making section 2(f) claims: demonstrating acquired...

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Presenting a live 90-minute webinar with interactive Q&A

Making Section 2(f) Claims:

Demonstrating Acquired Distinctiveness Leveraging Declarations, Establishing Use and Evidence of Secondary Meaning

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

THURSDAY, OCTOBER 22, 2015

Matthew D. Asbell, Partner, Ladas & Parry, New York

Matthew Frisbee, Esq., Fross Zelnick Lehrman & Zissu, New York

Brian Weber, Senior Staff Attorney, USPTO, Alexandria, Va.

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ACQUIRED DISTINCTIVENESS IN U.S. TRADEMARK LAW

Matthew L. Frisbee Fross Zelnick Lehrman & Zissu, P.C.

[email protected]

212.813.8242

Matthew D. Asbell Ladas & Parry LLP

[email protected]

212.708.3463

Brian Weber U.S. Patent and Trademark Office

Office of Quality and Training

[email protected]

571.272.9664

I. Distinctiveness Generally

a. Spectrum

i. Generic

ii. Descriptive or misdescriptive

iii. “So highly descriptive” & “the black hole”

b. Freedom of speech

c. Other non-merely descriptive marks that lack inherent distinctiveness

i. Geographically descriptive or misdescriptive

ii. Primarily merely a surname

iii. Trade dress – 3-dimensional, color marks, etc.

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a. Acquired Distinctiveness/Secondary Meaning

I. Section 2(f) of the Lanham Act states that “nothing herein shall prevent the

registration of a mark used by the applicant which as become distinctive of

the applicant’s goods in commerce”

II. Marks that are descriptive or misdescriptive can acquire distinctiveness in the

minds of consumers through use, making them eligible for registration on the

Principal Register

III. Through use, the primary significance of the term, in the minds of consumers,

is the source of goods or services, not the descriptive nature of the term

IV. Not eligible for marks that are generic, 2(a) deceptive, primarily merely

geographically misdescriptive, or functional

7

II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements

a. Advising client / Setting expectations / Building case

i. Questions to consider regarding possibility of 2(f) claim

1. How descriptive is the mark on the sliding scale

2. Is client’s mark in use and for how long?

3. Is client or are others using the term as a mark?

4. Is client or are others using the term descriptively?

5. Does client have the necessary budget to support the 2(f) claim?

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ii. Preparations for client to make if 2(f) claim is likely to be needed

1. Evidence

a. Keep track of advertising/sales figures related to mark

b. Have physical evidence of first use

c. Keep various examples of advertising material that shows use as a

mark

d. Keep unsolicited third party news articles, blog posts, social media

references that identify the term as a mark and client as the

source

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2. Advice re client’s use

a. Make mark prominent, not lowercase in text, not as a

noun/generic

b. Use TM or SM after mark

c. Monitor third party use and enforce mark against third parties

3. Other considerations

a. Have client identify customers who may be willing to sign

affidavits

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b. Likelihood of confusion with third party marks comprising potentially

non-inherently distinctive matter; Clearance of seemingly descriptive

common terms

i. Consider how long the cited mark has been in use and whether the owner is

the exclusive user

1. Investigation may be helpful

ii. Is client planning to use the mark descriptively – fair use

1. Can use mark descriptively, even if cited mark has acquired

distinctiveness

a. Defense to TM infringement, but client can’t gain rights in mark

2. Manner of use – scent variant, flavor, sub-mark, etc.

3. Advice to client – don’t apply to register, don’t use TM

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c. Previously disclaimed matter

i. Not supposed to be considered by PTO

ii. Examiner may find the mark in her search of the database, which could make

a 2(e)(1) refusal more likely

d. Previously registered on Supplemental Register

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III. Considerations at the time of filing

a. Pros and cons of including disclaimer or 2(f) claim when filing

i. For really descriptive marks, may be a way to avoid a genericness refusal

ii. If term is clearly descriptive and client often claims 2(f), may be a way to

speed up prosecution and avoid Office Action

13


b. Filing basis

i. A use-based application with distant first use date could help convince the

examiner that a 2(f) claim based on 5 years is acceptable, without additional

evidence

ii. Can still claim 2(f) in a 1(b) intent-to-use application when mark was used on

other, related goods or services

A. Must show acquired distinctiveness for other goods, and

B. Transferability/Relatedness: “the extent to which the goods or services

in the intent-to-use application are related to the goods or services in

connection with which the mark is distinctive, and that there is a strong

likelihood that the mark’s established trademark function will transfer

to the related goods or services when use in commerce occurs.” In re

Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999). TMEP 1212.09(a).

