Trade Mark Application Refused | What To Do Next?

When a trade mark application is filed with the USPTO it is assigned to an Examining Attorney whose job entails evaluating the trade mark application and conducting a trade mark conflict. The results of the conflicts search and the examination dictate whether or not the application will be approved or whether a refusal will be issued.

A refusal that’s issued by the USPTO is called an Office Action and these are very common during the examination process, especially for DIY applicants and Legalzoomers. The basis for the refusal will be cited in the office action and it’s the responsibility of the applicant (or applicant’s attorney) to respond to the office action in a timely manner to avoid abandonment of the application and the loss of filing fees.

The correct response procedure depends on the nature of the refusal that’s been issued. If the Examining Attorney finds conflicting trade marks during the clearance search then a 2(d) likelihood of confusion refusal may be issued. If the application or accompanying materials were drafted or submitted incorrectly there are several other common refusals that may be issued. These include merely descriptive refusals, deceptively misdescriptive refusals, geographically descriptive refusals, insufficient specimens of use, ornamental refusals, primarily merely a surname refusals, among others.

If you have received one of these common refusals you should consider consulting with a trade mark attorney. We are often hired by DIY applicants to correct their application mistakes and get USPTO office action refusals overturned. Contact us for a free phone consultation and we’ll discuss your options.

Can You Trademark an iPhone App?

Yes! You can trademark an iPhone application or Android application so long as the trademark is available for registration. The United States Patent and Trademark Office registers trademarks on a first come, first served basis, and once a trademark is registered subsequent applicants for the same (or even a similar )trademark may be refused at the discretion of the USPTO.

Mobile apps are currently a hot topic, which is why securing the earliest possible filing date is especially important for developers. About 1000 trademark applications are filed every day with the USPTO including many for software related products.

How Does a Trademark Protect a Mobile Application?

Trademarking a mobile application can help to protect the name, logo, icons, and slogans that have been created for the mobile application. One key benefit of trademark registration is that a public listing of your trademark will be created in the USPTO’s online trademark database. A routine trademark search will show that you own the trademark (or have applied for it, if the application is still pending) thus deterring many competitors from attempting to register or use your trademark. The value of this particular benefit alone are worth the filing fees in my opinion. In general, app developers tend to be quite savvy, and most do trademark searches, domain name searches, and other branding due diligence before deciding on a particular trademark.

Other benefits to federal trademark registration

·       You will have the exclusive right to use the trademark in the U.S. for the mobile apps

·       Most social media websites will take down pages infringing on your trademark

·       You are granted the right to enforce your trademark in federal court, if necessary

·       You may be able to recover money damages if your trademark is infringed upon.

·       Federal trademark registration gives you the right to use the “®” symbol.

Patent and Copyright Protection for Mobile Applications

Mobile applications may also be protected by copyright registration. Copyrighting is another type of intellectual property protection that’s designed to protect original works of authorship, which include mobile app source code and any original artistic elements of the application. Copyright registration is much quicker and cheaper than trademark registration, since there is no prosecution of the application (it’s more of a filing process). We’ll be writing a full article on this topic soon.

Patent registration may be an option for those interested in protecting the functionality of the app. Patenting is a much more complicated process and doesn’t always align well with the budget and timeline of the app development process, however patents can be incredibly valuable in the right scenario. We’ll be writing a full article on this topic as well in the coming weeks.

Overview of Registering a Trade Mark

Registering a trade mark in the United States requires the approval of a trade mark application by the United States Patent and Trademark Office. Getting their approval is no easy task. The application process usually takes about a year and many things can happen along the way.

The first step is conducting a clearance search. This helps to determine if the trade mark is available for registration and to identify any potential conflicting trade marks. Consulting with a trade mark attorney can be valuable here because we’re experienced in performing high level searches and interpreting the search results in way that can impact how your application is filed. (contrary to popular belief, simply typing a trade mark in into the USPTO website is not a  sufficient search).

If the trade mark clearance search is successful, the next step is to draft and submit an application to the USPTO. After about 4 months, the application will be assigned to an examining attorney at the USPTO and they will review the application. If there are no issues with the application, it will be approved and continue through the remainder of the examination process. If a trade mark conflict exists or there are other problems with the application, the USPTO will issue an office action refusal.

