The Journal of The DuPage County Bar Association

Back Issues > Vol. 22 (2009-10)

How to Avoid and Respond to Trademark Office Actions
By Shannon A. R. Bond

This article will cover (1) various reasons an Examining Attorney may issue an Office Action, (2) how you should respond, and (3) how you can reduce the chances of receiving an Office Action.

In order to register a mark, you must file an application with the U.S Patent and Trademark Office (USPTO) to federally register your client’s trademark. If the USPTO Examining Attorney assigned to your client’s application objects to the application, he or she will issue an Office Action. When you disagree with the Examiner’s objection, you must submit arguments in favor of your position. Your chance of success is dependent, at least in part, on the individual Examining Attorney assigned to the trademark application. But, you can increase your chances of overcoming the Office Action by addressing certain issues that show you know and understand what the Examining Attorney wants from you.

Lack of Sufficient Distinctiveness

There is a lack of sufficient distinctiveness when a mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods/services.1 A slogan that is the subject of the trademark registration may lack sufficient distinctiveness when the slogan is simply informational. Usually, a statement is merely informational when it is a statement ordinarily used in business or in a particular trade or industry.2 To illustrate, the mark "LEMON CLEAN SCENT" was found to lack sufficient distinctiveness when applied to dish detergent.3 And a phrase like "think outside the box" was also not be registrable for consulting services.

To overcome an Office Action, you can either argue that the mark is distinctive or that it has acquired distinctiveness. Case law, dictionary definitions, and common sense should support your position that the mark is distinctive when looking at the mark in its entirety and in the context of the goods/services offered.

You may prove that the mark has acquired distinctiveness, by showing that it has acquired a secondary meaning that makes it distinctive. A mark has achieved secondary meaning when a significant portion of the public has come to understand that the mark refers exclusively to the mark owner. Secondary meaning can be easily established, if the mark has been in use for at least five years. Once five years have passed, Examining Attorneys assume a mark has acquired distinctiveness.4

Otherwise, you would present actual evidence showing the mark is distinctive because it distinguishes the goods/services. Actual evidence could include large advertising expenditures, affidavits from customers or retailers, and surveys, market research, and consumer reaction studies.5

The final possibility in proving distinctiveness would be to prove that the mark was previously registered on the Principal Register for goods/services. If the goods/services were the same as, or related to, those in the current application, then the evidence will be accepted as proof that the mark is distinctive.6 That means, if the current application is for a restaurant and the previous registration was for a restaurant, then it would likely be accepted as proof that the mark is distinctive.

If a lack of distinctiveness can not be overcome, the mark may still be registrable on the Supplemental Register, as long as it is not an "intent to use" application. (An intent to use application is not based on current use of the mark in commerce. Evidence of current use of the mark in commerce is provided later.) The Supplemental Register does not provide as much protection as the Principal Register, but it is better than having no federal registration at all.7 And, after the mark has been in use for five years, it may then be moved to the Principal Register.

Mark is Merely Functional

A functional mark is exactly what it sounds like it is: A mark that merely serves a function. To be a trademark, a mark must be an identifier. A mark is an identifier when it tells a consumer where the goods/services originate and helps consumers recognize the goods/services that the consumer wants. When a mark is functional rather than an identifier the mark is not registerable.8. A clearly functional mark would be one that tells web site viewers to perform an action. But, at times, determining whether a mark is merely functional can be difficult. For example, a color, product shape, or sound may not be considered functional and may be registrable. Why? A mark that is not strictly functional is registrable, so long as it acts as an identifier and has acquired secondary meaning.9

So, when responding to an Office Action, your argument should either be that the mark is not functional or that it is an identifier that has acquired secondary meaning.

Mark is Generic

A mark is generic when it employs a term that identifies products and services.10 Such a term can not be an identifier and is unregistrable. Examples of generic marks include "computer software" or "facial tissues."

A truly generic mark can not be registered, because no manufacturer or service provider will be given exclusive rights to a mere good/service term. To overcome an Office Action on the grounds that the mark is generic, you must present arguments and evidence, if any, showing that the mark is not generic.

It should also be noted that a registered trademark can become generic. Aspirin was trademarked by Bayer, dry ice was trademarked by the Dry Ice Corp. of America, escalator was trademarked by Otis Elevator Co., trampoline was trademarked by George Nissen, and videotape was trademarked by Ampex Corp. All of those trademarks are now considered generic terms—and they are only a few examples. When a trademark becomes generic the owner of the mark looses their exclusive right to use the mark and all other trademark protection.

