OLIVERA MEDENICA, PARTNER

L. ELIZABETH DALE, ASSOCIATE

Trademark Prosecution Before the USPTO

for the Non-IP Practitioner
OVERVIEW

 What is a Trademark?
 How do you file a Trademark?
 How do you deal with a Cease and Desist?
DUNNINGTON’S TRADEMARK PRACTICE

 The Dunnington trademark team

 Dunnington manages around 150 trademarks
 AltLegal
WHAT IS A TRADEMARK?
DEFINITION:

 Any word, slogan, design, or combination of these things, that identifies the source of your
goods and services and distinguishes them from the goods and services of another party.
 A trademark is a brand for goods and services.
 Example: Coca-Cola, Pepsi.
 But it can also be a sound, color or even a smell.
 Key element: Must identify a good or service.
Consider: color, text, shape, taglines, sounds.
WHAT IS A TRADE DRESS?
DEFINITION:

 Trade dress constitutes a "symbol" or "device" within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Wal-Mart
Stores, Inc. v. Samara Bros., 529 U.S. 205, 209-210, 54 USPQ2d 1065, 1065-66 (2000).
 It is usually defined as the "total image and overall appearance" of a product, or the totality of the elements, and "may
include features such as size, shape, color or color combinations, texture, graphics." Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992).
 Thus, trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which a
product is sold (i.e., the "dressing" of a product), the color of a product or of the packaging in which a product is sold,
and the flavor of a product. Wal-Mart ., 529 U.S. at 205, 54 USPQ2d at 1065 (design of children’s outfits constitutes
product design); Two Pesos, 505 U.S. at 763, 23 USPQ2d at 1081 (interior of a restaurant is akin to product packaging);
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (color alone may be protectible); In re N.V.
Organon, 79 USPQ2d 1639 (TTAB 2006) (flavor is analogous to product design and may be protectible unless it is
functional). However, this is not an exhaustive list, because "almost anything at all that is capable of carrying meaning"
may be used as a "symbol" or "device" and constitute trade dress that identifies the source or origin of a product.
Qualitex, 514 U.S. at 162, 34 USPQ2d at 1162.
DEFINITION:

When an applicant applies to register a product design, product packaging, color, or

other trade dress for goods or services, the examining attorney must separately
consider two substantive issues: (1) functionality; and (2) distinctiveness. See TrafFix
Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29, 58 USPQ2d 1001, 1004-1005 (2001);
Two Pesos, 505 U.S. at 775, 23 USPQ2d at 1086; In re Morton-Norwich Prods., Inc., 671 F.2d
1332, 1343, 213 USPQ 9, 17 (C.C.P.A. 1982).
LEGAL FRAMEWORK
LEGAL FRAMEWORK

 Laws Governing Trademarks:

 Lanham Act (15 U.S.C. §1051 et seq.): Federal statute that governs trademark registration, enforcement and violations.
 State Statutes: Overwhelming based on a model act, similar to the Lanham Act, and create a cause of action for aggrieved
parties to bring at the state level or in conjunction with a federal claim.
 Common Law: A narrower set of rights to a trademark arising from actual use in the region and market where the use
occurs.
 Filing a Trademark (Trademark Manual of Examining Procedure; Acceptable Identification of Goods and Services
Manual (i.e. Trademark ID Manual))
 Madrid Protocol
TRADEMARK/PATENT/COPYRIGHT
WHAT IS THE DIFFERENCE?

 Trademark is a brand for goods and services (USPTO.GOV).

 Patents protect inventions, like new engines or solar panels (USPTO.GOV).
 Copyrights protect original artistic and literary works, like songs and movies and
books (COPYRIGHT.GOV).
TRADEMARK REGISTRATION PROCESS – A
WHIRLWIND OVERVIEW
SEARCH FOR PRIOR MARKS

 Knock-out Search
 Order a third party search if your client wants an opinion.
 Any conflicting marks?
 How did similar marks do with respect to office actions?
 Did similar marks face opposition?
DRAFT THE DESCRIPTION OF YOUR GOODS/SERVICES

 Review USPTO List of 44 Classes for Goods and Services.

 Do a Basic Word Mark Search for competitors to check out their descriptions.
 Check out the USPTO Trademark ID Manual
 Craft together a TM description.
 Picking the wrong class is not fatal.
 Picking the wrong description might be. Go for the broadest definition of
goods/services that you think your client is, or will be, using.
IN USE OR ITU APPLICATION?

