The Trademark is Descriptive: How to Respond to a Trademark Cease and Desist

Descriptive_Weak_TrademarkFrederic Towers began using the term “The Professional Portfolio System” in November 1982 for a computer-based portfolio valuation system.

Advent Software obtained a registration for the term “The Professional Portfolio” for computer programs used in the field of financial management. Advent first used the term in December 1983, more than one year after Towers’ first use.

Towers petitioned to cancel Advent’s trademark based on the similarities of the marks and the similarities of the goods, but lost.

Usually rights to use a mark go to the person or entity that first started using the mark in commerce. Here, Towers was first.

So why did he lose?

Because Towers’ mark was descriptive and therefore weak. This is the result in the case of Towers v. Advent Software, Inc., 913 F.2d 942 (Fed. Cir. 1990).

Descriptive Marks are Not Strong Initially

Not all trademarks are created with equal strength.

Descriptive marks are weak, at least initially. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

The court found that Tower’s mark was essentially the generic term “portfolio valuation system” with the addition of the word “professional.” The term “portfolio system” described what the Tower’s software was used for, e.g. to manage a portfolio. The absence of the term “valuation” from the mark did not prevent Tower’s mark from being descriptive.

And the word “professional” conveyed information immediately to the purchaser that the product possesses professional capabilities. Therefore, the mark described directly characteristics and features of the product.

The court found that Tower’s did not have superior rights in the mark even though Towers’ used his mark first.

Over time a trademark owner might be able to generate trademark rights in a descriptive mark, if the mark gains recognition (i.e. acquired distinctiveness or secondary meaning) with the purchasing public. But Towers did not show this.

Responding to a Cease and Desist: Your Mark Is Descriptive

Therefore, if a plaintiff demands you stop using your mark, and that plaintiff started using the mark before you, you might be able to defend by asserting that the plaintiff’s mark is descriptive and therefore weak.

Evaluating whether the mark is descriptive involves understanding the goods or services that the mark is used on, and comparing the elements of the mark to those goods or services to see if the elements of the mark describe an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

It also involves determining how long the plaintiff has used its mark and whether the mark has gained recognition with the purchasing public as a source of the plaintiff’s goods/services.

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

Photo credit to Elliott Brown under this creative commons license. The photo was modified from the original to crop in on “weak bridge.”


The Trademark is Weak: How to Respond to Trademark Cease and Desist

Domino_v_DominosPizzaDomino is a trademark for and a brand of sugar. Sugar is a type of food. Domino’s Pizza is a trademark for a pizza restaurant chain. Pizza is a food.

Amstar, which owned the Domino sugar brand at the time, sued Domino’s Pizza alleging trademark infringement over the use of the term Dominos. But Amstar lost.

Why? Similarity of the marks and similarity of the goods is usually a good start to making a strong case of trademark infringement. Here, there was a similarity between the marks, e.g. “Domino.” And, there was arguably similarity between the goods, i.e. food.

Yet, Amster lost because, in part, the Domino mark was weak in relation to food generally.

Many Third-Party Uses for Similar Goods: Weak Trademark Rights

Why was the “Domino” mark weak? It was weak because many other companies used Domino on other types of food.

I previously discuss factors to consider for selecting a strong trademark. Another factor in trademark strength is whether many others are using the same or similar mark in the marketplace for the same or similar goods or services. When many third parties are using the mark on similar goods, that mark will be considered a weak mark. Weak marks are provided a narrow scope of protection.

In the case of Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259 (5th Cir. 1980), Domino’s Pizza showed that there were 72 other trademark registrations of the term “Domino” at the U.S. Patent and Trademark Office. Some of those registrations involved foods, such as canned fruits, cheese, wheat flour, canned sardines, and candy. Domino’s Pizza also introduced evidence of 15 uses of marks that included “Dominos” in the marketplace by other companies, including uses related to food and grocery stores.

The court noted that “The greater the number of identical or more or less similar trade-marks already in use on different kinds of goods, the less is the likelihood of confusion….” The court also stated, “The third-party uses and registrations discussed above merely limit the protection to be accorded plaintiff’s mark outside the uses [sugar] to which plaintiff has already put its mark.”

Therefore Amstar’s trademark rights to Domino did not extend to any food but was confined to sugars. The court concluded limited strength and protection outside of its sugar goods was an important factor in determining that Domino’s Pizza’s use of the term “Domino” did not constitute trademark infringement.

Responding to Trademark Cease and Desist: Search for Third Party Uses

Therefore, when you are on the receiving side of a trademark cease and desist letter, you should be searching to see if there are other similar registered marks used for similar goods. You can do that by searching the USPTO trademark database. You should also search for third party uses in the marketplace of the same or similar marks for the same or similar goods. You can do that by any method of searching the market, e.g. search the internet.

The more third party uses the better. But, you don’t need to find 72 registrations, even a handful can be effective depending on the circumstance.

Finding that multiple third parties have registrations or uses in the marketplace for the same or similar mark with the same or similar goods, may be a basis to assert that the plaintiff’s trademark rights are weak. If the trademark rights are weak, it may be that the differences in the goods/services are sufficient to conclude there is no trademark infringement, as was the case for Domino’s Pizza.

See the prior posts in this series:

Responding to Trademark Cease & Desist: Priority – The I Was First Defense

TrademarkPriorityDaniel Group obtained a federal registration on service mark “ServicePerformance.” But Daniel Group failed when it demanded and then sued claiming trademark infringement to stop Service Performance Group from using that name for similar services. Why did it fail?

Because the Daniel Group was not first to use the words “Service Performance” in business for its services. Service Performance Group began using its name 9 years before Daniel Group received its federal trademark registration.

Daniel Group did not have “priority of use.” So its trademark claim failed even though it had a federal registration and Service Performance Group did not (the space vs. no space between Service and Performance had no impact in this case).

A federal trademark registration is not bullet proof against prior users. This is the case of Daniel Group v. Serv. Performance Group, Inc., 753 F. Supp. 2d 541 (E.D. NC 2010). The court there stated the rule that it is not registration of the mark, but the “actually use of the designation as a mark that creates rights….Neither application for, nor registration of, a mark at the federal level wipes out the prior non registered, common law rights of others.” McCarthy on Trademarks 16:1 (citing Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999)).

The “I Was First” Defense

If you receive a cease and desist letter claiming trademark infringement, one basis to defend is that you used the mark before the plaintiff used the mark.

Priority of use provides that the party that first starts using the mark usually wins. Priority can be established by actually use or by filing an intent-to-use trademark application (constructive use).

So if you started using the mark before the plaintiff, then the plaintiff may not have the right to stop you from continuing to use the mark in your geographic area.

However, if you have not applied to register your mark and the plaintiff has, the plaintiff may not stop you from using the mark in your geographic area, but your right to expand sales geographically may be limited.

Investigating Priority

How do you know what date Plaintiffs cease and desist letter may state the date that the Plaintiff first started using the mark? If the Plaintiff has a federal registration, the federal registration will provide a first use date. If the plaintiff’s federal registration resulted from an intent-to-use application you will look to see the filing date of the application as the constructive first use date.

You can also look for general evidence of use by date. For example, you can search the Internet Archive to see if the Plaintiff’s website on a certain date shows a use of the trademark. If the Plaintiff has a Facebook page, you can view the Facebook page to find posts having the mark and look to the date of the post (but the user can modify the date of a post).

The Plaintiff’s lack of priority of use, or “I started using the mark before you,” is one way to defend against claims of trademark infringement.