Earlier this month, the Lanham Act saw its 75th Anniversary. On July 5th, 1947, the Lanham Act, also known as the Trademark Act, went into effect after being signed by President Harry S. Truman the year prior. The Lanham Act created the modern day national trademark registration system and enforced federal protections for trademark holders. Expanded upon throughout the decades, it has been a critical piece of trademark legislation for the last seventy-five years.
Trademarks are around us every day – they present themselves on the toothpaste we use in the morning to the garbage bags we take out at night. The idea of trademarks dates back to before the common era, wherein manufacturers of goods would leave identifying symbols on their products. Artifacts from Rome have been found with engraved marks of initials and names of what are presumed to be the makers. Historians note that blacksmiths who made swords for the Roman Empire were the first to use trademarks.
Prior to the Lanham Act, federally enforced trademark legislation was somewhat ineffective and state statutes held most of the burden. In addition, trademarks did not expire, regardless of their use. Once the Lanham Act was enacted, it provided the procedures for federally registering trademarks and maintaining those registrations. The Lanham Act also gives trademark holders federal jurisdiction in enforcing their rights to the mark against infringers, including unregistered trademark infringement. In addition, the Lanham Act provides a cause of action for trademark dilution, cybersquatting, unfair competition and false advertising. An example of the use of the Lanham Act in enforcing rights against false advertising claims is seen in General Mills, Inc. v. Chobani, LLC, 158 F. Supp. 3d 106 (N.D.N.Y. 2016); Chobani, LLC v. Dannon Company, Inc., 157 F. Supp. 3d 190 (N.D.N.Y. 2016). In 2016, yogurt makers Dannon and General Mills (Yoplait) sued their yogurt competitor Chobani for violations under the Lanham Act for commercials that featured products from the brands in poor light. The ads mentioned ingredients such as sucralose being used in Dannon Light & Fit Greek yogurt and potassium sorbate in Yoplait Greek 100 and implied both were not safe for consumptions; and the court ordered Chobani to pull the ads containing the false message.
The Lanham Act is an important piece of legislation in the world of trademarks. The United States Patent and Trademark Office (USPTO) celebrates the anniversary today with a webinar featuring guest speakers such as Senator Chuck Grassley of Iowa, Senator Chris Coons of Delaware, Representative Ted Deutch of Florida and more.
For more information about trademarks, please contact Kim Grimsley at firstname.lastname@example.org.
On June 30, 2020, the United States Supreme Court rendered its opinion in the landmark trademark case United States Patent and Trademark Office, et al. v. Booking .com.591 U.S. (2020). This decision may be helpful for those who wish to seek a federal trademark registration where the primary mark includes a top level domain (TLD) identifier, such as “.com” and where the domain name itself may be generic or highly descriptive of the service offered at that domain. Prior to this decision the United States Patent and Trademark Office (PTO) had taken the position that such marks would not be eligible for registration because of the generic nature of the term(s) preceding the TLD portion of the domain (the portion preceding .com). However, certain issues, such as the issue of “consumer perception,” as discussed below, will most certainly be the subject of debate and dispute between these trademark applicants and the PTO.
In this case the online travel agency Booking.com sought to register the trademark BOOKING.COM related to its website for lodging reservations and related services and was denied registration by the PTO. The PTO determined that BOOKING.COM was a generic term not entitled to federal trademark registration. Generic terms can never be registered because they merely identify the class of service or product being offered and not the source of that product or service. Accordingly, it was the PTO’s position that BOOKING merely identified the class of service of making or “booking” a lodging reservation and .COM referred to a website.
Booking.com appealed the PTO’s decision to the District Court which ruled in Booking.com’s favor. The PTO then appealed this decision to the Court of Appeals which also ruled in Booking.com’s favor. The PTO made its final appeal to the Supreme Court which agreed to hear the case.
