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The Trademark Modernization of 2020 (“TMA”) was signed into law on December 27, 2020, as part of the COVID-19 relief and government funding bill. It will be fully implemented and take effect on December 27, 2021. TMA brought some remarkable changes to the United States Trademark Act of 1946, a.k.a. the Lanham Act, that will significantly affect brand owners in the U.S.

TMA Codifies Rules for the “Letters of Protest” Practice

There has been a long-standing yet not well-known practice of the USPTO, called the “letter of protest,” which allows third parties to submit evidence to the USPTO prior to registration, regarding a trademark’s registrability. Before the TMA, the USPTO did not have a formal process in place for submitting or reviewing these letters of protest, and it has resulted in the underutilization of this process. The TMA formalizes this letter of protest process for submitting evidence against pending third-party trademark applications by giving it statutory authority. The letter of protest submissions must identify each legal ground for an examining attorney to refuse registration or issue a requirement, include evidence that supports those grounds, and a concise description for each piece of supporting evidence. Following the passage of the TMA, the USPTO issued rules setting out the letter of protest procedures and a $50.00 fee for these submissions that went into effect on January 2, 2021. TMA requires the USPTO to act on submissions of letters of protest within two months of receipt. 

The codified letter of protest process under the TMA provides third-parties with a simpler and cheaper procedure compared to the traditional opposition procedure, which limits third parties believing that they may be damaged by the federal registration of a mark to file an opposition during a 30-day opposition period occurring just before registration of the mark in question and pay the expensive opposition filing fees (increased to $600.00 per class from $400.00 this year).

  • Takeaway: Any brand owner now may use this simpler and inexpensive formal process to attempt to intervene in a third-party application for a trademark that may conflict with your mark, or that you believe should otherwise be refused registration, by asking the USPTO to consider evidence that it may not otherwise have in the examination record. On the other hand, the letter of protest process may also be disadvantageous to some brand owners by making it more difficult to secure a trademark registration. To help make the most of this new process, brand owners should consider setting up trademark watch services that alert the brand owner to pending applications for marks that may conflict with the brand owner’s mark.

TMA Enables the USPTO to Shorten Office Action Response Deadlines to Anywhere Between 2 Months and 6 Months

In order to free the USPTO trademark register from numerous illegitimate trademark applications that are not actually used in the U.S. commerce, TMA gives the USPTO the authority to set office action response periods that are shorter than the current six-month response time, but not less than 60 days from the Office Action issuance date. If needed, the applicant may request to extend the shortened response deadline to up to six months.

  • Takeaway: Brand owners now must pay special attention to the actual response deadline upon receipt of an Office Action, as we may start seeing much shorter response periods than the six-month response deadline that we are used to.

TMA Creates New Ex Parte Expungement and Reexamination Proceedings as New Methods for Seeking Cancellation of a Third-party Trademark Registration

Before the passage of the TMA, the USPTO permits inter-parte Cancellation proceedings that are similar to court litigation against trademark registrations, which occur before the Trademark Trial and Appeal Board (TTAB). There are a number of grounds on which someone may petition to cancel a third-party registration, including the registration owner’s abandonment or lack of use of the registered mark in interstate commerce.  

TMA provides a new post-registration procedure for ex parte expungement of certain improperly granted registrations. Specifically, it allows anyone to petition the USPTO to expunge a registration, either in whole or in part, where there are specific goods or services listed in the registration for which the trademark has never been used in U.S. commerce. This new procedure must be brought between three to ten years after the registration date.

On the other hand, a reexamination proceeding may be initiated against a registration any time before the fifth year following the registration date for any registration based on use in commerce. The new trademark reexamination procedure provides a process for challenging registrations based upon a false, but not necessarily fraudulent, declaration of the mark’s use in association with the goods and services identified in the registration. When preparing a trademark application, applicants often include many (or all) of the goods and services that fall within the “class” of goods or services initially selected by the applicant. Trademark applicants often try to include as many goods and services as possible under the same class because their filing fee covers the registration of a mark under the entire class. However, this practice violates the spirit of the law, which requires actual use of the mark in association with each good or service identified in the registration. To rectify the proliferation of overzealous registrations resulting from this practice, TMA’s reexamination procedure allows for the cancellation from the registration, each good or service with which the mark was not being used as of the filing date of the mark’s declaration of use.

For both the Ex Parte Expungement and Reexamination proceedings, the USPTO’s decision to cancel a registration is appealable, and these proceedings may be initiated against registrations that registered before or after enactment of the TMA.

