Author: Eric Waltmire

Eric Waltmire is a registered patent attorney at the Erickson Law Group, PC. He can be contacted at blog@waltmire.com.
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Use it or lose it: Android Trademark Abandonment and Revival

ANDRIODIn 1998, Erich Specht formed Android Data Corporation (ADC) and began selling e-commerce software under the trademark Android Data. ADC later transferred its assets, including the trademark, to Andriod’s Dungeon Inc. (ADI), which was owned by Specht. In 2009, Specht and ADI filed a trademark infringement lawsuit against Google based on Google’s use of the Android mark to refer to its mobile operating system. But Specht and ADI lost.

ADC lost because it stopped using the Android Data mark in 2002 when it lost all of its customers and essentially went out of business.

Trademark Rights Tied to Use

Trademark rights exist in conjunction with the use of the mark in the sale of goods or services in business/commerce. When the owner stops using the trademark through sales or licensing for a period of time, the owner can loose its rights in the trademark. This is called abandonment. And this is what happened to Specht and ADI in the case of Specht v. Google, 758 F.Supp.2d 570 (N.D. Ill. 2010), aff’d, 747 F.3d 929 (7th Cir. 2014).

After abandonment, anyone can grab the trademark through use or by filing an intent to use trademark application. Google grabbed the Android mark in 2007 when it launched its operating system.

Trademark Abandonment

The Lanham act provides “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment….” 15 U.S.C. § 1127. This means that after three years of nonuse there is a presumption that the mark has been abandoned.  But, the trademark owner can rebut that presumption by presenting evidence that during the three years the owner formulated an intent to resume use of the trademark in commerce. Therefore it is often difficult to determine, from public ally available information, whether

Maintaining an Email Addresses & A Ghost Website is Not Enough

In the Specht case, Specht and ADI argued the use of email addresses containing @androiddata.com and the maintenance of a website at androiddata.com after 2002 was sufficient use of the mark to avoid abandonment. The trial court disagreed. The court found that the use of an email address to identify an Internet host computer does not constitute a bona fide use of the trademark in commerce.

Regarding the website, the court noted that the Plaintiffs did not claim  site offered any price information about the Android Data software, information about how a visitor to the website could license the software, or detailed information and pricing on ADI’s services. Further, ADI did not license or sell the Android Data software. The court concluded that Specht and ADI could not preserve its trademark by “posting the mark on a functional yet mostly purposeless website.”

ADI lost rights in the ANDRIOD DATA mark because it stopped using it without a demonstrated intent to resume use of the mark. Google was able to acquire rights in the ANDRIOD mark because ADI abandoned it through non-use.

Use It or Risk Loss

If you want to maintain ownership over a trademark it is best to continue using it in the sale of goods or services. If you stop using the mark too long, you can loose your trademark rights in the mark.

 

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Record Patent Assignments or Risk Loss of Rights

The case of CMS Industries, Inc. v. L. P. S. International, Ltd. is about how to loose rights in patents by not recording ownership changes with the U.S. Patent and Trademark Office (USPTO). It involved the seller trying to tell the public it was doing one thing (selling patents to a subsidiary company) while secretly reserving ownership for itself. It failed.

SEE International, Inc. assigned, in a first assignment, its rights in six patents to SEE’s subsidiary, Shoplifter International. But on the same day SEE and Shoplifter International entered into a second agreement purporting to transfer back to SEE all of the rights transferred to shoplifter under the first assignment.

The first assignment transferring rights to shoplifter international was recorded with the patent office. The second assignment was not.

Later Shoplifter International entered bankruptcy and its assets, including the six patents, were sold to a third party, Elmer Whitaker.

Whitaker’s licensee CMS filed a lawsuit against LPS international, another subsidiary of SEE. CMS Industries, Inc. v. L. P. S. International, Ltd., 643 F.2d 289 (5th Cir. 1981). LPS and SEE claimed that the second unrecorded agreement prevented CMS from winning its lawsuit and that SEE still had rights in the six patents.