 In Use – Your client is using the mark in commerce. You will need to file a specimen.
 Intent to Use – Your client is not using the mark in commerce. You do not need to file a
specimen.
 What is a specimen?
 For goods: tag or label displaying the mark, or a photograph showing the mark on the goods or its
packaging. NOT invoices, announcements, order forms, leaflets, brochures, letterhead, business
cards.
 For services: business sign, brochure about the services, advertisement of services, website, or
webpage etc. NOT printer’s proof for advertisement, news articles.
SELECTING A TRADEMARK:
THE INITIAL CLIENT INTERVIEW
CLIENT SCENARIO #1:

Client walks into your office:

Client: I am starting a new business and want you to handle all the legal work.
You: Congratulations, and great, happy to help. What is it?
Client: It’s an awesome business focused on concierge service laundry cleaning services, and we will
provide it on an app, similar to Uber.
You: Sounds great, what is it called?
Client: “Grab n’ Clean n’ Go”. How do I protect my mark?
What do you respond?
STRENGTH OF THE MARK

 GENERIC: Weakest of marks; generic words that are incapable of identifying a source. “BICYCLE” for “bicycles”
or “MILK” for a “diary based beverage”. They are not registrable by themselves.
 DESCRIPTIVE: Very difficult to protect, most likely not. Descriptive terms tell you something about the
goods/services and generally are not registrable without showing that a mark has, through long use, become a
source identifier. “CREAMY” for “yogurt” or “THE ULTIMATE BIKE RACK” for a “bicycle rack.”
 SUGGESTIVE: They “suggest” the qualities of the goods and services, without actually describing them. “QUICK
N’ EAT” for “pie crust” or “GLANCE-A-DAY” for “calendars.” Suggestive marks are registrable.
 FANCIFUL/ARBITRARY: Easiest marks to protect because they are inherently distinctive and immediately
function as source identifiers. They are typically creative or unusual, so it is less likely that other parties are using
them for related goods and services. “BANANA” for “tires”. “BELMICO” for “insurance services.”
CLIENT SCENARIO #2:

Client continues talking to you:

Client: Actually now that I am speaking to you, I changed my mind. I think I am
going to call it Smith Concierge Cleaning?
Client: How do I protect my mark?
What do you respond?
PRIMARILY MERELY A SURNAME

 Under §2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), a mark that is primarily merely a surname is not registrable on the
Principal Register absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f). See TMEP §§1212–1212.10
regarding acquired distinctiveness.
 The question of whether a term is primarily merely a surname depends on the primary, not the secondary, significance to the purchasing
public. The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination:
 (1) whether the surname is rare ( see TMEP §1211.01(a)(v));
 (2) whether the term is the surname of anyone connected with the applicant;
 (3) whether the term has any recognized meaning other than as a surname ( see TMEP §§1211.01(a)–1211.01(a)(vii));
 (4) whether it has the "look and feel" of a surname ( see TMEP §1211.01(a)(vi)); and
 (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression ( see TMEP §1211.01(b)(ii)).
 In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995) . Where the mark is in standard characters, it is unnecessary to
consider the fifth factor. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007) .
 If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant.
CLIENT SCENARIO #3:

Client: Now that I’m thinking about it, maybe I should stand out. How about “F*** I Forgot to Do
My Laundry”.
Client: How do I protect my mark?
What do you respond?
SECTION 2(A) OF THE LANHAM ACT (15 USC 1052)

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 on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into
contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits,
identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the
applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title
19) enters into force with respect to the United States.
IMMORAL/SCANDALOUS MATTER
 Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on
either the Principal Register or the Supplemental Register.
 There is no requirement in §2(a) that a mark’s vulgar meaning be the only relevant meaning, or even the most relevant meaning. An
examining attorney need only prove the existence of one vulgar meaning to justify a §2(a) refusal. This may be established by referring to
court decisions, decisions of the Trademark Trial and Appeal Board and dictionary definitions.
 Shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. “Vulgar," defined as
"lacking in taste, indelicate, morally crude." In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).
 The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services
identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a "substantial composite of
the general public." As long as a substantial composite of the general public would perceive the mark, in context, to have a vulgar
meaning, "the mark as a whole ‘consists of or comprises . . . scandalous matter’" under §2(a).
 Examples: AW SHIT, ASSHOLE, DICK HEADS, BULLSHIT, 1-800-JACK-OFF.
 Not scandalous: WEEK-END SEX (for pornographic magazines); OLD GLORY CONDOMS (for condoms); ACAPULCO GOLD (for
suntan lotion).
MATAL V. TAM
MATAL V. TAM, 137 S. CT. 1744 (2017)

