1. The U.S. Patent and Trademark Office
Overview of Trademarks
Cynthia Henderson
Attorney-Advisor
Office of Intellectual Property Policy and Enforcement
(571)
Today, I’ll be giving you an overview of trademark operations, and if we have time, I will briefly cover some of the topics in trademarks that come up most often in an international arena – such as in free trade negotiations.
What do we do here in the Trademark Office??
-Our mission is to apply the statute in the examination and registration of trade marks.

2. Topics International Standards of Protection under TRIPS
Introduction to Trademark Protection in the United States
Procedures to Obtaining a U.S. Federal Trademark Registration
Distinctiveness and other Common Refusals

3. Article 15, TRIPS
Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.
Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs shall be eligible for registration as trademarks.”
Article 15 defines what a trademark can be…

4. Definition of a Trademark
Any word, name, symbol or device (or any combination thereof) used to identify and distinguish goods or services and to indicate their source

5. Types of Trademarks Word Marks KODAK Design Marks
Composite Marks containing
both words and design

6. Unusual Trademarks Shape: Bottle shape for soda pop
Color: Pink color for insulation
Sound: Three chimes sound for television broadcasting services
Scent: Plumeria flower blossom scent for sewing thread
Motion: Flying pegasus for movie studios

7. Types of Trademark Protection in the U.S.
Common Law
protection derived from use
State Registration
registered with one or more U.S. states
Federal Registration
registered in the United States Patent and Trademark Office

8. Statutory Authority
The Federal Trademark Registration Act of 1946, known as the Lanham Act (or Trademark Act) provides the statutory framework for federal examination and registration of trademarks
And that is what we do here at the Trademark Office at the USPTO

9. Federal Registration of a Trademark
Provides notice to others of marks in use in commerce in the U.S.
Provides access to the federal courts
Provides prima-facie evidence of ownership
Provides access to anti-counterfeiting statutes
Permits enforcement of rights
Provides a basis for foreign filing
-in U.S., common law rights.
Why would someone seek to register a trademar at the USPTO?
Through treaties – allows for foreign filing.

10. Registration May be Applied To:
trademark associated with goods or products
service mark associated with the delivery of services
certification mark associated by the characteristics of someone’s goods or services
collective mark indicated by membership in an organization
Nike – goods, swish
Service mark – Kmart – retail store services
Certification mark – nature and quality of goods, certify certain standards.

11. Applications May be Filed Based on:
Existing use of the mark in commerce
Intention to use the mark in commerce
Foreign application or registration
Foreign application – obtain registration, subject to cancellation if you don’t use it

12. Trademark Office Mission
Our mission is to register trademarks
The Trademark Act provides that “no trademark shall be refused registration on the Principal Register unless…”

13. Examination Process at USPTO
1. File Application.
2. Examination by Examining Attorney – Allowed, Amended, or Refused.
3. If Allowed, Notice of Allowance and publication in the Official Gazette.
4. If Refused, appeal to the Trademark Trial and Appeal Board.
5. If Refusal is affirmed:
Appeal to U.S. District Court de novo; or
Appeal to Federal Circuit on administrative record.

14. Examination Process at USPTO
6. The Office of the Solicitor defends Director of USPTO in ex parte appeals of TTAB decisions.
7. After publication, Opposition period. Both parties (Opposer and Applicant) have right to appeal the TTAB decision.
8. If no Opposition, Registration issues.
9. Cancellation proceeding available to cancel a registration. Both parties have right to appeal TTAB decision. In general, USPTO not involved in inter partes appeals of TTAB decision.

15. POST-REGISTRATION REQUIREMENTS
Requirements in the First Ten Years
First Filing: A Declaration of Continued Use or Excusable Nonuse, filed between the 5th and 6th years after the registration date.
Second Filing: A Combined Declaration of Continued Use or Excusable Nonuse and an Application for Renewal*, filed between the 9th and 10th years after the registration date.
*For Registrations under §66(a), only a Declaration of Use is required. Renewal must be made at the International Bureau, under Article 7 of the Madrid Protocol.

