A previous Blog post discussed “How to Preserve U.S. Rights in a Registered Trademark that is Not in Use.”
Now, a precedential decision by the Trademark Trial and Appeal Board (TTAB) is instructive as to the reverse—how to cancel a U.S. registration for an abandoned trademark.
In a recent Blog post, we suggested steps you might take in an appropriate case to surmount a blocking mark that consists of a verbal element identical or similar to your proposed mark, but for different goods or services that seem unrelated to yours.
When an existing trademark or service mark registration covers a mark identical or similar to your proposed mark, but the goods or services identified in the registration seem very different from yours, the registration nevertheless may block your application.
Here is an example of such a situation, followed by steps you might take to deal with it.
A non-English language mark may preclude U.S. registration of an English mark having the same meaning, as we previously wrote. But this “doctrine of foreign equivalents” is a guideline, not an absolute rule. It may not apply to a combination mark having an English component in addition to its non-English component.
There have been few applications to register a sound as a trademark for goods (as distinguished from a mark for services). In a precedential case, Duracell U.S. Operations, Inc. (“Duracell”) was successful in registering three musical notes, played at the end of announcements over retail store sound systems, as a trademark for batteries.
The Trademark Trial and Appeal Board (TTAB) appears to have increased the standard of evidence to support a refusal to register a slogan as a trademark, on the ground that it fails to function as a mark.
Merely offering your goods under a trademark on a website or in a store is insufficient to support an allegation that you have used your trademark in U.S. commerce for a trademark application. You must actually sell or transport the goods bearing the mark to an unrelated party through U.S. interstate (or foreign) commerce. Similarly, shipment of goods bearing the mark from a manufacturer to the trademark owner, without more, is not sufficiently public to qualify as use for a trademark application. These use requirements were clearly applied by the Trademark Trial and Appeal Board (TTAB), which cancelled a registration for nonuse.
If you happen to find yourself in Switzerland or France in search of gruyere cheese, you might be surprised to learn that it may taste a bit different from the gruyere you have come to know and enjoy in the US. You also might be surprised to learn that the term “gruyere” has different meanings in the EU and the US.
This is because the term “gruyere” is recognized under EU law as a protected designation of origin (PDO or AOP) and a protected geographical indication (PGI or IGP) since the alpine cow’s milk cheese product has been made according to a very specific aging and production process and has been produced in a specific location – the Gruyère regions of Switzerland and France - dating back to the early 12th century. Cheese that fails to meet these specifications is not allowed to be labeled as “gruyere.”
Brand owners who seek federal trademark protection in the United States Patent and Trademark Office (USPTO) have become targets for impersonators, imposters, scammers and others who use deceptive practices to seek to defraud them of funds.
This article is another Scam Alert to add to the ones we have circulated:
A foreign or domestic complainant in an opposition, cancellation or other proceeding against a U.S. trademark application or registration must have an interest that affects U.S. interstate or foreign commerce. This is commonly called having “standing.” Normally, this is a low threshold, but you can trip over it, especially if you are a non-U.S. complainant.