark has been made, and is being made, by the licensee. Turner
v. HMH Publishing Co., Inc., 380 F.2d 224, 154 USPQ 330, 334 (5th
Cir. 1967), cert. denied, 389 U.S. 1006, 156 USPQ 720 (1967); Central
Fidelity Banks, Inc. v. First Bankers Corp. of Florida, 225 USPQ 438, 440
(TTAB 1984) (use of the mark by petitioner's affiliated banks considered to
inure to the benefit of petitioner bank holding company, even though the bank
holding company could not legally render banking services and thus could not
use the mark).
Joint applicants enjoy rights of ownership to the same extent as
any other "person" who has a proprietary interest in a mark. Therefore, joint
applicants may license others to use a mark and, by exercising sufficient
control and supervision of the nature and quality of the goods or services to
which the mark is applied, the joint applicants/licensors may claim the
benefits of the use by the related company/licensee. In re Diamond Walnut
Growers, Inc. and Sunsweet Growers Inc., 204 USPQ 507 (TTAB 1979).
Stores that are operating under franchise agreements from another
party are considered "related companies" of that party, and use of the mark by
the franchisee/store inures to the benefit of the franchisor. Mr. Rooter
Corp. v. Morris, 188 USPQ 392, 394 (E.D. La. 1975); Southland Corp. v.
Schubert, 297 F. Supp. 477, 160 USPQ 375, 381 (C.D. Cal. 1968).
In all franchise and license situations, the key to ownership is the
nature and extent of the control by the applicant of the goods or services to
which the mark is applied. A trademark owner who fails to exercise sufficient
control over licensees or franchisees may be found to have abandoned its rights
in the mark. See Hurricane Fence Co. v. A-1 Hurricane Fence Co. Inc.,
468 F. Supp. 975, 208 USPQ 314, 325-27 (S.D. Ala. 1979).
In general, where the application states that a mark is used by a
licensee or franchisee, the Office does not require an explanation of how the
applicant controls the use. See
TMEP §1201.03(b).
The Office does not inquire about the relationship between the
applicant and other parties named on the specimens or elsewhere in the record,
except when the reference to another party clearly contradicts the applicant's
verified statement that it is the owner of the mark or entitled to use the
mark.
The examining attorney should inquire about another party if the
record specifically states that another party is the owner of the mark, or if
the record specifically identifies the applicant in a manner that contradicts
the claim of ownership, for example, as a licensee. In these circumstances,
registration should be refused under §1 of the Trademark Act, on the ground
that the applicant is not the owner of the mark. Similarly, when the record
indicates that the applicant is a United States distributor, importer or other
distributing agent for a foreign manufacturer, the examining attorney should
require the applicant to establish its ownership rights in the United States in
accordance with
TMEP §1201.06(a).
Where the specimen of use indicates that the goods are
manufactured in a country other than the applicant's home country, the examining
attorney normally should not inquire whether the mark is used by a foreign
manufacturer. See
TMEP §1201.06(b).
Also, where the application states
that use of the mark is by related companies, an explanation of how the
applicant controls use of the mark by the related companies is not required. See
TMEP §1201.03(b).
An applicant's claim of ownership of a mark may be based on the
applicant's own use of the mark, even though there is also use by a related
company. The applicant is the owner by virtue of the applicant's own use, andthe application does not have to refer to use by a related company.
An applicant may claim ownership of a mark when the mark is
applied on the applicant's instruction. For example, if the applicant
contracts with another party to have goods produced for the applicant andinstructs the party to place the mark on the goods, that is the equivalent of
the applicant itself placing the mark on its own goods and reference to
related-company use is not necessary.
A distributor, importer or other distributing agent of the goods
of a manufacturer or producer does not acquire a right of ownership in the
manufacturer's or producer's mark merely because it moves the goods in trade. In
re Bee Pollen from England Ltd., 219 USPQ 163 (TTAB 1983); Audioson
Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977);
Jean D'Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In
re Lettmann, 183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America
Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods
bearing the mark of a manufacturer or producer is neither the owner nor a
related-company user of the mark.
If the applicant merely distributes or imports goods for the
owner of the mark, registration must be refused under §1 of the Trademark Act, except
in the following situations:
(1) If a parent and wholly owned subsidiary relationship
exists between the distributor and the manufacturer, then the applicant's
statement that such a relationship exists disposes of an ownership issue. See
TMEP §1201.03(c).
(2) If an applicant is the United States importer or
distribution agent for a foreign manufacturer, then the applicant can register
the foreign manufacturer's mark in the United States, if the applicant submits
one of the following:
(a) written consent from the owner of the mark to
registration in the applicant's name, or
(b) written agreement or acknowledgment between the parties
that the importer or distributor is the owner of the mark in the United States,
or
(c) an assignment (or true copy) to the applicant of the
owner's rights in the mark as to the United States together with the business
and good will appurtenant thereto.
See In re Pharmacia Inc.,
2 USPQ2d 1883 (TTAB 1987); In re Geo. J. Ball, Inc., 153 USPQ 426 (TTAB
1967).
Where a specimen of use indicates that the goods are manufactured
in a country other than the applicant's home country, the examining attorney
normally should not inquire whether the mark is used by a foreign manufacturer.
If, however, information in the record clearly contradicts the applicant's
verified claim of ownership (e.g., a statement in the record that the
mark is owned by the foreign manufacturer and that the applicant is only an
importer or distributor), then registration must be refused under §1, 15 U.S.C.
§1051, unless registration in the United States by the applicant is supported
by the applicant's submission of one of the documents listed in
TMEP§1201.06(a).
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), requires
that the examining attorney refuse registration when an applicant's mark, as
applied to the specified goods or services, so resembles a registered mark as
to be likely to cause confusion. In general, registration of confusingly
similar marks to separate legal entities is barred by §2(d). See, e.g., In
re Citibank, N.A., 225 USPQ 612 (TTAB 1985); In re Champion
International Corp., 220 USPQ 478 (TTAB 1982); In re Air Products, Inc.,
124 USPQ 81 (TTAB 1960). However, the Court of Appeals for the Federal Circuit
has held that, where the applicant is related in ownership to a company that
owns a registered mark that would otherwise give rise to a likelihood of
confusion, the examining attorney must consider whether, in view of all the
circumstances, use of the mark by the applicant is likely to confuse the public
about the source of the applicant's goods because of the resemblance of the
applicant's mark to the mark of the other company. The Court stated that:
The question is whether, despite the similarity of the marks
and the goods on which they are used, the public is likely to be confused about
the source of the hair straightening products carrying the trademark
"WELLASTRATE." In other words, is the public likely to believe that the source
of the product is Wella U.S. rather than the German company or the Wella
organization.
In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276
(Fed. Cir. 1986). The Court remanded the case to the Board for consideration
of the likelihood of confusion issue.
In ruling on that issue, the Board concluded that there was no
likelihood of confusion, stating as follows:
[A] determination must be made as to whether there exists a
likelihood of confusion as to source, that is, whether purchasers would
believe that particular goods or services emanate from a single source, when in
fact those goods or services emanate from more than a single source. Clearly,
the Court views the concept of "source" as encompassing more than "legal
entity." Thus, in this case, we are required to determine whether Wella A.G.
and Wella U.S. are the same source or different sources....
The existence of a related company relationship between Wella
U.S. and Wella A.G. is not, in itself, a basis for finding that any "WELLA"
product emanating from either of the two companies emanates from the same
source. Besides the existence of a legal relationship, there must also be a
unity of control over the use of the trademarks. "Control" and "source" are
inextricably linked. If, notwithstanding the legal relationship between
entities, each entity exclusively controls the nature and quality of the goods
to which it applies one or more of the various "WELLA" trademarks, the two
entities are in fact separate sources. Wella A.G. has made of record a
declaration of the executive vice president of Wella U.S., which declaration
states that Wella A.G. owns substantially all the outstanding stock of Wella U.S.
and "thus controls the activities and operations of Wella U.S., including the
selection, adoption and use of the trademarks." While the declaration contains
no details of how this control is exercised, the declaration is sufficient,
absent contradictory evidence in the record, to establish that control over the
use of all the "WELLA" trademarks in the United States resides in a single
source.
In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987)
(emphasis in original), rev'd on other grounds, 858 F.2d 725, 8 USPQ2d
1365 (Fed. Cir. 1988).
Therefore, in some limited circumstances, the close relationship
between related companies will obviate any likelihood of confusion in the
public mind because the related companies constitute a single source. See
TMEP §§1201.07(b)
et seq. for further information.
First, it is important to note that analysis under Wella
is not triggered until an applicant affirmatively asserts that a §2(d) refusal is
inappropriate because the applicant and the registrant, though separate legal
entities, constitute a single source, or the applicant raises an equivalent
argument. Examining attorneys should issue §2(d) refusals in any case where an
analysis of the marks and the goods or services of the respective parties
indicates a bar to registration under §2(d). The examining attorney should not
attempt to analyze the relationship between an applicant and registrant until
an applicant, in some form, relies on the nature of the relationship to obviate
a refusal under §2(d).
Once an applicant has made this assertion, the question is
whether the specific relationship is such that the two entities constitute a
"single source," so that there is no likelihood of confusion. The following
guidelines may assist the examining attorney in resolving questions of
likelihood of confusion when the marks are owned by related companies and the
applicant asserts unity of control. (Of course, in many of these situations,
the applicant may choose to attempt to overcome the §2(d) refusal by submitting
a consent agreement or other conventional evidence to establish no likelihood
of confusion. See In re Sumitomo Electric Industries, Ltd., 184 USPQ
365 (TTAB 1974). Another way to overcome a §2(d) refusal is to assign all
relevant registrations to the same party.)
If the applicant or the applicant's attorney represents that
either the applicant or the registrant owns all of the other entity,
and there is no contradictory evidence, then the examining attorney should
conclude that there is unity of control, a single source and no likelihood of
confusion. This would apply to an individual who owns all the stock of a
corporation, and to a corporation and a wholly owned subsidiary. In this
circumstance, additional representations or declarations should generally not
be required, absent contradictory evidence.
In Wella, the applicant provided a declaration stating
that the applicant owned substantially all of the stock of the
registrant and that the applicant thus controlled the activities of the
registrant, including the selection, adoption and use of trademarks. The Board
concluded that this declaration alone, absent contradictory evidence,
established unity of control, a single source and no likelihood of confusion.
Therefore, if either the applicant or the registrant owns substantially
all of the other entity and asserts control over the activities of the other
entity, including its trademarks, and there is no contradictory evidence, the
examining attorney should conclude that unity of control is present, that the
entities constitute a single source, and that there is no likelihood of
confusion under §2(d). In such a case the applicant should generally provide
these assertions in the form of an affidavit or declaration under 37 C.F.R.
§2.20.
If neither the applicant nor the registrant owns all or
substantially all of the other entity, the applicant bears a more substantial
burden to establish that unity of control is present. For instance, if both
the applicant and the registrant are wholly owned by a third common parent, the
applicant would have to provide detailed evidence to establish how one sister
corporation controlled the trademark activities of the other to establish unity
of control to support the contention that the sister corporations constitute a
single source. See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); Greyhound
Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982). Likewise, where
an applicant and registrant have certain stockholders, directors or officers in
common, the applicant must demonstrate with detailed evidence or explanation
how those relationships establish unity of control. See Pneutek, Inc. v.
Scherr, 211 USPQ 824 (TTAB 1981). The applicant's evidence or explanation
should generally be supported by an affidavit or a declaration under 37 C.F.R.
§2.20.
In contrast to those circumstances where the relationship between
the parties may support a presumption of unity of control or at least afford an
applicant the opportunity to demonstrate unity of control, some relationships,
by their very nature, contradict any claim that unity of control is present.
For instance, if the relationship between the parties is that of licensor andlicensee, unity of control will ordinarily not be present. The licensing
relationship suggests ownership in one party and control by that one party over
only the use of a specific mark or marks, but not over the operations or
activities of the licensee generally. Thus, there is no unity of control andno basis for concluding that the two parties form a single source. Precisely
because unity of control is absent, a licensing agreement is necessary. The
licensing agreement enables the licensor/owner to control specific activities
to protect its interests as the sole source or sponsor of the goods or services
provided under the mark. Therefore, in these situations, it is most unlikely
that an applicant could establish unity of control to overcome a §2(d) refusal.
In an application under §1 of the Act, the examining attorney
must determine whether the subject matter for which registration is sought is
used as a trademark by reviewing all evidence (e.g., the specimens of
use and any promotional material) of record in the application. See In re
Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992) (examining attorney
should look primarily to specimens to determine whether a designation would be
perceived as a source indicator, but may also consider other evidence, if there
is other evidence of record).
Not everything that a party adopts and uses with the intent that
it function as a trademark necessarily achieves this goal or is legally capable
of doing so, and not everything that is recognized or associated with a party
is necessarily a registrable trademark. As the Court of Customs and Patent
Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ
227, 229 (C.C.P.A. 1960):
The Trademark Act is not an act to register words but to
register trademarks. Before there can be registrability, there must be a
trademark (or a service mark) and, unless words have been so used, they cannot
qualify for registration. Words are not registrable merely because they
do not happen to be descriptive of the goods or services with which they are
associated.
Sections 1 and 2 of the Trademark Act, 15 U.S.C. §§1051 and 1052,
require that the subject matter presented for registration be a "trademark."
Section 45 of the Act, 15 U.S.C. §1127, defines that term as follows:
The term "trademark" includes any word, name, symbol, or
device, or any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register established by this
Act,
to identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown.
Thus, §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052,
and 1127, provide the statutory basis for refusal to register on the Principal
Register subject matter that, due to its inherent nature or the manner in which
it is used, does not function as a mark to identify and distinguish the
applicant's goods. The statutory basis for refusal of registration on the
Supplemental Register of matter that does not function as a trademark because
it does not fit within the statutory definition of a trademark is §§23 and 45,
15 U.S.C. §§1091 and 1127.
When the examining attorney refuses registration on the ground
that the subject matter is not used as a trademark, the examining attorney
should explain the specific reason for the conclusion that the subject
matter is not used as a trademark. See
TMEP §§1202.01
et seq.
for a discussion of situations in which it may be appropriate, depending on the
circumstances, for the examining attorney to refuse registration on the ground
that the asserted trademark does not function as a trademark, e.g.,
TMEP§§1202.01
(trade names), 1202.02(a) et seq. (functionality), 1202.03
(ornamentation), 1202.04 (informational matter), 1202.05 (color marks), 1202.06
(goods in trade), 1202.07 (columns or sections of publications), 1202.08 (title
of single creative work), 1202.09 (names of artists and authors), 1202.10
(model or grade designations), 1202.11 (background designs and shapes), 1202.12
(varietal and cultivar names).
The presence of the letters "SM" or "TM" cannot transform an
otherwise unregistrable designation into a mark. In re Remington Products
Inc., 3 USPQ2d 1714 (TTAB 1987); In re Anchor Hocking Corp., 223
USPQ 85 (TTAB 1984); In re Minnetonka, Inc., 212 USPQ 772 (TTAB 1981).
See
TMEP §§1301.02
et seq. regarding use of subject
matter as a service mark;
TMEP §§1302
through 1304 regarding use of subject
matter as a collective mark; and
TMEP §1306
regarding use of subject matter as
a certification mark.
The name of a business or company is a trade name. The Trademark
Act distinguishes trade names from trademarks by definition. While a trademark
is used to identify and distinguish the trademark owner's goods from those
manufactured or sold by others and to indicate the source of the goods, "trade
name" and "commercial name" are defined in §45 of the Act, 15 U.S.C. §1127, as
follows:
The terms "trade name" and "commercial name" mean any name used
by a person to identify his or her business or vocation.
The Trademark Act does not provide for registration of trade
names. See In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) ("[T]here
was a clear intention by the Congress to draw a line between indicia which
perform only trade name functions and indicia which perform or also perform the
function of trademarks or service marks.").
If the examining attorney determines that matter for which
registration is requested is merely a trade name, registration must be refused
both on the Principal Register and on the Supplemental Register. The statutory
basis for refusal of trademark registration on the ground that the matter is
used merely as a trade name is §§1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052 and 1127, and, in the case of matter sought to be registered for
services, §§1, 3, and 45, 15 U.S.C. §§1051, 1053 and 1127.
A designation may function as both a trade name and a trademark
or service mark. See In re Walker Process Equipment Inc., 233 F.2d 329,
332, 110 USPQ 41, 43 (C.C.P.A. 1956), aff'g 102 USPQ 443 (Comm'r Pats.
1954).
If subject matter presented for registration in an application is
a trade name or part of a trade name, the examining attorney must determine
whether it is also used as a trademark or service mark by examining the
specimens and other evidence of record in the application file. See In re
Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994) (DIAMOND HILL FARMS, as used
on containers for goods, found to be a tradename that identifies applicant as a
business entity rather than a mark that identifies applicant's goods anddistinguishes them from those of others).
Whether matter that is a trade name (or a portion thereof) also
performs the function of a trademark depends on the manner of its use and the
probable impact of the use on customers. See In re Unclaimed Salvage &
Freight Co., Inc., 192 USPQ 165, 168 (TTAB 1976) ("It is our opinion that
the foregoing material reflects use by applicant of the notation 'UNCLAIMED
SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name
serving to identify applicant as a viable business entity; and that this is or
would be the general and likely impact of such use upon the average person
encountering this material under normal circumstances and conditions
surrounding the distribution thereof."); In re Lytle Engineering & Mfg.
Co., 125 USPQ 308 (TTAB 1960) ("'LYTLE' is applied to the container for
applicant's goods in a style of lettering distinctly different from the other
portion of the trade name and is of such nature and prominence that it creates
a separate and independent impression.")
The presence of an entity designator in a name sought to be
registered and the proximity of an address are both factors to be considered in
determining whether a proposed mark is merely a trade name. In re Univar
Corp., 20 USPQ2d 1865, 1869 (TTAB 1991) ("[T]he mark "UNIVAR" independently
projects a separate commercial impression, due to its presentation in a
distinctively bolder, larger and different type of lettering and, in some
instances, its additional use in a contrasting color, and thus does more than
merely convey information about a corporate relationship.") See also Book
Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) ("That
the invoices ... plainly show ... service mark use is apparent from the fact
that, not only do the words 'BookCrafters, Inc.' appear in larger letters and a
different style of print than the address, but they are accompanied by a design
feature (the circularly enclosed ends of two books).").
A determination of whether matter serves
solely as a trade name rather than as a mark requires consideration of the way
the mark is used, as evidenced by the specimens. Therefore, no refusal on that
ground will be issued in an intent-to-use application until the applicant has
submitted specimens of use in conjunction with either an amendment to allege
use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d).
When an applicant applies to register a product's design, product
packaging, color, or other trade dress for goods or services, the examining
attorney must consider two issues: (1) functionality; and (2)
distinctiveness. See TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23, 58 USPQ2d 1001, 1004-1005 (2001); Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 775, 23 USPQ2d 1081, 1086 (1992) (only
nonfunctional distinctive trade dress is protected). See
TMEP§§1202.02(a)
et seq. regarding functionality,
TMEP §§1202.02(b)
and
1212
et seq. regarding distinctiveness, and
TMEP §1202.02(c)
regarding
separate treatment of the two issues procedurally. With respect to the
functionality and distinctiveness issues in the specific context of color as a
mark, see
TMEP §§1202.05
and
1202.05(f).
Before October 30, 1998, there was no specific statutory
reference to functionality as a ground for refusal, and functionality refusals
were thus issued as failure-to-function refusals under Sections 1, 2 and 45 of
the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.
Effective October 30, 1998, the Technical Corrections to
Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended
the Trademark Act to expressly prohibit registration on either the Principal or
Supplemental Register of matter that is functional:
•
Section 2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5),
prohibits registration on the Principal Register of "matter that, as a whole,
is functional."
•
Section 2(f) of the Act, 15 U.S.C. §1052(f), provides that matter
that, as a whole, is functional may not be registered even on a showing that it
has become distinctive.
•
Section 23(c) of the Act, 15 U.S.C. §1091(c), provides that a
mark that, as a whole, is functional may not be registered on the Supplemental
Register.
•
Section 14(3) of the Act, 15 U.S.C. §1064(3), lists functionality
as a ground that can be raised in a cancellation proceeding more than five
years after the date of registration.
•
Section 33(b)(8) of the Act, 15 U.S.C. §1115(b)(8), lists
functionality as a statutory defense to infringement in a suit involving an
incontestable registration.
These amendments codified case law and the longstanding Office
practice of refusing registration of matter that is functional.
The functionality doctrine, which prohibits registration of
functional product features, is intended to encourage legitimate competition by
maintaining the proper balance between trademark law and patent law. As the
Supreme Court explained, in Qualitex Co. v. Jacobson Products Co., Inc.,
514 U.S. 159, 164, 34 USPQ2d 1161, 1163 (1995):
The functionality doctrine prevents trademark law, which seeks
to promote competition by protecting a firm's reputation, from instead
inhibiting legitimate competition by allowing a producer to control a useful
product feature. It is the province of patent law, not trademark law, to
encourage invention by granting inventors a monopoly over new product designs
or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors
are free to use the innovation. If a product's functional features could be
used as trademarks, however, a monopoly over such features could be obtained without
regard to whether they qualify as patents and could be extended forever
(because trademarks may be renewed in perpetuity).
In other words, the functionality doctrine ensures that
protection for utilitarian product features be properly sought through a
limited-duration utility patent, and not through the potentially unlimited
protection of a trademark registration. Upon expiration of a utility patent,
the invention covered by the patent enters the public domain, and the
functional features disclosed in the patent may then be copied by others - thus
encouraging advances in product design and manufacture. In TrafFix Devices,
Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007
(2001), the Supreme Court reiterated this rationale, also noting that the
functionality doctrine is not affected by evidence of acquired distinctiveness:
The Lanham Act does not exist to reward manufacturers for their
innovation in creating a particular device; that is the purpose of the patent
law and its period of exclusivity. The Lanham Act, furthermore, does not
protect trade dress in a functional design simply because an investment has
been made to encourage the public to associate a particular functional feature
with a single manufacturer or seller.
Thus, even where the evidence establishes that consumers have
come to associate a functional product feature with a single source, trademark
protection will not be granted in light of the public policy reasons just
stated. Id.
Functional matter cannot be protected as trade dress or a
trademark. 15 U.S.C. §§1052(e)(5) and (f), 1091(c), 1064(3), and 1115(b). A
feature is functional as a matter of law if it is "essential to the use or
purpose of the product or if it affects the cost or quality of the product." TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001,
1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159,
165, 34 USPQ2d 1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982).
While some courts had developed a definition of functionality
that focused solely on "competitive need" - thus finding a particular product
feature functional only if competitors needed to copy that design in order to
compete effectively - the Supreme Court held that this "was incorrect as a
comprehensive definition" of functionality. TrafFix, 532 U.S. at 33, 58
USPQ2d at 1006. The Court emphasized that where a product feature meets the
traditional functionality definition - that is, it is essential to the use or
purpose of the product or affects the cost or quality of the product - then the
feature is functional. Id. However, an inquiry into competitive need
for the product design or feature at issue may be appropriate in cases where
the mark sought to be registered is a color or other matter that does not
easily fit within the "utilitarian" definition of functionality. Id. at
1006-07 (stating that inquiring into the issue of "significant
non-reputation-related disadvantage" (i.e., competitive need) would be
appropriate in cases of "aesthetic functionality," such as Qualitex). See
TMEP §§1202.02(a)(iii)(C)
and
1202.05
regarding the issues of "aesthetic functionality"
and color as a mark.
The determination that a proposed mark is functional constitutes,
for public policy reasons, an absolute bar to registration on either the
Principal Register or the Supplemental Register - regardless of evidence
showing that the proposed mark has acquired distinctiveness. TrafFix,
532 U.S. at 29, 58 USPQ2d at 1006. See also Valu Engineering, Inc. v.
Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002); In re
Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).
See
TMEP §§1202.02(a)(v)
et seq. regarding
evidentiary considerations pertaining to functionality refusals.
Prior to 2002, the Office used the terms "de facto" and "de
jure" in assessing whether "subject matter" (usually a product feature or
the configuration of the goods) presented for registration was functional.
This distinction originated with the Court of Customs and Patent Appeals' Morton-Norwich
decision, which was discussed by the Federal Circuit in Valu Engineering,
Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1425 (Fed. Cir.
2002):
Our decisions distinguish de facto functional features,
which may be entitled to trademark protection, from de jure functional
features, which are not. 'In essence, de facto functional means that
the design of a product has a function, i.e., a bottle of any design
holds fluid.' In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1,
3 (Fed. Cir. 1984). De facto functionality does not necessarily defeat
registrability. Morton-Norwich, 671 F.2d [1332,] at 1337, 213 USPQ [9]
at 13 [(C.C.P.A. 1982)] (A design that is de facto functional, i.e.,
'functional' in the lay sense ... may be legally recognized as an indication of
source.'). De jure functionality means that the product has a
particular shape 'because it works better in this shape.' Smith, 734
F.2d at 1484, 222 USPQ at 3.
However, in three Supreme Court decisions involving functionality
- Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d
1161 (1995), Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205, 54 USPQ2d 1065 (2000), and TrafFix Devices, Inc. v. Marketing
Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) - the Court did not use
the "de facto/de jure" distinction. Nor were these terms used when the
Trademark Act was amended to expressly prohibit registration of matter that is
"functional." Technical Corrections to Trademark Act of 1946, Pub. L. No.
105-330, §201, 112 Stat. 3064, 3069 (1998). Accordingly, in general, examining
attorneys no longer make this distinction in Office actions which refuse
registration based on functionality.
De facto functionality is not a ground for refusal. In
re Ennco Display Systems Inc., 56 USPQ2d 1279, 1282 (TTAB 2000); In re
Parkway Machine Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999).
The concept of "aesthetic functionality" (as opposed to
"utilitarian functionality") has for many years been the subject of much
confusion as to its precise meaning, as well as whether it is even a viable
legal principle. While the Court of Customs and Patent Appeals (the
predecessor to the Court of Appeals for the Federal Circuit) appeared to reject
the doctrine of aesthetic functionality in In re DC Comics, Inc., 689
F.2d 1042, 215 USPQ 394 (C.C.P.A. 1982), the Supreme Court later referred to
aesthetic functionality as a valid legal concept in TrafFix Devices, Inc. v.
Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001). In
discussing the proper definition of "functionality," the Court distinguished
its previous decision in Qualitex Co. v. Jacobson Products Co., Inc.,
514 U.S. 159, 34 USPQ2d 1161 (1995), specifically contrasting the fact that,
unlike the issue currently before the Court, in Qualitex "aesthetic
functionality was the central question, there having been no indication that
the green-gold color of the laundry press pad had any bearing on the use or
purpose of the product or its cost or quality." TrafFix, 532 U.S. at
33, 58 USPQ2d at 1006-07. Although the references to aesthetic functionality
in the TrafFix decision are dicta, the Court's use of this
terminology appears to indicate that the concept of aesthetic functionality -
at least when used properly - is a viable legal principle.
The confusion regarding this concept stems from widespread misuse
of the term "aesthetic functionality" in cases involving ornamentation issues,
with some courts having mistakenly expanded the category of "functional" marks
to include matter that is solely ornamental, essentially on the theory that
such matter serves an "aesthetic function" or "ornamentation function." It is
this incorrect use of the term "aesthetic functionality" in connection with
ornamentation cases that was rejected by the Court of Customs and Patent
Appeals. See In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394,
397, 399-401 (majority opinion and Rich, J., concurring) (C.C.P.A. 1982)
(holding, in a case involving features of toy dolls, that the Board had
improperly "intermingled the concepts of utilitarian functionality and what has
been termed 'aesthetic functionality'"; and rejecting the concept of aesthetic
functionality where it is used as a substitute for "the more traditional source
identification principles of trademark law," such as the ornamentation andfunctionality doctrines).
Where the issue presented is whether the proposed mark is
ornamental in nature, it is improper to refer to "aesthetic functionality,"
because the doctrine of "functionality" is inapplicable to such cases. The
proper refusal is on the basis that the matter is ornamental and thus does not
function as a mark under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051,
1052 and 1127. See
TMEP §§1202.03
et seq. regarding
ornamentation.
The Supreme Court's use of the term "aesthetic functionality" in
the TrafFix case appears limited to cases where the issue is one of
actual functionality, but where the nature of the proposed mark makes it
difficult to evaluate the functionality issue from a purely utilitarian
standpoint. This is the case with color marks and product features that
enhance the attractiveness of the product. The color or feature does not
normally give the product a truly utilitarian advantage (in terms of making the
product actually perform better), but may still be found to be functional
because it provides other real and significant competitive advantages and thus
should remain in the public domain.
For example, in Qualitex, supra, referred to as an
"aesthetic functionality" case in TrafFix, supra, the Supreme Court
considered whether a green-gold color used on the pads for dry cleaning presses
was barred from trademark protection under the functionality doctrine. While
the Court ultimately concluded that the color at issue was not functional, the
Court evaluated the proposed mark not only in light of the traditional
"utilitarian" definition of functionality (i.e., whether the proposed
mark is essential to the use or purpose of the product or affects the cost or
quality of the product), but also in terms of whether there was a competitive
need for the color in that industry, stating that the color would be considered
functional if its exclusive use "would put competitors at a significant
non-reputation-related disadvantage." Qualitex, 514 U.S. 165, 34 USPQ2d
at 1163-65. See also Brunswick Corp. v. British Seagull Ltd., 35 F.3d
1527, 32 USPQ2d 1120 (Fed. Cir. 1994) (affirming the Board's determination that
the color black for outboard motors was functional because while it had no
utilitarian effect on the mechanical working of the engines, it nevertheless
provided other identifiable competitive advantages - i.e., ease of
coordination with a variety of boat colors and reduction in the apparent size
of the engines).
In M-5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 USPQ2d 1086
(TTAB 2001), the Board considered the proper use of the aesthetic functionality
doctrine in connection with product designs for metal ventilating ducts andvents for tile or concrete roofs:
This case seems to involve elements of both utilitarian andaesthetic functionality. Here, for example, there is evidence of utility in
applicant's patent application, as well as statements touting the superiority
of applicant's design in applicant's promotional literature, and statements
that applicant's design results in reduced costs of installation. On the other
hand, there is no question that applicant's roof designs which match the
appearance of surrounding roof tiles are more pleasing in appearance because
the venting tiles in each case are unobtrusive.
M-5 Steel, 61 USPQ2d at 1096. Citing extensively from the
TrafFix, Qualitex and Brunswick cases, the Board concluded
that the product designs were functional for a combination of utilitarian andaesthetic reasons:
[W]e agree with opposer that applicant's product designs are
functional in the sense that these configurations blend in or match the roof
tiles with which they are used better than alternative products. As in Brunswick,
these configurations do not make the roof vents work better because they are in
these shapes. Rather, like the advantages of color compatibility and reduction
in apparent engine size afforded by the color black, applicant's designs are
compatible with the roof tiles with which they are used and supply applicant
with a competitive advantage in each case. Because applicant's vents match the
contours of the roof vents with which they are used, alternatives will not have
this advantage. Applicant's patent application and other evidence of record,
including applicant's promotional literature and applicant's own testimony,
tout the designs' unobtrusive appearance, state that they are "functional in
design," camouflage the existence of the vents and are aesthetically pleasing.
Applicant also represents in its promotional material that its vents are
cheaper to install. We conclude that applicant's product designs are, as a
whole, functional, and that registration by applicant would hinder competition
by placing competitors at a substantial competitive disadvantage.
M-5 Steel, 61 USPQ2d at 1097.
Note that this type of functionality determination - while
employed in connection with a normally "aesthetic" feature such as color - is a
proper use of the functionality doctrine, necessitating a §2(e)(5) refusal
where the evidence establishes that a color or other matter at issue provides
identifiable competitive advantages and thus should remain in the public
domain. This is the opposite of an ornamentation refusal, where the matter at
issue serves no identifiable purpose other than that of pure decoration.
Generally speaking, examining attorneys should exercise caution
in the use of the term "aesthetic functionality," in light of the confusion
that historically has surrounded this issue. In most situations, reference to
aesthetic functionality will be unnecessary, since a determination that the
matter sought to be registered is purely ornamental in nature will result in an
ornamentation refusal under §§1, 2 and 45, and a determination that the matter
sought to be registered is functional will result in a functionality refusal
under §2(e)(5). Use of the term "aesthetic functionality" may be appropriate
in limited circumstances where the proposed mark presents issues similar to
those involved in the M-5 Steel and Brunswick cases, supra
- i.e., where the issue is one of true functionality under §2(e)(5), but
where the nature of the mark makes the functionality determination turn on
evidence of particular competitive advantages that are not necessarily
categorized as "utilitarian" in nature. Any such use of the term "aesthetic
functionality" should be closely tied to a discussion of specific competitive
advantages resulting from use of the proposed mark at issue, so that it is
clear that the refusal is properly based on the functionality doctrine and not
on an incorrect use of "aesthetic functionality" to mean ornamentation.
See
TMEP §§1202.05
and
1202.05(f)
for additional
discussion and case references regarding the functionality issue in connection
with color marks.
The examining attorney must establish a prima facie case
that the trade dress sought to be registered is functional. The burden
then shifts to the applicant to present sufficient evidence to rebut the
examining attorney's prima facie case of functionality. In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984); In re
Bio-Medicus Inc., 31 USPQ2d 1254, 1257 n.5 (TTAB 1993).
The functionality determination is a question of fact, and depends
on the totality of the evidence presented in each particular case. Valu
Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed.
Cir. 2002); In re Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997).
While there is no set amount of evidence that an examining attorney must
present to establish a prima facie case of functionality, it is
clear that there must be evidentiary support for the refusal in the record. See,
e.g., In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 16-17
(C.C.P.A. 1982) (admonishing both the examining attorney and the Board for
failing to support the functionality determination with even "one iota of
evidence").
If the trade dress sought to be registered as a mark is the
subject of a utility patent that discloses the feature's utilitarian
advantages, then the applicant bears an especially "heavy burden of overcoming
the strong evidentiary inference of functionality." TrafFix Devices, Inc.
v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1005 (2001). See
TMEP §1202.02(a)(v).
Trade dress is functional if it is essential to the use or
purpose of a product or if it affects the cost or quality of the product. Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ
1, 4 n. 10 (1982).
In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23, 58 USPQ2d 1001, 1005 (2001), the Supreme Court resolved a circuit
split regarding the proper weight to be afforded a utility patent in the
functionality determination, stating:
A utility patent is strong evidence that the features claimed
therein are functional. If trade dress protection is sought for those features
the strong evidence of functionality based on the previous patent adds great
weight to the statutory presumption that features are deemed functional until
proved otherwise by the party seeking trade dress protection. Where the
expired patent claimed the features in question, one who seeks to establish
trade dress protection must carry the heavy burden of showing that the feature
is not functional, for instance by showing that it is merely an ornamental,
incidental, or arbitrary aspect of the device.
See also In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.
Cir. 1985); In re Visual Communications Co., Inc., 51 USPQ2d 1141 (TTAB
1999); In re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999); In
re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997).
The Court in TrafFix went on to hold that where the
evidence includes a utility patent that claims the product features at issue,
it is unnecessary to consider evidence relating to the availability of
alternative designs:
There is no need, furthermore, to engage, as did the Court of
Appeals, in speculation about other design possibilities, such as using three
or four springs which might serve the same purpose. Here, the functionality of
the spring design means that competitors need not explore whether other spring
juxtapositions might be used. The dual-spring design is not an arbitrary
flourish in the configuration of MDI's product; it is the reason the device
works. Other designs need not be attempted.
TrafFix, 532 U.S. at 23, 58 USPQ2d at 1007 (citation
omitted).
Therefore, in those instances where the examining attorney is
presented with facts similar to those in TrafFix - i.e., where
there is a utility patent establishing the utilitarian nature of the product
design at issue - the examining attorney may properly issue a final
functionality refusal based primarily on the utility patent.
In relevant cases, the examining attorney should ask the
applicant to provide copies of any patent(s) or any pending or abandoned patent
application(s). See Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d
1268, 61 USPQ2d 1422, 1429 (Fed. Cir. 2002) ("We agree with the Board that an
abandoned patent application should be considered under the first
Morton-Norwich factor, because an applied-for utility patent that never issued
has evidentiary significance for the statements and claims made in the patent
application concerning the utilitarian advantages, just as an issued patent has
evidentiary significance.").
