Archive for the ‘Trademark Law – Current Issues’ Category

Aug
06

Don’t Lose Out on Trademark Registration by Submitting Faulty Specimens!

I.   Background

Trademark applicants may mistakenly assume the USPTO’s specimen requirements play second fiddle to other trademark registration requirements (e.g., no likelihood of confusion, not merely descriptive or generic, etc.)  That is, if the examining attorney finds that the proposed mark meets non-specimen related registration requirements, the submission of specimens is a mere formality for being granted registration of the mark.  This misplaced belief can result in a refusal by the examining attorney to register the mark.

The commentator has previously blogged about specimen-related issues that will likely prevent an otherwise satisfactory applied-for mark from being registered.  The Trademark Trial and Appeal Board’s recent decision in In re Midwestern Pet Foods, Inc. (July 18, 2018) is another reminder that non-compliant specimens will prevent registration of the mark.

In Midwestern, the applicant’s word mark EARTHBORN REBORN for pet food, submitted to the USPTO  as in intent-to-use application, received a Notice of Approval.  The applicant’s registration problems started when it submitted specimens with its Statement of Use.   Under the Trademark Act, the specimen must show a substantially exact representation of the mark as used in commerce.  Additionally, for goods (in this case pet food under International Class 31) the specimen must establish that the mark is used in connection with the identified goods.  Put another way, the specimens must establish that the consumer will readily identify the mark as being associated with the goods the consumer plans to purchase.

In Midwestern, the applicant had submitted a website shot of the actual product as its specimen.   Oddly the screen shot mentioned nothing about a pet food product but instead stated “Turn your empty earthborn holistic bags into recycled products and earn money for pet charities in the process.”   The applied-for mark was a simple word mark for the words EARTHBORN REBORN.  The specimen displayed the mark as EARTHBORN HOLISTIC inside of a circular design with the wording REBORN below and overlapping the circle.  Basically the specimen showed a mark with the intervening word  “holistic” separating the words Earthborn and Reborn.  This presentation was deemed an unacceptable material alternation of the approved word mark EARTHBORN REBORN.  Nor was there any reference to pet food in the submitted specimen.

The types of specimens acceptable for goods include tags, labels, instruction manuals, and packaging showing the mark on the actual goods or displays associated with the actual goods at their point of sale.  The USPTO, in recognition of the fact that many goods are sold on websites, will accept webpages as specimens as long as they include a picture or textual description of the goods associated with the marks and specify the means to order the odds or services associated with the mark.  Generally, the mark in combination with the good/service and the ordering means must be presented on the same webpage.  Such a website page layout should serve as an acceptable point of display of the mark.

The USPTO allows an applicant to submit a substitute specimen if the original specimen is not accepted by the examining attorney for registration purposes.  Surprisingly, the Midwestern applicant did not submit a substitute specimen but instead filed a response that did not address the specimen’s deficiencies and even stated that the recycling container depicted in the specimen as an acceptable point-of-sale display as ancillary services to goods.

Not surprisingly, the examining attorney issued a final refusal.  Then the applicant filed a Request for Reconsideration and submitted a substitute specimen.  The substitute specimen was an advertisement faxed to the USPTO containing an image of the applicant’s recycling bin which now featured the prominent EARTHBORN REBORN abutting images of the applicant’s pet food contained in bags.  The substitute specimen was accompanied by an affidavit of a corporate representative stating that the recycling bins featuring the mark are located in the same retail locations as the where the applicant’s pet food is sold, thus “encouraging our customers to buy our pet foods and recycle out bags.”  The affidavit further stated that the bins serve as point-of-sale displays that further “strengthen our customers’ association of the EARTHBORN REBORN mark with our pet food.”

The examining attorney denied the Request for Reconsideration on the same grounds she had specified in her final rejection and the applicant appealed.  The Board considered both the original and substitute specimens in rendering its opinion.

