Entries in Trademark Law 101 (91)

Common Reasons the USPTO Might Deny Your Trademark Application

The U.S. Patent and Trademark Office can deny your application for federal trademark registration for any of the reasons stated in Section 2 of the Trademark Act, 15 U.S.C. § 1052.

There are about twenty. However, you can forget about most of them. For practical purposes, the main ones to worry about are: likelihood of confusion, mere descriptiveness, deceptive misdescriptiveness, primarily merely a surname, and unlawful use. These objections are summarized below. 

  • Likelihood of confusion. Frequently, the most tricky objection to consider is whether your mark is confusingly similar to a prior filing. This mainly means that your mark is too similar to the mark reflected in a prior-filed application or registration, in the context of the associated goods and services, such that ordinary consumers would likely, or probably, mistakenly believe that your goods or services come from the prior filer. This includes both identical trademark matches, as well as close variants. You even might have superior rights in your mark because you used before the cited prior-filer, but the USPTO still will deny your application if someone else filed before you. There are potential ways around this objection, but that’s the basic gist.
  • Mere Descriptiveness. A descriptive trademark immediately conveys information about the good or service being sold in connection with the mark, e.g., SEATTLE’S BEST COFFEE or SPEEDY AUTO GLASS. Such marks leave nothing to the imagination. The USPTO objects to descriptive trademarks because they primarily provide information, rather than identify the maker or provider of the branded good or service. In other words, the mark mainly provides information, rather than functions as a trademark by identifying the source. Longstanding use can convert a descriptive (and unprotectable) trademark into a protectable and registrable one, but doing so usually requires at least five years of “substantially exclusive,” continuous use. Otherwise, your application to register such a mark will be denied (though it may be possible to obtain registration on the Supplemental Register).
  • Deceptive Misdescriptiveness. If a shirt sold under the brand COTTON actually contains cotton, you should expect the USPTO to object based on grounds of descriptiveness. However, if the shirt doesn’t actually contain cotton, the mark wouldn’t be descriptive. The examiner instead would likely object that the mark is deceptively misdescriptive, i.e., that it claims to have an attractive attribute, but it actually does not. In an effort to protect consumers, such marks cannot be registered.
  • Primarily Merely a Surname. No one should have a monopoly over using a surname (last name) as a trademark. Therefore, if consumers are likely to perceive a mark as being “primarily merely a surname,” the examiner will object. The analysis includes the mark as a whole, so including other word or design elements can sidestep the objection. So can longstanding use, which is why MCDONALD’S and FORD can be registered.
  • Unlawful Use. Don’t forget that even though marijuana might be legal in your state, it’s still not legal at the federal level. Same with many CBD uses. If your good or service isn’t kosher under federal law, it’s a waste of money to apply to register your mark with the USPTO. Federal laws could change, but until they do, violating one can prevent your mark from being registered with the feds (though state registration could still be possible).

There are other reasons why your application to register a trademark with the USPTO could be denied, but in my practice, these represent the most common reasons. There are some smart workarounds — both before an application is filed, and after an examiner objects — so it often pays to work with a trademark lawyer. However, knowing the basic reasons why a mark can be refused registration is a good first step.

Documentary Highlights Counterfeit Wine and Teaches About Trademarks

Being locked in isn’t anyone’s first choice, but it does offer one nice advantage: a great excuse to plow through Netflix’s catalog of movies.

I recently watched “Sour Grapes,” a 2016 documentary about a counterfeiter of high-end wine. It covered one man’s operation, from sourcing empty bottles to old corks to distressed paper for faking labels. These wines sold for thousands of dollars a bottle — a long ways from the cut-rate shoes, jerseys, and watches that you might see on the street. However, the operation squarely fits within the same definition of counterfeiting: putting someone else’s brand on a good that the trademark owner didn’t make or approve.