It is important to read the patent to determine whether the
patent actually claims the features presented in the proposed mark. If it does
not, or if the features are referenced in the patent, but only as arbitrary or
incidental features, then the probative value of the patent as evidence of
functionality is substantially diminished or negated entirely. TrafFix,
532 U.S. at 34, 58 USPQ2d at 1007 (where a manufacturer seeks to protect
arbitrary, incidental or ornamental aspects or features of a product found in
the patent claims, such as arbitrary curves in the legs or an ornamental
pattern painted on the springs, functionality will not be established if the
manufacturer can prove that those aspects do not serve a purpose within the
terms of utility patent); see also Black & Decker Inc. v. Hoover
Service Ctr., 886 F.2d 1285, 12 USPQ2d 1250 (Fed. Cir. 1989); In re
Zippo Mfg. Co., 50 USPQ2d 1852 (TTAB 1999); In re Weber-Stephen Products
Co., 3 USPQ2d 1659 (TTAB 1987).
It is not necessary that the utility patent be owned by the
applicant; a third-party utility patent is also relevant to the functionality
determination if the patent claims the features in the product design sought to
be registered. See In re Virshup, 42 USPQ2d 1403 (TTAB 1997); In re
American National Can Co., 41 USPQ2d 1841 (TTAB 1997); In re Cabot Corp.,
15 USPQ2d 1224 (TTAB 1990). Therefore, the examining attorney may also search
the Office's patent records to see if there are utility patents owned by third
parties that disclose the functional advantages of the product design that the
applicant seeks to register.
Statements regarding utilitarian advantages of the design made in
the course of the prosecution of the patent application can be very strong
evidence of functionality. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006
("These statements [regarding specific functional advantages of the product
design] made in the patent applications and in the course of procuring the
patents demonstrate the functionality of the design. MDI does not assert that
any of these representations are mistaken or inaccurate, and this is further
strong evidence of the functionality of the dual-spring design.").
Where a utility patent claims more than what is sought to be
registered, this fact does not establish the nonfunctionality of the product
design if the patent shows that the part claimed as a trademark is an essential
or integral part of the invention and has utilitarian advantages. Cf.
TrafFix, 532 U.S. at 31, 58 USPQ2d at 1006.
The fact that the proposed mark is not the subject of a
utility patent does not establish that the product feature is nonfunctional. TrafFix,
532 U.S. at 31, 58 USPQ2d at 1006; In re Gibson Guitar Corp., 61 USPQ2d
1948, 1950 n. 3, (TTAB 2001). If the patent does not disclose utilitarian
advantages of the design features at issue, or if no utility patent/application
is of record, the evidence normally involves consideration of one or more of
the other factors commonly known as the "Morton-Norwich factors:"
(1) the existence of a utility patent that discloses the
utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian
advantages of the design;
(3) facts pertaining to the availability of alternative
designs; and
(4) facts pertaining to whether the design results from a
comparatively simple or inexpensive method of manufacture.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213
USPQ 9, 15-16 (C.C.P.A. 1982).
Moreover, even in the absence of a utility patent or utility
patent application, it is not necessary to consider all these factors in every
case. The Supreme Court held that "[w]here the design is functional under the Inwood
formulation there is no need to proceed further to consider if there is a
competitive necessity for the feature." TrafFix Devices, Inc. v. Marketing
Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001). See also
Gibson Guitar Corp., supra (where there was no utility patent, and no
evidence that applicant's guitar configuration resulted from a simpler or
cheaper method of manufacture, these factors did not weigh in Board's
decision).
Relevant technical information is usually more readily available
to an applicant. In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1990).
Therefore, the applicant will often be the source of most of the evidence
relied upon by the examining attorney in establishing a prima facie case
of functionality in an ex parte case. In re Teledyne Industries Inc.,
696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982). When there is reason to
believe the proposed mark may be functional, in the first Office action the examining
attorney should require the applicant to provide information necessary to
permit an informed determination concerning the registrability of the proposed
mark. See 37 C.F.R. §2.61(b); In re Babies Beat Inc., 13 USPQ2d
1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to
comply with examining attorney's request for copies of patent applications andother patent information). In addition to asking whether the proposed mark is
or has been the subject of a utility patent or a pending or abandoned patent
application, the examining attorney should require an applicant to provide
advertising or promotional materials. The examining attorney should also
inquire whether the feature makes the product easier or cheaper to manufacture andwhether alternative designs are available.
It is important that the inquiry focus on the utility of the
feature or combination of features that is claimed as protectible trade dress,
and not on the usefulness of the article overall. Morton-Norwich, 671
F.2d at 1338, 213 USPQ at 13. Generally, dissecting the design into its
individual features and analyzing the utility of each separate feature does not
establish that the overall design is functional. 15 U.S.C. §1052(e)(5); Teledyne
Industries Inc., 696 F.2d at 971, 217 USPQ at 11. However, it is sometimes
helpful to analyze the design from the standpoint of its various features. In
re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 2 (Fed. Cir. 1984)
(affirming the functionality determination, where the Board had initially
considered the six individual features of the design, and then had concluded
that the design as a whole was functional); In re Controls Corp. of America,
46 USPQ2d 1308, 1312 (TTAB 1998) (finding the entire configuration at issue functional
because it consisted of several individual features, each of which was
functional in nature). See also Elmer v. ICC Fabricating Inc., 67 F.3d
1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument
that the combination of individually functional features in the configuration
resulted in an overall nonfunctional product design).
Where the evidence shows that the overall design is functional,
the inclusion of a few arbitrary or otherwise nonfunctional features in the
design will not change the result. See Textron, Inc. v. U.S. International
Trade Commission, 753 F.2d 1019, 224 USPQ 625, 628-29 (Fed. Cir. 1985); In
re Vico Products Mfg. Co., Inc., 229 USPQ 364, 368 (TTAB 1985).
A design patent is a factor that weighs against a finding of
functionality because design patents by definition protect only ornamental andnonfunctional features. However, ownership of a design patent does not in
itself establish that a product feature is nonfunctional, and can be outweighed
by other evidence supporting the functionality determination. R.M. Smith,
Inc., 734 F.2d at 1485, 222 USPQ at 3; American National Can Co., 41
USPQ2d at 1843; Caterpillar Inc., 43 USPQ2d at 1339; Witco Corp.,
14 USPQ2d at 1559.
The examining attorney should examine the specimens of record,
and should also ask an applicant to provide any available advertising,
promotional or explanatory material concerning the goods/services, particularly
any material specifically related to the features embodied in the proposed
mark. The examining attorney should also check to see if the applicant has a
website on which the product is advertised or described.
The applicant's own advertising touting the utilitarian aspects
of its design is often strong evidence supporting a functionality refusal. See,
e.g., In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001); M-5 Steel
Mfg., Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001); In re Visual
Communications Co., Inc., 51 USPQ2d 1141 (TTAB 1999); In re Edward Ski
Products, Inc., 49 USPQ2d 2001 (TTAB 1999); In re Caterpillar Inc., 43
USPQ2d 1335 (TTAB 1997); In re Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB
1993); In re Witco Corp., 14 USPQ2d 1557 (TTAB 1989).
An applicant will often assert that statements in its promotional
materials touting the utilitarian advantages of the product feature are mere
"puffery" and thus entitled to little weight in the functionality analysis.
However, where the advertising statements clearly emphasize specific
utilitarian features of the design claimed as a mark, the Board will reject
such assertions of "puffing." See, e.g., In re Gibson Guitar Corp., supra;
Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705, 1716-17
(TTAB 1998); In re Bio-Medicus Inc., 31 USPQ2d 1254, 1260 (TTAB 1993); In
re Witco Corp., 14 USPQ2d 1557, 1559-61 (TTAB 1989).
In Gibson Guitar, the Board found the design of a guitar
body to be functional, noting that applicant's literature clearly indicated
that the shape of applicant's guitar produced a better musical sound.
Applicant's advertisements stated that "This unique body shape creates a sound
which is much more balanced and less 'muddy' than other ordinary dreadnought
acoustics." 61 USPQ2d at 1951.
The examining attorney may also check trade publications andcomputer databases to determine whether others have written about the
applicant's design and its functional features or characteristics. In Gibson
Guitar, the record included an advertisement obtained from the website of a
competitor whose guitar appeared to be identical in shape to applicant's
configuration, touting the acoustical advantages of the shape of the guitar.
An applicant attempting to rebut a prima facie case of
functionality will often submit evidence of alternative designs to demonstrate
that there is no "competitive need" in the industry for the applicant's particular
product design. See
TMEP §1202.02(a)(iii)(A).
However, in TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23, 58 USPQ2d 1001 (2001), the Supreme Court clearly indicated that if
the record shows that a design is essential to the use or purpose of a product,
or if it affects the cost or quality of the product, it is unnecessary to
consider whether there is a competitive need for the product feature. The
Court explained:
[W]e have said "in general terms, a product feature is
functional, and cannot serve as a trademark, if it is essential to the use or
purpose of the article or if it affects the cost or quality of the article."
Expanding upon the meaning of this phrase, we have observed that a functional
feature is one the "exclusive use of [which] would put competitors at a
significant non-reputation-related disadvantage." The Court of Appeals in the
instant case seemed to interpret this language to mean that a necessary test
for functionality is "whether the particular product configuration is a
competitive necessity." . . . This was incorrect as a comprehensive
definition. As explained in Qualitex, supra, and Inwood, supra,
a feature is also functional when it is essential to the use or purpose of the
device or when it affects the cost or quality of the device . . . Where the
design is functional under the Inwood formulation there is no need to proceed
further to consider if there is a competitive necessity for the feature.
* * *
There is no need, furthermore, to engage, as did the Court of
Appeals, in speculation about other design possibilities, such as using
three or four springs which might serve the same purpose. Here, the
functionality of the spring design means that competitors need not explore
whether other spring juxtapositions might be used. The dual-spring design
is not an arbitrary flourish in the configuration of MDI's product; it is the
reason the device works. Other designs need not be attempted (emphasis
added).
TrafFix, 58 USPQ2d at 1006-1007 (citations and additional
internal quotations omitted).
Thus, where the evidence clearly establishes the utilitarian
nature of the trade dress at issue in view of a utility patent and/or
advertising statements and facts showing a positive effect on the cost or
quality of manufacture, it is unnecessary to consider whether alternative
designs are available. See Valu Engineering, Inc. v. Rexnord Corp.,
278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) discussing the Supreme
Court's decision in TrafFix ("once a product feature is found functional
based on other considerations there is no need to consider the availability of
alternative designs, because the feature cannot be given trade dress protection
merely because there are alternative designs available.").
Evidence of the availability of alternative designs may be
helpful where the record is otherwise unclear regarding the utilitarian
functionality of the design at issue. Id. Accordingly, examining
attorneys may continue to request information about alternative designs in the
initial Office action, i.e., inquire whether alternative designs are
available for the feature embodied in the proposed mark, and whether the
alternatives are more costly to produce. See
TMEP §1212.02(a)(v).
In In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001),
the Board found that the applicant had not shown that there were alternative
guitar shapes that could produce the same sound as applicant's configuration.
The Board noted that the record contained an advertisement obtained from the
website of a competitor whose guitar appeared to be identical in shape to
applicant's configuration, stating that the shape of the guitar produces a
better sound.
In order to be probative, the alternative design evidence must
pertain to the same category of goods as the applicant's goods. See, e.g.,
In re Zippo Mfg. Co., 50 USPQ2d 1852, 1854 (TTAB 1999); In re EBSCO
Industries Inc., 41 USPQ2d 1917, 1919 (TTAB 1997).
As noted in
TMEP §1202.02(a)(iii)(A)
, a product feature is
functional if it is essential to the use or purpose of the product or if it
affects the cost or quality of the product. Inwood Laboratories, Inc.
v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982). Therefore,
a showing that a design results from a comparatively simple or inexpensive
method of manufacture will support a finding that the design is functional.
In most cases, there is little or no evidence pertaining to this
factor. However, the examining attorney should still ask the applicant for
information as to whether the subject design makes the product simpler or less
costly to manufacture, since evidence on this issue weighs strongly in favor of
a finding of functionality. See, e.g., TrafFix Devices, Inc. v. Marketing
Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); In re Virshup,
42 USPQ2d 1403 (TTAB 1997). Statements pertaining to the cost or ease of
manufacture may sometimes also be found in informational or advertising
materials submitted by the applicant. See M-5 Steel Mfg., Inc. v. O'Hagin's
Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material
that applicant's design results in reduced costs of installation found to be
evidence of functionality of applicant's configurations of metal ventilating
ducts and vents for tile or concrete roofs).
While evidence showing that the product feature results from a
comparatively simple or inexpensive method of manufacture supports a finding
that the design is functional, the opposite is not necessarily the case - i.e.,
assertions by the applicant that its design is more expensive or more difficult
to make will not establish that the configuration is not functional.
In Wal-Mart Stores, Inc. v Samara Brothers, Inc., 529 U.S.
205, 215, 54 USPQ2d 1065, 1069 (2000) the Supreme Court distinguished between
two types of trade dress - product design and product packaging. If the trade
dress falls within the category of "product design," it can never be
inherently distinctive. Id. 529 U.S. at 212, 54 USPQ2d at 1068 ("It
seems to us that design, like color, is not inherently distinctive.").
Moreover, the Court held that in close cases in which it is difficult to
determine whether the trade dress at issue is product packaging or product
design, "courts should err on the side of caution and classify ambiguous trade
dress as product design, thereby requiring secondary meaning." Id. at
215, 54 USPQ2d at 1070. (Note: If the trade dress is functional, it
cannot be registered despite acquired distinctiveness. TrafFix Devices,
Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1007
(2001)).
The statutory basis for refusal of registration on the Principal
Register on the ground that the trade dress is nondistinctive is 15 U.S.C.
§§1051, 1052, and 1127.
In addition to determining whether a proposed mark is functional,
the examining attorney must refuse to register, on the Principal Register, any
mark that consists of a product design, unless the applicant establishes that
the mark has acquired distinctiveness under §2(f). Wal-Mart Stores, Inc. v.
Samara Brothers, Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000).
Features of a product's design can never be inherently distinctive and are
registrable only upon a showing of secondary meaning. Id. at 213-14, 54
USPQ2d at 1069. The Supreme Court noted that product design almost invariably
serves purposes other than source identification, and that consumers are aware
that even the most unusual product design (such as a cocktail shaker shaped
like a penguin) is intended not to identify the source, but to render the
product itself more useful or appealing. Id.
The examining attorney must issue this refusal in all applications
seeking registration of a product design unless the applicant claims that the
mark has acquired distinctiveness under §2(f) and includes sufficient evidence
to show that the mark has acquired distinctiveness. The ground for refusal is
that the proposed mark consists of a nondistinctive product design, and thus
does not function as a mark under §§1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052 and 1127. If the product design is not functional, the mark may
be registered on the Supplemental Register, or, if the applicant shows that the
product design has acquired distinctiveness, on the Principal Register under
§2(f). See
TMEP §1202.02(a)
regarding functionality,
TMEP §§815
and
816
et seq. regarding the Supplemental Register, and
TMEP §§1212
et seq.
regarding acquired distinctiveness.
For applications based on §1(b) of the Trademark Act, 15 U.S.C.
§1051(b), the examining attorney must issue the refusal even if the applicant
has not filed an amendment to allege use or statement of use. See
TMEP§1202.02(e)
regarding examination of intent-to-use applications.
Where a proposed mark consists of product packaging trade dress for
goods or services, the examining attorney must determine whether the proposed
mark is inherently distinctive. If it is not inherently distinctive, the
examining attorney must refuse registration on the Principal Register on the
ground that the proposed mark is nondistinctive trade dress under §§1, 2 and 45
of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, for trademark
applications; or §§1, 3 and 45 of the Act, 15 U.S.C. §§1051, 1053 and 1127, for
service mark applications.
In Wal-Mart Stores, Inc., v. Samara Brothers, Inc.,
529 U.S. 205, 54 USPQ2d 1065 (2000), the Supreme Court discussed the
distinction between the trade dress at issue in Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992), and the product design
trade dress (designs for children's clothing) under consideration in Wal-Mart:
Two Pesos unquestionably establishes the legal principle
that trade dress can be inherently distinctive, but it does not establish that product
design trade dress can be. Two Pesos is inapposite to our holding
here because the trade dress at issue, the decor of a restaurant, seems to us
not to constitute product design. It was either product packaging -
which, as we have discussed, normally is taken by the consumer to indicate
origin - or else some tertium quid that is akin to product packaging.
Wal-Mart, 529 U.S. at 215, 54 USPQ2d at 1069.
Thus, unlike product design trade dress, trade dress constituting
product packaging may be inherently distinctive for goods or services andregistrable on the Principal Register without a showing of acquired
distinctiveness. However, the examining attorney should be mindful of the
Supreme Court's admonishment that where there are close cases, trade dress
should be classified as product design for which secondary meaning is always
required. Id., 529 U.S. at 215, 54 USPQ2d at 1070.
"[A] mark is inherently distinctive if '[its] intrinsic nature
serves to identify a particular source.'" Id. at 210, 54 USPQ2d at 1068
(citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23
USPQ2d 1081 (1992)). The test for determining inherent distinctiveness set
forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342,
1344, 196 USPQ 289, 291 (C.C.P.A. 1977), although not applicable to product
design trade dress, is still viable in the examination of product packaging
trade dress. The examining attorney should consider the following "Seabrook"
factors - whether the proposed mark is:
(1) a "common" basic shape or design;
(2) unique or unusual in the field in which it is used;
(3) a mere refinement of a commonly-adopted and well-known
form of ornamentation for a particular class of goods viewed by the public as a
dress or ornamentation for the goods;
(4) capable of creating a commercial impression distinct
from the accompanying words.
Id. See also Yankee Candle Co. v. Bridgewater Candle Co., LLC,
259 F.3d 25, 59 USPQ2d 1720 (1st Cir. 2001) (trade dress for common
elements of candle labels was nondistinctive product packaging for which
insufficient evidence of acquired distinctiveness was shown; and evidence of
acquired distinctiveness for trade dress comprised of label elements, candle
holders, display systems, and candle containers was deemed insufficient); Tone
Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1205, 31 USPQ2d 1321, 1331
(Fed. Cir. 1994) (citing Seabrook); In re Hudson News Co., 39
USPQ2d 1915, 1923 (TTAB 1996), aff'd per curiam, 114 F.3d 1207 (Fed.
Cir. 1997) ("[f]or the 'blue motif' of a retail store to be registrable on the
Principal Register without resort to Section 2(f), the trade dress would have
to be immediately recognizable as a distinctive way of identifying the source
of the store services."); In re File, 48 USPQ2d 1363, 1367 (TTAB 1998)
(novel tubular lights used in connection with bowling alley services would be
perceived by customers as "simply a refinement of the commonplace decorative or
ornamental lighting¼ and would not be
inherently regarded as a source indicator."); In re J. Kinderman & Sons
Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) ("¼
while the designs applicant seeks to register [the packaging for electric
lights for Christmas trees] may be unique in the sense that we have no evidence
that anyone else is using designs which are identical to them, they are
nonetheless not inherently distinctive.").
Unlike §1(b) applications for product design trade dress, §1(b)
applications for product packaging trade dress generally will not be refused
registration on the ground of nondistinctiveness until the applicant has filed
an amendment to allege use or a statement of use. See
TMEP §1202.02(e).
Regardless of the bases for filing, if a proposed mark is
inherently distinctive, it may be registered on the Principal Register. See
In re Creative Beauty Innovations, Inc., 56 USPQ2d 1203 (TTAB 2000) (bottle
configuration found inherently distinctive); In re Fre-Mar Industries, Inc.,
158 USPQ 364, 367 (TTAB 1968) ("[A]lthough the particular shape is a
commonplace one for flashlights, it is nevertheless so unique and arbitrary as
a container in the tire repair field that it may be inherently distinctive and,
therefore, by reason of its shape alone, serve to identify applicant's goods
and distinguish them from like goods of others."); In re International
Playtex Corp., 153 USPQ 377 (TTAB 1967) (container configuration having the
appearance of an ice cream cone found inherently distinctive as a trademark for
baby pants).
If a proposed mark is not inherently distinctive, the mark
may be registered on either the Principal Register under §2(f) or on the
Supplemental Register. Secondary meaning is acquired when the public views its
primary significance as identifying the source of the product rather than the
product itself. Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068. In the
following cases, the applicant's evidence was found to be sufficient to support
a claim of acquired distinctiveness: In re World's Finest Chocolate, Inc.,
474 F.2d 1012, 177 USPQ 205 (C.C.P.A. 1973) (package design found to identify
applicant's candy bars and distinguish them from those of others); Ex parte
Haig & Haig Ltd., 118 USPQ 229, 230 (Comm'r Pats. 1958) ("The decree
recited that because of the original, distinctive and peculiar appearance of
the 'Pinched Decanter' the brand of whiskey in such bottles had come to be
known and recognized by the public, by dealers and by consumers; and that the
whiskey contained in such bottles had come to be identified with the 'Pinched
Decanter' in the minds of the public generally.")
In In re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983), the
evidence of secondary meaning was insufficient. (The configuration of a
package for mint candies was not functional but the package design was not
shown to possess secondary meaning).
The examining attorney must establish a prima facie case
that the trade dress is not inherently distinctive. To meet this burden, the
examining attorney must at a minimum, set forth a "'reasonable predicate' for
its position of no inherent distinctiveness." The USPTO is an agency of
limited resources, and as such, it cannot be expected to shoulder the burden of
conducting market research. In re Pacer Technology, 338 F.3d 1348, 67
USPQ2d 1629, 1632 (Fed. Cir. 2003) (design patents showing other adhesive
container cap designs found sufficient to establish prima facie case
that applicant's adhesive container cap was not inherently distinctive).
See
TMEP §§1212
et seq. regarding acquired
distinctiveness and
TMEP §§815
and
816
et seq. regarding the
Supplemental Register.
As stated in
TMEP §1202.02
, in an application for trade dress,
distinctiveness and functionality are two separate issues, both of which must
be considered by the examining attorney.
In many cases, registration is refused on both grounds. In any
case where a product design or product packaging is refused because it is
functional, registration should also be refused on the ground that the proposed
mark is nondistinctive.
In appropriate cases, the issues of functionality and acquired
distinctiveness should be argued in the alternative. For example, if the
examining attorney has determined that a mark is functional and the applicant
has made a claim of acquired distinctiveness, the examining attorney must
determine whether the showing of acquired distinctiveness would be sufficient
to warrant registration if the examining attorney's decision on the functionality
issue is reversed. Of course, if the mark is ultimately determined to be functional,
evidence of acquired distinctiveness is irrelevant and registration will be
refused. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S.
23, 58 USPQ2d 1001, 1007 (2001).
In an application to register a mark with three-dimensional
features, the applicant must submit a drawing that depicts the mark in a single
rendition. 37 C.F.R. §2.52(b)(2). See
TMEP §807.10.
If the mark
comprises the design of only a portion of a product or container, broken lines
should be used in the drawing to indicate that portion of the product or
container that is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4). See
In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In
re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983);
TMEP §807.08.
The matter
that is shown in broken (dotted) lines does not have to be disclaimed, because
it does not form part of the mark. If the drawing does not meet the
requirements of 37 C.F.R. §2.52, the examining attorney should require the
applicant to submit a substitute drawing.
If an acceptable statement describing the mark is not in the
record, the examining attorney must require the applicant to submit a
description to clarify what the applicant seeks to register. The description
of the mark should include a statement that the matter shown in broken lines is
not part of the mark. See 37 C.F.R. §2.52(b)(4);
TMEP §§808
et seq.
The description is printed in the Official Gazette and on the
registration certificate. Examples of acceptable language are, "The mark
consists of the design of the blade portion of a flyswatter," and "The mark
consists of the design of a perfume or cologne bottle and cap therefor, both
having a 'V' shape as viewed from above." The description must adequately
describe the mark, with unnecessary matter kept to a minimum. If applicable,
the description must clearly indicate the portion of the product or container
that the mark comprises. An example of acceptable language for this purpose
is: "The mark consists of a red button positioned on the lower front area of a
shirt. The dotted outline of the shirt is not part of the mark but is merely
intended to show the position of the mark." As in this example, the
description should make it clear what the dotted lines represent. The
examining attorney should ensure that the description statement has been
entered into the Trademark Reporting and Monitoring ("TRAM") database, so that
it will be printed in the Official Gazette and on the certificate of
registration. See
TMEP §817.
See
TMEP §1202.05(d)(i)
and
(d)(ii)
regarding drawings in
applications for color marks consisting solely of one or more colors.
Distinctiveness andProduct Design
A product design trademark can never be inherently distinctive
and is registrable only upon a showing of secondary meaning. Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212, 54 USPQ2d 1065,
1069 (2000);
TMEP §1202.02(b)(i).
Therefore, if the mark is comprised of a
product design, the examining attorney will refuse registration on the
Principal Register on the ground that the proposed mark consists of a nondistinctive
product design under 15 U.S.C. §§1051, 1052 and 1127. The examining attorney
will make this refusal even in an intent-to-use application under 15 U.S.C.
§1051(b) for which no statement of use or amendment to allege use has been
filed.
Distinctiveness andProduct Packaging
If the mark comprises product packaging trade dress for goods or
services, the examining attorney must determine whether the mark is inherently
distinctive. Wal-Mart Stores, Inc., v. Samara Brothers, Inc.,
529 U.S. 205, 54 USPQ2d 1065 (2000); Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 23 USPQ2d 1081 (1992). This requires consideration of the
context in which the mark is used and the impression it would make on
purchasers. Generally, no refusal based on lack of inherent distinctiveness
will be issued in an intent-to-use application until the applicant has
submitted specimens with an amendment to allege use or a statement of use.
However, if appropriate, the examining attorney has discretion to issue this
refusal before specimens are submitted.
Functionality
To determine whether a proposed mark is functional, the examining
attorney must consider how the asserted mark is used. Generally, in a §1(b)
application the examining attorney will not issue a refusal on the ground that
the mark is functional until the applicant has filed either an amendment to
allege use under §1(c), or a statement of use under §1(d), 15 U.S.C. §§1051(c)
or (d).
Advisory Statement
In a §1(b) application for which no specimens have been submitted,
if the examining attorney anticipates that a refusal based on functionality or
nondistinctive trade dress will be made, the potential refusal should be
brought to the applicant's attention in the first action issued by the Office.
This is done strictly as a courtesy. If information regarding this possible
ground for refusal is not provided to the applicant before the allegation of
use is filed, the Office is not precluded from refusing registration on this
basis.
Distinctiveness andProduct Design
A product design trademark can never be inherently distinctive
and is registrable only upon a showing of secondary meaning. Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212, 54 USPQ2d 1065,
1069 (2000);
TMEP §1202.02(b)(i).
Therefore, if the proposed mark is comprised
of a product design, the examining attorney must refuse registration on the
Principal Register on the ground that the proposed mark consists of a
nondistinctive product design under 15 U.S.C. §§1051, 1052
and 1127.
Distinctiveness andProduct Packaging
If the mark comprises product packaging trade dress for goods or
services, the examining attorney must determine whether the mark is inherently
distinctive. Wal-Mart Stores, Inc., v. Samara Brothers, Inc.,
529 U.S. 205, 54 USPQ2d 1065 (2000); Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 23 USPQ2d 1081 (1992). See
TMEP §§1202.02(b)
et seq.
regarding distinctiveness of trade dress.
Functionality
If the record indicates that the proposed mark is functional, the
examining attorney should issue a refusal of registration on the Principal
Register under §2(f), or on the Supplemental Register. See
TMEP §§1202.02(a)
et seq. regarding functionality. NOTE: A mark in a §66(a) application
cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C.
§1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
Subject matter that is merely a decorative feature does not
identify and distinguish the applicant's goods and, thus, does not function as
a trademark. A decorative feature may include words, designs, slogans or other
trade dress. This matter should be refused registration because it is merely
ornamentation and, therefore, does not function as a trademark as required by
§§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.
Generally, the ornamentation refusal applies only to trademarks,
not to service marks. See
TMEP §§1301.02
et seq. regarding
matter that does not function as a service mark.
Matter that serves primarily as a source indicator, either
inherently or as a result of acquired distinctiveness, and that is only
incidentally ornamental or decorative, can be registered as a trademark. In
re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 184 USPQ 345 (C.C.P.A.
1975); In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982).
With regard to registrability, ornamental matter may be
categorized along a continuum ranging from ornamental matter that is registrable
on the Principal Register, to purely ornamental matter that is incapable of
trademark significance and unregistrable under any circumstances, as follows:
(1) Ornamental matter that serves as an identifier of a
"secondary source" is registrable on the Principal Register. For example,
ornamental matter on a T-shirt (e.g., the designation "NEW YORK
UNIVERSITY") can convey to the purchasing public the "secondary source" of the
T-shirt (rather than the manufacturing source). Thus, even where the T-shirt
is distributed by a party other than that identified by the designation,
sponsorship or authorization by the identified party is indicated. See
TMEP §1202.03(c).
(2) Ornamental matter that is neither inherently distinctive
nor a secondary source indicator may be registered on the Principal Register
under §2(f) if the applicant establishes that the subject matter has acquired
distinctiveness as a mark in relation to the goods. See
TMEP§1202.03(d).
(3) Ornamental matter that is neither inherently distinctive
nor an indicator of secondary source, and has not acquired distinctiveness, but
is capable of attaining trademark significance, may be registered on the
Supplemental Register.
(4) Some matter is determined to be purely ornamental andthus incapable of trademark significance and unregistrable on either the
Principal Register or the Supplemental Register. See
TMEP §1202.03(a).
The examining attorney should consider the following factors to
determine whether ornamental matter can be registered: (1) the commercial
impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary
source, if applicable; and (4) evidence of distinctiveness. These factors are
discussed in the following sections.
The examining attorney must determine whether the overall
commercial impression of the proposed mark is that of a trademark. Matter that
is purely ornamental or decorative does not function as a trademark and is
unregistrable on either the Principal Register or the Supplemental Register.
The significance of the proposed mark is a factor to consider
when determining whether ornamental matter serves a trademark function. Common
expressions and symbols (e.g., the peace symbol, "smiley face," or the
phrase "Have a Nice Day") are normally not perceived as marks.
The examining attorney must also consider the size, location anddominance of the proposed mark, as applied to the goods, to determine whether
ornamental matter serves a trademark function. In re Dimitri's Inc., 9 USPQ2d
1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB
1984). A small, neat and discrete word or design feature (e.g., small
design of animal over pocket or breast portion of shirt) may be likely to
create the commercial impression of a trademark, whereas a larger rendition of
the same matter emblazoned across the front of a garment (or a tote bag, or the
like) may be likely to be perceived merely as a decorative or ornamental
feature of the goods. However, a small, neat and discrete word or design
feature will not necessarily be perceived as a mark in all cases.
In determining whether a proposed mark is inherently distinctive,
factors to be considered include whether the subject matter is unique or
unusual in a particular field or whether it is a mere refinement of a
commonly-adopted and well-known form of ornamentation for a particular class of
goods that would be viewed by the public as a dress or ornamentation for the
goods. See, e.g., In re Soccer Sport Supply Co., Inc., 507 F.2d
1400, 184 USPQ 345 (C.C.P.A. 1975) (pentagon-shaped repetitive design applied
to the entire surface of soccer balls); In re General Tire & Rubber Co.,
404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric
rings of approximately equal width applied to the outer surface of a dark
sidewall tire); In re Chung, Jeanne & Kim Co., Inc., 226 USPQ 938
(TTAB 1985) (stripe design applied to sides of sport shoes)).
Even if a proposed mark is not inherently distinctive, it may be
registered on the Principal Register if it has become distinctive of the
applicant's goods in commerce. See
TMEP §1202.03(d).
The practices of
the trade may be relevant in assessing the applicant's burden of proving that
the proposed mark has become distinctive. Typically, more evidence is required
if the proposed mark is a type of ornamental matter used so frequently in the
relevant industry that consumers would be less apt to discern a
source-indicating significance from its use. See Anchor Hocking Glass Corp.
v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (cornflower design
recognized as a trademark for coffee percolators and culinary vessels andutensils). Cf. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB
1987) (affirming refusal to register design of morning glories and leaves for
tableware, the Board noting that the design "has not been shown to be other
than another decorative pattern without trademark significance....").
If the applicant cannot show that the proposed mark has acquired
distinctiveness, the mark may be registered on the Supplemental Register if it
is "capable of distinguishing the applicant's goods or services." 15 U.S.C.
§1091. The practices of the trade may be relevant in determining whether a
proposed mark is capable of distinguishing the goods or services. If the
practices of the trade suggest that certain matter performs the function of a
trademark by signifying to purchasers and prospective purchasers the goods of a
particular entity and distinguishing the goods from those of others, the matter
is assumed to be capable of distinguishing the applicant's goods and,
therefore, may be registered on the Supplemental Register. See In re Todd
Co., Inc., 290 F.2d 597, 129 USPQ 408 (C.C.P.A. 1961) (repeating pattern of
green lines, used to cover the entire back surface of safety paper products (e.g.,
checks), held registrable on the Supplemental Register for safety paper
products, where the record showed that it had long been the practice in the
industry to use distinctive overall surface designs to indicate origin of the
products).
To show that a proposed mark that is used on the goods in a
decorative or ornamental manner also serves a source-indicating function, the
applicant may submit evidence that the proposed mark would be recognized as a
mark through its use with goods or services other than those identified in the
application. To show secondary source, the applicant may show: (1) ownership
of a U.S. registration on the Principal Register of the same mark for other
goods or services based on use in commerce under §1 of the Trademark Act; (2) non-ornamental
use of the mark in commerce on other goods or services; or (3) ownership of a
pending use-based application for the same mark, used in a non-ornamental
manner, for other goods or services. Ownership of an intent-to-use application
for which no allegation of use has been filed is not sufficient to show
secondary source. If the applicant establishes that the proposed mark serves
as an identifier of a secondary source, the matter is registrable on the
Principal Register.
See In re Paramount Pictures Corp., 213 USPQ 1111
(TTAB 1982), in which MORK & MINDY was held registrable for decals, because
applicant had a television series of that name and had previously registered
MORK & MINDY for various goods and services. The Board found that the primary
significance of the term MORK & MINDY to a prospective purchaser of decals
was to indicate the television series and the principal characters of the
television series. Id. at 1112. The Board held that the case was
controlled by its decision in In re Olin Corp., 181 USPQ 182 (TTAB 1973)
(stylized "O" design registrable for T-shirts, where applicant had previously
registered the "O" design for skis), in which that Board had stated:
It is a matter of common knowledge that T-shirts are
"ornamented" with various insignia ... or . various sayings such as "Swallow
Your Leader." In that sense what is sought to be registered could be construed
to be ornamental. If such ornamentation is without any meaning other than as
mere ornamentation it is apparent that the ornamentation could not and would
not serve as an indicia of source. Thus, to use our own example, "Swallow Your
Leader" probably would not be considered as an indication of source.
The "ornamentation" of a T-shirt can be of a special nature
which inherently tells the purchasing public the source of the T-shirt, not the
source of manufacture but the secondary source....
181 USPQ at 182.
In Paramount, applying the test set forth in Olin,
the Board found that "the paired names 'MORK & MINDY,' while certainly part
of the ornamentation of the decal, also indicate source or origin in the
proprietor of the Mork & Mindy television series in the same sense as the
stylized 'O' in Olin." 213 USPQ at 1113. The Board noted that "while
purchasers may be accustomed to seeing characters' names and images as part of
the ornamentation of decals, T-shirts and the like, they are also accustomed to
seeing characters' names and images used as trademarks to indicate source
...." Id. at 1114.
See also In re Watkins Glen International, Inc.,
227 USPQ 727 (TTAB 1985) (stylized checkered flag design registrable for
patches and clothing items, where applicant had previously registered WATKINS
GLEN and checkered flag design (with "WATKINS GLEN" disclaimed) for services); In
re Expo '74, 189 USPQ 48 (TTAB 1975) (EXPO '74 registrable for
handkerchiefs and T-shirts, where applicant, organizer of the 1974 World's
Fair, had previously registered EXPO '74 for other goods and services).
A series of ornamental uses of the subject matter on various
items will not establish that the subject matter functions as an indicator of
secondary source; use as a trademark for the other goods or services must be
shown. See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (refusal to
register ASTRO GODS and design for T-shirts affirmed despite applicant's
ornamental use of the proposed mark on other goods and appearance of
applicant's trade name "Astro Gods Inc." on the T-shirt as part of a copyright
notice).
As noted above, even if a proposed mark is not inherently
distinctive, it may nevertheless be registered on the Principal Register under
§2(f), 15 U.S.C. §1052(f), if it becomes distinctive of the applicant's goods
in commerce. See
TMEP §§1212
et seq. regarding acquired
distinctiveness.
