Presenting a live 90-minute webinar with interactive Q&A Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner Strategies for Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Blocking Citations, and More WEDNESDAY, MAY 28, 2014 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: John N. Jennison, Jennison & Shultz , Arlington, Va. Lisa M. Willis, Department Attorney, Kilpatrick Townsend & Stockton , New York The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Responding To Trademark Office Actions: Assessing Response Alternatives And Persuading The Examiner John N. Jennison Lisa M. Willis Jennison & Shultz, P.C. Kilpatrick Townsend & Stockton LLP john@jennisonlaw.com LWillis@kilpatricktownsend.com
Actions to Take Upon Receipt of a USPTO Action • Pull & Review the File • Docket the Response Deadline • Carefully Review the Action and Determine All of the Issues Raised • Determine if Issues Raised Were Expected. • Prepare to Respond to All Issues Raised by Trademark Examining Attorney • Understand what Examining Attorney Needs to Approve the Mark. Her Actions will be Reviewed. Examining attorneys work at home and cannot be reached in normal working hours. Some informal matters (e.g., identifications) may be "word-smithed" through informal email exchanges or telephone discussions. • Review Your Correspondence with Your Client Advise Client of Action in Accordance with Previous Instructions • 5
Informal Issues “No conflicting marks have been found" but other issues are raised: Disclaimer • • Prior ownership claim or related claims Signature • • Drawing Specimen • • Identification of goods or services and/or classification References: Trademark Rules 2.61-2.65, 2.71-2.72 6
Refusals Surname • • Descriptiveness Geographic Descriptiveness • Deceptiveness • • Ornamental 7
Surname Refusals Refusal: Public likely to perceive the mark as a surname. • Response: • Mark has acquired secondary meaning. The public has recognized that the mark in connection with the goods or services to an exclusive source. Establish long term (e.g., five years) exclusive usage and perception by the public (survey.) ‒ FORD for vehicles McDonalds for restaurants ‒ ‒ DUPONT for chemicals and paints Citation: E.I. Du Pont de Nemours & Co. v. Societe S.T. DuPont , 161 USPQ 489 (TTAB 1969) 8
Descriptiveness Refusals Refusal: Applied for mark "merely describes a feature, characteristic, purpose and • function of applicant's goods or services. A term is descriptive if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods or services. Response: • Mark does not "merely" describe applicant's goods or services. Mark may be suggestive. If one must exercise "mature thought or follow a multi-stage reasoning process" to determine attributes of the product or service, the term is suggestive, not descriptive. Citation: In re Tennis in the Round, Inc. , 199 USPQ 496 (TTAB 1978) Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2nd 1081 (1992) 9
Geographic Descriptiveness Refusals Refusal: • Applied for mark "primarily geographically descriptive of the origin of applicant's goods/services." 1) The primary significance of the mark is a generally known geographic place or location. 2) The goods/services originate in the geographic place identified in the mark. 3) Purchasers would be likely to make a goods/place or services/place association; purchasers would be likely to believe that the goods/services originate in the geographic place identified in the mark Response: • Mark is not "primarily geographically descriptive" of the origin of the applicant's goods/services. Provide evidence that mark has other meanings. Do goods/services originate in the named geographic location? • • Mark has acquired a secondary meaning, that it no longer causes the public to associate goods with geographic location. • WALTHAM for watches Mark is used in arbitrary manner, secondary meaning not required. • • ARCTIC for ice cream Citation: American Waltham Watch Co. v. United States Watch Co. , 173 Mass. 85, 53 N.E. 141 (1899) 10
Deceptiveness Refusals Refusal: • Applied for mark is deceptive if it presents the appearance of greater quality than exists, likely to materially affect the purchasing decision. • SILKEASE for polyester women's blouses. SUPERSILK for shirts not made of silk. • Response: The deception is innocent, harmless or negligible. • SWEDEN for artificial kidney machines. • Citation: In re Sweden Freezer Manufacturing Co. , 159 USPQ 246 (TTAB 1968) 11
Ornamental Refusals Refusal: Applied for mark is solely or merely ornamental, lacks trademark significance, • no identifying or distinguishing the source. Red, white and blue panels on basketball. • • One strip design on shoes. Response: Evidence that design is used in such a size, location and manner that customers • recognize the source of origin. Secondary meaning with survey evidence. Nike swoosh design. • • Red shoe sole design. Citation: Wal-Mart Stores, Inc. v. Samara Bros., Inc. , 529 U.S. 205, 120 S. Ct. 1339. 54 USPQ 2nd 1065 (2000) 12
Likelihood of Confusion TMEP § 1207.03: “[A]pplicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion.” 13
Pre-Filing Considerations ― Clearance ― Client’s budget ― Infringement actions ― Conservative Examiners 14
Initial Steps Check status of cited registration(s) • ― Have the requisite maintenance documents been filed ― Is the registration incontestable ― Does the registrant have priority ― Does the registrant own other registrations/applications for similar marks ― What is the registrant’s enforcement history regarding this mark • Search for evidence of use of cited mark ― Online ― Specimen of use ― Independent investigation 15
Initial Steps Review Examiner’s evidence ― Examiner must show evidence of relatedness ― TMEP § 1207.01(a)(vi)) ― Third party registrations/use ― Are the third party goods and services the same as those at issue ― Do the third party registrations show that the parties’ goods emanate from the same source ― In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (Examiner did not establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). 16
Initial steps ― Are the goods and services sold by a mass retailer ― Morgan Creek Prods., Inc. v. Foria Int’l, Inc ., 91 U.S.P.Q.2d 1134, 1142 (T.T.A.B. 2009) (“It has long been held that the mere fact that two different items can be found in a supermarket, department store, drugstore or mass merchandiser store is not a sufficient basis for a finding that the goods are related.”); ― In re Hoist Fitness Systems, Inc ., Serial No. 76428061 (March 30, 2005); ― Recot Inc. v. M.C. Becton , 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000); ― Federated Foods, Inc. v. Fort Howard Paper Co ., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) 17
Preparing the Response Relevant Factors • DuPont Factors - In re E.I. du Pont de Nemours & Co ., 476 F .2d 1357, 177 USPQ 563 (CCPA 1973) Most Important Considerations Similarities between the parties marks • Relatedness of the goods and/or services • 18
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