Quiz 3--Trademarks Flashcards
Trademark Examiners
are attorneys; most work remotely
Trademark applications are examined for
“substance” –statutory eligibility under lanham act
and
“forms” i.e. formalities/informalities–compliance with USPTO requirements
Examiners can issue the following types of actions
- OA/Priority Action (substantive rejection–amendments are usually required)
- Suspension-placing the application on hold
- Examiner’s Amendment (Amendment after consultation with applicant)
- Publication (either based on initial examination or after amendment)/ Allowance
- Post-Registration Audit Office Action
Depending on strength of application, the Examiner may take on 1 of 3 roles
- neutral party
- facilitator in support of the applicant
- advocate for the government and against the applicant.
The Examiner’s role may change as the application progresses.
90% of the trademark applications receive at least one Office Action
Disclaimers
Likely required for a non-distinctive part of the mark. Goal is to cut down on litigation of descriptive matter.
Most countries don’t have disclaimers
Types of substantive refusals issued by TM Examiners can be based on
Likelihood of Confusion (Landham Act 2d refuasl)
Descriptiveness (2e1)
Other inherent refusals–including geographic, surname, and rejections for functionality
Types of Amendments made by applicants
REvisisions to the description of goods/services
Disclaimers
Response to Specimen refulsals or “failure to function” arguments by the Examiner
Misc. (consent statements, additional info, prior registrations)
Areas of Examination in flux
- “Filure to function as a trademark”
- Digital specimens
- Applications related to cannabis
Failure to function as a trademark
has become a significant issue in the USPTO since the Tam and Brunetti cases gutted the “offensive” and “scandalous” portions of the statute.
Now ther are numerous applications for dirty words.
As a result the USPTO is using “failure to function as a TM” (because the proposed mark is a “commonly used phrase:) as a grounds for rejection
This is instead of descriptive or generic rejections
Example: Once a Marine; compare In re Lizzo LLC (100% That Bitch)
Digital Specimens
It is easy to make digital markups.
The problem is the products don’t really exist
The USPTO now has onerous examination guidelines for specimens that look like a digital mockup
One approach is to ask your client to send you a photo of their product held in someone’s hand (presumably) to show that the product actually exists.
Applications relating to cannabis
One cannot register a trademark for an illegal substance, but you can register for ancillary products (e.g. grow-lights)
Can get state TM registrations if the state allows
Responding to an OA
Write short clear sentences that contain argument sin support of your client’s position
Make it easy for the Examiner to allow the case.
Internet sources can be used as evidence.
Evidence is usually more effective than citations of case law for overcoming a rejection.
Cases are usually very fact-specific
The internet sources should be attached as PDFs.
It is not acceptable to submit links to webpages
Three parts of your Response
- Arguments
- Evidence
- Amendments
Example of evidence
if customers are different, then channels of trade are different.
You can narrow your description of goods or services to make it clear that your client is selling to a different customer than the owner of the other trademark.
If one term in the trademark is commonly used, submit evidence showing how common the term is–submit everything.
Don’t rely on the Examining Attorney to find the evidence.
What can you NOT do in an OA Response?
You cannot change the trademark
You cannot expand your client’s identification of goods or services.
In most cases you may narrow the identification of goods or services.
Trident Example
Registered Mark: TRIDENT
Applicant’s Mark: Trident Motion (stylized)
Application was for a logo
How do you argue this is not confusing?
A. Similarity or not–in sound, appearance and meaning
B. Relatedness of goods/services–distinguish machine shops from machined components
Those are different consumers
How sophisticated is the buyer?
Do they go to the same trade shows?
Publish in the same technical journals?
Build argument around the facts.
The Longer and mroe intricate the purchase process is, the better your case is for absence of confusion
NOTE: cannot disclaim trident–disclaimers are only for descriptive words and cannot be used to overcome confusion rejections
Ok2berfest example
After an application for a word mark was rejected, the client refiled as a stylized mark.
A stylized mark has to be sufficient to create a commercial impression separate from the word mark itself
This stylized mark application was allowed.