Generally, the issue of ornamentation is tied to the use of the
mark as evidenced by the specimens. Therefore, no ornamentation refusal will
be issued in an intent-to-use application until the applicant has submitted
specimens of use with either an amendment to allege use under §1(c), or a
statement of use under §1(d), 15 U.S.C. §§1051(c) or (d).
The following cases show the various ways in which ornamental
matter was found not to function as a mark.
Slogans or phrases used on items such as t-shirts andsweatshirts, jewelry, and ceramic plates have been refused registration as
ornamentation that purchasers will perceive as conveying a message rather than
indicating source of the goods. See Damn I'm Good Inc. v. Sakowitz, Inc.,
514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) ("DAMN I'M GOOD," inscribed in
large letters on bracelets and used on hang tags affixed to the goods, found to
be without any source-indicating significance); In re Pro-Line Corp., 28
USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily
ornamental slogan that is not likely to be perceived as source indicator); In
re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) ("SUMO," as used in connection
with stylized representations of sumo wrestlers on applicant's T-shirts andbaseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB
1984) ("[T]he designation 'ASTRO GODS' and design is not likely to be perceived
as anything other than part of the thematic whole of the ornamentation of
applicant's shirts."); In re Original Red Plate Co., 223 USPQ 836 (TTAB
1984) ("YOU ARE SPECIAL TODAY" for ceramic plates found to be without any
source-indicating significance).
See also
TMEP §1202.04
regarding informational matter.
See In re Soccer Sport Supply Co., Inc., 507 F.2d 1400,
184 USPQ 345 (C.C.P.A. 1975) (evidence of record insufficient to establish
distinctiveness of pentagon-shaped repetitive design applied to the entire
surface of soccer balls); In re General Tire & Rubber Co., 404 F.2d
1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of
approximately equal width applied to the outer surface of a dark sidewall tire
considered just a refinement of a general ornamental concept rather than a
trademark); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1
(C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper
band red and the lower band blue, for men's ribbed socks); In re Sunburst
Products, Inc., 51 USPQ2d 1843 (TTAB 1999) (combination of matching color
of watch bezel and watch band and contrasting colors of watch case and watch
bezel for sports watches found to be nothing more than a mere refinement of a
common or basic color scheme for sports watches and therefore would not
immediately be recognized or perceived as a source indicator); In re
Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern
design of morning glories and leaves for tableware not distinctive and not
shown to be other than decorative pattern without trademark significance).
See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253
(TTAB 1998) (design of container for Christmas decorations that resembles a
wrapped Christmas gift not inherently distinctive); In re F.C.F. Inc.,
30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is
essentially ornamental or decorative background and does not function as mark);
In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing
the rear panel of a container for hand tools held unregistrable as merely
ornamental, notwithstanding §2(f) claim).
In the following cases, subject matter sought to be registered
was found to have acquired distinctiveness as a trademark: In re Jockey
International, Inc., 192 USPQ 579 (TTAB 1976) (inverted Y design used on
underwear found to have acquired distinctiveness, where evidence showed
extensive use on packaging and in advertising in a manner calculated to draw
the attention of prospective purchasers to the design and for them to look at
the design as a badge of origin); Anchor Hocking Glass Corp. v. Corning
Glass Works, 162 USPQ 288 (TTAB 1969) (blue cornflower design for coffee
percolators and culinary vessels and utensils found to have acquired
distinctiveness, where evidence showed extensive and prominent use of the
design in advertising, use of the design on pins and aprons worn by sales
promotion representatives in the course of their duties, and surveys andstatements of purchasers indicating that they recognized the design as
indicating origin in applicant ).
Slogans that are considered to be merely informational in nature
or to be common laudatory phrases or statements that would ordinarily be used
in business or in the particular trade or industry are not registrable. In
re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE
SAFELY perceived as an everyday, commonplace safety admonition that does not
function as mark); In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992)
(THINK GREEN and design found unregistrable for weatherstripping and paper
products, the Board stating, "[R]ather than being regarded as an indicator of
source, the term 'THINK GREEN' would be regarded simply as a slogan of
environmental awareness and/or ecological consciousness ...."); In re
Southbrook Entertainment Corp., 8 USPQ2d 1166 (TTAB 1988) (HI-YO-SILVER,
for videotapes and cassettes, held to be a well known expression closely linked
to a character, but did not function as a trademark for the goods); In re
Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA,
for electric shavers, held incapable of functioning as a mark, notwithstanding
use of letters "TM" in connection with prominent display of slogan on packages
for the goods and claim of acquired distinctiveness); In re Tilcon Warren,
Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD held not to function as a
mark for construction material notwithstanding long use, where the only use was
on the bumpers of construction vehicles in which the goods were transported); In
re Schwauss, 217 USPQ 361 (TTAB 1983) (FRAGILE used on labels and bumper
stickers does not function as a mark).
See
TMEP §1301.02(a)
regarding informational matter that
does not function as a service mark.
A slogan can function as a trademark if it is not merely
descriptive or informational. See e.g., Roux Laboratories, Inc. v. Clairol
Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970) (affirming the Board's
dismissal of an opposition to the registration of HAIR COLOR SO NATURAL ONLY
HER HAIRDRESSER KNOWS FOR SURE for a hair coloring preparation); In re The
Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (QUALITY THROUGH CRAFTSMANSHIP
found registrable for radio equipment). See
TMEP §1202.03(f)(i)
regarding ornamental slogans used on goods.
Color marks are marks that consist solely of one or more
colors used on particular objects. For marks used in connection with goods,
the color may be used on the entire surface of the goods, on a portion of the
goods, or on all or part of the packaging for the goods. For example, a color
trademark might consist of purple used on a salad bowl, or pink used on the
handle of a shovel, or a blue background and a pink circle used on all or part
of a product package. See Qualitex Co. v. Jacobson Products Co., Inc.,
514 U.S. 159, 34 USPQ2d 1161 (1995) (green-gold used on dry cleaning press pads
held to be a protectible trademark, where the color had acquired secondary
meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ
417 (Fed. Cir. 1985) (the color pink as applied to fibrous glass residential
insulation registrable where the evidence showed the color had acquired
secondary meaning). Similarly, service marks may consist of color used on all
or part of materials used in the advertising and rendering of the services.
The registrability of a color mark depends on the manner in which
the proposed mark is used. In re Owens-Corning, 227 USPQ at 419, 774
F.2d at 1120. A color(s) takes on the characteristics of the object or surface
to which it is applied, and the commercial impression of a color will change
accordingly. See In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121,
1124 (Fed. Cir. 2001) ("a word mark retains its same appearance when used on
different objects, but color is not immediately distinguishable as a service
mark when used in similar circumstances").
Color marks are never inherently distinctive, and cannot be
registered on the Principal Register without a showing of acquired
distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S.
205, 211-212, 54 USPQ2d 1065, 1068
(2000). See
TMEP §1202.05(a)
andcases cited therein.
Color, whether a single overall color or multiple colors applied
in a specific and arbitrary fashion, is usually perceived as an ornamental
feature of the goods or services. In re Owens-Corning, 227 USPQ at 422,
774 F.2d at 1124; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB
1996), aff'd per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("blue motif"
used in retail stores would likely be perceived by prospective purchasers as
"nothing more than interior decoration" that "could be found in any number of
retail establishments. Undoubtedly such features are usually perceived as
interior decoration or ornamentation.") However, color can function as a mark if
it is used in the manner of a trademark/service mark and if it is perceived by
the purchasing public to identify and distinguish the goods or services on or
in connection with which it is used and to indicate their source. The United
States Supreme Court has held that color alone may sometimes meet the basic
legal requirements for a trademark. When it does, there is no rule that
prevents color from serving as a mark. Qualitex, 514 U.S. at 161, 34 USPQ2d
at 1162. If a color is not functional and is shown to have acquired
distinctiveness on or in connection with the applicant's goods or services, it
is registrable as a mark.
Functional color marks are not registrable. See
TMEP §1202.05(b)
and cases cited therein.
Color marks are never
inherently distinctive. Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,
529 U.S. 205, 211-212, 54 USPQ2d
1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc.,
514 U.S. 159, 162-163, 34 USPQ2d
1161, 1162-1163 (1995)); In re
Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001). Therefore,
the examining attorney must refuse to register a color mark on the Principal
Register unless the applicant establishes that the mark has acquired distinctiveness
under §2(f). The examining attorney must
issue this refusal in all color mark applications where acquired
distinctiveness has not been shown, regardless of the filing basis of the
application. The ground for refusal is that the color is not inherently distinctive and thus does not function
as a trademark under §§1, 2 and 45, or does not function as a service mark
under §§1, 3 and 45.
If the proposed color mark is not functional, it may be
registrable on the Principal Register if it is shown to have acquired
distinctiveness under §2(f). If it is not distinctive, it is registrable only
on the Supplemental Register. See In re Hudson News Co., 39 USPQ2d 1915
(TTAB 1996), aff'd per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("blue
motif" applied to retail store services not registrable on Principal Register
without resort to Section 2(f)); Edward Weck Inc. v. IM Inc., 17 USPQ2d
1142 (TTAB 1990) (the color green, as uniformly applied to medical instruments,
not barred from registration on the basis of functionality; however, evidence
failed to establish that the color had become distinctive of the goods); In
re Deere & Co., 7 USPQ2d 1401 (TTAB 1988) (the colors green and yellow,
as applied to the body and wheels of machines, respectively, not barred from
registration on the basis of functionality; evidence held to establish that the
colors had become distinctive of the goods).
The burden of proving that a color mark has acquired
distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp.,
774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink, as uniformly
applied to fibrous glass residential insulation, shown to have acquired
distinctiveness as a trademark for the goods); In re Benetton Group S.p.A., 48
USPQ2d 1214 (TTAB 1998) (evidence insufficient to establish that green
rectangular background design had acquired distinctiveness as applied to
clothing and footwear); In re American Home Products Corp., 226 USPQ 327
(TTAB 1985) (tri-colored, three-dimensional circular-shaped design found to
have become distinctive of analgesic and muscle relaxant tablets); In re
Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (evidence found
insufficient to establish that two-colored drug capsules and multi-colored
seeds or granules contained therein had become distinctive of
methyltestosterone).
As noted above, the commercial impression of a color may change
depending on the object to which it is applied. Therefore, evidence submitted
to demonstrate acquired distinctiveness of a color may show consumer
recognition with respect to certain objects, but not for other objects. See
In re Thrifty, Inc., 61
USPQ2d at 1124. Cf. Qualitex, 514 U.S. at 163, 34 USPQ2d at 1162-1163
("The imaginary word 'Suntost,' or the words 'Suntost Marmalade,' on a jar of orange
jam immediately would signal a brand or a product 'source'; the jam's orange
color does not do so. But, over time, customers may come to treat a particular
color on a product or its packaging (say, a color that in context seems
unusual, such as pink on a firm's insulating material or red on the head of a
large industrial bolt) as signifying a brand. And, if so, that color would
have come to identify and distinguish the goods -- i. e., 'to indicate'
their 'source...'")
A color mark is not registrable on the Principal Register under
§2(f), or the Supplemental Register, if the color is functional. Brunswick
Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.
1994), cert. denied, 514 U.S. 1050 (1995); In re Owens-Corning
Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). A
color may be functional if it yields a utilitarian or functional advantage, for
example, yellow or orange for safety signs. Brunswick Corp. v. British Seagull,
supra (holding the color black functional for outboard motors because while
the color did not provide utilitarian advantages in terms of making the engines
work better, it nevertheless provided recognizable competitive advantages in
terms of being compatible with a wide variety of boat colors and making the
engines appear smaller); In re Ferris Corporation, 59 USPQ2d 1587 (TTAB
2000) (color pink used on surgical wound dressings is functional because the
actual color of the goods closely resembles Caucasian human skin); In re
Orange Communications, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow andorange held to be functional for public telephones and telephone booths, since
they are more visible under all lighting conditions in the event of an emergency);
In re Howard S. Leight & Associates Inc., 39 USPQ2d 1058 (TTAB 1996)
(color coral held to be functional for earplugs, because it is more visible
during safety checks). A color may also be functional if it is more economical
to manufacture or use. For example, a color may be a natural by-product of the
manufacturing process for the goods. In such a case, appropriation of the
color by a single party would place others at a competitive disadvantage by
requiring them to alter the manufacturing process.
See also In re Pollak Steel Co., 314 F.2d 566, 136
USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functional); R.L.
Winston Rod Co. v. Sage Mfg. Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D.
Mont. 1993) (color green used on graphite fishing rods found to be functional);
Russell Harrington Cutlery Inc. v. Zivi Hercules Inc., 25 USPQ2d 1965
(D. Mass. 1992) (color white used on cutlery handles found to be functional); Kasco
Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501 (TTAB 1993) (color green
used as wrapper for saw blades is functional when the color is one of the six
colors used in a color-coding system to identify the type of blade).
The doctrine of "aesthetic functionality" may apply in some cases
where the evidence indicates that the color at issue provides specific
competitive advantages that, while not necessarily categorized as purely
"utilitarian" in nature, nevertheless dictate that the color remain in the
public domain. Brunswick Corp. v. British Seagull, supra. See also TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001,
1006 (2001) (in which the Supreme Court discussed aesthetic functionality,
distinguishing Qualitex, supra, as a case where "aesthetic
functionality was the central question."). See
TMEP §1202.02(a)(iii)(C)
regarding the "aesthetic functionality" doctrine.
As with all trademarks, a color mark may contain only those
elements that make a separable commercial impression. See
TMEP §807.12(d).
Accordingly, an applicant may not seek to register the color of the wording or
design apart from the words or designs themselves if the color does not create
a separate commercial impression. For example, an applicant may not register
the color of words that make up its mark apart from the words themselves, if
the color does not create a separate commercial impression apart from the
words. However, the applicant may register the color of the background
material on which the words or design appear apart from the words or design. See
TMEP §1202.11.
The commercial impression of a color may change depending on the
object to which it is applied. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); In
re Hayes, 62 USPQ2d 1443 (TTAB 2002). An application seeking registration
of color in the abstract, without considering the manner or context in which
the color is used, would be contrary to law and public policy because it would
result in an unlimited number of marks being claimed in a single application. Cf.
In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d
1513, 1517-18 (Fed. Cir. 1999) (mark with changeable or "phantom" element
unregistrable because it would "encompass too many combinations and permutations
to make a thorough and effective search possible," and, therefore, would not
provide adequate notice to the public); In re Upper Deck Co., 59 USPQ2d
1688 (TTAB 2001) (hologram used on trading
cards in varying shapes, sizes, contents and positions constitutes more than
one "device" as contemplated by §45 of the Trademark Act). Only one
mark can be registered in a single application.
TMEP §807.01.
All marks, other than sound and scent marks, require a drawing.
TMEP §807.
An application for a color mark that is filed without a drawing
will be denied a filing date. 37 C.F.R. §2.21(a)(3). Similarly, an
application for a color mark with a proposed drawing page that states "no
drawing" or sets forth only a written description of the mark will be denied a
filing date. The drawing provides notice of the nature of the mark sought to
be registered. Only marks that are not capable of representation in a drawing,
such as sound or scent marks, are excluded from the requirement for a drawing.
Color marks are visual, and should be depicted in a color drawing, accompanied
by (1) a color claim naming the color(s) that are a feature of the mark; and(2) a separate statement describing where the color(s) appear and how they are
used on the mark. 37 C.F.R. §2.52(b)(1);
TMEP §807.07(a).
In most cases, the drawing will consist of a representation of
the product or product package. The drawing of the mark must be a
substantially exact representation of the mark as used or intended to be used
on the goods. 37 C.F.R. §2.51. A depiction of the object on which the color
is used is needed to meet this requirement.
The object depicted on the drawing should appear in broken
lines. The broken lines inform the viewer where and how color is used on the
product or package, while at the same time making it clear that the shape of
the product, or the shape of the package, is not claimed as part of the mark.
37 C.F.R. §2.52(b)(4);
TMEP §807.08.
In the absence of a broken-line drawing,
the Office will assume that the mark is a composite mark consisting of the
product shape, or the packaging shape, in a particular color.
Color used on multiple
goods
If the mark is used on multiple goods, the drawing required will
depend on the nature of the goods. The drawing of the mark must be a
substantially exact representation of the mark as used or intended to be used
on the goods. 37 C.F.R. §2.51. A drawing consisting of a depiction of only
one of the goods will be accepted if the goods, or the portions of the goods on
which color appears, are similar in form and function so that a depiction of
only one of the products is still a substantially exact representation of the
mark as used on all of the products. For example, if the mark is the color
purple used on refrigerators and freezers, a drawing of a freezer (in broken
lines, with a description of the mark indicating that the color purple is used
on the mark) would be sufficient. Or, if the mark is the color pink used on
the handles of rakes, shovels and hoes, a drawing of any of those items (in
dotted lines with a description of the mark stating that the handle is pink)
would be sufficient. Or, if the mark consists of packaging for various food
items that is always blue with a pink circle, a drawing of any one of the
packages (in dotted lines with a description of the colors) would be
sufficient.
If the mark is used on multiple goods that are dissimilar or
unrelated, or if color is used in different ways on different goods, so that a
depiction of one of the goods is not a substantially exact representation of
the mark as used on all of the goods (for example, the color purple used on
microscopes and vending machines), a separate application must be submitted for
each item.
Color used on liquids
or powders
Sometimes a color mark consists of color(s) used on liquids or
powders. For example, the mark might consist of fuchsia body oil or red, white
and blue granular washing machine detergent. In these cases, the nature of the
drawing will depend on the manner of use of the liquid or powder. If the
liquid or powder is visible through the product package, then the drawing
should consist of the shape of the product package in broken lines, with the
description of the mark identifying the color of the liquid or powder.
It is difficult to anticipate all of the issues that may arise,
because there are a myriad of ways that color can be used in connection with
services. However, the following general guidelines will be used to determine
the sufficiency of drawings in these cases:
•
The purpose of a drawing is to provide notice to the public of
the nature of the mark. As with color used on goods, a color service mark does
not consist of color in the abstract. Rather, the mark consists of color used
in a particular manner, and the context in which the color is used is critical
to provide notice of the nature of the mark sought to be registered.
Therefore, as with color marks used on goods, a drawing, supplemented with a
written description, is required.
•
The drawing must display the manner in which the mark is used in
connection with the services. As with any application, only one mark can be
registered in a single application.
TMEP §807.01.
The mark depicted on the
drawing must, as used on the specimens, make a separate and distinct commercial
impression to be considered one mark. See In re Thrifty, Inc., 274 F.3d 1349,
61 USPQ2d 1121 (Fed. Cir. 2001); In re Chemical Dynamics Inc., 839 F.2d 1569, 5
USPQ2d 1828 (Fed. Cir. 1988). See
TMEP §1202.05(c)
regarding color as a
separable element.
•
If color is used in a variety of ways, but in a setting that
makes a single commercial impression, such as a retail outlet with various
color features, a broken-line drawing of the setting must be submitted, with a
detailed description of the color(s).
•
If an applicant seeks to register a single color as a service
mark used on a variety of items not viewed simultaneously by purchasers, e.g.,
stationery, uniforms, pens, signs, shuttle buses, the store awning and the
walls of the store, the drawing must display a solid-colored square with a
dotted peripheral outline and include a detailed description of the mark.
Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124. Applicant will receive a filing
date for its application. However, as yet, the issues raised by the use of
this type of drawing, e.g., sufficient notice and phantom marks, have not yet
been decided by the Office. Cf. In re International Flavors & Fragrances
Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999). See
TMEP§1202.05(c).
•
The commercial impression of a color may change depending on the
object on which it is applied. See Thrifty, 61 USPQ2d at 1124.
Sometimes a product or advertisement for a service will include
both color and words or a design. For example, the surface of a toaster might
be green, with the trademark "ABC" and design displayed on the toaster. In
this situation, the applicant must decide whether to seek registration for the
color green used on toasters, the letters "ABC" with or without the design, the
design, or some combination of those elements. If applicant only seeks
registration for the use of the color, no word or design elements should appear
on the drawing.
The drawing of a color mark must be supplemented with a written
description of the mark, naming the color(s), and a separate statement
describing where the colors appear on the mark. 37 C.F.R. §§and 2.52(b)(1);
TMEP §807.07(a).
The description of the mark must be clear and specific, use
ordinary language, and identify the mark as consisting of the particular color
as applied to the goods or services. If the color is applied only to a portion
of the goods, the description must indicate the specific portion. Similarly,
if the mark includes gradations of color, the description should so indicate.
If the applicant is claiming a shade of color, the shade must be described in
ordinary language, for example, "maroon," "turquoise," "navy blue," "reddish
orange." This is required even if the applicant also describes the color using
a commercial coloring system.
The applicant may not amend the description of the mark if the
amendment is a material alteration of the mark on the drawing filed with the
original application. 37 C.F.R. §2.72. See In re Thrifty, Inc.,
274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); cf. In re Hacot-Colombier, 105
F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). See
TMEP §§807.14
et seq.
regarding material alteration.
The description of a color mark must be limited to a single mark,
because only one mark can be registered in a single application. See In re
International Flavors & Fragrances Inc., 83 F.3d 1361 51 USPQ2d 1513
(Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). See
TMEP §1202.05(c)
regarding color as a separable element. Cf.
TMEP§807.01
(drawing must be limited to a single mark).
An application §1 of the Trademark Act must be supported by a
specimen that shows use of the mark depicted in the drawing. Therefore, an
applicant who applies to register a color mark must submit a specimen showing
use of color, either with a §1(a) application or with an allegation of use in a
§1(b) application. If a black and white specimen is submitted, the examining
attorney will require a substitute specimen. See
TMEP §904.02(c).
See
TMEP §§904.04
et seq. regarding trademark
specimens and
TMEP §§1301.04
et seq. regarding service mark specimens.
No service mark registrations have issued for a single color per
se. Although the applicant in In re Thrifty, Inc., 274 F.3d 1349,
61 USPQ2d 1121 (Fed. Cir. 2001) argued that it applied for the color blue per
se as a service mark, the Court determined that the drawing controlled,
such that the application was for the color blue applied to a building.
Although the Court did not reach the issue of color per se as a service
mark, the Court acknowledged the special evidentiary problem associated with
showing acquired distinctiveness in this context. Thrifty, 274 F.3d at
1353, 61 USPQ2d at 1124 (". . . [E]vidence submitted to demonstrate acquired
distinctiveness of a color may show consumer recognition with respect to
certain objects (e.g., blue vehicle rental centers), but not for other objects
(e.g., blue rental cars)"). Accordingly, any claim to color per se must
be specific as to use and include evidence of acquired distinctiveness for each
claimed use.
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson
Products Co., Inc., 514 U.S. 159, 162-163,
34 USPQ2d 1161, 1162-1163 (1995));
TMEP §1202.05.
Therefore, the examining attorney must refuse to
register a color mark on the Principal Register unless the applicant
establishes that the mark has acquired distinctiveness under §2(f). The ground
for refusal is that the color is not
inherently distinctive and thus does not function as a trademark under §§1, 2
and 45, or does not function as a service mark under §§1, 3 and 45.
The issue of whether the proposed mark is functional requires
consideration of the manner in which the mark is used. Generally, no refusal
on these grounds will be issued in a §1(b) application until the applicant has
submitted specimens of use with an amendment to allege use or statement of
use. See
TMEP §§1102.01
,
1202.02(e)
and
1202.03(e).
The specimens
provide a better record upon which to determine the registrability of the
mark. In appropriate cases, the examining attorney will bring the potential
refusal to the applicant's attention in the initial Office action. This is
done strictly as a courtesy. If information regarding this possible ground for
refusal is not provided to the applicant before the allegation of use is filed,
the Office is not precluded from refusing registration on this basis.
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson
Products Co., Inc., 514 U.S. 159, 162-163,
34 USPQ2d 1161, 1162-1163 (1995));
TMEP §1202.05.
Therefore, the examining attorney must refuse to
register a proposed color mark on the Principal Register unless the applicant
establishes that the mark has acquired distinctiveness under §2(f). The ground
for refusal is that the color is not inherently
distinctive and thus does not function as a trademark under 15 U.S.C.
§§1051, 1052 and 1127, or does not function
as a service mark under 15 U.S.C. §§1051, 1053 and 1127.
If the record indicates that the proposed mark is functional, the
examining attorney should issue a refusal of registration on the Principal
Register under §2(f), or on the Supplemental Register. See
TMEP §1202.05(b).
NOTE: A mark in a §66(a) application cannot be registered on the
Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4);
37 C.F.R. §§2.47(c) and 2.75(c).
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines a
"trademark" as a "word, name, symbol, or device, or any combination thereof'
that is used or intended to be used in commerce to identify and distinguish
his or her goods (emphasis added)." Before
rights in a term as a trademark can be established, the subject matter to which
the term is applied must be "goods in trade." Incidental items that an
applicant uses in conducting its business (such as letterhead, invoices andbusiness forms), as opposed to items sold or transported in commerce for use by
others, are not "goods in trade." See In re Shareholders Data Corp.,
495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade, where
applicant is not engaged in the sale of reports, but solely in furnishing
financial reporting services, and reports are merely conduit through which
services are rendered); In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB
1972) (reports and printouts not goods in trade, where they are merely the
means by which the results of a beauty analysis service is transmitted and have
no viable existence separate and apart from the service); Ex parte Bank of
America National Trust and Savings Association, 118 USPQ 165 (Comm'r Pats.
1958) (mark not registrable for passbooks, checks and other printed forms,
where forms are used only as necessary tools in the performance of banking
services, and the applicant is not engaged in printing or selling forms as
commodities in trade).
Affixing a mark to an item that is transported in commerce does
not in and of itself establish that the mark is used on "goods." While a
formal sale is not always necessary, items sold or transported in commerce are
not "goods in trade" unless they have utility to others as the type of product
named in the application.
Example: Holiday greeting cards sent by a law firm to
its clients are not "goods," where applicant is merely sending its own cards
through the mail as a holiday greeting, and the cards are not suitable for use
by the recipients as a greeting card.
See Gay Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199
USPQ 722 (C.C.P.A. 1978) (plaster mockup of toy truck not goods in trade, where
there is no evidence the mockup is actually used as a toy); Paramount
Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), aff'd, 108 F.3d
1392 (Fed. Cir. 1997) (mark not registrable for games, where purported games
are advertising flyers used to promote applicant's services and have no real
utilitarian function or purpose as games); In re Douglas Aircraft Co., Inc.,
123 USPQ 271 (TTAB 1959) (books, pamphlets and brochures that serve only to
explain and advertise the goods in which applicant deals are not "goods"). Cf.
In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (ball point pens used
to promote applicant's tools are goods in trade, where they have a utilitarian
function and purpose, and have been sold to applicant's franchised dealers andtransported in commerce under mark); In re United Merchants &
Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) (calendar used to promote
applicant's plastic film constitutes goods in trade, where calendar has a
utilitarian function and purpose in and of itself, and has been regularly
distributed in commerce for several years).
If the specimens, identification of goods, or other evidence in
the record indicate that the applicant uses the mark only on items incidental
to conducting its own business, as opposed to items intended to be used by
others, the examining attorney should refuse registration on the Principal
Register under §§1, 2 and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052 and1127, on the ground that the mark is not used on "goods in trade."
If a mark is not used on "goods in trade," it is not registrable
on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f),
or on the Supplemental Register.
If some, but not all of the items listed in the identification of
goods are found not to be "goods in trade," it is not necessary to refuse
registration of the entire application, but the examining attorney should
require that these items be deleted from the identification of goods.
In an intent-to-use application under §1(b) of the Trademark Act,
the question of whether a mark is used on goods in trade usually does not arise
until the applicant files an allegation of use under §1(c) or §1(d) of the Act,
because this issue is based on the manner in which the mark is used. However,
if the identification of goods in an intent-to-use application includes items
that do not appear to be goods in trade, the potential refusal should be
brought to the applicant's attention in the first action issued by the Office.
This is done strictly as a courtesy. If information regarding this possible
ground for refusal is not provided to the applicant before the allegation of
use is filed, the Office is not precluded from refusing registration on this
basis.
A column, section or supplement of a printed publication is
normally not considered to be separate "goods" or "goods in trade" unless it is
sold, syndicated, or offered for syndication separate and apart from the larger
publication in which it appears. In re Broadcasting Publications, Inc.,
135 USPQ 374 (TTAB 1962); Ex parte Meredith Publishing Co., 109 USPQ 426
(Comm'r Pats. 1956). This is true even of a removable or separable "pullout"
section of a newspaper or other publication. In Meredith, the issue was
analyzed as follows:
The basic question is whether or
not, under the circumstances of use, the section title is A name adopted andused by the publisher to identify his goods and distinguish them from those of
others. The "goods" actually are magazines-not sections of magazines. When
the magazine is purchased, the purchaser receives the sections whether he wants
them or not, and it is doubtful that magazine readers ordinarily
purchase a magazine merely to receive a section of it, or think of a magazine
merely in terms of a section title. Sections of magazines are not in and of
themselves articles of commerce other than as a part of an integrated whole;
and we must therefore be concerned with whether a section title actually
identifies and distinguishes, and if so, what it distinguishes. Under these
circumstances it becomes necessary to ask: Was the mark adopted to identify a
section of applicant's magazine and distinguish it from sections of other
publishers' magazines, or was it adopted to distinguish one section of
applicant's magazine from the other sections of its magazine? Ordinarily,
it is the latter (emphasis in original).
109 USPQ 426.
Columns or sections that are separately sold, syndicated, or
offered for syndication do constitute goods in trade. A mark that identifies a
column or section that is separately syndicated or offered for syndication is
registrable on the Principal Register without resort to §2(f) of the Trademark
Act, 15 U.S.C. §1052(f), if registration is not barred by other sections of the
Act.
A column or section of a printed publication that is not
separately sold, syndicated, or offered for syndication is not, in and of itself,
considered to be separate goods in trade. Therefore, where the specimens,
identification of goods, or other evidence in the record indicates that the
mark identifies a column or section of a printed publication that is not
separately sold, syndicated, or offered for syndication, the examining attorney
should refuse registration on the Principal Register under §§1, 2 and 45 of the
Trademark Act; 15 U.S.C. §§1051, 1052 and 1127, on the ground that the mark is
not used on separate goods in trade.
Marks that identify non-syndicated columns or sections of printed
publications are registrable on the Principal Register under §2(f) of the
Trademark Act, 15 U.S.C. §1052(f), if the column or section is shown to have
acquired separate recognition and distinctiveness. The applicant who seeks
registration on the Principal Register bears the burden of establishing,
through evidence of promotion, long use, advertising expenditures, and breadth
of distribution or sales figures, that the public has come to recognize the
proposed mark as an indicator of source.
The evidence of acquired distinctiveness must show that the
column or section title is used and promoted to distinguish applicant's column
or section from the columns or sections of other publishers' publications
rather than merely to distinguish applicant's column or section from other
columns or sections of applicant's publication. Metro Publishing v. San
Jose Mercury News, 987 F.2d 637, 25 USPQ2d 2049 (9th Cir. 1993);
In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962).
The amount of evidence needed to establish distinctiveness must
be evaluated by the examining attorney on a case-by-case basis, in light of the
type of column or supplement. If the mark identifies a removable or pull-out
section, a lesser degree of evidence might be required to establish
distinctiveness. Of course, the amount of evidence needed to establish
distinctiveness in any particular case will also vary depending on the strength
or weakness of the mark.
TMEP §1212.04(a).
Marks that identify non-syndicated columns or sections of printed
publications, but have not yet acquired distinctiveness and therefore are not
registrable under §2(f) of the Act, are registrable on the Supplemental
Register, if registration is not barred by other sections of the Act. Ex
parte Meredith Publishing Co., 109 USPQ 426 (Comm'r Pats. 1956).
Since a refusal to register a mark that identifies a column or
section of a printed publication is based on whether the column or section is
separately sold or syndicated, the issue ordinarily does not arise in an
intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b),
until the applicant has filed either an amendment to allege use under §1(c), or
a statement of use under §1(d), 15 U.S.C. §§1051(c) and (d). However, if the
identification of goods indicates that the mark is intended to be used to
identify a column or section of a printed publication that is not separately
sold or syndicated, the potential refusal on the ground that the proposed mark
is not used on separate goods in trade should be brought to the applicant's
attention in the first Office Action. This is done strictly as a courtesy. If
information regarding this possible ground for refusal is not provided to the
applicant prior to the filing of the allegation of use, the Office is not
precluded from refusing registration on this basis.
An online publication is considered a service rather than a
product. Therefore, refusal of registration on the ground that the proposed
mark is not used on goods in trade is inappropriate. Unlike a printed column
or section, an online column or section can be accessed directly and can exist
independent of any single publication. See Ludden v. Metro Weekly, 8 F.
Supp.2d 7, 47 USPQ2d 1087, 1093 (D.D.C. 1998). Therefore, a mark that
identifies an online column is registrable on the Principal Register without
resort to §2(f) of the Trademark Act, 15 U.S.C. §1052(f), if registration is
not barred by other sections of the Act.
The title of a single creative work is not registrable on the
Principal Register or the Supplemental Register. Examples of "single creative
works" include books, videotapes, films and theatrical performances. Herbko
International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d
1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a
source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396,
400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A
book title ... identifies a specific literary work ... and is not associated in
the public mind with the publisher, printer or bookseller...."); In re
Posthuma, 45 USPQ2d 2011 (TTAB 1998) (title of a live theater production
held unregistrable); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574
(TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found
unregistrable as the title of a single work); In re Appleby, 159 USPQ
126 (TTAB 1968) (title of single phonograph record, as distinguished from
series, does not function as mark).
The name of a series of books or other creative works may be
registrable if it serves to identify and distinguish the source of the goods. In
re Scholastic Inc., 23 USPQ2d 1774, 1778 (TTAB 1992) (THE MAGIC SCHOOL BUS,
prominently displayed on the cover of a series of books, has come to represent
a source to purchasers and would be recognized as a trademark). However, a
term used in the title of a series of books is not registrable if it merely
identifies a character in the books. In re Scholastic Inc., 223 USPQ
431 (TTAB 1984) (THE LITTLES, used in the title of each in a series of
children's books, does not function as a mark where it merely identifies the
main characters in the books). Cf. In re Caserta, 46 USPQ2d 1088 (TTAB
1998) (FURR-BALL FURCANIA, used as the principal character in a single
children's book, was found not to function as a mark even though the
character's name appeared on the cover and every page of the story); In re
Frederick Warne & Co. Inc., 218 USPQ 345 (TTAB 1983) (an illustration
of a frog used on the cover of a single book served only to depict the main
character in the book and did not function as a trademark).
See
TMEP §1301.02(d)
regarding the registrability of
titles of radio and television programs as service marks, and
TMEP §1202.09(a)
regarding the registrability of the names of performing artists on sound
recordings.
Generally, subject matter used solely as an author's name, even
on multiple books, does not function as a trademark. See In re Chicago
Reader Inc., 12 USPQ2d 1079 (TTAB 1989) (CECIL ADAMS, as used on the
specimens, merely identifies the author and is not used as a trademark). Cf.
In re Wood, 217 USPQ 1345 (TTAB 1983) (artist's pseudonym YSABELLA, affixed
to an original work of art, functioned as a trademark).
See
TMEP §1202.09(a)
regarding the registrability of the
names of performing artists used on sound recordings.
See also
TMEP §1301.02(b)
regarding the registrability of
the names of characters and personal names as service marks.
Subject matter that, as used on sound recordings, merely
serves to identify the artist or artists whose performance comprises the
content of the recording is not registrable as a trademark for the recordings.
In re Spirer, 225 USPQ 693 (TTAB 1985). As noted by the Court of
Appeals for the Federal Circuit in In re Polar Music International AB,
714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983), "just showing the name
of the recording group on a record will not by itself enable that name to be
registered as a trademark. Where, however, the owner of the mark controls the
quality of the goods, and where the name of that recording group has been used
numerous times on different records and has therefore come to represent an
assurance of quality to the public, the name may be registered as a trademark
since it functions as one." Personal names of individuals or groups function
as service marks for entertainment services only if they identify anddistinguish the services recited and not merely the individual or group. See
TMEP §1301.02(b).
The following guidelines must be followed to ensure consistent
action on applications to register the names of performers for sound recordings
in accordance with In re Polar Music International AB and In re
Spirer.
•
First, the names of performers may only be registered as a
trademark if the mark is used on a series of sound recordings. The
identification of goods must specifically indicate that there is a series. If
the application does not identify the goods in this fashion, the examining
attorney must require an appropriate amendment.
