Trademark Disclaimers and Hopeless Trademark Appeals

LouisianaThis appears to be another case where the applicant pursued a hopeless claim. Why did this happen? The problem is that the applicant initially chose a weak trademark and then tried to prop it up by pursing a course that it could not win.

Louisiana Fish Fry Products (LFFP) filed a trademark application on LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME! as shown at the beginning of this post.

The Trademark Examining Attorney and the Trademark Trial and Appeals Board (TTAB) both found that LFFP was required to disclaim “Fish Fry Products” as it was descriptive and generic of LFFP’s products. LFFP appealed this requirement to the Federal Circuit Appeals Court and lost in In Re: Louisiana Fish Fry Products, Ltd., No. 2013-1619, (Fed Cir. 2015).

The applicant could have avoided two rounds of appeal along with the associated attorney’s fees while still obtaining a registration on its mark. All it had to do was disclaim “Fish Fry Products.” But it didn’t, likely because of its prior dispute over Florida Fish Fry Products.

What is a Disclaimer?

A disclaimer is a statement made by a trademark applicant, usually at the request of the USPTO, to “disclaim an unregistrable component of a mark otherwise registrable.” 15 USC 1056. Or stated another way:

…a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.

[Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954); TMEP 1213]

So here the question is does LFFP have rights in “Fish Fry Products” alone when used in relation to the applicant’s goods of: marinades sauce mixes, namely, barbecue shrimp sauce mix, remoulade dressing, cocktail sauce, seafood sauce, tartar sauce, gumbo filé, and cayenne pepper. The Trademark Examiner said no, the TTAB said no, and the Federal Circuit said no, and predictably so.

Why Fight? The History Against Florida Fish Fry Products

Is it so bad to disclaim a portion of text in a trademark at the request of the USPTO?  The Trademark Act provides “No disclaimer…shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.” 15 UCS 1056(b). Therefore, a disclaimer does not prohibit you from claiming rights in the disclaimed text later in ligation or in other trademark applications.

Why not just take the disclaimer in this case?

I speculate the reason is that in 2007 LFFP sued Charles Corry. Corry was selling products under the mark FLORIDA FISH FRY PRODUCTS. In 2008, Corry settled and agreed not to use Florida Fish Fry Products.

I predict LFFP would have had a very difficult time proving infringement by Corry if the case had not settled.

Here, LFFP probably didn’t want another Corry coming along and selling under Florida Fish Fry Products, Mississippi Fish Fry Products, Texas Fish Fry Products, or the like. So it was determined to fight this disclaimer requirement to better strengthen its position against such future problems on the common element “Fish Fry Products.”

The problem is LFFP didn’t have a chance. The fight over the disclaimer was a  waste of money and a predictable loss.

Further, it not only was a loss of money, but the appeal put LFFP in a somewhat worse position than if it had not appealed.  One concurring judge in this case asserted that FISH FRY PRODUCTS was generic. If FISH FRY PRODUCTS is generic, it can never achieve protection. Future defendants accused by LFFP could point to the this opinion that the term was generic as a defense.

The majority of the court did not reach the genericness question and instead relied on descriptiveness, as explained below.

Highly Descriptive: Fish Fry Products

The TTAB found that “Fish Fry Products” was highly descriptive of the applicant’s goods. The TTAB said that the evidence showed (1) public understands “fish fry” to refer to fried fish meals, (2) public understands “products” to mean, inter alia, “something produced; especially: COMMODITY … something . . . that is marketed or sold as a commodity,” (3) therefore the relevant public understands FISH FRY PRODUCTS to identify a type of sauce, marinade or spice used for fish fries.

No Acquired Distinctiveness

The applicant asserted that even if the mark was descriptive, the applicant had rights in “Fish Fry Products” through acquired distinctiveness (also known as “secondary meaning”). A trademark–or in this case the “Fish Fry Products” portion–has acquired distinctiveness when “in the minds of the public, the primary significance  of a product feature or term is to identify the source of the product rather than the product itself.”

Here, we ask this: when you see “Fish Fry Products” do you think of a source such as LFFP (then we have trademark protection) or do you think of the product itself (then no trademark protection)? Here, the “Fish Fry Products” refers to the product itself and not to the source, LFFP.

