Registering Trademarks: Overcoming Descriptive, Geographic and Surname Refusals

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Registering Trademarks: Overcoming Descriptive, Geographic and Surname Refusals TUESDAY, JANUARY 30, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Draeke H. Weseman, Winthrop & Weinstine, Minneapolis The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 1.

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4 Overcoming Descriptive, Geographic, and Surname Refusals Presented by: Trademark Attorney Draeke H. Weseman Winthrop & Weinstine, P.A. Tuesday, January 30, :00 PM to 1:30 PM CST 1/30/

5 Section 2(e) Refusals Three common Section 2(e) refusals: Merely descriptive Primarily geographically descriptive Primarily merely a surname 15 U.S.C. 1052(e)(1), (2) and (4) 5

6 Primarily = Primary Significance 6

7 Overcoming Descriptiveness Refusals 1/30/

8 Pre-Filing Decisions Examining Attorney Appeal 8

9 Key Sources of Facts Sources your client controls: Websites for the goods or services Packaging and labels for the goods Marketing and advertising materials Instructions for the goods or services Sources your client doesn t control: General internet search results Dictionary, encyclopedia, and glossary entries News sources and blogs Trade journals and industry publications Competitors websites 9

10 Merely Descriptive Ingredient Quality Characteristic Function Feature Purpose Use The question is whether someone who knows what the goods or services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 U.S.P.Q.2d 1753, 1757 (Fed. Cir. 2012) 10

11 Merely Descriptive In re TriVita, Inc., 783 F.3d 872 (Fed. Cir. 2015) Mark: NOPALEA Goods: Nutritional supplements containing nopal juice Nopal = nopalea = genus of cacti Nopalea is not a made-up word obtained by adding arbitrary letters. There is abundant evidence of the words nopalea and nopal being used interchangeably. Affirmed. 11

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13 Merely Descriptive In re North Carolina Lottery, 783 F.3d 872 (Fed. Cir. 2017) Mark: FIRST TUESDAY Goods: Lottery tickets and services Explanatory text not determinative of descriptiveness or suggestiveness, but relevant to descriptiveness inquiry Affirmed. 13

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15 Merely Descriptive In re Calphalon Corp., 122 U.S.P.Q.2d 1153 (T.T.A.B. 2017) Mark: SHARPIN Goods: cutlery knife blocks which incorporate built-in sharpeners Not SharpIN (i.e. special form) SHARPIN = SHARPEN Not incongruous or double entendre w/o special form Affirmed. 15

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17 Merely Descriptive In re Well Living Lab 122 U.S.P.Q.2d 1777 (T.T.A.B. 2017) Mark: WELL LIVING LAB Services: Scientific research in the field of human health and wellness Archaic: Living a moral and virtuous life Current: Living a healthy life focused on diet and exercise Affirmed. This modern day usage of the term well-living has more significance and probative value than the dictionary meaning in terms of the likely perception of consumers. 17

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20 Merely Descriptive In re United Trademark Holdings, Inc., 122 U.S.P.Q.2d 1796 (T.T.A.B. 2017) Mark: LITTLE MERMAID Goods: Dolls Little Mermaid = young, partly human girl sea creature Little Mermaid = specific historical fictional character Historical fictional character in public domain Affirmed. 20

21 Common Mistakes COMMON MISTAKE DUBIOUS LITERARY DEVICE INNSUFFICIENT ADDITIONS WORD COMBINATION DESCRIPTIVE IMAGE DICTIONARY DEFINITIONS PRIOR REGISTRATIONS EXAMPLE SNAP SIMPLY SAFER (syringes); SHARPIN (Knives) NOPALEA (Supplements); ASPIRINA (Aspirin) SCREENSWIPE (cleaning cloths); SMARTTOWER (cooling towers); (watch parts) WELL LIVING LAB (research); LITTLE MERMAID 21