 In Matal v. Tam, (U.S, No. 15-1293, June 19, 2017), the United States Supreme Court held (8‒0) that the bar in
Lanham Act Section 2(a) against registration of disparaging trademarks was an unconstitutional violation of the
free speech clause of the First Amendment, affirming the Federal Circuit’s en banc decision.
 The Tam case involved the mark THE SLANTS, which an “Asian-American dance-rock band” sought to register as
a service mark. The United States Patent and Trademark Office (USPTO) refused registration under Section 2(a)
of the Lanham Act, which bars registration of trademarks “which may disparage . . . persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
 The USPTO refused registration of THE SLANTS because the term was disparaging to people of Asian descent. A
Federal Circuit panel affirmed the USPTO’s refusal based on precedent that held that the refusal of a registration
did not stop the applicant from using the mark and therefore did not bar any speech. On rehearing en banc, the
majority applied “unconstitutional condition” analysis, and reversed the panel decision, holding that a federal
trademark registration is an important federal benefit that cannot be denied because of the expressive content of
the mark.
MATAL V. TAM, 137 S. CT. 1744 (2017)

The Supreme Court affirmed the Federal Circuit, holding that the “may disparage” provision of Lanham Act Section
2(a) violates the free speech clause of the First Amendment because it discriminates based on viewpoint. The Court
rejected the government’s contention that trademark registrations are government speech that is not subject to the
First Amendment: “The Federal Government does not dream up these marks, and it does not edit marks prohibited
from registration.”
IN RE BRUNETTI
IN RE BRUNETTI, 877 F.3D 1330 (FED. CIR. 2017)

 The Supreme Court’s Tam decision struck down the disparagement clause but did not address section 2(a)’s prohibition
of “immoral … or scandalous” marks.
 In 2011, Erik Brunetti sought to register “FUCT” for his clothing line. The USPTO found the mark FUCT is the “past
tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.”
 Brunetti appealed and the TTAB affirmed, citing Urban Dictionary and Brunetti’s website, which included “strong, often
explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny.”
 Brunetti appealed to the Federal Circuit which held that “[t]here is no dispute that §2(a)’s bar on the registration of
immoral or scandalous marks is unconstitutional if strict scrutiny applies.” The court went on to conclude that section
2(a)’s prohibition of vulgar marks would not even survive intermediate scrutiny applied to regulation of purely
commercial speech.
 The Federal Circuit denied a request from USPTO for the full en banc court to reconsider its ruling.
 If the case goes to the Supreme Court, to survive strict scrutiny, the government must prove the restriction furthers a
compelling interest, and is narrowly tailored to achieve that interest.
CLIENT SCENARIO #4:

Client: How about John B. Smith Concierge Laundry? It’s my name after all, nobody can stop me
from using it.
What do you respond?
LIVING INDIVIDUAL

 Section 2(c) absolutely bars the registration of marks consisting of the name of a living individual (unless they
provide written consent) on either the Principal Register or the Supplemental Register. See 15 U.S.C.
§§1052(c), 1052(f), 1091(a).
 Whether consent to registration is required depends on whether the public would recognize and understand the
mark as identifying a particular living individual. Specifically, a consent is required only if the individual will be
associated with the goods or services, because the person is publicly connected with the business in which the
mark is used, or is so well known that the public would reasonably assume a connection.
 In re Steak & Ale Rests. of Am., Inc., 185 USPQ 447, 448 (TTAB 1975) (affirming a §2(c) refusal of the mark PRINCE
CHARLES because the wording identifies a particular well-known living individual whose consent was not of
record).
CLIENT SCENARIO #5:

Client: All you say is no, no, no – you’re a buzzkiller. How about NYC E-Laundry?
What do you respond?
REFUSAL BASED ON GEOGRAPHIC SIGNIFICANCE

 Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), prohibits registration on the Principal Register of a
mark that is primarily geographically descriptive of the goods or services named in the application. See TMEP
§1210.01(a).
 Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), prohibits registration of a mark that is primarily
geographically deceptively misdescriptive of the goods or services named in the application. See TMEP
§1210.01(b).
 Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits registration of a designation that consists of or
comprises deceptive matter, as well as geographical indications which, when used on or in connection with wines
or spirits, identify a place other than the origin of the goods. See TMEP §§1210.01(c) and 1210.08.
 GEOGRAPHICALLY DESCRIPTIVE MARKS

 To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining
attorney must show that:
 (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
 (2) the goods or services originate in the place identified in the mark (see TMEP §1210.03); and
 (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the
mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place
or services/place association (see TMEP §1210.04(c)).

