Shortly after the examination process has begun, the applicant may receive an Office Action citing one or more reasons why the application cannot proceed. The applicant then has six months to respond or allow the application to become abandoned.
The examiner first looks at the formal aspects of the application to ensure it satisfies the basic procedural requirements. This includes such matters as checking that the listed goods or services fall within the specified international class, that the goods or services are properly identified and the classes are in descending order, that the mark and the specimen correspond, that the drawing of the mark is proper, that word marks include an English translation when appropriate, that applications based on a foreign registration is properly supported, and that descriptive or generic terms in the mark are disclaimed. An experienced trademark attorney can minimize the occurrence of these types of rejections and expedite the application process. A trademark attorney can alse ensure that proper responses are submitted so that one's trademark is protected to the fullest extent possible.
The examiner then turns his eye to the substantive review of the trademark itself. This type of review focuses on statutory reasons that would prohibit the granting of rights due to the nature of the proposed trademark itself. These bases for denial of one's application can be difficult to overcome and require the assistance of a trademark attorney for both analyzing the possibilities of overcoming the rejection and crafting the response. These bases can be found in section 2 of the Lanham Act (15 U.S.C. 1052). They include the following:
Section 2(d) - Likelihood of Confusion
The fundamental reason for trademark laws is to protect the consumer. In the marketplace, consumers encounter a great variety of goods and services. In order to distinguish them, they focus on symbols connected to these goods and services such as brand names or logos. These symbols allow consumers to associate a particular good or service with a source (i.e. manufacturer or service provider). By doing so, the consumer can come to expect a particular standard of quality in the goods or services offered by that source. It is that expectancy that trademark law is intended to protect.
To do so, not more than one source should use a given trademark. The statute provides that a trademark will be denied registration if "it consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods [or services] of the applicant, to cause confusion, or to cause mistake, or to deceive." Thus, the examiner will perform a thorough search of the Patent and Trademark Office's Registers to determine if is any trademark registration or pending application for the same or similar mark that encompasses the same or related goods or services. If any such mark is found, the examiner will issue an Office Action rejecting the application based on likelihood of confusion.
These rejections are difficult to overcome and require the expertise of a trademark attorney to evaluate and to draft a legal argument citing authorities and providing evidence. The crux of most arguments will be a comparative analysis stressing the differences of the commercial impressions (i.e. sight, sound, and meaning) inherent to the trademarks at issue as well as the differences in the goods or services covered by the marks. Depending on the attorney's research about the nature of the products or services, arguments will also be presented addressing differences in the channels of trade used and in the sophistication of the target buyers. Research may also reveal that certain elements of the cited mark are common within the industry and should not form the basis for a rejection as consumers are accustomed to encountering said elements in the marketplace.
This type of rejection is the most common of the substantive rejections. Avoiding this type of rejection is one of the goals of performing a trademark availability search.
Section 2(e) - Descriptiveness
Consumers need to be informed about the product or service they are purchasing. In order to do this, manufacturers or service providers must be able to use certain words or symbols that convey descriptive information about their goods or services.
The statute provides that a trademark will be denied registration if it "consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them . . . (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional. Thus, there are five different ways in which the public can understand a mark to be descriptive.
The examiner will conduct research regarding what the public's understanding is of the term or symbol used in the mark. If the examiner deems the mark descriptive, then he or she will issue a rejection.
The first type of descriptiveness relates to marks that describe a characteristic, purpose, function, quality, or ingredient of the good or service. The second and third types of descriptiveness refers to marks that incorporate geographic terms, allowing businesses to truthfully state the location of origin of their goods or services. The fourth form of descriptiveness is refers to persons using their name in connection with their business. The last type of descriptiveness is usually an obstacle for non-traditional marks like product packaging or the form of the product itself (known as trade dress). Much like the other descriptive obstacles discussed, this prevents a business from appropriating a design or element that competitors would need to sell their products. It also prevents business from using trademark law as a type of ever-lasting patent.
Overcoming these rejections can be accomplished through several means, which may involve legal arguments. A trademark attorney can determine if the trademark applicant can avail itself of the doctrine of acquired distinctiveness embodied in section 2(f). A showing of acquired distinctiveness would overcome this type of rejection. After analyzing the examiner's position, a trademark attorney may determine that best course of action is to accept the examiner's position and request that trademark be allowed to be registered on the Supplemental Register instead of the Principal (a form of trademark registration that conveys fewer, though imporant, rights than the Principal).
Of course, a skilled trademark attorney can also determine whether arguments could be presented to persuade the trademark examiner that the consumer's understanding of the mark is not a descriptive one. It may be that the allegedly descriptive components of the mark may have an alternate meaning to target consumer groups besides the descriptive meaning or that the primary meaning of the mark is not geographic.
Less common rejections for which an attorney may be required follow:
Section 2(a) - Deceptive, disparaging, or scandalous trade marks
This section of the statute incorporates several bases for rejecting a trademark application. If a trademark would give the impression that the good or service has greater merit or quality than it actually has and that trademark would induce consumers to purchase the item, then it is deceptive.
The statute also prohibits the registration of disparaging or scandalous marks. These are marks that either ridicule another's trademark or create disrepute or contempt among a substantial group.
These types of rejections are difficult to overcome. A trademark attorney should be consulted.
Section 2(b) - Government Insignias
A trademark application that incorporates a flag or coat of arms or insignia of a country, state, or municipality will be rejected. This is nearly an absolute prohibition. However, there are ways to get around it.
Section 2(c) - Names of Individuals
This statutory provision prevents applicants from registering a mark that identifies any particular living individual by any means (e.g. name, portrait, etc.). One can overcome this obstacle by obtaining the consent of the individual. The rule also applies to deceased Presidents during the lifetime of the President's widow.
It is common to receive an Office Action that incorporates more than one of the above bases for rejection. Upon receiving such an Office Action, one should contact a trademark attorney to review the rejection and determine what options are available.
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Cruz & Alcoba, PLLC
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