22 Strategies STRATEGY MARK AS A WHOLE INCONGRUITY DOUBLE-ENTENDRE VAGUENESS PRIOR REGISTRATIONS SPECIFY THE GOODS EXAMPLE HUTCHINSON TECHNOLOGY (Electronics) TENNIS IN THE ROUND (Tennis facilities); SNO-RAKE (Hand tool) LIGHT N LIVELY (Mayonnaise) FLIGHTLINK (Weather reporting); PRESS PAPERS (Website); TOPDOC CONNECT (Doc referrals) GEOMIMETIC (Cement); CRAWLER (Suspension parts) 22

23 Overcoming Geographic Refusals 1/30/

24 Primarily Geographically Descriptive Country State Nicknames City Adjectives Neighborhood Region Maps Coined Locations 24

25 Primarily Geographically Descriptive In re Newbridge Cutlery Co., 776 F.3d 854 (Fed. Cir. 2015) Mark: NEWBRIDGE HOME Goods: Cutlery Newbridge = Newbridge, Ireland Newbridge is not a place known generally to the public Do not need t examine goods/place association Reversed. 25

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28 The Second Prong A Three-Part Test for Goods/Place Association If: Then: 1. A location is generally known; 2. the term s geographic significance is its primary significance; and 3. the goods do, in fact, originate from the named location, A goods/place association can be presumed. 28

29 Common Mistakes COMMON MISTAKE IRRELAVANT ALTERNATE MEANINGS ALTERNATE LOCATIONS EXAMPLE NASHVILLE (TV programs); MANHATTAN (cookies) DURANGO (chewing tobacco); CAMBRIDGE (computers) 29

30 Strategies STRATEGY MINOR, OBSCURE, OR REMOTE DOMINANT ALTERNATE MEANING EXAMPLE TAPATIO (Hot sauce) SWISS ARMY KNIFE (Knives) 30

31 Overcoming Surname Refusals 1/30/

32 Primarily Merely a Surname Yes No Johnson Jones Cotton King 32

33 Primarily Merely a Surname The Benthin Factors: Inquiry to determine if the surname is the primary significance of the mark as a whole to the purchasing public. 1. The degree of a surname s rareness; 2. Whether anyone connected with applicant has that surname; 3. Whether the term has any recognized meaning other than that of a surname; 4. Whether the term has the structure and pronunciation of a surname; and 5. Whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332, (T.T.A.B. 1995) 33

34 Primarily Merely a Surname In re Integrated Embedded, 120 U.S.P.Q.2d 1504 (T.T.A.B. 2016) Mark: BARR GROUP Services: Computer hardware design training Co-founder and CTO = Michael Barr Not unusual surname No other common meaning GROUP incapable of lending sourceidentifying significance Affirmed. n. 4 We make our determination on a case-by-case basis, and any of the Benthin factors singly or in combination and any other relevant circumstances may shape the analysis in a particular case. 34

35 Primarily Merely a Surname In re Eximus Coffee, LLC, 120 U.S.P.Q.2d 1276 (T.T.A.B. 2016) Mark: ALDECOA Goods: Coffee Aldecoa very rare surname Founded by Carlos de Aldecoa Fernandez Premium Family Coffee No recognized other meaning Affirmed. [The Benthin ] factors are not exclusive and any of these circumstances singly or in combination and any other relevant circumstances may shape the analysis in a particular case. 35

36 Primarily Merely a Surname In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 U.S.P.Q.2d 1717 (T.T.A.B. 2016) Mark: ADLON Services: Hotels, Bars, Night Clubs Adlon = extremely rare surname No one with name Adlon in management Pamela Adlon = Voice of Bobby Hill Hotel Adlon = Historic hotel in Berlin (founded by Lorenz Adlon) Affirmed. However, rather than using [the Benthin ] factors as guidelines, practitioners and examining attorneys have interpreted them with a rigidity that is not warranted. 36