But because SEE failed to record the second agreement with the USPTO, the second agreement was unenforceable against Whitaker who had no knowledge of it at the time that Whitaker acquired rights in the patents. The court held that Whitaker was the proper owner of six patents.

Patent Ownership Recording System

SEE failed because 35 U.S.C. 261, which provides “An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

That means that if an assignment is not recorded at the USPTO, it will not be superior to rights obtained by a third party for value if that third party did not have knowledge of the unrecorded assignment.

This provision is similar to many state-based systems of recording ownership of land.

Section 261 encourages patent owners to file (record) evidence of their ownership of a patent with the USTPO. This allows people who enter into transactions regarding those patents to look to the public record to determine whether the person they’re dealing with is the actual owner or not.

The recording system discourages a seller from selling rights to a first person and then selling the same rights to a second person. The first person will have an incentive to record that transfer with the USPTO because of the protections provided by section 261.

If the first person records at the USPTO, the second person, before proceeding with the transaction, can check the patent office to see that the first person is the owner. The second person then will not proceed with the transaction from the original seller who no longer has rights in the patents.

Record or Be At Risk

Therefore, when you purchase patent rights it is very important for you to record at the USPTO the assignment (or other transfer document) transferring those patent rights to you. Otherwise you could lose rights in the patents to someone who purchases rights in the patents later without knowledge of your ownership/assignment.

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My Use is Fair: Responding to Trademark Cease and Desist

FairUseFarzad and Lias Tabris were auto brokers. They operated websites at buy-a-lexus.com and buyorleaselexus.com connecting buyers with dealers selling Lexus vehicles.

Toyota, which owns the Lexus brand, sued the Tabris’ for trademark infringement, but lost.

Toyota lost because the Trabris’ use was a “fair use” in the case of Toyota Motor Sales, USA, Inc. v. Tabari, 610 F. 3d 1171 (9th Cir. 2010)

When Trabris’ used the Lexus trademark they were referring to actual Lexus vehicles. If they didn’t use the term “Lexus,” how could they let customers know the type of vehicles that they broker?

Nominative Fair Use Defense

A defendant may succeed with a nominative fair use defense if: (1) the product is not readily identifiable without using the trademark, (2) the defendant used no more of the mark than was necessary, and (3) the use did not falsely suggest the defendant was sponsored or endorsed by the trademark owner.

As just explained on the first factor, the Trabris’ could not let customers know the type of vehicles that they broker without using the Lexus mark.

Regarding the second factor, at the time of trial the Trabris’ did not use the Lexus logo, font, or distinctive styling on the websites. Therefore, when they used the plan text “lexus” in the domain name and on the website they were using no more of the mark than was necessary.

Third, the contextual use of Lexus in the domain name did not make a false suggestion of endorsement. The court stated:

Because the official Lexus site is almost certain to be found at lexus.com (as, in fact, it is), it’s far less likely to be found at other sites containing the word Lexus.

On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder…

Consumers who use the internet for shopping are generally quite sophisticated about such matters and won’t be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain.

The court further dismissed the argument that consumers would be confused before encountering the Tabris’ disclaimer used on the site, which provided “We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker.” The court stated:

But nothing about the Tabaris’ domains would give rise to such confusion; the Tabaris did not run their business at lexus.com, and their domain names did not contain words like “authorized” or “official.” … Reasonable consumers would arrive at the Tabaris’ site agnostic as to what they would find. Once there, they would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris’ website is sponsored by Toyota.

Therefore the court noted that when a customer arrives at a website with a trademark plus additional terms (except for words that imply a sponsorship or endorsement) in the domain name, the customer will be agnostic as to whether the website is authorized by the trademark holder or not. The customer will consider the content of the website to determine whether it is authorized by the trademark holder or not.

Responding to a Cease and Desist Letter

If you are using a mark to refer to the genuine product carrying the mark, then you might be able to assert the nominative fair use defense.

You will have a better chance of succeeding with a nominative fair use defense if you (1) do not use the trademark holder’s logo, distinctive style, or font when using the trademark, and (2) do not use any words such as “authorized,” “official,” or similar words that could indicate a sponsorship or endorsement by the trademark owner.

