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TM Class 2 - Descriptive or Suggestive

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Vicenc Feliu

on 15 January 2019

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Transcript of TM Class 2 - Descriptive or Suggestive

For next time
Acquired Distinctiveness and Genericism
Read: Part I, pages 39 through 73
Trademarks
Descriptive vs. Suggestive Marks
Part I, pages 17 through 39
Class 2
10 Jan 2018
Sign on to Socrative: FELIU2780
Trademarks
Distinguishing Suggestive and Descriptive
Zatarains, Inc. v. Oak Grove Smokehouse, Inc.,
698 F.2d 786, (5th Cir. 1983)
Trademarks
Distinguishing Suggestive and Descriptive
Zatarains v. Oak Grove Smokehouse
When is a mark descriptive?
When it imparts information directly
When is a mark suggestive?
When it stands for an idea which requires some operation of the imagination to connect it to the goods
Degree of imagination test - Seventh Circuit
Not in text - only portion finding mark descriptive
Trademarks
Distinguishing Suggestive and Descriptive
Innovation Ventures, LLC v. N.V.E., Inc.,
694 F.3d 723, (6th Cir. 2012)
Trademarks
Suggestive or Descriptive
100% and 100% Time Release Moisturizer
555-1212.com
Coastal Wine
24 Hour Fitness
Xtreme Lashes
Trademarks
Special Rules
Trademark Manual of Examining Procedures
https://tmep.uspto.gov
Trademarks
Special Rules
Descriptiveness of Geographic Terms
TMEP 1210.01(a) Geographically Descriptive Marks
Three Part Test
(1) the primary significance of the mark is a generally known geographic location;
(2) the goods or services originate in the place identified in the mark; and
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark
Trademarks
Special Rules
Descriptiveness of Geographic Terms
TMEP 1210.01(a) Geographically Descriptive Marks
If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association
Trademarks
Special Rules
Trademark Manual of Examining Procedures
1302 Collective Marks
1306 Certification Marks
Trademarks
Certification Marks
TMEP 1306 Certification Marks
15 U.S. Code § 1127
The term “certification mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person other than its owner, or
(2) ....
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services...
Trademarks
Certification Marks
TMEP 1306 Certification Marks
Trademarks
Certification Marks
15 USC § 1064(5)(B) - Certifying orgs may not produce goods or services
15 USC § 1064(5)(C) - Restricted use for purposes of certification only
15 USC § 1064(5)(D) May not discriminately refuse to certify goods or services that maintain standards
Trademarks
Collective Marks
TMEP 1302 Collective Marks
15 U.S. Code § 1127
The term “collective mark” means a trademark or service mark
(1) used by the members of a cooperative, an association, or other collective group or organization, or
(2) ....
includes marks indicating membership in a union, an association, or other organization.
Trademarks
Collective Marks
TMEP 1302 Collective Marks
Wrinkles
Trademarks
Certification & Collective Marks
What about secondary meaning?
The issue... is whether the public understands that goods bearing the mark come only from the region named in the mark, not whether the public is expressly aware of the certification function of the mark per se.
TMEP 1306.05(a)
Trademarks
Special Rules
Surnames
15 U.S. Code § 1052(e)(4)/(f)
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(e) Consists of a mark which
(4) is
primarily merely
a surname
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.
Trademarks
Surnames
Primarily Merely a Surname?
TTAB Five Factor Test
(1) whether the surname is rare;
(2) whether the term is the surname of anyone connected with the applicant;
(3) whether the term has any recognized meaning other than as a surname;
(4) whether it has the “look and feel” of a surname;
(5) [in cases of stylized, rather than standard character marks,] whether the stylization of lettering is distinctive enough to create a separate commercial impression.
Trademarks
Surnames
What about historical surnames?
A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person.”
TMEP §1211.01(a)(iv)
Trademarks
Special Rules
Foreign Equivalents
The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself
Doctrine of Foreign Equivalents
TMEP §1209.03(g)
Trademarks
Only apply when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent
Doctrine of Foreign Equivalents
Exceptions
1-
2-
3-
Foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes
Marks made up of a a foreign language term used with an English term may be registrable if the commercial impression created by the combination differs from that which would be created by two English words
Trademarks
Special Rules
Acronyms
General Rule
TMEP §1209.03(h)
1-
The wording it stands for is merely descriptive of or generic as to the goods or services, and
2-
relevant purchasers understand the acronym to be “substantially synonymous” with the merely descriptive or generic wording it represents
Trademarks
Special Rules
Domain Names and Top-Level Domain Designations
General Rule
TMEP §1209.03(m)
1-
Trademark is unprotectable if it consists simply of a generic term followed by a top-level domain designator, and
2-
protectable only upon a showing of secondary meaning if the mark consists of a merely descriptive term followed by a TLD designator
Trademarks
Acquired Distinctiveness of Source
Secondary Meaning
List of circuit tests on page 30&31
Trademarks
Acquired Distinctiveness of Source
Frosty Treats Inc. v. Sony Computer Entertainment America
426 F.3d 1001 (8th Cir. 2005)
Trademarks
Acquired Distinctiveness of Source
Frosty Treats v. Sony
Would this be different?
Trademarks
Acquired Distinctiveness of Source
Cartier, Inc. v. Four Star Jewelry Creations, Inc.
348 F.Supp.2d 217 (S.D.N.Y. 2004)
Trademarks
Certification & Collective Marks
https://www.socrative.com/
Which of the following BEST describes the difference between a collective mark and a trademark?
C- A collective mark identifies the user as a member of an organization.
Trademarks
Certification Marks
https://www.socrative.com/
Donster, LLC owns the certification mark “X-stuff” which it uses in connection with home electronic products. Which of the following BEST describes those who can use Donster’s “X-stuff” mark on their goods?
D- All home electronic producers meeting Donster’s certification standards.
Trademarks
Collective Marks
https://www.socrative.com/
Ultra, Inc. performs a range of business management tasks such as sales tracking, inventory control, accounting, and personnel management under the Exacta mark. All of Ultra's services meet the extremely high standards of reliability established by the Alliance of Business Product Producers (ASPP) of which Ultra is a member. Ultra uses both the ASPP membership badge and ASPP-compliant-logo in its Exacta advertising. Assume that Exact, the ASPP membership badge and the ASPP-compliant-log all qualify as marks.

What kind of mark is the ASPP membership badge?
C- A collective mark.
Trademarks
Special Rules
https://www.socrative.com/
Import, S.A. has selected the French word "café" for its premium ground roast coffee. How will that mark MOST LIKELY be classified on the spectrum of distinctiveness?
D- Generic
Full transcript