Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan Blog’s Tuesday Tip: Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?

Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?

  • For Goods:  In general, an acceptable specimen must show use of the mark affixed to the goods themselves or the packaging for the goods (i.e., labels, tags).  Alternative uses may also be acceptable, such as use of the mark on instruction manuals or product information inserts that travel with the goods and on point of sale displays.  (Stay tuned for an upcoming post on “point of sale displays.”)   
    • It is extremely important to understand that a mark is not considered to be “in use” for trademark application and ICregistration purposes until the goods have been transported in interstate commerce bearing the mark in the ordinary course of trade.  Simply advertising the goods or offering them for sale is not sufficient. 
  • For Services:  In general, an acceptable specimen includes advertising brochures, flyers, and web pages that show use of the mark in connection with the services.  The test employed by the U.S. Patent and Trademark Office is whether the specimen shows use of the mark in a manner that would be perceived by purchasers as identifying the applicant’s services and indicating their source.  For example, a specimen that only shows use of the mark, with no reference to the services, does not support service mark use.  
    • It is extremely important to understand that a mark is not considered to be “in use” for trademark application and registration purposes until the services have been promoted under the mark and the services have been rendered to third parties in the ordinary course of trade.  Simply advertising the services in any manner absent the rendering of those services does not meet the statutory requirement of use.  Furthermore, one must render the services in interstate commerce before a mark can register. 

Trademark Titan Blog’s Tuesday Tip: What Do the Symbols ®, TM and SM Mean and When Do You Use Them?

What Do the Symbols ®, TM and SM Mean and When Do You Use Them?

United States Marking

  • The trademark registration symbol ® may be used once a mark is R Logofederally registered and carries with it various legal rights (see list below).  This notice may only be used with federally registered marks. 
  • “TM” is used with trademarks that are not federally registered and for marks that designate products; an unregistered mark is treated as a “common law” mark, which is also a legally recognized trademark right within the geographic regions in which the mark is used.  
  • “SM” is used with marks that are not federally registered and for marks that designate services; an unregistered mark is treated as a “common law” mark, which is also a legally recognized trademark right within the geographic regions in which the mark is used.

International Marking Considerations 

  • Use of ®, TM and SM are country specific.  Use of ® in countries where the mark is not registered may be punishable by fine and even imprisonment.  Some countries may even impose penalties for using TM if the mark is not registered under the theory of false adverting if consumers would perceive such use and indication that the mark is federally registered when it is not. 

For more information about international trademark marking, see my blog post here

Advantages of Federal Trademark Registration

1.   The ® symbol can be used, signifying the company’s registered interest in the mark

2.   Registration adds value to the company’s intangible asset portfolio

3.   Registration acts as a notice to would-be third-party users of same or similar mark

4.   Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has exclusive rights to use the mark in commerce

5.   After five years of continuous use in commerce, the mark becomes incontestable, which means that the registration cannot be attacked on descriptiveness or prior use

6.   A registrant may sue in federal court when diversity does not exist

7.   In a successful trademark infringement action, the registrant may obtain treble damages and reasonable attorneys’ fees

8.   The registrant may use the power of the federal government (via the U.S. Customs Service) to prevent the importation of goods that contain infringing marks

9.   One registration covers 50 states

10. Tactical advantages in domain name disputes

Trademark Application Denied Based on Likelihood of Confusion: What are “Confusingly Similar Trademarks?”

In the recent U.S. Trademark Trial and Appeal Board decision of In re Straight Up Southern, LLC, the Board once again sends a stinging message to a trademark applicant and upholds the Examining Attorney’s refusal to register the below depicted mark on the ground it is confusingly similar to the registered mark LILA GRACE: 

Lily Grace

Straight Up Southern sought registration of its mark for:

  • ‘short-sleeved or long-sleeved t-shirts; and tank tops,’ in International Class 25. 

The Examining Attorney refused registration under Section 2(d) of the Trademark Act on the ground Applicant’s mark is confusingly similar to the registered mark LILA GRACE for:

  • ‘bathrobes,’ in International Class 25.

In any likelihood of confusion analysis, the primary inquiry is whether consumers would be confused as to the source of the party’s respective goods. 

Common misconception clarified: The issue of “confusingly similar trademarks” is not whether consumers would mistakenly purchase a bathrobe when they intend to purchase a t-shirt; that is not the analysis for “consumer confusion.”  Rather, “consumer confusion” is based on whether consumers would reasonably believe that bathrobes and t-shirts would originate with the same source (i.e., Ralph Lauren brand of t-shirts and bathrobes).  

If consumers would make that reasonable assumption, and if the marks of the parties are similar in terms of sight, sound, meaning and/or connotation (i.e., LILY GRACE vs. LILA GRACE), then we have a potentially serious issue of consumer confusion as to the source of the goods and possible trademark infringement, which may subject the junior user to liability and rebranding.  

