Persuading the Examiner Overcoming Challenges With Descriptiveness, - - PowerPoint PPT Presentation

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Presenting a live 90-minute webinar with interactive Q&A

Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner

Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Blocking Citations, and More Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific THURSDAY, AUGUST 18, 2016

John N. Jennison, Jennison & Shultz, Arlington, Va. Lisa M. Willis, Department Attorney, Kilpatrick Townsend & Stockton, New York

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Responding To Trademark Office Actions

John N. Jennison Jennison & Shultz, P.C. john@jennisonlaw.com Lisa M. Willis Kilpatrick Townsend & Stockton LLP 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. 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

6

7

INFORMAL ISSUES

NO CONFLICTING MARKS NOTED



“The Examining Attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 704.02."



But other issues are raised that must be addressed before approval of the application for publication. These issues may be resolved with a Priority Action or an Examiner's Amendment.

8

INFORMAL ISSUES

Typical informal issues are:



Disclaimer



Prior Ownership Claim of Registration



Signature



Drawing



Mark Description



Specimen



Identification of Goods or Services



Incorrect Classification

9

DISCLAIMER

"Applicant must disclaim the word FLORIDA because it is primarily geographically descriptive of the origin

• f applicant's goods and or services, and thus is an unregistrable component of the mark. The word

FLORIDA is a generally known geographic place of location, See TMEP §§1201.02 et seq. The goods and/or services for which applicant seeks registration originate in this geographic place of location as shown by applicant's address. See TMEP §§1201.03. Purchasers are likely to believe the goods originate in this geographic place or location because a goods association is presumed when the goods come from the place named in the mark. TMEP §§1210.04 et seq. " In re Societe Generale des Eaux Minerales de Vittel S.A. , 824 F.2d 957, 050, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. "Baik", 80 USPQ2d 1305, 1309 (TTAB 2006); §§121.01(a), 1210.06(a), 1213.03(a). "Applicant must disclaim the word "JUICE" because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant's goods and/or services, and thus is an unregistrable component of the mark." See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppendahl & Larson LLP, 373 F. 3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). Response: Submit a standardized disclaimer: No claim is made to the exclusive right to use "FLORIDA" or "JUICE" apart from the mark as shown.

10

PRIOR OWNERSHIP CLAIM OF REGISTRATION(S)

"If Applicant owns U.S. Registration No. 10000, 10001 and others, then applicant must submit for the application record a claim of ownership of these registrations. See 37 C.F.R. §2.36; TMEP §812." Response: Submit a standardized claim of ownership of registrations: Applicant is the owner of U.S. Registration Nos. 10000 and 10001 and others.

11

SIGNATURE

Signed Declaration Required "Applicant must submit a written statement attesting to the facts set forth in the

application, and confirming that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as

• f the application filing date. This statement must be dated and signed by a person

authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §804.02, 806.01(b), 806.01(c), 806.01(d) and 1101. No signed verification was provided with the application."

12

SIGNATURE (cont.)

Response:

Submit properly signed and dated declaration: The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. _____________________________ (Signature) _____________________________ (Print or Type Name and Position) _____________________________ (Date)

13

DRAWING

"The drawing is not acceptable because it will not create a high quality image when reproduced. See TMEP §807.04(a). A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52. Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a)." Response: Submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing. TMEP §807.05(a); see37 C.F.R. §2.53(a). An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c). For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top. 37 C.F.R. §2.54(a)-(c); TMEP§807.06(a). The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide. 37 C.F.R. §2.54(b); TMEP §807.06(a). Further, the drawing must be made with ink or by a process that will provide a high definition when scanned. 37 C.F.R. §2.54(e); TMEP §807.06(a). A photolithographic, printer’s proof copy, or other high- quality reproduction of the mark may be used. 37 C.F.R. §2.54(e); TMEP §807.06(a). Beware: The USPTO will not accept amendments or changes to the applied-for mark shown if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.