II. The Board’s Conclusions

  • The original specimen was not a substantially exact representation of the mark because EARTHBORN HOLISTIC is not congruent with the word REBORN. As depicted, the word EARTHBORN is “entwined” both physically and conceptually with the word HOLISTIC.   This presentation prevents EARTHBORN and REBORN from “engendering a separate commercial impression apart from the remaining elements” of the specimens.   That is the mark EARTHBORN REBORN is not presented  as a “stand-alone” mark.
  • The substitute specimen which included the words “Through our EARTHBORN REBORN” recycling program . . . .” Here, the Board deemed this presentation as a substantially exact representation of the drawing presented in the application.
  • Both the original and substitute specimens failed to show the applied-for mark in connection with the identified goods. The Board noted that the specimens did not involve containers, tags, or labels.  The deciding factor was whether the provided specimens constituted a display associated with the goods specified in the application, namely pet food.   To be an appropriate point of sale display, the usage of the mark must be at the “point of sale location to provide a customer with the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of the goods.”  The Board citing In re Sones, 590 F.3d 1282, 1293 (Fed. Cir. 2009).

Regarding the original specimen, the Board found that the webpage specimen did not contain a picture or textual representation of pet food;  it did not show the mark EARTHBORN REBORN in association with pet food; and it did not provide a recognizable means for the customer to order the pet food.  The only product depicted was a recycling bin.  The Board also stated that website tabs labelled, e.g., “Learn Me” and “Find a Dealer” are not recognized means of ordering website goods for trademark specimen purposes.

Regarding the substitute specimen (which was found to meet the first prong of the specimen suitability test), the applicant argued that the advertisement constituted a point of sale display.  Again, the Board found that EARTHBORN REBORN mark functioned as a source identified for a recycling program, not pet food.  The Board had no information as to how the flyer was used in connection with the marketing and sale of the applicant’s pet food in retail locations.  Accordingly the Board refused to register the mark because the substitute specimen failed to meet the “point of display” requirement.

III.  Discussion and Take-Home Points

This case is a good example of how lack of communication can result in the rejection of an otherwise acceptable mark.  Here the applicant had come up with a catchy mark which was subsequently denied registration on “inadequate” specimen grounds.   So what went wrong?

It is this commentator’s opinion that an attorney who files, in particular an intent-to-use application, should inform the applicant of the specimen requirements should the mark receive a Notice of Approval early on.  Sometimes a great deal of time can pass between the issuance of the Notice of Approval and the submission of the required Statement of Use because the applicant is working on the getting the product to market and can request up to 5 extensions of time for submitting the required specimens.  The attorney should also inform the applicant that it would be a good idea for the attorney to review labels, marketing materials, etc. showing the mark before these items are actually used in commerce to ensure that they will meet the requirements of the USPTO from a specimen perspective. This would include examining website pages to ensure that the “point-of-sale” requirements will be met with a website page specimen.

If a 1A application is to be submitted, the attorney should not be hesitant to tell the applicant to “design” or “fix” a specimen so as to prevent a registration problem.

Also, specimens are to be current representations showing usage of the mark in commerce.  Furthermore, any future updates of the specimens once the mark is registered must continue to show the mark as depicted in the application’s drawing; material alternations may affect the mark’s registration status.

In Midwestern, it is also not clear why the original application did not specify both pet food as a good and recycling services as a service for which trademark registration was being sought since it seems that its “favorite” marketing focus aspect was promoting the recyclability of its pet food’s packaging, not the pet food itself.  Nevertheless, a specimen showing usage of the mark in connection with the pet food good would still have been required.

In conclusion, with the appeal, the applicant spent a lot a money trying to overcome obvious specimen errors only to still be denied registration of its mark.   There were also some procedural issues concerning the appeal process itself that are not discussed here but are detailed in the opinion.

The Bottom Line: The trademark registration process should not be conducted in a vacuum. Attorneys should be consult with the applicant about the specifics concerning the presentation of the applied-for mark in its marketing endeavors from labels to website presentations to ensure that they comply with specimen and mark usage requirements.  This proactive approach will help ensure that an otherwise acceptable mark will not miss out on registration due to faulty specimens.

 

© 2018 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY.

Jun
26

Requirements for the Proper Submission of Internet Evidence During the Prosecution of Trademark Applications

Introduction

Website pages may be relied on by: (1) the examining attorney to support his grounds for rejection of the applicant’s mark;  and/or (2) the applicant as evidence to try and overcome a rejection. This blog discusses the new rules for submitting Internet evidence to the USPTO by the applicant in support of registration as the result of two recent decisions by the Trademark Trial and Appeal Board (“TTAB” or “Board”).   Take home points are presented at the end of the blog.