The applicant can show acquired distinctiveness by advertising expenditures, sales success, and length and exclusivity of use of the mark.

LFFP’s evidence fell short of proving acquired distinctiveness.

First, Under section 2(f) of the Lanham Act, the USPTO may accept five years of “substantially exclusive and continuous” use as prima facie evidence of acquired distinctiveness. But the USPTO is not required to do so. Therefore, LFFP’s allegation of five year of “substantially exclusive and continuous” of the mark did not prove acquired distinctiveness. The USPTO often does not accept section 2(f) declarations for highly descriptive marks.

Second, a declaration from LFFP’s president (1) stating that the LOUISIANA FISH FRY PRODUCTS has been used for 30 years was insufficient, and (2) providing sales and advertising expenditures for food  products bearing LOUISIANA FISH FRY PRODUCTS was insufficient. This evidence was insufficient because it related to product bearing  LOUISIANA FISH FRY PRODUCTS and not on the acquired distinctiveness FISH FRY PRODUCTS alone.

LFFP would have saved a lot of money, and an adverse ruling, by accepting the disclaimer and avoiding two rounds of appeal losses.

Know When to Stop Wasting Money on Trademark Litigation

MoneyWasteYou need to know when to stop wasting money on trademark litigation. Here is a case where the plaintiff should have stopped on day two of the lawsuit, but didn’t.

Dr. Tartell and Dr. Mandel jointly practiced medicine until 2011, when they split their practice and went separate ways. The break up was contentious.

After the break up, Dr. Mandrel (1) registered six domain names using some variation of Dr. Tartell’s name, redirecting some to Dr. Mandrel new website, and (2) purchased Google AdWords keyword for Dr. Tartell name, which caused Dr. Mandell’s website to appear as an advertisement whenever someone searched with those terms on Google.

Tartell filed suit against Dr. Mandell including claims for cybersquatting, false designation of origin, and unfair competition (all trademark law related claims).

The day after the suit was filed in 2012, Dr. Mandel canceled the domain names. Many trademark related disputes are resolved this way, e.g. with one party stopping or changing their name.

It is unclear whether the Adword purchases stopped. They probably did, but even if they did not, plaintiffs do not fare well in competitive keyword advertising suits.

So, the day after the suit was filed, Dr. Tartell probably got the best he could get, e.g. Dr. Mandell releasing the domain names and (probably) stopping the Google Adword buy. This was a good time to settle.

Litigating on Principle is Expensive and Often Unsatisfying

But the case continued for at least three years. It continued all the way through a four day bench trial and through an appeal in 2015. Why did this case continue? As stated by the trial court:

this action continued all the way through [a four-day bench] trial because Dr. Mandel refused to take responsibility for his antics while Dr. Tartell sought a statutory windfall for a short-lived and largely pointless deceit.

In other words, (1) Dr. Mandel would not apologize and (2) Dr. Tartell wanted statutory damages and attorneys fees as a result of the alleged cybersquating.

Pursuing litigation to achieve an apology or an an acknowledgment of wrong doing (litigating on principle) can be a very expensive undertaking with often unsatisfying results, as Dr. Tartell experienced here. Dr. Tartell won only $6000 at trial, much less than he likely paid his attorneys. But he would not keep even that amount. Dr. Tartell ultimately lost on appeal in Tartell v. South Florida Sinus and Allergy Center, Inc., No. 14-13178 (8th Cir. 2015). And it is a pretty safe bet that Dr. Mandel did not apologize to Dr. Tartell.

Short Use and Quick Turnover Kills Off Statutory Windfall

On the second issue, you need to carefully evaluate your likelihood of success in obtaining money damages, even when the other side’s actions appear willful and to reflect poorly on them. The statistical likelihood of receiving an award of any damages in trademark litigation is low.