14


c. Form of mark, inclusion of additional distinctive matter

i. Limits scope of rights, but make it more likely that mark will register, even

with a disclaimer

ii. Could be helpful to deter subsequent users, which may ultimately help

maintain exclusivity

1. This will help to make a stronger 2(f) claim in the descriptive portion of

the mark down the road

d. Timing

i. Consider whether the mark will have been used for at least the least 5 years

at some point during the prosecution

1. Reviewed within 3-4 months, 6 months for first response, another 1-3

months to review, and 6 more months for Request for Reconsideration

(and Appeal)

15

IV. Prosecution

a. Descriptiveness Refusal vs. Disclaimer Requirement

b. Evaluating the Office Action

i. Examiners should indicate that the mark could be considered generic when

issuing the first Office Action

1. Whether attempting to claim 2(f) is even worth it

2. Whether evidence, rather than solely a 5 year claim will be necessary

16

IV. Prosecution

c. Making the 2(f) Case

i. General

1. Burden of proving acquired distinctiveness is on applicant

2. Using multiple different kinds of evidence is helpful

ii. Declaration based on 5 years use

1. Time period is five years prior to the date of claim, not date of

application

2. Use must be “substantially exclusive and continuous”

3. Prima facie evidence of acquired distinctiveness

4. PTO does not have to accept it if mark is “highly descriptive”

A. Examiners seem to be increasingly reluctant to accept without

more evidence

17

IV. Prosecution

5. Practice Tip: If mark has been used for significantly longer than 5 years,

add the date of first use in the argument or misc. statement section

a. This may help persuade the examiner not to ask for evidence

b. Particularly helpful when claiming 2(f) in part, where the first use

date of the full mark is much more recent

18

IV. Prosecution

iii. Advertising examples

iii. “Look for” advertising

iv. Applicant’s affidavits re: sales, advertising figures

1. Should come from someone inside the company who can verify anything

that cannot be independently verified by evidence

2. Inform client that everything submitted in response to office action will

be public record that is available online

a. May impact what the client is willing to submit

19

IV. Prosecution

v. Customer letters/affidavits

1. Getting the client on board

a. Should start early in the process

i. Takes a long time to identify potential customers, get the

affidavits to the client, and get signed affidavits back from

client

2. Getting the customer on board

3. Proposed language

a. Should say that the customer recognizes the mark as identifying

the client as the source of the goods/services

20

IV. Prosecution

v. Independent media coverage

1. Substantial number of unsolicited third party references to the mark in

news articles is helpful

A. Press releases and client generated material is not helpful

2. Practice Tip – set a Google News alert early on and gather articles that

mention the mark

vi. Consumer surveys

1. Can be very probative if done correctly

2. Shows direct association between mark and owner in the minds of

consumers

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IV. Prosecution

vi. Consumer surveys (continued)

3. Easy to attack if done improperly

A. No leading questions

B. Must be appropriate portion of likely consumers

C. Should be done by competent marketing research expert

4. Can be prohibitively expensive, especially for ex parte prosecution

a. $15k for a “pilot” survey to test conclusion

b. $30-40k for Internet based survey, like Surveymonkey.com

c. Significantly more for in-person or phone surveys

22

IV. Prosecution

5. Case Study

In re GIE Media Inc. (App. No. 85253450) (TTAB 2013) (not precedential)

a. Not probative

b. selected Applicant’s own magazine subscribers

c. Conducted by applicant rather than market research company

d. Leading questions

e. Did not ask consumers if they associated the mark with one

company

23

IV. Prosecution

6. Farm Fleet Supplies, Inc. v. Blain Supply, Inc. (Opp. No. 9116469) (TTAB

2013) (not precedential)

a. Board found survey supported acquired distinctiveness

b. Population was from 12 mile radius around Applicant’s stores,

which it considered its market area

c. Interviewees divided into test and control groups

i. Test group asked about Applicant’s FARM & FLEET mark, and

if they thought it was owned by a single company (59% said

yes)

ii. Control group asked about fake company RANCH &

MACHINERY and only 0.5% though it was operated by a

single company

24

IV. Prosecution

d. 2(f) based on earlier registrations (as previously discussed)

i. Ownership of prior Principal Register ® for same mark is Prima facie evidence

of acquired distinctiveness

ii. Requirements

1. Must be “Same mark”

A. Legal equivalent that creates the same continuing commercial

impression

B. Example: THE BOLLYWOOD REPORTER is not the same as THE

HOLLYWOOD REPORTER

2. Goods in previous registration must be sufficiently similar to those in

application

3. Registration must be active

25

IV. Prosecution

e. Partial 2(f) Claim

i. Consider what portion of the mark should be included

ii. Can overcome disclaimer requirement

iii. May also attempt to overcome full refusal by arguing that, with 2(f) claim in

part, the mark as a whole is not merely descriptive

1. Can couple 2(f) in part with disclaimer of remainder of the mark

iv. Basis for claim is the same as it is for a full 2(f) claim – 5 years of use,

evidence, prior registration, etc.

