Likelihood of Confusion trademarks service marks

Likelihood of Confusion – Trademarks

“Likelihood of confusion” is a legal test. It is applied by the courts and administrative agencies to contested Trademark/Service Mark proceedings and by United States Patent and Trademark Office (USPTO) Examiners during the registration process for Trademark/Service Mark Applications.

Likelihood of Confusion – What Law Applies?

Before a federal Trademark is granted, an Applicant must prove to the USPTO that the Trademark was used on goods and/or services in commerce that the U.S. Congress may lawfully regulate. The geographical limit for a federal Trademark registration is the geographical boundary of the United States and its territories.

Federal Jurisdiction

Federal jurisdiction of Trademarks/Service Marks (hereinafter Trademarks) can be controlled by the precedent of the US Supreme Court or one of the thirteen federal circuit courts sitting beneath the US Supreme Court.

Each of the thirteen federal circuits has its own case law precedent for adjudicating “likelihood of confusion” for contested Trademarks.  Although the case law precedent of the federal circuits is similar, it is not identical.

State Jurisdiction

When a Trademark is granted at the State level, the law of that State controls court and agency proceedings. The laws of the several States are variable on the standards for “likelihood of confusion.” The geographical limit for a State Trademark is the border of the State.

Likelihood of Confusion – USPTO Trademark Applications

For the USPTO, the “likelihood of confusion” precedent for Trademark Examiners is set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Today, the Court of Appeals for the Federal Circuit has jurisdiction over appeals from USPTO agencies and adopted the du Pont case as precedent.

On page 567 of the du Pont case, the court stated:

“In testing for the likelihood of confusion under 15 U.S.C. § 1052 Sec. 2 (d), the following, when of record, must be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. care, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use.)
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  8. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
  9. The market interface between applicant and the owner of a prior mark… (e.g., have the interested parties executed a contract to proclaim there is no confusion?).
  10. The extent to which the applicant has a right to exclude others from use of its mark on its goods.
  11. The extent of potential confusion, i.e., whether de minimis or substantial.
  12. Any other established fact probative of the effect of use.”

If the Examiner or the USPTO determines there is a “likelihood of confusion” between Applicant’s Trademark and a prior Registration or pending Application, the USPTO will refuse to register the junior Applicant’s Trademark.

Observations

With regard to the “likelihood of confusion” test, each of the federal circuit courts have adopted precedent similar to the test set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). When possible, parties to an infringement will attempt to try the case in a venue most favorable a party’s evidence and arguments.

Have Questions on Your Trademark?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses of all sizes.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Securing Your Trademark Service Mark - Evidence of Use for Trademarks

Evidence of Use for Trademarks

Do I Have to Use My Product or Trademark in Commerce First?

Yes. Before the United States Patent & Trademark Office (USPTO) grants a Registration, you must provide evidence of use of the Mark in commerce.

The Statutory Law

15 United States Code 1051 (U.S.C.) (a) (2) reads, “The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.”

15 U.S.C. 1127, in part, reads, “The word “commerce” means all commerce which may lawfully be regulated by Congress.”

Establishing Interstate or International Use

Only interstate or international commerce can be lawfully regulated by Congress. Thus, interstate or international use of your product is required to secure a federal Registration.

Example Scenarios

Your Louisville, Kentucky company, only sells gizmos (bearing your Trademark) to a Lexington Kentucky corporation. In this example, there is only intrastate commerce. Since Congress does not regulate intrastate commerce, your Trademark would not be a subject for a federal Registration.

On the other hand, if your Cincinnati Ohio company sells gizmos (bearing your Trademark) to corporations in Columbus, Ohio; Louisville, Kentucky; and Nashville, Tennessee, then you conduct interstate commerce. Since Congress regulates interstate commerce, your Trademark would eligible for a federal Registration.

Likewise, if your Lexington, Kentucky company sells your gizmos (bearing your Trademark) to retailers in Canada and Mexico, then you conduct international commerce. Congress regulates international commerce, so your Trademark would be eligible for federal Registration.

What is Acceptable Evidence of Use to Establish Interstate or International Use?

