Making Section 2(f) Claims: Demonstrating Acquired ...

Making Section 2(f) Claims:

Demonstrating Acquired DistinctivenessLeveraging Declarations, Establishing Use and Evidence of Secondary Meaning

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THURSDAY, NOVEMBER 29, 2018

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

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

Matthew L. Frisbee, Attorney, Leason Ellis, New York

Jennifer Williston, Attorney, U.S. Patent and Trademark Office, Alexandria,Va.

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Agenda

I. Distinctiveness Generally

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

III. Considerations at the Time of Filing

IV. Prosecution

V. Appeals and Caselaw

Conclusion

Introduction

5

ACQUIRED DISTINCTIVENESS IN U.S. TRADEMARK LAW

Matthew L. Frisbee

Leason Ellis

[email protected]

914.821.3090

Matthew D. Asbell

Ladas & Parry LLP

[email protected]

212.708.3463

Jennifer Williston

U.S. Patent and Trademark Office

[email protected]

571.272.3796

6


Spectrum Freedom of Speech

Other non-merely descriptive marks that lack inherent distinctiveness

Generic

Descriptive or misdescriptive

“So highly descriptive” &

“the black hole”

Geographically descriptive

or misdescriptive

Primarily merely a surname

Trade dress – 3-

dimensional, color

marks, etc.

7


Acquired Distinctiveness/Secondary Meaning:

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

the registration of a mark used by the applicant which has become

distinctive of the applicant’s goods in commerce”

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

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

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

geographically deceptively misdescriptive, or functional

8


Advising client / Setting expectations / Building case:

Questions to consider regarding possibility of 2(f) claim

❑ How descriptive is the mark on the sliding scale?

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

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

❑ Is client or are others using the term

descriptively?

❑ Does client have the necessary budget to support

the 2(f) claim?

9


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

Evidence

❑ Keep track of advertising/sales figures related to

mark

❑ Have physical evidence of first use

❑ Keep various examples of advertising material

that shows use as a mark

❑ Keep unsolicited third party news articles, blog

posts, social media references that identify the

term as a mark and client as the source

10


Advice re client’s use:

❑ Make mark prominent, not lowercase in text, not

as a noun/generic

❑ Use TM or SM after mark

❑ Monitor third party use and enforce mark against

third parties

Other Considerations:

❑ Have client identify customers who may be

willing to sign affidavits

11


Likelihood of confusion with third party marks comprising potentially non-inherently distinctive matter; Clearance of seemingly descriptive common terms

❑ Consider how long the cited mark has been in use and whether the

owner is the exclusive user

❑ Investigation may be helpful

Is client planning to use the mark descriptively – fair use:

❑ Can use mark descriptively, even if cited mark has acquired

distinctiveness

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

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

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

12


Previously disclaimed matter:

❑ Not supposed to be considered by PTO

❑ Examiner may find the mark in her search of the

database, which could make a 2(e)(1) refusal

more likely

Previously registered on Supplemental Register

13


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

❑ For really descriptive marks, may be a way to

avoid a genericness refusal

❑ If term is clearly descriptive and client often

claims 2(f), may be a way to speed up

prosecution and avoid Office Action

14


Filing Basis:

❑ 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

❑ Can still claim 2(f) in a 1(b) intent-to-use application when mark was used on other, related

goods or services

❑ Must show acquired distinctiveness for other goods, and

❑ 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).

15


Form of mark, inclusion of additional distinctive matter

❑ Limits scope of rights, but make it more likely that mark will register,

even with a disclaimer

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

maintain exclusivity

❑ This will help to make a stronger 2(f) claim in the descriptive

portion of the mark down the road

Timing:

❑ Consider whether the mark will have been used for at least the least 5

years at some point during the prosecution

❑ 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)

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IV. Prosecution

Descriptiveness Refusal vs. Disclaimer Requirement

❑ Examiners should indicate that the mark could be considered generic

when issuing the first Office Action

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

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

Evaluating the Office Action

17

IV. Prosecution

Making the 2(f) Case – Types of Evidence

❑ Burden of proving acquired distinctiveness is on applicant

❑ Relevant time period for evidence is 5 years prior to claim

❑ Declaration based on 5 years use

❑ Use must be “substantially exclusive and continuous”