The court stated that a defendant is not required to use a disclaimer in order to win with a fair use defense. But, a disclaimer will strengthen the defense.

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They Have a Patent, Or Do They? Granted Patents & Published Applications

Published patent applications look similar to granted patents. So it is not unusual for a published patent application to be mistaken for a granted patent.

Not every patent application results in a granted patent. So even if a patent application publication exists, it doesn’t necessarily mean that the application will result in a patent.

In this post I’ll point out the differences between a patent application publication in a granted utility patent.

The following image is an excerpt from the front page of granted US Patent No. 8,000,000 (the ‘000 patent):

GrantedPatent

The following image is an excerpt of the front page of the Patent Application Publication No. US 2008/0262568 (the ‘568 application), which later became the granted patent above.

PatentApplicationPublication

The patent application publication is not a granted patent. The patent application publication is simply a published application. In the example above, the ‘568 publication was published on October 23, 2008, but the ‘000 patent was not granted until August 16, 2011.

The patent application publication exists to let the public know of the contents of a patent application even if it doesn’t result in a patent. The contents of the patent application therefore become prior art based on the date it was published. If a patent doesn’t result, the public can benefit from the knowledge provided in the published patent application.

Title

The first difference between a patent application publication and a granted patent is that the patent application publication provides “United States Patent Application Publication” in the upper left corner of the front page, but the granted patent provides “United States Patent” in the same area.

Number Format

Second, you should note that the number format is different between a patent application publication in a granted patent. A patent application publication generally begins with a year followed by a “/” and then a number. In the example above the year is 2008 followed by a slash followed by a sequential number 0262568.

In contrast the patent application number is usually represented as a unitary number with commas between the hundreds and the thousands portion, and between the thousands and the millions portion of the number. Beginning in 1912 utility patent numbers entered the millions. You can see a full list of the patent numbers by year here. Currently we are in the 8 million range for patent numbers.

Date

Under the patent number on a granted utility patent “Date of Patent” is provided adjacent the date. In contrast, a patent application publication provides “Pub. Date” adjacent the date under the publication number.

Paragraph and Line Numbering

In a granted US utility patent, line numbers are provided in increments of five and are located between the first and second column of each page of text as shown here:

GrantedPatentText

In a patent application publication line numbers are not provided, instead paragraph numbers proceed each paragraph as shown here:

PatentApplicationPublicationText

These are some of the ways that you can distinguish between a patent application publication and a granted patent.

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My Competitor Has a Patent, Will My Product Infringe?

PatentPending“Its patented.” “They have a patent on it.” “It’s patent pending.” “You cannot sell that because I have a patent on it.”

Many statements get thrown around in the marketplace about patent rights.

But what do these statements mean? Are these statements being used correctly? What rights does the competitor actually have?

If you are faced with claims that a competitor has a patent or has patent pending, you want to know the impact to your business and your ability to compete.

Does my competitor have a patent or just a pending application?

Often times you hear “I have a patent” or “It’s patented”, when the competitor merely has a patent application filed. Also, “I have a provisional patent” is often used. But there’s no such thing as a provisional patent. The speaker probably means “I have a provisional patent application.”

So the first step is to determine whether the competitor has a granted patent or only a pending patent application.

Patent law encourages patent owners to mark their products/services with an indication that the product/service is covered by a granted patent. If you have a patent number then it’s obvious that there is a patent. However, you need to make sure the number is a patent number for a granted patent, and not a patent application number or a patent application publication number.

Granted patents look somewhat similar to published patent applications. So, published patent applications are often believed to be issued patents, but the published patent application is merely a pending application that might or might not become a patent.

Not every patent application results in a patent. Even if the competitor has a pending patent application, the competitor might not ultimately obtain a patent.

On the other hand the competitor might indeed obtain a patent. Therefore, it is important to investigate claims that a product is “patented” or that a patent application is filed.

But, don’t give up at the mere mention of a patent. The competitor might not obtain a patent, as I mentioned. Or the competitor might only get a very narrow patent that doesn’t cover your product.

