Trademark Basics – Tips, Tools, & Helpful Explanations for Navigating the Trademark Registration Process

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When clients come in to discuss their potential trademark filings, they often have misconceptions about what makes a “good” trademark and what value a trademark can bring to a business.  That’s partly because trademarks (or “marks” for short) are easily confused with other types of intellectual property, especially copyright, which is a related but completely separate type of protection over creative works.  Confusion also stems from the somewhat counterintuitive nature of trademark law and the rules regarding trademark registration.

One way to understand what makes a “good” trademark is to know what the U.S. Patent and Trademark Office (USPTO) looks for when granting or denying trademark registration.  To that end, this will be the first in a series of posts on the most common hurdles to trademark registration that we see in our everyday practice.

Whether you’re considering a potential mark to use in your business or you’re already using a mark that you’re thinking about registering, familiarity with these basic trademark issues will make it easier to navigate the registration process and get the most brand value for your business.

DISCLAIMER – These posts are only intended to offer basic information about trademarks and cannot be considered legal advice.  If you have any questions about your particular trademark, contact us.

Trademark Registration Hurdle #1: Descriptiveness

It’s fairly common (and understandable) that clients want to their mark to convey to their customers what their product or service is.  However, from a trademark perspective, this can be problematic as we often have to warn clients that their mark is potentially descriptive.

From a trademark perspective, descriptiveness means that the USPTO may find that the mark describes qualities, ingredients, or characteristics of some or all of the goods or services offered under the mark.  The situation can be serious because a Descriptive mark may not be registrable, and thus not protectable, without resorting to significant expense.

One of the fundamental principles of trademark law is that the more unusual a mark is (i.e. the more unique or different from the goods and services it covers) the stronger the protection the mark offers.  The inverse is also true; the more descriptive the mark is of the goods and services, the weaker the protection—or in the case of merely descriptive marks or generic terms, no protection at all since the USPTO will completely refuse registration.  It’s therefore in a trademark owner’s interest to make the mark as non-descriptive as possible.  The more non-descriptive, the better protection the mark carries and the easier it will be to register with the USPTO.

But what does non-descriptive mean?

Trademarks are divided into four categories: Fanciful, Arbitrary, Suggestive, and Descriptive.  Fanciful, Arbitrary, and Suggestive marks are considered inherently distinctive and are registrable, while Descriptive marks are generally not registrable without evidence of acquired distinctiveness.  There is also a category called Generic, but there is no such thing as a “generic” trademark because generic terms can never be used as a trademark.

Marks that are Fanciful or Arbitrary have no connection to the goods and services they represent (famous examples include APPLE for computers or XEROX for copiers).  The difference between Fanciful and Arbitrary marks is that Fanciful marks are typically made-up words, e.g. GOOGLE and XEROX, whereas Arbitrary marks are actual words that bear no relation to the goods sold or services offered, e.g. APPLE, TWITTER, etc.

With Suggestive marks, there is a connection between the mark and the goods and services, but it’s only “suggested,” meaning that it requires the consumer to think or use their imagination to find the connection.  Last year a federal court in California held that PINTEREST was a “textbook example” of a Suggestive mark for a website that allows users to pin their interests on a virtual board and share it with others.

As mentioned above, Descriptive marks describe some aspect of the goods or services they cover.  For example, a few weeks ago the USPTO refused to register the mark WEEPING ANGEL, finding it merely descriptive of funerary urns featuring (you guessed it) a weeping angel (see case summary and photos here), and a recent federal case upheld NOPALEA as descriptive for a dietary supplement containing nopal juice.  Depending on how descriptive the mark is, a Descriptive mark may be able to “acquire distinctiveness,” which typically requires the mark owner to show continuous, exclusive, and substantial use of the mark in commerce (not always an easy burden).  Really descriptive marks (also called merely descriptive) cannot even use acquired distinctiveness to become registered.

Generic words are a step beyond describing the goods and services in that they use the actual words or synonyms for the goods/services in the mark.  Websites are commonly found to be generic—Hotels.com, Sportsbetting.com, and Buyautoparts.com were all refused registration because they are generic for the services offered by the website. See the case summary for Hotels.com here.

Choosing a less descriptive mark will help you avoid a descriptiveness rejection at the USPTO.  Moreover, beyond registrability, the less descriptive your mark, the stronger it is.  We’ll cover this more in an upcoming post, but for now, the chart below should be a useful guide:

GMIP-photo

Bottom line: Choosing a mark is a challenging task, and business owners often want to pick something that will give customers a good idea about the product or services offered under the mark.  But the more descriptive a mark is, the less trademark protection you get and the harder it is to register.  This can make it even more challenging to distinguish a business in the marketplace and make it harder to compete for customers in the long run.

