registering trademarks: overcoming descriptive, geographic...

Registering Trademarks: Overcoming

Descriptive, Geographic and

Surname Refusals

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Draeke H. Weseman, Winthrop & Weinstine, Minneapolis

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Overcoming Descriptive, Geographic, and

Surname Refusals

Presented by:

Draeke H. Weseman

Winthrop & Weinstine, P.A.

[email protected] Trademark Attorney

Tuesday, January 30, 2018

12:00 PM to 1:30 PM CST

www.winthrop.com 4 1/30/2018

Three common Section 2(e) refusals:

• Merely descriptive

• Primarily geographically descriptive

• Primarily merely a surname

15 U.S.C. § 1052(e)(1), (2) and (4)

Section 2(e) Refusals

5 1/30/2018 www.winthrop.com

“Primarily” = Primary Significance


Overcoming

Descriptiveness

Refusals


Pre-Filing Decisions

Examining Attorney

Appeal

1/30/2018 8 www.winthrop.com

Key Sources of Facts

Sources your client controls: • Websites for the goods or services • Packaging and labels for the goods • Marketing and advertising materials • Instructions for the goods or services

Sources your client doesn’t control: • General internet search results • Dictionary, encyclopedia, and

glossary entries • News sources and blogs • Trade journals and industry

publications • Competitors’ websites


Merely Descriptive

• Ingredient • Quality • Characteristic • Function • Feature • Purpose • Use

“The question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 U.S.P.Q.2d 1753, 1757 (Fed. Cir. 2012)


Merely Descriptive

In re TriVita, Inc., 783 F.3d 872 (Fed. Cir. 2015) • Mark: NOPALEA • Goods: Nutritional supplements

containing nopal juice • Nopal = nopalea = genus of cacti

• Nopalea is not a made-up word obtained by adding arbitrary letters.

• There is abundant evidence of the words “nopalea” and “nopal” being used interchangeably.

• Affirmed.


1/30/2018 12

Merely Descriptive

In re North Carolina Lottery, 783 F.3d 872 (Fed. Cir. 2017) • Mark: FIRST TUESDAY • Goods: Lottery tickets and services • Explanatory text not determinative of

descriptiveness or suggestiveness, but relevant to descriptiveness inquiry

• Affirmed.


Merely Descriptive

In re Calphalon Corp., 122 U.S.P.Q.2d 1153 (T.T.A.B. 2017) • Mark: SHARPIN • Goods: cutlery knife blocks which incorporate built-in sharpeners • Not “SharpIN” (i.e. special form) • SHARPIN = SHARPEN • Not incongruous or double entendre w/o special form • Affirmed.


1/30/2018 16

Merely Descriptive

In re Well Living Lab 122 U.S.P.Q.2d 1777 (T.T.A.B. 2017) • Mark: WELL LIVING LAB • Services: Scientific research in the field of human

health and wellness • Archaic: Living a moral and virtuous life • Current: Living a healthy life focused on diet and

exercise • Affirmed.

“This modern day usage of the term “well-living” has more significance and probative value than the dictionary meaning in terms of the likely perception of consumers.”


Merely Descriptive

In re United Trademark Holdings, Inc., 122 U.S.P.Q.2d 1796 (T.T.A.B. 2017) • Mark: LITTLE MERMAID • Goods: Dolls • Little Mermaid = “young, partly human girl sea

creature” • Little Mermaid = specific historical fictional character • Historical fictional character in public domain • Affirmed.