Dr. Tartell may have been expecting closer to $600,000 in statutory damages and not the $6,000 that was awarded by the trial court. The Lanham Act provides for statutory damages of between $1,000 and $100,000 per domain name for cybersquatting. 15 U.S.C 1117(d). This case indicates that when the defendant carries on with the offending conduct only a short time and cancels or turns over the domains immediately after suit, the court could see this as a mitigating factor leading to an award of damages at the low end of the range and not the top, e.g 6 domain names * $1,000 = $6,000 and not 6 domain names * $100,000 = $600,000. This is true here even though Dr. Mandrel’s “antics” were in bad taste and, as the court noted, included “deceit.”

Difficulty in Protecting One’s Personal Name in Medicine

Dr. Tartell lost on appeal because he could not establish that his name was protectable. Therefore he could not recover any money damages. This result should have been predicted.

A quick reference to McCarthy on Trademarks reveals that “in professions where use of personal names as identifiers is traditional, a court may require a strong showing of secondary meaning.” McCarthy 13.2. Or as the Eighth Circuit Appeals Court stated, “in professions where use of personal names as identifiers is traditional such as the medical profession, it is more difficult to establish secondary meaning [in such personal names].” In other words, it is known that it is difficult to protect your personal name in the medical profession under trademark law.

In the Eighth Circuit, a plaintiff must prove that his service mark is “distinctive” to establish a claim for cybersquatting, false designation of origin, and unfair competition. So to obtain any relief, Dr. Tartell needed to prove that the consuming public recognized Dr. Tartell as the source of a service and not merely as a person’s name.

For example, “Ford” was a surname of Henry Ford, but overtime through sales and advertising “Ford” became associated in the minds of the consuming public with a car producing company and not merely the individual.

In the Eighth Circuit, a plaintiff can show a name is distinctive through consumer surveys or circumstantial evidence. Circumstantial evidence may include (1) the length and nature of name’s use, (2) the nature and extent of advertising and promotion of the name, (3) the efforts of the proprietor to promote a conscious connection between the name and the business, and (4) the degree of actual recognition by the public that the name designates the proprietor’s product or services.

Dr. Tartell provided no consumer surveys. Dr. Tartell presented evidence of his academic activities and reputation among other medical professionals. But this is not relevant because the target audience for such information was professionals and not the consumers of his medical services.

Dr. Tartell’s name used in advertisements for his business with Dr. Mandell before the split did not show Dr. Tartell’s name was distinctive because his name was not used prominently as a trademark in such advertising.

The appeals court ultimately found that Dr. Tartell did not establish any of the four distinctiveness factors. Therefore, Dr. Tartell lost and received no money damages. Dr. Tartell should have settled on the second day of his lawsuit.

Photo credit to flickr user Mike Poresky under this creative commons license.

 

 

 

 

Names Predictive of Future Product Success?

“…the names of companies are often very predictive of future failure or success.” — Peter Theil.

“[a] great name can’t fix a bad product. A great product can fix a bad name.” — Paola Norambuena.

Choosing a name for your company, product, or service can be difficult and time consuming. But does the name you choose matter?

In other words, assuming that the name you choose does not conflict with another’s trademark rights and the name is a strong trademark, does the name impact the success of your company, product, or service?

Peter Theil, venture capitalist and co-founder of Paypal, thinks names matter. Peter discusses his view on naming in an exchange with Tyler Cowen:

TYLER COWEN: You mentioned Facebook a few minutes ago. In the back, we were talking about good and bad names for companies. If you could tell us your view on this, how important is the name of a company? What are a few good names, and why, and what are a few bad names?

PETER THIEL: A slight aesthetic thing I believe in very strongly is the names of companies are often very predictive of future failure or success.

PayPal was a very friendly name. It was the friend that helps you pay. Napster was a bad name. It was the music sharing site. You nap some music, you nap a kid. That sounds like a bad thing to be doing.

[laughter]

PETER THIEL: It’s no wonder the government then comes in and shuts the company down, within a few years. You want to be very careful how you name companies. In the sharing economy context, I like Airbnb, way more than Uber. Airbnb sounds like this very innocent, virtual bed and breakfast. It’s [a] very light, nonthreatening company. Uber, it sounds like a bad name from Germany sometime in the 1930s.

[laughter]

PETER THIEL: What are you exactly above? Maybe the law?

[laughter]

PETER THIEL: This is probably something that, again, from government regulatory perspective, Airbnb is a vastly better name than Uber. On the social networking side, I would say that I actually think Facebook was a very good name. MySpace was a more problematic name.