How do I know whether a patent application has been filed?

If the product or product packaging or advertising material related to the product or service provides “patent pending,” that’s a good indication that a patent application has been filed on at least some part of the product or service.

However, sometimes product or service material is not marked with “patent pending.” So the absence of “patent pending” alone is not enough to know you are in the clear.

Another way that you might find out that the competitor has a patent application is if you hear this from others in the industry or marketplace.

Once you have some indication that a patent application is filed, you can do a search of the published patent applications to determine whether the application in question is publicly available.

Patent applications are generally secret (not published) for 18 months after they are filed. So it’s possible that you won’t be able to find the competitors patent application even though it is filed.

My competitor’s patent application is secret: What can I Do?

If you know or suspect that the competitor has a patent application filed, but you can’t find the competitors patent application, then it’s possible that the application is secret.

If the application is secret, you can have a prior art search performed to determine if there are any safe harbors that will give you freedom to operate.

What is a prior art safe harbor?

Safe harbors are often found in descriptions of old expired patents. Safe harbors can also be found in  other publications and other prior art. Since patents are only granted on inventions that are new, expired patents disclose configurations that are not capable of being patented without new additions or features. These areas that are not capable of being patented are the safe harbors.

It is not possible to “re-patent” an invention. But, it is possible that a competitor or third party could come up with a new variation, new feature, or other new attribute of an old invention that could be patented. Even if the competitor gets a patent on the new variation, new feature, or other new attribute, that patent could not cover the old unmodified invention described in the old expired patent.

So you have to look at old patents very carefully to determine what is a safe harbor, i.e. what cannot be  patented because it is old.

The end goal of a prior art safe harbor analysis is to determine whether your product is squarely described in an old expired patent(s) (or other prior art) so that it is unlikely that your competitor’s patent application could cover your product.

My competitor’s patent application is publicly available

If the patent application is publicly available, you can have a patent attorney review the contents of the patent application to determine what the competitor is seeking patent protection on.

It is often difficult to predict exactly what patent coverage the competitor could obtained under a pending patent application. This is because the patent applicant can amend the claims of the patent application during the negotiation stage (prosecution stage) with the Patent Office. Amendments to the claims often change the scope of patent protection claimed. Therefore analyzing a pending patent application is somewhat like hitting a moving target, i.e. it can be difficult to predict the scope of the patent claims.

However, as described above, a prior art search can be conducted to determine the safe harbors that provide you freedom to operate.

My competitor has a patent

If you know the patent number of the competitors patent, a patent attorney can review the patent to determine whether it could potentially cover your product/service and create a risk of patent infringement.

This analysis involves reading the patent and understanding the meaning of the claim terms, as well as studying the file history where the applicant communicated with the patent office about the patent application. Often the analysis also includes reviewing prior art patents to determine what is old (a safe harbor) and cannot be covered by the patent.

If it appears that one or more patent claims covers your product, it is possible to do a prior art search to determine whether or not those claims are valid.

If prior art discloses all the elements of the competitor’s patent claim at issue, then it is possible to obtain an attorney’s opinion that the claim is not valid. This is called an invalidity opinion. If the patent claim is not valid, it should not be able to be enforced against you.

However, there’s always a risk that the patent owner could disagree with your invalidity position and could sue you. Patent claims are presumed to be valid. So, the burden is on you to show that the patent claim is invalid.

Conclusion

Claims that your competitor has patent rights should be investigated. This article covered some of the steps one might take when faced with a competitor’s patent claim.

Photo credit to flickr user zepfanman under this creative commons license. The photo above is cropped from the original photo.

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How to Obtain Broad Patent Protection: Describe Alternate Versions of the Invention

US4743262_WrittenDescriptionClients often wonder why a patent application on a relatively simple invention is relatively long. The answer is that even the most simple inventions are not simple to describe properly in a patent application.

To write a strong patent application, the invention needs to be described to a level of detail that many clients would not have thought necessary.

Its not unusual that a client brings a 3 to 5 page provisional patent application that the client wrote themselves, and the non-provisional application I write is at least three to four times as long, or 15 to 20 pages or more.

