Identification of Goods and Services in Trademark...

Identification of Goods and Services in

Trademark Applications: Key ConsiderationsBreadth of Identification, Impact on Foreign Filings and Enforcement,

Implications of USPTO Use Audits

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THURSDAY, SEPTEMBER 3, 2020

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

Rory P. Pheiffer, Partner, Deputy Chair, Intellectual Property Department,

Nutter McClennen & Fish, Boston

Draeke H. Weseman, Attorney, Greenberg Traurig, Minneapolis

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Navigating Identifications of Goods and Services

September 3, 2020

www.gtlaw.com

Today’s Presenters

6

Rory P. Pheiffer Nutter McClennen & Fish

PARTNER, DEPUTY CHAIR, INTELLECTUAL PROPERTY

DEPARTMENT

Draeke H. WesemanGreenberg Traurig, LLP

TRADEMARK AND BRAND MANAGEMENT ATTORNEY

Agenda

• Identification Basics

• Drafting Identifications

• Consequences of Mistakes/Fraud

• Technology Evolution Program

• Rules to Know

• Broad vs. Narrow Descriptions

• Multiple Classes: Combined vs. Separate Applications

• International Considerations

7

Identification Basics

Classes vs. Identifications

9

CLASSES

• 15 U.S.C. § 1112

• Section 1401 of TMEP

• Organizational

• International TM Classification since 9/1/73

• 45 Nice Categories

• Unalterable by applicant

• Fees = per class basis

• Can leave blank

IDENTIFICATIONS

• 15 U.S.C. § 1051(a)(2),(b)(2)

• Section 1402 of TMEP

• True identifier

• Acceptable Identification of Goods and Services Manual(i.e., the “ID Manual”)

• Alterable by applicant

• Cannot combine classes

• Cannot leave blank

https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-df2df7b6-31cc-4ab5-a4f6-320a276bd97b.htmlhttps://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1400d1e8.htmlhttps://www.uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarkshttps://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-78769f64-81f6-41f2-85f6-bfeb0d674399.htmlhttps://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1400d1e1982.htmlhttps://idm-tmng.uspto.gov/id-master-list-public.html

Nice Agreement 11th Edition

• Effective January 1, 2017

• See TMEP §1401.14

• “2020 Version” Effective January 1, 2020

• To see a list of all new or changed U.S. ID Manual terms search in the Trademark ID Manual using an exact date.

• Changes made weekly on Thursdays

10

Examples

1401.14 General Summary of Major Changes in Practice Based on the 11th Edition of the Nice Agreement

• Example: 1401.14(a) Cosmetic and Toiletry Preparations and Soaps

• Cosmetics, toiletry preparations, and soap are classified in Class 3, except when those goods are medicated, are for pharmaceutical purposes, or have antibacterial or disinfectant properties. In such cases, the goods are classified in Class 5.

• Under the 11th edition, "medicated soap" and "disinfectant soap" were transferred from Class 3 to Class 5. "Antibacterial soap,""medicated toiletry preparations," and "medicated shampoos" were added to the Alphabetical List in Class 5.

• Consequently, if an identification for soaps does not specify that the soaps are antibacterial, disinfectant, or medicated, the soaps are generally classified in Class 3.

• Similarly, if an identification for cosmetics or toiletry preparations does not specify that the cosmetics or toiletry preparations are medicated or for pharmaceutical purposes, it is generally presumed that the goods are non-medicated and classified in Class 3.

• 1401.14(f) Ivory, Bone, Whalebone, Horn, and Tusks

• Identifications that include "ivory," "bone," "whalebone," "horn," or "tusks" may necessitate an inquiry regarding lawful use incommerce in connection with, for example, the Endangered Species Act (ESA), 16 U.S.C. §§1531-1544, the African Elephant Conservation Act, 16 U.S.C. §§ 4201-4246, and/or the Marine Mammal Protection Act (MMPA), 16 U.S.C. §§1361-1407.

• Accordingly, ID Manual entries related to those goods were deleted effective January 1, 2017. For information regarding effective date changes to the ID Manual, see TMEP §1401.10. For information regarding lawful use in commerce, see TMEP §907.