For either Trademarks or Service Marks, invoices and other business records showing sales across state lines or international borders are useful in establishing interstate and/or international commerce. Here are a few more examples of acceptable evidence of use for both Trademarks and Service marks:

 Examples of Evidence for Trademarks:

  • Photographs of the Trademark, when attached to the goods and/or the packaging containing the goods
  • Photographs of displays of the goods, where the displays and the goods bear the Trademark
  • Screen shots of websites for the sale of goods where the website and the goods bear the Trademark
  • Screen shots of websites for the streaming or downloading of software products, where the website and the software goods bear the Trademark
  • Copies of audio commercials advertising the goods bearing your Trademark
  • Photographs of promotional giveaways advertising the goods bearing your Trademark

Examples of Evidentiary Specimens for Service Marks:

  • Photographs associating the Service Mark with the services rendered
  • Video and/or audio commercials associating the Service Mark with the services rendered
  • Printed publications and brochures associating the Service Mark with the services rendered
  • Letterhead and business cards associating the Service Mark with the services rendered
  • Photographs of promotional giveaways associating the Service Mark with the services rendered

What Digital Formats Should I Use To Provide Evidence?

Do you plan to submit digital proof of use to the USPTO? Then you need to know that the office prefers PDF or .jpg samples. So, be sure to submit all digitally filed evidentiary specimens in one of these two formats.

What If I Need More Trademark Help or Legal Advice?

When you need help to secure, manage and/or enforce your Trademarks or Service Marks, contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies of all sizes.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Intent to Use Applications - Service Marks and Trademarks

Intent to Use Applications

Intent to Use Applications for Registration

There are two kinds of federal Trademark/Service Mark Applications:

  1. Intent to Use Applications
  2. In Use Applications

In the United States, the Mark must have interstate or international use before a federal Registration is granted.

Clients may opt to use the Intent to Use route to establish a “constructive” date of first use (the filing date) with the grant of the Registration. This constructive date of first use can benefit the Applicant/Owner of the Mark in situations where there are conflicts between competing Applications for Registration.

The Statutory Law for Intent to Use Applications

The United States code allows an applicant to file an Application for Registration before the Mark has interstate or international usage. That section of the code (15 United States Code 1051) reads:

(b)Application for bona fide intention to use trademark

(1)  A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.

When filing of the Application, the Applicant must verify the following:

  • The Applicant believes that he/she/it is entitled to use the Mark in commerce
  • The Applicant has a bona fide intention of using the Mark in commerce
  • That the facts recited in the Application are accurate
  • That no other person is using an identical form in connection with goods (services) or in a near enough resemblance that it is likely to cause confusion, mistake, or to deceive

There is a USPTO filing fee for filing the Intent to Use Application and the filing of an Application for Registration does not guarantee that Registration will be granted.

The USPTO email Notice of Allowance

After filing of the Intent to Use Application, there may be one or more Office Actions between the Examiner and the Applicant before the Examiner issues or declines a Notice of Allowance.

If the Examiner approves the Intent to Use Application, the Applicant will receive an email from the USPTO that indicates the following (among other things):

  • Notice of Allowance (NOA)
  • Issue Date
  • U.S. Serial Number
  • Mark
  • Docket/Reference Number

If no opposition was filed for this published Application, the issue date of this NOA establishes the due date for the filing of a Statement of Use (SOU) or a Request for Extension of Time to file a Statement of Use (Extension Request).  WARNING: A SOU that meets all legal requirements must be filed before a Registration Certificate can issue.  Please read below for important information regarding the Applicant’s pending six (6) month deadline.

The Six Month Deadline

An applicant has six (6) MONTHS from the NOA issue date to file either:

  • An SOU, if the Applicant is using the mark in commerce. OR
  • An Extension Request. (Required if the applicant is not yet using the mark in commerce.)

NOTE: If an Extension Request is filed, a new request must be filed every six (6) months until the SOU is filed.  The applicant may file a total of five (5) extension requests.  Warning: An SOU may not be filed more than thirty-six (36) months from when the NOA issued.  The deadline for filing is always calculated from the issue date of the NOA.

Post Notice of Allowance Procedures 

Until the Mark has interstate or international usage and the Registration is granted, Applicant must file either:

  • A Statement of Use; or
  • A Request for an Extension of Time in which to file a Statement of Use

Support of a Request for an Extension of Time to file a Statement of Use

You do not have to show “good cause” for the first request, but in order to support your request for an extension after that, you must include a showing of good cause. The showing of good cause must include a statement of the Applicant’s ongoing efforts to use of the Mark in commerce.