Disclaimer Requirement

A disclaimer is required when words or phrases within a mark are generic or descriptive of the goods/services in the application or otherwise unregisterable.11 When you disclaim words or phrases in the mark, you are saying the mark owner does not have the exclusive right to use those words or phrases other than within the mark.Making a disclaimer is not likely to have a big impact on your ability to protect the mark, if the portion disclaimed is small or insignificant in relation to the undisclaimed portions of the mark. But, other marks are almost completely disclaimed, and some are disclaimed in their entirety. When that happens, preventing others from using a similar mark becomes very difficult. In that case, it is worthwhile to, at least attempt to, convince an Examiner that the required disclaimer is overreaching and unnecessary. If successful, you may be required to only disclaim a small portion of the mark.

An applicant may make a disclaimer in the original application at the time it is filed, but it is not necessary to make a disclaimer until an Examiner requests one. If you file a disclaimer up front you may be giving away registerable portions of the mark. There is little advantage to bringing up the issue unnecessarily.

Likelihood of Confusion with a Registered Mark

Likelihood of confusion means your client’s mark is so similar to another mark that consumers will most likely be confused, mistaken, or deceived about the source of the goods/services.12 For example, the mark P.R.I.D.E.13 (Promoting Real Identities and Developing Esteem in Me) is considered confusingly similar to P.R.I.D.E.14 The less similar the goods/services, the less likely confusion will result. You can bolster your argument by citing relevant factors from the list in TMEP §1207.01.15 If the factors weigh in favor of the marks not causing confusion because they are dissimilar, an Examiner may be persuaded to agree with you. Even identical marks may be registered when the goods/services provided under the marks are dissimilar.16 In contrast, if the goods/services are virtually identical, an Examiner will probably not be persuaded by any argument you make.

Misdescriptive Marks

A mark is misdescriptive when a term misdescribes the character, quality, function, composition, or use of the goods/services.17 Misdescriptive marks include those that imply goods/services originate in one geographic location when, actually, they originate in another. The trademark SILVER BIRCH for skin care goods was deemed misdescriptive, because the ingredients did not appear to include silver birch.18 And, the trademarks HAVANA RESORT & CASINO and ROYAL HAVANA RESORT & CASINO were deemed misdescriptive for apparel, beauty products, and perfume that did not originate in Havana, Cuba.19

The analysis in your argument to overcome an Office Action will be similar to that for a lack of sufficient distinctiveness. Your goal will be to convince an Examiner that the mark is not deceptive when examined in its entirety and in the context of the goods/services offered. If the mark is not likely to deceive a substantial portion of the intended audience, your chances of success will dramatically increase.

Ornamental Marks

Ornamental marks are merely decorative and do not serve as identifiers.20 For example, the wording YOU ARE SPECIAL TODAY on ceramic plates was considered decorative and not an identifier.21

To avoid an Office Action for an ornamental mark: remember that the larger the display of the mark relative to the size of the goods, the more likely it will not qualify as a trademark. In practice, your client may make shirts with their mark splashed across the front in big letters and shirts with the mark merely on the label. You should recognize that the latter makes the best specimen, because it is more likely than the former to be approved. When the mark is used on a shirt tag, it is more likely to be seen as a source identifier. Whereas, when the mark is displayed in big letters across a shirt, it is more likely to be seen as an ornamental design.

Disparagement or False Connection

Disparaging marks or marks implying a false connection may involve a person, institution, belief, or national symbol.22 Marks that demean a competitor or falsely imply endorsement by a celebrity are not uncommon. When an Examiner recognizes the disparagement or connection, an Office Action is issued.

If an Examiner issues an Office Action on the grounds that the mark is disparaging, you should argue that the mark is not disparaging or is not directed at someone or something in particular. If an Examiner says a mark makes a false connection, you should argue that most consumers would not recognize the connection that the Examiner alleges.

Arguments about the lack of confusion caused by a mark are not effective to overcome an Office Action based on false connection or disparagement. Here, confusion isn’t a factor. An Examiner will issue an Office Action for marks that are disparaging or make a false connection to avoid violating a right of privacy or right of a publicity—not to protect consumers from confusingly similar marks.
Name, Portrait, or Signature
A name, portrait, or signature of a living individual is not registrable without the written consent of the individual. This protects an individual’s right of privacy or right of publicity.23 To overcome an Office Action, you may argue that the mark is not a name, portrait, or signature; that the individual is no longer living; or simply submit the individual’s written consent. SurnamesMarks that are merely surnames are treated the same as marks that lack distinctiveness.24 For example, BOND LAW OFFICES for a law firm would not be registrable, when the applicant’s surname is Bond.

To overcome an Office Action, you could try to argue that the mark is not a surname, but that is not likely to succeed. Usually, an Examiner includes evidence that identifies the mark as a surname rather conclusively. It is unlikely you would be able to refute that evidence. Your only real argument is that the mark has achieved secondary meaning through extensive advertising or use for at least five years.

Title of a Single Creative Work

A mark that is the title of a single creative work will be issued an Office Action. A single creative work includes books, DVDs, films, CDs, and theatrical performances.25 For example, a mark that is the name of a feature film, like "Away We Go," will not be registrable. Such titles can not be an identifier, and accordingly they can not be trademarks.In contrast, a mark for a series would be registrable, as long as it does not simply identify a character.26 A mark for a television series, book series, movie series, series of live performances, or a continuing radio program is registrable.27 If the mark is for a series, to overcome the Office Action, you would submit a specimen proving the existence of the series and the use of the mark in identifying the series.