14

MARK DESCRIPTION INCOMPLETE – DOES NOT REFERENCE ALL DESIGN ELEMENTS AND COLORS

Applicant must provide a complete mark description because the mark description in the application does not include all elements and/or colors shown in the mark. A complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). Response: Submit an acceptable description of the mark. The Examining Attorney may offer a suggested description. "The following mark description is suggested, if accurate: The mark consists of the wording “JUICE” with a design of an orange representing the dot in the letter “i”.

15

SPECIMEN

• 1. SPECIMEN ALTERED/MUTILATED/ILLEGIBLE

"The specimen is not acceptable because certain elements of the digitized

image are illegible and does not clearly show the applied-for mark in use in commerce for the identified goods and/or services. An application based on Trademark Act Section 1(a) must include a specimen showing the applied- for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a)."

16

SPECIMEN

• 2. SPECIMEN REQUIRED

Services

"Registration is refused because the specimen in International Class 035 does not show a direct association between the applied-for mark and the identified services; thus the specimen fails to show the applied-for mark in use in commerce for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). Specimens consisting of advertising or promotional materials generally must show a direct association between the mark and the services for which registration is sought. See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973); In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012); TMEP §1301.04(f)(ii). While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)); see In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)."

Goods

Registration is refused because the specimen is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

17

SPECIMEN

Response

(1) Submit a different specimen (a verified "substitute" specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. (2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the

• goods. TMEP §904.03(i).

18

IDENTIFICATION OF GOODS OR SERVICES

"The wording “online educational services” in the identification of services needs clarification because it is vague and the specific services being offered are not

• identified. Applicant may change this wording to “online educational services, namely,

providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the field of {indicate subject matter or field of educational activity},” in International Class 041, if accurate. TMEP §1402.01. Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification." Response For assistance with identifying and classifying goods and/or services in trademark applications, see the US PTO online searchable Manual of Acceptable Identifications

• f Goods and Services.

19

INCORRECT CLASSIFICATION

"The goods that the applicant classified in Class 042 are classified incorrectly. Computer software platforms are classified in International Class 009. Applicant must amend the application to classify the goods in International Class 009. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b)." Response Submit an amendment to classify the goods or present reasons why class is appropriate.

20

RESPONSE TO INFORMAL ISSUES

Many times the Examiner may initially call or email you to resolve the informal

• issues. If you have received an Office Action on an informal issue you may want to

contact the assigned Examining Attorney by email or telephone to resolve the informal issue. In such cases the Trademark Examiner may want to get the case of her docket and will issue approval with an Examiner's Amendment.

EXAMINER'S AMENDMENTS "APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the applicant’s attorney on January 4, 2015, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. Otherwise, no response is necessary. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services. 37C.F.R. §2.71(a); see TMEP §§1402.06 et seq." RESPONSES TO FORMAL "INFORMAL" RESPONSES Sometimes the informal issue strikes to the essence of the applied for trademark. You may want to argue against a disclaimer, reclassification or change in description of goods or services. A search of the federal register may locate recent registrations that would support your argument against the issue raised.

21

FORMAL ISSUES

Formal issues are raised that generally must be overcome with persuasive arguments and evidence before approval of the application for publication. Typical formal issues are:



Surname



Descriptiveness



Geographic Descriptiveness



Deceptiveness



Ornamental



Disparagement, Immoral or Scandalous



Likelihood of Confusion

22

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)

23

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

• f 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)

24

GEOGRAPHIC DESCRIPTIVENES 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)

25

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)

26

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.