11

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1400d1e1968.htmlhttps://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e1461.html

Drafting Identifications

Using the ID Manual

Enter search criteria

13

ID Manual – Sample Search

14

ID Manual – Sample Search

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ID Manual – Sample Results

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ID Manual – Sample Results

17

USPTO ID Assistance - Input

Enter search criteria

18

USPTO ID Assistance - Output

19

Trademark ID Manual Suggestions

• E-mail [email protected]:

(1) The name of the party;

(2) An e-mail address for correspondence; and

(3) The proposed identification of goods or recitation of services (25-word limit ).

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Accuracy Requirements

Guidelines for Identifications

• Controlled by TMEP § 1402.01(a)

• Acceptable if:

• Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal;

• Meets the standards (not necessarily the language) set forth in the ID Manual;

• Is not a class heading; and

• Is in the correct class, i.e., there is no language in the identification that makes classification difficult or ambiguous; each class lists goods or services that are clearly in a single class

• Deference to applicant’s language

• Specificity important; avoid indefinite words and phrases

22

• Be mindful of evolving language and use

• Example: “Masks”

• Feldman, Joel “Management of Collegiate Sports Brands for Face Masks” https://lead1association.com/covid-19reportarchive/ (July 21, 2020)

Standards and Language Evolve

23

In re Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007)

• Refused because “park trailers” deemed indefinite

• Is it a Recreational Vehicle in Class 12 or a Mobile Home in Class 19?

• Based on the evidence of record it is clear that a “park trailer” is a commercial term of art generally understood by those in the industry and consumers as a type of recreational vehicle which unambiguously places it in International Class 12.

• Reversed.

24

In re Faucher Industries Inc., 107 USPQ2d 1355 (TTAB 2013)

• Refused because “Choke Seals” deemed indefinite

• Examining attorney required disclosure of material composition.

• IDs proffered by applicant did not meet the standards of the ID Manual, and did not contain enough information so that classification of the goods would not be difficult or ambiguous.

• Affirmed.

25

Additional Drafting Consideration:

Specimen

In re Osmotica Holdings Corporation, 95 USPQ2d 1669 (TTAB 2010)

• Mark: OSMODEX

• Class: 42

• Identification: Consultation services regarding controlled release drug delivery technology for pharmaceutical companies.

• Refusal: Mark doesn’t function as service mark to identify and distinguish specified services.

• Issue: Direct association needed between mark and services.

27

• Mark: OSMODEX

• Class: 42



• Issue: Direction Association needed between mark and services.


28

https://ttabvue.uspto.gov/ttabvue/ttabvue-77314455-EXA-12.pdf


• Mark: OSMODEX

• Class: 42



• Issue: Direct association needed between mark and services.

• Holding: Affirmed.

29

Consequences ofMistakes or Fraud

Application Stage

• Office Action

• Outcome Options:

• Amend and Acceptance

• Amend and Refusal

• Appeal

• File New Application to Correct Error

This Photo by Unknown Author is licensed under CC BY-NC

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http://www.pngall.com/denied-stamp-pnghttps://creativecommons.org/licenses/by-nc/3.0/

Declaration of Use

• 35 U.S.C. § 1120


• Cancelation of Registration

• Liable in Civil Action

• Recommendation: Have client sign all declarations This Photo by Unknown Author is licensed under CC BY-SA

32

https://www.law.cornell.edu/uscode/text/15/1120http://www.flickr.com/photos/twicepix/681510321/https://creativecommons.org/licenses/by-sa/3.0/

Renewals

• Some or All Canceled


• Amend and Acceptance

• Amend and Cancel

• Appeal

• File New Application

• More likely issue raised by third party, not USPTO

This Photo by Unknown Author is licensed under CC BY-SA-NC

33

http://www.fairpayzone.com/2016/02/winning-back-lost-customers-before-they.htmlhttps://creativecommons.org/licenses/by-nc-sa/3.0/

Post Registration Proof of Use Audit Program

• Began in November of 2017

• Goal is preserve trademark register as reliable reflection of marks in use

• If audited, two additional goods or services for each audited class will be selected and proof of use must be submitted for each.

