The PTO Says My Mark is Descriptive. What Can I Do?

Trademarks are source identifiers. They tell consumers where a good or service comes from. So when a mark consists of descriptive words, it really doesn’t function as a trademark. It tells consumers about the product — not who sells it.

For this reason, the U.S. Patent and Trademark Office will refuse to register a mark it deems to be “merely descriptive.” That is, a mark that describes a feature or benefit of the product, or the geographic area in which the product is made. “Self-laudatory” (“We’re the best!”) trademarks also fit into this category.

If the PTO objects because it perceives a mark as being descriptive, the trademark owner has a few options. First, it can try to convince the examining attorney that the mark isn’t descriptive, but instead is “suggestive.” The main difference between these categories is how quickly and specifically the mark conveys the information. If the mark leaves nothing to the consumer’s imagination (like SPEEDY AUTO GLASS), then it will be deemed descriptive. But if the consumer needs to use a little imagination to understand the information being communicated or the message is vague (like CHICKEN OF THE SEA), the mark will be classified as “suggestive.” If the mark is suggestive, the PTO will withdraw its objection and the mark can be registered on the Principal Register.

If the owner has used the mark for a long time (at least five years, but longer is better) or spent lots of money advertising the mark (like a million or more dollars), the owner can make a case that an otherwise descriptive mark functions as a source identifier because it has acquired secondary meaning. Secondary meaning means that consumers have come to associate the description with a particular source (like SEATTLE’S BEST COFFEE) and thus it functions as a trademark.

The owner’s last resort in responding to an objection is to amend its application to the Supplemental Register. The Supplemental Register is where descriptive marks without secondary meaning can be registered. The upside is that the owner can use the Circle-R symbol to indicate the mark is registered, and the PTO will cite the registration against future trademark owners applying for federal registration if the PTO deems the later-filer’s mark to cause a likelihood of confusion with the registered mark. The downside is the mark must be in use at the time the application is amended (i.e., there is no intent-to-use filing basis) and the Supplemental Register does not give the registrant the presumption of being the exclusive nationwide use of the mark in connection with the specified services — one of the main benefits of being on the Principal Register.

A trademark owner also can incorporate descriptive words into a new, distinctive trademark, such as a logo. Doing so (which requires a new application) can avoid a descriptiveness objection because the stylized design or other distinctive elements would make the mark more than “merely” descriptive. However, the owner should expect the PTO to require the owner to disclaim exclusive rights in the descriptive words that are included in the logo.

The Basics of "Look and Feel" and Personality Rights Under U.S. Law

I’m now back from Germany, where I traveled to help with a program sponsored by the University of Washington School of Law.

It combined UW law students with law students from Europe. The Europeans learned about American intellectual property law, and the Americans learned how they do things in Europe.

I spoke on two topics: “look and feel” protection under U.S. trademark law, and right of publicity under U.S. law. These issues come up from time to time in my practice, so they may be of interest to trademark owners.

The takeaway for “look and feel” protection: distinctive elements of product packaging, store interiors, or product design can be protectable under trademark law as “trade dress” if together they tell consumers where the product comes from. In other words, if they function the source-identifying role that trademarks play.

However, there are two big caveats. First, the elements can’t be functional. If they serve a useful purpose, they can’t be protectable under trademark law (though they could be protectable under patent law). Second, if they are part of the product themselves, the owner must prove that they have acquired secondary meaning, meaning that over time consumers have come to associate the trade dress (such as the product color, shape, or style) with a particular producer. Until that happens, product features can be freely copied.

The most important thing to know about right of publicity protection is that some states — including Washington — have statutes that protect against the commercial use of a person’s name, likeness, and voice without the person’s permission. The First Amendment is the biggest exception to such protection. The press can do most anything it likes without fear of liability. So can artists — as long as the artist embellishes the literal image of a person enough to transform it into a work of art (regardless of whether the art is good or bad, flattering or critical). Almost everyone else needs the person’s permission before making use of their “personality” in marketing a product.

My slides are available here (look and feel) and here (right of publicity).

Upcoming Presentation: "Protecting Your Client's Marijuana Trademark"

I’ve got some clients who are interested in protecting their (legal) marijuana trademarks: both medical and recreational. 

Since they’re interested, I’m interested.