Discussion

When making Internet evidence part of the record, the Trademark Manual of Examining Procedure (TMEP) has for several years required the examining attorney to: (1) provide complete information as to the date of the evidence was published or accessed from the Internet  . . . . and the complete URL address of the website; and (2) download and attach the evidence to the Office action.   TMEP § 710.01(b). These requirements were adopted on the basis of Board’s precedential opinion in Safer Inc. v. OMS Invs. Inc., 94 USPQ2 1031, 1039 (TTAB 2010).

In its precedential decision of May 16, 2018 in In re Mueller Sports Medicine, Inc., the Board extended the requirements imposed on the examining attorney concerning Internet data to applicants in ex parte proceedings.  Thus, an applicant who submits Internet data in response to an office action now must provide the same level of detail as is required of USPTO examining attorneys.

If the applicant’s response includes Internet evidence without the URL or date the information was printed, the examining attorney must object to the evidence in the first Office action following the applicant’s response and advise the applicant as to the proper way to ensure that the proffered Internet information will be treated as evidence.  Similarly, the applicant must now also object to any Internet data provided by the examining attorney that does not comply with TMEP § 710.01(b).

Failure of the examining attorney and/or the applicant to object to the other’s improperly submitted Internet data results in waiver by the receiving party of any further objection to the insufficiency of the Internet evidence.   This means that the Board may consider the “improper” website evidence for whatever probative value it may have.

In its June 7, 2018 decision in In re I-Coat Company, LLC, the Board had a chance to address its decision in Mueller when the applicant failed to properly submit Internet data in its Request for Reconsideration of its rejected application prior to filing its appeal. The examining attorney objected to the submitted Internet evidence because the dates of website access were either missing or many of the URL addresses appearing on the printed pages were cut off.  Slip opinion at pg. 4.

The applicant appealed and the applicant’s counsel submitted a declaration and accompanying exhibits showing the Internet pages presented in the Request for Consideration and the dates upon which the websites were accessed.  The declaration included the statement that “[t]he applicant asserts that it lists the marks below and resubmits this evidence with appropriate dates and URLs for the Board’s consideration.”  Slip opinion at 4.

In I-Coat, the Board succinctly stated that “[i]n accordance with our decision in Mueller Sports Medicine, we will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or providing this information in a response, except where the examining attorney does not object.”

As it turned out, the I-Coat applicant was left off the hook because its evidence had, albeit incorrectly, been submitted during prosecution of the application prior to the Mueller decision.  The Board thus considered I-Coat’s later submitted evidence that was duplicative of the evidence previously submitted with the Request for Consideration.  However, as is generally the case with any new evidence that is presented in an appeal whether in a court of law or in this case before the TTAB, the Board did not consider any evidence that was not previously submitted during prosecution.  This is because such evidence is untimely and is not considered in an appeal.  37 C.F.R. § 2.142(d); TBMP § 1203.02(e) and § 1207.01.  Slip opinion at 7.

Take Home Points

Attorneys who prosecute trademark applications need to be mindful of Internet evidence submission requirements in response to an Office action by the examining attorney.  Care should be taken to ensure that the proffered evidence has the required information.  No longer will the Board entertain Internet evidence that is not been properly submitted to the examining attorney prior to appeal with one exception:  the examining attorney does not object to improperly submitted Internet evidence.

Similarly, the applicant’s attorney should review any Internet-based evidence provided by the examining attorney as grounds for rejection in an Office action for compliance with the TMEP’s requirements.  Objections to any provided evidence should be presented in a timely response to the underlying Office action.

Finally, care should be taken to ensure that the applicant’s response(s) during an ex parte proceeding includes all relevant evidence the applicant may wish to have available for any future appeal.  Additional evidence not previously provided to the examining attorney during prosecution of the application will likely not be considered by the TTAB.

© 2018 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY OF YOUR CHOOSING.

 

 

 

 

 

Jan
23

Don’t Lose Out on Getting a Registered Trademark or Service Mark by Filing an Unacceptable Specimen!

INTRODUCTION

The scenario:  An applicant files an application for a registered trademark with the USPTO and the proposed mark meets the following requirements for obtaining a registered trademark: no likelihood of confusion with existing registered marks plus the mark is not merely descriptive or generic.   So far so good.  But what if the applicant does not provide an appropriate specimen to the USPTO demonstrating how the otherwise acceptable mark is used in interstate commerce?  The registered mark will not be granted even though the mark itself was found to meet the other criteria for registration.

