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Cover Your IP Assets
The following are three examples of how a service may be rendered in commerce: (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees are located in more than one state, and they use the mark. See TMEP 1301.03(b)
On February 13th, 2012, Jeremy Lin filed an application with the United States Patent and Trademark Office for “Linsanity.” However, he was the third entity to file for this mark. Other applicants have subsequently filed for this trademark as well.
However, experts agree that Jeremy Lin will be successful in opposing the earlier filed applications. A proposed mark cannot be registered if comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (15 U.S.C. §1052(a).)
Here is a list of reasons that constitute grounds for refusal to register a trademark:
(1) The applicant is not the owner of the mark
(2) The subject matter for which registration is sought does not function as a mark because, for example, the proposed mark:
(a) is used solely as a trade name
(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging
(c) is a nondistinctive configuration of the goods or their packaging
(d) is mere ornamentation
(e) is the generic name for the goods or services
(f) is the title of a single creative work or the name of an author or performing artist
(3) The proposed mark comprises immoral or scandalous matter
(4) The proposed mark is deceptive
(5) The proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute
(6) The proposed mark comprises the flag, coat of arms, or other insignia of the United States or any State, municipality, or foreign nation
(7) The applicant’s use of the mark is or would be unlawful because it is prohibited by statute
(8) The proposed mark comprises a name, portrait, or signature identifying a particular living individual without the individual’s written consent, or the name, portrait, or signature of a deceased president of the United States during his widow’s life, without written consent of the widow
(9) The proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive
(10) The proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services
(11) The proposed mark is primarily geographically descriptive of the applicant’s goods and/or services
(12) The proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services
(13) The proposed mark is primarily merely a surname
You can use the ® once your trademark has been federally registered in the United States. Filing an application for federal registration is not sufficient. Until then, it is advisable to accompany uses of the mark with a “TM” symbol. Thus you should use the trademark as follows: MARKTM. Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See Trademark Examination Procedure (TEMP) §906.04. Misuse of the federal registration symbol is usually due to misunderstanding as to its purpose, rather than actual fraudulent intent. Common reasons for improper use of the federal registration symbol that do not indicate fraud are:
See TMEP 906.02.
For more information on trademarks, please contact your trademark attorney or intellectual property lawyer. We are located just outside Downtown Los Angeles in the City of Pasadena. For more information on trademarks, please explore the rest of our trademark page.
When the applicant is seeking to register a specific design feature of its goods or packaging, the answer is yes. The applicant should present a three-dimensional view of the goods or packaging showing in solid lines those feature which the applicant claims as its trade dress and the remainder of the drawing in broken dotted lines. See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(b)(2) and (b)(4); TMEP §§807.08 and 807.10. In addition to these drawing requirements, a clear and concise description of the features claimed as the mark should also be included in such an application. See 37 C.F.R. §2.52(b)(4); TMEP §807.08. The description required is similar to the description you would submit with an application for a composite mark. However, instead of describing color placement and features of the composite mark, your description will distinguish the nonfunctional features claimed as trade dress from those features of the goods or packing to be excluded.
If you are interested in registering your trade dress on the Principle Register of the United States Patent and Trademark Office, we recommend seeking the assistance of an Intellectual Property Attorney. We are located just outside of Downtown Los Angeles in the City of Pasadena.
Not so, if you ask Kim Kardashian. Kardashian has filed a suit against The Gap for an ad campaign launched by Old Navy, a subsidiary of The Gap. Kardashian alleges, among other things, that her likeness, in the form of a celebrity “look-alike,” is being used in the ads and is likely to cause confusion in the consuming public as to an association of Kardashian with Old Navy’s products. Kardashian has pleaded Unfair Competition under the Lanham Act, Violation of California Common Law Right of Publicity, and California Statutory Right of Publicity. She is seeking injunctive relief and a laundry list of damages.
Using the likeness of a living person without proper consent or a “look-alike” without proper disclaimers can create serious problems. The cost to remedy the situation may seriously outweigh any profit gained. Should you find yourself on either end of this scenario, seek the advice of an Intellectual Property Attorney. We are located just outside of Downtown Los Angeles in the City of Pasadena.