You can say that all these social networks involve both reading and writing. Unlike real life, you have to write, before you read. You first have to write some things about yourself, then you read more about other people. Over time, reading dominates writing.

Facebook was about learning about people around you. About the real identities at Harvard. MySpace started among wannabe actors in Los Angeles, and it was about them coming up with fictional narratives around themselves, and then a lot of other people in LA, who are generally like that.

Because reading dominates writing, Facebook would ultimately dominate MySpace. There’s a certain version where the whole product arc was implicit in the names.

[Peter Theil on the Future of Innovation ]

This raises the proverbial chicken-and-the egg question: does the name cause a particular product direction or does the preexisting product direction manifest itself in the chosen product name? Maybe the direction of Myspace was not a result of its name, but a preexisting direction in the company independent of its name. Nonetheless, it is possible that a name can influence or reinforce the direction of a company, product, or service.

Paola Norambuena, the executive director of verbal identity at Interbrand, explains that a great product can fix a bad name and provides examples:

…even if the name they chose received a tepid reception, the power of their production process could still overcome it. Most namers will tell you, as Paola Norambuena puts it, that a “great name can’t fix a bad product. A great product can fix a bad name.” Accenture was met with derision for reminding people of dentures. Gap was an empty space. Yelp was a dog in pain. The iPad was confused with a tampon. Now these names have no odd connotations at all, thanks to the success of the things they name.

So it may have been that after hours upon hours of brainstorming and hours more of deliberations and still hours more of trademark searches, and after the expenditure of tens of thousands of dollars, not as much was at stake as Christensen, van Hoff and Annau thought — at least not in commercial terms. Personal and emotional stakes were a different story….

[The Weird Science of Naming Products, New York Times (Jan 15, 2015)].

Norambuena’s view tempers the otherwise stress inducing, “better get the name right” conclusion from Theil’s view. If a name is predictive of future success, then that predictive tenancy can be overcome by a great product or bad product according to Norambuena.

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.

 

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.

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:

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:

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:

How to Write a Description of Goods or Services for a Trademark Application

TrademarkDescriptionOfGoods_ServicesIt can be difficult to write an accurate and complete description (identification) of goods/services in a federal trademark application. When describing the goods and services you are or want to sell/provide, you want use somewhat broad language, but not too broad.

You cannot broaden the identification after the application is filed. In some cases, if the description is not accurate and the needed changes would broaden the identification, the application may be lost without a refund. However, if the description is too narrow, you could give up valuable trademark protection that you could otherwise obtain.

So how do you draft a description that is just right? I’ll explain that below, but first, why does the application require a description of goods/services?

Why Do I need a Description Of Goods/Services?

Except for famous trademarks, trademarks rights generally do not extend to protect every product or service. If you use the trademark ACME for selling tooth brushes only, you can not use trademark law to stop someone from using ACME for selling sailing yachts. Consumers don’t expect that providers of tooth brushes also sell yachts.

Trademark rights extend to cover instances another uses your mark or something similar with goods/service that are the same or similar to goods/services as you provide under the mark. Therefore, the scope of trademark protection depends on the goods and/or service that you provide under the mark.

In order to let the public know the scope of your trademark rights based on the goods/services, the USPTO requires that you provide a description of the goods and/or services that the mark is or will be used on or with. The USPTO calls the description of goods/service the identification of goods/services.

How does the USPTO use the Description (Why is it Important)?

The description is important because it is what the USPTO will use to compare to other trademark registrations or trademark applications to determine whether there is a conflict. The comparisons occur in two types of situations.

The first comparison situation occurs when the USPTO reviews your application. There, the USPTO compares your mark to previously filed applications and registrations that are live. If the description is too broad, then the USPTO might find a conflict between your mark and a previous application or registration, which would not have occurred if your identification was not over broad. This problem can sometimes be corrected by an amendment to the identification that narrows that identification to avoid similarities with the prior application or registration that the USPTO asserts is in conflict.