Efforts to use the Mark in commerce may include:

  • product or service research or development
  • market research
  • manufacturing activities
  • promotional activities
  • steps to acquire distributors
  • steps to obtain required governmental approval, or
  • other similar activities

An Applicant can file a maximum of five Requests for an Extension of Time to file a Statement of Use.

Need assistance with your Intent To Use Application?

If you need legal assistance in preparing Trademark Applications, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

suspended trademark next steps

Trademark Suspension Notice: How to Handle

The Trademark Suspension Situation

Our Company has been using our Trademark for Years. Our General Counsel filed an In-Use Federal Trademark Application. We just received a Suspension Notice from the Trademark Examiner.

  • During the Application phase, regardless of your Company’s alleged prior use, the Examiner can suspend your Company’s Trademark Application
  • With regard to Trademark Applications filed in the USPTO, until the subsequent Applicant proves otherwise, the first Applicant to file has superior procedural rights, and potentially, superior substantive rights
  • When a Trademark Application is suspended, the Examiner takes no further action on the suspended Application until proof of certain evidentiary conditions cause the Examiner to resume examination of the suspended Application
  • In some situations, multiple Applicants’ Applications can be suspended for a period of years

Receiving a Trademark Suspension Notice

A United States Patent and Trademark Office (USPTO) Suspension Notice of a pending Trademark Application looks something like the following:

SUSPENSION NOTICE

No Response Required

Issue date:  December 15, 2020

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.

USPTO database searched; prior-filed potentially conflicting pending application(s) found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark(s) in a prior-filed pending application(s) may bar registration of applicant’s mark.

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below is provided in this letter.

– U.S. Application Serial No(s). ????????

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05.

What can our Company do to Advance our Application?

  • Accumulate evidence about the Applications involved with the suspension
  • Seek competent intellectual property counsel
  • Determine best options for success in advancing the Company’s Application toward a Federal Registration
  • In the United States, before the USPTO grants a Registration, the Applicant must provide evidence of either interstate or international use of the Mark
  • Trademark Suspension Notices can create a convoluted path to federal Registration

Need More Help?

Business Patent Law, PLLC represents and has represented clients owning suspended Trademark Applications before the USPTO. If you need legal assistance in preparing and prosecuting and Patent and Trademark Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses, companies and individuals.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

How to Revive Your Expired Trademark

Reviving Abandoned Trademark Applications

Reviving Abandoned Trademark Applications

Our company is has abandoned trademark applications and the United States Patent and Trademark Office (USPTO) has issued Notices of Abandonment for some of our trademark applications. What is the procedure to revive these abandoned trademark applications?

Abandoned Trademark Applications: How it Happened

Over a year ago, in anticipation of future sales some of our company’s research and development pipeline products, the marketing department filed several Intent-to-Use Trademark Applications in the USPTO. Our vice president of sales recently authorized his department to take advance orders for two new products and he was informed that the Intent-to-Use Trademark Applications for the two new products were considered abandoned by the USPTO.

Why it Matters

We just learned that one of our competitors filed two Intent-to-Use Trademark Applications in the USPTO and that those two Trademark Applications were identical to our company’s now abandoned Trademark Applications.

The Question

Can we do anything to keep our competitor from obtaining federal registrations for our Trademarks?

The Answer

Depending on the timelines of each company’s Trademark Applications, maybe.

Petition to Revive Requirements

Under most factual circumstances, 37 Code of Federal Regulations 2.66 requires that the Petition to Revive abandoned Trademark Applications must be filed within two months of the USPTO’s Notice of Abandonment of the Trademark Application.

Examples of requirements associated with the filing of Petition to Revive an abandoned Trademark Application in the USPTO are:

Received Petition Type 1: Office Action

This petition type indicates no response was filed or it was filed untimely. To address the Office Action, you will need to include in your request:

  • Petition fee (one for each application)
  • A statement that the delay in filing a response was unintentional, signed by someone with firsthand knowledge of the facts.
  • A complete response to the outstanding office action signed by the applicant or, if the applicant is represented by an attorney, signed by their attorney.
  • NOTE: If the abandonment was entered after a final office action, the response must include either a notice of appeal or a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).