Citation: Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 120 S. Ct. 1339. 54 USPQ 2nd 1065 (2000)

27

DISPARAGING

Refusal:

"Registration is refused because the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267-79 (TTAB 2006); Harjo v. Pro- Football, Inc., 50 USPQ2d 1705, 1740-48 (TTAB 1999), rev’d , 284 F. Supp. 2d 96, 125, 68 USPQ2d 1225, 1248 (D.D.C. 2003) (finding “no error in the TTAB’s articulation of [the Section 2(a)] test for disparagement”), remanded

• n other grounds, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d , 565 F.3d 880, 90 USPQ2d 1593

(D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009); TMEP §§1203.03, 1203.03(c). The following two factors must be considered when determining whether matter may be disparaging under Trademark Act Section 2(a): (1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods and/or services, and the manner in which the mark is used in the marketplace in connection with the goods and/or services; and (2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010); In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006) (citing Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d , 284 F. Supp. 2d 96, 125, 68 USPQ2d 1225, 1248 (D.D.C. 2003) (finding “no error in the TTAB’s articulation of [the Section 2(a)] test for disparagement"), remanded on other grounds, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d , 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009)); TMEP §1203.03(c). The attached dictionary evidence shows the likely meaning of “CHINK” to be “ Offensive Slang used as a disparaging term for person of Chinese birth or descent.” Thus, the word disparages a group of identifiable persons

28

DISPARAGING (cont.)

Response: Evidence that term is not disparaging. Secondary meaning with survey evidence. Argument of freedom of commercial speech. This is a matter that is presently on appeal from the TTAB at the Eastern District of Virginia with the REDSKINS trademarks, Blackhorse v. Pro-Football Inc. The recent Supreme Court decision Walker v. Texas Div., Sons of Confederate Veterans, Inc. allowed Texas to reject a license plate design that featured a Confederate battle flag. The Court held that the license plates designs are government—not private speech-- and that the government is allowed to discriminate based upon content when it speaks.

29

IMMORAL OR SCANDALOUS

Refusal:

"Registration is refused because the applied-for mark consists of or comprises immoral or scandalous matter. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.01." To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation,” in the context of the marketplace as applied to goods and/or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994) (internal punctuation omitted) (quoting In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938)); In re Wilcher Corp., 40 USPQ2d 1929, 1930 (TTAB 1996); see TMEP §1203.01. Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, . . . and in the context of contemporary attitudes.” Evidence that a mark is vulgar is sufficient to establish that it is scandalous or immoral. In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003). Dictionary evidence may be sufficient to show that a term is vulgar if multiple dictionaries, including at least

• ne standard dictionary, uniformly indicate that the term’s meaning is vulgar, and the applicant’s

use of the term is clearly limited to the vulgar meaning. TMEP §1203.01. According to the attached evidence from AskOxford.com, PECKER is the North American “vulgar slang” for “a man’s penis.”

30

IMMORAL OR SCANDALOUS

Response: Evidence that whole mark is not scandalous as used, term has other meanings with dictionary evidence. In re Hershey, 6 USPQ2d 1470 (TTAB 1988) involved the mark "BIG PECKER BRAND" for T-shirts. The mark had been refused registration, as scandalous, on the grounds that "pecker" was a vulgar expression for "penis" and that the mark as a whole, therefore, was offensive or shocking to a substantial composite of the general public. The Board reversed the refusal of registration, finding the evidence unpersuasive to demonstrate the vulgarity of the word "pecker" and noted that the specimens of record were labels showing a design of a bird in conjunction with the word mark "BIG PECKER BRAND." The Board concluded that, in view of the context of the mark's use, the mark neither offended morality nor raised a scandal.

Likelihood of Confusion

15 U.S.C. §1052 “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to

• deceive. . . .”

TMEP §1207.01: “[A] refusal under §2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on

• r in connection with the specified goods or services, so resembles

a registered mark as to be likely to cause confusion.”

31

Pre-Filing Considerations

― Clearance ― Client’s budget ― Infringement actions ― Conservative Examiners

32

Initial Steps

• Check status of cited marks

― 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

33

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).

34

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)

35

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

36

Similarities of Marks

Similarities in appearance, sound, meaning, and commercial impression.

• Is the common element diluted or descriptive?

― Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (DEER-B-GON for deer and other animal repellant not confusingly similar to DEER AWAY and DEER AWAY PROFESSIONAL for similar goods)

• Is there a distinctive design element or stylization in either party’s mark?

