Seattle Trademark Lawyer

One of my clients received a new type of office action from the U.S. Patent and Trademark Office. It was in response to a declaration of use filed under Section 8 of the Lanham Act to renew its registration for five more years. The USPTO stated it wanted more proof that each item listed on the registration certificate was still in use — even though my client’s filing was accompanied by an affidavit to that effect.

“Really?” the USPTO seemed to say. “Prove the continued use with specimens showing that each branded item is still being sold.”

According to the government, the inquiry was random. It explained that ”[t]he USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods and/or services identified in the registration.”

“To comply with the audit,” the USPTO added, “you must submit proof of use of the registered mark for two additional goods and/or services per class. If proof of use for the goods and/or services identified is not available, the identified goods and/or services and any other goods and/or services not currently in use should be deleted from the registration.”

For those audited, this means more work. Nonetheless, I like the idea. Registrations that are renewed for all goods and services listed on a certificate — regardless of whether the mark is actually still being used for all such items — wrongly clutter up the trademark registry. Such “zombie” registrations can prevent actual trademark users from registering similar marks in connection with similar goods or services. They also give the registrant the appearance of trademark rights beyond those it actually has.

An audited registry better serves those who qualify for its benefits. It also gives our trademark registration process more credibility. I think the result is worth the effort.

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.