Received Petition Type 2: Notice of Allowance received

This petition type indicates that no statement of use or extension request was filed, or they were filed untimely. To address a Notice of Allowance, you must include in your request:

  • Petition fee (one for each application)
  • A statement that the delay in filing a Statement of Use or extension request was unintentional, signed by someone with firsthand knowledge of the facts.
  • The required fees for all extension requests that have become due since the Notice of Allowance was issued.
  • A Statement of Use, an extension request, or (in a multiple-basis application) an amendment deleting the section 1(b) basis or deleting all of the intent to use goods/services and seeking registration based on an already existing section 1(a) and/or section 44(e) basis.

What Happens Next?

If Your Request is Granted

If the USPTO grants the Petition to Revive, your abandoned Trademark Application is reinstated to “pending” status.

In your situation, if your company’s petition to revive two of its abandoned Intent-to-Use Applications is granted, your company’s pending Intent-to-Use Applications would pre-date your competitor’s filings. With regard to each company’s Intent-to-Use Applications, your company’s procedural rights associated with your Intent-to-Use Applications would be superior to your competitor’s procedural.

If Your Request is Not Granted

If the USPTO does not grant your Petition, your competitor would have superior procedural rights. Depending on the facts, even if your request is denied, your company may have other legal actions that can prevent your competitor from using trademarks created by your company.

If your enterprise needs legal assistance procuring/managing/enforcing your intellectual properties, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Opposition to a Trademark

Opposition Proceedings

What is a USPTO Opposition Proceeding?

Another Company filed a Trademark Application in the United States Patent & Trademark Office that is almost identical to our Trademark.  What can we do?  Can we institute an Opposition?

In view of such facts, your company has at least the following options:

  • Do nothing
  • Purchase the troublesome Trademark
  • Send a Cease and Desist Letter
  • If your company owns a federal Registration, institute a federal Trademark infringement legal action in the appropriate jurisdiction and venue
  • Possibly – institute a False Designation of Origin legal action in the appropriate federal jurisdiction and venue
  • Initiate a trademark infringement proceeding in a state court under the appropriate state statute or at common law
  • Initiate a legal proceeding before the USPTO’s Trademark Trial and Appeal Board

Which option is more cost-beneficial for your company? That is management’s decision.  As a general rule, the legal costs of an Opposition Proceeding are much less than the legal costs of a federal or state law infringement case.

15 U.S.C. 1063, in part, reads:

Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered….”

Any person who believes he/she/it could be damaged by the registration of the Mark on the Principal Register of the United States can institute an Opposition Proceeding before the USPTO’s Trademark Trial and Appeal.  If the Opposer successfully proves the case, the Trademark Application will not mature into a federal Registration.

Oppositions are generally less costly to litigate than cases in the federal or state courts.  Like cases in the federal courts, the Federal Rules of Evidence and the Federal Rules of Civil Procedure apply to an Opposition Proceeding.

Oppositions can be conducted with or without oral hearings before the Trademark Trial and Appeal Board (TTAB).

Successful Opposition Proceedings

For an Opposer (plaintiff) to be successful before the TTAB, they must prove one or more of the following:

  • (1) Defendant’s [the owner of the mark] mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.
  • (2) Defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them.
  • (3) Defendant’s mark is geographically deceptive, that defendant’s mark consists of or comprises immoral, deceptive, or scandalous matter, that defendant’s mark falsely suggests a connection with plaintiff’s name or identity, or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.
  • (4) There was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), for a Trademark Act § 1(b) application, within the expiration of the time for filing a statement of use.
  • (5) Defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b).
  • (6) Defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.
  • (7) The term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.
  • (8) Defendant’s mark has been abandoned due to nonuse with intent not to resume use.
  • (9) Defendant’s mark is the title of a single creative work and not considered a trademark.
  • (10) That Defendant’s mark is generic.

If your enterprise needs legal assistance procuring/managing/enforcing your Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

covid19 response

COVID19 Office Response

Our offices remain open and serving clients. We have only made a few changes to the way we do business. We are able to work with you by phone and email, as always, but are not meeting in person at this time. This is to protect our clients and staff. It will not impact the quality or timeliness of your service and we intend to keep your matters on track and on time.

Since our practice is primarily of national and international scope, changes in operations in the various state court systems will not likely impede most matters managed by us.