Although relatively uncommon, a “wrong” specimen situation that involves appeal to the Trademark Trial and Appeal Board (“TTAB” or “Board”)  does occasionally arise as the TTAB’s precedential decisions in In re Kohr Brothers, Inc.  (decided Feb. 9, 2017) and In re Pitney Bowes (decided Jan. 10, 2018) remind us. In the former case, the TTAB sided with the examining attorney and found that the provided specimen for a trademark application was inadequate for showing usage of the mark in interstate commerce.  In the latter case, the TTAB found that the Applicant’s substitute specimen for a service mark would allow the consumer to identify the mark with the offered services.

Specimens for goods and services have different requirements.  For service marks, business cards, website screen shots, brochures, etc. are generally accepted as specimens providing the specimens indicate the types of services being offered, show the mark itself, and designate the source of the services (i.e., the person or business entity providing the services under the mark).   These days, screen shots of websites are often submitted as specimens for service marks.

For trademarks, the specimen must have an association with the actual goods specified in the trademark application.   Section 45 of the Trademark Act states:

A mark is deemed to be in use in commerce on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on the documents associated with the goods or their sale; and (B) the goods are sold or transported in commerce. 

An example of an appropriate “specimen” document is a package insert included with a clinical assay kit consisting of small vials of reagents.

The In Re Kohr Brothers, Inc. Decision

In In re Kohr Brothers the Applicant’s word mark for CONEY ISLAND BOARDWALK CUSTARD had received provisional approval as an intent-to-use application.  However, the examining attorney subsequently refused to register the mark because the proffered specimen appeared to be mere advertising material.

The Applicant had submitted as its specimen a photograph of a sign posted within its small shop (basically a boardwalk stand) which it asserted was an appropriate “display” specimen.  The examining attorney disagreed and the appeal ensued.  The Board first noted that “[s]ection 45 of the Trademark Act does not define the term “displays associated therewith, and . . . the Board must make a case-by-case determination of whether a particular use asserted to be a ‘display’ is adequate to demonstrate use in commerce.”  Slip opinion at 3.

The Board concluded that the display specimen did not demonstrate use in commerce for several reasons.  First, the submitted specimen included a picture of the goods (a cone with presumably custard).  The specimen also included a stylized ferris wheel on the right.  Yet, the application had been for the word mark CONEY ISLAND BOARDWALK CUSTARD.  The Board found that the depiction of the cone is more likely to be perceived as part and parcel of a composite word and design mark than as an unmistakable indication of the Applicant’s goods.  Slip opinion at 6.  That is, the specimen did not truly reflect the mark actually specified in the application.

Second, the specimen photograph was of a small sign that was posted on a wall opposite the counter where customers placed their orders and adjacent to governmental issued licenses for the business.    The Board opined that the placement of the specimen was “hardly a place where the merchant would place material intended “ ‘to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.’ ” Slip opinion at 7 quoting TMEP § 904.03(g).  As such the Board held that the specimen cannot be considered as a display establishing a ready connection between the mark and the goods and affirmed the examining attorney’s refusal to register the mark.  Slip opinion at 8.

The In Re Pitney Bowes Decision

In In re Pitney Bowes, the mark was a logo for various services involving mail services.  The Applicant submitted screen shots of a website as its specimen.  The examining attorney refused registration on the ground that the specimen did not show the Applicant’s mark in use in connection of any of the recited services in the application.  The situation was complicated by the fact that the webpage described a self-service kiosk that consumers could visit to mail and ship items.  Although the kiosk was provided by Pitney Bowes, the examining attorney contended that Pitney Bowes itself was not performing the mail-related services itself.   The screen shot did show the name of the service provider, Pitney Bowes next to the logo mark thereby establishing a “linkage” between the mark owner and the mark readily ascertainable by the consumer.

The situation was further complicated by the fact that the webpage referenced third-party services such as those of the United States Postal Service.  The examining attorney understood this fact to mean that the only services provided through Pitney Bowes’ kiosk were not services actually being performed by Pitney Bowes.