Affirming both the District Court and Court of Appeals, the Supreme Court, in an 8-1 decision, held that “[a] term styled “generic.com” is a generic name for a class of goods or services only if [emphasis added] the term has that meaning to consumers.” Thus, if it is determined that consumers do not find “generic.com” to be generic to a class of goods or services, but rather unique to goods or services of the entity seeking the trademark, the mark is eligible for registration. In this case, it was determined by the lower courts and uncontested by the PTO before the Supreme Court that consumers did not think BOOKING.COM referred to online hotel-registrations as a class, but rather specifically to the online travel agency Booking.com. Thus, BOOKING.COM, for online lodging registration services, is entitled to federal trademark protection on the principal trademark registry.
As a result of this Supreme Court decision, consumer perception will determine whether a “generic.com” mark can be a registered trademark. The question that will be asked with every such trademark application is “what do consumers think ‘generic.com’ means?” This begs the question, “how do we determine what consumers think something means?” The Supreme Court gives us some insight into this issue by stating that “[e]vidence…can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.” The Supreme Court does offer a word of caution with regard to surveys. “Surveys can be helpful evidence of consumer perception but require care in their design and interpretation.”
There will now likely be a flurry of trademark applications for “generic.com” marks in the wake of the Supreme Court’s decision. While the ruling is certainly favorable to trademark applicants, consumer perception and the method(s) used to try and determine what consumers think something means should be carefully considered beforehand.
Have you been sitting in your house, properly adhering to stay-at-home standards, and thinking to yourself, “I can’t wait to get some sweet coronavirus merch?” That is at least what recent trademark filers have assumed you were thinking, anyway. Since the beginning of 2020, fifty-three (53) trademark applications have been filed with the United States Patent and Trademark Office (PTO) containing the word “CORONAVIRUS”, and with one hundred seventy-six (176) more being filed containing “COVID.”
The majority of the trademark applications being filed are for printed materials like t-shirts or bumper stickers. “I SURVIVED THE CORONOAVIRUS,” “I SURVIVED COVID-19,” “CATS AGAINST COVID-19,” and “CORONAVIRUS FREE” are just a few examples. A quick search on the website Redbubble, a place where artists upload their designs to be printed on various items and sold, shows a litany of products already on the market.
While it is understandable that budding entrepreneurs may be looking to the current pandemic as a way to make a profit during this difficult economic time and achieve something positive, not every use of “CORONAVIRUS” or “COVID-19” is entitled to federal trademark protection. So, it seems like a good time to take a brief moment to highlight several of the issues you should consider as you seek federal trademark protection, coronavirus-related or otherwise.
First: what is a trademark? It is not just a clever saying – although that could be the beginning concept– but more is needed to establish trademark rights A trademark is a word, phrase, design or combination of both that is used in connection with goods or services and identifies and distinguishes the source of the good or services of one party from those of others. Consumers, for example, want to know when they’re drinking a genuine COCA-COLA product, not someone else’s inferior product with an infringing name slapped on it. Thus, consumers associate you as the source of a product or a service when your trademark appears on that product or service. By applying your trademark to your products or services, for example on a clothing line or a video game product, or in connection with consulting services or health-related services, you are building rights in your trademark.
Also, at the time you file your trademark application, you must either (1) be using the mark in a trademark sense in interstate commerce (that is, actually selling your goods or rendering services to customers between more than one state or U.S. territory, or in commerce between the U.S. and another country); or (2) have a bona fide good faith intent to do so. You cannot obtain a registered trademark by merely requesting a “place holder” so no one else can use the mark on a particular good or service when you do not have a bona fide good faith intent to use the mark. To show a bona fide good faith intent, you should have documentation to back up your intent, such as marketing plans and internal business meeting memoranda.
Further, prior to filing, it would be in your best interest to make sure the mark is available for registration. If a third party has started using an identical or confusingly similar trademark before you in connection with the same or related goods or services, they would be the senior user of the mark and would have priority rights over you. The United States is a use-based nation, meaning that trademark rights are created through the use of the trademark, and not necessarily through registration. For this reason, a trademark search for the availability of a trademark – although not mandatory – is extremely beneficial in determining if your trademark is eligible for registration.