•
Secondly, the applicant must provide evidence that the mark has
been applied to at least two different recordings in the series. In an
intent-to-use application, the applicant must provide evidence of use on at
least two recordings at the time the applicant files either the amendment to
allege use or the statement of use. The examining attorney should provide
advance notice of this requirement during initial examination, where
appropriate. If the applicant is unable to demonstrate use on a series, the
mark may be registered on the Supplemental Register, provided it is otherwise
proper. These procedures apply specifically to performers' names used on
recordings and not to other types of marks used on other types of artistic
material.
•
Finally, it is only necessary to inquire about the applicant's
control over the nature and quality of the goods if information in the
application record clearly contradicts the applicant's verified statement that
it is the owner of the mark or entitled to use the mark.
Similarly, the name of a performer is not registrable as a
service mark for entertainment services unless the record shows the name
identifies a continuing series of presentations, performances or recordings. See
TMEP §1301.02(d).
Subject matter used solely as a model, style or grade designation
within a product line does not function as a trademark. In re Dana Corp.,
12 USPQ2d 1748 (TTAB 1989) (alphanumeric designations, such as "5-469X," held
unregistrable for universal joint couplings; evidence insufficient to establish
distinctiveness and recognition as a mark). Cf. In re Clairol Inc., 457
F.2d 509, 173 USPQ 355 (C.C.P.A. 1972) (SWEDISH CRYSTAL found to be a
registrable trademark, not merely a color designation, for a hair coloring
preparation, the Court relying on the arbitrariness of the mark, its manner of
use and the fact that it was always used in addition to a shade designation); In
re Petersen Mfg. Co., Inc., 229 USPQ 466, 468 (TTAB 1986) (letter-number
combinations found registrable for locking hand tools, the Board stating,
"[T]here is no question that such model designations can, through use andpromotion, be perceived as marks indicating origin in addition to functioning
as model designations.")
"A background design which is always used in connection with word
marks must create a commercial impression on buyers separate and apart from the
word marks for the design to be protectible as a separate mark. In deciding
whether the design background of a word mark may be separately registered, the
essential question is whether or not the background material is or is not
inherently distinctive.. If the background portion is inherently distinctive,
no proof of secondary meaning need be introduced; if not, such proof is
essential (citations omitted)." In re Chemical Dynamics, Inc., 839 F.2d
1569, 1570-1571, 5 USPQ2d 1828, 1829 (Fed. Cir. 1988).
Common geometric shapes, when used as vehicles for the display of
word marks, are not regarded as indicators of origin absent evidence of
distinctiveness of the design alone. Additionally, the Supreme Court stated in
Wal-Mart Stores, Inc. v. Samara
Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) that color can
never be inherently distinctive.
In the following cases, the evidence of distinctiveness was
insufficient: In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998)
(green rectangular background design not inherently distinctive; evidence of
acquired distinctiveness found insufficient); In re Anton/Bauer Inc., 7 USPQ2d
1380 (TTAB 1988) (parallelogram designs used as background for word marks found
not inherently distinctive; evidence of record held insufficient to establish
acquired distinctiveness pursuant to §2(f)); In re Kerr-McGee Corp., 190
USPQ 204 (TTAB 1976) (affirming refusals to register escutcheon design used as
a frame or border for words, under §2(f)).
In the following cases, the evidence of distinctiveness was
sufficient: In re Schenectady Varnish Co., Inc., 280 F.2d 169,
126 USPQ 395 (C.C.P.A. 1960) (where use of applicant's design of a cloud and a
lightning flash was always used as a background for the word "SCHENECTADY,"
evidence of record found sufficient to show acquired distinctiveness of the
design alone as a trademark for synthetic resins); In re Raytheon Co.,
202 USPQ 317 (TTAB 1979) (light-colored oval within black rectangular carrier
considered not inherently distinctive; evidence of record found sufficient to
establish acquired distinctiveness).
An applicant may respond to a refusal to register by submitting
evidence that the subject matter has acquired distinctiveness, under §2(f) of
the Trademark Act, 15 U.S.C. §1052(f). The examining attorney should
scrutinize any submission that asserts distinctiveness solely on the basis of a
statement of substantially exclusive and continuous use for five years to
determine whether it truly establishes that the subject matter is perceived as
a trademark by the purchasing public. The examining attorney may continue to
refuse registration if he or she believes that the applicant's assertion does
not establish that the matter is perceived as a trademark. The applicant may
submit additional evidence to establish distinctiveness. See
TMEP§§1212
et seq.
Varietal or cultivar names are designations given to cultivated
varieties or subspecies of live plants or agricultural seeds. They amount to
the generic name of the plant or seed by which such variety is known to the
public. These names can consist of a numeric or alphanumeric code or can be a
"fancy" (arbitrary) name. The terms "varietal" and "cultivar" may have slight
semantic differences but pose indistinguishable issues and are treated
identically for trademark purposes.
Subspecies are types of a particular species of plant or seed
that are members of a particular genus. For example, all maple trees are in
the genus Acer. The sugar maple species is known as Acer saccharum,
while the red maple species is called Acer rubrum. In turn, these
species have been subdivided into various cultivated varieties that are
developed commercially and given varietal or cultivar names that are known to
the public.
If the examining attorney determines that wording sought to be
registered as a mark for live plants, agricultural seeds, fresh fruits or fresh
vegetables comprises a varietal or cultivar name, then the examining attorney
must refuse registration, or require a disclaimer, on the ground that the
matter is the varietal name of the goods and does not function as a trademark under
§§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127. See
Dixie Rose Nursery v. Coe, 131 F.2d 446, 55 USPQ 315 (D.C. Cir. 1942), cert.
denied 318 U.S. 782, 57 USPQ 568 (1943); In re Hilltop Orchards &
Nurseries, Inc., 206 USPQ 1034 (TTAB 1979); In re Farmer Seed &
Nursery Co., 137 USPQ 231 (TTAB 1963); In re Cohn Bodger & Sons Co.,
122 USPQ 345 (TTAB 1959). Likewise, if the mark identifies the prominent
portion of a varietal name, it must be refused. In re Delta and Pine LandCo., 26 USPQ2d 1157 (TTAB 1993) (Board affirmed refusal to register
DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine
20, Deltapine 105 and Deltapine 506).
A varietal or cultivar name is used in a plant patent to identify
the variety. Thus, even if the name was originally arbitrary, it "describe[s]
to the public a [plant] of a particular sort, not a [plant] from a particular
[source]." Dixie Rose, 131 F.2d at 447, 55 USPQ at 316. It is against
public policy for any one supplier to retain exclusivity in a patented variety
of plant, or the name of a variety, once its patent expires. Id.
Market realities and lack of laws concerning the registration of
varietal and cultivar names have created a number of problems in this area.
Some varietal names are not attractive or easy to remember by the public. As a
result, many arbitrary terms are used as varietal names. Problems arise when
trademark registration is sought for varietal names, when arbitrary varietal
names are thought of as being trademarks by the public, and when terms intended
as trademarks by plant breeders become generic through public use. These
problems make this a difficult area for the examining attorney in terms of
gathering credible evidence and knowing when to make refusals.
Whenever an application is filed to register a mark containing
wording for live plants, agricultural seeds, fresh fruits, or fresh vegetables,
the examining attorney must inquire of the applicant whether the term has ever
been used as a varietal name, and whether such name has been used in connection
with a plant patent, a utility patent, or a certificate for plant variety
protection. See 37 C.F.R. §2.61(b). The examining attorney should also
undertake an independent investigation of any evidence that would support a
refusal to register, using sources of evidence that are appropriate for the
particular goods specified in the application (e.g., laboratories andrepositories of the United States Department of Agriculture, plant patent
information from the USPTO, a variety name search of plants certified under the
Plant Variety Protection Act listed at www.ars-grin.gov/npgs/searchgrin.html).
The scent of a product may be registrable if it is used in a
non-functional manner. See In re Clarke, 17 USPQ2d 1238 (TTAB 1990), in
which the Trademark Trial and Appeal Board held that a scent functioned as a
mark for "sewing thread and embroidery yarn." Scents that serve a utilitarian
purpose, such as the scent of perfume, would be functional and not
registrable. See
TMEP §§1202.02(a)
et seq. regarding
functionality. When a scent is not functional, it may be registered on the
Principal Register under §2(f), or on the Supplemental Register. The amount of
evidence required to establish that a scent or fragrance functions as a mark is
substantial. Cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116,
227 USPQ 417 (Fed. Cir. 1985).
The requirement for a drawing does not apply to scent marks. 37
C.F.R. §2.52(e). See
TMEP §807.09.
A hologram used in varying
forms does not function as a mark in the absence of evidence that consumers
would perceive it as a trademark. See In re Upper Deck Co.,
59 USPQ2d 1688 (TTAB 2001), where the Board held that a hologram used on trading cards in varying shapes, sizes, and positions
did not function as a mark, because the record showed that other companies used
holograms on trading cards and other products as anti-counterfeiting devices,
and there was no evidence that the public would perceive applicant's hologram
as an indicator of source. The Board noted that "the common use of holograms
for non-trademark purposes means that consumers would be less likely to
perceive applicant's uses of holograms as trademarks." 59 USPQ2d at 1693.
Therefore, in the absence of
evidence of consumer recognition as a mark, the examining attorney should
refuse registration on the ground that the hologram does not function as a
mark, under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052
and 1127.
Generally, if a hologram has
two or more views, the examining attorney should also refuse registration under
§§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that
the application seeks registration of more than one mark. In re Upper Deck,
supra. See
TMEP §807.01.
A sound mark identifies and distinguishes a product or service
through audio rather than visual means. Examples of sound marks include: (1)
a series of tones or musical notes, with or without words, and (2) wording
accompanied by music. For a discussion of the criteria for registration of
sound marks, see In re General Electric Broadcasting Co., Inc., 199
USPQ 560 (TTAB 1978).
The requirement for a drawing does not apply to sound marks. 37 C.F.R.
§2.52(e). See
TMEP §807.09.
Audio cassettes and compact disks may be accepted as specimens
for sound marks. 37 C.F.R. §2.56(d)(3). To show that the sound mark actually
identifies and distinguishes the services and indicates their source, the
specimen should contain a sufficient portion of the audio content to indicate
the nature of the services. If the mark comprises music or words set to music,
the applicant may also submit the musical score as a specimen.
When filing through TEAS, a musical score must be submitted in
.wav format. However, a .wav file cannot be sent as an attachment to a TEAS
filing, because all TEAS attachments must be in .jpg format. Therefore, the
Office has developed a special procedure for handling .wav files. The .wav
file must be sent after the application is filed, as an attachment to an e-mail
message directed to TEAS@uspto.gov,
with clear instructions that the .wav file should be associated with "the
application filed under Serial No. <specify>."
Extract from 15 U.S.C. §1052. 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 on account of its nature unless
it--
(a) Consists of or comprises immoral, deceptive, or
scandalous matter; or matter which 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 and is first used on or
in connection with wines or spirits by the applicant on or after one year after
the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay
Round Agreements Act) enters into force with respect to the United States.
The provisions of 15 U.S.C. §1052(a) apply to both the Principal
Register and the Supplemental Register.
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an
absolute bar to the registration of immoral or scandalous matter on either the
Principal Register or the Supplemental Register.
Although the words "immoral" and "scandalous" may have somewhat
different connotations, case law has included immoral matter in the same
category as scandalous matter. See In re McGinley, 660 F.2d 481, 484
n.6, 211 USPQ 668, 672 n.6 (C.C.P.A. 1981), aff'g 206 USPQ 753 (TTAB
1979) ("Because of our holding, infra, that appellant's mark is
'scandalous,' it is unnecessary to consider whether appellant's mark is
'immoral.' We note the dearth of reported trademark decisions in which the
term 'immoral' has been directly applied.")
The prohibition against the registration of marks that consist of
or comprise immoral or scandalous matter was originally enacted as §5(a) of the
Trademark Act of 1905, and was reenacted as part of §2(a) of the Act of 1946.
There is little legislative history concerning the intent of Congress with
regard to the provision; therefore, the term "scandalous" is interpreted by
looking to "its ordinary and common meaning." In re Riverbank Canning Co.,
95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938). This may be established by
referring to court decisions, decisions of the Trademark Trial and Appeal Board
and dictionary definitions. In re McGinley, 660 F.2d at 485, 211 USPQ
at 673.
In affirming a refusal to register a mark as scandalous under
§2(a), the Court of Customs and Patent Appeals noted dictionary entries that
defined "scandalous" as, inter alia, shocking to the sense of propriety,
offensive to the conscience or moral feelings or calling out for condemnation.
In re McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a
photograph of a nude, reclining man and woman, kissing and embracing, for a
"newsletter devoted to social and interpersonal relationship topics" and for
"social club services," held scandalous). The statutory language "scandalous"
has also been considered to encompass matter that is "vulgar," defined as
"lacking in taste, indelicate, morally crude." In re Runsdorf, 171 USPQ
443, 444 (TTAB 1971). See also In re Tinseltown, Inc., 212 USPQ 863,
864 (TTAB 1981) (BULLSHIT, which the Board termed "profane," held scandalous
for "accessories of a personal nature, ... attaché cases, hand bags, purses,
belts, and wallets").
The meaning imparted by a mark must be determined in the context
of the current attitudes of the day. See In re Mavety Media Group Ltd.,
33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (evidence found insufficient to
establish that BLACK TAIL used on adult entertainment magazines comprises
scandalous matter; court noted that there were both vulgar and non-vulgar
definitions of "tail," and that the record was devoid of evidence demonstrating
which of these definitions a substantial composite of the general public would
choose in the context of the relevant marketplace); In re Old Glory Condom
Corp., 26 USPQ2d 1216 (TTAB 1993) (OLD GLORY CONDOM CORP and design
comprising the representation of a condom decorated with stars and stripes in a
manner to suggest the American flag held not to be scandalous); In re Thomas
Laboratories, Inc., 189 USPQ 50, 52 (TTAB 1975) ("[I]t is imperative that
fullest consideration be given to the moral values and conduct which
contemporary society has deemed to be appropriate and acceptable.")
The determination of whether a mark is scandalous must be made in
the context of the relevant marketplace for the goods or services identified in
the application, and must be ascertained from the standpoint of not necessarily
a majority, but a "substantial composite of the general public." In re
McGinley, 660 F.2d at 485, 211 USPQ at 673 ("[T]he Lanham Act does not
require, under the rubric of 'scandalous,' any inquiry into the specific goods
or services not shown in the application itself."); In re Wilcher Corp.,
40 USPQ2d 1929 (TTAB 1996) (mark for restaurant and bar services consisting of
words DICK HEADS positioned directly underneath caricature of a human head
composed primarily of graphic and readily recognizable representation of male
genitalia held scandalous, as it would be considered offensive by a substantial
portion of the public); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d
1635, 1639 (TTAB 1988) (graphic design of a dog defecating, as applied to polo
shirts and T-shirts, held scandalous, given the broad potential audience that
may view applicant's mark in sales establishments and "virtually all public
places"); In re Hepperle, 175 USPQ 512 (TTAB 1972) (while the words
might be a reference to marijuana, ACAPULCO GOLD found not scandalous when used
as a mark for suntan lotion); .
Therefore, to support a refusal on the ground that a proposed
mark is immoral or scandalous, the examining attorney must provide evidence
that a substantial portion of the general public would consider the mark to be
scandalous in the context of contemporary attitudes and the relevant
marketplace. In re Mavety Media, 33 F.3d at 1371-1372, 31 USPQ2d at
1925. This evidence could include dictionary definitions, newspaper articles
and magazine articles.
Dictionary definitions alone may be sufficient to establish that
a proposed mark comprises scandalous matter, where multiple dictionaries,
including at least one standard dictionary, all indicate that a word is vulgar,
and the applicant's use of the word is limited to the vulgar meaning of the
word. In re Boulevard Entertainment, Inc.,334 F.3d 1336, 67 USPQ2d
1475 (Fed. Cir. 2003) (1-800-JACK-OFF and JACK OFF held scandalous, where all
dictionary definitions of "jack-off" were considered vulgar).
It has been noted that the threshold is lower for what can be
described as "scandalous" than for "obscene." Refusal to register immoral or
scandalous matter has been found not to abridge First Amendment rights, because
no conduct is proscribed and no tangible form of expression is suppressed.
Also, the term "scandalous" has been held sufficiently precise to satisfy due
process requirements under the Fifth Amendment. In re McGinley, 660
F.2d at 484-85, 211 USPQ at 672.
The prohibition in §2(a) of the Act against the registration of
scandalous matter pertains only to marks that are scandalous. The
authority of the Act does not extend to goods that may be scandalous. See
In re Madsen, 180 USPQ 334, 335 (TTAB 1973) (WEEK-END SEX for magazines
held not scandalous, the Board observing that whether the magazine contents may
be pornographic was not an issue before the Board).
The examining attorney may look to the specimen(s) or other aspects
of the record to determine how the mark will be seen in the marketplace. See
In re McGinley, 660 F.2d at 482 n.3, 211 USPQ at 670 n.3 (containing
excerpts from appellant's newsletters pertaining to their subject matter);
In re Hershey, 6 USPQ2d 1470, 1472 (TTAB 1988) (BIG PECKER BRAND for
T-shirts found not scandalous, the Board considering the labels that were
submitted as specimens in determining the question of how the mark might be
perceived. "[T]he inclusion of the bird design would make it less likely that
purchasers would attribute any vulgar connotation to the word mark and we note
that it is proper to look to the specimens of record to determine connotation
or meaning of a mark.")
To ensure consistency in examination with respect to immoral or
scandalous matter, when an examining attorney believes, for whatever reason,
that a mark may be considered to comprise such matter, the examining attorney
must consult with his or her supervisor.
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an
absolute bar to the registration of deceptive matter on either the Principal
Register or the Supplemental Register. Neither a disclaimer of the deceptive
matter nor a claim that it has acquired distinctiveness under §2(f) can obviate
a refusal under §2(a) on the ground that the mark consists of or comprises
deceptive matter. See American Speech-Language-Hearing Association v.
National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984); In re
Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).
Deceptive marks may include marks that falsely describe the
material content of a product (see In re Intex Plastics Corp., 215 USPQ
1045 (TTAB 1982)) and marks that are geographically deceptive (see
Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073
(TTAB 1988); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983),
recon. denied, 223 USPQ 191 (TTAB 1984)). See
TMEP §1210.05
et
seq. regarding geographically deceptive marks.
The Court of Appeals for the Federal Circuit has articulated the
following test for whether a mark consists of or comprises deceptive matter:
(1) Is the term misdescriptive of the character, quality,
function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that
the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect the
decision to purchase?
In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d
1259, 1260 (Fed. Cir. 1988), aff'g 8 USPQ2d 1790 (TTAB 1987).
The fact that only those knowledgeable in the relevant trade, andnot average purchasers, would be deceived does not preclude a finding that a
mark comprises deceptive matter. In re House of Windsor, Inc., 223 USPQ
191, 192 (TTAB 1984).
If the first two inquiries set forth by the Federal Circuit in In
re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir.
1988) (i.e., whether a mark is misdescriptive of the goods or services
and whether prospective purchasers are likely to believe the misdescription),
are answered affirmatively, the mark is deceptively misdescriptive of the
goods/services under §2(e)(1).
The third inquiry, whether the misdescription is likely to affect
the decision to purchase, distinguishes marks that are deceptive under §2(a)
from marks that are deceptively misdescriptive under §2(e)(1).
To establish that a misdescription would be likely to affect the
decision to purchase, the examining attorney should provide evidence that the
misdescriptive quality or characteristic would make the product or service more
appealing or desirable to prospective purchasers. In re Juleigh Jeans
Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992).
The examining attorney is to refuse registration of a mark of
this type under both §2(a) and §2(e)(1), where it is difficult to determine
whether misdescriptive matter would materially affect a decision to purchase. See,
e.g., Gold Seal Co. v. Weeks, 129 F. Supp. 928, 105 USPQ 407 (D.D.C. 1955),
aff'd sub nom. S. C. Johnson & Son, Inc. v. Gold Seal Co., 230 F.2d
832, 108 USPQ 400 (D.C. Cir. 1956) (per curiam), cert. denied, 352 U.S.
829, 111 USPQ 467 (1956). See also R. Neumann & Co. v. Overseas
Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964), and
Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073
(TTAB 1988), in which third parties filed oppositions based on both statutory
sections.
Marks that are deceptive under §2(a) are unregistrable on either
the Principal Register or the Supplemental Register, whereas marks that are
deceptively misdescriptive under §2(e)(1) may be registrable on the Principal
Register with a showing of acquired distinctiveness under §2(f), 15 U.S.C.
§1052(f), or on the Supplemental Register.
See
TMEP §1210.05(a)
regarding the distinction between
marks comprising deceptive matter under §2(a) and matter that is primarily
geographically deceptively misdescriptive under §2(e)(3).
In the following cases, proposed marks were determined to be
deceptive, under §2(a): In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d
1259 (Fed. Cir. 1988), aff'g 8 USPQ2d 1790 (TTAB 1987) (LOVEE LAMB held
deceptive for seat covers not made of lambskin); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (SUPER SILK held
deceptive for "clothing, namely dress shirts and sport shirts made of silk-like
fabric"); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB
1997) (ORGANIK deceptive for clothing and textiles made from cotton that is
neither from an organically grown plant nor free of chemical processing or
treatment, notwithstanding applicant's assertions that the goods are
manufactured by a process that avoids the use of chemical bleaches, because the
identification of goods was broad enough to include textiles and clothing
manufactured with chemical processes or dyes); In re Juleigh Jeans
Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive
for clothing having no connection with London); In re Perry Mfg. Co., 12
USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design of New York City skyline
held deceptive for clothing originating in North Carolina, in view of the
renown of New York City in the apparel industry); Stabilisierungsfonds fur
Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (GOLDENER
TROPFEN held deceptive for wines, in view of evidence of the international
renown of the Goldtropfchen vineyard of West Germany, the Board finding that
the purchasing public would be likely to think, mistakenly, that applicant's
wines were produced from grapes grown there in accordance with German wine laws
and regulations); Bureau National Interprofessionnel Du Cognac v. International
Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COLAGNAC held deceptive for
cola-flavored liqueur containing Spanish brandy, the Board concluding that
purchasers were likely to believe that applicant's goods contained COGNAC
brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (SILKEASE held
deceptive as applied to clothing not made of silk); In re House of Windsor,
Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB
1984) (BAHIA held deceptive as applied to cigars having no connection with the
Bahia province of Brazil, the record indicating that tobacco and cigars are
important products in the Bahia region); Evans Products Co. v. Boise Cascade
Corp., 218 USPQ 160 (TTAB 1983) (CEDAR RIDGE held deceptive for embossed
hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ
1045 (TTAB 1982) (TEXHYDE held deceptive as applied to synthetic fabric for use
in the manufacture of furniture, upholstery, luggage and the like); Tanners'
Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979)
(SOFTHIDE held deceptive for imitation leather material); In re Salem China
Co., 157 USPQ 600 (TTAB 1968) (AMERICAN LIMOGES, used on dinnerware that
was neither made in Limoges, France, nor made from Limoges clay, held deceptive
because of the association of Limoges with fine quality china); Company of
Cutlers of Hallamshire in the County of York v. Regent-Sheffield, Ltd., 155
USPQ 597 (TTAB 1967) (SHEFFIELD, used on cutlery not made in Sheffield,
England, held deceptive because of the renowned status of Sheffield in relation
to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (IVORY
WOOD, for lumber and timber products, held deceptive since the goods were not
made of ivorywood nor did they contain an ivorywood pattern).
Marks were found not to be deceptive in the following cases: Philip
Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990)
(PARK AVENUE held neither deceptive nor geographically deceptively
misdescriptive as applied to applicant's cigarettes and smoking tobacco, the
Board finding no goods/place association between Park Avenue in New York City,
on which opposer's world headquarters was located, and tobacco products); In
re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982) (NIPPON, for
radios, televisions and the like, found not deceptive in relation to the goods
because, although the applicant was an American firm, the goods were actually
made in Japan); In re Sweden Freezer Mfg. Co., 159 USPQ 246, 249 (TTAB
1968) (SWEDEN and design, for which registration was sought under §2(f) for
external artificial kidney units, held not deceptive, the Board finding the
case to be in the category "where a geographical trademark may involve a degree
of untruth but the deception may be perfectly innocent, harmless or
negligible"); A. F. Gallun & Sons Corp. v. Aristocrat Leather Products,
Inc., 135 USPQ 459 (TTAB 1962) (COPY CALF, for wallets and billfolds of
synthetic and plastic material made to simulate leather, found not deceptive,
the Board noting that the mark, as an obvious play on the expression "copy
cat," suggested to purchasers that the goods were imitations of items made of
calf skin).
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), bars the
registration on either the Principal or the Supplemental Register of a
designation that consists of or comprises matter which, with regard to persons,
institutions, beliefs, or national symbols, does any of the following: (1) disparages
them, (2) falsely suggests a connection with them, (3) brings them into
contempt, or (4) brings them into disrepute.
Section 2(a) is distinctly different from §2(d), 15 U.S.C.
§1052(d), for which the relevant test is likelihood of confusion. In
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703
F.2d 1372, 1375-76, 217 USPQ 505, 508-09 (Fed. Cir. 1983), aff'g 213
USPQ 594 (TTAB 1982), the Court of Appeals for the Federal Circuit noted as
follows:
A reading of the legislative history with respect to what
became §2(a) shows that the drafters were concerned with protecting the name of
an individual or institution which was not a technical "trademark" or "trade
name" upon which an objection could be made under §2(d)....
Although not articulated as such, it appears that the drafters
sought by §2(a) to embrace concepts of the right to privacy, an area of the law
then in an embryonic state (footnote omitted). Our review of case law
discloses that the elements of a claim of invasion of one's privacy have
emerged as distinctly different from those of trademark or trade name
infringement. There may be no likelihood of such confusion as to the source of
goods even under a theory of "sponsorship" or "endorsement," and, nevertheless,
one's right of privacy, or the related right of publicity, may be violated.
The right to privacy protects a party's control over the use of
its identity or "persona." A party acquires a protectible interest in a name
or equivalent designation under §2(a) where the name or designation is
unmistakably associated with, and points uniquely to, that party's personality
or "persona." A party's interest in a name or designation does not depend upon
adoption and use as a technical trademark or trade name. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d at
1376-77, 217 USPQ at 509; Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429
(TTAB 1985).
See
TMEP §§1203.03(c)
and
1203.03(d)
regarding
disparagement, bringing into contempt and bringing into disrepute, and
TMEP§§1203.03(e)
and
1203.03(f)
regarding false suggestion of a connection.
See Carson v. Here's Johnny Portable Toilets, Inc., 698
F.2d 831, 218 USPQ 1 (6th Cir. 1983), concerning the various forms
of identity which have been protected under the rights of privacy andpublicity.
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), protects,
inter alia, "persons, living or dead."
Section 45 of the Act, 15 U.S.C. §1127, defines "person" and"juristic person" as follows:
The term "person" and any other word or term used to designate
the applicant or other entitled to a benefit or privilege or rendered liable
under the provisions of this Act includes a juristic person as well as a
natural person. The term "juristic person" includes a firm, corporation,
union, association, or other organization capable of suing and being sued in a
court of law.
The term "person" also includes the United States, any agency
or instrumentality thereof, or any individual, firm, or corporation acting for
the United States and with the authorization and consent of the United States.
The United States, any agency or instrumentality thereof, and any individual,
firm, or corporation acting for the United States and with the authorization
and consent of the United States, shall be subject to the provisions of this
Act in the same manner and to the same extent as any nongovernmental entity.
The term "person" also includes any State, any instrumentality
of a State, and any officer or employee of a State or instrumentality of a
State acting in his or her official capacity. Any State, and any such
instrumentality, officer, or employee, shall be subject to the provisions of
this Act in the same manner and to the same extent as any non-governmental
entity.
The term "persons" in §2(a) refers to real persons, not
fictitious characters. In addition to natural persons, it includes juristic
persons, i.e., legally-created entities such as firms, corporations,
unions, associations or any other organizations capable of suing and being sued
in a court of law. See Morehouse Mfg. Corp. v. J. Strickland & Co.,
407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969); Popular Merchandise Co. v. "21"
Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965); John Walker
& Sons, Ltd. v. American Tobacco Co., 110 USPQ 249 (Comm'r Pats. 1956);
Copacabana, Inc. v. Breslauer, 101 USPQ 467 (Comm'r Pats. 1954).
With respect to natural persons, they may be living or dead.
However, §2(a) may not be applicable with regard to a deceased person when
there is no longer anyone entitled to assert a proprietary right or right of
privacy. Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314
F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (DA VINCI held not to falsely
suggest connection with deceased artist Leonardo Da Vinci).
A juristic person's rights under §2(a) are extinguished when the
juristic person ceases to exist.
Juristic persons or institutions do not have to be well known to
be protected from the registration of a mark that falsely suggests a connection
with or disparages them, or brings them into contempt or disrepute. Gavel
Club v. Toastmasters International, 127 USPQ 88, 94 (TTAB 1960).
It is well settled that the United States Government is a
juristic person. See NASA v. Record Chemical Co. Inc., 185 USPQ 563,
566 (TTAB 1975), and cases cited therein.
A mark does not have to comprise a person's full or correct name
to be unregistrable; a nickname or other designation by which a person is known
by the public may be unregistrable under this provision of the Act. Buffett
v. Chi-Chi's, Inc., 226 USPQ 428, 430 (TTAB 1985) (evidence of record
"sufficient to raise a genuine issue of material fact as to whether the term
'MARGARITAVILLE' is so uniquely and unmistakably associated with opposer as to
constitute opposer's name or identity such that when applicant's mark is used
in connection with its [restaurant] services, a connection with opposer would
be assumed").
A "national symbol" is subject matter of unique and special
significance that, because of its meaning, appearance and/or sound, immediately
suggests or refers to the country for which it stands. In re Consolidated
Foods Corp., 187 USPQ 63 (TTAB 1975) (noted national symbols include the
bald eagle, Statue of Liberty, American flag, Presidential symbol, designation
"Uncle Sam" and the unique human representation thereof, and the heraldry andshield designs used in governmental offices). National symbols include the
symbols of foreign countries as well as those of the United States. In re
Anti-Communist World Freedom Congress, Inc., 161 USPQ 304 (TTAB 1969).
The Trademark Act does not prohibit registration of marks
comprising national symbols; it only prohibits registration of matter that may
disparage national symbols, falsely suggest a connection with them, or hold
them up to contempt or disrepute. Liberty Mutual Insurance Co. v. Liberty
Insurance Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark.
1960) (marks comprising portion of the Statue of Liberty found not to
disparage, bring into contempt or disrepute, or falsely suggest a connection
with the Statue of Liberty or the United States government, the Court
"[a]ssuming without deciding" that the statue is a national symbol).
Designations have been held to be national symbols within the
meaning of §2(a) in the following cases: In re Anti-Communist World Freedom
Congress, Inc., 161 USPQ 304 (TTAB 1969) (representation of a hammer andsickle held to be a national symbol of the Union of Soviet Socialist Republics
(U.S.S.R.)); In re National Collection & Credit Control, Inc., 152 USPQ
200, 201 n.2 (TTAB 1966) ("The American or bald eagle with wings extended is a
well-known national symbol or emblem of the United States"); In re Teasdale
Packing Co., Inc., 137 USPQ 482 (TTAB 1963) (U. S. AQUA and design held
unregistrable under §2(a) on the ground that purchasers of applicant's canned
drinking water would be misled into assuming approval or sponsorship by the
United States government in view of the nature of the mark, including a red,
white and blue shield design, and the nature of the goods, the Board noting a
program for stocking emergency supplies of water in fallout shelters and the
setting of standards for drinking water by United States government agencies).
Designations have been held not to be national symbols in the
following cases: W. H. Snyder and Sons, Inc. v. Ladd, 227 F. Supp. 185,
140 USPQ 647 (D.D.C. 1964) (HOUSE OF WINDSOR held not to be a national symbol
of England, but merely the name of its present reigning family); NASA v.
Bully Hill Vineyards, Inc., 3 USPQ2d 1671 (TTAB 1987) (SPACE SHUTTLE found
not to constitute a national symbol on the evidence of record, the Board also
finding "shuttle" to be a generic term for a space vehicle or system);
Jacobs v. International Multifoods Corp., 211 USPQ 165, 170-71 (TTAB 1981),
aff'd on other grounds, 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982)
("[H]istorical events such as the 'BOSTON TEA PARTY'..., although undoubtedly
associated with the American heritage, do not take on that unique and special
significance of a 'national symbol' designed to be equated with and associated
with a particular country."); In re General Mills, Inc., 169 USPQ 244
(TTAB 1971) (UNION JACK, which applicant was using on packages of frozen fish
marked "English cut cod" and in its restaurant near representations of the
British national flag, found not to suggest a particular country, the Board
noting that it could consider only the matter for which registration was
sought); In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (U. S. HEALTH CLUB
found registrable for vitamin tablets. "Considering both the nature of the
mark and the goods, it is concluded that the purchasing public would not be
likely to mistakenly assume that the United States Government is operating a
health club, that it is distributing vitamins, or that it has approved
applicant's goods.")
The name of a country is not a national symbol within the meaning
of §2(a) of the Trademark Act, In re Sweden Freezer Mfg. Co., 159 USPQ
246, 248-249 (TTAB 1968), nor does use of the name of a country as a mark, by
itself, amount to deception, disparagement, or a "false connection" under
§2(a). In re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982).
The acronyms for, and names of, government agencies and bureaus
are not considered to be national symbols. Consolidated Foods Corp.,
187 USPQ at 64 (OSS, acronym for the Office of Strategic Services, held not to
be a national symbol, but merely to designate a particular (and long defunct)
government agency, the Board contrasting national symbols with names andacronyms of government agencies: "'National symbols' ... are more enduring in
time, ... and immediately conjure up the image of the country as a whole.
Symbols of a country take on a special meaning and significance and are not so
numerous as to dilute the special meaning and significance that each has.")
"National symbols" cannot be equated with the "insignia" of
nations. As noted in Liberty Mutual Insurance Co., 185 F. Supp. at 908,
127 USPQ at 323:
The Act ... does not put national symbols on a par with the
flag, coat of arms, or other insignia of the United States, which may not in
any event be made the subject matter of a trade or service mark. With regard
to national symbols the statute provides merely that they shall not be
disparaged or held up to contempt or disrepute, and shall not be used as
falsely to suggest a connection between the holder of the mark and the symbol.
See
TMEP §1204
regarding insignia.
While the prohibition of §2(a) against the registration of matter
that may disparage or falsely suggest a connection with national symbols, or
bring them into contempt or disrepute, may not be applicable to a particular
designation, many names, acronyms, titles, terms, and symbols are protected by
other statutes or rules. See
TMEP §1205.01.
Section 2(a) prohibits the registration of a mark that consists
of or comprises matter that may disparage, or bring into contempt or disrepute,
persons, institutions, beliefs or national symbols. See
TMEP§1203.03(a)
regarding persons, and
TMEP §1203.03(b)
regarding national symbols.
In sustaining an opposition on this ground, the Trademark Trial
and Appeal Board stated as follows:
Disparagement is essentially a violation of one's right of
privacy -- the right to be "let alone" from contempt or ridicule. See, Carson
v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th
Cir. 1983). It has been defined as the publication of a statement which the
publisher intends to be understood, or which the recipient reasonably should
understand, as tending "to cast doubt upon the quality of another's land,
chattels, or intangible things." Restatement (Second) of Torts §629 (1977).
The two elements of such a claim are (1) that the communication reasonably
would be understood as referring to the plaintiff; and (2) that the communication
is disparaging, that is, would be considered offensive or objectionable by a
reasonable person of ordinary sensibilities. Id. (citations omitted).
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639
(TTAB 1988).
With regard to the first element set forth, the Board found that
the applicant's design of a dog defecating strongly resembled the opposer's
running dog symbol and that the evidence of record established that the symbol
"points uniquely and unmistakably to opposer's persona." Id. at 1640.
With regard to the second element, the Board noted the negative
nature of the design and stated as follows:
As it relates to opposer, ... the offensiveness of the design
becomes even more objectionable because it makes a statement about opposer itself,
and holds opposer up to ridicule and contempt.
Id.
See Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600
(TTAB 1999) (BLACK TAIL used on adult entertainment magazines, found not to be
disparaging of women in general, or African-American women in particular, nor
to bring those groups into contempt or disrepute); Order Sons of Italy in
America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (THE MEMPHIS MAFIA
for entertainment services found not to be matter that disparages
Italian-Americans or bring them into contempt or disrepute); Harjo v. Pro
Football Inc., 50 USPQ2d 1705 (TTAB 1999) (REDSKINS, used in connection
with presentation of professional football contests, found to be matter that
may disparage Native Americans and bring them into contempt or disrepute, but
not scandalous matter); In re In Over Our Heads Inc., 16 USPQ2d 1653,
1654 (TTAB 1990) (MOONIES and design incorporating a "buttocks caricature," for
dolls whose pants can be dropped, held not to be disparaging matter that is
unregistrable under §2(a), the Board finding that the mark "would, when used on
a doll, most likely be perceived as indicating that the doll 'moons,' and would
not be perceived as referencing members of The Unification Church.");
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988)
(design of dog defecating, for clothing, held to disparage, and bring into
contempt or disrepute, opposer's running dog symbol, the Board finding the
evidence of record "sufficient to show prima facie that this design [the
running dog symbol] is, in effect, an alter ego of opposer which points
uniquely and unmistakably to opposer's persona."); In re Anti-Communist
World Freedom Congress, Inc., 161 USPQ 304 (TTAB 1969) (design of an "X"
superimposed over a hammer and sickle held to disparage, and hold in contempt
and disrepute, a national symbol of the U.S.S.R.).
Section 2(a) prohibits the registration of a mark that consists
of or comprises matter that may falsely suggest a connection with persons,
institutions, beliefs or national symbols. See
TMEP §1203.03(a)
regarding persons,
TMEP §1203.03(b)
regarding national symbols, and
TMEP §1203.03
for information about the legislative history of §2(a).
To establish that a proposed mark falsely suggest a connection
with a person or an institution, it must be shown that: (1) the mark is the
same as, or a close approximation of, the name or identity of a person or
institution; (2) the mark would be recognized as such, in that it points
uniquely and unmistakably to that person or institution; (3) the person or
institution named by the mark is not connected with the activities performed by
applicant under the mark; and (4) the fame or reputation of the person or
institution is such that, when the mark is used with the applicant's goods or
services, a connection with the person or institution would be presumed. In re White, 73 USPQ2d 1713 (TTAB 2004); In re Nuclear Research Corp.,
16 USPQ2d 1316, 1317 (TTAB 1990); Buffett v. Chi-Chi's, Inc., 226 USPQ
428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB
1985).
In In re Sloppy Joe's International Inc., 43 USPQ2d 1350,
1353-34 (TTAB 1997), the Trademark Trial and Appeal Board held that Ernest
Hemingway's friendship with the original owner of applicant's bar, his
frequenting the bar and his use of the back room as an office is not the kind
of "connection" contemplated by §2(a). Rather, a commercial connection, such
as an ownership interest or commercial endorsement or sponsorship of
applicant's services would be necessary to entitle the applicant to
registration.
If it is unclear whether the person or institution is connected
with the goods sold or services performed by the applicant, the examining
attorney should make an explicit inquiry under 37 C.F.R. §2.61(b).
A refusal on this basis requires, by implication, that the person
or institution with which a connection is falsely suggested must be the prior
user. In re Nuclear Research Corp., 16 USPQ2d at 1317; In re Mohawk
Air Services Inc., 196 USPQ 851, 854-55 (TTAB 1977).
Intent to identify a party or trade on its goodwill is not a
required element of a §2(a) claim of false suggestion of an association with
such party. S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d
1221, 1224 (TTAB 1987); Consolidated Natural Gas Co. v. CNG Fuel Systems,
Ltd., 228 USPQ 752, 754 (TTAB 1985). However, evidence of such an intent
could be highly persuasive that the public would make the intended false
association. University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., Inc., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g
213 USPQ 594 (TTAB 1982).
See University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983),
aff'g 213 USPQ 594 (TTAB 1982) (NOTRE DAME and design, for cheese, held not
to falsely suggest a connection with the University of Notre Dame. "As the
board noted, 'Notre Dame' is not a name solely associated with the University.
It serves to identify a famous and sacred religious figure and is used in the
names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame
in Paris, France. Thus it cannot be said that the only 'person' which the name
possibly identifies is the University and that the mere use of NOTRE DAME by
another appropriates its identity."); In re Sauer, 27 USPQ2d 1073 (TTAB
1993), aff'd, 26 F.3d 140 (Fed. Cir. 1994) (registration of BO BALL for
oblong shaped leather ball with white stitching properly refused under §2(a),
since use of "Bo" would be recognized by purchasers as reference to football
and baseball player Bo Jackson, and there was no connection between Jackson andapplicant); In re White, 73 USPQ2d 1713 (TTAB 2004) (APACHE, used
for cigarettes, falsely suggests a connection with the nine federally
recognized Apache tribes ); In re Los Angeles Police Revolver and Athletic
Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (slogan TO PROTECT AND TO SERVE,
used by applicant Los Angeles Police Revolver and Athletic Club, Inc., does
not falsely suggest a connection with the Los Angeles Police Department,
where evidence showed an actual longstanding commercial connection, publicly
acknowledged and endorsed by both parties); In re Urbano, 51 USPQ2d 1776
(TTAB 1999) (SYDNEY 2000, used for
advertising and business services and communication services, falsely suggests
connection with Olympic Games, since general public would recognize phrase as
referring unambiguously to Olympic Games to be held in Sydney, Australia, in
2000; entire organization that comprises Olympic games qualifies as
"institution."); In re North American Free Trade Association, 43
USPQ2d 1282 (TTAB 1997) (NAFTA, used on "promotion of trade and investment"
services, falsely suggests connection with North American Free Trade Agreement;
NAFTA qualifies as institution because it encompasses treaty, supplemental
agreements, and various commissions, committees and offices created by those
documents); In re Sloppy Joe's International Inc., 43 USPQ2d 1350 (TTAB
1997) (use of mark SLOPPY JOE'S, with design that includes portrait of Ernest
Hemingway, falsely suggests connection with deceased writer); Internet Inc.
v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB
1996) (cancellation petitioners failed to state claim for relief where they
have not alleged, and cannot reasonably allege, that the term INTERNET points
uniquely and unmistakably to their own identity or persona); Ritz Hotel Ltd.
v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1471 (TTAB 1990) (RIT-Z in
stylized form, for toilet seats, held not to falsely suggest a connection with
opposer, the Board observing that there was "no evidence of record directed to
showing a connection of applicant's mark with opposer corporation, The Ritz
Hotel Limited"); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB
1990) (NRC and design, for radiation and chemical agent monitors, electronic
testers and nuclear gauges, held not to falsely suggest a connection with the
U.S. Nuclear Regulatory Commission in view of applicant's use of NRC long prior
to the inception of that agency); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d
1671, 1676 (TTAB 1987) (opposition to the registration of SPACE SHUTTLE for
wines dismissed, the Board finding "shuttle" to be a generic term for a space
vehicle or system. "Where a name claimed to be appropriated does not point
uniquely and unmistakably to that party's personality or 'persona,' there can
be no false suggestion."); Board of Trustees of University of Alabama v.
BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (petition to cancel
registration of BAMA, for shoes, slippers, stockings, socks and insoles,
granted, the Board finding that the evidence of record indicated that BAMA
points uniquely to the University of Alabama and thus falsely suggests a
connection with the University); In re Cotter & Co., 228 USPQ 202
(TTAB 1985) (WESTPOINT, for shotguns and rifles, held to falsely suggest a
connection with an institution, the United States Military Academy). For
examples of findings of false suggestion of a connection prior to the decision
of the Court of Appeals for the Federal Circuit in Notre Dame, supra, see In
re U.S. Bicentennial Society, 197 USPQ 905 (TTAB 1978) (U.S. BICENTENNIAL
SOCIETY, for ceremonial swords, held to falsely suggest a connection with the
American Revolution Bicentennial Commission and the United States government);
In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976) (NATIONAL
INTELLIGENCE ACADEMY, for educational and instructional services in
intelligence gathering for law enforcement officers, held to falsely suggest a
connection with the United States government).
Extract from 15 U.S.C. §1052. 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 on account of its nature unless
it ... (b) Consists of or comprises the flag or coat of arms or other insignia
of the United States, or of any State or municipality, or of any foreign nation,
or any simulation thereof.
Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b), bars the
registration on either the Principal Register or the Supplemental Register of
marks that consist of or comprise (whether consisting solely of, or having
incorporated in them) the flag, coat of arms, or other insignia of the United
States, of any state or municipality, or of any foreign nation. Section 2(b)
also bars the registration of marks that consist of or comprise any simulation
of such symbols.
Section 2(b) differs from the provision of §2(a) regarding
national symbols (see
TMEP §1203.03(b))
in that §2(b) requires no
additional element, such as disparagement or a false suggestion of a
connection, to preclude registration.
Flags and coats of arms are specific designs formally adopted to
serve as emblems of governmental authority. The wording "other insignia"
should not be interpreted broadly, but should be considered to include only
those emblems and devices that also represent such authority and that are of
the same general class and character as flags and coats of arms. The Trademark
Trial and Appeal Board has construed the statutory language as follows:
[T]he wording "or other insignia of the United States" must be
restricted in its application to insignia of the same general class as "the
flag or coats of arms" of the United States. Since both the flag and coat of
arms are emblems of national authority it seems evident that other insignia of
national authority such as the Great Seal of the United States, the
Presidential Seal, and seals of government departments would be equally
prohibited registration under Section 2(b). On the other hand, it appears
equally evident that department insignia which are merely used to identify a
service or facility of the Government are not insignia of national authority
and that they therefore do not fall within the general prohibitions of this
section of the Statute.
In re U.S. Department of the Interior, 142 USPQ 506, 507
(TTAB 1964) (logo comprising the words "NATIONAL PARK SERVICE" and "Department
of the Interior," with depiction of trees, mountains and a buffalo, surrounded
by an arrowhead design, held not to be an insignia of the United States).
Letters that merely identify people and things associated with a
particular agency or department of the United States government, instead of
representing the authority of the government or the nation as a whole, are
generally not considered to be "insignia of the United States" within the
meaning of §2(b). The Board, in dismissing an opposition to the registration
of "USMC" in a stylized presentation, for prostheses, fracture braces andorthopedic components, discussed the meaning of "insignia" under §2(b), as
follows:
The letters "USMC" are nothing like a flag or coat of arms.
These types of insignia are pictorial in nature, they can be described, but
cannot be pronounced. Even if the letters could be construed to be an
insignia, opposer has not shown that they would be seen as an insignia of the
United States.
U.S. Navy v. U.S. Mfg. Co., 2 USPQ2d 1254, 1256 (TTAB
1987). As a result of the enactment of Public Law 98-525 on October 19, 1984,
the initials, seal and emblem of the United States Marine Corps are "deemed to
be insignia of the United States," under 10 U.S.C. §7881, pertaining to
unauthorized use of Marine Corps insignia. However, "USMC" was not so
protected when the applicant began using its stylized version of those letters
as a mark. In view of the provision in Public Law 98-525 that the amendments
adding Chapter 663 (10 U.S.C. §7881) shall not affect rights that vested before
the date of its enactment, the majority of the Board found that enactment of
the law did not adversely affect the mark's registrability, stating that
"opposer has not shown that applicant's mark was an insignia of the United
States prior to the law making it one, or that the law effectively bars
registration to applicant." Id. at 1260. (See
TMEP §1205.01
regarding subject matter that is protected by statute.)
See also Liberty Mutual Insurance Co. v. Liberty Insurance Co.
of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) ("That
the Statue of Liberty is not a part of the 'insignia of the United States' is
too clear to require discussion.")
As stated above, marks that consist of or comprise any simulation
of the flag, coat of arms, or other insignia of the United States, of any state
or municipality, or of any foreign nation are also unregistrable under §2(b).
"Simulation," as contemplated by §2(b), refers to "something that gives the
appearance or effect or has the characteristics of an original item." In re
Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) (mark consisting of wording
and the design of a globe and six flags for watches found registrable, the
Board stating, "[A]lthough the flags depicted in applicant's mark incorporate
common elements of flag designs such as horizontal or vertical lines, crosses
or stars, they are readily distinguishable from any of the flags of the nations
alluded to by the examiner. In fact, applicant's mark would be regarded as
nothing more than a conglomeration of nondescript flags utilized to symbolize
the significance of the globe design and the slogan 'TIMING THE WORLD'
appearing thereon.") Whether a mark comprises a simulation must be determined
from a visual comparison of the mark vis-à-vis replicas of the flag, coat of
arms or other insignia in question. Id.
The determination of whether a proposed mark consists of or
comprises a flag, coat of arms or other insignia must be made "without a
careful analysis and side-by-side comparison." In re Advance Industrial
Security, Inc., 194 USPQ 344, 346 (TTAB 1977) (ADVANCE SECURITY and design
consisting of an eagle on a triangular shield, in gold and brown, for detective
and investigative services and providing security systems and services, found
registrable, the Board stating, "When the mark of the applicant and the Coat of
Arms or Great Seal of the United States are compared in their entireties, it is
adjudged that applicant's mark does not consist of or comprise the Coat of Arms
of the United States or any simulation thereof ....") The public should be
considered to retain only a general or overall, rather than specific,
recollection of the various elements or characteristics of design marks. Id.
The incorporation in a mark of individual or distorted features
that are merely suggestive of flags, coats of arms or other insignia does not
bar registration under §2(b). See Knorr-Nahrmittel A.G. v. HavlandInternational, Inc., 206 USPQ 827, 833 (TTAB 1980) (While applicant
originally may have intended to include the flags of the Scandinavian countries
in the mark, NOR-KING and design, "[a]ll that the record reflects is that the
mark contains a representation of certain flags, but not the flag or flags of
any particular nation." Opposer's cause of action under §2(b) found to be
without merit; opposition sustained on other grounds); In re National Van
Lines, Inc., 123 USPQ 510 (TTAB 1959) (mark comprising words and the design
of a shield with vertical stripes held registrable, the Board finding the
design to be readily distinguishable from the shield of the Great Seal of the
United States and, therefore, not a simulation of the seal or any portion
thereof); In re American Box Board Co., 123 USPQ 508 (TTAB 1959) (design
mark comprising an eagle and shield held registrable, the Board finding that it
did not involve a simulation of the Great Seal of the United States because the
eagle and shield of applicant's mark differed substantially from those on the
seal in both appearance and manner of display).
See
TMEP §§1205
et seq. regarding matter that is
protected by statute or by Article 6ter of the Paris Convention.
To overcome a refusal under §2(a) or §2(b), deletion of the
unregistrable matter is sometimes permitted. See
TMEP §807.14(a)
regarding removal of matter from drawings.
Various federal statutes and regulations prohibit or restrict the
use of certain words, names, symbols, terms, initials, marks, emblems, seals,
insignia, badges, decorations, medals and characters adopted by the United
States government or particular national and international organizations.
These designations are reserved for the specific purposes prescribed in the
relevant statute and must be free for use in the prescribed manner. See
the listings of citations to sections of the United States Code and the Code of
Federal Regulations in
Appendix C
of this Manual.
For example, Congress has created about 70 statutes that grant
exclusive rights to use certain designations to federally created private
corporations and organizations. Violation of some of these statutes may be a
criminal offense, e.g., 18 U.S.C. §§705 (regarding badges, medals,
emblems or other insignia of veterans' organizations); 706 ("Red Cross,"
"Geneva Cross," and emblem of Greek red cross); 707 (4-H Club); 708 (coat of
arms of the Swiss Confederation); 711 ("Smokey Bear"); and 711a ("Woodsy Owl"
and slogan, "Give a Hoot, Don't Pollute"). Other statutes provide for civil
enforcement, e.g., 36 U.S.C. §§153104 (National Society of the Daughters
of the American Revolution); 30905 (Boy Scouts); 80305 (Girl Scouts); 130506
(Little League); and 21904 (The American National Theater and Academy).
The following are examples of the protection of words and symbols
by statute.
(1) The Copyright Act of 1976 includes provisions regarding
the use of appropriate notices of copyright. These include provisions
concerning the use of the letter "C" in a circle - ©, the word "Copyright" andthe abbreviation "Copr." to identify visually perceptible copies (17 U.S.C.
§401); the use of the letter "P" in a circle to indicate phonorecords of sound
recordings (17 U.S.C. §402); and the use of the words "mask work," the symbol
*M* and the letter "M" in a circle to designate mask works (17 U.S.C. §909).
The Act designates these symbols to perform the function of indicating that the
user of the symbol is asserting specific statutory rights.
(2) Use of the Greek red cross other than by the American
National Red Cross is proscribed by statute. 18 U.S.C. §706. Use of the coat
of arms of the Swiss Confederation for trade or commercial purposes is
proscribed by statute. 18 U.S.C. §708. See In re Health Maintenance
Organizations, Inc., 188 USPQ 473 (TTAB 1975) (mark comprising a dark cross
with legs of equal length on which a caduceus is symmetrically imposed
(representation of caduceus disclaimed) held registrable, the Board finding the
mark readily distinguishable from the Greek red cross (on white background) andthe Swiss confederation coat of arms (white cross on red background)).
(3) False advertising or misuse of names to indicate a
federal agency is proscribed by 18 U.S.C. §709. For example, this provision
prohibits knowing use, without written permission of the Director of the
Federal Bureau of Investigation, of the words "Federal Bureau of
Investigation," the initials "F.B.I." or any colorable imitation, in various
formats "in a manner reasonably calculated to convey the impression that such
advertisement, ... publication, ... broadcast, telecast, or other production,
is approved, endorsed, or authorized by the Federal Bureau of Investigation."
Thus, an examining attorney must refuse to register such matter, pursuant to 18
U.S.C. §709, if its use is reasonably calculated to convey an approval,
endorsement or authorization by the Federal Bureau of Investigation.
(4) Section 110 of the Amateur Sports Act of 1978, 36 U.S.C.
§220506, protects various designations associated with the Olympics. Under 36
U.S.C. §220506(a), the United States Olympic Committee has the exclusive right
to use the name "United States Olympic Committee," its symbol and emblem, andthe words "Olympic," "Olympiad," "Citius Altius Fortius," "Pan American,"
"Paralympiad," "America Espirito Sport Fraternite," or any combination
thereof. The United States Supreme Court has held that the grant by Congress
to the United States Olympic Committee of the exclusive right to use the word
"Olympic" does not violate the First Amendment. San Francisco Arts &
Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 3 USPQ2d 1145
(1987) (concerning petitioner's use of "Gay Olympic Games"). Under 36 U.S.C.
§220506(c), a person is subject to suit in a civil action by the Committee if
such person, without the Committee's consent, uses for the purpose of trade, to
induce the sale of goods or services, or to promote any theatrical exhibition,
athletic performance, or competition, a designation noted above (listed in
§220506(a)) or "any trademark, trade name, sign, symbol, or insignia falsely
representing association with, or authorization by, the International Olympic
Committee or ... [the United States Olympic Committee]" or any simulation of the
words "Olympic," "Olympiad" or "Citius Altius Fortius" "tending to cause
confusion, to cause mistake, to deceive, or to falsely suggest a connection
with ... [the United States Olympic Committee] or any Olympic activity."
See U.S. Olympic Committee v. Toy Truck Lines Inc., 237 F.3d 1331, 57
USPQ2d 1380 (Fed. Cir. 2001); O-M Bread, Inc. v. U.S. Olympic Committee.,
65 F.3d 933, 36 USPQ2d 1041(Fed. Cir. 1995); U.S. Olympic Committee v.
Intelicense Corp., S.A., 737 F. 2d 263, 222 USPQ 766 (2d Cir. 1984), cert.
denied 469 U.S. 982 (1984); U.S. Olympic Committee v. Union Sport
Apparel, 220 USPQ 526 (E.D. Va. 1983); U.S. Olympic Committee v.
International Federation of Body Builders, 219 USPQ 353 (D.D.C. 1982);
Stop the Olympic Prison v. U.S. Olympic Committee, 489 F. Supp. 1112, 207 USPQ
237 (S.D.N.Y. 1980).
(5) In chartering the Blinded Veterans Association, Congress
granted it the sole right to use its name and such seals, emblems and badges as
it may lawfully adopt. 36 U.S.C. §30306. This protection of its exclusive
right to use "Blinded Veterans Association" does not extend to the term
"blinded veterans," which has been found generic. Blinded Veterans
Association v. Blinded American Veterans Foundation, 872 F.2d 1035, 10 USPQ2d
1432 (D.C. Cir. 1989).
Usually the statute will define the appropriate use of a
designation and will prescribe criminal penalties or civil remedies for
improper use. However, the statutes themselves do not provide the basis for
refusal of trademark registration. To determine whether registration should be
refused in a particular application, the examining attorney should consult the
relevant statute to determine the function of the designation and its
appropriate use. If a statute provides that a specific party or government agency
has the exclusive right to use a designation, and a party other than that
specified in the statute has applied to register the designation, the examining
attorney must refuse registration on the ground that the mark is not in lawful
use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and1127, in addition to the relevant statute.
Depending on the nature and use of the mark, other sections of
the Trademark Act may also bar registration and must be cited where
appropriate. For example, it may be appropriate for the examining attorney to
refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), on
the ground that the mark comprises matter that may falsely suggest a connection
with a national symbol, institution or person specified in the statute (e.g.,
the United States Olympic Committee). See
TMEP §1203.03(e).
Other
§2(a) bases for refusal could also apply. See
TMEP §§1203
et seq.
It may be appropriate to refuse registration under §2(b), 15 U.S.C. §1052(b),
for matter that comprises a flag, coat of arms or other similar insignia. See
TMEP §1204.
It may be appropriate to refuse registration under §2(d), 15 U.S.C.
§1052(d), if the party specified in the statute owns a registration for a mark
that is the same or similar. Cf. U.S. Olympic Committee v.
Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984)
(opposition to the registration of OLYMP sustained on ground of likelihood of
confusion with opposer's registered mark OLYMPIC under §2(d), the Board finding
that the evidence of record did not show that OLYMP falsely suggests a
connection with opposer under §2(a), and that the remedies provided in 36
U.S.C. §220506(c) for misuse of Olympic designations are not pertinent to
opposition proceedings).
In some instances, it may be appropriate for the examining
attorney to refuse registration pursuant to §§1, 2 (preamble) and 45 of the
Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the subject
matter would not be perceived as a trademark. (For service mark applications,
§3 of the Act, 15 U.S.C. §1053, should also be cited as a basis for refusal).
To determine what action is appropriate, the examining attorney
should look to the particular use of a symbol or term by the applicant. For example,
where it is evident that the applicant has merely included a copyright symbol
in the drawing of the mark inadvertently, and the symbol is not a material
portion of the mark, the examining attorney should indicate that the symbol is
not part of the mark and require that the applicant amend the drawing to remove
the symbol, instead of issuing statutory refusals of the types noted above.
Examining attorneys should also consider whether registration of
matter as a trademark by the applicant may be prohibited by Article 6ter
of the Paris Convention. See
TMEP §1205.02.
The United States is a member of the Paris Convention for the
Protection of Industrial Property, as revised at Stockholm on July 14, 1967,
the members of which constitute a Union for the protection of industrial
property.
Under Article 6ter of the Paris Convention, the
contracting countries have agreed to refuse or to invalidate the registration,
and to prohibit the unauthorized use, as trademarks or as elements of
trademarks, of armorial bearings, flags, and other State emblems of the member
countries, official signs and hallmarks indicating control and warranty adopted
by member countries, and any imitation from a heraldic point of view. The provision
applies equally to armorial bearings, flags, other emblems, abbreviations andnames of international intergovernmental organizations of which one or more
countries of the Union are members, except for those that are already the
subject of international agreements in force, intended to ensure their
protection (e.g., "Red Cross" and emblems protected by the Geneva
Convention of August 12, 1949).
Under Article 6ter, each member country shall communicate
the list of emblems, official signs and hallmarks that it wishes to protect,
and all subsequent modifications of its list, to the IB, who will transmit the
communications to the other member countries. Within twelve months from
receipt of the notification, a member country may transmit its objections, through
the IB.
When the USPTO receives requests for protection under Article 6ter
from the IB, they are assigned serial numbers in the "89" series code, i.e.,
serial numbers beginning with the digits "89," and are sometimes referred to as
"non-registrations." The USPTO searches its records for conflicting marks, but
the requests are not subjected to a full examination by an examining attorney
or published for opposition. Copies of the designations are filed in the paper
records of the Trademark Search Library, and pertinent information is entered
in the automated search records of the Office and should be discovered in an
examining attorney's search.
Refusal Of Marks
Because of an Article 6ter Designation
The Paris Convention requires that the United States refuse to
register designations that have been deposited pursuant to Article 6ter
and to which the United States has transmitted no objections. Depending on the
nature and use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C.
§§1052(a) and 1052(b), may bar registration of these marks. A refusal under
§2(d) of the Trademark Act is not appropriate. The issue is not
whether the marks are confusingly similar, but whether registration of the mark
would violate §§2(a) or 2(b) of the Trademark Act.
For example, it may be appropriate for the examining attorney to
refuse registration under §2(a) of the Act on the ground that the mark
comprises matter that may falsely suggest a connection with a national symbol
of a member country or an international intergovernmental organization. See
TMEP §1203.03(e).
Other §2(a) bases for refusal could also apply. See
TMEP §§1203
et seq. It may be appropriate to refuse registration under
§2(b) of the Act if the proposed mark comprises a flag, coat of arms or other
similar insignia. See
TMEP §1204.
In some instances, it may be
appropriate to refuse registration under §§1, 2 (preamble) and 45 of the
Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the subject
matter would not be perceived as a trademark. (For service mark applications,
§3 of the Act, 15 U.S.C. §1053, should also be cited as a basis for refusal.)
Extract from 15 U.S.C. §1052. 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 on account of its nature unless
it ... (c) Consists of or comprises a name, portrait, or signature identifying
a particular living individual except by his written consent, or the name,
signature, or portrait of a deceased President of the United States during the
life of his widow, if any, except by the written consent of the widow.
Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), bars the
registration of a mark that consists of or comprises (whether consisting solely
of, or having incorporated in the mark) a name, portrait or signature that
identifies a particular living individual, or a deceased United States
president during the life of his widow, except by the written consent of the
individual or the president's widow.
Section 2(c) absolutely bars the registration of these marks on
either the Principal Register or the Supplemental Register.
The purpose of requiring the consent of a living individual to
the registration of his or her name, signature or portrait is to protect rights
of privacy and publicity that living persons have in the designations that
identify them. University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g
213 USPQ 594 (TTAB 1982); Canovas v. Venezia 80 S.R.L., 220 USPQ 660,
661 (TTAB 1983). See
TMEP §1203.03
for a discussion of the right to
control the use of one's identity, which underlies part of §2(a) as well as
§2(c).
See
TMEP §813
regarding when it is necessary for an
examining attorney to inquire of the applicant as to whether a name, signature
or portrait in a mark identifies a particular living individual, and regarding
the entry of pertinent statements in the record for printing in the Official
Gazette and on a registration certificate.
Section 2(c) explicitly pertains to any name, portrait or
signature that identifies a particular living individual, or a deceased
president of the United States during the life of the president's widow.
To identify a particular living individual, a name does not have
to be the person's full name. See Ross v. Analytical Technology Inc.,
51 USPQ2d 1269 (TTAB 1999) (registration of opposer's surname without consent
prohibited by §2(c), where the record showed that because of opposer's
reputation as an inventor in the field of electrochemical analysis, the relevant
public would associate the goods so marked with opposer); In re Steak andAle Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) (PRINCE CHARLES
found to identify a particular living individual whose consent was not of
record); Laub v. Industrial Development Laboratories, Inc., 121 USPQ 595
(TTAB 1959) (LAUB, for flowmeters, found to identify the holder of a patent for
flowmeters, whose written consent was not of record); Reed v. Bakers
Engineering & Equipment Co., 100 USPQ 196, 199 (PO Ex. Ch. 1954)
(registration of REED REEL OVEN, for ovens, held to be barred by §2(c) without
written consent of the designer and builder of the ovens, Paul N. Reed.
"'Name' in §2(c) is not restricted to the full name of an individual but refers
to any name regardless of whether it is a full name, or a surname or given
name, or even a nickname, which identifies a particular living
individual..."). Cf. Société Civile Des Domaines Dourthe Frères v. S.A.
Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB
1988) ("Section 2(c) does not apply to surnames except in those cases where a
particular individual is known by a surname alone.")
Cases involving portraits include In re McKee Baking Co.,
218 USPQ 287 (TTAB 1983) (mark comprising a sign on which the portrait of a
young girl appears below the words LITTLE DEBBIE); In re Masucci, 179 USPQ
829 (TTAB 1973) (mark comprising name and portrait of a deceased president of
the United States, President Eisenhower); Garden v. Parfumerie Rigaud, Inc.,
34 USPQ 30 (Comm'r Pats. 1937) (marks comprising name and portrait of Mary
Garden).
Section 2(c) applies to marks that comprise matter that identify
living individuals; it does not apply to marks that comprise matter that
identifies deceased persons, except for a deceased president of the United
States during the life of the president's widow. See McGraw-Edison Co. v.
Thomas Edison Life Insurance Co., 160 USPQ 685 (TTAB 1969), vacated on
other grounds, 162 USPQ 372 (N.D. Ill. 1969) (opposition to the
registration of THOMAS EDISON dismissed, the Board finding §2(c) inapplicable,
as the particular individual whom the name identifies is deceased); In re
Masucci, 179 USPQ 829 (TTAB 1973) (affirming refusal to register mark
consisting of the name EISENHOWER, a portrait of President Dwight D. Eisenhower
and the words PRESIDENT EISENHOWER REGISTERED PLATINUM MEDALLION #13, for
greeting cards, on the ground that the mark comprises the name, signature or portrait
of a deceased United States president without the written consent of his widow,
under §2(c)).
The fact that a name appearing in a mark may actually be the name
of more than one person does not negate the requirement for a written consent
to registration, if the mark identifies, to the relevant public, a particular
living individual or deceased United States president whose spouse is living. In
re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975)
(affirming refusal to register PRINCE CHARLES, for meat, in the absence of
consent to register by Prince Charles, a member of the English royal family.
"Even accepting the existence of more than one living 'Prince Charles,' it does
not follow that each is not a particular living individual.")
If it appears that a name, portrait or signature in a mark may
identify a particular living individual but in fact the applicant devised the
matter as fanciful, or believes it to be fanciful, a statement to that effect
should be placed in the record. If appropriate, the statement that a name,
portrait or signature does not identify a particular living individual will be
printed in the Official Gazette and on the registration certificate. See
TMEP §813.
Additional relevant circumstances should also be explained. For
example, if the matter identifies a certain character in literature, or a
deceased historical person, then a statement of these facts in the record may
be helpful; however, this information should not be printed in the Official
Gazette or on a registration certificate.
Although a mark may have been devised to be fanciful or arbitrary
and not to identify a particular living individual, it nevertheless may name or
otherwise identify one or more living individuals. Whether a consent to registration
is required depends on whether the public would recognize and understand the
mark as identifying the person. Therefore, if the person is not generally
known, or well known in the field relating to the relevant goods or services,
it may be that the mark would not constitute the identification of a particular
person under §2(c), and consent would not be required. The Trademark Trial andAppeal Board noted as follows in Martin v. Carter Hawley Hale Stores, Inc.,
206 USPQ 931, 933 (TTAB 1979):
[Section] 2(c) was not designed to protect every person from
having a name which is similar or identical to his or her name registered as a
trademark. Such a scope of protection would practically preclude the
registration of a trademark consisting of a name since in most cases there
would be someone somewhere who is known by the name and who might be expected
to protest its registration. Rather, the Statute was intended to protect one
who, for valid reasons, could expect to suffer damage from another's trademark use
of his name. That is, it is more than likely that any trademark which is
comprised of a given name and surname will, in fact, be the name of a real
person. But that coincidence, in and of itself, does not give rise to damage
to that individual in the absence of other factors from which it may be
determined that the particular individual bearing the name in question will be
associated with the mark as used on the goods, either because that person is so
well known that the public would reasonably assume the connection or because
the individual is publicly connected with the business in which the mark is
used.
See also Fanta v. Coca-Cola Co., 140 USPQ 674 (TTAB 1964)
(dismissing a petition to cancel registrations of FANTA, for soft drinks andsyrup concentrate, the Board noting no use by the petitioner, Robert D. Fanta,
of his name in connection with the sale of soft drinks, nor any indication that
petitioner had attained recognition in that field); DeCecco v. Wright,
120 USPQ 20 (TTAB 1958) ("The question whether the name 'DECECCO' as used by
applicant in connection with his goods serves to identify opposer is a matter
for proof."); Brand v. Fairchester Packing Co., 84 USPQ 97 (Comm'r Pats.
1950) (affirming dismissal of a petition to cancel the registration of ARNOLD
BRAND, for fresh tomatoes, the Commissioner finding nothing in the record to
indicate that the mark identified the petitioner, Arnold Brand, an attorney
specializing in patent and trademark matters, with the tomato business, or that
use of the mark would lead the public to make such a connection).
When a name, portrait or signature in a mark identifies a
particular living individual, or a deceased president of the United States
during the life of his widow, the mark can be registered only if the written
consent of the individual, or of the president's widow, is filed in the
application.
The consent must be a written consent to the registration of the
identifying matter as a trademark. See Reed v. Bakers Engineering &
Equipment Co., 100 USPQ 196, 199 (PO Ex. Ch. 1954) ("Consent to register
must be distinguished from consent to use. There may very well be consent to
use without any consent to register. And neither is consent to register
sufficient under the statute unless it is a written consent to register as
specified in the statute.") Permission to use a mark in connection with
specific goods without specific written consent to also register that mark does
not give a party the right to register the subject matter as a trademark. Garden
v. Parfumerie Rigaud, Inc., 34 USPQ 30, 31 (Comm'r Pats. 1937) (granting
petition to cancel registrations of marks that named and portrayed the
petitioner, Mary Garden, who, although she had consented to the use of her name
and portrait in connection with a particular perfume, had not given written
consent to register the marks for perfumes and other cosmetic items.
"Permission to use one's name and portrait in connection with a specified item
of merchandise falls far short of consent to register one's name and portrait
as a trade mark for such merchandise generally.") Consent to register a
mark that makes no reference to consent to use is acceptable; the Office
has no authority to regulate use of a mark.
Written consents for minors may be given by their guardians.
When a particular individual identified by matter in a mark is
also the person who signed the application, then his or her consent to
registration will be presumed. Alford Mfg. Co. v. Alfred Electronics,
137 USPQ 250 (TTAB 1963), aff'd, 333 F.2d 912, 142 USPQ 168 (C.C.P.A.
1964) ("The written consent to the registration of the mark 'ALFORD' by Andrew
Alford, the individual, is manifested by the fact that said person executed the
application...."); Ex parte Dallioux, 83 USPQ 262, 263 (Comm'r Pats.
1949) ("By signing the application, the applicant here obviously
consents....").
An implied consent to register has been found in certain other
limited situations. Compare, In re D.B. Kaplan Delicatessen, 225 USPQ
342, 344 (TTAB 1985) (consent to the use and registration of the mark D. B.
KAPLAN'S DELICATESSEN, for restaurant services, found to be implicit in the terms
of the "buy-out" agreement which relinquished all property rights in the name
and forbade its use by the named party in any subsequent business) with, In
re New John Nissen Mannequins, 227 USPQ 569 (TTAB 1985) (consent to
register not implied from appearance of the name "John Nissen" in a deed of
incorporation of applicant's predecessor, nor from existence of foreign
registrations incorporating the name).
An applicant does not have to submit a new consent if a consent
to register is already part of the record in the file of a valid registration
for a mark comprised in whole or in part of the same name, portrait or
signature for the same goods or services. In this situation, the applicant
only has to claim ownership of that existing registration. If an applicant has
submitted a consent to register in an application that has not matured to
registration, a new consent is not required for pertinent co-pending
applications, but a copy of the consent must be placed in each pending
application. In re McKee Baking Co., 218 USPQ 287 (TTAB 1983)
(applicant's claim of ownership of a prior registration that includes a consent
to register in the record held sufficient for purposes of complying with the
consent requirement of the Act).
See
TMEP §813
regarding a statement of consent of a living
individual to the registration of his or her name or likeness.
Extract from 15 U.S.C. §1052. 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 on account of its nature unless
it ... (d) Consists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office, or a mark or trade name previously used in
the United States by another and not abandoned, as to be likely, when used on
or in connection with the goods of the applicant, to cause confusion, or to
cause mistake, or to deceive....
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), is the
statutory basis for a refusal to register due to likelihood of confusion with
another mark. Section 2(d) applies to both the Principal and the Supplemental
Register.