Pitney Bowes then offered a substitute specimen showing a webpage referring to automated shipping software. i.e., a good.  The examining attorney again found that the specimen failed to demonstrate that the Applicant was providing the services listed in the application.  Slip opinion at 5.  Instead, the Applicant was providing a good that assisted consumers in mailing and shipping and ship letters and packages.  Slip opinion at 7.

Pitney Bowes appealed the matter to the Board and won.  In siding with Pitney Bowes, the Board emphasized the fact that the company’s attorney had sent a letter to the examining attorney during the prosecution process that Pitney Bowes does provide some of the application’s referenced mailing services in that its employees pick up letters and packages left by users in the kiosk receptacle and deliver them “into the mail stream.”

Precedent caused the Board to find that consideration must be given to explanations offered by the Applicant which clarify the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.  Slip opinion at 8.  Here, even though the examining attorney had reasonably found the first submitted specimen unclear as to whether the Applicant itself provided the mailing services listing in the application, the Applicant’s attorney had adequately clarified the services performed by the Applicant to establish that there was a direct association between the mark and at least some of the services in the class.  The first specimen was deemed acceptable by the Board because it demonstrated the use of the logo mark in a manner that “creates in the minds of potential consumers a direct association between the mark and at least some of the services in the class.”  Slip opinion at 9.

TAKE HOME POINTS

  1. An improper specimen can prevent registration of a mark even though the mark meets all of the other criteria for registration.
  2. Specimens must clearly show an association between the mark actually presented in the application and the associated goods/services. Any major deviation in the way the mark is presented in a specimen from its presentation in the application may prevent registration of the mark as the In re Kohr Brothers decision demonstrates.
  3. The mark needs to be readily ascertainable by the consumer to allow the consumer to associate the mark with the goods or services. In In re Kohr Brothers, placement of a sign with the actual mark right on or right next to counter frequented by consumers such that consumers could readily see the mark may have been acceptable.  So would some type of cone wrap or disposable cup for holding a scoop of the custard which included the mark and reference the business providing the product.
  4. With website specimens, it is important that the mark be present on the webpages as well as the name of the business/individual providing the service. Additionally, any service mark specimen must include the mark as presented in the application and specify the services being provided under the mark.
  5. Webpage screen shots may be provided as specimens for the goods listed in a trademark application but certain criteria must be met.
  6. It is a good idea to assess the reasonableness of a specimen before submitting it to the USPTO to ensure that it will meet specimen requirements.   If the application is for an intent-to-use application and not filed by a trademark attorney, the applicant may nevertheless wish to consult with a trademark attorney concerning future specimen requirements if and when a Statement of Use is to be filed to secure registration of the applied-for mark should a Notice of Allowance issue.   Most intent-to-use applicants will be “developing” specimens after the application is submitted to the USPTO and have the time to do it right.

 

 

© 2018 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY.

 

 

 

 

Jan
12

Issue Preclusion in Trademark Infringement Lawsuits Commenced After an Opposition Proceeding Before the TTAB

This blog discusses the doctrine of issue preclusion applied in the context of trademark infringement lawsuits when the defendant and plaintiff were previously  involved in an opposition proceeding before the TTAB.

On Dec. 11, 2017 the Southern District of New York granted summary judgment to the plaintiff in the trademark infringement case of Cesari s.r.l. (Italian Limited Liability Company) v. Peju Province, Winery, L.P., et al. on issue preclusion grounds based on the U.S. Supreme Court’s 2015 decision in BB Hardware, Inc. v. Hargis Indus.   Defendant Peju Province and plaintiff Cesari had “met previously” in a 2003 opposition proceeding before the Trademark and Appeal Board (TTAB) when Cesari s.r.l. (“Cesari”) as the registrant of the mark LIANO for wines opposed registration of Peju Province Winery, L.P.’s (“Peju”) applied-for mark, LIANA, for wines.  The TTAB sided with the registrant and denied registration of the LIANA mark.  The trademark infringement lawsuit, which is the subject of this blog, ensued many years later.