This brings us to an important point regarding use of the trademark. When a trademark is applied to your goods or services, the mark should be used in a “trademark sense” as opposed to an ornamental sense. For example, a t-shirt design with the trademark placed largely front and center would not be considered a trademark use; rather, it would be seen merely as an ornamental use. To function as a trademark, the mark would need to be displayed in a certain way for example, a properly used trademark would be displayed on clothing on its tag or label. The mark could also be displayed on the clothing item itself, usually in a smaller size above the breast, behind the neck, or son the arm of the shirt). For services, the trademark would be used in connection with the services – for instance, on one’s website or brochures describing the services provided under the trademark. A trademark will not register on the Patent and Trademark Office’s Principal Register (where distinctive marks are registered) if it considered merely decorative or “ornamental.”
Also, when considering whether to seek trademark registration, you may wish to consider how long you intend to use the mark, as the registration process can take 9-12 months if all goes smoothly at the U.S. Patent and Trademark Office and there are no issues with the mark. During that period, you can use the TM symbol on your trademark, but you cannot use the registration symbol until the U.S. Patent and Trademark Office actually issues a registration certificate. Further, there are continued costs associated with maintaining the trademark after registration. As an example, while we may all be thinking about COVID-19 now, hopefully down the road when we are all allowed to see each other’s bright and shining faces in public again, the initial phase of “covidwear” may fade out (as we hope the virus phases out), and you may no longer have a viable business interest in selling your goods or services under that mark. If you have any questions, please contact Kimberly Grimsley email@example.com or Jennifer Mumm firstname.lastname@example.org at Oliver & Grimsley.
On March 27, 2020, the President signed the Coronavirus Aid, Relief and Economic Security Act (CARES Act) – This Act is to provide the various areas in which the government is providing emergency assistance and health care to individuals, families and businesses impacted by COVID-19. Under the CARES Act, the United States Patent and Trademark Office (the “PTO”) has provided for the extension of certain trademark filing deadlines between March 27th and April 30th, as the PTO has determined that practitioners, applicants, registrants and others associated with PTO filings and fees are being impacted and may be unable to make timely filings due to the outbreak.
In particular, the PTO and the Trademark Trial and Appeal Board (TTAB) has provided that they are giving a 30-day extension for the following deadlines currently due between March 27, 2020 and April 30, 2020:
- Response to an Office Action, including Notices of Appeal from the final Office Action under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
- Statement of Use or Request for Extension of time to file a Statement of Use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
- Notice of Opposition or Request for Extension of Time to file a Notice of Opposition 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a);
- Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
- Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
- Transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
- An Affidavit of Use or Excusable Nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
- A Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- Affidavit of Use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).
There are other extensions available as well. For instance, TTAB has provided that if COVID-19 has caused a delay in a filing not mentioned above, a request (in an ex parte appeal) before the Board or a motion (for trial cases) for a reopening of a case may also be made.
Also, if a trademark application was abandoned or a trademark registration was canceled/expired under any of the deadlines listed above (due to an inability to respond to a trademark-related Office communication by its original deadline) because of the COVID-19 outbreak, the PTO will waive the revival and reinstatement fees.
Thus, filing one of the above documents will be considered timely provided that the filing is made within 30 days of the original due date and provided that the filing includes a statement that the delayed filing or payment was due to the COVID-19 outbreak. With regard to the type of circumstances that would be considered to effect a timely filing, the PTO has noted the following situations::
- Office closures,
- cash flow interruptions,
- inaccessibility of files or other materials,
- travel delays,
- personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.
The PTO and TTAB are providing information as to their extensions and information on frequently asked questions on its website at www.uspto.gov/coronavirus. The PTO will continue to evaluate the situation and will report if additional measure or extensions are put in place.
If you have any questions, please contact Kimberly Grimsley email@example.com or Jennifer Mumm firstname.lastname@example.org at Oliver & Grimsley.