Federal Courts and the United States Patent and Trademark Office (USPTO) made some changes to standard operating practices. For example, USPTO offices are closed to the public and some petition fees may be waived and extensions of certain patent and trademark deadlines may be possible. In-person oral hearings and meetings with USPTO employees are not possible at his time.  However, for years, Business Patent Law has used digital technologies to communicate with the USPTO, other federal agencies and our foreign clients and associates.

If you want to know how this impacts your intellectual property and business concerns, please contact us and we can discuss it.

Single Word Trademarks

Can a Simple Word be Trademarked?

Generally, it depends on whether there is a “likelihood of confusion” between your simple word Trademark and another Registration or Application for Registration having superior rights.

Title 15 United States Code – Marks Registerable on the Principal Register

15 U.S.C. § 1052, in part, reads:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.”

Can the Word “Medical” be Granted a Federal Registration?

In view of the case law interpretations of 15 U.S.C. § 1052, the following illustrations can be indicative of the possibility of the grant of a federal Registration for the simple word – Medical – by the United States Trademark Office.

  • Medical – for a dog collar could be the subject of a US Trademark Registration.
  • Medical – for a cast protecting a broken bone would not likely be granted a US Trademark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of a cast.
  • Medical – for a drill used for deep water petrochemical exploration could be the subject of a US Trademark Registration.
  • Medical – for a special type of drill used in placing dental implants would not likely be granted a US Trademark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of a drill used for placing dental implants.
  • Medical – for physicians services would not likely be granted a US Service Mark Registration.
  • Medical – for surgical scrubs would not likely be granted a US Trademark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of surgical scrubs.
  • Medical – for a professional football team could be the subject of a US Service Mark Registration.
  • Medical – for website services providing a platform for communications related to governments and politics could be the subject of a US Service Mark Registration.
  • Medical – for website services for continuing educations services for physicians and other medically related practitioners would not likely be granted a US Service Mark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of medical education services.
  • Medical – for bottled water. If the bottled water was not used for medical treatments, – Medical – could be the subject of a US Trademark Registration.

Are You Confused Yet?

If you are confused by the above illustrations, you are not alone. As with other aspects of American jurisprudence, evidentiary facts (and the subjective interpretations those facts) influence whether or not a federal Registration can be obtained. When utilizing an experienced attorney, you have a higher probability of success in procuring a federal Registration of your simple word mark.

If you need legal assistance preparing or managing your Trademark/Service Mark or Patent Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Color as Trademark

Can Color Be A Trademark?

Can You Trademark Based on Color?

Are you wondering if a particular use of color can be the subject of a Federal Trademark Registration?

  • The short answer: Yes, color can be a Trademark — when certain evidentiary facts are present.
  • The longer answer follows…

What is a Trademark?

A “Trademark,” according to 15 U.S.C. § 1027,  is “any word, name, symbol, or device, or any combination thereof — (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

Exclusions to obtaining a federal Trademark registration are covered in https://www.law.cornell.edu/uscode/text/15/1052.

The Doctrine of Trademark Functionality

In Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), the Supreme Court held that the “pillow” shape of a shredded wheat biscuit was functional and not the subject of a Trademark Registration.

In the US Supreme Court case of Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) the Supreme Court held that the colors of the brand name pharmaceutical capsules were functional and not the subject of a Trademark Registration.

In short, if the aspect is functional, it cannot be the subject of a federal Trademark Registration. However, in a footnote to Inwood Laboratories, Inc. case, on page 850, the Court wrote:

“Although sometimes color plays an important role (unrelated to source identification) in making a product more desirable, sometimes it does not. And, this latter fact—the fact that sometimes color is not essential to a product’s use or purpose and does not affect cost or quality—indicates that the doctrine of “functionality” does not create an absolute bar to the use of color alone as a mark.”

The Case of Colored Dry Cleaning Pads

Can green-gold color pads for dry cleaning presses be the subject of a federal trademark registration? Yep!

The US Trademark Office granted US Registration No. 1,633,711 for a “particular shade of green-gold applied to the top and side surfaces of the goods [pads]” to the Qualitex Company.  Another company, Jacobson, later began to sell its own green-gold pads. Among other causes of action, Qualitex sued Jacobson for Trademark infringement. Eventually, the case made its way to the US Supreme Court.