And, besides, I think it’s just plain interesting. Illegal on the federal level. Legal in some states for medical uses. Legal in Washington and Colorado for recreational uses. Illegal at airports. Illegal across state lines. It’s a legal mess, all right. But we’ll help sort it out this week at the King County Bar Association Intellectual Property Law Section’s monthly brown bag lunch. March 6, noon to 1. Members can attend live or stream on their computer. Information on the IP Law Section here.

The nickel version of my thoughts: marijuana trademarks are like all other trademarks, except for the “lawful use” requirement at the federal level. In short, you can’t register marks for marijuana-oriented goods or services with the U.S. Patent and Trademark Office, because those uses aren’t legal. So you should register “clean” versions of your client’s goods and services at the federal level, and the marijuana uses where legal at the state level. Just don’t get too cute with the PTO (like “MARYJANE HEMP FOODS” for food supplements) or the PTO will require you to answer some pretty direct questions about whether your client’s goods contain marijuana.

My slides are viewable here.

Bring your questions, best practices, and best guess at what the law will look like in five years.

Posted on March 3, 2014 by Registered CommenterMichael Atkins in | Comments1 Comment | EmailEmail | PrintPrint

Waiting to Apply for Registration Can Cause Avoidable Problems

I’ve had a few clients recently who regretted waiting to apply to register their trademarks.

This isn’t about scaring anyone. Waiting a while often doesn’t have a downside. Indeed, deciding not to register a trademark at all might be the right thing to do.

But sometimes waiting gives someone else the chance to file an application for federal registration first. That means they get in line ahead of you. If the PTO grants their application — and their mark is confusingly similar with yours — their registration would block yours. It would not matter that you started using your mark first and have superior trademark rights. And when their registration issues, you could be locked into the geographic area in which you made sales before they applied for their registration.

Depending on the situation, that may not be the end of the world. But for some trademark owners, that would be unacceptable. If so, they would need to clear out the blocking application or registration. Unfortunately, that process can be time-consuming and expensive. If the PTO’s 30-day opposition period hasn’t passed, they can start an opposition proceeding. If it’s too late for that, or if the registration has already issued, they can start a cancellation proceeding. A party can win either of those proceedings if it can show it used its mark first and the applicant’s or registrant’s mark is likely to cause confusion with its mark.

In such cases, winning is not the problem. The problem is those proceedings can take a long time and can cost a lot of money — a problem that would not have existed if the party with superior trademark rights had simply filed its application for registration first.

Posted on February 9, 2014 by Registered CommenterMichael Atkins in | CommentsPost a Comment | EmailEmail | PrintPrint

Just Call it the Super Bowl

No need to call it the “Big Game.”

If you’re having people over to watch the Super Bowl, feel free to say you’re having a Super Bowl party.

There’s much in the news about NFL’s heavy-handed trademark enforcement. They’re bullies. But pressuring people to make up silly code names for the Super Bowl to avoid using its trademark has no basis in the law, at least not in the Ninth Circuit.

Others may differ (not counting the NFL, who I’m sure will differ). But in the Ninth Circuit, as long as you don’t imply some sort of sponsorship or connection with the trademark owner, you can use a trademark without the owner’s permission in order to refer to the trademark owner. It’s a form of a fair use known as “nominative” fair use. In my opinion, that applies to the Super Bowl trademark.

The Ninth Circuit described the elements of the nominative fair use test as follows:

“First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”

Here, there’s no non-awkward way to refer to the Super Bowl without saying “Super Bowl.” (I don’t count “Big Game” as being non-awkward.) Therefore, speakers can have at it, as long as they don’t use logos or other trappings that would make someone think your Super Bowl party is actually sponsored by the NFL. (Now that would be a party!)

This is just like Terri Welles truthfully describing herself a former Playboy Playmate of the Year without Playboy’s permission. When Playboy sued, the Ninth Circuit said she had every right to use those trademarks because:

“[T]here is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the ‘nude model selected by Mr. Hefner’s magazine as its number-one prototypical woman of the year 1981’ would be impractical as well as ineffectual in identifying Terri Welles to the public.”

As far as I’m concerned, the same is true for “Big Game.”

Just say Super Bowl. No one will be confused.

P.S. Samsung had great fun with the NFL’s overbearing trademark enforcement during last year’s Super Bowl. It was the best commercial shown because it showed how comically absurd the NFL’s enforcement practices really are.

Posted on January 28, 2014 by Registered CommenterMichael Atkins | Comments1 Comment | EmailEmail | PrintPrint
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