Another example of “What are Confusingly Similar Trademarks?” Would consumers reasonably believe that running shoes and running pants originate with the same source?  Of course, they would.  I am quite certain that during the early years of Nike that Nike would not have permitted another party to sell Nikey™ brand of running pants – or any athletic wear – on the basis consumers would be confused as to the source of the parties’ respective goods. 

It is the protection of consumers from being confused or deceived as to the source of goods and services that is the crux of trademark law.  Trademark law’s primary concern is not the trademark owner… it’s protecting consumers, period.

Therefore, when brand owners adopt names that are similar to registered trademarks (i.e., Ovation vs. Avasion) for related products (i.e., skin lotions vs. hair shampoo), there is a high probability that the registered mark will block an application for the new comer’s similar mark on the basis of likelihood of confusion as to the source of the goods.  

Important note: Unregistered, a/k/a common law, marks must also be considered because they may still present barriers to the use and registration of a new comer’s mark and may be used by their owners to block a new mark’s trademark application.  For that reason, searching the U.S. Patent and Trademark Office (“USPTO”) database alone is not enough.

Turning back to the LILY GRACE case, the Board correctly identified the primary principles for refusing registration of Applicant’s mark, including that:

  • when determining whether marks are confusingly similar, the test is not a side-by-side comparison, rather the test is based on the average recollection of marks by consumers;
  • because the registered mark was registered in standard character form, the registered mark is protected in all formats, including the stylization of Applicant’s mark; 
  • although Applicant’s mark contains a design element, the added design is not enough to avoid consumer confusion because consumers call for goods by the word portion of marks;
  • there is no correct pronunciation of a mark and consumers may pronounce a mark differently than intended by the brand owner; 
  • the marks of the parties convey connotations of female names (LILY GRACE vs. LILA GRACE) – thus they convey the same connotations;
  • all of the parties’ respective goods are common apparel and relatively informal and would travel in the same channels of trade; and
  • the Examiner’s introduction of third party online store webpages evidence that it’s common for the same parties to sell all of the parties’ goods under the same trademark.

Some Key Take-A-Ways

  • The parties’ marks and goods/services need not be identical to find trademark infringement
  • Trademark searches must consider “confusingly similar trademarks” and relatedness of products
  • The issue is whether consumers would be confused as to the source of the products – not whether they mistakenly purchase the wrong product (I purchased beer by mistake… I meant to purchase wine!)

USPTO Trademark Search Challenge

Search the USPTO database using the below sample search queries for Applicant’s mark LILY GRACE and see if they find the cited mark LILA GRACE and, more importantly, would have found it on the USPTO database prior to the LILY GRACE name launch and filing (it was already there…).

Click here to access the USPTO search page and then:

  • Scroll down and click: ‘Trademark Electronic Search System (TESS)’
  • Click:Word and/or Design Mark Search (Free Form)
  • Copy and paste each search strategy (one search at a time) in the search window, hit “Submit Query” and then review the results

*lily*[bi,ti] and *grace*[bi,ti] and 025[ic]

*l{“iy”}l*[bi,ti] and *gra{“sc”}*[bi,ti] and 025[ic]

How did they do?  

Podcast Episode 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

This episode summarizes the ways in which trademark rights are created internationally, which addresses the following:

  • Many brand owners fail to recognize that the trademark rights they have created in the United States, and possibly elsewhere, do not extend automatically into other countries, which can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises
  • Brand owners must understand how trademark rights are created internationally and then create strategic business plans setting forth a course that seeks to minimize risks and costs, while maximizing brand rights and protection
  • Failure to secure trademark registration protection typically means that a company does not own any trademark rights – or think of it as a “government-issued business license” – to sell branded products in the majority of countries
  • Brand owners that fail to implement a coherent and consistent global filing trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection and rights for key brands and products in key markets, have not minimized business and infringement risks, have lost rights in key markets and consistently run over budget

Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

Music: “The Returning” by Jelsonic (www.jelsonic.com)

The music is licensed under creative commons attribution license available on the Free Music Archive.

Trademark Titan Blog Podcast 1: Securing Chinese Trademark Registration and Chinese Trademark Rights; Battling Trademark Piracy

This podcast summarizes securing Chinese trademark registration and Chinese trademark rights, including the following:
  • Overview of Chinese trademark registration system and scope of protection
  • Best practices for securing trademark registration protection in China
  • Best practices for preventing loss of trademark rights in China
  • Best practices for battling trademark piracy in China
Music: “The Returning” by Jelsonic (www.jelsonic.com). The music is licensed under creative commons attribution license available on the Free Music Archive.
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