The U.S. Patent and Trademark Office

Cynthia Henderson Attorney-Advisor Office of Intellectual Property Policy and Enforcement (571) 272-9300 Cynthia.henderson@uspto.gov

Overview of Trademarks

Topics International Standards of

Protection under TRIPS Introduction to Trademark

Protection in the United States Procedures to Obtaining a U.S.

Federal Trademark Registration Distinctiveness and other Common

Refusals

Article 15, TRIPS Any sign, or combination of signs, capable of

distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.

Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs shall be eligible for registration as trademarks.”

Definition of a Trademark

Any word, name, symbol or device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source

Types of Trademarks

Word Marks KODAK Design Marks

Composite Marks containingboth words and design

Unusual Trademarks

Shape: Bottle shape for soda pop Color: Pink color for insulation

Sound: Three chimes sound for television broadcasting services

Scent: Plumeria flower blossom scent for sewing thread

Motion: Flying pegasus for movie studios

Types of Trademark Protection in the U.S.

Common Law protection derived from

use State Registration

registered with one or more U.S. states

Federal Registration registered in the United

States Patent and Trademark Office

Statutory Authority

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

Federal Registration of a Trademark

Provides notice to others of marks in use in commerce in the U.S.

Provides access to the federal courts

Provides prima-facie evidence of ownership

Provides access to anti-counterfeiting statutes

Permits enforcement of rights

Provides a basis for foreign filing

Registration May be Applied To:

trademark associated with goods or products

service mark associated with the delivery of services

certification mark associated by the characteristics of someone’s goods or services

collective mark indicated by membership in an organization

Applications May be Filed Based on:

Existing use of the mark in commerce

Intention to use the mark in commerce

Foreign application or registration

Trademark Office Mission

Our mission is to register trademarks The Trademark Act provides that “no

trademark shall be refused registration on the Principal Register unless…”

Examination Process at USPTO1. File Application.2. Examination by Examining Attorney –

Allowed, Amended, or Refused.3. If Allowed, Notice of Allowance and

publication in the Official Gazette. 4. If Refused, appeal to the Trademark Trial

and Appeal Board.5. If Refusal is affirmed:

Appeal to U.S. District Court de novo; or Appeal to Federal Circuit on administrative

record.

6. The Office of the Solicitor defends Director of USPTO in ex parte appeals of TTAB decisions.

7. After publication, Opposition period. Both parties (Opposer and Applicant) have right to appeal the TTAB decision.

8. If no Opposition, Registration issues.9. Cancellation proceeding available to cancel

a registration. Both parties have right to appeal TTAB decision. In general, USPTO not involved in inter partes appeals of TTAB decision.

Examination Process at USPTO

POST-REGISTRATION REQUIREMENTS

Requirements in the First Ten Years

First Filing: A Declaration of Continued Use or Excusable Nonuse, filed between the 5th and 6th years after the registration date.

Second Filing: A Combined Declaration of Continued Use or Excusable Nonuse and an Application for Renewal*, filed between the 9th and 10th years after the registration date.

*For Registrations under §66(a), only a Declaration of Use is required. Renewal must be made at the International Bureau, under Article 7 of the Madrid Protocol.

Most Common Grounds for Refusal

Lack of Distinctiveness

Likelihood of Confusion

Article 15, TRIPS “Any sign, or combination of signs,

capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.”

U.S.: Section 2(e)(1) of the Lanham Act

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register . . . unless it . . . consists of a mark which, when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them. . .”

Capable of

Distinguishing Goods or Services?

F a n c ifu l o r A rb itra ry W o rds"X E R O X "

In h e ren tly d ist in c tive

S u g ge s tive"S U N K IS T"

In h e re n tly D is tin c tive

M e re ly D e sc rip tive"C H O C O L A T E F U D G E "

N o t In h ere n tly D is t in c tiveC a n A cq u ire D is tinc tive n e ss

G e n e ric"S O D A "

N o S ou rce Ide n tifyin g C ap a c ity

S o u rce In d ica tin g C a p a c ityS p e c trum

The Merely Descriptive Test A proposed mark

is merely descriptive if it describes any significant aspect of the goods/services

PPurpose CCharacteristic QQuality UUse/Users IIngredient FFunction FFeature

Examination for Distinctiveness: Merely Descriptive? One of the most difficult determinations is

often whether the proposed mark is “suggestive” or “merely descriptive”. When looking at the applicant’s proposed mark, if some imagination, thought or perception is required to determine the nature of the goods or services, the proposed mark is considered suggestive and no refusal is issued. However, if there is no such “step” in reasoning required and the proposed mark instead “immediately identifies” some attribute of the goods or services, it is merely descriptive.