  • Takeaway: It is critical for brand owners to make sure that they actually provide all the goods and services listed in their trademark registrations, or be exposed to the risk of losing part or all of their registrations for lack of use in commerce.

TMA Restores the Rebuttable Presumption of Irreparable Harm for Plaintiffs Seeking Injunctive Relief in Trademark Infringement Cases.

Before TMA, in order for a trademark infringement plaintiff to obtain a court-ordered injunction against a defendant to stop the defendant from continuing to use the disputed mark, the plaintiff must prove several elements, including that the plaintiff will be irreparably harmed without the injunction. In recent years, the federal circuit courts in the United States have been split on whether the irreparable harm element should be presumed in trademark infringement cases where the court has found either infringement (for a permanent injunction) or that the plaintiff is likely to be successful on the merits of its infringement claim (for a preliminary injunction).

The TMA resolves the circuit split by codifying into law that trademark infringement plaintiffs shall be entitled to a rebuttable presumption of irreparable harm without the injunction upon a finding of trademark infringement or likelihood of success on the merits, depending on whether the plaintiff is seeking a permanent or preliminary injunction.

  • Takeaway: Brand owners now have a reduced evidentiary burden for obtaining injunctive relief to protect their trademark rights. A brand owner who proves infringement will enjoy a favorable legal presumption that the harm caused by continued infringement will be irreparable.

If you need help with registering a new trademark with the USPTO, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to schedule a free initial consultation! 

It is the new year and a lot of us resolved to work out more and get stronger. But don’t limit your strength training to just your muscles–your trademarks deserve a little boost as well!?

Why is trademark strength important?

U.S. trademark law recognizes a spectrum of distinctiveness that provides a sliding scale of trademark protectability. Judge Pierre Leval defined trademark strength as the amount of “legal muscle” possessed by a given mark.

The stronger the mark, the more uses the trademark owner may exclude from the marketplace through a trademark infringement or dilution action. Stronger marks are able to exclude more similar marks from the marketplace. Such increases can happen along two fronts: “appearance” of the trademark and the “goods or services” the trademark protects. The stronger a registered trademark is on the “appearance” dimension, the less similar the look, sound, and spelling a third-party’s mark must be in order to risk being excluded by the registered trademark. The stronger a registered trademark is on the “goods or services” dimension, the less similar the goods or services offered by a competitor using the same or similar marks must be in order to risk being excluded by the registered trademark.

A trademark’s relative strength or weakness will also have a direct bearing on its performance in the market. A mark that is highly distinctive functions as a strong mark, identifying the owner as the source of the covered products or services. When a mark is not distinctive or it may already be used by others on or in connection with different products or services, the mark is considered weak.

Therefore, trademark strength is extremely important for trademark owners as it has a strong impact on the value of the trademarks to their owners. It is generally easier and less costly for a trademark owner to acquire and enforce exclusive rights in a strong trademark that is distinctive and unique than one that is descriptive or highly diluted, i.e., widely used.

How is a mark’s strength or weakness gauged?

The relative strength or weakness of a trademark may be gauged by placing the trademark on a spectrum. The types of trademarks discussed below range from the strongest to the weakest.

  • Fanciful or Coined Marks. A fanciful or coined mark is at the strongest end of the spectrum because it is inherently distinctive. Such a mark consists of an invented word that is a combination of letters that has no meaning. For example: GOOGLE for online services, PEPSI for soft drinks, ROLEX for watches, and XEROX for copiers. Since a fanciful or coined mark has no inherent meaning, in the beginning, a bigger effort in terms of advertising is necessary in order to educate the public as to the relationship between the invented word and the owner’s product or service. However, these marks enjoy the broadest scope of protection against third-party use.
  • Arbitrary Marks. An arbitrary mark is composed of a word or words that have a common meaning in the language of the relevant jurisdiction; however, that meaning is unrelated to the goods or services for which the mark is used. Arbitrary marks, such as CAMEL for cigarettes and APPLE for computers, are considered highly distinctive in identifying and distinguishing products or services. As with fanciful or coined marks, the public must be educated as to the association of the arbitrary mark with the relevant product or service, but the scope of protection obtained is very broad.
  • Suggestive Marks. A suggestive mark gives consumers some sense of the nature of the products or services that a business will provide without actually describing the product or service. A suggestive mark is one that requires “a mental leap from the mark to the product”, or, “the consumer’s imagination, thought, and perception to reach a conclusion as to the nature of the goods or services.” Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 662 (4th Cir. 2018). Examples of suggestive marks are AIRBUS for airplanes and NETFLIX for streaming services. Suggestive marks can possess an inherent element of sales appeal and will require less education of the public than coined or arbitrary marks; for this reason, generally, suggestive marks are entitled to less-extensive protection.
  • Descriptive Marks. In general, a descriptive mark is a word (or words) that merely describes a product or that contains ingredients or attributes that are too weak to function as a trademark. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Such a mark is very unlikely to be granted registration, as the phrase merely describes an attribute of the product. Words that merely describe an attribute, feature, end result, or use of the product, or the persons employed in its production, generally are not granted trademark protection. Merely laudatory terms such as “best” or “quality” also are generally not registrable. In some jurisdictions, surnames are treated as descriptive marks. What is initially a descriptive word may later become protectable as a trademark if it acquires secondary meaning. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product. An example of a descriptive word that has acquired a secondary meaning and become protectable as a trademark is SHARP for televisions.
  • Generic Words. A generic word can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