On page 166 of Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, Mr. Justice Breyer wrote:

“It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function…the District Court, in this case, entered findings (accepted by the Ninth Circuit) that show Qualitex’s green-gold press pad color has met these requirements. The green-gold color acts as a symbol. Having developed secondary meaning (for customers identified the green-gold color as Qualitex’s), it identifies the press pads’ source. And, the green-gold color serves no other function. (Although it is important to use some color on press pads to avoid noticeable stains, the court found “no competitive need in the press pad industry for the green-gold color, since other colors are equally usable.”)…Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law would protect Qualitex’s use of the green-gold color on its press pads.”

Conclusion on Color

To answer the initial question, according to the Supreme Court of the United States:

  • A green-gold color for a dry cleaner’s press pad is the subject of a federal Trademark Registration.
  • The blue and white or the blue and red colors of pharmaceutical capsules are not the subject of a federal Trademark Registration.

Trademark issues are complex, if you need legal assistance preparing or managing your Trademark/Service Mark or Patent Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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Representing Yourself for Trademarks and Patents

Representing Yourself for Patents & Trademarks: Going “Pro Se”

Pro Se USPTO Representation

Pro se” is a Latin phrase meaning “for himself.” Under United States law, an Applicant can represent himself/herself/itself before the United States Patent & Trademark Office (USPTO).

Can a pro se Applicant achieve favorable results from a USPTO Examiner? Maybe. Maybe not. Success may depend on the legal skill of the Applicant.

What is a “Favorable Result” for a Pro Se Applicant?

Favorable results include attributes such as:

  • Defensibility against an allegation of unpatentability
  • The durability of the patent or trademark
  • Enforceability
  • The scope of rights granted by the USPTO to the Applicant

Three Primary Types of USPTO Representations 

An Applicant can be a large company, a small company, a partnership, a trust, an individual, or another entity.

Large Businesses

Many large companies have “in-house” intellectual property attorneys who represent the large companies before the USPTO. If an “in-house” attorney fails to meet management’s objectives, the large company usually will hire another attorney who will meet the large company’s objectives.

For legal matters before the courts or other tribunals, large companies usually hire one or more “outside counsels” to represent the company. Sometimes, these intellectual property cases can have more than a billion dollars in potential damages.

Small Businesses with Resources

Small companies with sufficient revenues usually retain smaller intellectual property law firms to represent their company before the USPTO and the courts or other tribunals. The USPTO defines a small business as a legal entity with 500 or fewer employees.

Small Businesses, Start-ups or Individuals on a Tight Budget

Sometimes, small companies, start-ups or individuals opt for pro se representation before the USPTO, based solely on their budget limitations. Pro se representation by a non-lawyer may achieve favorable results for the Applicant. According to the USPTO database, it appears that favorable results tend to be more closely associated with Trademark Applications than with Patent Applications.

Be aware: if the pro se Applicant’s results are not favorable, the expense of hiring an intellectual property attorney in an attempt to achieve better results will likely be much more costly than it would have been to retain an attorney at the beginning of the process. Unfortunately for the Applicant, sometimes the facts associated with the Application are so unfavorable that issues with the Application cannot be corrected.

What if the USPTO Says No?

What can a pro se Applicant do when an Examiner refuses to approve the Applicant’s Mark for registration? What does the pro se Applicant (and now owner of a federal Registration) do when a USPTO Opposition or Cancellation Proceeding is initiated against the owner’s Federal Registration?

Business Patent Law’s Recommendation:  seek the advice of an intellectual property attorney who has experience practicing before the US Trademark Office. The experienced professional may be able to correct or resolve the Trademark Application issues and preserve the Applicant’s procedural and substantive rights.

What if an Examiner makes your Patent Application Rejection Final? 

The Patent Applicant’s options can include filing one of the following:

  • An Appeal
  • A Request for Continued Examination
  • A Continuation Application
  • A Divisional Application

An Applicant may also allow the Application to go abandoned.

Business Patent Law’s Recommendation: seek the advice of a patent attorney who has experience practicing before the US Patent Office. There is no substitute for a seasoned patent attorney representing the Applicant before the US Patent Office.

Meeting USPTO deadlines       

When seeking an intellectual property attorney to commence representation of a previous pro se Applicant, it is essential that an attorney be contacted with adequate time remaining before the USPTO deadline.  A well-seasoned intellectual property attorney will likely refuse to take on a previous pro se matter when notified only days before the deadline.

If you have questions about intellectual properties and representation before the United States Patent & Trademark Office, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.