The second comparison situation occurs when the USPTO is examining later filed trademark applications. If your description is too narrow then the USTPO might allow a later filed trademark application to be registered. But if your application had a proper description the USPTO would have blocked a later confusingly similar mark from being registered. Therefore, a description that is too narrow will not properly operate to block later filed trademark applications that would otherwise be in conflict. As a result, a narrow identification of goods and services will necessarily narrow the blocking effect of your application and narrow your trademark rights.

Now you know why an description is needed and what it is for. Next, we’ll see how to draft one.

List Your Goods and/or Services

Before selecting or writing a description of goods or services, start by making a list. The list should include all of the goods and services that you sell or provide (or intend to sell or provide) under the mark. If you are already using the mark, look at your product list, your advertising, and your website, among other areas, to complete this list. If you are not already using the mark, look at your business plan or product/service plan to identify the goods and services that you will provide under this mark.

You got Lucky: Selecting a Description from the ID Manual 

Now see if you got lucky. What do I mean? The USPTO provides a listing of pre-approved descriptions, which are found in the US Acceptable Identification of Goods and Service Manual (a.k.a the ID Manual). If you find a description(es) provided in the ID Manual that accurately and completely describes the goods and/or services that you provide or intend to provide, then you can select it and you’re done.

If you choose a description from the ID Manual the USPTO will not object to it. The USPTO charges lower fees for an application (TEAS PLUS form application) where the description(s) are selected from the ID Manual. Why? Because the trademark examining attorney will not need to review that part of your application, because the description is already pre-approved. Less work for the USPTO, less government fees.

However, many situations are not accurately or completely covered by a pre-approved description in the ID Manual. Many of trademark applications that I file require a custom written description because the ID Manaul does not completely and accurately describe all of my client’s goods / services. And if that’s true for your case, choosing a description that is “close” but not correct or complete is a problem. Such a “close” selection may result in the USPTO rejecting your trademark application, or if registered, a registration that is unnecessarily narrow, or one that is subject to cancelation as inaccurate.

If you can’t find accurate and complete descriptions in the ID Manual don’t try to force it by selecting the closest option. You’re going to have to do the hard work of writing a description.

Doing the Hard Work: Drafting an Identification of Good / Services

In some cases, writing your own description can be one of the most difficult parts of a trademark application to complete correctly. Here are some pointers that you should know.

Use a Portion from the ID Manual, if Possible

Even if the ID Manual does not have the exact description you need, it might have a portion of a description that you could use. You might take that useful portion and modify it and/or add to it to provide an accurate and/or complete description.

Do Not Merely Repeat the Class Heading

For each description you will need to select a corresponding international trademark class (“trademark classes”), which I explain below. Your description cannot merely repeat the class heading or title of classes of goods and/or services.

For example, class 25 has a heading or title of “Clothing, footwear, headgear. Providing a description of “clothing” is merely repeating a portion of the class heading, and would not be accepted. Instead more detail is needed, e.g. “clothing, namely, t-shirts, pants, and gloves.”

Similarly, computer software must be described with particularity. It is not sufficient to provide a description of “computer software.” The description of computer software should include the function or purpose. The description “computer game software” provides a purpose or field of use of “gaming.” Searching the ID Manual for “computer hardware” shows many examples: “computer hardware and software for setting up and configuring wide area networks”, “Computer operating software”, “Computer software platforms for {indicate function or use},” among many others.

Avoid Open Indefinite Words Leading A List

Avoid indefinite words and phrases, such as “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “like services”, “etc.” Instead, you can use a broad term followed by the terms “namely,” “consisting of,” “particularly,” to list a specific set of goods or services within a broader term where more particularity is needed, e.g. “power tools, namely, drills” or “needle point kits consisting of needles, thread, and patterns” or “projectors, particularly projectors for the entertainment industry.”

Don’t Use Unqualified Broad Terminology if it would Fall Into Multiple Classes

The USPTO will object if the broad terminology used in the description would fall into multiple trademark classes. For example, an description of “blankets” would not be accepted without qualifying wording. “Blankets” fall into multiple classes. e.g., fire blankets (class 9), electric blankets (class 11), horse blankets (class 18), and bed blankets (class 24).