In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (evidence insufficient to establish that public in
United States would perceive VITTEL as the name of a place where cosmetic products originate; Vittel, France found to be obscure); In re Cheezwhse.com,
Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT, with CAMEMBERT disclaimed, held primarily geographically descriptive of cheese
because NORMANDIE is the French spelling for Normandy, consumers would recognize NORMANDIE as the equivalent of Normandy, the primary
significance of Normandy is a known geographic place in France, and CAMEMBERT is generic for applicant’s goods; Board was not persuaded that the
primary significance of NORMANDIE was the ocean liner SS Normandie)
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE MARKS
 To support a refusal to register a mark as primarily geographically deceptively misdescriptive, the examining
attorney must show that:
 (1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
 (2) the goods or services do not originate in the place identified in the mark (see TMEP §1210.03);
 (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the
mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place
or services/place association (see TMEP §1210.04(c)); and
 (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the
goods or use the services (see TMEP §§1210.05(c)–(c)(ii)).
 Examples: KUBA KUBA for cigars; NAPA FOODS for food; REAL RUSSIAN for vodka.
LIKELIHOOD OF CONFUSION
LIKELIHOOD OF CONFUSION
 The issue is not whether the respective marks themselves, or the goods or services offered under the
marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source
or sponsorship of the goods or services because of the marks used thereon.
 “DuPont Factors” - In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A.
1973).
 Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of
confusion determination: (a) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and
commercial impression; (b) The relatedness of the goods or services as described in the application and registration(s).
 The following factors may also be relevant in an ex parte likelihood-of-confusion determination and must be considered if there is
pertinent evidence in the record: (a) The similarity or dissimilarity of established, likely-to-continue trade channels; (b) The conditions
under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing; (c) The existence of a valid consent
agreement between the applicant and the owner of the previously registered mark.
THE OFFICE ACTION
WHAT DO YOU DO?

 Must be answered within 6 months otherwise the mark is abandoned. You have 2 months from the mailing of the
notice of abandonment to revive the mark.
 All done electronically.
 Examine points raised carefully, all must be addressed.
 In most instances, easy to address. In some instances, it is a substantive refusal which requires a substantive
argument.
 Review of the Trademark Manual of Examining Procedure.
THE OPPOSITION
WHAT TO DO?

 Similar to a federal litigation.

 Respond on time.
 Address substantive arguments.
 Counterclaim?
POST-REGISTRATION MAINTENANCE
APPLICABLE DEADLINES

 Between the 5th and 6th year after the registration date the owner must file a Declaration of Use or Excusable
Nonuse under Section 8. This declaration requires a fee. The filing may also be made within a 6-month grace
period after the expiration of the 6th year with the payment of an additional fee. Failure to file this declaration
will result in the cancellation of the registration. The Section 8 declaration may be combined with an optional
Section 15 declaration of incontestability.
 A Section 15 declaration may only be filed for a mark on the Principal Register that has been in continuous use in
commerce for a period of 5 years after the date of the registration and there is no adverse decision(s) or pending
proceeding(s) involving rights in the mark. “Incontestability” enhances the legal presumptions the registration
receives. This declaration requires a fee.
 Between the 9th and 10th year after the registration date and every 10 years thereafter, the owner must file a
Combined Declaration of Use or Excusable Nonuse and Application for Renewal under Sections 8 and 9. This
filing requires a fee. The filing may also be made within a 6-month grace period after the 10th year with the
payment of an additional fee. Failure to file this declaration will result in the cancellation and/or expiration of the
registration.
THE MAGICAL MIRROR RULE

 Consider a trademark registration to be a magical mirror that must mirror what your client does, or it will break,
and the registration will be vulnerable to an attack.
 Goods and Services must reflect what the client is doing. Is it too broad? Too narrow?
 Who is the owner? Was the mark assigned? Licensed? Is it in writing?
 Consider recording the assignment with the USPTO.
 Consider voluntarily surrendering a portion of the registration.
 Consider amending or correcting the registration, but you cannot materially alter the mark or broaden the
goods/services.
CEASE AND DESIST
HOW TO RESPOND?

 Analyze the arguments made

 Hard response: USPTO deficiency. Description too broad? Wrong owner? Was
mark assigned? Consider a cancellation proceeding.
 Soft response: Disagree that mark is confusingly similar. Is the market saturated with
similar marks?
 PR response: Is this a famous mark?
 Is a declaratory judgment appropriate? You control the jurisdiction.
PUBLIC RELATIONS CONSIDERATIONS
IKEA AND IKEAHACKERS

IkeaHackers website introduced

throngs of do-it-yourself types to
different ways to reassemble their
Ikea-purchased furniture. Ikea sent
cease and desist to the eight year old
website; the global backlash was
severe and unrelenting. Ikea reversed
course, apologized, and allowed the
individual to keep the website active.
RAVELRY AND THE OLYMPICS
A social network of knitters, called Ravelry, were planning to hold a
Ravelympics, until they were issued a cease and desist letter from the
Olympic Committee, alleging trademark infringement. In response,
Revelry’s two million users sent hundreds of angry tweets and emails.
The US Olympic Committee responded with not one, but two
apologies.
HANSEN BEVERAGE AND ROCK ART BREWERY
NORTH COAST BREWING V. BROUWERIJ DE MOLEN
 THANK YOU!

Olivera Medenica Betsy Dale

[email protected] [email protected]
(212) 682-8811 (212) 682-8811