16. Most Common Grounds for Refusal
Lack of Distinctiveness
Likelihood of Confusion
Other common grounds (but not as frequent as 2d and 2(e)1s….
Sections 2(e)(2) and 2(e)(3): Geographic
Section 2(e)(4): Surname

17. Article 15, TRIPS
“Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.”
Stress distinguishing…(spectrum next slide)

18. U.S.: Section 2(e)(1) of the Lanham Act
“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register unless it consists of a mark which, when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them. . .” 4

19. Capable of Distinguishing Goods or Services?

20. The Merely Descriptive Test
A proposed mark is merely descriptive if it describes any significant aspect of the goods/services
Purpose
Characteristic
Quality
Use/Users
Ingredient
Function
Feature 13

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

22. Examination for Distinctiveness: Merely Descriptive?
What factors are considered?
Third party registrations are not conclusive on the question of descriptiveness (each case must stand on its own merits, and not simply registered because other such marks appear on the register).
First and only user: simply because an applicant may be the first user does not alone justify registration

23. Examination for Distinctiveness: Merely Descriptive?
What factors are considered?
If the mark is a composite mark, does the combined term evoke a new and unique commercial impression? Does it create a unitary mark, or does it have a bizarre or incongruous meaning?
SNO-RAKE held not merely descriptive of a snow removal hand tool; LA YOGURT held registrable with a disclaimer of “yogurt”

24. Examination for Distinctiveness: Is the Term Merely Descriptive?
What factors are considered?
The fact that a term is not found in a dictionary is not controlling on the question of registrability; i.e., BREADSPRED held merely descriptive of jellies and jams.
A determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. What significance will the mark would have on the average purchaser of the goods or services in the marketplace?

25. Additional Considerations…
Acronyms may be arbitrary, descriptive or generic.
DJ : Generic for disc jockey services
DJ: Merely descriptive of the subject matter of magazines for disc jockeys
DJ: Arbitrary for “diamond jewelry” since no one uses the acronym to refer to diamond jewelry
Discuss slogans?

26. Examination for Distinctiveness: Deceptively Misdescriptive?
In U.S. practice, a mark may be deceptively mis-descriptive if it:
Mis-describes some aspect of the goods; and
Consumers are likely to believe the mis-description.
Note that if the mis-description is false, but not believable, the mark is not mis-descriptive; it’s arbitrary. Likewise, if the description is not false, the mark is descriptive rather than mis-descriptive.

27. Examples Examples: WOODEN: SILK:
For plastic furniture. Consumers might believe that the furniture is indeed made of wood. Hence, WOODEN may be mis-descriptive.
For soft drinks. Consumers would not believe that the mark describes the goods, and the term is thus neither descriptive nor mis-descriptive.
SILK:
For cotton shirts.
For computers.

28. Examination for Distinctiveness: Would These Be Refused?
SPANISH CUISINE for restaurants?
THE HUNTER’S FRIEND for hunting gloves?
LEMON AID for lemon scented dish detergent?
SMOOTH HANDS for skin cream?
JEWELTASTIC for jewelry?
ELECTRIC OUTLET for retail electronics store?

29. Is it Ever Possible to Register a Non-Distinctive Designation in the U
Is it Ever Possible to Register a Non-Distinctive Designation in the U.S.?
It is possible to register a merely descriptive designation on the Principal Register if it has acquired distinctiveness (descriptive matter may also be disclaimed if mark contains other distinctive components).
Generic matter cannot be registered (unless the mark contains other distinctive components and the generic matter is disclaimed).

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

31. Acquired Distinctiveness
There are three types of evidence that may be used to establish acquired distinctiveness:
A claim of ownership of one or more prior registration on the Principal Register of the same mark for goods or services that are the same or related to those named in the pending application;
A statement that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made;
Actual evidence of acquired distinctiveness.

32. TRIPS Article 16
“The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods and services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.”
Right conferred under Art 16…

33. U.S.: Section 2(d) of the Lanham Act
“No trademark shall be refused registration unless it so resembles a mark registered in the Patent and Trademark Office as to be likely, when used on or in connection with the goods [or services] of the applicant to cause confusion, or to cause mistake, or to deceive . . .” 1 3 3 1 3

34. 2-part Test for Likelihood of Confusion
COMPARE THE MARKS
Identical Marks
Similar Marks
Sound
Appearance
Meaning
COMPARE THE GOODS/SERVICES
Identical Goods/Services
Relatedness of Goods/Services
Similar types
Use of the goods/services together
Channels of Trade/Marketing

35. Likelihood of Confusion
STRATEGYN vs. STRATEGEN
goods: computer software for business strategy plans vs. computer software for marketing and sales management
Likelihood of confusion exists?
SPRAYZON vs. SPRAY-ON
Goods: industrial cleaners and degreasers vs. cleaner for floors and woodwork
Likelihood of confusion exits?
LITTLE PLUMBER vs. LITTLE PLUMBER
Goods/Services: liquid drain opener vs. advertising services related to plumbing
Likelihood of confusion?

36. Likelihood of Confusion
LASERSWING vs. LASER
Goods: golf clubs vs. golf balls and golf clubs
Likelihood of confusion exists?
COUNTRY ROCK CAFÉ vs. HARD ROCK CAFÉ
Goods/Services: Clothing vs. restaurants and clothing
EL SOL vs. SUN
Goods: clothing vs. footwear

37. Thank you!