Short answer, not always. A Notice of Abandonment is issued when a Trademark Applicant fails to take action by not filing a timely response to an Office Action or a Notice of Allowance. The Notice of Abandonment triggers a two-month period wherein the Applicant can file a Petition to Revive Abandoned Application. However, if the applicant failed to file a Statement of Use in response to the Notice of Allowance after expiration of the fifth extension (or 36 months from the date of the Notice of Allowance), the Applicant cannot revive the application and must re-file. The Trademark Electronic System (TEAS) will alert the Applicant upon entry of the U.S. Serial Number at the time of filing the petition.
There are two types of Petitions to Revive:
If you have received a Notice of Abandonment, we recommend you seek counsel from a Trademark Attorney immediately as the passage of time can reduce your chances of getting the Petition to revive granted. Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.
Once your trademark is registered with the United States Patent and Trademark Office, it may be registered with the CBP. The CBP maintains a system wherein intellectual property rights can be recorded. The CBP uses the information to prevent importation of goods bearing infringing marks. The information is used at 317 ports of entry to the U.S. If your mark is for goods, namely anything that can be or is regularly shipped into the United States, recordation of your intellectual property rights is essential to policing your trademark rights.
There is an application process to qualify for recordation, which your Trademark Attorney can assist in preparing. There is a recordation fee of $190. The application and fee can be submitted electronically to the Intellectual Property Branch of the CBP. Applications submitted electronically can be processed within three (3) business days. If the application and fee are submitted by mail, it can take up to six (6) weeks to process. For more information you can go to https://apps.cbp.gov/e-recordations/ or contact an Intellectual Property Attorney.
There are 44 International Classes, 34 of which are for goods and 10 are for services. It can be difficult to determine which International Class is correct for your goods and/or services, as there are many nuances to be considered with each class. See Chapter 1400 of the Trademark Manual of Examination Procedures. The short titles for the International Trademark Classes are as follows:
U.S. Trademark International Classes
There is a search tool provided on the United States Patent and Trademark Office website at http://tess2.uspto.gov/netahtml/tidm.html called Trademark Acceptable Identification of Goods & Services, which can assist in determining which is/are the acceptable class(es) for the goods and/or services to be associated with your trademark. The tool also provides sample recitations based on your search terms. For more information on the International Classes and recitations of goods and/or services, contact your Trademark Attorney. We are located in Pasadena, California just outside of Downtown Los Angeles.
When you get an Office Action for your pending trademark application the Examiner may require you as the Applicant to disclaim a portion of the applied for mark. This generally means the mark has an unregistrable element, i.e. a portion of the mark is descriptive or contains a common industry term. The disclaimer allows registration of the mark, without creating a false impression as to the registrant’s rights in those certain elements of the mark that are not registrable. Thus the required language: “No claim is made to the exclusive right to use ‘________’ apart from the mark as shown.” The disclaimer will appear in the trademark records of the United States Patent and Trademark Office as well as on the Certificate of Registration.
The significance of the disclaimer as conveyed in Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954): “As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.” However, the disclaimed portion of your mark is not likely to be considered when comparing two marks that may not otherwise be confusingly similar marks, as the claimed portion of your mark becomes the dominant portion of your mark. See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, similar overall commercial impression is created); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with “COMBOS” disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services).
That said, failure to comply with a requirement to disclaim was held to be a basis for refusal to register. (TMEP 1213.01) If you have been asked to disclaim a portion of your mark, you contact your trademark attorney. We are located in Pasadena, California, just outside of Downtown Los Angeles.
The title of a single book or creative work* is not registrable on the Principal or Supplemental Register. The name of a series of books or creative works may be registrable if it identifies or distinguishes the source of the goods. However, a term used in the title of a series of books is not registrable if it merely identifies a character in the books. Here are some examples given in Section 1202.08 of the Trademark Manual of Examination Procedure:
If you are the author of a book and wish to have a registered trademark for the title of the book some thought needs to be given about how to make that title part of a book series. More detail about trademark registration can be found on our website >> here. Our trademark attorneys can answer any questions if you need help.
* Examples of “single creative works” include books, videotapes, films and theatrical performances. (TMEP §1202.08)