Office actions come in many forms. Some are serious, others are not too much to worry about. At any rate, these requests, refusals, formalities are time sensitive and must be remedied before the application will be allowed to register.

How Can We Help?

Did you notice that we know a lot about trademarks? Yes, we’re a good addition to any team whose looking to file a trademark application. We avoid commonly issued refusals and expedite the trade mark registration process by ensuring that all filing deadlines are met. We complete a clearance search for each trade mark to minimize potential conflicts. We use our skills and experience to draft your application in such a way to maximize your chances of success.

Once your application is submitted it goes onto our docket and we will monitor the application until the USPTO reviews it. If the USPTO detects any issues with your application they are directed to our law firm, and not to you. Our representation includes all routine correspondence with the USPTO and timely responses are very important to preserve the application. Contact us if you would like to discuss how we can help get you registered!

How to Overcome a 2(d) Likelihood of Confusion Trademark Refusal

Overcoming a 2(d) likelihood of confusion is difficult, but not impossible. This type of trademark office action refusal occurs when an application has been submitted to the USPTO and a previously registered trademark (or previously applied-for trademark) is too similar to the proposed trademark, according to the USPTO examining attorney.

The USPTO commonly issues 2(d) likelihood of confusion refusals and this is one of the ways that registered trademarks are enforced. Trademark registrations are granted on a first come, first served basis, thus the earlier you apply for a trademark, the less likely a similar mark will conflict with your application (about 1000 applications are filed every day)!

There are several factors that the examining attorneys at the USPTO consider when determining whether or not a likelihood of confusion exists. The appearance, meaning, sound, relatedness of good or services, and overall commercial impression of the proposed trademark are all relevant factors. If a conflict exists in any of these areas an office action refusal may be issued. In some cases, the examining attorney may cite several conflicting registered trademarks in the same refusal.

In order to overcome a 2(d) refusal the trademark applicant (or applicant’s attorney) is permitted to submit arguments and evidence in favor of registration of the proposed mark. The overall purpose of the response will be to show that the marks are not similar and not likely to be confused in the minds of the ordinary consumer.

This can be achieved by a persuasive analysis of the office action, other relevant trademark registrations, and of course the Dupont factors. The Dupont factors stem from a landmark trademark case dealing with the likelihood of confusion. These factors are:

·       The similarity of the appearance, connotation, and commercial impression of the marks.

·       The similarity of the nature of the goods.

·       The similarity or dissimilarity of established, likely-to-continue trade channels.

·       The conditions under which sales are made, i.e. impulse buying vs. sophisticated purchasing.

·       The popularity of the prior mark.

·       The number and nature of similar marks in use on similar goods, i.e. dilution.

·       The nature and extent of any actual confusion.

·       The length of time of concurrent use without evidence of actual confusion.

·       The variety of goods on which a mark is or is not used.

·       The market interface between the applicant and the owner of a prior mark.

·       The extent to which an applicant has a right to exclude others from use of its mark

·       The extent of potential confusion.

·       Any other well-established facts probative of the effect of use.

A careful analysis of these factors will often times persuade a USPTO examining attorney to reconsider their initial refusal. In many cases, submitting extra evidence in favor of the proposed trademark can be very helpful in achieving a registration because the examiners assessment of the conflict is limited to the information contained in the application, which is not always enough to accurately appraise the use/proposed use of the potential mark.

If you’ve received a 2(d) likelihood of confusion office action refusal feel free to contact us to schedule a phone consultation with our Trademark Lawyer.

Can You Trademark a Clothing Line?

Absolutely! Trademarking your brand is crucial if you want to compete in the fashion industry. But don’t take my word for it, look at the trademark portfolio of any major fashion label and you will find a long list of trademark registrations.

For example, a quick trademark search in the USPTO database shows that Coach, Inc. currently holds over 100 trademarks for clothing products and leather goods. Why would Coach register this many trademarks? And why do they employ in-house trademark attorneys to manage and enforce these trademarks? The answer is simple: to protect their brand from trademark dilution.

