Archive for August, 2009

The Concurrent Use of Trademarks in Different Geographical Locations

Wednesday, August 26th, 2009

Generally, trademark owners have exclusive rights to use their mark to label or identify their goods and/or services. However, trademarks may overlap under either of the following circumstances:

1. In different industries; or
2. In different geographical locations.

The most frequently litigated of these exceptions has been the concurrent use of trademarks in different geographical locations, as courts have had to determine the appropriate geographical scope of territorial priority rights in a particular trademark.

Concurrent Use in Different Geographical Areas

Although two companies must typically use an entirely different mark in order to avoid confusing the public as to who makes what, courts have typically permitted concurrent use of the same or similar mark by restaurants in different parts of the country. The rationale behind permitting concurrent use of a mark in different geographical areas is that there is little likelihood of confusion.

For example, in Weiner King, Inc. v. Wiener King Corp., the federal district court permitted concurrent use of “Weiner King” as a mark for restaurants featuring hot dogs in New Jersey and “Wiener King” as a mark for restaurants in North Carolina. Similarly, in Pinocchio’s Pizza Inc. v. Sandra Inc., the court permitted concurrent use of “PINOCCHIO’S” as a mark for restaurants in Maryland and “PINOCCHIOS” as a mark for restaurants located elsewhere in the country.

Concurrent Use Application and Proceedings

The Trademark Trial and Appeal Board (the Board) holds a concurrent use proceeding to determine whether an applicant is entitled to concurrent registration of a trademark. In order to initiate a concurrent use proceeding, a concurrent user must submit a concurrent use application, in which the applicant meets the following criteria:

1. Concedes that its use is not exclusive
2. Specifies the goods and/or services and area or mode of use for which the applicant desires registration
3. Identifies one or more persons which concurrently use the same or similar mark for the same or similar goods or services
4. Provides certain information concerning use of the mark by each listed concurrent user

Under Section 1052(d) of the federal Lanham Act, the Board Director may issue concurrent registrations upon finding that “confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks.” Further, an applicant is only entitled to concurrent registration if they have used the mark in commerce prior to the applicable date specified in the provision.

Priority of Use Test to Determine Ownership

The generally accepted rule on how to determine ownership of trademark rights is by the “first use date.” Specifically, the priority of use standard dictates that the first to actually use a mark in the sale of goods or services gains exclusive rights to the mark in the geographic area in which the mark is actually used.

In addition to gaining ownership rights in a trademark by way of actual use of the mark in a specific geographical area, ownership rights may also come from “constructive use.” Under this theory, federal registration of a trademark with the U.S. Patent and Trademark Office (PTO) raises the presumption that the registrant owns the mark, and fixes the registrant’s nationwide priority rights in the mark. However, federal registration of a mark does not give the registrant priority over others who have previously used the mark in commerce. As such, federal registration by one mark user places the burden on a concurrent user to show their prior and continued use of the mark.

Geographical Range of Prior Use

The Lanham Act requires the Board Director to “prescribe conditions and limitations as to the mode or place of use of the mark” in issuing concurrent registrations. Typically, the Director will grant territorial priority in a mark to the “senior user” who has applied for federal registration (as discussed above). However, the territorial rights of a senior user are subject to the rights of a “junior user” who has used the mark prior to the senior user’s application for federal registration.

When actual use of a mark by a senior user has been limited, courts frequently consider four factors to determine territorial priority in a mark, including:

1. The volume of sales of the product in a particular geographical location
2. Growth trends in the area
3. The market penetration as a function of the total product market
4. The amount of advertising

If a senior user satisfies the aforementioned criteria, actual use of a mark in a territory is not necessary to establish priority in the mark. Because pre-existing federal registration gives a registrant nationwide priority in a mark, it is important to conduct a trademark search before becoming committed to a particular trademark and using it in a particular geographical location.

Tags: , ,
Posted in Trademarks | No Comments »

Pseudo-Stupid

Tuesday, August 25th, 2009

The USPTO is a little infuriating. We recently filed a new application for our client, Galderma. The application is for GALDERMA in Class 10.

I recently received notification of the so-called pseudo mark that the USPTO assigned to this mark:

Pseudo marks assigned to the referenced serial number are listed below.
PSEUDO MARK:
GAL DERMATOLOGICAL

Seriously, USPTO? “GAL DERMATOLOGICAL”? This so-called pseudo-mark bears no resemblance to the examples offered by the USPTO: “A PSEUDO MARK may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings. For example, if the mark comprises the words ‘YOU ARE’ surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark as ‘YOU ARE SQUARE’. A mark filed as ‘URGR8′ would receive a pseudo mark of ‘YOU ARE GREAT’.”