In the trademark infringement lawsuit Peju argued that there was no confusion between its white wines versus Cesari’s red wine products. Different trade channels were involved based on the cost of the parties’ respective wines and other factors. Peju alleged that the TTAB in its opposition decision had not addressed these differences in marketing channels including the fact that its wines were white wines from grapes grown in the Napa Valley.   The TTAB’s opinion had cited Octocom Systems v. Houston Computers Services, Inc. in support of its position favoring opposer Cesari. 918 F.2d 937 (Fed. Cir. 1990) (stating that “[t]he authority is legion that the question of registerability of an applicant’s mark must be decided on the basis of the identification of applicant’s goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales are directed.”).

According to the Cesari court, neither the opposer’s pleaded registration or the involved application had restrictions as to the channels of trade or purchases.  That is, the TTAB had correctly found that both the registered mark and the applied-for mark used the broad term “wines” for its description of goods with no limitation as to the intended trade channels, if any.

The Cesari opinion distinguished the differences between a trademark infringement action and a TTAB opposition proceeding in assessing marketplace factors.  In a trademark infringement action courts are focused on what is actually happening in the marketplace rather than on an application or registration.   The registered mark and accused mark are not just viewed according to their typewritten and aural similarity of the marks but how they are presented in the marketplace. Cesari slip opinion at 7.

By contrast, in a TTAB opposition proceeding, “a party opposing an application to register a mark . . . often relies only on its federal registration, not on any common-law rights in usages not encompassed by its registration.” The TTAB thus “typically analyzes the marks, goods, and channels of trade only as set forth in the application and in the opposer’s registration, regardless of whether the actual usage of the marks by either party differs.”   Cesari slip opinion at 7.  The TTAB is therefore limited to deciding whether or not a likelihood of confusion exists on the basis of the disclosed usages within an application versus a registration.

When would issue preclusion be appropriately applied in a trademark infringement lawsuit despite the different focus by a federal court? According to the Cesari court “[i]f a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of confusion issue as a district court in infringement litigation.”  Slip opinion at 7.

Issue preclusion would not apply if the registered mark owner uses its mark in ways that are materially unlike the usages in its application.  Thus, if  the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.  This statement by the Cesari court recognized Justice Ginsberg’s concurring opinion in B & B Hardware where she emphasized the “marketplace” requirement for finding issue preclusion.  Specifically, where the TTAB decided contested registrations “upon a comparison of the marks in the abstract and apart from their marketplace usage,” there will be no preclusion in a later infringement lawsuit.   Concurring opinion in B&B Hardware quoting 6 J. McCarthy, Trademarks, and Unfair Competition §32: 101, p. 32-247 (4th ed. 2014).

The Cesari court held that the TTAB had adequately considered the market place issue in finding that the LIANA mark should not be registered.  The registered and applied-for mark were both listed as International Class 33 goods, namely wines.  No other descriptive words were used which might have limited the usage of the goods to limited and different trade channels.  As such, “[i]n the absence of any limitations in the parties’ identifications of goods, [the TTAB] must presume that the goods move through all reasonable trade channels for such goods to all usual classes of consumers for such goods.” Cesari quoting C&N Corp. d/b/a/ Door Peninsula Winery v. Ill. River Winery, Inc., No. 91174718, 2008 WL 4803896, at *3 (T.T.A.B. Oct. 21, 2008).

The defendants had argued that their actual marketplace usage of LIANA is materially different from that which the TTAB adjudicated. This usage, according to defendants, involves wines from grapes grown in Northern California, wines purchased by sophisticated customers; new world wines; wines priced between $40 and $60 a bottle; and wines sold on specific websites and at specific wineries.

The Cesari court discounted the defendants’ arguments and found that the defendants’ specific trade channels are among the “reasonable trade channels” and “usual classes of consumers” the TTAB considered.  The Cesari opinion rather sarcastically concluded that “[w]ines purchased by sophisticated consumers are still wines.  “Because defendants have not offered any evidence that LIANA is used with respect to goods other than wines (bicycles or soda, for instance), there are no “non-disclosed” usages that might necessitate a successive adjudication.”  Slip opinion at 9. Summary judgment was granted to Cesari on issue preclusion grounds.