How to select a strong trademark?

As a trademark applicant, you should try your best to come up with a strong new trademark that is inherently distinctive. The strongest types of trademarks are (1) fanciful or coined marks, such as EXXON for petroleum products, KODAK for photography company; and (2) arbitrary marks, such as AMAZON for retail services, APPLE for computers, SHELL for gasoline, and BLACKBERRY for cell phones. 

There are many resources online that can help you with the naming process of your brand. For example, what we found on this website: https://guide.onym.co/ or the books like “Brand Thinking and Other Noble Pursuits.” Check out our other blog post on how to choose a business name here

If you need help with determining your proposed trademark’s strength, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to schedule a free initial consultation! 

Did you know that color, sound, scent, and hashtags can be protected by trademarks? 

Traditionally, trademarks are words or symbols used to identify the source of a product or service. Most trademarks are word marks such as COCA-COLA; or design marks/logos such as ; and slogans, such as Coca-Cola’s “It’s The Real Thing.”

However, the list of things that can be registered as trademarks under the Lanham Act is actually very broad. There are practically no limitations to the subject matter of registrable marks, so long as the mark is capable of acting as an identifier of source, whether because it is inherently distinctive, or it has acquired distinctiveness and the mark is not functional.

Here is a list of non-traditional trademarks: 

Color Mark

The registrability of a color mark depends on the manner in which the proposed color mark is used. Color takes on the characteristics of the object or surface to which it is applied, and the commercial impression of color will change accordingly. Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. 

Sound and Scent Mark 

A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definite shape or arrangement” and “create in the listener’s mind an association of the sound” with a good or service. Some famous sound trademarks include the iconic ticking of 60 Minutes’ stopwatch that CBS trademarked and the sound of a lightsaber, FYI, is described as “an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound.”

Some scents that are protected by trademarks include the scent of Play-Doh, which is described as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough;” and the “flowery musk scent” in verizon stores.

A trademark applicant that wishes to register a sound or a scent trademark is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter.  For these types of marks, the applicant must submit a detailed description of the mark.

Hashtag Mark

A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#”. Hashtags are often used on social networking sites to identify or facilitate a search for a keyword or topic of interest. 

As hashtags became increasingly more popular on social media, in 2013 the United States Patent and Trademark Office (USPTO) recognized hashtags as registrable trademarks “only if [the mark] functions as an identifier of the source of the applicant’s goods or services.” The addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Some examples of hashtag mark the USPTO has granted registration include: 

#EVERYDAYMADEWELL for “online retail store and retail store services in the fields of clothing, footwear, bags, sunglasses, jewelry, watches, and fashion accessories”

#HOWDOYOUKFC for “restaurant services

#THESELFIE for “photography and videography equipment, namely, remote shutter releases

Unique challenges applicants of non-traditional trademarks face

Federal registration of trademarks generally confers certain benefits to the trademark owner However, non-traditional trademarks face unique challenges that traditional trademarks don’t face in registering with the USPTO. Non-traditional trademarks can take longer and cost more to register and in addition to the distinctiveness and non-functionality hurdles, challenges exist in clearing the marks for registration due to the complexity involved in searching Non-traditional trademarks on TESS; fulfilling technical requirements for registration involved in providing the appropriate drawing and specimens for marks that are not easily depicted on paper; and the unique unpredictability due to a lack of successful precedents to provide guidance. Even if it is registered, a non-traditional trademark may be difficult to enforce. Furthermore, the inherent challenges in searching non-traditional marks make it hard to monitor infringement of the mark. 

If you need help with your non-traditional trademark, contact us today to discuss your trademark protection strategies with an experienced trademark practitioner.

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