Trademark Application Pre-Filing Strategies: Overcoming

Presenting a live 90-minute webinar with interactive Q&A
Trademark Application Pre-Filing Strategies:
Overcoming the Obstacles
Anticipating Blocking Citations, Determining Applicant/Owner,
Adhering to Settlement Agreements, Filing Under Madrid Protocol
TUESDAY, APRIL 8, 2014
1pm Eastern
|
12pm Central | 11am Mountain
|
10am Pacific
Today’s faculty features:
Susan Upton Douglass, Partner, Fross Zelnick Lehrman & Zissu, New York
Jonathan Hudis, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.
Peter Sloane, Partner, Leason Ellis, White Plains, N.Y.
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TRADEMARK APPLICATION
PRE-FILING STRATEGIES:
OVERCOMING THE OBSTACLES
April 8, 2014
Susan Upton Douglass
© 2014 Fross Zelnick Lehrman & Zissu
4
PRE-FILING
CONSIDERATIONS
•
•
•
•
Search Strategies
Identifying the correct owner
Selecting the filing basis
Choosing the best goods/services and classes
5
SEARCH STRATEGIES
• Various factors determine the extent of
searching – and a full search may not be needed
in every instance
• Consider the nature and timing of the use
6
Types of searches
•
•
•
•
•
•
“Knock-out” searches
Internet searches
Industry specific online databases
Design searches
Domain name searches
Full searches
7
Preliminary searches may be sufficient:
• If the application is being filed for defensive purposes
• If the mark will be used for a short-term or seasonal
product line
• If the mark will be used only on the Internet or on
marketing collateral
• If the mark is a back-up mark
• If the mark is borderline descriptive and diluted
8
A full search is recommended:
• If the mark will be used in the foreseeable future on
product packaging or in connection with major
collateral for services
• If the client has a substantial investment in the mark,
and/or it would be expensive or difficult to change it
9
A design search is recommended:
• If the design is sufficiently distinctive, and will be
featured by itself or if it creates a stand-alone
appearance
10
IDENTIFY THE CORRECT
OWNER OF THE MARK
• Filing in the name of the wrong owner may
make the application “void ab initio” – an error
that cannot be corrected. TMEP Sec.
1201.02(b)
11
Know which types of errors can be corrected
•
•
TMEP Sec. 1201.02(c) lists the types of correctible
and non-correctible errors in identifying the owner of
the mark
Errors in punctuation, abbreviations, etc. can be
corrected (e.g., missing a comma, or “Limited” v.
“Ltd”)
12
Strategies for verifying the correct owner
1.
2.
3.
4.
5.
If a U.S. company, check the Secretary of State records
Run a database search for prior filings by this company
Check the client’s website
Check the name on specimens
For foreign applicants, check for home country filings
13
Potential ownership pitfalls
•
•
As between a foreign manufacturer and a domestic
distributor, case law holds that there is a presumption
that the foreign manufacturer owns the mark, absent an
agreement to the contrary
As between a licensor and a licensee, the licensor is
presumed to own the mark, absent an agreement to the
contrary
14
Special ownership issues
•
•
For bands, query whether the lead performer(s) or the
manager is the owner – an area that has spawned a lot of
litigation
Off-shore holding companies may own trademarks
(usually for tax purposes) even though they never intend
to use the mark (related company rule in Section 5 of the
Trademark Act)
15
FILING BASES
1.
2.
3.
4.
Intent to Use – Sec. 1(b)
Use in Commerce – Sec. 1(a)
Convention Priority – Sec. 44(d)
Home Country Registration – Sec. 44(e)
16
Intent to use – Sec. 1(b)
•
•
•
Verify that the client has a bona fide intent to use the
mark for all listed goods/services
Bear in mind potential obstacles, and consider filing
narrowly if it might be helpful
Signature issues: should the attorney sign, or the client?
17
Use in commerce – Sec. 1(a)
•
•
•
As a tactical matter, this is the strongest type of filing, as it
shows that the mark is in use and can be enforced
Timing issue: if the mark will not be used for several
months, it is better to file sooner on the basis of ITU and then
file the Amendment to Allege Use, rather than risk being
preempted
Do a reality check on the list of goods/services, and if it
seems implausible, ask for proof for each item before filing
18
Use in commerce – Sec. 1(a)
•
•
•
Use the earliest date of use for any item in each class; it is
not necessary to specify the dates of each later-used item
For foreign applicants, they can have broader coverage if
they rely on home country registration, but the broader
coverage cannot be enforced in court
Signature requirement: unless the filing attorney has actual
knowledge of the dates and scope of use, prudent to have the
application signed by an authorized signatory of the client
19
Convention Priority– Sec. 44(d)
•
•
•
Consider filing in an obscure foreign jurisdiction to avoid
competitors learning of plans
This strategy can be used by domestic applicants (Sec. 44(i));
Sec. 44(d) is merely a filing basis, and the client will need a
separate basis for registration, either use or ITU
For foreign applicants, always make the 44(d) claim when
possible, even if it is only one day prior to the U.S. filing
20
Convention Priority– Sec. 44(d)
The U.S. filing need not “track” the goods/services in the
home country filing
•
•
•
The only requirement is that the U.S. filing be within the
scope of the home country filing
Do not use class headings as case law interprets them
literally
Make the filing realistic to avoid challenges by third
parties
21
Implausible goods/services
22
Implausible goods/services
23
Home country registration – Sec. 44(e)
• Does this send a message that the mark is not in use?
• Same scope of filing strategies as per 44(d): file
realistically, don’t use class headings, and no need to track
the exact language as in the home country registration
• 44(e) may be a good option if the mark is in use but the
specimen will not pass muster due to technical deficiencies
24
Basis amendments and combinations
• The application can be based on multiple bases, even
among goods/services in a single class
• No need to make a separate ITU claim if a foreign
applicant is relying on 44(d) and the home country
application covers the goods/services of interest
25
Basis amendments
• Foreign applicants can file on the basis of ITU, and if a home
country registration (filed at any time, even after the six-month
Convention priority term) issues at any point in the process prior to
registration – even in the final week of the last ITU extension term,
the basis can be amended to rely on the home country registration
• Run a database search first to determine whether a third party may
have filed in the interim with an earlier use date since the PTO will
run a new search to assess 2(d) issues
• The mark will be re-published, so this may involve an extra element
of risk (but keeps the filing date)
26
Madrid Protocol – Sec. 66(a)
• Cost savings for the applicant to file directly – but these
may be offset if an Office Action issues
• For a regular client, consider assisting with the filing
before it is done, to adjust the goods/services and enter
other necessary claims and statements for the record
27
Disadvantages to filing under the
Madrid Protocol
• If the mark is borderline descriptive, this is risky because
the mark cannot be amended to the Supplemental Register
• Amendment to other classes is not permitted (e.g., if the
software filed in Class 9 is non-downloadable and would
properly be classified in Class 42), which could affect
maintenance later
28
More disadvantages to filing under
Madrid
• Suggests that the mark is not in use, thereby provoking
greater risk of challenge from third parties?
• Docketing issues if the client does not understand that
there are separate Section 8/maintenance issues apart
from the IR deadlines
29
GOODS AND CLASSES
• Don’t use class headings, as amendments to the specific
goods/services might not be permitted. See Fiat Group
Marketing & Corporate Communications S.p.A., 109
USPQ2d 1593 (TTAB 2014)(refusing to allow amendment
of “advertising services; business management; business
administration; office functions” to include “retail store
services”)
30
Strategies for goods/services
• Use the ID Manual to the extent possible to avoid Office
Actions
• To avoid problems of proof later, used broad but
permissible terms such as “perfumery,” “cosmetics,”
“furniture,” “jewelry,” “retail stores featuring a broad
range of consumer goods,” etc., rather than specifying the
types of products
31
Strategies for identifying cutting-edge goods/services
• Look at filings by competitors for similar goods/services
to see prior approved language
• Consult the client’s website, product literature, marketing
materials or the like for a more accurate description
32
Try to identify the correct class
• Although class designations are for administrative
convenience, the client will want to be in a class where
others (including the PTO Examiners and competitors)
are likely to find the mark
• The same goods/services may be properly classified in
more than one class
33
Thanks for listening!
Susan Upton Douglass
sdouglass@frosszelnick.com
April 8, 2014
© 2014 Fross Zelnick Lehrman & Zissu
34
TRADEMARK APPLICATION
PRE-FILING STRATEGIES:
OVERCOMING THE OBSTACLES
Strafford Publications
Jonathan Hudis
703.412.7047
jhudis@oblon.com
PRE-FILING STRATEGIES
 The Mark
 Specimens of Use
 Anticipating Blocking Citations
 Anticipating Other Types of Office Actions
36
THE MARK
 Should I File in Color or Black-and-White?
•
•
•
If in Color, Have I Adequately Described the Color(s) and Their
Location(s)?
Give Thought to Potential Risks and Limitations
Use Must Support Registration of the Mark As Registered
 Material Alteration Issues if Amendment Later Requested
37
THE MARK
 Should I File in Standard (Block Letter) Characters
or Stylized Characters?
•
•
•
Are Initial Caps a Stylized Form of the Mark?
What Constitutes Standard Characters in the Applicant’s Home
Country?
Use Must Support Registration of the Mark As Registered
 Material Alteration Issues if Amendment Later Requested
XYZ v. X Y Z
38
THE MARK
 Logos (Design Marks)
•
•
•
Have I Adequately Described (in Words) the Design Mark
I Wish to Register?
Particular Concerns for Composite Marks
Use Must Support Registration of the Mark As Registered if
Amendment Later Requested
 Material Alteration Issues if Amendment Later Requested
39
THE MARK
 References:
•
Trademark Act Sections 1, 45; 15 U.S.C. §§ 1051, 1127
•
Trademark Rules 2.32, 2.37, 2.51-2.54
40
SPECIMENS OF USE
 Does the Specimen Contain any Harmful Information/Usage?
 Does the Specimen Demonstrate Adequate Trademark Use (for
Goods)?
 Does the Specimen Demonstrate Adequate Service Mark Use (for
Services)?
 Is it Possible to Submit Materials in Part?
41
SPECIMENS OF USE
 References:
•
Trademark Act Section 1, 15 U.S.C. § 1051
•
Trademark Rules 2.56, 2.59
•
Examination Guide 1-13
(Issued December 2012)
[web page specimens]
42
ANTICIPATING BLOCKING
CITATIONS

Narrowing the Identification of Goods/Services to Avoid Objection

Use of Exclusionary Language

The Mark is in a “Crowded Field”

Is a Priority and Likelihood of Confusion Cancellation Action Possible?

Is a Non-use Cancellation Action Possible?

Is a Partial Cancellation Action Possible?

Is a Co-Existence Agreement Possible or Advisable?

Consider the Downside of Arguing Around Blocking Marks
43
ANTICIPATING
BLOCKING CITATIONS
 References:
•
Trademark Act Sections 2(d), 14, 18; 15 U.S.C. §§ 1052(d),
1064, 1068
44
ANTICIPATING OTHER TYPES OF
OFFICE ACTIONS
 Procedural/Technical Rejections
 Substantive Rejections
•
Surname refusals
•
Descriptiveness refusals
•
Geographic refusals
•
Deceptiveness refusals
•
Ornamental refusals
45
ANTICIPATING OTHER TYPES OF
OFFICE ACTIONS


Procedural/Technical Rejections
• References: Trademark Rules 2.61-2.65, 2.71-2.72
Substantive Rejections
• Surname refusals
• Descriptiveness refusals
• Geographic refusals
• Deceptiveness refusals
•

References: Trademark Act Sections 2(a), 2(e); 15 U.S.C. §§ 1052(a),
1052(e)
Substantive Rejections
• Ornamental refusals
•
References: Trademark Act Sections 1, 2 and 45; 15 U.S.C. §§ 1051,
1052 and 1127
46
THANK YOU
CONTACT:
Jonathan Hudis
703.412.7047
jhudis@oblon.com
Trademark Application
Pre-Filing Strategies:
Overcoming the Obstacles –
Particular Issues
By Peter S. Sloane
Leason Ellis LLP
White Plains, New York
Examples of acceptable language for this purpose are: “The broken lines depicting
[describe elements] indicate placement of the mark on the goods and are not part of
the mark” or “The dotted lines outlining [the goods] are intended to show the
position of the mark on the goods and are not part of the mark.”
For example, for the mark below,
An appropriate description (and color claim) of the
mark could read:
The colors white, blue, light blue, and silver are
claimed as a feature of the mark. The mark
consists of the color blue applied to the cap of the
container of the goods, a white background
applied to the rest of the container, a blue
rectangle with a silver border, a light blue curving
band, and three light blue droplets. The dotted
lines outlining the container and its cap indicate
placement of the mark on the goods and are not
part of the mark.
49
50
51
52
The Upper Deck Company has filed an application to register the
mark depicted below for “trading cards.”
The mark is described as follows:
The mark consists of a hologram device which is applied to the goods, trading cards.
The mark is discrete from and does not constitute a part of the subject matter of the
trading card. Neither the size nor the shape of the hologram device, nor any content
which may be represented within the hologram device, nor the positioning of the
hologram device on the trading card are claimed as features of the mark.
The drawing is lined for the color silver, but color is also not claimed as a feature of the
mark.
53
54
Please see “Slide 55 Video – Peter Sloane”
55
56
57
58
59
Use by Related Parties
60
13
Unitary Marks
Compound word mark
• BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR.
Telescoped mark
• HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY
Unitary phrase
• FROM FIBER TO FABRIC FOR THE STYLE CONSCIOUS MILLIONS for fabrics
• TIP YOUR HAT for “hats”
Slogan
• QUALITY THROUGH CRAFTSMANSHIP for radio receivers and transmitters, power
supplies, and antennae
Double entendres
• LIGHT N’ LIVELY for reduced calorie mayonnaise
• SHEER ELEGANCE for panty hose
• SUGAR & SPICE for bakery products
Incongruous marks
• URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMAR
62
63
Thank You
Peter S. Sloane
Leason Ellis LLP
White Plains, New York
sloane@leasonellis.com