HOW DOES TRADEMARK PROTECTION WORK?

Trademarks are designed prevent consumer confusion by identifying the source of goods. Thus, you can trademark a brand name, logo, slogan, monogram, or other identifiers of your clothing or fashion accessories. To get started it’s best to consult with a trademark attorney and have him or her conduct a clearance search in order to confirm that your proposed trademark is available for registration. If no conflicting trademarks have been previously registered, then you can apply for a federal trademark in the United States by filing an application with the USPTO. If the application is accepted, the trademark owner will receive exclusive rights to use the trademark in association with the goods described in their application.

COPYRIGHT AND PATENT PROTECTION FOR CLOTHING

You generally cannot trademark fashion designs, styles, patterns, or artwork, although you may be entitled to copyright protection in these areas. Copyright law is another form of intellectual property protection that applies to original works of authorship that are fixed in a tangible medium. This means that if you have a created a unique work with elements of artistic expression it may be possible to obtain a copyright registration.

Patent protection may also be available for articles of clothing provided it has a unique design or functionality. Design patents are used protect the way something looks, as opposed to the more commonly known utility patents, which protects how something works.

Contact us if you would like to discuss trademarking your clothing line!

Trademark Classes and Classification

In the United States and most other countries trademarks are categorized into 45 different groups. These groups are known as classes (aka international classes) and they are designed to broadly describe the goods and services that a trademark will cover.

Each trademark application must designate at least one class, although multiple classes may be claimed in a single application. If multiple classes are claimed, then the trademark will be entitled to a broader amount of protection. The USPTO charges a filing fee per each class included in the application.

The chart below lists the available classifications for U.S. trademark applications. Classes 1 through 34 are used for different types of goods and Classes 35 through 45 are used for services. For further explanation on what’s included and not included in each category you can visit the USPTO Website.

How To Choose A Strong Trademark

Choosing a strong trademark is an important part of the branding process for startup companies and entrepreneurs. From a legal perspective, certain trademarks are stronger than others based on their uniqueness, descriptiveness, previous use, and relationship to the product or service that they represent. Generally speaking, trademarks fall into one of five categories of legal distinctiveness described below:

Fanciful Trademarks

Fanciful trademarks are the strongest type of trademark. A fanciful trademark is essentially a made up word or phrase with no specific meaning. The sole purpose of a fanciful trademark is to function as a trademark and to identify the goods or services that it represents. This type of trademark offers the most protection and is therefore the easiest to register with the USPTO. Fanciful marks are also the easiest to enforce since they’re coined terms that have no inherent meaning. Examples of fanciful trademarks include Google, Twitter, Starbucks, and New York-based Chobani.

Arbitrary Trademarks

An arbitrary trademark is the second strongest type of trademark. An arbitrary trademark is actually a real word, but has no meaningful relationship to the goods or services that it represents. The quintessential example of an arbitrary trademark is Apple for Computers. Another great New York example is Domino for sugar.

Suggestive Trademarks

A suggestive trademark suggests some connection to the underlying product or service and usually implies a feature of the product or service without directly stating it. This type of trademark is the weaker than the two previously mentioned categories, however, suggestive trademarks are still protectable and registerable with the USPTO. The classic example of a suggestive trademark is Coppertone for sun tan lotion. More recent examples of suggestive trademarks include Pinterest and Netflix.

Descriptive Trademarks

A descriptive trademark is the weakest type of trademark that is legally protectable. This type of trademark directly describes a feature or quality of the goods or services that the trademark represents, and does not require any thought or inference when connecting the trademark to the product or service (as is the case with suggestive trademarks). Descriptive marks are generally difficult to register, and may initially only qualify for registration on the USPTO’s Supplemental Register. If the trademark is consistently and substantially used over a long period of time, it’s possible for this type of trademark to acquire distinctiveness through use in commerce and eventually qualify for registration on the USPTO’s Principal Register.

Choosing a descriptive trademark is a common legal mistake. People often choose this type of trademark because they believe that the trademark’s obviousness will create an advantage from a marketing perspective, however the opposite tends to be true in my opinion. It’s important to keep in mind that the purpose of trademarking in the first place is to identify the source of the products or services, and without a distinct, non-descriptive trademark that’s difficult to achieve.