In the ex parte examination of a trademark application, a
refusal under §2(d) is normally based on the examining attorney's conclusion
that the applicant's mark, as used on or in connection with the specified goods
or services, so resembles a registered mark as to be likely to cause
confusion. (See
TMEP §1207.02
concerning §2(d) refusals to register
marks that so resemble another mark as to be likely to deceive, and
TMEP§1207.03
concerning §2(d) refusals based on unregistered marks. Note:
Refusals based on unregistered marks are not issued in ex parte
examination.)
The examining attorney must conduct a search of Office records to
determine whether the applicant's mark so resembles any registered mark(s) as
to be likely to cause confusion or mistake, when used on or in connection with
the goods or services identified in the application. The examining attorney
also searches pending applications for conflicting marks with earlier effective
filing dates. See
TMEP §§1208
et seq. regarding conflicting
marks. The examining attorney must place a copy of the search strategy in the
file.
If the examining attorney determines that there is a likelihood
of confusion between applicant's mark and a previously registered mark, the
examining attorney refuses registration under §2(d). Before citing a registration,
the examining attorney must check the automated records of the Office to
confirm that any registration that is the basis for a §2(d) refusal is an
active registration. See
TMEP §716.02(e)
regarding suspension pending
cancellation of a cited registration under §8 of the Act or expiration of a
cited registration for failure to renew under §9 of the Act.
Also, if Office records indicate that an assignment of the
conflicting registration has been recorded, the examining attorney should check
the automated records of the Assignment Services Division of the Office to
determine whether the conflicting mark has been assigned to applicant.
In In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals
discussed the factors relevant to a determination of likelihood of confusion.
In ex parte examination, the issue of likelihood of confusion typically
revolves around the similarity or dissimilarity of the marks and the
relatedness of the goods or services. The other factors listed in du Pont
may be considered only if relevant evidence is contained in the record. See
In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65
USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may
be relevant or of equal weight in a given case, and 'any one of the factors may
control a particular case,'" quoting In re Dixie Restaurants, Inc., 105
F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National
Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex
parte case, the following factors are usually the most relevant:
•
The similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression.
•
The relatedness of the goods or services as described in an
application or registration or in connection with which a prior mark is in use.
•
The similarity or dissimilarity of established,
likely-to-continue trade channels.
•
The conditions under which and buyers to whom sales are made,
i.e. "impulse" vs. careful, sophisticated purchasing.
•
The number and nature of similar marks in use on similar goods.
•
A valid consent agreement between the applicant and the owner of
the previously registered mark.
The Court of Appeals for the Federal Circuit has provided the
following guidance with regard to determining and articulating likelihood of
confusion:
The basic principle in determining confusion between marks is
that marks must be compared in their entireties and must be considered in
connection with the particular goods or services for which they are used
(citations omitted). It follows from that principle that likelihood of
confusion cannot be predicated on dissection of a mark, that is, on only part
of a mark (footnote omitted). On the other hand, in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties (footnote omitted). Indeed,
this type of analysis appears to be unavoidable.
In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ
749, 750-51 (Fed. Cir. 1985).
There is no mechanical test for determining likelihood of
confusion. The issue is not whether the actual goods are likely to be confused
but, rather, whether there is a likelihood of confusion as to the source
of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687,
1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on
its own facts.
The determination of likelihood of confusion under §2(d) in an
intent-to-use application does not differ from the determination in any other
type of application.
If the marks of the respective parties are identical, the
relationship between the goods or services need not be as close to support a
finding of likelihood of confusion as would be required in a case where there are
differences between the marks. Amcor, Inc. v. Amcor Industries, Inc.,
210 USPQ 70, 78 (TTAB 1981).
In some instances, because of established marketing practices,
the use of identical marks on seemingly unrelated goods and services could
result in a likelihood of confusion. See In re Phillips-Van Heusen
Corporation, 228 USPQ 949, 951 (TTAB 1986) ("The licensing of commercial
trademarks for use on 'collateral' products (such as clothing, glassware,
linens, etc.), that are unrelated in nature to those goods or services on which
the marks are normally used, has become a common practice in recent years.")
The goods or services do not have to be identical or even
competitive in order to determine that there is a likelihood of confusion. The
inquiry is whether the goods are related, not identical. The issue is not
whether the goods will be confused with each other, but rather whether the
public will be confused about their source. See Safety-Kleen Corp. v.
Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A.
1975). It is sufficient that the goods or services of the applicant and the
registrant are so related that the circumstances surrounding their marketing
are such that they are likely to be encountered by the same persons under
circumstances that would give rise to the mistaken belief that they originate
from the same source. See, e.g., On-line Careline Inc. v. America Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (ON-LINE TODAY for
Internet connection services held likely to be confused with ONLINE TODAY for
Internet content); In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984) (MARTIN'S for wheat bran and honey bread
held likely to be confused with MARTIN'S for cheese); In re Corning Glass
Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered solution
equilibrated to yield predetermined dissolved gas values in a blood gas
analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood
reagents for laboratory use); In re Jeep Corp., 222 USPQ 333 (TTAB 1984)
(LAREDO for land vehicles and structural parts therefor held likely to be
confused with LAREDO for pneumatic tires).
Conversely, if the goods or services in question are not related
or marketed in such a way that they would be encountered by the same persons in
situations that would create the incorrect assumption that they originate from
the same source, then, even if the marks are identical, confusion is not
likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd.,
393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen
textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d
1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly
similar to LITTLE PLUMBER and design for advertising services, namely the
formulation and preparation of advertising copy and literature in the plumbing
field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB
1986) (QR for coaxial cable held not confusingly similar to QR for various
products (e.g., lamps, tubes) related to the photocopying field).
It is well recognized that confusion is likely to occur from the
use of the same or similar marks for goods, on the one hand, and for services
involving those goods, on the other. See, e.g., In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG'S (stylized) for
retail grocery and general merchandise store services held likely to be
confused with BIGGS and design for furniture); In re H.J. Seiler Co., 289
F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (SEILER for catering services held
likely to be confused with SEILER'S for smoked and cured meats); In re U.S.
Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail
women's clothing store services and clothing held likely to be confused with
CREST CAREER IMAGES (stylized) for uniforms); In re United Service
Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship
services in the field of health and beauty aids held likely to be confused with
design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949
(TTAB 1986) (21 CLUB for various items of men's, boys', girls' and women's
clothing held likely to be confused with THE "21" CLUB (stylized) for
restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219
USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office
furniture, and machinery held likely to be confused with STEELCASE for office
furniture and accessories); Corinthian Broadcasting Corporation v. Nippon
Electric Co., Ltd., 219 USPQ 733 (TTAB 1983) (TVS for transmitters andreceivers of still television pictures held likely to be confused with TVS for
television broadcasting services); In re Industrial Expositions, Inc.,
194 USPQ 456 (TTAB 1977) (POLLUTION ENGINEERING EXPOSITION for programming andconducting of industrial trade shows held likely to be confused with POLLUTION
ENGINEERING for a periodical magazine).
While likelihood of confusion has often been found in situations
where similar marks are used in connection with both food or beverage products
and restaurant services, there is no per se rule to this effect. To establish
likelihood of confusion, a party must show "something more than that similar or
even identical marks are used for food products and for restaurant services." In
re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir.
2003) (no likelihood of confusion between applicant's BLUE MOON and design for
beer and the registered mark BLUE MOON and design for restaurant services); Jacobs
v. International Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642
(C.C.P.A. 1982) (no likelihood of confusion between BOSTON SEA PARTY for
restaurant services and BOSTON TEA PARTY for tea).
The determination of the relatedness of the goods and services is
based on the evidence provided by the applicant and the examining attorney. In
Coors, the examining attorney introduced evidence from several sources
discussing the practice of some restaurants to offer private label or house
brands of beer; evidence that brewpubs who brew their own beer often feature
restaurant services; and copies of third-party registrations showing that a
single mark had been registered for beer and restaurants services. However,
applicant countered with evidence that while there are about 1,450 brewpubs andmicrobreweries in the United States, there are over 800,000 restaurants, which
means that brewpubs and microbreweries account for only about 18 one-hundredths
of one percent of all restaurants. Noting that "[t]here was no contrary
evidence introduced on those points," the court found that:
While there was evidence that some restaurants sell private
label beer, that evidence did not suggest that such restaurants are numerous.
And although the Board had before it a few registrations for both restaurant
services and beer, the very small number of such dual use registrations does
nothing to counter Coors' showing that only a very small percentage of
restaurants actually brew their own beer or sell house brands of beer; instead,
the small number of such registrations suggests that it is quite uncommon for
restaurants and beer to share the same trademark. Thus, the evidence before
the Board indicates not that there is a substantial overlap between restaurant
services and beer with respect to source, but rather that the degree of overlap
between the sources of restaurant services and the sources of beer is de
minimis. We therefore disagree with the Board's legal conclusion that
Coors' beer and the registrant's restaurant services are sufficiently related
to support a finding of a likelihood of confusion.
343 F.3d at 1340, 68 USPQ2d at 1063-1064.
See also Lloyd's Food Products, Inc. v. Eli's, Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (Board erred in failing to consider
evidence of third party use of service marks in telephone directories); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) (likelihood
of confusion between OPUS ONE used on both wine and restaurant services, where
the evidence showed that it is common in the industry for restaurants to offer
and sell private label wines named after the restaurant, and that registrant's
wines were actually served at applicant's restaurant); In re Comexa Ltda., 60 USPQ2d 1118, 1123 ( TTAB 2001) (likelihood
of confusion between AMAZON for restaurant services and AMAZON and design for
chili sauce and pepper sauce, where 50 third-party registrations (48 based on
use) showing registration of the same mark for sauces and restaurant services
were probative to the extent that they served to suggest that the goods andservices were of a kind that may emanate from a single source); In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1211 (TTAB 1999) (likelihood
of confusion between AZTECA MEXICAN RESTAURANT for restaurant services held
likely to be confused with AZTECA for tortillas, taco shells and salsa, where
the evidence indicated that the goods at issue were "Mexican food items" of a
type that were "often principal items of entrees served by . Mexican
restaurants"); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074
(TTAB 1990) (likelihood of confusion between GOLDEN GRIDDLE for table syrup andGOLDEN GRIDDLE PANCAKE HOUSE for restaurant that serves pancakes and syrup); In
re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd, 864
F.2d 149 (Fed. Cir. 1988) (likelihood of confusion between MUCKY DUCK and duck
design for mustard and THE MUCKY DUCK and duck design for restaurant services,
the Board finding that "[a]lthough these goods and services obviously differ,
mustard is . a condiment which is commonly utilized in restaurants by their
patrons, especially in such restaurants as delicatessens, fast food houses,
steak houses, taverns, inns, and the like, and we think it is common knowledge
that restaurants sometimes market their house specialties, including items such
as salad dressings, through retail outlets"); Steve's Ice Cream v. Steve's
Famous Hot Dogs, 3 USPQ2d 1477, 1478 (TTAB 1987) (no likelihood
of confusion between STEVE'S for ice cream and STEVE'S for restaurant
featuring hot dogs, where the marks differed and "there [was] no evidence in
the record before us that applicant makes or sells ice cream, or that any one
business makes and sells ice cream under the same mark in connection with which
it renders restaurant services").
The nature and scope of a party's goods or services must be
determined on the basis of the goods or services recited in the application or
registration. See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); J & J Snack Foods
Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A.
1973).
If the cited registration describes goods or services broadly,
and there is no limitation as to the nature, type, channels of trade or class
of purchasers, it is presumed that the registration encompasses all goods or
services of the type described, that they move in all normal channels of trade,
and that they are available to all classes of purchasers. Therefore, if the
cited registration has a broad identification of goods or services, an
applicant does not avoid likelihood of confusion merely by more narrowly
identifying its related goods. See, e.g., In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992) (where a registrant's goods are broadly identified as
"computer programs recorded on magnetic disks," without any limitation as to
the kind of programs or the field of use, it is necessary to assume that the
registrant's goods encompass all such computer programs, and that they travel
in the same channels of trade and are available to all classes of prospective
purchasers of those goods); In re Diet Center Inc., 4 USPQ2d 1975 (TTAB
1987) (VEGETABLE SVELTES for wheat crackers sold through franchised outlets
offering weight reduction services held likely to be confused with SVELTE for
low calorie frozen dessert); In re Uncle Sam Chemical Co., Inc., 229 USPQ
233 (TTAB 1986) (SPRAYZON for cleaning preparations and degreasers for
industrial and institutional use held likely to be confused with SPRA-ON anddesign for preparation for cleaning woodwork and furniture). Similarly, there
is a likelihood of confusion if an applicant identifies its goods or services
so broadly that the identification encompasses the goods or services identified
in the registration of a similar mark. See, e.g., In re Americor Health
Services, 1 USPQ2d 1670 (TTAB 1986) (RESOLVE for corporate employee
assistance services, namely, providing confidential mental health counseling
services, held likely to be confused with RESOLVE for counseling services in
the field of infertility); In re Equitable Bancorporation, 229 USPQ 709
(TTAB 1986) (RESPONSE for banking services held likely to be confused with
RESPONSE CARD for banking services rendered through 24-hour teller machines).
An applicant may not restrict the scope of its goods and/or the
scope of the goods covered in the registration by extrinsic argument or
evidence, for example, as to the quality or price of the goods. See, e.g.,
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Where the terminology in the identification is unclear, the
Trademark Trial and Appeal Board has permitted an applicant to provide
extrinsic evidence to show that the registrant's identification has a specific
meaning to members of the trade. The Board noted that in light of such
evidence it is improper to consider the identification in a vacuum and attach
all possible interpretations to it. In re Trackmobile Inc., 15 USPQ2d
1152, 1154 (TTAB 1990).
The facts in each case vary and the weight to be given each
factor may be different in light of the varying circumstances; therefore, there
can be no rule that certain goods or services are per se related, such
that there must be a likelihood of confusion from the use of similar marks in
relation thereto. See, e.g., Information Resources Inc. v. X*Press
Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer
hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky,
4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram
Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware andsoftware); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984)
and cases cited therein (regarding clothing).
The examining attorney must consider any goods or services in the
registrant's normal fields of expansion to determine whether the registrant's
goods or services are related to the applicant's identified goods or services
under §2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). A
trademark owner is entitled to protection against the registration of a similar
mark on products that might reasonably be expected to be produced by him in the
normal expansion of his business. The test is whether purchasers would believe
the product or service is within the registrant's logical zone of expansion. CPG
Products Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983).
The examining attorney must provide evidence showing that the
goods and services are related to support a finding of likelihood of
confusion. Evidence of relatedness might include news articles and/or evidence
from computer databases showing that the relevant goods or services are used
together or used by the same purchasers; advertisements showing that the
relevant goods or services are advertised together or sold by the same
manufacturer or dealer; or copies of prior use-based registrations of the same
mark for both applicant's goods and services and the goods and services listed
in the cited registration. See
TMEP §1207.01(d)(iii)
and cases cited
therein regarding the probative value of third-party registrations.
The identification of goods/services in the subject application
and the cited registration(s) may in itself constitute evidence of the
relatedness of the goods or services. Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (Board
erred in finding that there was insufficient evidence of relatedness, "because
the Board did not consider the important evidence already before it, namely the
ITU application and [opposer's multiple] registrations").
If it appears that confusion may be likely as a result of the
contemporaneous use of similar marks by the registrant and the applicant with
the identified goods or services, the next step is to evaluate the marks
themselves, in relation to the goods and services. Under In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
1973), the first factor requires examination of "the similarity
or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression." The test of likelihood of
confusion is not whether the marks can be distinguished when subjected to a
side-by-side comparison, but whether the marks are sufficiently similar that
there is a likelihood of confusion as to the source of the goods or services.
When considering the similarity of the marks, "[a]ll relevant facts pertaining
to the appearance and connotation must be considered." Recot, Inc. v.
M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
In evaluating the similarities between marks, the emphasis must be on the
recollection of the average purchaser who normally retains a general, rather
than specific, impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Where the goods are
identical, "the degree of similarity [between the marks] necessary to support a
conclusion of likely confusion declines." Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied 506 U.S. 1034 (1992); ECI Division of
E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB
1980).
The points of comparison for a word mark are appearance, sound,
meaning, and commercial impression. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005),
citing In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,
177 USPQ 563, 567 (C.C.P.A. 1973). Similarity of the marks in one respect --
sight, sound or meaning -- will not automatically result in a finding of
likelihood of confusion even if the goods are identical or closely related.
Rather, the rule is that taking into account all of the relevant facts of a
particular case, similarity as to one factor alone may be sufficient to
support a holding that the marks are confusingly similar. In re Lamson Oil
Co., 6 USPQ2d 1041, 1043 (TTAB 1987).
Similarity in appearance is one factor in determining whether
there is a likelihood of confusion between marks. Marks may be confusingly
similar in appearance despite the addition, deletion or substitution of letters
or words. See, e.g., Weiss Associates Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to
TMS, both for systems software); Canadian Imperial Bank of Commerce, N.A.,
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987)
(COMMCASH held likely to be confused with COMMUNICASH, both for banking
services); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for
synthetic coolant held likely to be confused with TURCOOL for cutting oil);
In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986) (MCKENZIE'S (stylized)
for processed frozen fruits and vegetables held likely to be confused with
McKenzie for canned fruits and vegetables); In re Pix of America, Inc.,
225 USPQ 691 (TTAB 1985) (NEWPORTS for women's shoes held likely to be confused
with NEWPORT for outer shirts); In re Pellerin Milnor Corp., 221 USPQ
558 (TTAB 1983) (MILTRON for microprocessor used in commercial laundry machines
held likely to be confused with MILLTRONICS (stylized) for electronic control
devices for machinery); In re BASF A.G., 189 USPQ 424 (TTAB 1975)
(LUTEXAL for resinous chemicals used in dyeing textiles held likely to be confused
with LUTEX for non-resinous chemicals used in the textile industry).
It is a general rule that likelihood of confusion is not avoided
between otherwise confusingly similar marks merely by adding or deleting a
house mark or matter that is descriptive or suggestive of the named goods or
services. Sometimes the rule is expressed in terms of the dominance of the
common term. Therefore, if the dominant portion of both marks is the same, then
confusion may be likely notwithstanding peripheral differences. See, e.g.,
In re Chatam International Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed.
Cir. 2004) ("Viewed in their entireties with non-dominant features
appropriately discounted, the marks [GASPAR'S ALE for beer and ale and JOSE
GASPAR GOLD for tequila] become nearly identical"); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (even
though applicant's mark PACKARD TECHNOLOGIES (with "TECHNOLOGIES" disclaimed)
does not incorporate every feature of opposer's HEWLETT PACKARD marks, similar
overall commercial impression is created); In re El Torito Restaurants Inc.,
9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with "COMBOS" disclaimed) held likely
to be confused with MACHO (stylized), both for food items as a part of
restaurant services); In re Computer Systems Center Inc., 5 USPQ2d 1378
(TTAB 1987) (CSC ADVANCED BUSINESS SYSTEMS for retail computer stores held
likely to be confused with CSC for computer time sharing and computer
programming services); In re Equitable Bancorporation, 229 USPQ 709
(TTAB 1986) (RESPONSE held likely to be confused with RESPONSE CARD (with
"CARD" disclaimed), both for banking services); In re The U.S. Shoe Corp.,
229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for clothing held likely to
be confused with CREST CAREER IMAGES (stylized) for uniforms); In re Apparel
Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS (stylized)
for clothing held likely to be confused with SPARKS (stylized) for footwear);
In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered
solution equilibrated to yield predetermined dissolved gas values in a blood
gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood
reagents for laboratory use); In re Energy Images, Inc., 227 USPQ 572
(TTAB 1985) (SMART-SCAN (stylized) for optical line recognition and digitizing
processors held likely to be confused with SMART for remote data gathering andcontrol systems); In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD
PETTY'S ACCU TUNE and design for automotive service stations held likely to be
confused with ACCUTUNE for automotive testing equipment); In re Denisi,
225 USPQ 624 (TTAB 1985) (PERRY'S PIZZA held likely to be confused with
PERRY'S, both for restaurant services); In re Collegian Sportswear Inc.,
224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and design (with "CALIFORNIA"
disclaimed) held likely to be confused with COLLEGIENNE, both for items of
clothing); In re Pierre Fabre S.A., 188 USPQ 691 (TTAB 1975) (PEDI-RELAX
for foot cream held likely to be confused with RELAX for antiperspirant).
Exceptions to the above stated general rule regarding additions
or deletions to marks may arise if: (1) the marks in their entireties convey
significantly different commercial impressions, or (2) the matter common to the
marks is not likely to be perceived by purchasers as distinguishing source
because it is merely descriptive or diluted. See, e.g., Shen
Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed.
Cir. 2004) (RITZ and THE RITZ KIDS create different commercial
impressions); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986)
(CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be
confused with BOBBER for restaurant services); In re Shawnee Milling Co.,
225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused
with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for
coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ
54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services
held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for
textile fabrics).
Similarity in sound is one factor in determining whether there is
a likelihood of confusion between marks. There is no "correct" pronunciation
of a trademark because it is impossible to predict how the public will
pronounce a particular mark. Therefore, "correct" pronunciation cannot be
relied on to avoid a likelihood of confusion. See, e.g., Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design
for watches held likely to be confused with SEIKO for watches and clocks);
In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized)
for soft drinks held likely to be confused with CANA for, inter alia,
canned and frozen fruit and vegetable juices); In re Energy
Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983)
(ENTELEC and design for association services in the telecommunication andenergy industries held likely to be confused with INTELECT for conducting
expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ
401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be
confused with KRESSCO for hosiery).
Similarity in meaning or connotation is another factor in
determining whether there is a likelihood of confusion between marks. The
focus is on the recollection of the average purchaser who normally retains a
general, rather than specific, impression of trademarks. See, e.g., In re
M. Serman & Company, Inc., 223 USPQ 52 (TTAB 1984) (CITY WOMAN held
likely to be confused with CITY GIRL, both for clothing); Gastown Inc., of
Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (GAS CITY (with "GAS"
disclaimed) held likely to be confused with GASTOWN, both for gasoline);
Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971)
(AQUA-CARE (stylized) held likely to be confused with WATERCARE (stylized),
both for water conditioning products).
The meaning or connotation of a mark must be determined in
relation to the named goods or services. Even marks that are identical in
sound and/or appearance may create sufficiently different commercial
impressions when applied to the respective parties' goods or services so that
there is no likelihood of confusion. See, e.g., In re Sears, Roebuck andCo., 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER for bras held not likely to be
confused with CROSSOVER for ladies' sportswear, the Board finding that the term
was suggestive of the construction of applicant's bras, but was likely to be
perceived by purchasers either as an entirely arbitrary designation or as being
suggestive of sportswear that "crosses over" the line between informal and more
formal wear when applied to ladies' sportswear); In re British Bulldog, Ltd.,
224 USPQ 854 (TTAB 1984) (PLAYERS for men's underwear held not likely to be
confused with PLAYERS for shoes, the Board finding that the term PLAYERS
implies a fit, style, color and durability adapted to outdoor activities when
applied to shoes, but "implies something else, primarily indoors in nature"
when applied to men's underwear); In re Sydel Lingerie Co., Inc., 197 USPQ
629 (TTAB 1977) (BOTTOMS UP for ladies' and children's underwear held not
likely to be confused with BOTTOMS UP for men's clothing, the Board finding
that the term connotes the drinking phrase "Drink Up" when applied to men's
suits, coats and trousers, but does not have this connotation when applied to
ladies' and children's underwear).
Under the doctrine of foreign equivalents, a foreign word (from a
language familiar to an appreciable segment of American consumers) and the
English equivalent may be held to be confusingly similar. See, e.g.,
Continental Nut Co. v. Cordon Bleu, Ltee, 494 F.2d 1397, 181 USPQ 647
(C.C.P.A. 1974); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB
1987) (BUENOS DIAS for soap held likely to be confused with GOOD MORNING anddesign for latherless shaving cream); In re Ithaca Industries, Inc., 230
USPQ 702 (TTAB 1986) (LUPO for men's and boys' underwear held likely to be
confused with WOLF and design for various items of clothing); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983) (EL SOL for clothing andfootwear held likely to be confused with SUN and design for footwear).
Although words from modern languages are generally translated
into English, the doctrine of foreign equivalents is not an absolute rule, but
merely a guideline. The doctrine should be applied only when it is likely that
the ordinary American purchaser would stop and translate the foreign word into
its English equivalent. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689 (Fed. Cir. 2005).
Compare the following decisions involving marks found not
confusingly similar, based on consideration of factors such as the overall
appearance and pronunciation of the marks, the extent to which the terms are
"equivalent," and the relatedness of the named goods and/or services: In re
Sarkli Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983) (REPECHAGE for
various skin care products held not likely to be confused with SECOND CHANCE
for face creams and other toiletries); In re Buckner Enterprises Corp.,
6 USPQ2d 1316 (TTAB 1987) (DOVE and design for solid fuel burning stoves andfurnaces held not likely to be confused with PALOMA for various forms of gas
heating apparatus); In re L'Oreal S.A., 222 USPQ 925 (TTAB 1984) (HAUTE
MODE for hair coloring cream shampoo held not likely to be confused with
HI-FASHION SAMPLER (with "SAMPLER" disclaimed) for finger nail enamel); In
re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) (TIA MARIA for restaurant
services held not likely to be confused with AUNT MARY'S for canned fruits andvegetables).
The doctrine of foreign equivalents is not normally invoked if the
marks alleged to be confusingly similar are both foreign words. See Safeway
Stores Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987)
("[T]his Board does not think it proper to take the French expression 'bel air'
and the Italian expression 'bel aria' and then convert both into English andcompare the English translations...."). However, application of the doctrine
of foreign equivalents is not barred in every case where the respective marks
consist of terms from different foreign languages. Miguel Torres S.A. v.
Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (likelihood
of confusion between the Italian DUE TORRI and design for wines, and the
Spanish TORRES and design for wines and brandy and TRES TORRES for brandy).
While foreign words are generally translated into English for
trademark comparison purposes, works from dead or obscure languages may be so
unfamiliar to the American buying public that they should not be translated
into English. See Enrique Bernat F. S.A. v. Guadalajara Inc.,
210 F.3d 439, 54 USPQ2d 1497 (5th Cir. 2000), reh'g denied
218 F.3d 745 (2000). The test is whether, to those American buyers familiar
with the foreign language, the word would denote its English equivalent. See
In re Zazzara, 156 USPQ 348 (TTAB 1967). The determination of whether a
language is "dead" must be made on a case-by-case basis, based upon the meaning
that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead
language. However, if there is evidence that a Latin term is still in use by
the relevant purchasing public (e.g., if the term appears in current
dictionaries or news articles), then a Latin term is not considered dead. The
same analysis should be applied to other uncommon languages.
Where the primary difference between marks is the transposition
of the elements that compose the marks and where this transposition does not
change the overall commercial impression, there may be a likelihood of
confusion. See, e.g., In re Wine Society of America Inc., 12 USPQ2d
1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA and design, for "wine club
membership services including the supplying of printed materials, sale of wines
to members, conducting wine tasting sessions and recommending specific
restaurants offering wines sold by applicant," held likely to be confused with
AMERICAN WINE SOCIETY 1967 and design, for a newsletter, bulletin and journal
of interest to members of the registrant); In re Nationwide Industries Inc.,
6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER (with "RUST" disclaimed) for
rust-penetrating spray lubricant held likely to be confused with BUST RUST for
penetrating oil); In re General Tire & Rubber Co., 213 USPQ 870
(TTAB 1982) (SPRINT STEEL RADIAL (with "STEEL" and "RADIAL" disclaimed) for
tires held likely to be confused with RADIAL SPRINT (with "RADIAL" disclaimed)
for tires).
However, if the transposed mark creates a distinctly different
commercial impression, then confusion is not likely. See, e.g., In re Best
Products Co., Inc., 231 USPQ 988 (TTAB 1986) (BEST JEWELRY and design (with
"JEWELRY" disclaimed) for retail jewelry store services held not likely to be
confused with JEWELERS' BEST for jewelry).
When assessing the likelihood of confusion between compound word
marks, one must determine whether there is a portion of the word mark that is
dominant in terms of creating a commercial impression. Although there is no
mechanical test to select a "dominant" element of a compound word mark,
consumers would be more likely to perceive a fanciful or arbitrary term rather
than a descriptive or generic term as the source-indicating feature of the
mark. Accordingly, if two marks for related goods or services share the same
dominant feature and the marks, when viewed in their entireties, create similar
overall commercial impressions, then confusion is likely. See In re J.M.
Originals Inc., 6 USPQ2d 1393 (TTAB 1987) (JM ORIGINALS (with "ORIGINALS"
disclaimed) for various items of apparel held likely to be confused with JM
COLLECTABLES for "knitwear -- namely, sport shirts").
If the common element of two marks is "weak" in that it is
generic, descriptive or highly suggestive of the named goods or services,
consumers typically will be able to avoid confusion unless the overall
combinations have other commonality. See, e.g., In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST
REGISTRY for making lodging reservations for others in private homes held not
likely to be confused with BED & BREAKFAST INTERNATIONAL for room booking
agency services); The U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB
1985) (COBBLER'S OUTLET for shoes held not likely to be confused with
CALIFORNIA COBBLERS (stylized) for shoes); In re Istituto Sieroterapico E
Vaccinogeno, Toscano "SCLAVO" S.p.A., 226 USPQ 1035 (TTAB 1985) (ASO
QUANTUM (with "ASO" disclaimed) for diagnostic laboratory reagents held not
likely to be confused with QUANTUM I for laboratory instrument for analyzing
body fluids). See also
TMEP §1207.01(b)(ix).
In a sense the public can be said to rely more on the
nondescriptive portions of each mark. On the other hand, this does not mean
that the public looks only at the differences, or that the descriptive words
play no role in creating confusion. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985) (THE CASH MANAGEMENT EXCHANGE (with "CASH
MANAGEMENT" disclaimed) for computerized cash management services held likely
to be confused with CASH MANAGEMENT ACCOUNT for various financial services).
The Trademark Trial and Appeal Board and the courts have
recognized that merely descriptive and weak designations may be entitled to a
narrower scope of protection than an entirely arbitrary or coined word. In
re Central Soya Company, Inc., 220 USPQ 914 (TTAB 1984). However, even a
weak mark is entitled to protection against the registration of a similar mark
for closely related goods or services. King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (C.C.P.A. 1974).
In In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB
1975), the Board stated:
[R]egistration on the Supplemental Register may be considered
to establish prima facie that, at least at the time of registration, the
registered mark possessed a merely descriptive significance. (citation
omitted.) This is significant because it is well established that the scope of
protection afforded a merely descriptive or even a highly suggestive term is
less than that accorded an arbitrary or coined mark. That is, terms falling
within the former category have been generally categorized as "weak" marks, andthe scope of protection extended to these marks has been limited to the
substantially identical notation and/or to the subsequent use and registration
thereof for substantially similar goods.
However, even marks that are registered on the Supplemental
Register may be cited under §2(d). In re Clorox Company, 578 F.2d 305,
198 USPQ 337 (C.C.P.A. 1978).
Parody is not a defense to a likelihood of confusion refusal.
There are confusing parodies and non-confusing parodies. See J.
McCarthy, McCarthy on Trademarks and Unfair Competition, §31.153 (4th
ed. 2004). A true parody actually decreases the likelihood of confusion
because the effect of the parody is to create a distinction in the viewer's
mind between the actual product and the joke. While a parody must call to mind
the actual product to be successful, the same success also necessarily
distinguishes the parody from the actual product. Mutual of Omaha Insurance
Co. v. Novak, 648 F. Supp. 905, 231 USPQ 963 (D. Neb. 1986).
Another example of parody can be found in Columbia Pictures
Industries Inc., v. Miller, 211 USPQ 816 (TTAB 1981) (CLOTHES
ENCOUNTERS held likely to be confused with CLOSE ENCOUNTERS OF THE THIRD KIND,
for men's and women's clothing); Cf., Jordache Enterprises, Inc. v.
Hogg Wyld, Inc., 828 F.2d 1482, 4 USPQ2d 1216 (10th Cir. 1987)
(LARDASHE for pants was not an infringement of the JORDACHE mark).
When the marks at issue are both design marks, the issue of the
similarity of the marks must be decided primarily on the basis of visual similarity.
In this situation, consideration must be given to the fact that a purchaser's
recollection of design marks is often of a general and hazy nature. See,
e.g., Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d
1404 (TTAB 1988) (stylized house design for service of management of real
estate properties for others held not likely to be confused with stylized house
design for real estate brokerage services); In re United Service
Distributors, Inc., 229 USPQ 237 (TTAB 1986) (silhouette of two profiles
facing right within a teardrop background for distributorship services in the
field of health and beauty aids held likely to be confused with silhouette of
two profiles facing left within an oval background for skin cream); Ocean
Spray Cranberries, Inc. v. Ocean Garden Products, Inc., 223 USPQ 1027 (TTAB
1984) (abstract circular design mark for seafood held not likely to be confused
with oval breaking wave design for various food items including juices andfruits); In re Steury Corp., 189 USPQ 353 (TTAB 1975) (design comprised
of three generally horizontal bars for boats and camper trailers held likely to
be confused with design comprised of two generally horizontal bars for boats
and campers); Matsushita Electric Industrial Co., Ltd. v. Sanders
Associates, Inc., 177 USPQ 720 (TTAB 1973) (triangular arrow design within
a square border for various items of electrical and electronic equipment held
likely to be confused with triangular arrow design for various items of
electrical and electronic components and equipment).
Under the doctrine of legal equivalents, a pictorial
representation and its literal equivalent may be found to be confusingly
similar. This doctrine is based on a recognition that a pictorial depiction
and equivalent wording are likely to impress the same mental image on
purchasers. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986)
(design comprising the silhouette of the head of a lion and the letter "L" for
shoes held likely to be confused with LION for shoes);
Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064
(TTAB 1984) (designs of mountain lion, for shirts and tops, held confusingly
similar to PUMA, for items of clothing; the design of a puma, for items of
sporting goods and clothing; and PUMA and design, for T-shirts); In re
Duofold Inc., 184 USPQ 638 (TTAB 1974) (design of eagle lined for the color
gold, for various items of sports apparel, held likely to be confused with
GOLDEN EAGLE and design of an eagle, for various items of clothing).
Often, the examining attorney must determine whether a likelihood
of confusion exists between composite marks that consist of a design element as
well as words and/or letters. Frequently the marks at issue are similar in
only one element. Although it is not proper to dissect a mark, if one feature
of a mark is more significant than another feature, greater weight may be given
to the dominant feature for purposes of determining likelihood of confusion. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.
Cir. 1983). However, the fundamental rule in this situation is that the marks must
be considered in their entireties. See Massey Junior College, Inc. v.
Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (C.C.P.A.
1974).
If a mark comprises both a word and a design, greater weight is
often given to the word, because it is the word that purchasers would use to
refer to or request the goods or services. In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (APPETITO and design of two broad
stripes lined for the colors red and green, for Italian sausage, held likely to
be confused with A APPETITO'S and design and A APPETITO'S INC. and design of a
sandwich (with "INC." and sandwich design disclaimed), both for restaurant
services). The Court of Appeals for the Federal Circuit has cautioned,
however, that "[t]here is no general rule as to whether letters or designs will
dominate in composite marks; nor is the dominance of letters or design
dispositive of the issue." In re Electrolyte Laboratories Inc., 929
F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (K+ and design for dietary
potassium supplement held not likely to be confused with K+EFF (stylized) for
dietary potassium supplement).
The comparison of composite marks must be done on a case-by-case
basis without reliance on mechanical rules of construction. See, e.g.,
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281 (Fed. Cir. 1984) (finding a likelihood of confusion between SPICE
VALLEY and SPICE ISLANDS, both for tea); Spice Islands, Inc. v. The Frank
Tea & Spice Co., 505 F.2d 1293, 184 USPQ 35 (C.C.P.A. 1974) (SPICE TREE
and tree design held not confusingly similar to SPICE ISLANDS and tree design,
both for spices); In re Sun Supermarkets, Inc., 228 USPQ 693 (TTAB 1986)
(SUN SUPERMARKETS and design of sun held likely to be confused with SUNSHINE
and design of sun and SUNRISE and design of sun, all for retail grocery store
services).
If a mark (in either an application or a registration) is presented
in standard characters, the owner of the mark is not limited to any particular
depiction. The rights associated with a mark in standard characters reside in
the wording (or other literal element, e.g., letters, numerals,
punctuation) and not in any particular display. Therefore, an applicant
cannot, by presenting its mark in special form, avoid likelihood of confusion
with a mark that is registered in standard characters because the registered
marks presumably could be used in the same manner of display. See, e.g., In
re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Products Co. v.