Trademark_IDManual_Search_BlanketsTo avoid using terminology that falls into multiple classes, search the ID Manual for the terminology you are considering using in the description. If the results show that terminology falls in more than one class, then you know you need more specific wording or you need to use different terminology that does not fall into multiple classes. Click the thumbnail image at the left of this paragraph to see a screenview of a search of the ID manual for “blanket”. In that screenview you can see under the “class” column there are results in classes 9, 10, 11, 16, 17, 18, 22, 24, 25, 29, 30, 36, 39, and 43. So, the term “blanket” alone is too broad.

Use Language Understandable to the Average Person

The language used in the identification should be that which could be understood by the average person, not having an in-depth knowledge of the relevant field. If terms of art of a particular field or industry are used in the description and those terms are not understood by the general population, the identification should include an explanation of the specialized terminology.

Use Proper Punctuation (Semicolon vs. Comma)

The use of a comma instead of a semicolon can be problematic. A semicolon should be used to separate distinct categories of goods or services within a single class. For example, in the case of In re Midwest Gaming & Entertainment LLC, No. 85/111552 (TTAB 2013), the prior registrant’s use of a semicolon rather than a comma in the description of services was key to the USPTO providing that registration with a broad blocking effect. In that case, the applicant applied to register the mark LOTUS for “bar services located in a casino.” The trademark board affirmed the trademark examining attorney’s refusal to register that mark based on a previously registered trademark LOTUS (Reg. No. 3,398,674) for “providing banquet and social function facilities for special occasions; restaurant and bar services.”

The applicant argued that “restaurant and bar services” should be limited by the preceding language of “providing banquet and social function facilities for special occasions.” Particularly, the applicant argued that the restaurant and bar services of the registration, “must be limited to a specific type of such services and to a specific trade channel and class of purchasers, i.e., to restaurant and bar services provided in connection with ‘providing banquet and social function facilities for special occasions.’”

The trademark board rejected this argument, stating “Under standard examination practice, a semicolon is used to separate distinct categories of goods or services.” The board continued, “We find that here, the semicolon separates the registrant’s ‘restaurant and bar services’ into a discrete category of services which is not connected to nor dependent on the ‘providing banquet and social function facilities for special occasions’ services set out on the other side of the semicolon.”

As the registrant’s “restaurant and bar services” were not limited to any particular location or trade channel, then it was presumed to cover all trade channels or classes of purchasers, including those in a casino. In other words, the registration’s broad use of “restaurant and bar services” stood on its own, separate from and not limited by “banquet and social function facilities” services. The use of a semi colon provided the owner of the registered LOTUS mark with broad blocking protection.

If a comma was used rather than a semi colon here, the result of this case would have been different. The LOTUS registration would not have blocked the LOTUS applicant. The use of a comma, when a semi colon should be used, would have narrow the blocking effect of the LOTUS registered trademark.  A narrowed blocking effect means that similar marks will be more likely to be registered and your ability to broadly protect your trademark rights will be reduced.

Do not include trademarks in the Description

Do not include trademarks in your description. If your product is designed to work with a particular other product, describe that other product generally rather than referring to it by its brand name. Not: “engine parts for use on Ford cars”, but instead “engine parts for use on automobiles.”

Do not include goods or services that you do not sell to the public

If you use marketing to promote your business (like most businesses), but you do not help others market their business, non-profits, etc., then you should not list marketing in your description of services. The description includes goods and/or services that you sell to or provide for others.

Reviewing other Registrations in the Field

In the same way that searching for descriptions from the ID Manual can give you ideas about how to write a description, so too can searching the descriptions provided in trademark registrations in the same field as you operate. Reviewing descriptions in issued trademark registrations can help you determine if you have missed anything in your description. However, it is always possible that such registrations could be unduly narrow or incorrect. Therefore you should look at number of registrations to get a better feel for whether one particular description is an outlier. And you should never use a description just because it is found in a registration if it does not accurately and completely reflect the goods or services you provide or intend to provide. Looking at other registrations is just a way to get ideas. But not every referenced registration will provide good information applicable to your situation. And sometimes there are no good examples, or at least not ones that are easily found, for a particular product or service.