37 Judge Seeherman Retires December 2016 In re Bonhams & Butterfields Auctioneers Corp., Serial Nos and U.S.P.Q.2d 1717 (T.T.A.B. 2016) (Seeherman, J. concurring) (not precedential) Mark: BUTTERFIELDS Services: Auction services Butterfields = not rare surname Founder s surname, but not publicized No good evidence of other significance Affirmed. Judge Seeherman: However, before considering whether consumers would view the mark to be primarily merely a surname, I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname. 37

38 Primarily Merely a Surname In re Beds & Bars Limited, 122 U.S.P.Q.2d 1546 (T.T.A.B. 2017) Mark: BELUSHI S Services: Hostels and Pubs Belushi = extremely rare surname No one with name Belushi in management John and Jim Belushi = Famous actors Widespread public exposure Affirmed. In this case, Applicant and the Examining Attorney have presented evidence and arguments regarding the following inquiries: whether the term is a surname; whether the term has any recognized meaning other than as a surname; whether the term is the surname of anyone connected with the Applicant; whether evidence shows that the term has the structure and pronunciation of a surname; whether there is contextual use related to surname significance; and whether the evidence shows that use of the term as a surname is rare. 38

39 Primarily Merely a Surname The Eximus Factors : 1) whether the term is the surname of anyone connected with the applicant; 2) whether the term has any recognized meaning other than as a surname; 3) whether evidence shows that the term has the structure and pronunciation of a surname; 4) whether there is contextual use related to surname significance; and 5) whether the evidence shows use of the term as a surname is rare. In re Eximus Coffee, LLC, 120 U.S.P.Q.2d 1276, 1278 (T.T.A.B. 2016) 39

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41 Primarily Merely a Surname In re Weiss Watch Company, 123 U.S.P.Q.2d 1200 (T.T.A.B. 2017) Mark: WEISS WATCH COMPANY Goods: Watches Cameron Weiss - watchmaker Not rare Weiss = Weiß = German for White A habitational surname (based on a location) Affirmed. Based on [the] record, WEISS in the applied-for mark is not spelled in the standard German dictionary form, which weighs against a finding that German speakers upon seeing WEISS would stop and transliterate first to Weiß and then translate to white in English. 41

42 Primarily Merely a Surname In re Olin, Serial No (September 22, 2017) Mark: OLIN Goods: Chemicals OLIN = not rare Politicians and actors with name Founded by Franklin Olin No other meaning Structure and pronunciation of surname Affirmed. Whether a mark is primarily merely a surname and whether it has acquired secondary meaning are separate considerations under the Trademark Act. 42

43 Primarily Merely a Surname Teresa H. Earnhardt v. Kerry Earnhardt, 123 U.S.P.Q.2d 1411 (Fed. Cir. 2017) Mark: EARNHARDT COLLECTION Goods Services: Furniture, home design and construction Board: No likelihood of confusion, not primarily merely a surname Board: If combined term is not generic, then not primarily merely a surname as matter of law Vacated and remanded. The Board should determine (1) whether the term collection is merely descriptive of KEI s furniture and customer home construction services and (2) the primary significance of the mark as a whole to the purchasing public. 43

44 Common Mistakes COMMON MISTAKE ALTERNATE MEANINGS / FOREIGN MEANINGS STRENGTH OF THE MARK / ACQUIRED DISTINCTIVENESS RARITY ALONE EXAMPLE WEISS (Watches) ADLON (Hospitality services); OLIN (Chemicals) BELUSHI (Hostels and pubs) 44

45 Strategies STRATEGY DOMINANT ALTERNATE MEANING LIMITED PUBLIC EXPOSURE ADD INITIALS EXAMPLE FIORE (Bags) FERET (Watches) P.J. FITZPATRICK (Construction) 45

46 About About Messerli Us: Our & Qualities Kramer P.A. 1/30/

47 Thank you! Draeke H. Weseman Winthrop & Weinstine, P.A /30/