On My Mind Blog

Specimen of Hex-Shaped Dice Box

The U.S. Patent and Trademark Office (USPTO) generally refuses to register the configuration of a product as a trademark when that the configuration either is functional or does not identify a single source.  The Trademark Trial and Appeal Board (TTAB) usually affirms that refusal.

In the unusual case discussed below, the USPTO approved a configuration trademark.  That application was opposed upon publication, but the TTAB dismissed the opposition.  This case is instructive as to how to succeed in registering a product configuration trademark under appropriate circumstances.

About nine years ago, we posted a blog about “How a company name can be a trademark.”  Now, the Trademark Trial and Appeal Board (TTAB) has again clarified the reverse--a trade name used solely as a company designation cannot be registered as a trademark.

Many times, two marks have been found likely to be confused despite (1) the addition of a second word to the later mark (found not to overcome that mark’s use of the identical or similar word used by the prior mark), or (2) different design features (which were found to be dominated by the identical or similar word portions of the marks). 

However, a different result was upheld by the U.S. Court of Appeals for the Federal Circuit (“CAFC”) in affirming a decision by the Trademark Trial and Appeal Board (“TTAB”) that the marks-in-issue were not likely to cause confusion.

                          Opposer’s Design Mark                                         Applicant’s Design Mark

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.