This is why DIY patent applications are difficult to write well (but there are options and trade-offs when money is tight).

The details and length are necessary because that content lays a foundation for a potentially broad patent. That detail in the patent application should include, were possible, a description of alternative ways of making and/or using your invention.

Patent attorneys call these alternative ways of making and/or using your invention, different or alternate embodiments of the invention.

To illustrate why it is important to describe alternative ways of making and/or using your invention, we can look at the case of Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998).

Describing Only One Way of Making/Using Your Invention is Limiting

In the Trozno case, the patent owner obtained Patent 4,743,262 (the ‘262 patent) on a cup for a hip replacement device. The parent patent application of the resulting the ‘262 patent only described the cup as a “conical cup.” The patent claim did not include the conical limitation for the cup. So the patent claim was to a generic cup, without limitation to the shape of the cup.

The defendant’s device used a hemispherical cup.

So the question was whether the description of “conical cup” adequately supported the claim to a generic cup.  If so, the claim would cover more than just conical cups but would cover cups of other shapes, such as the defendant’s hemispherical shaped cup. If not, the claim was not entitled to the filing date of the parent application for failing to comply with the written description requirement.

The written description requirement in patent law provides that the patent application must “contain a written description of the invention, and of the manner and process of making and using it.” Courts have said to meet the written description requirement that application must reasonably convey to one of skill in the art that the inventor possessed the claimed subject matter at the time the application was filed.

In the Trozno case, the court found that the parent application only described one shape of cup, the conical shaped cup. The patent owner’s attempt to claim the broader generic cup was overreaching beyond was described in the application. The end result was that the claims were invalid and did not cover the hemispherical cup in the product provided by the defendant.

Describe Multiple Variations of Your Invention and Its Components

How could this have been avoided?  In reasoning that the ‘262 patent only covered conically shaped cups, the lower court noted that the patent application did “not attempt to identify other, equally functional shapes or talk in terms of a range of shapes.”

There you have it. The court tells you how to get broader coverage. You get broader coverage by  providing a description of a number of different shaped cups in the application.

The application might have used language such as, “a cup is provided, the cup may comprise a rounded shape, a hemispherical shape, conical shape, a cylinder shape, an elliptical shape” etc. Of course, it is important to list shapes or variations that would actually work in the invention. But the point is that you want to list alternate variations of the components and aspects of the invention.

When listing the generic component “cup” along with various options for the shape of the cup, this enables you to write boarder claims. Boarder claims provide you with a stronger patent because you may be able to use broad language in your patent claims, e.g. the broad generic “cup” vs. the limited “conical cup.”

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Sophisticated Purchasers and Expensive Services: Responding to Trademark Cease and Desist

ChannelsOfTradeIn my last post, I discussed the case of EDS versus EDS. In that case, one company that used the EDS mark opposed another company’s registration of the mark EDS. Identical trademarks. Sales to the same customers. But no conflict.

One reason for the result was that goods/services provided by the respective companies were sold in different channels of trade to different purchasers.

Another reason–the focus of this post–is that the customers that purchased the goods/services of each company were sophisticated purchasers.

First, a quick recap of parties and their products/services. Electronic Design & Sales, Inc. (“Electronic Design”) filed an application to register the mark E.D.S. for power supplies or battery chargers.Electronic Data System Corp. (“Electronic Data”) opposed Electronic Design’s trademark application for E.D.S in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992). Electronic Data used the mark EDS for the sale of computer programming and installation services. Both companies sold to some of the same customers.

Sophisticated Purchasers and Expensive Services

The chance of conflict (i.e. “a likelihood of confusion”) between two trademarks is reduced where the goods/services are expensive and purchased after careful consideration. Sophisticated consumers may be expected to exercise greater care in making purchasing decisions.

When a purchaser exercises greater care in making purchasing decisions it is more likely the purchaser will notice differences between the respective marks, the respective goods/services, and the respective sources of those goods/services. Therefore it is less likely the purchaser will be confused to believe that the goods/services of one company originate from the other company.