Trade Names

When a mark is not employed as an identifier of the source of the goods/services, although it could be, then it may be merely a trade name.28 The best way to explain this concept is by example. If the mark is the name of a company, but is not attached to the goods’ labels or tags or displayed on the service advertisements, then it is a trade name. For that reason, a proper specimen is the best evidence that the mark is really a trademark, and not a trade name.

Domain Name

To register a domain name as a trademark, the domain name must serve as an identifier. The complete mark, as provided on the application, must be included in advertisements of the services or on labels or tags of the goods. Otherwise, the mark will not be registrable. Submitting screen shots of the web site with the mark visible in the page content or photographs of the mark on the label or tag of the goods would be excellent proof that the mark is a trademark.

Immoral or Scandalous

An immoral or scandalous mark will receive an Office Action. A mark is immoral or scandalous when it has an ordinary and common meaning that is "shocking to the sense of propriety, offensive to the conscience or moral feelings, or calling out for condemnation."29

What does that mean? Commonly, sexually explicit marks and marks with profanity are considered immoral or scandalous. To convince an Examiner that a mark is not immoral or scandalous, you could argue that the meaning is not currently shocking or offensive. Or, you could argue that, in the context of the goods/services, the mark has a meaning that would not be immoral or scandalous to most consumers.

Mitigate The Risk

You can mitigate the risk of receiving an Office Action, by encouraging clients to only apply for trademark status when their marks are fanciful, arbitrary, or suggestive and act as identifiers of their goods/services.

A fanciful mark is the strongest type a client can have. It is a made up word with no meaning other than as your client’s mark.30 Fanciful marks are the strongest of all marks, because they are the easiest to protect and the most likely to be registered. STARBUCKS, VERIZON, LEGO, and XEROX are all fanciful trademarks.

Arbitrary marks are also strong. They use actual words that have meaning, but the words have no correlation to the goods/services themselves.31 NICKELODION has no correlation with television. LOTUS has no correlation with software. CANON has no correlation with technology. BLUE BELL has no correlation with ice cream. They are all arbitrary trademarks.

Suggestive marks are as strong as arbitrary marks. They are related to the nature of the goods/services.32 Yet, they do not describe that nature. Instead, consumers must use their imagination to identify the relationship. Well-known suggestive trademarks are BLU-RAY DISK, PLAYBOY, JAGUAR, and 7-ELEVEN.

There are various reasons an Examining Attorney may issue an Office Action, but you can respond appropriately and, just as importantly, reduce the chances of receiving an Office Action at all. Clients may resist your best advice, but they will appreciate your knowledge and skill.

1 TMEP §1209.01(b) (2008).

2 TMEP §1209.03(s).

3 U.S. Trademark Application Serial No.78688817.

4 TMEP § 1212.05.

5 TMEP § 1212.06.

6 TMEP §1212, 1212.06.

7 See 15 U.S.C. §1094 (2008).

8 TMEP §1202.02(a).

9 See TMEP §1202.02(a)(i), 1202.05.

10 TMEP § 1215.05.

11 15 U.S.C. §1056(a); TMEP §1213, 1213.03(a).

12 15 U.S.C. §1052(d); TMEP §1207.01.

13 U.S. Trademark Application Serial No.77439472.

14 U.S. Trademark Application Serial No. 78437875.

15 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).

16 TMEP §1207.01(a)(i).

17 TMEP §1203.02.

18 U.S. Trademark Application Serial No. 78245283.

19 In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000).

20 TMEP §1202.03.

21 U.S. Trademark Application Serial No. 73402520

22 TMEP §1203.03.

23 TMEP §1206.

24 See TMEP §1211.

25 TMEP §1202.08.

26 Id.

27 TMEP §1203.02.

28 See TMEP §1202.01.

29 TMEP §1203.01.

30 TMEP §1209.01(a).

31 Id.

32 Id.

SHANNON A. R. BOND received her J.D. from Northwestern University School of Law, where she was a member of Phi Delta Phi honor society. She received her B.S. in Sociology, magna cum laude and with honors, from Andrews University, where she was a member of Phi Kappa Phi honor society and listed for two consecutive years in Who’s Who Among Students in American Universities and Colleges. Shannon is currently an attorney at Saper Law Offices where she is the firm’s IP Portfolio Manager. Primarily, she practices Intellectual Property, Business, and Entertainment Law. She is an Access Living of Metropolitan Chicago and Lawyers for the Creative Arts volunteer. She is, also, a member of the Illinois State Bar Association Intellectual Property Council, Park Forest Mediation Task Force, and the Autism Society of America Illinois Chapter.

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