Presenting a live 90-minute webinar with interactive Q&A Registering Trademarks: Overcoming Descriptive, Geographic and Surname Refusals TUESDAY, JANUARY 30, 2018 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Draeke H. Weseman, Winthrop & Weinstine , Minneapolis 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. 1 .
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Overcoming Descriptive, Geographic, and Surname Refusals Presented by: Draeke H. Weseman Winthrop & Weinstine, P.A. dweseman@winthrop.com Trademark Attorney Tuesday, January 30, 2018 12:00 PM to 1:30 PM CST www.winthrop.com 1/30/2018 4
Section 2(e) Refusals Three common Section 2(e) refusals: • Merely descriptive • Primarily geographically descriptive • Primarily merely a surname 15 U.S.C. § 1052(e)(1), (2) and (4) www.winthrop.com 1/30/2018 5
“Primarily” = Primary Significance www.winthrop.com 1/30/2018 6
Overcoming Descriptiveness Refusals www.winthrop.com 1/30/2018 7
Pre-Filing Decisions Examining Attorney Appeal www.winthrop.com 1/30/2018 8
Key Sources of Facts Sources your client controls: Sources your client doesn’t control: • • Websites for the goods or services General internet search results • Packaging and labels for the goods • Dictionary, encyclopedia, and • Marketing and advertising materials glossary entries • Instructions for the goods or services • News sources and blogs • Trade journals and industry publications • Competitors ’ websites www.winthrop.com 1/30/2018 9
Merely Descriptive • Ingredient “The question is whether • someone who knows what the Quality goods or services are will • Characteristic understand the mark to convey information about them.” • Function DuoProSS Meditech Corp. v. Inviro • Feature Medical Devices Ltd. , 695 F.3d 1247, 103 U.S.P.Q.2d 1753, 1757 • Purpose (Fed. Cir. 2012) • Use www.winthrop.com 1/30/2018 10
Merely Descriptive In re TriVita, Inc. , 783 F.3d 872 (Fed. Cir. 2015) • Mark: NOPALEA • Goods: Nutritional supplements containing nopal juice • Nopal = nopalea = genus of cacti • Nopalea is not a made-up word obtained by adding arbitrary letters. • There is abundant evidence of the words “nopalea” and “nopal” being used interchangeably. • Affirmed. www.winthrop.com 1/30/2018 11
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Merely Descriptive In re North Carolina Lottery, 783 F.3d 872 (Fed. Cir. 2017) • Mark: FIRST TUESDAY • Goods: Lottery tickets and services • Explanatory text not determinative of descriptiveness or suggestiveness, but relevant to descriptiveness inquiry • Affirmed. www.winthrop.com 1/30/2018 13
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Merely Descriptive In re Calphalon Corp. , 122 U.S.P.Q.2d 1153 (T.T.A.B. 2017) • Mark: SHARPIN • Goods: cutlery knife blocks which incorporate built-in sharpeners • Not “SharpIN” (i.e. special form) • SHARPIN = SHARPEN • Not incongruous or double entendre w/o special form • Affirmed. www.winthrop.com 1/30/2018 15
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Merely Descriptive In re Well Living Lab 122 U.S.P.Q.2d 1777 (T.T.A.B. 2017) • Mark: WELL LIVING LAB • Services: Scientific research in the field of human health and wellness • Archaic: Living a moral and virtuous life • Current: Living a healthy life focused on diet and exercise • Affirmed. “This modern day usage of the term “well - living” has more significance and probative value than the dictionary meaning in terms of the likely perception of consumers.” www.winthrop.com 1/30/2018 17