In this case, Electronic Data’s computer services are “expensive and are purchased only by experienced corporate officials after significant study and contractual negotiation.” When a customer is making an expensive purchase after a contractual negotiation, it is very likely the customer will know the service provider negotiating the contract. Therefore, the purchaser is less likely to be confused as to the source of those services.

Likewise, evidence showed that the evaluation process used in selecting Electronic Design’s battery and power products by customers required significant knowledge and scrutiny.

In this case conflict was avoided, in part, because the parties’ goods/services were usually purchased after careful consideration by persons who were highly knowledgeable about the goods or services and their source.

Responding to a Trademark Cease and Desist Letter

When both parties’ customers are sophisticated purchasers the chance of confusion as to the source of the parties’ goods/services is reduced. Therefore the chance of a conflict between the marks is reduced. Further, when the goods/services are expensive, customers are more likely to take greater care in making purchasing decisions.

When your goods and the plaintiff’s goods are expensive and/or purchased by sophisticated customers, you have a better chance of defending against claims of trademark infringement.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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Different Channels of Trade: Responding to Trademark Cease and Desist

ChannelsOfTradeEDS versus EDS. One company that used the EDS mark opposed another company’s registration of the mark EDS. Identical trademarks. Sales to the same customers. But no conflict. How?

One reason the marks were not found in conflict was that the goods/services provided by the respective companies were sold in different channels of trade to different purchasers.

Here’s the story.

Electronic Design & Sales, Inc. (“Electronic Design”) filed an application to register the mark E.D.S. for power supplies or battery chargers.

Electronic Data System Corp. (“Electronic Data”) opposed Electronic Design’s trademark application for E.D.S in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992). Electronic Data used the mark EDS for the sale of computer programming and installation services. But, both companies sold to some of the same large companies.

Different Channels of Trade and Purchasers

If a conflict (a.k.a. “a likelihood of confusion”) between marks exists, it must be based on the confusion of some “relevant person;” i.e., a customer or purchaser.

Both companies sold to General Motors and Sears. But simply selling to the same large companies was not enough. Individual departments in larger companies may be independent in their purchasing activities.

The court stated: “There is no evidence here, for example, that those computer specialists in the administrative departments at General Motors responsible for purchasing computer services are also responsible for purchasing battery chargers for the auto parts and services departments.”

The overlap in medical sales was even more of a stretch. Electronic Data supplied data processing services for medical insurers.  Electronic Design sold batteries and power supplies to makers of medical equipment such as bedside alert systems and crib monitors.

The court noted that Electronic Data “offers no reason to infer, for example, that Blue Cross officials responsible for purchasing its computer services might decide to discontinue purchasing from opposer because of confusion by a secretary in a physician’s office who mistakenly attributes the malfunction [of Electronic Design devises] to [Electronic Data], even though the secretary will process patients’ claims to Blue Cross.”

The medical secretary is not the “relevant person” for trademark conflict purposes. It is not always enough to look at common corporate customers as a whole, you must look at the purchaser within the corporation to identify an overlap.

For commercially sold items, users of the Electronic Design devices would only be “relevant persons” if those users could influence future purchases. And evidence of that was lacking in this case.

As a result the court found  that “although the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers.”

Responding to Trademark Cease and Desist Letter

When considering whether marks are in conflict, you should consider the channels of trade in which the products/services are marketed and sold.

If the channels of trade are sufficiently different and the the relevant persons (e.g. purchasers) are not likely to encounter the plaintiff’s mark and your mark , then the marks might not be found in conflict.

Sales to the same large corporations alone is not enough. The relevant overlap is whether the same purchasers (or possibly users that can influence purchasers) will encounter both the plaintiff’s mark  and your mark.

Therefore, marketing and sales in different places to different groups of purchasers can be one factor in your favor in defending against claims of trademark infringement.

Another factor supporting no conflict conclusion in this case was that the purchasers of both companies goods were sophisticated. I will cover this topic in a future post.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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Trademark is Geographically Descriptive: Responding to Trademark Cease and Desist

PrimarilyGeographicallyDescriptiveTrademark_YosemiteBeerSpirits of New Merced (“Spirits”) applied to register the trademark YOSEMITE BEER for the sale of beer. But the US Patent and Trademark Office (USPTO) refused to register the mark.