1. If claiming 2(f) based on prior registration, the portion to which the 2(f)

claim applies must consist of the “same mark” as the full prior

registration.

26

IV. Prosecution

f. Settling for the Supplemental Register

i. Not available for Madrid extension, generic mark, deceptive mark, or marks

based on intent to use

ii. If launch date of mark is several months or years off, consider strategically

extending prosecution time until use can be claimed and amendment to Supp.

can be made

1. File responses close to deadline

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V. Appeals & Caselaw

a. Recent cases:

i. In re J.T. Posey Company (SN 85206911) (TTAB 2015) (not precedential)

1. SKINSLEEVES acquired distinctiveness

2. Originally a genericness refusal, but Board reversed and found only

merely descriptive

a. Board says not so highly descriptive that it cannot acquire

distinctiveness based on 5 year presumption

3. Evidence of 2(f)

a. Over 10 years of use

b. Declarations from 7 customers

28


ii. Montres Charmex S.A. v. Montague Corp. (Opp. No. 91191784) (TTAB 2015)

(not precedential)

1. Opposed on basis that SWISS MILITARY for bicycles was primarily

geographically deceptively misdescriptive under 2(e)(3) and had not

acquired distinctiveness under 2(f)

2. Evidence

a. Only 5 year prima facie claim

3. Opposer’s argument was that signatory did not have the requisite

authority to bind the applicant when he signed the declaration

a. His title was mistakenly listed as “President” when he was actually

the company’s “Clerk” and “Treasurer”

4. Board determined that the title mistake was immaterial and that the

mark was not so highly descriptive to require more than the 5 year

claim

29


iii. RTX Scientific, Inc. v. Nu-Calgon Wholesaler, Inc. (Canc. No. 92055285) (TTAB


1. Design mark consisting of the color blue as applied to the liquid portion

of the goods inside a container

2. Color marks are never inherently distinctive, so applicant claimed 2(f)

in prosecution

3. Petition to cancel on the basis that the mark is functional, descriptive

and generic, and has not acquired distinctiveness

30


4. Evidence

a. Declaration from Applicant

i. Product is the top selling condenser coil cleaner in the U.S.

ii. Blue color is source identifying

c. 20 years of use

d. Advertising and sales figures (designated confidential)

31


b. Copies of several different advertisements highlighting the blue

mark with “REACH FOR THE BLUE” and “GO BLUE” shown as

identifying source, including:

32


5. Petitioner included evidence that six other HVAC companies also sold

blue coil cleaners

a. Board holds that Petitioner made prima facie showing that mark

had not acquired distinctiveness

b. Use not substantially exclusive in 2010

6. Board – evidence is insufficient where there is undisputed evidence that

blue is a common color for HVAC coil cleaners

33


iv. The Topps Company, Inc. v. Panini America, Inc. (Opp. No. 91209769) (TTAB


1. Application for LIMITED for sports trading cards

2. Topps opposed, claiming that mark had not acquired distinctiveness

3. Applicant’s Evidence

a. 5 years of use (since 1994)

b. Unverified statement of $30 million in sales under the mark since

2001

4. Opposer’s Evidence

a. Unrelated third party use of LIMITED in the same industry

34


5. Board’s analysis

a. Third party use is inconsistent with requirement that mark identify

a single source

b. Mark is highly descriptive and is commonly used in the industry

c. Revenue figures do not show market share and that the sales

figures include the U.S. and Canada

d. Mark did not acquire distinctiveness

6. Example illustrates that examining attorneys do not challenge

exclusivity regarding a 5 year claim in ex parte examination, but the

issue can still be raised by an opposer

35

QUESTIONS? THANK YOU.

Matthew L. Frisbee Fross Zelnick Lehrman & Zissu, P.C.

[email protected]

212.813.8242

Matthew D. Asbell Ladas & Parry LLP

[email protected]

212.708.3463

Brian Weber U.S. Patent and Trademark Office

Office of Quality and Training

[email protected]

571.272.9664

36

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