❑ Prima facie evidence of acquired distinctiveness

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

❑ Examiners seem to be increasingly reluctant to accept

without more evidence

18

IV. Prosecution

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

❑ This may help persuade the examiner not to ask for evidence

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

date of the full mark is much more recent

❑ Also may be necessary to submit example of use and first use date for

66(a) and 44(e) applications

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IV. Prosecution

Advertising examples:

❑ Should come from someone inside the company who can verify

anything that cannot be independently verified by evidence

❑ Inform client that everything submitted in response to office action

will be public record that is available online

❑ May impact what the client is willing to submit

❑ “Look for” advertising for color marks and trade dress

Applicant’s affidavits re: sales, advertising figures:

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IV. Prosecution

Customer letters/affidavits:

❑ Should say that the customer recognizes the mark as identifying the

client as the source of the goods/services

❑ Helps to demonstrate what consumers think

Getting the customer on board:

Proposed language:

21

IV. Prosecution

Independent Media Coverage:

❑ Can be very probative if done correctly

❑ Shows direct association between mark and owner in the

minds of consumers

❑ Easy to attack if done improperly

❑ No leading questions

❑ Must be appropriate portion of likely consumers

❑ Should be done by competent marketing research expert

❑ Can be prohibitively expensive, especially for ex parte

prosecution

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

❑ $30-40k for Internet based survey, like

Surveymonkey.com

❑ Significantly more for in-person or phone surveys

❑ Substantial number of unsolicited third

party references to the mark in news

articles is helpful

❑ Press releases and client generated

material is not helpful

❑ Practice Tip – set a Google News alert

early on and gather articles that mention

the mark

Consumer surveys:

22

IV. Prosecution

Case Study:

❑ Survey evidence not probative

❑ selected Applicant’s own magazine subscribers

❑ Conducted by applicant rather than market research company

❑ Leading questions

❑ Did not ask consumers if they associated the mark with one company

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

precedential)

23

IV. Prosecution

Case Study:

❑ Board found survey supported acquired distinctiveness

❑ Population was from 12 mile radius around Applicant’s stores, which it

considered its market area

❑ Interviewees divided into test and control groups

❑ Test group asked about Applicant’s FARM & FLEET mark, and if

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

❑ Control group asked about fake company RANCH & MACHINERY

and only 0.5% though it was operated by a single company

Farm Fleet Supplies, Inc. v. Blain Supply, Inc. (Opp. No. 9116469) (TTAB 2013) (not

precedential)

24

IV. Prosecution

2(f) based on earlier registrations (as previously discussed):

❑ Ownership of prior Principal Register ® for same mark is Prima facie

evidence of acquired distinctiveness

❑ Requirements

❑ Must be “Same mark”

❑ Legal equivalent that creates the same continuing

commercial impression

❑ Example: THE BOLLYWOOD REPORTER is not the same as

THE HOLLYWOOD REPORTER

❑ Goods in previous registration must be sufficiently similar to

those in application

❑ Registration must be active

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IV. Prosecution

Partial 2(f) Claim:

❑ Consider what portion of the mark should be included

❑ Can overcome disclaimer requirement

❑ 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

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

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

evidence, prior registration, etc.

❑ 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

Settling for the Supplemental Register:

❑ Not available for Madrid extension, generic mark, deceptive mark, or

marks based on intent to use

❑ 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

❑ File responses close to deadline

27


Converse, Inc. v. ITC, Appeal No. 2016-2497 (Fed. Cir. Oct. 30, 2018)

❑ Converse files ITC complaint based on trade dress infringing its Chuck Taylor shoes

❑ Lack of acquired distinctiveness raised by respondents

❑ Fed. Cir. clarifies time period during which acquired distinctiveness must be shown:

❑ "In any infringement action, the party asserting trade-dress protection must establish that

its mark had acquired secondary meaning before the first infringing use by each alleged

infringer.“

❑ Most relevant period for evaluating acquired distinctiveness is five years before alleged

infringement or claim of acquired distinctiveness

28


Converse, Inc. v. ITC, Appeal No. 2016-2497 (Fed. Cir. Oct. 30, 2018)

New test for acquired distinctiveness

❑ Surveys

❑ Length, degree and exclusivity of use

❑ Advertising

❑ Sales

❑ Intentional copying

❑ Unsolicited media coverage

29


John Edward Guzman v. The New Santa Cruz Surf School LLC, Opposition No. 91220843 (TTAB 2017)

❑ Opposition based on geographic descriptiveness

❑ 2(f) claim failed because use was not continuous during 5 years

❑ Owner of applicant was imprisoned in Aug. 2013

❑ Business did not resume until business was sold in Dec. 2013

❑ Applicant lacked evidence of any use for over a year

❑ Board sustained opposition based on geographic descriptiveness and rejected

2(f) claim

30


In re IMH LR Clubhouse, LLC, Ser. No. 86338122 (TTAB 2017) (not precedential):

❑ LAUGHLIN RANCH refused registration based on geographic

descriptiveness

❑ Applicant appeals, arguing not geographically descriptive

❑ Applicant makes 2(f) claim in the alternative

❑ Geographic descriptiveness refusal upheld, but 2(f) claim accepted

31


Montres Charmex S.A. v. Montague Corp. (Opp. No. 91191784) (TTAB 2015) (not precedential):

❑ Opposed on basis that SWISS MILITARY for bicycles had not acquired distinctiveness under

2(f)

❑ Evidence

❑ Only 5 year prima facie claim

❑ Opposer’s argument was that signatory did not have the requisite authority to bind the

applicant when he signed the declaration

❑ His title was mistakenly listed as “President” when he was actually the company’s

“Clerk” and “Treasurer”

❑ 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

32


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

❑ SKINSLEEVES acquired distinctiveness

❑ Originally a genericness refusal, but Board reversed and found only

merely descriptive

❑ Board says not so highly descriptive that it cannot acquire

distinctiveness based on 5 year presumption

❑ Evidence of 2(f)

❑ Over 10 years of use

❑ Declarations from 7 customers

33


RTX Scientific, Inc. v. Nu-Calgon Wholesaler, Inc. (Canc. No. 92055285) (TTAB 2015) (not precedential):

❑ Design mark consisting of the color blue as applied to the liquid

portion of the goods inside a container

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

in prosecution

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

and generic, and has not acquired distinctiveness

34


Evidence:

❑ Declaration from Applicant

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

❑ Blue color is source identifying

❑ 20 years of use

❑ Advertising and sales figures (designated confidential)

35


Copies of several different advertisements highlighting the blue mark with “REACH FOR THE BLUE” and “GO BLUE” shown as identifying source, including:

36


❑ Petitioner included evidence that six other HVAC companies also sold

blue coil cleaners

❑ Board holds that Petitioner made prima facie showing that mark

had not acquired distinctiveness

❑ Use not substantially exclusive in 2010

❑ Board – evidence is insufficient where there is undisputed evidence

that blue is a common color for HVAC coil cleaners

37


The Topps Company, Inc. v. Panini America, Inc. (Opp. No. 91209769) (TTAB 2015) (not precedential):

❑ Application for LIMITED for sports trading cards

❑ Topps opposed, claiming that mark had not acquired distinctiveness

❑ Applicant’s Evidence

❑ 5 years of use (since 1994)

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

2001

❑ Opposer’s Evidence

❑ Unrelated third party use of LIMITED in the same industry

38


The Topps Company, Inc. v. Panini America, Inc. (Opp. No. 91209769) (TTAB 2015) (not precedential):

❑ Board’s analysis

❑ Third party use is inconsistent with requirement that mark

identify a single source

❑ Mark is highly descriptive and is commonly used in the industry

❑ Revenue figures do not show market share and that the sales

figures include the U.S. and Canada

❑ Mark did not acquire distinctiveness

❑ 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

39

QUESTIONS?THANK YOU.

Matthew L. FrisbeeLeason Ellis

[email protected]

914.821.3090

Matthew D. AsbellLadas & Parry LLP

[email protected]

212.708.3463

Jennifer WillistonU.S. Patent and Trademark Office

[email protected]

571.272.3796

40

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