The USPTO refused to register the mark because it was primarily geographically descriptive in In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007).

A trademark is considered primarily geographically descriptive when (1) the mark’s primary significance is a generally known geographic location; (2) the goods or services originate in the place identified in the mark, and (3) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. TMEP 1210.

Spirits made and sold beer in its brewpub in Merced, California, which is about 80 miles from Yosemite National Park.

A nickname for a geographic location is equivalent to official name for purposes of determining registrability of the geographic term. It did not matter that Yosemite was not a city name or  county name.

The Trademark Board found that Yosemite is a well recognized and frequently used shorthand reference for Yosemite National Park and the Yosemite region in general. Therefore, the purchasing public would be likely to believe that the beer originates in the place (Yosemite) named in the mark.

The addition of “beer” to “Yosemite” did not save the application because “beer” was weak as being a descriptive or generic term.

Responding to a Trademark Cease and Desist Letter

When evaluating the strength of the Plaintiff’s trademark, you should consider whether it is primarily geographically descriptive. That is, is the mark primarily descriptive of a geographic location?

If so, the plaintiff’s trademark may be weak and the protection afforded to it may be weak or non-existent. If the plaintiff can’t protect its mark because its primarily geographically descriptive, then the plaintiff might not be able to stop your trademark use.

The Exceptions

However, if over time customers begin to recognize a geographically descriptive mark as a source of goods/services, that mark can gain trademark protection (through acquired distinctiveness or secondary meaning). TMEP 1210.07(b).

Therefore, if the plaintiff’s mark has been long used for its goods/services and/or has otherwise become recognized in the marketplace, making claims that the mark is weak as primarily geographically descriptive may not be an effective defense.

Picking a Strong Trademark

If you are at the point of picking a trademark for your business, product, or service, you want to select a strong mark that is not primarily geographically descriptive.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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Trademarks Have Different Meanings: Responding to a Trademark Cease and Desist

“‘PLAYERS’ for shoes implies a fit, style, color and durability adapted to outdoor activities. ‘PLAYERS’ for men’s underwear implies something else, primarily indoors in nature.” – Trademark Trial and Appeals Board.

PlayersTrademarkBritish Bulldog Ltd. applied to register the trademark PLAYERS on the goods of men’s underwear. The trademark examiner  refused to register the mark claiming that it conflicted with a previously registered mark PLAYERS for the goods of shoes.

But the appeals board overturned the refusal and found that there was no likelihood of confusion between the marks in the case of In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1980).

How could identical marks not be in conflict when used on items that a person wears, e.g. underwear and shoes?

Was it because the goods of underwear are so different from shoes that consumers would not expect a source of underwear to also be a source of shoes?

No. The Trademark Trial and Appeals Board noted several previous cases where a conflict was found when the same or similar marks were used by different parties in connection with shoes and with items of clothing.

The one of the  reasons the Board found no conflict was that the marks had different meanings in the context of the respective goods. On that point the Board said:

“PLAYERS” for shoes implies a fit, style, color and durability adapted to outdoor activities.

“PLAYERS” for men’s underwear implies something else, primarily indoors in nature.

Nicely put.

The Board described this a “close case.” Yet, the differing meanings played an important roll in the result.

But, in other cases a conflict was found where there was a lack of meaning-contextual difference. For example, a conflict was found between two users of INGENUE, one for shoes and the other for women’s undergarments. General Shoe Corp. v. Hollywood-Maxwell Co., 47 C.C.P.A. 933 (CCPA 1960).

Responding to a Trademark Cease and Desist

Therefore, when considering the similarities of the marks in response to a trademark cease and desist letter, you should consider whether the marks have distinctly different meanings in relation to the goods/services that they are used on.

Different meanings will not always save you from a conflict as noted by the fact that the Board called the Players case a close case,  but it is one area worth investigating that could be successful.

See other posts in this How to Respond to a Trademark Cease and Desist series: