Trademark Registration

This week, the Federal Circuit issued a new decision that once again reflects the tricky conundrum facing businesses whose trademarks are a collection of descriptive words.

In such circumstances, the Patent & Trademark Office – as well as the courts that review PTO decisions – frequently require such a business to “disclaim” any rights in the words that comprise the business’ mark.  This disclaimer requirement is imposed on the grounds that the words in the mark are merely descriptive on their own and that as a result, the business should not be permitted to own trademark rights which would otherwise prevent other businesses from using those words for their own separate businesses.

In some cases, as was the situation for DDMB, Inc., the Chicago business involved in the current case, the Trademark Office will require the business to disclaim every word in the business’ name, such that the business is not entitled to any rights in any of the individual words apart from their inclusion in the full mark.

This legal doctrine came to bear most recently against a company that operates a pair of Chicago restaurants, in the case In re DDMB, Inc., — Fed. Appx. —, 2017 WL 915102 (Fed. Cir. Mar. 8, 2017).  In its decision, the Federal Circuit affirmed a prior ruling in January 2016 by the Trademark Trial and Appeal Board, denying federal registration for a service mark using the phrase “EMPORIUM ARCADE BAR.”  The examining attorney at the Trademark Office had required the applicant to disclaim the word “emporium,” after the business already had disclaimed the words “arcade” and “bar,” in its application to register the following mark:

Emporium Arcade Bar - Trademark Registration Application
Source: In re: DDMB, Inc. Opinion, Issued March 6, 2017

When the Chicago business refused to agree to the additional disclaimer of the word “emporium,” the Trademark Office refused to approve the registration, which was being sought in connection with bars, bar services, and providing video and amusement arcade services. The Office’s insistence on a disclaimer of the word “emporium” was approved by the TTAB in a subsequent decision in January 2016. And, that decision has now been affirmed in this week’s ruling by the circuit court.

In holding that a disclaimer of the word “emporium” is required because it is merely descriptive of the applicant’s bar and arcade services, the TTAB had ruled that this word describes attributes of a large establishment with a wide variety of merchandise and activity going on within it, and that as a result, the word functions as a description of the applicant’s services rather than as an indicator of the origin or source of the services. The TTAB’s ruling was premised on dictionary definitions and at least seven other trademark registrations where the word “emporium” had been seen to be descriptive and where a disclaimer was required as a result. Specifically, for example, the TTAB cited registrations where disclaimers were imposed for the marks “THE FLYING SAUCER DRAUGHT EMPORIUM,” “McDADE’S EMPORIUM,” and “STAMPEDE MESQUITE GRILL & DANCE EMPORIUM,” each of which involved businesses with similar bar services.

(The circuit court affirmed the TTAB’s ruling, in a non-precedential, per curiam decision in light of the extremely generous standard of review on appeal for such factual determinations by the TTAB because the circuit court is required to affirm such determinations if there is “substantial evidence” to support them.)

The In re DDMB case stands as a cautionary tale for businesses with names that are otherwise descriptive words, or collections of descriptive words. The trouble for the applicant here is that there is a long history of the Trademark Office requiring applicants to disclaim the word “emporium.” This trouble was accentuated by the fact that the applicant sought to register a composite mark that had other descriptive words in the mark that the applicant already had disclaimed. The specimen that the applicant submitted with its application highlighted this trouble:

Emporium Arcade Bar - USPTO File Wrapper Record Image
Source: USPTO file-wrapper record, U.S. TM Serial No. 86312296, June 17, 2014.

In such circumstances, instead of seeking registration for a mark in which the word “emporium” was displayed with equal visual significance as “arcade” and “bar,” the applicant might have considered applying for registration of a different version of the mark, with only the one word “emporium,” such as what is now visible at the applicant’s storefront at its Logan Square restaurant in Chicago, as shown on its website:

Emporium Arcade Bar - Front
Source: Emporium Arcade Bar Website, March 10, 2017

Ultimately, however, even if the application had focused on only one word, as opposed to three, it is still likely that the Trademark Office would have required a disclaimer of the word “emporium” because of the long history of treating this word as merely descriptive.

As a result, and as a lesson for businesses with highly descriptive words in their names, it may be wise to accept a demand from a trademark examiner to disclaim the descriptive word in a business’ mark – if only as a means of moving forward with the federal trademark registration –and then to invest in building consumer recognition of the business’ mark. Some of the most famous marks today, which have been around for generations, continue to have disclaimers on portions of the mark. Hence, The Coca Cola Co.’s registration of DIET COKE® continues to carry a disclaimer for the word “diet,” and KFC Corp.’s registration of KENTUCKY FRIED CHICKEN® continues to carry disclaimers for the words “fried” and “chicken.”

The moral of this story may be that disclaimers are a necessary evil when a business’ mark is a word that the Trademark Office already has concluded is merely descriptive.

In the United States, unlike overseas, you get a lot of legal protection right away simply by coming up with a brand name and USING it to sell goods and services. USE is the crucial issue here.

This means that we trademark attorneys spend a lot of time thinking about how to prove that our clients’ trademarks have been used. It’s not as easy as it sounds!

For example, last month the USPTO’s reviewing board rejected a real estate company’s attempt to prove it was using its name. The company submitted digital photos of the front door of its facility where it provided and managed its real estate services:

door
Source: In re Republic National LLC (TTAB Opinion), February 23, 2017

Not good enough. As experienced trademark attorneys know, the USPTO is persnickety about what proof it will accept to show a trademark is actually in use. In this case, it wanted to see a description of the services being offered, not just a name on a door.

What comes to mind when you hear the term “LifeProof”? Does it immediately make you think of something that protects from all of life’s hazards or does it merely suggest that something can withstand various accidents? That is what the Ninth Circuit in California is deciding in Seal Shield LLC v. Otter Products LLC, et. al. after hearing oral arguments on the topic in January. The issues central to the case hammer home the importance of using your trademarks in the right way—as a trademark identifying a brand—or a source—and not as term that merely describes the product.

In this case, Seal Shield and Otter Products both claim rights to the same term—LIFEPROOF. Seal Shield argues that it was the first to use it, so it should have the rights. Otter Products counters and argues that Seal Shield did not use it in the right way—that Seal Shield only used it to describe the product and not as a trademark.

Copyright: 91foto / 123RF Stock Photo
Copyright: 91foto / 123RF Stock Photo

Seal Shield sued Otter Products and TreeFrog Developments (which was acquired by Otter Products) after TreeFrog Developments obtained a federal trademark for LIFEPROOF in 2010. Seal Shield brought a suit in 2013 and argued that it had senior rights to the name LIFEPROOF and requested that the court cancel Otter Products’ trademark as a matter of law. In ruling in favor of Otter Products, the district court held that as a matter of law Seal Shield did not have proprietary rights to the LIFEPROOF name because the way Seal Shield used the name (as a tagline or slogan with its Klear Kase protective cases) was merely descriptive.

Seal Shield appealed the district court decision arguing that its use of LIFEPROOF is not merely descriptive but is suggestive. Specifically, Seal Shield argued that LIFEPROOF falls short of explicitly describing the various features that are included under the mark LIFEPROOF and it takes a mental leap to associate the word LIFEPROOF with a protective case that protects from all of the elements and human error, meaning the mark is suggestive. Seal Shield also argued the mere fact that the USPTO granted TreeFrog Developments federal registration of LIFEPROOF demonstrates that such mark is protectable.

For its part, in addition to a myriad of other arguments, Otter Products contends that Seal Shield’s use of the LIFEPROOF mark is merely descriptive and that it failed to show any consumer evidence of secondary meaning—such as a survey showing that consumers associate their use of LIFEPROOF with the goods of one maker rather than merely describing the product. And to address the seeming inconsistency, Otter Products contends that Seal Shield cannot rely on Otter Products’ federal registration as evidence that the mark LIFEPROOF is distinctive because, as Otter Products argues, it uses the mark as a trademark and not merely to describe the goods.

The court will rule on this appeal later this year. You may think it’s counter-intuitive for Otter Products to argue that Seal Shield’s use of the LIFEPROOF mark is merely descriptive while at the same time maintaining a federal registration for that same mark that is inherently distinctive and suggestive; however, this demonstrates that the way you use mark is a key component on whether a mark will obtain trademark protection.

Registering your brand name as a trademark domestically or internationally can be a long, confusing process involving obscure governmental agencies requiring various fees at seemingly random intervals. Some of these demands are legitimate (International Bureau of the World Intellectual Property Organization notification that payment of a 2nd part fee is due in Swiss francs): but many others are NOT (WPAT s.r.o. invoice for 2738$ “on or before”, 2798$ “after”).

These solicitations arrive because the process of registering a trademark creates a public record. This means that anyone who infringes a registered trademark is not allowed to complain they did not know about the trademark but it also lets potential scam artists know that you have a trademark you care enough about to spend money registering.

But be careful not to be misled by the flurry of official looking invoices! Like this one:

Don't pay this invoice!
Don’t pay this invoice!

The United States Patent and Trademark Office warns against such scams, listing a number of examples (the above image was taken from their website).

If you have hired a trademark attorney to register your brand name for you, you need never pay any of the invoices yourself. Trademark attorneys will pay the legitimate ones on your behalf. In the United States and in most other countries, legitimate communications will be directed only to the trademark attorney and not to the trademark owner. When in doubt, just forward the communication to your trademark attorney.

If you are trying to negotiate the process yourself or just want to be able to spot wrongdoers, here is our list of red flags:

  1. Who dd it come from? Scammers like to use slight deviations from the correct names of the legitimate agencies. For example instead of “The United States Patent and Trademark Office”, the notice will come from entities such as the “Trademark and Patent Office” or the “United States Trademark Registration Office”.
  2. Where dd it come from? The real United States Patent and Trademark Office is located in Alexandria, Virginia. Beware of solicitations directing funds be sent to an address in New York or Philadelphia Pennsylvania. And, especially not Slovakia!
  3. Read the fine print. Some of the communications helpfully state that they are not legitimate (in a tiny difficult-to-read font, embedded in the middle of a long paragraph with otherwise unalarming factual information): “THIS PUBLICATION IS AN ELECTIVE SERVICE WHICH NEITHER SUBSTITUTE THE REGISTRATION NOR PROLONGS THE VALIDITY OF THIS TRADEMARK OR PATENT WITH U.S.P.T.O.”
  4. Watch the grammar! Typos, grammar and spelling errors are common in these types of scams. See the example in our red flag number 3…
  5. Check the website address. The real United States Patent and Trademark Office operates from the address USPTO.gov. Addresses such as patenttrademarkoffice.org, on the other hand, take you to a website that explains, in the “About Us” tab: “Headquartered in New York City, the Patent Trademark Office is the nation’s premier Trademark and Patent renewal service.” (ha!). Likewise, World Intellectual Property Organization (WIPO) operates from the address WIPO.int. Be suspicious of any address ending in a .com, .org or .us.
 Don’t fall prey to these confusing communications!

 

 

The newest NHL franchise, set to debut in Las Vegas next year, might be considering other names for the team after the United States Patent and Trademark Office (USPTO) rejected the hockey team’s proposed trademark, “VEGAS GOLDEN KNIGHTS”.

In an Office Action issued this week (Dec. 7, 2016), an examining attorney preliminary rejected the mark “VEGAS GOLDEN KNIGHTS” because it was too similar and likely to be confused with the mark used by the College of Saint Rose, “GOLDEN KNIGHTS OF THE COLLEGE OF SAINT ROSE”.

Interestingly, the College of Saint Rose (Albany, NY) doesn’t even have a sanctioned hockey team!

In a statement released following the issue of the Office Action, the franchise said the following:

“There are countless examples of college sports teams and professional sports teams with coexisting names, including Vegas Golden Knights and Clarkson Golden Knights, UCLA Bruins and Boston Bruins, U of Miami Hurricanes and Carolina Hurricanes, etc. We will plan on making these arguments and others in our detailed written response to the office action which must be filed by June 7, 2017.

Office actions like these are not at all unusual, and we will proceed with the help of outside counsel in preparing a response to this one.”

The Office Action also required the franchise to “disclaim” the word “VEGAS” as being too geographically descriptive. Since the team will be playing in Las Vegas, and “VEGAS” is included in the trademark, that portion of the mark impermissibly describes the services and cannot be protected as part of the mark.

Many trademark applicants receive office actions (rejection letters) from the USPTO, and this is merely a preliminary refusal to register the mark. The franchise’s response to the USPTO’s Office Action, which is due in six months, will likely set out the franchise’s position on why it should be allowed to register its mark, regardless of the College of Saint Rose’s mark. The arguments could range from arguments regarding dissimilarities in the marks or the consumers of the marks to the existence of a co-existence agreement.

Team owner Bill Foley has previously said that Clarkson College and the University of Central Florida – both of which are also known as the Golden Knights – consented to his team using the name. Foley has not said whether he attempted to get consent from the College of Saint Rose.

Co-existence agreements (i.e. agreements that both parties can use the marks) are typical, and submitting evidence of such an agreement to the USPTO often gets a proposed mark registered.

Whatever the arguments the franchise may have, individuals and companies alike should remember to conduct thorough due diligence before attempting to register a mark—and before spending significant resources promoting a mark. This will help identify potential conflicts to a registration and use of a mark, allowing for, if necessary, the modification of the mark or the development consent co-existence agreements to avoid office actions or infringement claims.

This is a developing story, so stay tuned for further updates.

Although a rose “by any other name would smell as sweet,” (Romeo & Juliet, Act II, sc. 2, ln 48), there just aren’t any trademark registrations to be had in a person’s name, at least not without the person’s written consent.  So the U.S. Patent and Trademark Office recently reminded a trademark applicant who had applied for a trademark registration for the mark “LOVE TRUMPS HATE,” in connection with clothing.

Registered trademark in a red background
Copyright: silvia / 123RF Stock Photo

In an Office Action issued last week (Nov. 21, 2016), an examining attorney preliminarily rejected a trademark registration application filed for the mark “LOVE TRUMPS HATE” on the grounds that the mark identifies a particular living individual and the applicant had failed to make a part of his application a formal, written consent to the registration from that living person – in this case, president-elect Donald J. Trump.  (See Office Action, Nov. 21, 2016, Trademark Serial No. 87117865.)

The Trademark Office’s response to the application relies on Section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c), which is among the many “statutory bars” that may trip up a business’ effort to secure trademark registrations.  In this case, the statutory bar for non-consensual registrations of marks that identify a living individual is one of the provisions of the Lanham Act intended to protect the personal rights of individuals whose names have become famous or otherwise may be the target of appropriation in the marketplace.  (The prohibition against false endorsements in Section 43(a)(1)(A) of the Lanham Act is another such area of protection for people with famous names.)  The statutory bar in Section 2(c) has been invoked in past cases as a barrier to registrations of marks such as “PRINCESS KATE,” and “BO JACKSON,” and “OBAMA PAJAMA.”

In this most recent case, an applicant from New York City sought to register the famous slogan from the Hillary Clinton presidential campaign, in connection with t-shirts, sweatshirts, and caps, on an intent-to-use basis, in an application that was filed with the Trademark Office on July 27, 2016.  At the time of the application, the Clinton campaign had begun using the slogan “Love Trumps Hate” in response to various statements made by the Republican nominee.  Indeed, the last words that Mrs. Clinton uttered in public on the last night of her campaign before Election Day were “Love trumps hate.”

Setting aside questions of whether the use of this slogan on t-shirts, sweatshirts, and caps would be a sufficient usage to designate the source or origin of the products – a question bearing on whether the phrase functions as an actual trademark, rather than merely an ornamental slogan – the Trademark Office issued its preliminary denial because, the examining attorney concluded, the phrase “LOVE TRUMPS HATE” “clearly references Donald Trump.”  The Trademark Office was not swayed by the fact that this phrase obviously conveys a meaning apart from a reference to Mr. Trump, in that it propounds a worldview in which the emotion of love overcomes those things we may despise.  The Trademark Office pointed out that the statutory bar precludes registration of any mark that identifies a living individual (where the person does not give formal, written consent) if the person identified in the mark “is so well known that the public would reasonably assume a connection between the person and the goods.”

Of course, this specific Office Action is only a preliminary refusal to register the mark, and the applicant may well attempt to bring to bear the gamut of First Amendment arguments that certainly protect the applicant’s right to criticize Mr. Trump.  Whether those First Amendment rights are sufficient to authorize a trademark registration in this context is a legal question that the Trademark Office likely would not find persuasive, especially in light of the Office’s positions in other cases involving the intersection of the Lanham Act’s statutory bars and the First Amendment.

Nevertheless, this little anecdote is a cautionary reminder to businesses that their trademarks may not be registrable if they identify a particular living individual, absent a formal written consent from that individual, where the mark’s use of a person’s name would cause the public to see a connection between the famous person and the goods for which the mark is used.  (Whether such protection of a celebrity’s right of publicity is a good or bad thing, or is overreaching, is a legislative question to be addressed to Congress, and in that regard, it is a question likely to go unresolved in this era celebrity-drenched politics.)  Thus, businesses seeking to appropriate the fame of a well-known person’s name in their trademarks – even in this context of a double entendre on Mr. Trump’s name – would be well advised to think twice, or certainly, to negotiate a consent agreement that avoids the difficulty of having an application for registration denied on the strength of this statutory bar.