A sommelier may not agree with the court’s inference that wines purchased by sophisticated consumers are on the same level as wines purchased by the average Jill.   Nevertheless, after registration had been denied by the USPTO, the defendants could have appealed the TTAB’s decision rather than simply continue using a name that is essentially a verbatim copy of a registered mark.   This commentator has no idea why Peju was “stuck” on the name LIANA.  Perhaps the defendants were the prior users in which case this evidence could have been brought to attention of an appellate court had Peju appealed the TTAB’s decision. Peju knowingly took a risk in its continued usage of the mark following the opposition proceeding before the TTAB.  Perhaps it felt that its usage was too geographically limited to cause a problem with imported wines and/or that the Italian company owner of the mark would not pursue a costly trademark infringement lawsuit in a U.S. court.

Commentator’s Comments

Did the district court get it right that issue preclusion prevented a “revisit” of the confusion issue on marketplace grounds? Wine is available in a wide variety of markets from local wineries to grocery stores to liquor stores to restaurants to on-line ordering.   The prices vary widely across all markets and within markets.   And consumers often do have a preference for white whites (the defendants’ wines) versus red wines (the plaintiff’s wines) but both white and red wines are generally sold within the same liquor store, restaurant, etc.   It is not clear what Peju’s market place usage was at the time its application was rejected by the TTAB in 2004 versus when the trademark infringement lawsuit was commenced.  For example, was the usage of LIANA indeed confined to specific and different trade channels relative to the LIANO mark as the defendant contended even though its original trademark application provided no such limitations in its one-word broad description of goods –  i.e., wines?

As a practical matter the defendant may have been wise to adopt another name rather than risk a trademark infringement lawsuit. If Peju disagreed with the TTAB’s decision, it could have appealed that decision. Instead it chose to continue selling wines under a name that most practitioners would opine was “too close” to the registered mark.  It is not clear why it had even filed a trademark application for such a similar mark for precisely the same goods.  The Cesari opinion also suggests that the district court found the defendants’ continued actions after losing the much earlier opposition proceeding unsavory.

Take Home Points

The procurement of registered trademark is not a slam dunk process. There are many factors that enter into the evaluation calculus including likelihood of confusion with previously registered marks.  Before spending a lot a money on filing an application and creating marketing materials for the proposed mark, the players should conduct a risk analysis to determine potential problems in either the registration process or a future trademark infringement lawsuit.  Small businesses, the backbone of the U.S. economy, in particular should avoid unnecessary costly legal complications by addressing potential problems and the probability that a chosen course of action could have costly legal complications.   Peju should have been alerted to problems with its applied-for mark presuming a trademark search was done.   If it did conduct a search and decided to proceed anyway with registration, and later unauthorized usage after losing the opposition proceeding, then it did so solely at its own risk.  And no American business should ever presume that the foreign owner of U.S. registered mark will “ignore” trademark infringement activities within the United States.

Trademark law is further complicated by the fact that trademark infringement lawsuits are not limited to registered marks but may also include infringement of common law marks. Accordingly, a thorough trademark search of both registered federal and state marks and common law marks is highly recommended to determine potential registration and trademark infringement issues.  An ounce of prevention is worth a pound of cure – such prevention can translate into considerable savings on legal fees and other costs associated with legal disputes.

© 2018 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY.

Nov
21

SELECTING A COMPANY OR PRODUCT NAME – EASIER SAID THAN DONE AGAINST THE BACKDROP OF TRADEMARK LAW

This blog describes approaches to take when selecting a new business or product name to avoid costly trademark infringement disputes down the road.

I.   Introduction

Selecting a company or product name can be a daunting challenge because a “wrong” selection can result in lawsuits where the plaintiff alleges trademark/service mark infringement and unfair competition.   Nor are lawsuits for trademark/service mark infringement are not limited to situations where the plaintiff has a registered trademark/service mark with the United States Patent and Trademark Office (“USPTO”).   The law also protects common law (i.e., unregistered) marks.

Each trademark infringement case is different and involves a detailed inquiry of the facts behind the allegations.  Most plaintiffs will initially seek a temporary injunction by the court ordering the defendant to stop using the mark.   If a temporary injunction is granted, the plaintiff then will likely seek a permanent injunction and possibly even monetary damages.

II.  Cease & Desist Letters

Most infringement lawsuits are preceded by a cease and desist letter to the business owner.  The business owner at that point can take steps to quickly remedy the situation, e.g., by changing the name of the company and refraining from providing any services/products under the previous name.  The business owner will also generally be asked to transfer any domain names which utilize the problematic mark.