This is just ridiculous. Really. What a waste paying these people to do this job. It’s helpful to no one.


Posted in Trademarks | No Comments »

Trademark Law & Distinctiveness

Thursday, August 6th, 2009

The term “trademark” includes “any word, name, symbol, or device…” used to identify a specific manufacturer’s or seller’s products”…from those manufactured or sold by others….” 15 U.S.C. § 1127  A trademark does not need to be registered to be valid. A valid trademark can be established through “legitimate use.” However, a trademark must be distinctive because a distinctive trademark ensures the following:
• competitors can use non-distinctive terms and symbols to describe their goods and services; and
• the trademark identifies the source of the product.

To test “distinctiveness,” courts will use the “Abercrombie Formulation.”

Abercrombie Formulation

The Abercrombie Formulation, developed by the 2nd Circuit Court of Appeals in Abercrombie & Fitch Co. v. Hunting World, Inc., tests for distinctiveness by creating four categories:

• generic—does not qualify for protection
• descriptive—sometimes qualifies for protection
• suggestive—qualifies for protection
• arbitrary or fanciful—qualifies for protection

The determination of whether a mark qualifies for protection is based, in part, on which category the mark belongs to.

Generic

By their nature, generic marks are not distinctive. They do not warrant protection because if one seller could trademark a generic name, other sellers would be unable to describe their products and would thus be at a great disadvantage. For example, it is not permissible to trademark “Milk” brand milk or “Hiking Boots” brand boots.

Suggestive

A suggestive mark does not describe the product; it suggests its nature or characteristics. Although an inference must be made about the product, the product must still bear some relationship to the mark. For example, a Pathfinder suggests something that is at home off-road, but it has no inherent relationship to a four-wheel-drive SUV made by Nissan. Similarly, “Titleist” has no inherent relationship to a golf ball, but it does suggest championship sports equipment.

Descriptive

Descriptive terms and symbols generally identify anything about the product: purpose, size, color, ingredients, origin, and so forth.  Merely descriptive, general marks do not qualify for protection. To qualify for protection, a mark must acquire a secondary meaning. To acquire a secondary meaning, the mark must be associated by the public with the manufacturer or seller rather than the underlying product itself. For example, “Jiffy Lube” describes a speedy lube and oil but has acquired a secondary meaning in the public mind.

A surname incorporated into a mark is treated as a descriptive mark—it does not qualify for protection until it acquires a secondary meaning. Examples include McDonald’s and Hilton Hotels.

Secondary Meaning

There is no bright line rule for determining whether a descriptive mark or surname has acquired a secondary meaning. The Second Circuit Court of Appeals, in Thompson Medical Co., Inc. v. Pfizer Inc. 753 F.2d 208 (C.A.N.Y.,1985), collected a list of factors to be considered from previous cases and stressed that no single factor is determinative.  These factors include the following:

• advertising expenditures
• consumer studies linking the name to a source
• sales success of the product
• unsolicited media coverage of the product
• attempts to plagiarize the mark
• the length and exclusivity of the mark’s use

Courts will also consider the how others have used the terms or symbols, whether they are likely to use them in the future, and the extent they have used them in the past.  Zatarian’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).

Arbitrary and Fanciful

Marks that are arbitrary and fanciful do not describe or suggest any characteristic of the product. The symbol’s meaning is not inherently related to the product, so the product is more likely to be associated with the symbol. Examples include Yamaha, Chevron, and Maytag. These words have no inherent relationship with their products—motorcycles, gasoline, and appliances.

Some Illustrative Cases

In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

Owens-Corning sought to register the color “pink” as it is used with the fiberglass they manufactured.  Owens-Corning claimed that the pink color of their fiberglass was an arbitrary design decision (fiberglass need not be pink). They further claimed that through prior commercial use, the color pink had acquired a secondary meaning, and was, thus, distinctive.

The court used the following factors to determine whether “pink” had a secondary meaning in this case:

•  ”pink” was connected with Owens-Corning’s product in the minds of “a significant part of the purchasing public”
• television commercials and other advertising that associated pink with the fiberglass including: “Pink of Perfection”; “The Pink Cooler”; “Big Pink”; “Love that Pink”; “Pink Power”; “America’s Favorite Pink Product”; “Tickled Pink”; “Put your House in the Pink”; “Up with Pink’; “Prime Time Pink”; “Think Pink”; “Think More Pink”; “Beat the Cold with Pink”; “All that Pink”; and “Plant some Pink Insulation in your Attic”.
• $42,000,000 in advertising expenditures

The court held that the descriptive term “pink” acquired a secondary meaning when associated with Owens-Corning fiberglass. Thus it was distinctive and could be protected by trademark.

Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997)

Genesee Brewing Co. had been marketing and selling a product called, “JW Dundee’s Honey Brown Lager.” A competitor, Stroh Brewing Co., later began marketing their own product called, “Red River Valley Honey Brown Ale.” Genesee sought to restrain Stroh from marketing Red River Honey Brown Ale, claiming that the phrase “honey brown” should be protected and would tend to cause confusion as to the origin of the product if used by Stroh. The court, however, held that the term “honey brown” was generic and descriptive because those words were necessary to describe that particular type of ale. Thus “honey brown” did not warrant protection.

Tags:
Posted in Trademarks | No Comments »

Ghostwriting

Wednesday, August 5th, 2009

It seems that the pharmaceutical industry is in hot water again.  This article from today’s New York Times takes the industry to task for allegedly paying so-called medical communications firms to author academic articles favorable to their products.  According to the article, only after the articles are authored by communications firms are physicians contacted to be identified as “authors”.

The article focuses on Wyeth and articles relating to Premarin and Prempro. 

Posted in Trademarks | No Comments »

Registered Trademarks Receive More Protection

Monday, August 3rd, 2009

While a “trademark” is not required to be federally registered to be protected under an applicable state or common law, there are several significant advantages in federally registration. However, in order to register with the U.S. Patent and Trademark Office (USPTO), the trademark must first meet certain eligibility requirements.

Purpose of Trademark Law

A “trademark” is any word, name, symbol or device, or a combination thereof, that identifies and distinguishes the source of goods or services. The Lanham Act is the federal law on trademarks. In general, the main purpose of trademark law is to protect consumers from deceptive and misleading use of trademarks in the marketplace. The Lanham Act enables consumers to identify the source of the goods or services to ensure that they are receiving consistent and preferred quality. This federal law also protects trademark owners against unfair competition by preventing competitors from using the same or a similar mark to sell their own goods or services.

Eligibility for Federal Registration of Trademarks

In order to receive nationwide protection, a trademark must meet certain eligibility requirements for federal registration with the USPTO. Two threshold requirements include that the trademark is “distinct” and that it will be used in connection or affect goods/services in “interstate commerce,” or that cross state lines. The Lanham Act provides that no trademark shall be refused registration unless the mark is:

• The same or similar to an existing mark on similar or related goods or services;

• Immoral, deceptive or scandalous;

• Disparaging or falsely suggestive of relationships with persons, institutions, beliefs or national symbols;

• A governments’ flag or coat of arms;

• Merely descriptive or deceptively misdescriptive;

• Geographically descriptive or misdescriptive;

• Primarily a surname; or

• A name, portrait or signature identifying a living person without their consent or of a deceased U.S. President during the life of his widow without her consent.

Distinctiveness of Trademarks

In order to qualify for registration, a trademark must be “distinct,” and thus capable of distinguishing particular goods or services from others. For this reason, it is important to select a mark that is not too generic. Categories of marks may include:

• Fanciful – invented words for goods or services (e.g., Kodak for cameras)

• Arbitrary – common words that do not describe goods/services (e.g., Apple for computers)

• Suggestive – words that suggest but do not describe goods/services (e.g., Nickelodeon for children’s television program)

• Descriptive – words that describe the goods/services (e.g., Personal Finance for a financial investment magazine)

• Generic – names of the good/service itself (e.g., Aspirin)

Fanciful, arbitrary and suggestive marks are typically considered to be inherently “distinct.” Descriptive marks will only receive protection by “becoming distinct,” where the owner can show that there is a common secondary meaning of the mark that is held by the public. Generic marks will never receive trademark protection.

The USPTO Official Gazette

Once the basic eligibility requirements for federal registration are met and the application has been accepted by the USPTO, the trademark will appear in the USPTO’s weekly publication, the “Official Gazette.” The purpose of the Official Gazette is to announce trademarks as candidates for federal registration. This publication provides existing trademark owners with the opportunity to object. Upon an objection the USPTO will hold a hearing to resolve the dispute. If there is no objection, the USPTO will respond to the application. If accepted, the trademark will be placed on either the Principal Register or the Supplement Register.