The USPTO provides a first video and a second video that further discuss the identification of goods and services. And, section 1402 of the Trademark Manual of Examining Procedure (TMEP) provides additional information on the requirements for a proper identification of goods and services.

Why do I need to Select Class(es) of Goods and Services?

In addition to writing a description, the USPTO requires you to select one or more international trademark classes of goods and services from the Schedule of International Trademark Classes of Goods and Services (Schedule) that correspond to the goods and services provided in the description portion explained above. This step seems repetitive. If you already have a description of goods and services, why do you have to select one or more classes that this description falls into?

The answer is: so that the USPTO can determine how much money to charge you for the application. The Schedule divides all of the goods and services into 46 different classes.

The trademark classification system is an administrative system where the government determines how much work it will be to process your application and charges you filing fees accordingly. If you provide a description that covers many classes, then the USPTO will have to search a larger volume of prior trademark registrations and applications to determine whether your mark conflicts with any previous trademark registrations and applications.

For example, if you are going to use your mark ACME for the goods of toothbrushes, bath towels, and t-shirts, the USPTO will need to search for prior registrations and applications that claim use of ACME (or similar marks) on all of those goods and similar goods. But if you only claim the use of ACME for the sale of toothbrushes, then USPTO will have less work to search for the use of ACME (or similar marks) for just toothbrushes and similar goods. Not needing to search for mark used with bath towels and t-shirts, means its less work for the USPTO. There are less marks to search through when an application claims fewer goods or services.

Selecting the Right Class(es) of Goods and Services

You can read the description provided for each class here and select the appropriate one or more classes. Another way to determine which class(es) you should designate in your trademark application is to look at the classes provided for the same or similar goods or services provided in the ID Manual. For example, if you are going to sell HATS and you search the ID Manual for HATS. An excerpt of the results is shown below:

USPTOIDManualHats

If you sell Hard Hats then you would select class 9. If you are selling general use hats then you would select class 25.

Also as explained above regarding the description, you can search existing trademark registrations in your field to see what classes others have selected for your type of goods and services.

Technology Fields

Certain technologies can span across multiple classes. For example, if you provide downloadable trading software for the finance industry, such as software downloadable via a website  or through an app store, then you are providing software as goods. In that case, your application would include class 9, and may have a description of goods of: “Computer programs and computer software for electronically trading securities. ”

If instead you provide the trading software as software as a service (SaaS) available through a web interface, then instead of providing goods, you are providing services. In that case the correct class will not be class 9, but will be class 36. Class 36 covers financial services. An appropriate description might be “Securities trading and investing services for others via the internet.” If you provide a downloadable app as well as online trading then your application could include both class 9 and class 36.

In some cases, more than two classes might be needed for the broadest protection in the case that the technology component does not fit within the industry class. For example, if your services involve telecommunications, telecommunications consulting is in class 38 and telecommunications technology consulting is in class 42.

Conclusion

Sometimes providing an appropriate description of the goods and/or services and selecting the right is easy, e.g. hats. In many other cases, it is hard. Yet, providing an accurate and complete description of goods / services in one of the most important components of a trademark application. The description determines (1) whether your application will conflict with a prior registration or application, and (2) the extent to which your registration will act to block later filers from registration on similar marks. In short, the description and class selection impacts the scope of your trademark protection at the USPTO.

Lead image credit to USPTO here.

Trademark Application Part: The Mark (Drawing)

TrademarkApplication_Mark_and_DrawingFiling a federal trademark application online looks easy. Just fill in the blanks in the online form, right? But it is not necessarily easy. Some errors are uncorrectable and can doom a trademark application. This is the first post in a multi-part series discussing the parts of a U.S. federal trademark application. In this post I’ll discuss the mark (the drawing) portion of the trademark application. Before filing a trademark application you should considered doing a trademark search.

The mark/drawing section of the application is were you specify the mark that you want to register. You will have to choose between a standard character trademark or a special form trademark. If you intend to register a standard character trademark, then you need to know the words/characters of your mark. You can enter the words/characters of your mark in the USPTO form. You don’t need to worry about section 1-4 below. You can skip straight to section 5.