Generic Trademarks

Generic trademarks are common words or phrases that are incapable as functioning as a trademark, and are therefore not registerable. The USPTO will not allow applicants to monopolize a product or service category by allowing registration of common English words. Thus, Apple is a registerable trademark as applied to computers, but one could not trademark Apple as applied to fruits.

If you have questions regarding choosing a strong trademark feel free to contact us for a free phone consultation.

How To Do A Trademark Search

Conducting a trademark search is the first step of the trademark registration process. The purpose of a trademark search is to:

1. Identify companies who are already using your potential trademark

2. Identify similar trademarks that may prevent your application from being accepted

3. Assess the likelihood of a successful registration

4. Identify possible filing strategies to increase the chances of a successful registration

5. Reduce the risk of trademark infringement

Where to Search Trademarks

The USPTO TESS Database (Trademark Electronic Search System) is the primary database used to find information about U.S federal registered trademarks. The TESS Database is free to use and can be accessed online. You don’t have to be an attorney to use it, however the search results will not be very useful for those without knowledge of the TMEP (Trademark Manual of Examining Procedure).

Doing a Google search and a domain name registration search are both quick and effective ways to get information on others who may have common law rights to your proposed trademark. If another company is found using your trademark, you can also cross-reference The USPTO’s TESS Database and search by the company’s name to see if they own a current trademark registration.

Depending on the nature of your goods or services, an international trademark search may be appropriate. The World Intellectual Property Organization (WIPO) and The Canadian Intellectual Property Office (CIPO) both maintain searchable databases that can be used much like the USPTO’s TESS Database.

Some U.S. states maintain searchable trademark databases and others do not. The USPTO maintains a list of state trademark resources here.

How To Search the USPTO TESS Database

Clients often want to base their decision to adopt a trademark on the results of a self-administered knock-out search, rather than hiring an attorney to conduct a comprehensive search. While we encourage our clients to do their own due diligence, a basic index search (simply typing your proposed trademark into the USPTO TESS search box) is not sufficient. A knock-out search can uncover some useful information, however it’s only the first step of the trademark searching process. It’s also important to remember that the main value of a trademark search is derived a proper analysis of the search results.

Employing the proper searches is also a critical component of the trademark searching process. When searching the USPTO TESS Database it’s important to investigate the records of potentially conflicting trademarks, examine TSDR reports for previously registered similar trademarks, search within the class and coordinated classes for which you seek to register your mark, search for pseudo marks and trademarks with similar spellings or meanings, conduct truncation searches, among other searches depending on the nature of the mark. Conducting these advanced searches and interpreting the results is why trademark attorneys are so valuable. A small investment in some initial trademark due diligence is likely to cost much less than refilling one application or even responding to one trademark infringement cease and desist letter.

Trademark Searching for Logos and Stylized Design Marks

The process for searching logos, stylized design trademarks, and trademarks with pictoral elements is slightly more complex. The USPTO has a coding system that assigns numeric codes to different categories of pictures such as humans, animals, plants, foods, toys and other common items. When a trademark application is filed with the USPTO, the examining attorney will code the logo taking into consideration the pictoral elements of the trademark. These codes are searchable by future applicants, thus if you wanted to search for all logos containing an elephant image it’s possible to do so. If the mark contains literal elements such as words, letters or numbers those can be searched the same way that wordmarks are searched.

Final Thoughts

As with any investment, it’s important to do your homework. Before you print those business cards and start building that website, we encourage you to contact us for a trademark search.

Welcome to Our Trademark Blog!

Thanks for your interest in the Total Trademarks Blog! The articles here are written by me, Scott Thomas, Esq. I’m a licensed Trademark Attorney at Thomas Law Firm PLLC in New York City. Our law firm represents early-stage startup companies in the New York City area. A large part of my job entails registering trademarks for emerging companies so I decided to create this website and blog, which is dedicated totally to trademark law. Feel free to subscribe, share, post comments and engage with me and other readers interested in trademarks!