‘Typical’ Brand Name Refusals

(These are actual USPTO trademark application refusals (office actions) with some redactions)



DISCLAIMER

The following disclaimer is required:

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:


No claim is made to the exclusive right to use “BRAND” apart from the mark as shown.


See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).  The term “brand” describes a product line, e.g.,  a popular brand of soap.


The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).


A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 TRADENAME USAGE REFUSAL-FAILURE TO FUNCTION AS A TRADEMARK

In the initial office action (as to the statement of use) dated June  13, 200x, the examining attorney refused registration because the proposed mark, as used on the specimen of record, is used only as a trade name to identify applicant’s business and does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 1127; see In re Walker Process Equip., Inc., 233 F.2d 329, 110 USPQ 41 (C.C.P.A. 1956); TMEP §1202.01.  Although a designation may function as both a trade name and a trademark, the Trademark Act does not provide for registration of matter that functions solely as a trade name.  In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994); In re Univar Corp., 20 USPQ2d 1865, 1867 (TTAB 1991).


By way of response, the applicant argues use of the mark shows source indicating, trademark usage.  Specifically notes the wording XXXXX BRAND appears on a packaging label in which the goods are sold.  However, the fact that the proposed mark appears on packaging does not render trade name matter a trademark.  The determination of whether a trade name also functions as a trademark is based on a consideration of the manner in which the proposed mark is used and the probable impact on purchasers, as evidenced by the specimen(s) and any other information of record. Diamond Hill Farms, 32 USPQ2d at 1384.  The specimen shows the proposed mark used only to identify the applicant’s company and company address, using the same nondescript font for each.  The proposed mark is only used in this regard and is not used in such a manner as to distinguish itself as source indicator of the goods.  TMEP section 1212.01.


The applicant further urges that the use of the wording BRAND shows source indicating use.  However, the term BRAND is defined as a “trademark or distinctive name identifying a product or a manufacturer.”  See the attached entry from The American Heritage® Dictionary of the English Language, Fourth Edition.   As such the term may identify a company or manufacturer, that is, trade name usage, as well as a product, that is, trademark usage.


As shown on the specimen, with the wording in a small nondescript font in a corner of the label, between more the more prominent display of the net weight and a product serial number of some sort, in lettering smaller than the extensive and comparatively more prominent list of product ingredients, the wording can only be seen as trade name usage.


The applicant may overcome this refusal by submitting a substitute specimen showing proper trademark usage for each class of goods verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  Pending receipt of the same, the trade name failure to function refusal is maintained and made FINAL.

MARK DOES NOT FUNCTION AS A TRADEMARK: IMPROPER SPECIMEN OF USE FOR SERVICES

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a service mark to indicate the source of the services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the mark in relation to the identified services.  The specimen shows the mark on a bag, but does not show use of the mark in connection with applicant’s actual advertising and marketing services.  The applicant must submit a specimen showing the mark as it is used in commerce in relation to the services.  37 C.F.R Section 2.56.  Examples of acceptable specimens are signs, brochures or advertisements that show the mark used in the sale or advertising of the services provided for others.  TMEP section 1301.04 et seq.


The trademark examining attorney will reconsider this refusal if applicant submits both (1) a substitute specimen showing use as a service mark, and (2) a written statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.


If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 


SUBSTANTIVE REFUSAL – MARK DOES NOT FUNCTION AS A TRADEMARK

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.


The proposed mark, as used on the specimen, does not function as a trademark because it appears in one of several circles on the front of the packaging.  The wording in each of the circles does not appear with a TM or any other designation indicating traditional trademark use.  It is unlikely that consumers would view wording in a series of circles on applicant’s packaging as a trademark for goods.


Applicant may respond to this refusal by submitting the following:

(1)   A substitute specimen showing the mark in use in commerce for the goods specified in the statement of use; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §§904.05, 904.07(b).  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.


Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.

 

SECTION 2(E)(1) REFUSAL – DESCRIPTIVE MARK

Registration is refused because the proposed mark merely describes a feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.


A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).


 In the instant case, applicant seeks registration of “BRAND JOURNALISM” for advertising and marketing services.  The term “journalism” is defined as “the collection and editing of news for presentation through the media”.  See the attached from Merriam-Webster Online.


 As evidenced by the identification of record, the applicant is providing information regarding various product brands to the public through the media.  Additionally, the term “brand journalism” is recognized as a type of marketing and advertising (please see the attached Internet evidence).  Therefore, the proposed mark merely describes a main feature of the applicant’s marketing and advertising services and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).

TRADEMARK ACT SECTION 2(e)(1) REFUSAL TO REGISTER

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.


A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).


The applicant applied to register the mark XXXXX BRAND RISK MANAGEMENT for, in part, ‘Business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution processes for others; Computer consultation in the field of computer security; Consulting services in the field of maintaining the security and integrity of databases; and Control of building environmental access and security systems; Identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet; and Personal security consultation; Providing pet identification tags; Security inspection services for others.’


These terms merely describes a feature, characteristic, purpose or function of the goods/services. The term XXXXX merely describes the scope of the services.  The term BRAND may be defined as “a trademark or distinctive name identifying a product or a manufacturer.” The terms RISK MANAGEMENT refer to the purpose of the services provided by applicant, namely consulting services to minimize security, credit or financial type risk to businesses.  See attached website evidence.   Therefore, this definition would describe a purpose, characteristic or feature of the goods cited by the applicant and applicant’s mark would be merely descriptive of the goods in the identification.  Accordingly, registration is refused under Trademark Act Section 2(e)(1) based on descriptiveness.


A mark which combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985).  However, the terms XXXXX, BRAND, RISK, and MANAGEMENT, when joined do not create a separate nondescriptive meaning.  Accordingly, the mark is not registrable on the Principal Register.


 Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

Answering Office Actions

There are no canned answers on how to answer office actions for the rejections received because there are no typical rejections, registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some rejections are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. It depends on what is being rejected and why.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law and do not qualify for common law protection because they lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning.


If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA) and/or Amendment to Allege Use (AAU)(after an Intent-to-Use application) may be less than what you think and the time saved may be months or years. Better yet, have Not Just Patents ® Legal Services prepare your application (including choosing the best specimens) from the beginning.


Not Just Patents ® Legal Services can assist your business in identifying, creating and managing your Intellectual Property Rights from the ground up. Call us at (651) 500-7590 with questions.


Intellectual Property may be one of the best ways to invest in your business, at the end of the day getting the right help may make a huge difference.



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