Counterfeiting is a multi-billion dollar problem — not only for the impacted trademark owners, but also for consumers. If that wine with the Château Lafleur label didn’t really come from Château Lafleur, then where the heck did it come from? Maybe the wine inside that bottle is a less-expensive wine made by someone else. Maybe it’s poison, like the kind that killed 70 drinkers in Mexico. Who knows? 

That’s the whole point of trademarks. You know what you’re getting. You see a name or logo, and you instantly recognize the reputation of the seller. Château Lafleur? Great wine. Boone’s Farm? Probably less so. But the economic magic that trademarks provide is ruined when consumers don’t know what’s real and what’s fake. Yes, it’s pretty bad when that jersey you bought didn’t actually come from your team. But think about how bad it is when you don’t know what you’re putting in your body.

Atkins IP Talks Trademarks and Copyrights on Business Podcast

Michael Atkins joined podcasting business consultant Jeremy Epp for two talks on trademarks and copyrights. The podcasts are available to stream starting today.

The first session focuses on what entrepreneurs need to know about trademark law — selecting and adopting a trademark, maximizing rights by registering the mark with the U.S. Patent and Trademark Office, and enforcing trademark rights against infringers. It’s all you need to know about trademarks in 49 minutes.

The second session focuses on copyrights. It again is geared to the business owner. It covers copyright protections and limitations, registration, enforcement, common pitfalls of using material taken online, and independent contractor agreements. It spans 45 minutes.

Mr. Epp, the host, gives upbeat business advice through “The Jeremy Epp Show,” styled as “Expert Interviews. Business Advice. Straight Talk. Encouragement. All With a Sense of Humor.”  

He writes: “We find out most about ourselves when we’re down and out, having the School of Hard Knocks kicking us time and time again. How we respond will determine our success. It is these lessons, and others that I’ve learned in my journey that I wish to share with you to help you along your journey. You’ve read this far. You’ve researched enough. It is time to take action! Are you with me? Let’s do this!” 

To heed his call, give The Jeremy Epp Show a listen. If you tune in soon, you’ll also learn the basics of trademark and copyright law in bite-sized portions, courtesy of Atkins IP.

Foreign Trademark Owners Must Use U.S. Attorneys to Make USPTO Filings

Foreign-domiciled trademark owners now need U.S. attorneys to prosecute their interests before the U.S. Patent and Trademark Office and U.S. Trademark Trial and Appeal Board.

The rule, effective August 3, also means that Canadian patent agents no longer can represent Candadian trademark applicants, registrants, or parties before the USPTO. Canadian trademark attorneys and agents can continue to represent their clients, but cannot correspond with the USPTO.

According to the USPTO, the change is intended to “maintain the accuracy and integrity” of the USPTO’s trademark registers. It ostensibly is in response to an increasing number of “inaccurate and possibly fraudulent submissions” made by foreign-domiciled parties.

The rule affects all USPTO filers and parties that are not domiciled in the United States. A “domicile” is a person’s home or an entity’s principal place of business where “its senior executives or officers ordinarily direct and control the entity’s activities.”

Requiring a USA attorney in this context seems awfully protectionist, but hopefully it will accomplish the stated goal. If it does, I’m ok with it.

How You Sign a USPTO Application can be Crucial

It’s an innocent mistake. 

You sign your company’s application for trademark registration in your individual name, rather than in the name of your company. Innocuous, right? Yet, if your company is the one that uses the trademark, that mistake could be fatal to your application.

The USPTO clarifies: “If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned.” Trademark Manual of Examining Procedure § 803.01, citing 37 C.F.R. § 2.71(d).  

In particular, the USPTO notes that an officer who applies to register his or her organization’s trademark in his or her individual name commits a fatal error in the filing that cannot be corrected:

Non-Correctable Errors. The following are examples of non-correctable errors in identifying the applicant:

(1) President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Id. at § 1201.02(c).

So whether you seek an advantage by keeping the trademark in your personal name, or because you don’t know any better, listing yourself as the owner when the trademark is actually owned by your entity can be dangerous. It can render your application void — as well as any registration that later issues.

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