If you intend to file a special form mark, you will have more work to do. A special form mark is one where a logo, font, style, color, or other graphical element is claimed as a feature of the mark in the application. First, you will need to have a JPG version of your mark having a height and a width each in the range of 250 to 944 pixels. The drawing should show the mark by itself and not together with packaging or product in the background (e.g. the STARBUCKS COFFEE drawing below does not include a coffee cup or adjacent advertising or products). A separate part of the application, called the specimen section, is were you provide evidence of the mark used on or in relation to the goods or services. The depiction of the mark in the mark/drawing section is how it will appear on the trademark registration certificate, if granted.

1. Claiming Logo, Font, or Style Elements

What if you have a logo used together with the words/characters of your mark? Or what if you have the characters of your mark provided in a stylized form or font? Should you automatically register your mark as a special form mark? No.

In many, but not all, cases the best course will be to register your mark as a standard character mark without any claim to a logo, style or font.  Claiming a logo, font, or style element may cause problems maintaining the registration if you later change/redesign the logo or style elements. In other words, are you sure you will like the style or logo elements in 10 years, or will they need a design refresh?

On the other hand, if the words/characters of your mark are weak, then you may want to include a logo or style elements to increase the chances of obtaining a registration on the Primary Register. There are several factors that you will want to consider in deciding whether to claim a logo, font, or style elements in your trademark application and whether you should pursue multiple trademark applications.

2. Including A Claim of Color or Not

Another issue that arises when claiming a special form mark is whether to include a claim of color. Generally, you probably do not want to make a claim of color, unless the color is very important. When color is not claimed, the registration will cover the mark presented in any color arrangement.

If you do not intend to claim color as a feature of your mark, then the JPG version of your mark that you submit to the USPTO in the mark/drawing section cannot contain any color. Instead the features of your mark should be shown in black. If you are claiming color as a feature of your mark, then the JPG file should show your mark in color.

3. The Drawing: A Quality Drawing

It is important that the JPG file of the Mark (e.g. the drawing) is high quality and shows the mark without noise or graininess when applying to register a special form mark. The USPTO recommends that the image be between 300 and 350 DPI. The file showing the mark will be what is used when comparing your mark other potential conflicting marks. If a feature of the mark is difficult to distinguish due to poor file quality, this may be held against you as the trademark owner who uploaded the low quality version of the mark.

4. A Description of the Literal Elements and Drawing

StarbucksCoffeeUSPTOImageIf you choose to proceed with a special form mark, the USPTO will require that you describe the literal elements in the mark that are in the uploaded JPG file. Literal elements are the character(s) of the mark appear in the Trademark Office’s standard character set, which includes letters, numbers, and certain other symbols. For example, in Starbucks’ Trademark Registration no. 3,907,157, shown at the right, the literal element is STARBUCKS COFFEE.

Also, the USPTO will require that you provide a description of the mark. The description will describe in words the design elements and the standard characters in the mark and their spacial relationship between one another. The description of the mark for Starbuck’s registration “The mark consists of the wording ‘Starbucks Coffee’ in a circular seal with two stars, and design of a siren (a two-tailed mermaid) wearing a crown.”

If color is claimed, the USPTO will require that you list the the colors that are claimed in the application in a part of the application form providing: “The color(s) [  List of Colors Here  ] is/are claimed as a feature of the mark.”

5. Changes to the Mark After Filing Rarely Allowed

Once your application is submitted changes to the mark are rarely allowed. Therefore, it is important that your mark is presented in the federal application exactly as you are (or will be) using the mark in your business. For example if your trademark has two words, will the words be used separated by a space or will they be run together? The application should include the mark in whichever way you intend to use it. Since you need to submit an example (a specimen) of the mark used on or in connection with the goods or services in addition to the drawing, the USPTO will check to see if your use of the mark matches the mark that you claimed in the mark/drawing section of the application.

Further you should use the mark consistently (e.g. with a space or without) in all of your uses of the mark. Inconsistent use can negatively impact your trademark rights.

6. Conclusion

Gathering and entering accurate information in a trademark application for a special form mark involves more work than for a standard character mark. The first decision that needs to be made in the application process is whether you should make a special form claim in the application. For more information on the mark/drawing section of the trademark application see the USPTO videos here and here.

Lead image credit to USPTO here.