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Merely Descriptive In re United Trademark Holdings, Inc., 122 U.S.P.Q.2d 1796 (T.T.A.B. 2017) • Mark: LITTLE MERMAID • Goods: Dolls • Little Mermaid = “young, partly human girl sea creature” • Little Mermaid = specific historical fictional character • Historical fictional character in public domain • Affirmed. www.winthrop.com 1/30/2018 20
Common Mistakes COMMON MISTAKE EXAMPLE DUBIOUS LITERARY DEVICE SNAP SIMPLY SAFER (syringes); SHARPIN (Knives) INNSUFFICIENT ADDITIONS NOPALEA (Supplements); ASPIRINA (Aspirin) WORD COMBINATION SCREENSWIPE (cleaning cloths); SMARTTOWER (cooling towers); DESCRIPTIVE IMAGE (watch parts) DICTIONARY DEFINITIONS WELL LIVING LAB (research); PRIOR REGISTRATIONS LITTLE MERMAID www.winthrop.com 1/30/2018 21
Strategies STRATEGY EXAMPLE MARK AS A WHOLE HUTCHINSON TECHNOLOGY (Electronics) INCONGRUITY TENNIS IN THE ROUND (Tennis facilities); SNO-RAKE (Hand tool) DOUBLE-ENTENDRE LIGHT N’ LIVELY (Mayonnaise) VAGUENESS FLIGHTLINK (Weather reporting); PRESS PAPERS (Website); PRIOR REGISTRATIONS TOPDOC CONNECT (Doc referrals) SPECIFY THE GOODS GEOMIMETIC (Cement); CRAWLER (Suspension parts) www.winthrop.com 1/30/2018 22
Overcoming Geographic Refusals www.winthrop.com 1/30/2018 23
Primarily Geographically Descriptive • Country • State • Nicknames Coined Locations • City • Adjectives • Neighborhood • Region • Maps www.winthrop.com 1/30/2018 24
Primarily Geographically Descriptive In re Newbridge Cutlery Co. , 776 F.3d 854 (Fed. Cir. 2015) • Mark: NEWBRIDGE HOME • Goods: Cutlery • Newbridge = Newbridge, Ireland • Newbridge is not a place known generally to the public • Do not need t examine goods/place association • Reversed. www.winthrop.com 1/30/2018 25
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The Second Prong A Three-Part Test for Goods/Place Association If: 1. A location is generally known; 2. the term’s geographic significance is its primary significance; and 3. the goods do, in fact, originate from the named location, Then: A goods/place association can be presumed. www.winthrop.com 1/30/2018 28
Common Mistakes COMMON MISTAKE EXAMPLE IRRELAVANT ALTERNATE NASHVILLE (TV programs); MEANINGS MANHATTAN (cookies) ALTERNATE LOCATIONS DURANGO (chewing tobacco); CAMBRIDGE (computers) www.winthrop.com 1/30/2018 29
Strategies STRATEGY EXAMPLE MINOR, OBSCURE, OR REMOTE TAPATIO (Hot sauce) DOMINANT ALTERNATE MEANING SWISS ARMY KNIFE (Knives) www.winthrop.com 1/30/2018 30
Overcoming Surname Refusals www.winthrop.com 1/30/2018 31
Primarily Merely a Surname Yes No Johnson Cotton Jones King www.winthrop.com 1/30/2018 32
Primarily Merely a Surname The Benthin Factors: Inquiry to determine if the surname is the primary significance of the mark as a whole to the purchasing public. 1. The degree of a surname’s rareness; 2. Whether anyone connected with applicant has that surname; 3. Whether the term has any recognized meaning other than that of a surname; 4. Whether the term has the “structure and pronunciation” of a surname; and 5. Whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Mgmt. GmbH , 37 U.S.P.Q.2d 1332, 1333-34 (T.T.A.B. 1995) www.winthrop.com 1/30/2018 33
Primarily Merely a Surname In re Integrated Embedded , 120 U.S.P.Q.2d 1504 (T.T.A.B. 2016) • Mark: BARR GROUP • Services: Computer hardware design training • Co-founder and CTO = Michael Barr • Not unusual surname • No other common meaning • GROUP incapable of lending source- identifying significance • Affirmed. n. 4 “We make our determination on a case -by-case basis, and any of the Benthin factors – singly or in combination – and any other relevant circumstances may shape the analysis in a particular case. www.winthrop.com 1/30/2018 34
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