• Multiple rounds of Office Actions and proof of use may be required

• https://www.uspto.gov/trademarks-maintaining-trademark-registration/post-registration-audit-program

• Chambers, Tucker “You’re Being Audited By the Trademark Office” https://www.duetsblog.com/2018/01/articles/uspto/youre-being-audited-by-the-trademark-office/ (January 25, 2018)

34

Technology EvolutionPilot Program

Technology Evolution Pilot Program

• Allows amendment of goods and services if replaced entirely by new technology

• Incontestability will not be transferred

• No termination date for the program

• Detailed Guidelines:

https://www.uspto.gov/trademarks-maintaining-trademark-registration/amending-your-registration-s-goodsservices-when#heading%201

• Proposed Amendments:

https://www.uspto.gov/trademark/trademark-updates-and-announcements/proposed-amendments-identifications-goods-and-services

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Examples

37

• Example

Mark: WALL · E

Reg. No.: 3,588,850

Original:

Pre-recorded audio discs, compact discs featuring music for children, in International Class 9

Proposed Amendment:

Downloadable music featuring music for children, in International Class 9

Rules to Know

No Use of Trademarks in ID

• See TMEP § 1402.09

• Substitute generic wording

• Never for others’ marks

• If your own mark, discouraged, but if must, use as an adjective

• Also, cannot use terms “Applicant” or “Registrant”

iPhone®

Kleenex®

39


• See TMEP § 1402.09





iPhone®

Kleenex®

40


• See TMEP § 1402.09





smartphone

tissues

41


• See TMEP § 1402.09





smartphone

tissues

42

Goods That Are Components or Ingredients

• If a mark identifies a component or ingredient of a product:

1. Precisely set forth its common name

2. Indicate that it part of another finished product, and

3. Set forth the common name of the finished product

4. Use class of the finished product.

• TMEP § 1402.05(a))

Example

synthetic fiber

sold as an integral component of

protective clothing, namely … gloves….

in Class 9.

U.S. Reg. No. 2,434,020 for the mark

KEVLAR® owned by Dupont Safety and

Construction, Inc.

43

Software – Class 9 vs. Class 42

Class 9

• Physical implantation

• Downloadable software

Class 42

• SaaS; PaaS

• Online, non-downloadable software

This Photo by Unknown Author is licensed under CC BY

vs.

This Photo by Unknown Author is licensed under CC BY-SA

44

https://opentextbc.ca/selfpublishguide/chapter/screenshots-of-software/https://creativecommons.org/licenses/by/3.0/https://en.wikipedia.org/wiki/File:No_sign_Right.svghttps://creativecommons.org/licenses/by-sa/3.0/

Kits, Gift Baskets, and Items Sold as a Unit

• Generally, classify according to:

1. The item the kit is intended to make; or

2. The class for the majority of items in the kit

• A few kits can be classified without listing components, for example “teeth whitening kits” in Class 3.

• TMEP § 1405.01(a)

“Beer making kit” in Class 32

“Nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions”in Class 3

45

CBD/Marijuana Goods

• See Examination Guide 1-19

• Relaxes restrictions

• Directed to hemp-based goods/services

• Hemp-derived goods and services with less than 0.3% tetrahydrocannabinol (THC) on a dry weight basis

• If cannabis involved meets marijuana definition = REFUSAL

• Foods / Beverages / Supplements = NOT PERMITTED

This Photo by Unknown Author is licensed under CC BY-SA

46

https://en.wikipedia.org/wiki/Cannabis_in_Colombiahttps://creativecommons.org/licenses/by-sa/3.0/

CBD/Marijuana Goods

• Requirements:

• Hemp-derived goods and services with less than 0.3% THC

• ID must explicitly state that the temp-derived goods contain less than 0.3% THC on a dry weight basis

• Application filed after 12/20/18

• USPTO will examine applications to confirm compliance with 2018 Farm Bill This Photo by Unknown Author is licensed under CC BY-SA

47

https://en.wikipedia.org/wiki/Cannabis_in_Colombiahttps://creativecommons.org/licenses/by-sa/3.0/

House Marks and Marks for a Full Line of

• “House marks” identify the provider of a wide variety of goods or services.

• Use “for a full line” of products or services is an evidentiary matter.

• Applicant must provide evidence showing broad use of the mark.

• TMEP § 1402.03(b)

“…house mark for a full line

of computer hardware and software…”

U.S. Reg. No. 5,311,758 for the mark

HEWLETT PACKARD® in Class 9

(and other classes).

48

Benefits of Others Requirement

• TMEP § 1301.01(a)(ii)

• Service must be primarily for the benefit of someone other than applicant

• Controlling Question:Who primarily benefits from the activity for which registration is sought

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Benefits of Others Requirement

• What constitutes a service?

• Performance of some activity

• For the benefit of someone other than Applicant

• Recognizable as a separate activity

• Factors:

• Service separately offered?

• Limited period of time?

• Goods offered separately at lower price?

• Promote service separately?

50

In re Husqvarna Aktiebolag, 91 USPQ2d 1436 (TTAB 2009)

• Mark: HOP

• Class: 42

• Identification: Providing warranties to consumers and retailers on power-operated outdoor products, namely, power-operate chain saws, edgers…and file saws.

• Refusal: Activities set forth in the ID don’t constitute a service.

• Issue: Whether applicant’s activities of offering a standard warranty constitute a registrable service?

51


• Mark: HOP

• Class: 42




• Key Factor: Warranty offered with goods manufactured by applicant but sold under marks of others.

52


• Mark: HOP

• Class: 42




• Holding: Yes. Reversed.

53

Broad v. Narrow

Descriptions

Specificity of Terms

55

• Key Drafting Guidelines:

1. More than one class = indefinite

2. Sufficient for filing date ≠ acceptable

3. Common understanding controls

4. Special uses or attributes should be indicated

5. “Including” v. “namely”

The “Ordinary-Meaning” Test

• Class headings are generally unacceptable

• Consider the ordinary meaning apart from the class number

• Scope is ordinary meaning of the words, not the entire class

• TMEP § 1402.07(a)

56

In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593 (TTAB 2014)

• Original: “Advertising services; business management; business administration; office functions”

• Amended: “Advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others”

• Refused because terms in the International Class 35 heading do not encompass retail store services.

• Affirmed.

57

• Reg. No. 5,172,275 for in Class 9.

World’s Longest Description?

58

35mm cameras; 3D camera systems, namely, adapters for allowing 3D shooting; 3D scanners; 3D spectacles; A mesh network of temperature probes which measures the internal temperatures of compost piles and wirelessly transmits the temperature data to a computer; Abacuses; Abdominal belts containing built-in speakers for purposes of transmitting music/sounds/educational material to a fetus and built-in pockets in which to carry audio transmitters; Acceleration sensors; Accelerometers; Access control and alarm monitoring systems; Accessories for lighting fixtures, namely, plastic pole with electrical source in protective cover; Accounting machines; Accounting software for use in the construction industry for contract bidding and job accounting; Accumulator boxes; Accumulator jars; Accumulators; Accumulators and batteries; Acetylene regulators; Acid hydrometers; Acidimeters for batteries; Acidity analysers; Acoustic baffles sold as a component of loudspeakers; Acoustic conduits; Acoustic couplers; Acoustic coupling devices; Acoustic membranes; Acoustic meters; Acoustic separation units; Acoustic sound alarms; Actinometers; Ad server, namely, a computer server for storing advertisements and delivering advertisements to websites; Adapter plugs; Adapter rings for attaching objectives on cameras; Adding machines; Adjustable smartphone and PC tablet stabilizers and mounts; Aerial amplifiers; Aerial cables for heavy currents; Aerials; Aerometers; Aeronautical radio communication machines and apparatus; Air analysis apparatus; Air filters for automation equipment, namely, computers and copier machines; Air quality measurement apparatus, namely, particle counters; Air tank dolly for scuba diving; Air tanks; Air tanks for use in scuba diving; Air traffic control radio equipment; Air-fuel ratio controllers for internal combustion engines; Alarm central units; Alarm installations and alarms; Alarm monitoring systems; Alarm sensors; Alarm that utilizes pressure sensitive pads to monitor patients or resident movement; Alarms for the detection of inflammable gases; Alidades; All-in-one PCs; Altimeters; Ammeters; Amplifier for wireless communications; Amplifier stands; Amplifiers; An optical metrology inspection system comprised of a light source, one or more cameras and sensors in communication with computer software and hardware; Analog cameras; Analog multimeters; Analog to digital converter (ADCs); Analogue to digital converters; Analysis instruments for photogrammetric purposes; Analytical apparatus, namely, an automated slide stainer for use in medical laboratories; Anemometers; Angle dividing protractors; Angle gauges; Angle viewfinder; Anode batteries; Anodes; Answering machines; Antenna filters; Antenna parameter measuring apparatus; Antennas; Antennas; Antennas comprised primarily of paper clips; Antennas for radio, for television; Antennas for wireless communications apparatus; Anti-dazzle spectacles; Anti-glare filters for televisions and computer monitors; Anti-glare glasses; Anti-glare spectacles; Anti-intrusion alarms; Anti-piracy software; Anti-reflective lenses; Anti-spyware software; Anticathodes; Antifreeze testers; Antireflection coated eyeglasses; Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; Apparatus and instruments for electrophoresis and mass spectrometry; Apparatus and instruments for weighing; Apparatus for adjusting headlights; Apparatus for analysing gases; Apparatus for automatic chromatography for laboratory use; Apparatus for broadcasting, recording, transmission or reproduction of sound or images; Apparatus for checking flight parameters; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic cladding panels; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic roofing members; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic solar hybrid modules; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic solar modules; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic thermal hybrid module; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic thermal module; Apparatus for converting electronic radiation to electrical energy, namely, PVT (photovoltaic thermal) module; Apparatus for converting

• Narrow identifications may restrict long term value of the registration by leaving no room for product evolution or product line expansion, but

• May avoid Office Actions

• Broad identifications may create a wider zone of protection, but:

• May make clearance difficult

• May result in unnecessary Office Actions (for you and others)

• May lead to receiving requests for letters of consent or petitions for partial cancellation

• May lack sufficient keywords to guide examining attorneys or deter others considering potential conflicts

• What about completely new products or services?

Balancing Broad v. Narrow Considerations

59

Roller Skates?

60

Inline Skates?

61

“BOOTS EQUIPPED WITH LONGITUDINALLY ALIGNED ROLLERS USED FOR SKATING AND SKIING” in Class 28.

U.S. Reg. No. 1,326,171 for the mark ROLLERBLADE® owned by Tecnica Group S.P.A.

Rollerblades® or Roller Blades?

62

Multiple Classes:Combined vs. Separate Applications

63

• Combined applications may simplify filing, portfolio management, and communications, but

• May persuade an examining attorney that goods and services are more related than they actually are

• It may become necessary to divide the application (TMEP § 1110)

• Registrations cannot be divided except in cases where ownership changes with respect to some but not all of the goods or services (37 C.F.R. §2.171(b))

• Consider grouping only “like with like”

• Special considerations for filing separate applications

International Considerations

“TM5” Designation

• Look for “T” identification in TM5 column of ID Manual

• Description is Acceptable in the following jurisdictions:

1. United States Patent and Trademark Office

2. The European Union Intellectual Property Office

3. The Japanese Patent Office

4. The Korean Intellectual Property Office

5. the State Intellectual Property Office of the People’s Republic of China.

65

• EXAMINATION GUIDELINES : https://www.wipo.int/export/sites/www/madrid/en/docs/2019_examination_guidelines.pdf

• Rule 12: International Bureau will determine the proper classification of the goods and services

• Rule 13: Procedure to clarify any term or expression that is deemed

• Too vague for the purposes of classification;

• Incomprehensible; or

• Linguistically incorrect.

EXAMINATION GUIDELINES UNDER THE MADRID SYSTEM

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• Online tool developed by International Bureau to assist applicants by ensuring that:

• Terms have been correctly classified; and

• Will be accepted by WIPO under Madrid system procedures

• Available at:

https://webaccess.wipo.int/mgs/

Madrid Goods and Services Manager

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• Recall the requirements for “kits” in TMEP

• The International Bureau classifies “kits” either:

1. According to their purpose; or

2. By their composition provided that all the goods comprised in the kit can be classified in the same class

• The International Bureau will not accept kits that have no stated purpose and are composed of goods that can be classified in various classes.

Irregularities: Kit Example

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