― TMEP §1207.01(c)(ii) (“The comparison of composite marks must be done on a case- by-case basis, without reliance on mechanical rules of construction.”) ― In re Electrolyte Labs. Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“[t]here is no general rule as to whether letters or designs will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue.” ― Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1940 (TTAB 2013) (“the design is prominently displayed in the center of the mark, is proportionally larger than the wording, and is very distinctive, inasmuch as it uses highly symbolic and well-known regalia relating to the Pope and the Catholic church.”)

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Similarities of marks

• Connotative differences between Marks

― Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (CROSS-OVER for bras not confusingly similar to CROSSOVER for ladies’ sportswear)

• Doctrine of Foreign Equivalents

― “Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar.” TMEP 1207.01(b)(vi) ― MARAZUL for “Fish and seafood products, namely frozen and fresh processed fish and seafood, and imitation crab meat”confusingly similar to BLUE SEA for "non-live fish and frozen fish." In re Aquamar, Inc., Serial No. 85861533 (June 25, 2015) ― Likelihood of Confusion factors (e.g. appearance, sound and overall commercial impression) still apply

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Relatedness of Goods/Services

• Argument must focus on goods/services as identified in the

applications/registrations

• Extrinsic evidence cannot be used to narrow scope of either party’s

goods/services.

• Extrinsic evidence can be used to shed light on ambiguous/technical

descriptions ― In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (“When the description of goods for a cited registration is somewhat unclear,…it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.”) ― In re Edwards Life Sciences, 94 USPQ2d 1399 (TTAB 2010) ― In re Radius Health, Inc., Serial No. 78797031 (October 27, 2009)

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Relatedness of Goods/Services

• Goods/services not necessarily related simply because they fall under same

broad category ― Edwards Lifesciences Corporation v. VigiLanz Corporation, 94 USPQ2d 1399 (TTAB 2010) (VIGILANZ and VIGILANCE not confusingly similar although both marks were used in connection with patient monitoring devices in hospital settings. The Board stated that the relatedness of the goods inquiry “is not based on whether a general term or

• verarching relationship can be found to encompass them both.”)

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Coexistence of third party marks

• Narrow scope of protection

― The shared element is so common or descriptive that not likely to be perceived as a source indicator ― TMEP 1207.01(d)(iii) (“If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”)

• Examiners are not bound by prior decisions
• Ensure that third party references cover the same goods/services that are at

issue

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Other Strategies

• Narrow your goods/services

― May obviate refusal, however:

― Narrows your protection ― hampers enforcement

• Seek consent from registrant [LAST RESORT]

― Puts registrant on notice ― Use priority as leverage ― May have to pay for consent ― Cannot be a naked consent

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Other Strategies

Petition to cancel

• Must be filed within 5 years of registration unless basis is abandonment,

fraud, generic, functional, geographically deceptive

• Application will be suspended pending disposition of cancellation

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Other Strategies

Petition to cancel under Section 18

Useful when cited registration covers broad goods/services ― In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000) (“While we are sympathetic to applicant's concern about the scope of protection being given to the cited registrations, applicant is not without remedies . . . Applicant may…seek a restriction under Section 18 of the Trademark Act, 15 USC §1068.”)

• Elements:

― proposed restriction will avoid a likelihood of confusion ― respondent is not using the mark on the goods/services being deleted or effectively excluded from the registration. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994)

• IdeasOne, Inc. v. Nationwide Better Health, Inc., 89 USPQ2d 1952 (TTAB 2009)

― Registration for WELLCORP for "consulting services in the field of health" cited against application for WELLCORPS INTERNATIONAL for “dietary supplements.” ― Applicant petitioned to cancel to restrict registration to "consulting services in the field of health offered to employers not including the provisions [sic] of dietary supplements.”

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Other Strategies

• Acquire cited registration
• Use without registration

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Caution

― Responses to Office Actions are public filings ― Arguing that the common element is weak or descriptive can prove problematic later ― Be sure to include evidence for appeal

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