Here it may be helpful to hire an attorney to negotiate terms with the sender of the cease and desist letter who will more likely than not be an attorney.  For example, the email addresses of business employees who interact with customers/clients are often linked to the business’s website address (i.e., domain name).   An attorney may be able to convince the cease and desist letter sender to allow a small business owner in particular the right to use the domain name solely to redirect clients/customers to the small business owner’s new website/new domain name for a specified period of time.  Such redirecting is not intended to go on indefinitely and is intended solely to provide the small business owner with an interim time period for ensuring that its existing customer base will be able to “find” the small business owner in cyberspace.

It is important to also emphasize that cease and desist letters do not always accurately reflect the facts.  The recipient should not panic but consider consulting with a trademark attorney who handles trademark disputes and not just trademark application filings.  For example, prior users of a mark (“first-in-time users”) have significant protection under the Trademark Act and common law.   Common law rights may trump any federal registration rights referred to in a cease and desist letter because of the doctrine of prior use.  Prior use establishes a right of priority of common law marks over registered marks providing the date of first use in commerce of the common law mark was commenced before the first use date of the registered mark.

Indeed, all applications submitted to the USPTO for a registered mark must specify the date of first use anywhere and the date of first use in commerce.  The two dates may be the same.   Accordingly, if the recipient of a cease and desist letter can prove prior and on-going use of the mark specified in the cease and desist letter, the recipient may well prevail in any lawsuit.

III.  Doing Your Homework

Even if a cease and desist letter results in an amicable resolution, i.e., no costly lawsuit, the business owner may still end up spending considerable time and money in rebranding itself with a new business name/product name.   It should thus be the objective of any new business owner to minimize the risk of receiving a cease and desist letter and/or a lawsuit by taking upfront steps to select a suitable business/product name.    These steps include the following:

  • When selecting a company or product name, check the records of the USPTO for registered service marks and trademarks that incorporate all or a part of the proposed company or product name. The search should include applied-for marks and also include spelling variations.  If similar names are found, err on the side of caution.  For example, are you considering a business name that is similar to or encompasses a well-known, famous mark?  If yes, understand that the owners of well-known marks in particular routinely monitor the unauthorized usage of their marks and you will be risking the receipt of a cease and desist letter down the road.
  • Sometimes a business will obtain a trademark/service mark that covers only the state in which the business is located and conducting business. Therefore a trademark or service mark search should include a search of your state’s own records.  For Florida, these records can be accessed at sunbiz.org.
  • The business owner should also evaluate the state’s corporate name and fictitious name records to determine if there are already businesses with similar names operating in the state or in the same geographical area. These already-established businesses may have state common law trademark rights in their names.   Florida also provides business owners with the right to bring lawsuits for unfair competition under common law and under Florida’s Deceptive and Unfair Trade Practices Act.  Clearly, the operation of a competing business with a name similar to another business is an example of the type of unfair competition scenario the law is intended to protect.

IV. Will You Be Filing a Trademark Application?

Any searches as described above should also reflect the new business’s long term objectives.  For example, if the new business is going for a national and even international presence, then any name should be selected with an eye towards obtaining registered marks in the U.S. and abroad.   The new business owner may also wish to file an intent-to-use application with the proposed name (after doing a thorough search) to “reserve” the name with the USPTO while the business/product is being developed.  Before filing any trademark or service mark application, a critical analysis should be done to assess the possibility of any of the following rejections by the USPTO:

  1. Is the mark likely to constitute a likelihood of confusion with an existing mark? Click here for a previous blog on a proposed mark that was rejected by the USPTO on likelihood of confusion grounds.
  2. Is the proposed mark generic or merely descriptive of the goods or services listed in the application? Click here for a previous blog on the merely descriptive factor where the USPTO rejected an application on merely descriptive grounds.
  3. Is a domain name incorporating the proposed mark available? Is a similar domain name owned by the owner of a registered trademark?   Domain names may include trademark rights and that is why cease and desist letters often require the transfer of domain name rights.

V. Conclusion

The foregoing demonstrates that trademark law is complex because it is a hybrid of federal and state statutory law and common law.    Business/product names as a result of their usage in commerce involve principles of trademark law.  Be judicious in selecting a business/product name to avoid costly legal problems and to achieve your branding objectives whether at the local level or at the national and even international levels.

 

© 2017 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY OF YOUR CHOOSING.