Examination for Distinctiveness: Merely Descriptive? What factors are considered?

Third party registrations are not conclusive on the question of descriptiveness (each case must stand on its own merits, and not simply registered because other such marks appear on the register).

First and only user: simply because an applicant may be the first user does not alone justify registration

Examination for Distinctiveness: Merely Descriptive? What factors are considered?

If the mark is a composite mark, does the combined term evoke a new and unique commercial impression? Does it create a unitary mark, or does it have a bizarre or incongruous meaning? SNO-RAKE held not merely descriptive of a snow removal hand tool; LA YOGURT held registrable with a disclaimer of “yogurt”

Examination for Distinctiveness: Is the Term Merely Descriptive? What factors are considered?

The fact that a term is not found in a dictionary is not controlling on the question of registrability; i.e., BREADSPRED held merely descriptive of jellies and jams.

A determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. What significance will the mark would have on the average purchaser of the goods or services in the marketplace?

Additional Considerations… Acronyms may be arbitrary,

descriptive or generic. DJ : Generic for disc jockey services DJ: Merely descriptive of the subject

matter of magazines for disc jockeys DJ: Arbitrary for “diamond jewelry”

since no one uses the acronym to refer to diamond jewelry

Examination for Distinctiveness: Deceptively Misdescriptive? In U.S. practice, a mark may be

deceptively mis-descriptive if it:(1) Mis-describes some aspect of the goods; and(2) Consumers are likely to believe the mis-

description.

Note that if the mis-description is false, but not believable, the mark is not mis-descriptive; it’s arbitrary. Likewise, if the description is not false, the mark is descriptive rather than mis-descriptive.

Examples Examples:

WOODEN: For plastic furniture. Consumers might believe

that the furniture is indeed made of wood. Hence, WOODEN may be mis-descriptive.

For soft drinks. Consumers would not believe that the mark describes the goods, and the term is thus neither descriptive nor mis-descriptive.

SILK: For cotton shirts. For computers.

Examination for Distinctiveness: Would These Be Refused? SPANISH CUISINE for restaurants? THE HUNTER’S FRIEND for hunting

gloves? LEMON AID for lemon scented dish

detergent? SMOOTH HANDS for skin cream? JEWELTASTIC for jewelry? ELECTRIC OUTLET for retail electronics

store?

Is it Ever Possible to Register a Non-Distinctive Designation in the U.S.?

It is possible to register a merely descriptive designation on the Principal Register if it has acquired distinctiveness (descriptive matter may also be disclaimed if mark contains other distinctive components).

Generic matter cannot be registered (unless the mark contains other distinctive components and the generic matter is disclaimed).

Acquired Distinctiveness If a proposed mark is merely descriptive,

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

Acquired Distinctiveness There are three types of evidence that may

be used to establish acquired distinctiveness: A claim of ownership of one or more prior

registration on the Principal Register of the same mark for goods or services that are the same or related to those named in the pending application;

A statement that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made;

Actual evidence of acquired distinctiveness.

TRIPS Article 16 “The owner of a registered trademark

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

U.S.: Section 2(d) of the Lanham Act

“No trademark . . . shall be refused registration . . . unless it . . . so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods [or services] of the applicant to cause confusion, or to cause mistake, or to deceive . . .”

2-part Test for Likelihood of Confusion

COMPARE THE MARKS

Identical Marks Similar Marks

Sound Appearance Meaning

COMPARE THE GOODS/SERVICES

Identical Goods/Services

Relatedness of Goods/Services Similar types Use of the

goods/services together

Channels of Trade/Marketing

Likelihood of Confusion

STRATEGYN vs. STRATEGEN goods: computer software for business strategy plans vs.

computer software for marketing and sales management Likelihood of confusion exists?

SPRAYZON vs. SPRAY-ON Goods: industrial cleaners and degreasers vs. cleaner

for floors and woodwork Likelihood of confusion exits?

LITTLE PLUMBER vs. LITTLE PLUMBER Goods/Services: liquid drain opener vs. advertising

services related to plumbing Likelihood of confusion?

Likelihood of Confusion

LASERSWING vs. LASER Goods: golf clubs vs. golf balls and golf clubs Likelihood of confusion exists?

COUNTRY ROCK CAFÉ vs. HARD ROCK CAFÉ Goods/Services: Clothing vs. restaurants and

clothing Likelihood of confusion exists?

EL SOL vs. SUN Goods: clothing vs. footwear Likelihood of confusion exists?

Thank you!