Stay tuned for our next post on: Names in Trademarks

B&B Hardware v. Hargis Industries and the implications for Trademark Law Practice

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hitech

Best in class…and infringed by SEALTITE

Imagine this situation: you have a trademark and someone else is using and trying to trademark a similar name. You decide to sue them for trademark infringement in district court and oppose the registration at the USPTO. Your opposition is successful and is based on likelihood-of-confusion grounds (the same grounds that will win the day in court) – does the district court judge have to abide by the USPTO’s determination? The U.S. Supreme Court’s recent decision in B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, 575 U.S. __ (2015), says yes, but only under certain conditions. The Court’s decision leaves trademark practitioners struggling to grasp = level of impact it will have, if any, on the everyday practice of trademark law.

The second of two trademark cases heard by the Court in 2014, B&B Hardware addresses the question of whether the doctrine of issue preclusion applies to registration decisions of the USPTO’s Trademark Trial and Appeal Board (TTAB) in later civil litigation over trademark infringement.  Issue preclusion prevents parties from re-litigating issues that have already been decided by a court (or in this case, an agency)—meaning that if a second case arises between the same parties related to the same issue as the first case, the first court’s decision on the issue stands, and the second court is precluded from finding differently on that issue. Registration opposition and an infringement action are two separate trademark proceedings that can be filed by a trademark holder over similarities between the same two marks, and thus there is the potential for issue preclusion to apply. Here, B&B Hardware opposed Hargis Industries’ registration of the mark SEALTITE on the basis that it was too similar to its own registered mark, SEALTIGHT— and while the TTAB was deciding the registration issue, B&B brought suit against Hargis for trademark infringement in District Court. Ultimately, the TTAB sided with B&B, barring registration of SEALTITE on the grounds that it was likely to be confused with SEALTIGHT. B&B then argued that the TTAB’s likelihood-of-confusion analysis should preclude the district court from conducting its own analysis and determining an opposite result.

In the 7-2 decision written by Justice Alito (with Justices Thomas and Scalia dissenting), the majority reversed the Eighth Circuit and held that issue preclusion does apply to administrative agencies such as the TTAB where the issue decided by the agency is “materially the same” as the issue before the court. The Court determined that even though the likelihood-of-confusion analysis conducted by the TTAB in the context of registration varies somewhat from the likelihood-of-confusion analysis conducted by a court in an infringement suit, they are not materially different standards.

Although, as Ronald Mann of SCOTUSblog points out, the decision may well be cited for its clear recitation of the doctrine of issue preclusion, the extent to which it will affect the everyday practice of trademark law is less clear.  The Court itself acknowledged that for “a great many registration decisions issue preclusion obviously will not apply because the ordinary elements will not be met”  (such as when there are different parties or issues presented).  And in her concurrence, Justice Ginsberg clarified her understanding that the decision would not invoke issue preclusion for contested registrations where the likelihood-of-confusion analysis only compared two marks in the abstract, and not their marketplace usage.

It appears that most legal commentators agree that the decision is unlikely to affect most trademark registrations. Laura Chapman and Toni Qui of the National Law Review suggest that litigants can attempt to bypass preclusion from a negative TTAB decision by appealing to the district court for a de novo review (which the Court also alluded to). John Welch of TTABlog agrees that the de novo review is a critical loophole, and adds that B&B Hardware may just be the very rare case where the opposition to registration and infringement action were simultaneous, and the TTAB’s decision was not appealed.

Thus, while the stakes of not appealing a negative decision from TTAB on registration have been raised somewhat in that TTAB’s analysis could carry forward into any future infringement litigation, the likelihood that issue preclusion will affect most trademarks seems pretty remote. There may be some carryover for patent law, says Dennis Crouch of PatentlyO, since the same reasoning the Court applied to the TTAB could likely be applied to the Patent Trial and Appeal Board (PTAB)—unless, unlike trademark’s Lanham Act, the Court views patent statutes as barring the application of issue preclusion. All in all, SCOTUSblog may be right that the biggest impact the case may have on trademark practice could well be the Court’s descriptions of the processes and procedures of trademark registration and infringement litigation as they get applied and interpreted in future litigation.