Sunex International Inc., 1 USPQ2d 1744, 1751 (TTAB 1987); In re Hester
Industries, Inc., 231 USPQ 881, 883, n.6 (TTAB 1986).
If there is any doubt as to whether there is a likelihood of
confusion, that doubt must be resolved in favor of the prior registrant. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Hyper Shoppes (Ohio), Inc. 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
It is well settled that the relevant test is likelihood of
confusion, not actual confusion. It is unnecessary to show actual
confusion to establish likelihood of confusion. Weiss Associates Inc. v.
HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed.
Cir. 1990), and cases cited therein.
Generally, the existence of third-party registrations cannot
justify the registration of another mark that is so similar to a previously
registered mark as to create a likelihood of confusion, or to cause mistake, or
to deceive. Third-party registrations may be relevant to show that the mark or
a portion of the mark is descriptive, suggestive, or so commonly used that the
public will look to other elements to distinguish the source of the goods or
services. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 1406, 177 USPQ 268, 269-70 (C.C.P.A. 1973); Plus Products v.
Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in
this limited manner, third-party registrations are similar to dictionaries
showing how language is generally used. See, e.g., Specialty Brands, Inc.
v. Coffee Bean Distributors, Inc., 748 F.2d 669, 675, 223 USPQ 1281,
1285-86 (Fed. Cir. 1984); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d
1910, 1911 (TTAB 1988); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174
(TTAB 1987).
Third-party registrations that cover a number of different goods
or services have some probative value to the extent that they may serve to
suggest that goods or services are of a type that may emanate from a single
source, if the registrations are based on use in commerce. However,
registrations issued under 15 U.S.C. §1126(e), based on a foreign registration,
have very little, if any, persuasive value. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir. 1988).
The submission of a list of registrations or a copy of a search
report is not proper evidence of third-party registrations. To make registrations
of record, soft copies of the registrations or the electronic equivalent
thereof (i.e., printouts or electronic copies of the registrations taken
from the electronic search records of the USPTO) must be submitted. Raccioppi
v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230 (TTAB 1992); In re Hub Distributing, Inc., 218 USPQ
284 (TTAB 1983). See
TMEP §710.03.
Evidence of third-party use falls under the sixth du Pont
factor - the "number and nature of similar marks in
use on similar goods." In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence
establishes that the consuming public is exposed to third-party use of similar
marks on similar goods, this evidence "is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection." Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed.
Cir. 2005).
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal Register shall be prima
facie evidence of the validity of the registration, of the registrant's
ownership of the mark and of the registrant's exclusive right to use the mark
in commerce in connection with the goods or services specified in the
certificate. During ex parte prosecution, an applicant will not be
heard on matters that constitute a collateral attack on the cited registration
(e.g., a registrant's nonuse of the mark). See In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517
(C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB
1992); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB
1988).
It is also inappropriate for the applicant to place the burden of
showing a likelihood of confusion on the owner of the cited registration. In
re Majestic Distilling Co., 315 F.3d 1311, 1318, 65 USPQ2d 1201, 1206 (Fed.
Cir. 2003) ("[I]t is the duty of the PTO and this court to determine whether
there is a likelihood of confusion between two marks.... [I]t is no answer for
the applicant to ask that the application be passed to publication to see
whether the owner of the cited mark will oppose the registration.," quoting Dixie
Restaurants, supra, 105 F.3d at 1408, 41 USPQ2d at 1535.)
The classification of goods and services has no bearing on the
question of likelihood of confusion. Rather, it is the manner in which the
applicant and/or registrant have identified their goods or services that is
controlling. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771
(Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d
1212, 1216 n.5 (TTAB 1990).
Each case must be decided on its own merits. Previous decisions
by examining attorneys in approving other marks are without evidentiary value
and are not binding on the agency or the Board. In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ
638, 641 (TTAB 1984).
The fact that purchasers are sophisticated or knowledgeable in a
particular field does not necessarily mean that they are immune from source
confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). However, circumstances
suggesting care in purchasing may tend to minimize likelihood of confusion.
The term "consent agreement" generally refers to an agreement in
which a party (e.g., a prior registrant) consents to the use and/or
registration of a mark by another party (e.g., an applicant for
registration of the same mark or a similar mark), or in which each party
consents to the use and/or registration of the same mark or a similar mark by
the other party.
A consent agreement may be submitted by the applicant to overcome
a refusal of registration under §2(d) of the Act, or in anticipation of a
refusal to register. When a consent agreement is submitted, the examining
attorney will consider the agreement, and all other evidence in the record, to
determine likelihood of confusion. The examining attorney should not solicit a
consent agreement.
Consents come in different forms and under circumstances in
infinite variety. They are, however, but one factor to be taken into account
with all of the other relevant circumstances bearing on the likelihood of
confusion referred to in §2(d). In re N.A.D. Inc., 754 F.2d 996, 224
USPQ 969 (Fed. Cir. 1985).
In In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1363, 177 USPQ 563, 568 (C.C.P.A. 1973), the Court of Customs and Patent
Appeals stated as follows:
[W]hen those most familiar with use in the marketplace and most
interested in precluding confusion enter agreements designed to avoid it, the
scales of evidence are clearly tilted. It is at least difficult to maintain a
subjective view that confusion will occur when those directly concerned say it won't.
A mere assumption that confusion is likely will rarely prevail against
uncontroverted evidence from those on the firing line that it is not.
A consent agreement that is not merely a "naked" consent
typically details reasons why no likelihood of confusion exists and/or
arrangements undertaken by the parties to avoid confusing the public. In re
Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent
agreement found to be "naked" because the agreement did not restrict the
markets in such a way as to avoid confusion).
The Court of Appeals for the Federal Circuit has made it clear
that consent agreements should be given great weight, and that the Office
should not substitute its judgment concerning likelihood of confusion for the
judgment of the real parties in interest without good reason, that is, unless
the other factors clearly dictate a finding of likelihood of confusion. Amalgamated
Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d
1305 (Fed. Cir. 1988); Bongrain International (American) Corp. v. Delice de
France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and In re
N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985).
Compare In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292
(Fed. Cir. 1987) (refusal to register affirmed even with a consent to register
where applicant had not used the mark in commerce and consent agreement
contained contradictory statements).
The examining attorney should give great weight to a proper
consent agreement. The examining attorney should not interpose his or her own
judgment concerning likelihood of confusion when an applicant and registrant
have entered into a credible consent agreement and, on balance,
the other factors do not dictate a finding of likelihood of confusion.
A consent agreement is not the same as a "concurrent use"
agreement. The term "concurrent use" is a term of art that refers to a
geographical restriction on the registration. See
TMEP §§1207.04
etseq. regarding concurrent use.
The fame of a registered mark is a factor to be considered in
determining likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Famous marks
enjoy a wide latitude of legal protection because they are more likely to be
remembered and associated in the public mind than a weaker mark. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005); Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303 (Fed. Cir. 2002) (Trademark Trial and Appeal Board erred in
discounting the fame of opposer's marks ACOUSTIC WAVE and WAVE); Recot, Inc.
v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000) (Board erred in limiting the weight accorded to the fame of opposer's
FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Industries, Inc.,
963 F.2d 350, 352, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied,
506 U.S. 862 (1992) (Board erred in discounting the fame of opposer's mark
PLAY-DOH). The Court of Appeals for the Federal Circuit has stated:
[A] mark with extensive public recognition and renown deserves
and receives more legal protection than an obscure or weak mark.
Achieving fame for a mark in a marketplace where countless
symbols clamor for public attention often requires a very distinct mark,
enormous advertising investments, and a product of lasting value. After
earning fame, a mark benefits not only its owner, but the consumers who rely on
the symbols to identify the source of a desired product. Both the mark's fame
and the consumer's trust in that symbol, however, are subject to exploitation
by free riders.
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456.
Fame for likelihood of confusion purposes
and fame for dilution purposes, 15 U.S.C. §1125(c), are distinct concepts.
Fame for dilution purposes is an either/or proposition, whereas the "fame"
factor in the likelihood of confusion analysis varies along a spectrum. Palm
Bay Imports, 396 F.3d at 1374-75, 73 USPQ2d at 1694.
When present, the fame of the mark is "a dominant factor in the
likelihood of confusion analysis for a famous mark, independent of the
consideration of the relatedness of the goods." Recot, Inc. v. M.C.
Becton, 214 F.3d 1322, 1328, 54 USPQ2d 1894, 1898. However, like the other
du Pont factors, the fame of a mark may be considered only if there is
relevant evidence of record. See
TMEP §1207.01
and cases cited
therein.
It is not necessary to show recognition by every
segment of the population. When determining likelihood of confusion, fame is
measured with regard to "the class of customers and potential customers of a
product or service, and not the general public." Palm Bay Imports,
at 396 F.3d 1375, 73 USPQ2d 1695. Thus, the Federal Circuit affirmed the
finding that VEUVE CLICQUOT had achieved fame among purchasers of champagne andsparkling wine, where the record showed that sales volume and advertising
expenditures over a 15-year period were "substantial;" that VEUVE CLICQUOT was the second leading brand sold in the United
States, sold in 8,000 restaurants nationwide, and in liquor stores, wine shops
and other establishments; that the product was advertised in general interest
and wine specialty magazines, on the radio, on the Internet, and through
point-of-sale displays, wine tastings and sponsorship of events; and that the
product had been featured in articles and reviews in both specialized andgeneral interest magazines. Id.
Direct evidence of consumer recognition of a mark is not
necessary. The "fame of a mark may be measured indirectly, among other things,
by the volume of sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of commercial awareness
have been evident." See Bose, 293 F.3d at 1371, 63 USPQ2d at 1305, andcases cited therein. It is important to consider the context of how the
proposed mark is presented in sales and advertising materials. In Bose,
the Court found that evidence of extensive sales and advertising expenses
established the fame of opposer's WAVE and ACOUSTIC WAVE marks, noting that
opposer's sales literature, advertisements, and promotional materials included
frequent and prominent references to the marked product separate and apart from
the house mark BOSE. In Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983), the court found that the mark GIANT FOOD was famous based on 45 years of
use, sales in excess of $1 billion per year, extensive media exposure andprominent display on the facade of supermarkets. However, in Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004), the court found that
evidence of more than $5 million annual sales of products bearing the mark,
over 100 years of use, and advertising expenditure of hundreds of thousands of
dollars per year was insufficient to establish that RITZ had acheived the
extensive public recognition of a famous mark.
In Tiffany & Broadway v. Commissioner, 167 F. Supp.2d
949 (S.D. Tex. 2001), the fame of four registered marks cited against the
applicant was a significant factor in finding a likelihood of confusion between
applicant's TIFFANY for ladies' dress shoes and registrant's TIFFANY andTIFFANY & CO. for a variety of goods, including jewelry, china, silverware,
glassware, leather goods, belt buckles, ties, scarves, clocks, watches, brushes
and lamps, and for retail store services specializing in the sale of jewelry,
watches, clocks, and gift items. The ex parte record included excerpts
from 18 news articles where the registrant Tiffany & Company was identified
as a famous business; citations to three published decisions in which the fame
of the TIFFANY mark had been judicially recognized; and evidence that the
registrant's goods were sold at over 60 Tiffany locations worldwide--including
34 in the United States--and through independently-owned retail stores and mail
order outlets.
During the examination of an application, the examining attorney
should consider separately each registration found in a search of the marks
registered in the Office that may bar registration of the applicant's mark
under §2(d). If the examining attorney finds registrations that appear to be
owned by more than one registrant, he or she should consider the extent to
which dilution may indicate that there is no likelihood of confusion. However,
the examining attorney must cite all the marks that are considered to be a bar
to registration of the mark presented in the application, even if they are
owned by different parties. The examining attorney should always explain the
reason that the mark in each cited registration is grounds for refusal under
§2(d).
In addition to referring to a mark that so resembles another mark
as to be likely to cause confusion or mistake, §2(d) refers to a mark being
likely "to deceive." As a practical matter, this provision is rarely applied
in examination, because deceptiveness involves intent and would be difficult to
prove in an ex parte proceeding.
As a basis for refusal, §2(d) refers not only to registered marks
but also to "a mark or trade name previously used in the United States by
another and not abandoned." Refusal on the basis of an unregistered mark or
trade name has sometimes been referred to as refusal on the basis of a "known
mark." This provision is not applied in ex parte examination because of
the practical difficulties with which an examining attorney is faced in
attempting to locate "previously used" marks and attempting to determine
whether anyone has rights in them and whether they are "not abandoned."
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), contains a
proviso under which an eligible applicant may request issuance of a
registration concurrent with the registration of a conflicting mark.
In a concurrent use application, the applicant normally requests
a geographically restricted registration. The applicant seeks registration for
a specified geographical area of the United States and lists one or more
parties who concededly have rights in the mark in other geographical areas of
the United States. These other parties may own applications or registrations,
or they may have common law rights in a mark, but no application or
registration. "Incontestable" registrations (i.e., where the
registrant's right to use the mark has become incontestable pursuant to 15 U.S.C.
§1065) are subject to concurrent use registration proceedings. See Holiday
Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (C.C.P.A. 1976);
Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330 (TTAB 1980).
However, registrations and applications to register on the Supplemental
Register and registrations under the Act of 1920 (see
TMEP §1601.05)
are
not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g).
Concurrent use registration is requested by the applicant; it
should not be suggested or initiated by the examining attorney.
In an application based on use in commerce under 15 U.S.C.
§1051(a), the applicant may seek concurrent use registration at the time the
application is filed or in a subsequent amendment. See 37 C.F.R.
§2.73(a).
In an application based on a bona fide intent to use the mark in
commerce under 15 U.S.C. §1051(b), the applicant may not amend to seek
concurrent use registration until the applicant files an acceptable amendment
to allege use or statement of use. 37 C.F.R. §§2.73(b) and 2.99(g).
In an application under §44 or §66(a) of
the Trademark Act, 15 U.S.C. §1126 or §1141f(a), the applicant may seek
concurrent use registration, if the mark meets the requirements of the statute
and rules for concurrent use registration. Concurrent use applications under §§44
and §66(a) are very rare.
If an applicant requests a concurrent use registration, the
examining attorney must first determine the basis for seeking such a
registration. An application for registration as a concurrent user is either:
(1) subject to a concurrent use registration proceeding before the Trademark
Trial and Appeal Board, or (2) pursuant to the final determination by a court
of competent jurisdiction of the concurrent rights of the parties to use the
same or similar marks in commerce. See 15 U.S.C. §1052(d); 37 C.F.R.
§2.99.
An applicant is eligible to request a registration subject to
concurrent use if it meets one or more of the following criteria:
(1) The concurrent use request is sought pursuant to a
decree of a court of competent jurisdiction reflecting its final determination
of the rights of the concurrent user;
(2) The owner of the registration consents to the grant of a
concurrent use registration to the applicant; or
(3) The applicant's date of first use in commerce is before
the filing date of the pending applications or of any registrations
issued under the Trademark Act of 1946. When a party specified as an excepted
user does not own an application or registration, the applicant's date of first
use in commerce is before the filing date of any application to register the
mark that may be filed by the excepted user.
The applicant has the burden of proving that it is entitled to a
concurrent use registration. 37 C.F.R. §2.99(e).
An application for registration as a lawful concurrent user is
generally examined in the same manner as any other application for
registration. 37 C.F.R. §2.99(a). The examining attorney must examine the
application to determine whether it complies with the relevant requirements for
a non-restricted application (see 37 C.F.R. §§2.32 - 2.41).
Additionally, the applicant must comply with the following requirements in a
concurrent use application:
(1) The applicant must specify the goods and the geographic
area for which the applicant seeks registration of the mark. 15 U.S.C.
§1051(a)(3)(D); 37 C.F.R. §2.42. The applicant must also set forth the mode of
use. 15 U.S.C. §1052(d); 37 C.F.R. §2.42.
(2) The applicant must specify, to the extent of its
knowledge, the exceptions to its claim of exclusive use, listing any concurrent
use by others and the relevant goods, geographic areas and periods of this
use. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.42.
(3) The applicant must also list the names and addresses of
the concurrent users, the registrations issued to or applications filed by them
(if any), and the mode of such use. 37 C.F.R. §2.42.
(4) The verification for concurrent use should be modified
to indicate an exception, that no one else except as specified in the
application has the right to use the mark. 15 U.S.C. §1051(a)(3)(D). See
TMEP §804.02.
The applicant does not have to insert the stated exceptions in
the verification or declaration; the exceptions may be set forth anywhere in
the application.
In addition to the requirements noted above, which apply to all
applications for concurrent use registration, concurrent use applications must
meet other conditions, depending on whether the application is subject to a
concurrent use before the Board (see
TMEP §§1207.04(e)
et seq.)
or pursuant to the decree of a court (see
TMEP §§1207.04(f)
et seq.).
If an application for concurrent use registration complies with
the above requirements and it appears that the applicant is entitled to
registration but for the question of concurrent rights, the examining attorney
will approve the application for publication subject to a concurrent use
registration proceeding. 15 U.S.C. §1062(a).
Ordinarily, the examining attorney should not require an
applicant for concurrent use registration to submit evidence in support of its
claim to concurrent rights. However, the examining attorney should refuse
registration under §2(d) if the applicant has requested a concurrent use
registration and information in the record suggests that the applicant has not
met the basic requirements for concurrent use registration (e.g., if the
application indicates that the applicant adopted and used the mark with
knowledge of the rights of a person specified as an excepted user, or that
actual confusion has resulted from the concurrent use of the marks of the
parties in their respective geographic areas). See In re Place for Vision,
Inc., 196 USPQ 267, 269-70 (TTAB 1977). Gray v. Daffy Dan's Bargaintown,
823 F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987), aff'g 229 USPQ 474 (TTAB
1986).
1207.04(e)(i) Preparing the File for Publication
When the examining attorney determines that the mark in an
application that is subject to a concurrent use proceeding is ready for
publication, the examining attorney should prepare the file as follows:
(1) The application must contain a concurrent use statement
that will be printed in the Official Gazette. The statement may be
submitted by the applicant or prepared by the examining attorney. The
statement must be in the following form:
Subject to Concurrent Use Proceeding with ____________ [specifying the
application serial number(s) or registration number(s), if any, of each other
party; otherwise, the name and address of each other party].
Applicant claims the exclusive right to use the mark in the area comprising
_____________ [specifying the area for which the applicant seeks
registration].
(2) To aid in the preparation of the file by the Legal
Instruments Examiner ("LIE"), the examining attorney should prepare a brief
summary of the relevant concurrent use information. The information on the
summary page should be set forth in the following manner:
CONCURRENT USE SUMMARY
Applicant:
Address:
Mark:
Goods or services:
Other Reg. or Serial Nos.:
Dates of use:
Areas of use:
EXCEPTIONS TO EXCLUSIVE USE
Name:
Address:
Mark:
Goods or Services:
Reg. or Serial No.:
Dates of Use:
Area of use:
After publication, if no opposition is filed, or if any
opposition that is filed is dismissed or withdrawn, the Trademark Trial andAppeal Board will institute the concurrent use proceeding. The Board will
consider and determine concurrent use rights only in the context of a
concurrent use registration proceeding. 37 C.F.R. §2.99(h). See 37 C.F.R.
§2.99;
TMEP §1506.
See, generally, Trademark Trial and Appeal Board Manual
of Procedure ("TBMP") Chapter 1100.
Under the last two sentences of §2(d), the Office may issue a
concurrent use registration pursuant to the final determination of a court of
competent jurisdiction that more than one person is entitled to use the same or
similar marks in commerce. An applicant who seeks a concurrent use
registration on the basis of a court determination does not have to claim use
in commerce prior to the specified dates or obtain the consent of the owner of
the involved mark, and the registration may be issued notwithstanding the
possibility of public confusion. See Holiday Inn v. Holiday Inns, Inc.,
534 F.2d 312, 189 USPQ 630 (C.C.P.A. 1976). Cf. Alfred Dunhill of London,
Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412
(C.C.P.A. 1961), cert. denied, 369 U.S. 864, 133 USPQ 702 (1962).
When examining an application for concurrent use registration
pursuant to the decree of a court, the examining attorney must determine whether
the application complies with the specific requirements for concurrent use
applications (see
TMEP §§1207.04(d)
and
(d)(i))
and the requirements
that would apply to an unrestricted application.
In addition, under 37 C.F.R. §2.99(f), all of the following
conditions must be met, or a concurrent use proceeding before the Board must be
prepared and instituted:
(1) The applicant is entitled to registration subject only
to the concurrent lawful use of a party to the court proceeding;
(2) The court decree specifies the rights of the parties;
(3) A true copy of the court decree is submitted to the
examining attorney;
(4) The concurrent use application complies fully andexactly with the court decree; and
(5) The excepted use specified in the concurrent use application
does not involve a registration, or any involved registration has been
restricted by the Director in accordance with the court decree.
If any of the above conditions are not satisfied, the
examining attorney will approve the application for publication subject to a
concurrent use registration proceeding (see
TMEP §§1207.04(e)
and
(e)(i))
, rather than pursuant to the court decree. 37 C.F.R. §2.99(f).
If the application complies with all of the conditions listed in
TMEP §1207.04(f)
and all other relevant requirements, and is otherwise entitled
to registration, the examining attorney will approve the application for
publication of the mark. The examining attorney should prepare the file as
follows:
The application must contain a concurrent use statement to be
printed in the Official Gazette. The statement may be submitted by the
applicant or prepared by the examining attorney. The statement will delineate
the concurrent rights of the parties as determined by the court, in the
following form:
Registration limited to the area comprising __________
[specifying the area granted to the applicant by the court and any other
restriction designated by the court] pursuant to the decree of ______________
[specifying the name of the court, proceeding number and date of the decree].
Concurrent registration with ________________ [specifying the
application serial number(s) or registration number(s), if any, of each other
party; otherwise, the name and address of each other party].
After publication, if no opposition is filed, or if any
opposition that is filed is dismissed or withdrawn, the application will mature
into a registration.
37 C.F.R. §2.83. Conflicting marks.
(a) Whenever an application is made for registration of a
mark which so resembles another mark or marks pending registration as to be
likely to cause confusion or mistake or to deceive, the mark with the earliest
effective filing date will be published in the "Official Gazette" for
opposition if eligible for the Principal Register, or issued a certificate of
registration if eligible for the Supplemental Register.
(b) In situations in which conflicting applications have the
same effective filing date, the application with the earliest date of execution
will be published in the "Official Gazette" for opposition or issued on the
Supplemental Register.
(c) Action on the conflicting application which is not
published in the Official Gazette for opposition or not issued on the
Supplemental Register will be suspended by the Examiner of Trademarks until the
published or issued application is registered or abandoned.
In ex parte examination, priority among conflicting
pending applications is determined based on the effective filing dates of the
applications, without regard to whether the dates of use in a later-filed
application are earlier than the filing date or dates of use of an earlier-filed
application, whether the applicant in a later-filed application owns a
registration of a mark that would be considered a bar to registration of the
earlier-filed application, or whether an application was filed on the basis of
use of the mark in commerce or a bona fide intent to use the mark in commerce.
When two or more applications contain marks that are conflicting,
the mark in the application that has the earliest effective filing date
will be published for opposition if it is eligible for registration on the
Principal Register, or will be registered if it is eligible for registration on
the Supplemental Register. 37 C.F.R. §2.83(a). See
TMEP §§206
etseq. regarding effective filing dates.
The examining attorney cannot refuse registration under §2(d) of
the Trademark Act based on an earlier-filed application for a conflicting mark
until the mark registers. Therefore, when the examining attorney has examined
the later-filed application and determined that it is in condition to be
approved for publication or issue or in condition for a final refusal, but for
the conflict between the marks, the examining attorney will suspend
action on the later-filed application until the earlier-filed application
matures into a registration or is abandoned. 37 C.F.R. §2.83(c);
TMEP§§716.02(c)
and
1208.02(c).
Marks in applications filed by different parties are in conflict
when the registration of one of the marks would be a bar to the registration of
the other under §2(d) of the Trademark Act, 15 U.S.C. §1052(d). Therefore, the
term "conflicting application" refers to an application to register a mark that
so resembles the mark in another application as to be likely to cause
confusion. See
TMEP §702.03(b).
See
TMEP §§1207
et seq.
regarding likelihood of confusion. There may be several conflicting pending
applications.
The filing date of an application under §1 or §44 of the
Trademark Act is the date when all the elements designated in 37 C.F.R.
§2.21(a) are received at the Office. In an application under §66(a) of the
Trademark Act, 15 U.S.C. §1141f(a), the filing date is (1) the international
registration date, if the request for extension of protection to the United
States is made in an international application; or (2) the date that the
subsequent designation was recorded by the IB, if the request for extension of
protection to the United States is made in a subsequent designation.
TMEP §201.
While this is generally the effective filing date for
purposes of determining priority among conflicting applications, in certain
situations another date is treated as the effective filing date. See
TMEP §§206
et seq. For example, in an application claiming priority
under §44(d) or §67 of the Trademark Act based on a foreign application, the
effective filing date is the date of filing the foreign application.
TMEP§206.02.
In a §1(b) application that is amended to the Supplemental Register
on the filing of an acceptable allegation of use, the effective filing date is
the date of filing the allegation of use.
TMEP §206.01.
If two or more applications conflict, the application with the
earliest effective filing date will be approved for publication for opposition
or for issuance of a registration on the Supplemental Register, as
appropriate. 37 C.F.R. §2.83(a);
TMEP §1208.01.
If conflicting applications have the same effective filing date,
the application with the earliest date of execution will be published for
opposition or issued on the Supplemental Register. 37 C.F.R. §2.83(b). An
application that is unexecuted will be treated as having a later date of
execution.
Occasionally, conflicting applications will have the same date of
filing and execution. If this situation occurs, the application with the
lowest serial number will have priority for publication or issuance. When determining which serial number is the
lowest, the examining attorney should disregard the series code (e.g.,
"76," "78" or "79") and look only to the six digit serial number.
If the effective filing date in an application containing a
conflicting mark changes, the examining attorney should review all the application(s)
involved to determine which application has the earliest effective filing date
as a result of the change.
The examining attorney should conduct a new search of the mark
whenever the effective filing date of an application changes to a date that is later
than the original filing date.
When an abandoned application is revived or reinstated (see
TMEP§§1712.01
,
1713
and
1714
et seq.), the examining attorney must conduct a
new search to determine whether any later-filed applications for conflicting
marks have been approved for publication or registration, and place the search
strategy in the file.
If a later-filed application has been approved, the examining
attorney should inform the examining attorney who approved the later-filed
application that the earlier-filed application has been revived, if necessary.
If the later-filed application has been published, the examining attorney
handling that application should request jurisdiction (see
TMEP§1504.04(a))
and suspend the application pending disposition of the
earlier-filed application that was revived or reinstated.
If a later-filed application for a conflicting mark has matured
into registration, the examining attorney must refuse registration of the
revived or reinstated application under §2(d), even though the application for
the registered mark was filed after the revived or reinstated application. The
Office does not have the authority to cancel the registration.
When the application with the earliest effective filing date is
first reviewed for action, the examining attorney should approve the application
for publication or for issuance of a registration on the Supplemental Register,
if appropriate. 37 C.F.R. §2.83(a).
If the application with the earliest effective filing date is not
in condition for publication or issue, the examining attorney should issue an
Office action that includes all relevant refusals and requirements.
The Office does not notify applicants of potentially conflicting
later-filed applications.
See
TMEP §§206
et seq. and
1208.01(b)
regarding
what constitutes an effective filing date.
If, when the later-filed conflicting application is first
reviewed for action, it is not in condition for publication or issue, the examining
attorney should, in addition to treating other matters, send with the Office
action an electronic copy or a printout from the Office's automated search
system of the information for the mark in each earlier-filed application. The
examining attorney's letter should also advise the applicant that the earlier
application, if and when it matures into a registration, may be cited against
the applicant's later-filed application. The applicant should be notified of
all conflicting applications with earlier effective filing dates.
See
TMEP §1208.02(c)
regarding suspension of later-filed
conflicting applications that are otherwise in condition to be approved for
publication or issue.
When the later-filed application is in condition for publication
or issue except for the conflicting mark in an earlier-filed application,
either because no action was necessary on the application as filed or because
examination on other matters has been brought to a conclusion, the examining
attorney should suspend the later-filed application until the mark in the
earlier-filed application is registered or the earlier-filed application is
abandoned. 37 C.F.R. §2.83(c). In re Direct Access Communications (M.C.G.)
Inc., 30 USPQ2d 1393 (Comm'r Pats. 1993). If the examining attorney
discovers that a previously-filed pending application was abandoned, but that a
petition to revive is pending, the examining attorney should suspend the
later-filed application pending disposition of the petition to revive.
Action on the later-filed application should also be suspended
when the application is in condition for a final action but for the conflict
with the earlier-filed application. The letter of suspension should repeat the
outstanding issues, but these issues should not be made final.
If the Office action informing the applicant of the suspension is
the first action in the case, the examining attorney should include an
electronic copy or a printout from the Office automated search system of the
information for the mark in each earlier-filed conflicting application.
If all conflicting earlier-filed applications have either matured
into registrations or become abandoned, and there are no other grounds for
suspension, the examining attorney should remove the later-filed application
from suspension and take appropriate action as follows.
The examining attorney should cite the registration or
registrations that issued from the earlier-filed conflicting application or
applications, if there is a likelihood of confusion. This will be a first
refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d). Any other
outstanding issues should be repeated at this time.
If all earlier-filed applications have become abandoned, the
examining attorney should either approve the later-filed application for
publication or issue, or repeat and make final any remaining issues, as
appropriate.
If some, but not all of the earlier-filed conflicting
applications have matured into registrations, the examining attorney will
normally not issue a refusal of registration until the remaining conflicting
application(s) are registered or abandoned, in order to avoid issuing piecemeal
refusals.
TMEP §716.02(c).
If an applicant with a later-filed application files a request to
remove the later-filed application from suspension (see
TMEP §716.03)
,
arguing that there is no conflict in relation to the application with the
earlier effective filing date, the examining attorney should consider the
merits of that argument and determine whether or not the earlier-filed
application constitutes a potential bar to registration under §2(d) of the
Act.
If the examining attorney concludes that the earlier-filed
application is not a potential bar, the examining attorney should remove the
application from suspension and take appropriate action on any other
outstanding issues.
However, if the examining attorney concludes that the
earlier-filed application is a potential bar, the examining attorney should
issue an action for the later-filed application (e.g., a new letter of
suspension if there are no other issues that are not in condition for final
action), in which the examining attorney explains why the applicant's argument
is not persuasive.
If a later-filed conflicting mark is mistakenly published for
opposition, it may be necessary for the examining attorney to obtain
jurisdiction of the application to take appropriate action. See
TMEP§§1504
et seq. concerning obtaining jurisdiction of an application after
publication.
The examining attorney does not lose jurisdiction of an
application forwarded for issuance on the Supplemental Register until the day
of issuance of the registration.
An interference will not be declared except upon petition to the
Director. The Director will declare an interference only upon a showing of
extraordinary circumstances that would result in a party being unduly
prejudiced without an interference. These cases are extremely rare. In ordinary
circumstances, the availability of an opposition or cancellation proceeding is
deemed to remove any undue prejudice. 37 C.F.R. §2.91(a). Interferences are
generally limited to situations where a party would otherwise be required to
engage in a series of opposition or cancellation proceedings, and where the
issues are substantially the same. See
TMEP §1208.03(b).
The potential
need to file two notices of opposition that could be consolidated if the issues
were sufficiently similar, is not considered an extraordinary circumstance that
will unduly prejudice a petitioner without an interference.
All petitions, or requests for interference are to be forwarded
to the Commissioner for Trademarks for decision. The examining attorney does
not make a determination on a request for interference.
See TBMP Chapter 1000.
The request for interference should be in a separate document in
the form of a petition, and should be captioned as a petition. The petition fee
indicated in 37 C.F.R. §2.6 should accompany the request. A petition to
declare an interference should not be filed before the application has been
examined and the mark has been found to be registrable but for the existence of
one or more conflicting pending applications.
Any petition or request for interference should be referred to
the Office of the Commissioner for Trademarks.
A request for interference does not make an application "special"
or alter the normal order of examination.
See TBMP Chapter 1000.
Section 16 of the Trademark Act, 15 U.S.C. §1066, states that,
upon petition showing extraordinary circumstances, the Director may declare
that an interference exists when application is made for the registration of a
mark that so resembles a mark previously registered by another, or for the
registration of which another has previously applied, as to be likely, when
used on or in connection with the goods or services of the applicant, to cause
confusion or mistake or to deceive. No interference shall be declared between
an application and a registration that has become incontestable.
The Director will declare an interference only upon a showing of
extraordinary circumstances that would result in a party being unduly
prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The
availability of opposition and cancellation procedures provides a remedy andordinarily precludes the possibility of undue prejudice to a party. The
request for interference must show that there is some extraordinary
circumstance that would make the remedy of opposition or cancellation
inadequate or prejudicial to the party's rights. See In re Family Inns of
America, Inc., 180 USPQ 332 (Comm'r Pats. 1974).
The fact that an earlier-filed application based on intent to use
the mark in commerce under §1(b) or based on §44 or §66(a) has been cited
against a later-filed application based on use in commerce under §1(a) is not
an extraordinary circumstance that warrants declaration of an interference. An
opposition proceeding is the proper forum for determining priority between an
applicant and another party. Priority for purposes of examination of an
application is determined by filing date. 37 C.F.R. §2.83(a);
TMEP §1208.02(a).
Although §16 of the Act permits the declaration of an
interference between an application and a registration, the practice of
declaring an interference in these cases has been discontinued. The reason is
that the applicant cannot obtain a registration if the interfering registration
remains on the register. Therefore, even if the applicant prevailed in the
interference, the applicant would still have to petition to cancel the
interfering registration. See In re Kimbell Foods, Inc., 184 USPQ 172
(Comm'r Pats. 1974); Ex parte H. Wittur & Co., 153 USPQ 362 (Comm'r
Pats. 1966); 37 C.F.R. §2.96.
See TBMP Chapter 1000.
If the Director grants a petition requesting an interference, the
examining attorney must determine that each mark is registrable but for the
interfering mark before the interference will be instituted. 37 C.F.R. §2.92.
All marks must be published for opposition before interference
proceedings are instituted; if possible, the marks should be published
simultaneously.
Each application that is to be the subject of an interference
must contain the following statement to be printed in the Official Gazette:
This application is being published subject to declaration of
interference with:
Serial No.:
Filed:
Applicant:
(Address, if there is no attorney)
Attorney and Address:
Mark:
The examining attorney should prepare the statement.
If an application that is published subject to declaration of
interference is opposed by a party other than the applicant(s) in the
interfering application(s), the opposition will be determined first. If still
necessary and appropriate, the interference will be instituted. If an
opposition is filed by the applicant in the interfering application, the
interference proceeding will not be instituted. The rights of the parties will
be determined in the opposition proceeding.
If, during the pendency of an interference, another application
appears involving substantially the same registrable subject matter, the examining
attorney may request suspension of the interference for the purpose of adding
that application. If the application is not added, the examining attorney
should suspend further action on the application pending termination of the
interference proceeding. 37 C.F.R. §2.98.
See TBMP Chapter 1000.
Extract from 15 U.S.C. §1052. 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 on account of its nature unless it .... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them....
Matter that "merely describes" the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted in In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978):
The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.
With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness -- or, on the other hand, descriptiveness -- of a designation can be determined only by considering it in relation to the specific goods or services. Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods).
At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), "[t]he generic name of a thing is in fact the ultimate in descriptiveness."
Fanciful, arbitrary and suggestive marks, often referred to as "inherently distinctive" marks, are registrable on the Principal Register without proof of acquired distinctiveness. See
TMEP §1209.01(a).
Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under 15 U.S.C. §1052(f). See
TMEP §1209.01(b)
regarding merely descriptive marks, and
TMEP §§1212
et seq. regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register. 15 U.S.C. §1091.
Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances. See
TMEP §§1209.01(c)
et seq.
Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).
Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool). See also In re Quik-Print Copy Shop, Inc., 203 USPQ 624 (TTAB 1979), aff'd, 616 F.2d 523, 205 USPQ 505 (C.C.P.A. 1980) (QUIK-PRINT held merely descriptive of printing services); In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984) (BUG MIST held merely descriptive of insecticide). Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods and services to be registrable.
To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered 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 MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing).