Principal and Supplement Registers for Trademarks

An eligible trademark may be registered with the USPTO on either the Principal Register or the Supplement Register. Generally, the Principal Register grants all of the rights and protections that are typically associated with trademarks. Registering a trademark on the Principal Register offers the following advantages:

• Validity of the mark and established ownership of the registrant;

• The trademark owner has exclusive rights in its use;

• Nationwide protection from infringement (vs. state or common law protection);

• Broad protection for “related” products or services;

• Far-reaching judicial remedies and availability of substantial damage awards;

• The mark may become incontestable (of the highest status) after five years.

The Supplement Register is designed to provide some protection for descriptive marks that have not yet acquired a secondary meaning. The Supplement Register still places others on notice of the use of a mark and can be used as evidence of ownership in an infringement action. However, unlike the Principal Register, a mark must already be used on goods or services in commerce to be placed on the Supplement Register and the bona fide “intent to use” the mark will not suffice.

Duration of Trademarks

Trademarks placed on the Principal Register are good for 10 years with the indefinite option to renew. However, the owner must file a “Declaration of Continued Use in Commerce” within six years after the registration in order to prevent their registration from being cancelled.

Posted in Trademarks | No Comments »

TTAB Offers Accelerated Case Resolution (ACR) Pre-Trial Disposition on Merits Saving Time and Money

Monday, August 3rd, 2009

In response to requests for expedited determination of inter partes proceedings, the Trademark Trial and Appeal Board (TTAB) offers both pre-trial final disposition on the merits, or abbreviated trial on the merits, of inter partes cases via Accelerated Case Resolution (ACR).

ACR is a TTAB initiative that provides parties to Board inter partes proceedings the opportunity to stipulate to final determination on the merits of cases at the pre-trial phase without the time or expense of a full trial.

ACR operates seamlessly in cases brought prior to the November 1, 2007 amendments to the Trademark Rules of Practice as well as those brought under the current Trademark Rules. ACR is most suitable for cases in which the issues are relatively straightforward and the evidentiary record is not extensive. For example, an opposition or cancellation brought on the ground of priority and likelihood of confusion where priority is not at issue and the parties do not rely upon extensive testimony and documentary evidence would be an excellent candidate for accelerated case resolution.

Parties requesting ACR may stipulate to a variety of matters to accelerate disposition of the proceeding, including the following:

• Abbreviating the length of the discovery, testimony, and briefing periods as well as the time between them;

• Limiting the number and types of discovery requests and/or the subject matter thereof;

• Limiting the subject matter for testimony, and/or agreeing to limit the number of witnesses, and/or agreeing to streamline the method of introduction of evidence, for example, stipulating to facts and introduction of evidence by affidavit; and

• Permitting the TTAB to resolve issues of fact at summary judgment and treat the parties’ summary judgment motion papers and evidence as the final record and briefs on the merits of the case.

Unlike summary judgment decisions that are interlocutory in nature, such ACR decisions would be judicially reviewable as set forth in Trademark Rule 2.145.

ACR provides parties with great flexibility in agreeing to streamline their inter partes proceedings before the TTAB within the framework of the Trademark Rules. Parties availing themselves of ACR may greatly reduce the time and expense of a full trial, and further obtain either a pre-trial final disposition in lieu of summary judgment or a final disposition after an abbreviated trial schedule. The Board is flexible and willing to work
with parties to arrange a more expeditious alternative to the traditional discovery and trial schedule. All that is required is that the parties be willing to work with each other and the Board to reach agreement on an alternative.

Parties may stipulate to ACR at any time during the pre-trial phase of the proceeding. Thus, parties that have been in contact prior to commencement may stipulate to ACR as early as the filing and service of their pleadings. Parties that have not been in prior contact may stipulate to ACR during their discovery conference, or at any time prior to the opening of testimony. Thereafter, parties still may agree to abbreviating trial and
briefing schedules, limiting the types and methods of introduction of evidence, and
stipulating to facts. See Target Brands, Inc. v. Shaun N.G. Hughes, 85 USPQ2d 1676 (TTAB 2007).

Expediting TTAB proceedings via ACR saves time and money for parties, in-house counsel, and trademark practitioners. In addition, in most cases it is anticipated that decisions on ACR cases will be rendered within fifty days of briefing or hearing.

Parties may stipulate to ACR by telephone conference with the interlocutory attorney assigned to their case or by filing a stipulation by ESTTA or mail. In any event, parties must telephone the assigned interlocutory attorney to alert the TTAB that the parties are seeking ACR. Failure to do so may result in delays in implementing ACR and the disposition of the proceeding.

Information regarding ACR is contained in the institution and scheduling order of all TTAB inter partes proceedings. For more information on ACR, visit the TTAB website at http://www.uspto.gov/web/offices/dcom/ttab/index.html

Tags:
Posted in Trademarks | No Comments »