Redskins: Impact and fallout

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Reg. Number 0986668

Reg. Number 0986668

As many have heard, the USPTO canceled many of the Washington Redskins’ federal trademarks.  Below, I’ve reposted a good article from fellow Vermonters that lays out the history, the case, and the decision of the USPTO.  I’d also suggest reviewing these two articles:

Prof. McKenna at Patentlyo

Randazza at CNN

In all, these three posts lay out what exactly the Redskins lost, why they lost it, and what the implications are.  To summarize: while the Redskins organization is undoubtedly disappointed the impact of the loss is not extremely significant. The greater impact may be on what role the disparagement limitation to federal registration takes in future challenges to clearly established marks.

[This post was republished from the WebTM blog with the permission of my colleagues, Gordon Troy and Lawrence Stanley]

REDSKINS Marks Cancelled, Found to Disparage Native Americans

On June 18th, the United States Trademark Trial and Appeal Board (TTAB) granted a petition to cancel six registrations for word and design marks containing the word, REDSKINS for entertainment services. The action, Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185 (June 18, 2014) (“Blackhorse”), was brought by six Native Americans (later narrowed to five), who argued that the word “Redskin” was disparaging to Native Americans. Two of the three judges on the TTAB panel agreed and one dissented.

This was the second cancellation action brought by Native Americans against trademarks owned by the Washington Redskins. In the first, Harjo v. Pro Football, Inc., brought in 1992, the TTAB granted the petition for cancellation, but the federal courts ruled that the petitioners were barred by the doctrine of laches — i.e., they had waited too long after reaching the age of majority to file their action.

The registrations sought to be cancelled in Blackhorse were registered between 1974 and 1990. When the petition was filed in 2006 (shortly after the federal courts dismissed the Harjo petition), each of the petitioners had only recently reached the age of majority. Laches was no longer at issue.

Under 15 USC § 1052 of the Lanham Act, marks that “may disparage” persons or institutions “or bring them into into contempt or disrepute” are forbidden from being registered. Moreover, while the Lanham Act requires many cancellation petitions to be brought within five years of registration of the disputed mark, it provides no statute of limitation for cancellation petitions based on disparagement. Under 15 U.S.C. § 1064(3), such petitions may be brought “[a]t any time.” In the final Harjo appeal, Pro-Football, Inc. v. Harjo, 415 F.3d 44 (2005),the Court speculated that Congress “may well have denied companies the benefit of a statute of limitations for potentially disparaging trademarks for the very purpose of discouraging the use of such marks,” citing In re Riverbank Canning Co., 25 C.C.P.A. 1028, 95 F.2d 327, 329 (1938), which noted that the “field is almost limitless from which to select words for use as trademarks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Nevertheless, there was no fixed test for determining whether a mark is disparaging until Harjo. As re-stated inBlackhorse, the test is two-fold:

  1. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?
  2. Is the meaning of the marks one that may disparage Native Americans?

In answer to the first question, the TTAB found that REDSKINS, even when used in connection with the presentation of football games, clearly refers to Native Americans. This is demonstrated by the design marks (visible on Washington Redskins helmets and elsewhere) and by the use of Native American garb and headdresses by the Washington Redskins’ band and cheerleaders (called “Redskinettes”).

In answering the second question, the TTAB noted that in addition to other evidence, it must take into account the views of a “substantial composite,” but not necessarily a majority, of the group which the mark is claimed to disparage. In addition, it had to find that REDSKINS was disparaging in connection with entertainment services (i.e., the presentation of football games) at the time the marks were registered.

Petitioners submitted two types of evidence to prove their case. General evidence as to the meaning of the word REDSKINS consisted of dictionary definitions, reference books and testimony from experts in linquistics. Specific evidence as to the views of Native Americans consisted of personal testimony and letters, newspaper articles and official records, including a 1993 Resolution of the National Congress of American Indians declaring that the REDSKINS trademarks were “offensive and disparaging.” The evidence left no doubt in the minds of the majority that REDSKINS was disparaging at the time the marks were filed. The respondent’s argument, that REDSKINS had acquired a separate meaning as the name of a football team, thereby neutralizing any disparaging effect, was rejected.

The dissent, on the other hand, believed that the petitioners failed to prove that the term was disparaging at the time of registration when used in connection with football. Furthermore, he said, dictionary definitions that labelled REDSKIN as “usually offensive” left open the possibility that it might not be in certain contexts, one of which could be football.

The TTAB ruling does not affect the ability of the Washington Redskins owner to continue using its REDSKINS trademarks. The only issue at stake in the case was whether federal law permitted registration of the mark in the US Patent and Trademark Office, thereby invoking the additional protections that registration provides. There is no question but that the USPTO made the right decision. Indeed, no federal agency should put a stamp of approval on conduct (or a trademark) that plainly disparages a segment of the population on the basis of race, religion, ethnicity, gender or sexual orientation.