Common Mistakes


COMMON MISTAKE EXAMPLE

DUBIOUS LITERARY DEVICE SNAP SIMPLY SAFER (syringes); SHARPIN (Knives)

INNSUFFICIENT ADDITIONS NOPALEA (Supplements); ASPIRINA (Aspirin)

WORD COMBINATION SCREENSWIPE (cleaning cloths); SMARTTOWER (cooling towers);

DESCRIPTIVE IMAGE (watch parts)

DICTIONARY DEFINITIONS WELL LIVING LAB (research);

PRIOR REGISTRATIONS LITTLE MERMAID

Strategies


STRATEGY EXAMPLE

MARK AS A WHOLE HUTCHINSON TECHNOLOGY (Electronics)

INCONGRUITY TENNIS IN THE ROUND (Tennis facilities); SNO-RAKE (Hand tool)

DOUBLE-ENTENDRE LIGHT N’ LIVELY (Mayonnaise)

VAGUENESS FLIGHTLINK (Weather reporting); PRESS PAPERS (Website);

PRIOR REGISTRATIONS TOPDOC CONNECT (Doc referrals)

SPECIFY THE GOODS GEOMIMETIC (Cement); CRAWLER (Suspension parts)

Overcoming

Geographic

Refusals


Primarily Geographically Descriptive

• Country • State • Nicknames • City • Adjectives • Neighborhood • Region • Maps

Coined Locations


Primarily Geographically

Descriptive

In re Newbridge Cutlery Co., 776 F.3d 854 (Fed. Cir. 2015) • Mark: NEWBRIDGE HOME • Goods: Cutlery • Newbridge = Newbridge, Ireland • Newbridge is not a place known generally to the public • Do not need t examine goods/place association • Reversed.


If: 1. A location is generally known;

2. the term’s geographic significance is its primary significance; and

3. the goods do, in fact, originate from the named location,

Then: A goods/place association can be presumed.

The Second Prong A Three-Part Test for Goods/Place Association


Common Mistakes



IRRELAVANT ALTERNATE MEANINGS

NASHVILLE (TV programs); MANHATTAN (cookies)

ALTERNATE LOCATIONS DURANGO (chewing tobacco); CAMBRIDGE (computers)

Strategies


STRATEGY EXAMPLE

MINOR, OBSCURE, OR REMOTE TAPATIO (Hot sauce)

DOMINANT ALTERNATE MEANING SWISS ARMY KNIFE (Knives)

Overcoming

Surname Refusals


Yes No

Johnson Cotton

Jones King

Primarily Merely a Surname



The Benthin Factors: Inquiry to determine if the surname is the primary significance of the mark as a whole to the purchasing public. 1. The degree of a surname’s rareness; 2. Whether anyone connected with applicant has that surname; 3. Whether the term has any recognized meaning other than that of a

surname; 4. Whether the term has the “structure and pronunciation” of a

surname; and 5. Whether the stylization of lettering is distinctive enough to create a

separate commercial impression. In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332, 1333-34 (T.T.A.B. 1995)



In re Integrated Embedded, 120 U.S.P.Q.2d 1504 (T.T.A.B. 2016) • Mark: BARR GROUP • Services: Computer hardware design

training • Co-founder and CTO = Michael Barr • Not unusual surname • No other common meaning • GROUP incapable of lending source-

identifying significance • Affirmed.

n. 4 “We make our determination on a case-by-case basis, and any of the Benthin factors – singly or in combination – and any other relevant circumstances may shape the analysis in a particular case.



In re Eximus Coffee, LLC, 120 U.S.P.Q.2d 1276 (T.T.A.B. 2016) • Mark: ALDECOA • Goods: Coffee • Aldecoa – very rare surname • Founded by Carlos de Aldecoa Fernandez • “Premium Family Coffee” • No recognized other meaning • Affirmed.

“[The Benthin ] ‘factors’ are not exclusive and any of these circumstances – singly or in combination – and any other relevant circumstances may shape the analysis in a particular case.”



In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 U.S.P.Q.2d 1717 (T.T.A.B. 2016) • Mark: ADLON • Services: Hotels, Bars, Night Clubs • Adlon = extremely rare surname • No one with name Adlon in management • Pamela Adlon = Voice of Bobby Hill • Hotel Adlon = Historic hotel in Berlin

(founded by Lorenz Adlon) • Affirmed.

“However, rather than using [the Benthin ] factors as guidelines, practitioners and examining attorneys have interpreted them with a rigidity that is not warranted.”