The determination of whether or not a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
It is not necessary that a term describe all of the purposes, functions, characteristics or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d1370, 1371 (Fed. Cir. 2004) ("A mark may be merely descriptive even if it does not describe the 'full scope and extent' of the applicant's goods or services," citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010.
The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985); In re Venturi, Inc., 197 USPQ 714 (TTAB 1977).
See
TMEP §§1209.03(a)
et seq. regarding factors that often arise in determining whether a mark is merely descriptive or generic.
See also
TMEP §§1213
et seq. concerning disclaimer of merely descriptive matter within a mark.
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or 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). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.
There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (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). The test turns upon the primary significance that the term would have to the relevant public.
The examining attorney has the burden of proving that a term is generic by clear evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the public's understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, newspapers and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities).
When a term is a compound word, the examining attorney may establish that a term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens).
However, the Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). Where the mark is a phrase, the examining attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole.
In American Fertility Society, the court held that evidence that the components "Society" and "Reproductive Medicine" were generic was not enough to establish that the composite phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive medicine. The court held that the examining attorney must show: (1) the genus of services that the applicant provides; and (2) that the relevant public understands the proposed composite mark to primarily refer to that genus of services. 51 USPQ2d at 1836-37.
In Dial-A-Mattress, the court held that an alphanumeric phone number "bears closer conceptual resemblance to a phrase than a compound word." 57 USPQ2d at 1811. The court found that 1-888-M-A-T-R-E-S-S was not generic as applied to "telephone shop-at-home retail services in the field of mattresses," because there was no evidence of record that the public understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic phone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.
With respect to top level domain indicators (TLDs), the Trademark Trial and Appeal Board held that, unlike an alphanumeric telephone number, a generic term combined with a TLD "cannot be characterized as a mnemonic phrase." The Board stated:
[The designation CONTAINER.COM] is instead a compound word, a generic term combined with the top level domain indicator, ".COM." In proving genericness, the Office may satisfy its burden by showing that these separate generic words have a meaning identical to the meaning common usage would ascribe to those words as a compound. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987). In a similar sense, neither the generic term nor the domain indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability.
In re Martin Container, Inc., 65 USPQ2d 1058, 1061 (TTAB 2002).
The Board has also noted that mnemonic telephone numbers differ from TLDs in that telephone numbers comprise unique ten-digit numbers that can be used by only a single entity, whereas the precise generic term and TLD combination employed by one entity can be incorporated into other domain names. In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037(TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1793 (TTAB 2002) (BONDS.COM, used in an offer of services, generic for providing information regarding financial products and services via the Internet). See also
TMEP §§1209.03(m)
and
1215.05
regarding domain names.
When examining an application for a mark that includes a TLD, the examining attorney must include evidence such as dictionary definitions to establish that the TLD lacks trademark significance.
As specifically amended by the Trademark Law Revision Act of 1988, §14 of the Trademark Act provides for the cancellation of a registration of a mark at any time if the mark "becomes the generic name for the goods or services, or a portion thereof, for which it is registered...." 15 U.S.C. §1064(3). Previously, that provision had pertained to a mark that "becomes the common descriptive name of an article or substance...." Cases previously distinguished between generic names and "apt or common descriptive names," which referred to matter that, while not characterized as "generic," had become so associated with the product that it was recognized in the applicable trade as another name for the product, serving as a term of art for all goods of that description offered by different manufacturers rather than identifying the goods of any one producer. See Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 364 (TTAB 1978), aff'd, 599 F.2d 1009, 202 USPQ 100 (C.C.P.A. 1979). In addition, the Trademark Law Revision Act of 1988 amended §15 of the Trademark Act to adopt the term "generic name" to refer to generic designations. 15 U.S.C. §1065(4). In view of the amendment of §§14 and 15, a distinction between "generic" names and "apt or common descriptive" names should not be made. Rather, the terminology of the Act should be consistently used, e.g., in refusals to register matter that is a generic name for the goods or services, or a portion thereof. See In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994).
Similarly, cases have distinguished between "generic" terms and terms that were deemed "so highly descriptive as to be incapable of exclusive appropriation as a trademark." See In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS held so highly descriptive as to be incapable of distinguishing applicant's services of arranging and conducting seminars
in the field of business law); In re Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) (INDUSTRIAL RELATIONS COUNSELORS, INC. held an apt name or so highly descriptive of educational services in the industrial relations field that it is incapable of exclusive appropriation and registration, notwithstanding de facto source recognition capacity). Regarding current practice for refusing registration of such matter, the Trademark Trial and Appeal Board noted as follows in In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992):
The Examining Attorney's refusal that applicant's mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the basis that the mark sought to be registered is generic (citations omitted). Alternatively, an Examining Attorney may refuse registration under the same section if he or she believes that the mark is merely descriptive and that applicant's showing of acquired distinctiveness is unpersuasive of registrability.
In essence, the Board was merely emphasizing the need to use precise statutory language in stating grounds for refusal. While the decision does not explicitly bar the use of the terminology "so highly descriptive that it is incapable of acting as a trademark" under all circumstances, the case illustrates that the use of this terminology may lead to confusion and should be avoided. It is particularly important in this context to use the precise statutory language to avoid doctrinal confusion. See generally McLeod, The Status of So Highly Descriptive and Acquired Distinctiveness, 82 Trademark Rep. 607 (1992). Therefore, examining attorneys should not state that a mark is "so highly descriptive that it is incapable of acting as a trademark" in issuing refusals. Rather, in view of the amendments of the Trademark Act noted above, the terminology "generic name for the goods or services" should be used in appropriate refusals, and use of the terminology "so highly descriptive" should be discontinued when referring to incapable matter.
This does not mean that designations that might formerly have been categorized as "so highly descriptive" should not be regarded as incapable. The Court of Appeals for the Federal Circuit has specifically stated that "a phrase or slogan can be so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be "so highly laudatory and descriptive of the qualities of [applicant's] product that the slogan does not and could not function as a trademark to distinguish Boston Beer's goods and serve as a indication of origin").
The Court of Appeals for the Federal Circuit has also stated that "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989-990, 228 USPQ 528, 530 (Fed. Cir. 1986). Also note that it is entirely appropriate to consider whether a particular designation is "highly descriptive" in evaluating registrability under §2(f), or in similar circumstances.
The expression "generic name for the goods or services" is not limited to noun forms but also includes "generic adjectives," that is, adjectives that refer to a genus, species, category or class of goods or services. In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products).
In the following cases, the matter sought to be registered was found generic: In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be "so highly laudatory and descriptive of the qualities of [applicant's] product that the slogan does not and could not function as a trademark to distinguish Boston Beer's goods and serve as a indication of origin"); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix); In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037(TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, conducted via the Internet); In re Candy Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for "retail, mail, and computer order services in the field of gift packages of candy"); In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) (CELL THERAPEUTICS INC. generic for pharmaceutical preparations and laboratory research and development services); In re American Institute of Certified Public Accountants, 65 USPQ2d 1972 (TTAB 2003) (CPA EXAMINATION held generic for "printed matter, namely, practice accounting examinations; accounting exams; accounting exam information booklets; and prior accounting examination questions and answers"); In re American Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002) (FACIAL PLASTIC SURGERY held generic for training, association, and collective membership services, where evidence showed that the phrase "facial
plastic surgery" is a recognized field of surgical specialization); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture and jewelry); Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for architectural design of buildings and retail outlets selling kits for building log homes); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) (WEB COMMUNICATIONS generic for consulting services to businesses seeking to establish sites on a global computer network); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff'd, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK for reusable ice substitute for use in food and beverage coolers held generic; even assuming a contrary holding, evidence submitted by applicant deemed insufficient to establish acquired distinctiveness); In re The Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS CO. for "interior and exterior paints and coatings, namely, alkyd, oil, latex, urethane and epoxy based paints and coatings" held so highly descriptive as to be incapable of becoming distinctive; even assuming the term could function as a mark, applicant's evidence deemed insufficient to establish acquired distinctiveness); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities); In re Mortgage Bankers Association of America, 226 USPQ 954 (TTAB 1985) (CERTIFIED MORTGAGE BANKER ("MORTGAGE BANKER" disclaimed) for "educational services, namely providing qualifying examinations,
testing and grading in the field of real estate finance" held so highly descriptive as to be incapable of functioning as a mark notwithstanding evidence of acquired distinctiveness); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES for retail book and record store services "is incapable of designating origin and any evidence of secondary meaning can only be viewed as 'de facto' in import and incapable of altering the inability of the subject matter for registration to function as a service mark").
In the following cases, the matter sought to be registered was found not to be generic: In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (1-888-M-A-T-R-E-S-S not generic for "telephone shop-at-home retail services in the field of mattresses"); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (CASH MANAGEMENT ACCOUNT for "stock brokerage services, administration of money market fund services, and providing loans against securities services" held merely descriptive, rather than generic, and remanded to Board to consider sufficiency of §2(f) evidence); H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (FIRE CHIEF not generic for publications); In re Federated Dept. Stores Inc., 3 USPQ2d 1541 (TTAB 1987) (THE CHILDREN'S OUTLET ("OUTLET" disclaimed), while merely descriptive of applicant's "retail children's clothing store services," held capable of functioning as a mark, with evidence submitted by applicant sufficient to establish acquired distinctiveness pursuant to §2(f)); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER for periodic trade journal held merely descriptive, rather than generic, and applicant's evidence held sufficient to establish acquired distinctiveness pursuant to §2(f)); In re Failure Analysis Associates, 1 USPQ2d 1144 (TTAB 1986) (FAILURE ANALYSIS ASSOCIATES, for "consulting services in the field of mechanical, structural, metallurgical, and metal failures, fires and explosions; engineering services in the field of mechanical design and risk analysis" and "consulting engineering services in the metallurgical field," found to be merely descriptive of
applicant's services rather than incapable of distinguishing them from those of others; evidence submitted by applicant held sufficient to demonstrate acquired distinctiveness under §2(f)).
The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985). The examining attorney may request that the applicant submit additional explanations or materials to clarify the nature of the goods or services. 37 C.F.R. §2.61(b);
TMEP §814.
The examining attorney should also do any necessary research to determine the nature of the use of the designation in the marketplace. If the examining attorney refuses registration, he or she should support the refusal with appropriate evidence.
In all cases the examining attorney should try to make the Office action as complete as possible, so that the applicant may respond appropriately.
A designation that is merely descriptive should be refused registration under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). When issuing any refusal under §2(e)(1), if the designation appears to be a generic name for the goods or services, the examining attorney should provide an advisory statement that the subject matter appears to be a generic name for the goods or services, in conjunction with the refusal on the ground that the matter is merely descriptive. If, on the other hand, the mark appears to be capable, the examining attorney should provide appropriate advice concerning a possible amendment to the Supplemental Register or assertion of a claim of acquired distinctiveness. See
TMEP §1102.03
concerning ineligibility of the proposed mark in a §1(b) application for the Supplemental Register prior to filing an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d). If the record is unclear as to whether the designation is capable of functioning as a mark, the examining attorney should refrain from giving any advisory statement. In general, the Office should make every effort to apprise applicants as early as possible of the prospects for registration through appropriate amendments, if feasible.
An examining attorney should not issue a refusal in an application for the Principal Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the mark has acquired distinctiveness under 15 U.S.C. §1052(f). Even if it appears that the mark is generic, the proper basis for refusal is §2(e)(1). If there is strong evidence that the proposed mark is generic, a statement that the subject matter appears to be a generic name for the goods or services can be included as part of the §2(e)(1) refusal. It has been said that a generic term is "the ultimate in descriptiveness." H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986).
If, in response to a first-action refusal under §2(e)(1), the applicant merely argues that the mark is registrable on the Principal Register without claiming acquired distinctiveness or amending to the Supplemental Register, the examining attorney should issue a final refusal under §2(e)(1), on the ground that the proposed mark is merely descriptive, if he or she is not persuaded by the applicant's arguments.
If the applicant responds to a §2(e)(1) refusal by amending its application to the Supplemental Register, this amendment presents a new issue requiring consideration by the examining attorney (unless the amendment is irrelevant to the outstanding refusal-see
TMEP §714.05(a)(i)).
If the examining attorney determines that the designation is a generic name for the applicant's goods or services, the examining attorney should then refuse registration on the Supplemental Register. The statutory basis for such a refusal is §23 of the Trademark Act, 15 U.S.C. §1091. This action must be nonfinal. See
TMEP §§815
et seq. and
816
et seq. concerning applications for registration on the Supplemental Register.
If the applicant amends an application to assert acquired distinctiveness under §2(f), this raises a new issue. See
TMEP §1212.02(h).
If the examining attorney determines that the designation is a generic name for the applicant's goods or services, the examining attorney should continue the refusal of registration on the Principal Register under §2(e)(1). The examining attorney should also explain why the showing of acquired distinctiveness is insufficient. The action must be nonfinal. See
TMEP §§1212
et seq. regarding distinctiveness under §2(f), and
TMEP §1212.02(i)
regarding assertion of §2(f) claims with respect to generic matter.
To the fullest extent possible, the examining attorney will examine §1(b) intent-to-use applications for registrability under §2(e)(1) according to the same procedures and standards that apply to any other application. See In re American Psychological Association, 39 USPQ2d 1467 (Comm'r Pats. 1996);
TMEP §§1102
and
1102.01.
The following sections discuss factors and situations that often arise during a determination of whether a mark is descriptive or generic.
Third-party registrations are not conclusive on the question of descriptiveness. Each case must stand on its own merits, and a mark that is merely descriptive should not be registered on the Principal Register simply because other such marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977) (SCHOLASTIC held merely descriptive of devising, scoring and validating tests for others). The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS held merely descriptive of computer software for use in development and deployment of application programs on a global computer network).
The fact that a term is not found in a dictionary is not controlling on the question of registrability if the examining attorney can show that the term has a well understood and recognized meaning. See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jellies and jams).
The fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field). See also
TMEP §1212.06(e)(i)
and cases cited therein.
When two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records and for tracking the status of the records by means of the Internet); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of "commercial and industrial cooling towers and accessories therefor, sold as a unit"); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of "facsimile terminals employing electrophoretic displays"); In re Entenmann's Inc., 15 USPQ2d 1750 (TTAB 1990), aff'd per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts); In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986) (SQUEEZE N SERV held to be merely descriptive of ketchup and thus subject to disclaimer); In re Wells Fargo &
Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE held to be merely descriptive of banking and trust services); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (STEELGLAS BELTED RADIAL held merely descriptive of vehicle tires containing steel and glass belts); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of coasters suitable for direct mailing).
However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool).
When there is evidence that the composite mark itself has been used together to form a phrase that is descriptive of the goods or services, it is unnecessary to engage in an analysis of each individual component. In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) (TARIFF MANAGEMENT merely descriptive of computer hardware and computer programs to control, reduce and render more efficient wide area network usage).
The Trademark Trial and Appeal Board has held that the addition of the prefix "e" does not change the merely descriptive significance of a term in relation to goods or services sold or rendered electronically, where the record showed that the "e" prefix has become commonly recognized as a designation for goods or services sold and/or delivered electronically. In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS merely descriptive of an "electronic engine analysis system comprised of a hand-held computer and related computer software"); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION merely descriptive of software used to obtain beauty and fashion information, and for electronic retailing services); Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services). Similarly, the prefix "i" or "I" would be understood by purchasers to signify Internet, when used in relation to Internet-related products or services. See In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2000) (ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others).
The addition of an entity designator (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) to a descriptive term does not alter the term's descriptive significance, because an entity designation has no source-indicating capacity. See In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) (CELL THERAPEUTICS INC. generic for pharmaceutical preparations and laboratory research and development services); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) ("PRESS," as applied to a printing or publishing establishment, "is in the nature of a generic entity designation which is incapable of serving a source-indicating function"); In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("'PAINT PRODUCTS CO.' is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company."); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (the element 'INC.' [in PACKAGING SPECIALISTS, INC.] has "no source indication or distinguishing capacity"). See
TMEP §1213.03(d)
regarding disclaimer of entity designators.
The fact that a term may have meanings other than the one relevant to a particular application is not controlling, because descriptiveness must be determined in relation to the goods or services for which registration is sought. See In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974).
See
TMEP §1213.05(c)
regarding wording that constitutes a "double entendre."
A visual representation that consists merely of an illustration of the goods, or of an article that is an important feature or characteristic of the goods or services, is merely descriptive under §2(e)(1) of the Act. See In re Society for Private and Commercial Earth Stations, 226 USPQ 436 (TTAB 1985) (representation of satellite dish held merely descriptive of services of an association promoting the interests of members of the earth station industry); In re Underwater Connections, Inc., 221 USPQ 95 (TTAB 1983) (pictorial representation of a compressed air gas tank held merely descriptive of travel tour services involving underwater diving). But see In re LRC Products Ltd., 223 USPQ 1250 (TTAB 1984) (stylized hand design found not merely an illustration of the goods, i.e., gloves; thus not merely descriptive).
The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself. Words from modern languages are translated into English to determine descriptiveness or genericness. In re Northern Paper Mills, 64 F.2d 998, 17 USPQ 492 (C.C.P.A. 1933). The test is whether, to those American buyers familiar with the foreign language, the word would have a descriptive or generic connotation. In re Zazzara, 156 USPQ 348 (TTAB 1967) (PIZZA FRITTE, the Italian equivalent of "fried buns," held incapable for fried dough). See In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (Chinese characters that translate as ORIENTAL DAILY NEWS held merely descriptive of newspapers); In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985) (SAPORITO, an Italian word meaning "tasty," held merely descriptive because it describes a desirable characteristic of applicant's dry sausage); In re Optica International, 196 USPQ 775 (TTAB 1977) (OPTIQUE, a French word meaning "optic," held merely descriptive of eyeglass frames).
While foreign words are generally translated into English for purposes of determining descriptiveness, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 54 USPQ2d 1497 (5th Cir. 2000), reh'g denied 218 F.3d 745 (2000); cf. General Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997). The determination of whether a language is "dead" must be made on a case-by-case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
Arbitrary and incongruous combinations of English terms with terms from a foreign language have been found registrable. See In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (LA YOGURT for yogurt held registrable on Principal Register, with a disclaimer of "YOGURT"); In re Universal Package Corp., 222 USPQ 344 (TTAB 1984) (LE CASE held not merely descriptive of jewelry boxes and gift boxes and, therefore, registrable with a disclaimer of "CASE").
A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of risk management services in the field of pricing and purchasing natural gas); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail order services in the field of outdoor equipment and apparel).
A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (C-THRU held to be the equivalent of "see-through" and therefore merely descriptive of transparent rulers and drafting aids); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock).
Laudatory terms, those that attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1). See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK found to be merely descriptive and therefore subject to disclaimer); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (the words BEST and PREMIER in mark BEST! SUPPORTPLUS PREMIER held merely descriptive of computer consultation and support services and thus subject to disclaimer); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME merely descriptive of cheese); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY held merely descriptive of tobacco products); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND held merely descriptive of cat food).
If an applicant applies to register a designation that consists of a merely descriptive term with numerals in the form of an alphanumeric telephone number (e.g., 800, 888 or 900 followed by a word), the examining attorney should refuse registration under §2(e)(1). See In re Page, 51 USPQ2d 1660 (TTAB 1999) (888 PATENTS merely descriptive of patent-related legal services). The fact that a designation is in the form of a telephone number is insufficient, by itself, to render it distinctive.
If the relevant term is merely descriptive, but not generic, the mark may be registered on the Principal Register with a proper showing of acquired distinctiveness under §2(f), or on the Supplemental Register. See Express Mortgage Brokers Inc. v. Simpson Mortgage Inc., 31 USPQ2d 1371 (E.D. Mich. 1994) (369-CASH held merely descriptive but shown to have acquired distinctiveness as applied to mortgage brokering and mortgage-related services). Of course, the designation must also be used in the manner of a mark. See
TMEP §§1202
et seq. regarding use as a mark.
If the proposed mark is generic, the designation is unregistrable on either the Principal or the Supplemental Register. However, to support a refusal of registration on the ground that a telephone number is generic, the Court of Appeals for the Federal Circuit has held that it is not enough to show that the telephone number consists of a non-source-indicating area code and a generic term. The examining attorney must show evidence of the meaning the relevant purchasing public accords the proposed alphanumeric mark as a whole. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001). See also Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989) (use of confusingly similar telephone number enjoined). But see Dranoff-Perlstein Associates v. Sklar, 967 F.2d 852, 23 USPQ2d 1174, 1178 (3d Cir. 1992) ("[W]e decline to adopt the position espoused by the Second Circuit that telephone numbers which correlate to generic terms may be protectible as trademarks.... If telephone numbers that correlate to generic terms were granted protection, the first firm in a given market to obtain such a telephone number would, merely by winning the race to the telephone company, gain an unfair advantage over its competitors.") (footnotes omitted); 800 Spirits Inc. v. Liquor By Wire, Inc., 14 F. Supp.2d 675 (D.N.J. 1998) (800 SPIRITS generic for "gift delivery service of alcohol beverages").
Internet domain names raise some unique trademark issues. A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator (URL) including the beginning, ("http://www.") and the top level Internet domain name (TLD) (e.g., ".com," ".org," ".edu,") function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function. See
TMEP §§1215
et seq. regarding marks comprising domain names. TLDs may also signify abbreviations for the type of entity for whom use of the cyberspace has been reserved. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1176, 71 USPQ2d1370, 1373 (Fed. Cir. 2004) ("[T]he Board is correct that the overall impression of '.com' conveys to consumers the impression of a company or commercial entity on the Internet."). For example, the TLD ".com" signifies to the public that the user of the domain name constitutes a commercial entity. In re Martin Container, Inc., 65 USPQ2d 1058, 1060-1061 (TTAB 2002) ("[T]o the average customer seeking to buy or rent containers, "CONTAINER.COM" would immediately indicate a commercial web site on the Internet which provides containers."). See also Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) ("The addition of the word 'Company' [to an otherwise generic mark] only indicates that parties have formed an association or partnership to deal in such goods . . . ." and does not render the generic mark registrable).
If a proposed mark includes a TLD such as ".com", ".biz", ".info", the examining attorney must provide evidence that the term is a TLD, and, if available, evidence of the significance of the TLD as an abbreviation (e.g. ".edu" signifies an educational institution, ".biz" signifies a business).
Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. Oppedahl, 373 F.3d at 1174, 71 USPQ2d at 1372 (PATENTS.COM merely descriptive of computer software for managing a database of records and for tracking the status of the records by means of the Internet); In re Microsoft Corp., 68 USPQ2d 1195, 1203 (TTAB 2003) ("The combination of the specific term and TLD at issue, i.e., OFFICE and .NET, does not create any double entendre, incongruity, or any other basis upon which we can find the composite any more registrable than its separate elements. The combination immediately informs prospective purchasers that the software includes 'office suite' type software and is from a Internet business, i.e., a '.net' type business."); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) ("Applicant seeks to register the generic term 'bonds,' which has no source-identifying significance in connection with applicant's services, in combination with the top level domain indicator ".com," which also has no source-identifying significance. And combining the two terms does not create a term capable of identifying and distinguishing applicant's services."); In re Martin Container, 65 USPQ2d at 1061 ("[N]either the generic term nor the domain indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability."). See also Goodyear, 128 U.S. at 602 (the incorporation of a term with no source-indicating function into an otherwise generic mark cannot render it registrable). For example, if a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must refuse registration on the Principal Register under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. See
TMEP §1215.04.
Similarly, if a proposed mark is composed of generic term(s) for the applicant's goods or services and a TLD, the examining attorney generally must refuse registration on the ground that the mark is generic. See
TMEP §§1209.01(c)(i)
and
1215.05.
When examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole, including the TLD indicator. In Oppedahl, the Court of Appeals for the Federal Circuit cautioned that, while "[t]he addition of a TLD such as '.com' or '.org' to an otherwise unregistrable mark will typically not add any source-identifying significance," this "is not a bright-line, per se rule. In exceptional circumstances, a TLD may render an otherwise descriptive term sufficiently distinctive for trademark registration." 373 F.3d at 1177, 71 USPQ2d at 1374.
See also In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037(TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet).
If "AMERICA" or "AMERICAN" appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA'S FRESHEST ICE CREAM held incapable); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S FAVORITE POPCORN held merely descriptive). Typically these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. The examining attorney must look at each mark to determine whether it is capable, considering all relevant circumstances and case law. See
TMEP §1210.02(b)(iv)
and cases cited therein regarding use of terms such as "AMERICA," "AMERICAN," and "USA" in a way that is primarily geographically descriptive under 15 U.S.C. §1052(e)(2), primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3), or deceptive under 15 U.S.C. §1052(a).
The terms "NATIONAL" and "INTERNATIONAL" have been held to be merely descriptive of services that are nationwide or international in scope. See Jefferson Bankshares Inc. v. Jefferson Savings Bank, 14 USPQ2d 1443 (W.D. Va. 1989) (NATIONAL BANK merely descriptive of banking services); National Automobile Club v. National Auto Club, Inc., 365 F. Supp. 879, 180 USPQ 777 (S.D.N.Y. 1973), aff'd, 502 F.2d 1162 (2d Cir. 1974) (NATIONAL merely descriptive of auto club services); In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986) (INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries held incapable); In re Billfish International Corp., 229 USPQ 152 (TTAB 1986) (BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); In re National Rent A Fence, Inc., 220 USPQ 479 (TTAB 1983) (NATIONAL RENT A FENCE merely descriptive of nationwide fence rental services); BankAmerica Corp. v. International Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope); National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB 1978) (NATIONAL INSURANCE TRUST merely descriptive of services of handling administrative matters in locating suitable insurance coverage for attorneys).
Terms that identify the function or purpose of a product or service may be merely descriptive or generic under 15 U.S.C. §1052(e)(1). In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports clothing and game equipment); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (BURGER held merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jams and jellies).
Terms that identify the source or provider of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1) or generic. In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and skin guards); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000) (PSYCHOLOGY PRESS merely descriptive of books in field of psychology); In re The Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS COMPANY incapable for paint); In re The Phone Co., Inc., 218 USPQ 1027 (TTAB 1983) (THE PHONE COMPANY merely descriptive of telephones).
A term that is generic for goods is descriptive of retail store services featuring those goods, when the goods are not a significant item typically sold in the type of store in question. In re Pencils Inc., 9 USPQ2d 1410 (TTAB 1988) (PENCILS held merely descriptive of office supply store services). However, where the matter sought to be registered identifies the primary articles of a store or distributorship service, the term is considered generic. In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037(TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, conducted via the Internet); In re Candy Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for "retail, mail, and computer order services in the field of gift packages of candy"); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture and jewelry); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for retail outlets selling kits for building log homes); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE held generic for retail stores specializing in the sale of lingerie); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of products made of wicker); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES generic for retail book and record store services). The examining attorney, therefore, must analyze the term in relation to the services recited, the context in which it is used and the possible significance it would have to the recipient of the services. Pencils, 9 USPQ2d at 1411.
Slogans that are considered to be merely informational in nature or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry are not registrable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness). See
TMEP §1202.04
and cases cited therein.
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. The examining attorney must consider the mark in relation to the applicant's goods or services to determine whether a mark is deceptively misdescriptive.
The examining attorney must first determine whether a term is misdescriptive as applied to the goods or services. A term that conveys an immediate idea of an ingredient, quality, characteristic, function or feature of the goods or services with which it is used is merely descriptive. See
TMEP §1209.01(b).
If a term immediately conveys such an idea but the idea is false, although plausible, then the term is deceptively misdescriptive and is unregistrable under §2(e)(1). See In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. held deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils).
The Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively misdescriptive, that is, unless persons who encounter the mark, as used on or in connection with the goods or services in question, are likely to believe the misrepresentation. See Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYON held neither common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers).
As explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984):
The test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955), aff'd sub nom. S.C. Johnson & Son v. Gold Seal Co., 230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied, 352 U.S. 829 (1956). A third question, used to distinguish between marks that are deceptive under Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1), is whether the misrepresentation would materially affect the decision to purchase the goods. Cf. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).
If the misdescription represented by the mark is material to the decision to purchase the goods or use the services, then the mark should be refused registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a). See
TMEP §1203.02
and
1203.02(a)
regarding the distinction between deceptive marks and deceptively misdescriptive marks.
The examining attorney should consider and make of record, or require the applicant to make of record, all available information that shows the presence or absence, and the materiality, of a misrepresentation. The mere fact that the true nature of the goods or services is revealed by other matter on the labels, advertisements or other materials to which the mark is applied does not preclude a determination that a mark is deceptively misdescriptive. See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964) (DURA-HYDE held deceptive and deceptively misdescriptive of plastic material of leather-like appearance made into shoes); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (WOOLRICH for clothing not made of wool found not to be deceptive under §2(a)); Tanners' Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (SOFTHIDE held deceptive within the meaning of §2(a) for imitation leather material).
See also Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985); R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169 (TTAB 1985); and American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) regarding the issue of deceptive misdescriptiveness.
Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register. 15 U.S.C. §§1052(f) and 1091. Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances.
Extract from 15 U.S.C. §1052. 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 on account of its nature unless it--
(a) Consists of or comprises ... deceptive ... matter;. 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 and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996].
...
(e)
Consists of a mark which ... (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them....
Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), prohibits registration on the Principal Register of a mark that is primarily geographically descriptive of the goods or services named in the application. See
TMEP §1210.01(a).
Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), prohibits registration of a mark that is primarily geographically deceptively misdescriptive of the goods or services named in the application. See
TMEP §1210.01(b).
Prior to the amendment of the Trademark Act on January 1, 1994, by the North American Free Trade Agreement ("NAFTA") Implementation Act, Public Law 103-182, 107 Stat. 2057, the statutory basis for refusal to register primarily geographically deceptively misdescriptive marks was §2(e)(2).
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits registration of a designation that consists of or comprises deceptive matter, as well as geographical indications which, when used on or in connection with wines or spirits, identify a place other than the origin of the goods. See
TMEP §1210.01(c).
See
TMEP §1210.05(a)
regarding the distinction between marks that are primarily geographically deceptively misdescriptive under §2(e)(3) and marks that are deceptive under §2(a).
To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see
TMEP §§1210.02
et seq.);
(2) the goods or services originate in the place identified in the mark (see
TMEP §1210.03)
; and
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see
TMEP §§1210.04
et seq.). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see
TMEP §1210.04(c)).
To support a refusal to register a mark as primarily geographically deceptively misdescriptive, the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see
TMEP §§1210.02
et seq.);
(2) the goods or services do not originate in the place identified in the mark (see
TMEP §1210.03)
;
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see
TMEP §§1210.04
et seq.). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see
TMEP §1210.04(c))
; and
(4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services (see
TMEP §§1210.05(b)
et seq.).
In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh'g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).
Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, it was not necessary to show that the misrepresentation was likely to be a material factor in the consumer's decision to buy the goods or use the services in order to establish that a mark was primarily geographically deceptively misdescriptive. However, in California Innovations, the Court of Appeals for the Federal Circuit held that in view of the NAFTA amendments, a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3).
See
TMEP §1210.05(a)
for further information regarding the distinction between marks comprising deceptive matter under §2(a) and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3), and
TMEP §§1210.05(b)
et seq. regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser's decision to buy the goods or use the services.
As noted in
TMEP §1210.05(a)
, the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a). To support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see
TMEP §§1210.02
et seq.);
(2) the goods or services do not originate in the place named in the mark (see
TMEP §1210.03)
;
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see
TMEP §§1210.04
et seq.). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see
TMEP §1210.04(c))
; and
(4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services (see
TMEP §§1210.05(b)
et seq.).
Institut National des Appellations D'Origine v. Vintners Int'l Co., Inc., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984). See also In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh'g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).
See
TMEP §1210.05(a)
for further information regarding the distinction between marks comprising deceptive matter under §2(a) and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3), and
TMEP §§1210.05(b)
et seq. regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser's decision to buy the goods or use the services.
A mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.
A geographic location may be any term identifying a country, city, state, continent, locality, region, area or street.
Region. A particular, identifiable region (e.g., "Midwest" or "Mid-Atlantic") is a geographic location. In re Pan-O-Gold Baking Co., 20 USPQ2d 1761 (TTAB 1991) (primary significance of "New England" is geographic). On the other hand, vague geographic terms (e.g., "Global," "National," "International," or "World") are not considered to be primarily geographic, though they may be merely descriptive or deceptively misdescriptive under §2(e)(1). See
TMEP §1209.03(o).
Nicknames. A geographic nickname (e.g., "Big Apple" or "Motown"), or an abbreviation or other variant of the name of a geographic location is treated the same as the actual name of the geographic location if it is likely to be perceived as such by the purchasing public. See In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services, where the evidence showed that "Carolina" is used to indicate either the state of North Carolina or the state of South Carolina). Cf. In re Trans Continental Records, Inc., 62 USPQ2d 1541 (TTAB 2002) (O-TOWN found to be a "relatively obscure term" that would not be perceived by a significant portion of the purchasing public as a geographic reference to Orlando, Florida).
Adjectives. The adjectival form of the name of a geographic location is considered primarily geographic if it is likely to be perceived as such by the purchasing public. See In re Jack's Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (NEAPOLITAN held primarily geographically deceptively misdescriptive of sausage emanating from the United States, where the term is defined as "of or pertaining to Naples in Italy"); American Paper & Plastic Products, Inc. v. American Automatic Vending Corp., 152 USPQ 117 (TTAB 1966) (AMERICAN AUTOMATIC VENDING held primarily geographically descriptive).
Maps. A map or outline of a geographic area is also treated the same as the actual name of the geographic location if it is likely to be perceived as such. See In re Canada Dry Ginger Ale, Inc., 86 F.2d 830, 32 USPQ 49 (C.C.P.A. 1936) (map of Canada held to be the equivalent of the word "Canada"). Cf. In re Texsun Tire and Battery Stores, Inc., 229 USPQ 227 (TTAB 1986) (indicating that if the depiction of a map is fanciful or so integrated with other elements of a mark that it forms a unitary whole, then the map should not be considered primarily geographically descriptive).
Coined Locations. The mere fact that a term may be the name of a place that has a physical location does not necessarily make that term geographic under §2(e)(2). For example, names of amusement parks, residential communities, and business complexes, which are coined by the applicant, should not be refused. In re Pebble Beach Co., 19 USPQ2d 1687 (TTAB 1991) (17 MILE DRIVE not a geographic term, where it refers to a specific location wholly owned by applicant, and was coined by applicant to refer both to applicant's services and the place where the services were performed).
To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that is, that its primary significance be that of a geographic location. 15 U.S.C. §§1052(e)(2) and (3). See, e.g., In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (primary significance of NEW YORK held to geographic; Court was not persuaded by assertions that the composite NEW YORK WAYS GALLERY evokes a gallery that features New York "ways" or "styles"); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (evidence insufficient to establish that public in United States would perceive VITTEL as the name of a place where cosmetic products originate; Vittel, France found to be obscure); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (the primary significance of WESTPOINT is as the name of the United States Military Academy rather than the town in New York).
The fact that the proposed mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. See
TMEP §1210.02(b)(i)
et seq.
When a geographic term is combined with additional matter (e.g., wording and/or a design element), the examining attorney must determine the primary significance of the composite. See
TMEP §§1210.02(c)
et seq.
See
TMEP §1210.04(c)
regarding obscure or remote geographic marks.
The fact that the mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. Thus, if a geographic term has another meaning, the examining attorney must determine whether the primary significance is geographic. If so, refusal of registration under §2(e)(2), §2(e)(3), or §2(a) is appropriate. See, e.g., In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (THE NASHVILLE NETWORK held primarily geographically descriptive of television program production and distribution services, the Board finding that the primary significance of the term was Nashville, Tennessee, and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (the fact that MANHATTAN identifies an alcoholic cocktail does not alter the primary significance of that term as a borough of New York City); In re Jack's Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (the fact that NEAPOLITAN identifies, among other things, a type of ice cream does not alter the primary significance of that term as meaning "of or pertaining to Naples in Italy").
However, if the most prominent meaning or significance of the mark is not geographic, or if the mark creates a separate readily understood meaning that is not geographic, then a refusal under §2(e)(2), §2(e)(3), or §2(a) is not appropriate. See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff'd, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) (primary significance of HYDE PARK for men's suits is to suggest that the product is stylish or of high quality rather than to provide information about geographic origin); In re International Taste Inc., 53 USPQ2d 1604, 1605-06 (TTAB 2000) (because of other prominent, significant meaning of HOLLYWOOD as referring to the entertainment industry in general, doubt about
the primary significance of HOLLYWOOD was res