Judge Seeherman Retires

December 2016 In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 120 U.S.P.Q.2d 1717 (T.T.A.B. 2016) (Seeherman, J. concurring) (not precedential) • Mark: BUTTERFIELDS • Services: Auction services • Butterfields = not rare surname • Founder’s surname, but not publicized • No good evidence of other significance • Affirmed.

Judge Seeherman: “However, before considering whether consumers would view the mark to be primarily merely a surname, I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname.”



In re Beds & Bars Limited, 122 U.S.P.Q.2d 1546 (T.T.A.B. 2017) • Mark: BELUSHI’S • Services: Hostels and Pubs • Belushi = extremely rare surname • No one with name Belushi in management • John and Jim Belushi = Famous actors • Widespread public exposure • Affirmed. “In this case, Applicant and the Examining Attorney have

presented evidence and arguments regarding the following inquiries: whether the term is a surname; whether the term has any recognized meaning other than as a surname; whether the term is the surname of anyone connected with the Applicant; whether evidence shows that the term has the structure and pronunciation of a surname; whether there is contextual use related to surname significance; and whether the evidence shows that use of the term as a surname is rare.”



The Eximus “Factors”:

1) whether the term is the surname of anyone connected with the applicant;

2) whether the term has any recognized meaning other than as a surname;

3) whether evidence shows that the term has the structure and pronunciation of a surname;

4) whether there is contextual use related to surname significance; and

5) whether the evidence shows use of the term as a surname is rare.

In re Eximus Coffee, LLC, 120 U.S.P.Q.2d 1276, 1278 (T.T.A.B. 2016)



In re Weiss Watch Company, 123 U.S.P.Q.2d 1200 (T.T.A.B. 2017) • Mark: WEISS WATCH COMPANY • Goods: Watches • Cameron Weiss - watchmaker • Not rare • Weiss = Weiß = German for “White” • A habitational surname (based on a location) • Affirmed.

“Based on [the] record, WEISS in the applied-for mark is not spelled in the standard German dictionary form, which weighs against a finding that German speakers upon seeing WEISS would stop and transliterate first to Weiß and then translate to “white” in English.”



In re Olin, Serial No. 86651083 (September 22, 2017) • Mark: OLIN • Goods: Chemicals • OLIN = not rare • Politicians and actors with name • Founded by Franklin Olin • No other meaning • Structure and pronunciation of surname • Affirmed.

“Whether a mark is primarily merely a surname and whether it has acquired secondary meaning are separate considerations under the Trademark Act.”



Teresa H. Earnhardt v. Kerry Earnhardt, 123 U.S.P.Q.2d 1411 (Fed. Cir. 2017) • Mark: EARNHARDT COLLECTION • Goods Services: Furniture, home design

and construction • Board: No likelihood of confusion, not

primarily merely a surname • Board: If combined term is not generic ,

then not primarily merely a surname as matter of law

• Vacated and remanded. “The Board should determine (1) whether the term ‘collection’ is merely descriptive of KEI’s furniture and customer home construction services and (2) the primary significance of the mark as a whole to the purchasing public.”


Common Mistakes



ALTERNATE MEANINGS / FOREIGN MEANINGS

WEISS (Watches)

STRENGTH OF THE MARK / ACQUIRED DISTINCTIVENESS

ADLON (Hospitality services); OLIN (Chemicals)

RARITY ALONE BELUSHI (Hostels and pubs)

Strategies


STRATEGY EXAMPLE

DOMINANT ALTERNATE MEANING FIORE (Bags)

LIMITED PUBLIC EXPOSURE FERET (Watches)

ADD INITIALS P.J. FITZPATRICK (Construction)

About Us: Our Qualities

About Messerli & Kramer P.A.

46 1/30/2018

Thank you!

Draeke H. Weseman

Winthrop & Weinstine, P.A.

[email protected] www.Winthrop.com

www.DuetsBlog.com


mailto:[email protected]

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