A domain name is part of a Uniform Resource Locator (“URL”), which is the address of a site or document on the Internet. A domain name is usually preceded in a URL by “http://www.” The “http://” refers to the protocol used to transfer information, and the “www” refers to World Wide Web, a graphical hypermedia interface for viewing and exchanging information. In general, a domain name is comprised of a second-level domain, a “dot,” and a top-level domain (“TLD”). The wording to the left of the “dot” is the second-level domain. A TLD is the string of letters that follows the last “.” or “dot.” Generic top-level domain names are .com, .info, .biz, .org, and .net.
Generally, when a trademark or service mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (“http://www.”) nor the gTLD has any source-indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. The average person familiar with the Internet recognizes the format for a domain name and understands that “http,” “www,” and a gTLD are a part of every URL.
However, in 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) authorized the launch of a program to introduce new gTLDs. Currently, there are over 100 different gTLDs. To the extent that some of the new gTLDs concomprise existing registered trademarks or service marks that are already strong source identifiers in other fields of use, some of the premises mentioned above may no longer hold true for such gTLDs (e.g., a gTLD consisting of a coined mark is not an abbreviation of an entity type or class of intended user of domain space). Where the wording following the “.” or “dot” is already used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. Accordingly, in some circumstances, a gTLD may have source-indicating significance.
As searchers, we need to pay attention to unique top-level domain names because those could possess trademark significance. However, the vast majority of top-level domain names still retain their non-source identifying significance.
The standard for trademark infringement and one of the bases to refuse registration of a mark is whether the proposed mark is likely to cause confusion with a registered mark or prior pending application. The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.
The examining attorney must conduct a search of USPTO records to determine whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a §2(d) refusal is an active registration. This why we previously discussed that considering dead registrations is largely a waste to time.
In the seminal case involving §2(d), In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and
- The relatedness of the goods or services as described in the application and registration(s).
Therefore, in any trademark search, it is critical to consider the relatedness of goods factor. And the only way to assess relatedness with any degree of certainty is to consider prior court decisions.
In a rare registration refusal reversal (try saying that three times fast) the Trademark Trial and Appeal Board in In re Biowish Technologies International Inc. found certain cleaning products to be unrelated. Yes, I said “unrelated.”
The applicant applied to register the mark BIOWISH GARD’N FRESH for “fruit and vegetable wash.” The examining attorney cited a prior registered mark for GARDEN FRESH in connection with “cleaning preparations for household purposes.” The examining attorney argued that a “household purpose” is broad enough to encompass washing fruits or vegetables. The Trademark Trial and Appeal Board disagreed.
The Board found that a “household purpose” is limited to cleaning the home not fruits and vegetables. And while both goods are for a cleaning product, that similarity alone was insufficient to conclude the goods at issue are related.
If you are a startup company, brands-in-a-box can be a big help when launching your new company. They offer everything you will need to create marketing collateral and an online presence for half the price of what you will pay for a custom brand identity. Even established companies may find some bargains searching these sites. You may have a specific identity in mind and find the name and design that are a perfect match for your vision.
Most brands in a box will suggest a particular industry that a pre-made name is intended for. But these sites are careful to remind any interested buyers that they have to do a trademark search first. And those sites that are not reminding interested buyers about this should be.
There is no trademark right that is in gross. In other words, there is no trademark right that extends to every good or service. And even if you are fortunate to some day have a famous mark for dilution purposes, there are limitations to the extent of a famous marks rights as well. Trademark rights apply to specific goods or services.
Before spending about $5,000 for a brand in a box, spend the $49.99 with BOB first to make sure what you are buying is something that you will be able to to use. If you are interested in a number of the marks, use BOB’s multi-name search functionality to get answers about those marks quickly. You can see BOB’s multi-name search funcationality in action by clicking HERE.
Time is a precious commodity, and nowadays we don’t seem to have enough of it. When it comes to business, saving time can translate into increased customer loyalty. Numerous studies have shown that customers value responsiveness when it comes to client relationships. If you are a trademark lawyer, that means quickly responding to client questions include requests to conduct trademark searches. If you are a branding firm, that means getting to an acceptable name quickly so the client can move forward with is business, product, or service. Click HERE to see how BOB can help with both large branding projects and HERE for the small ones.
Although creatives and trademark lawyers deal in the same subject matter, they often think of concepts in a similar, but different way. An example of this can be in the way dilution is understood. The Brand Marketing Blog posted about What is Brand Dilution? In the post, Colin Finkle make an interesting observation that brand dilution can occur through over extending a brand through line extensions if the extended product fails to live up to the quality of the original product.
Trademark lawyers, on the other hand, love to see brand extensions and to see those extensions reflect in applications filed with the United States Patent and Trademark Office. These extensions have the oppose of effect of creating trademark dilution increasing the conceptual strength of a mark.
Trademark lawyers are also concerned with the quality of any licensed goods for a different reason than brand dilution. Any trademark license that does not include quality control language or in situations where the licensor does not exercise actual quality control, the licensor risks losing its trademark rights all together because of naked licensing. The trademark owner has a legal obligation to ensure that any licensed goods or services maintain a consistent level of quality.
Where there is agreement between creatives and trademark lawyers when it comes to dilution is the negative effect of allowing similar marks owned by unrelated parties to co-exist in the marketplace. Brand managers and trademark lawyers alike need to actively police the marketplace to limit the amount of dilution any brand may experience.
The Trademark Trial and Appeal Board decided a case in the cosmetics industry. In In re Spatz Laboratories, the Trademark Trial and Appeal Board decided whether mascara was related to “eye shadow; eye shadow pigments; pigment powders for cosmetic use.” As in most likelihood of confusion cased decided by the Board, it reiterated that any determination of relatedness needs to be made on the identification of goods descriptions in the application. If those descriptions do not contain any limitations, then the Board will not read any limitations into the descriptions based on what may be happening in the real world marketplace.
The examining attorney relied on 15 third-party registration for a single mark that was registered for both mascara and eye shadow. As it has found in the past, the Board held that third-party registrations are probative of the relatedness of goods or services. The examining attorney also offered evidence of third-party websites offering both mascara and eye shadow for sale.
The applicant attempted to argue that cosmetics are purchased with care; thus, the sophistication of the cosmetic consumer would obviate any likelihood of confusion. However, the Board, focusing solely on the low price of cosmetics, concluded the opposite that consumers are unsophisticated.
Price is not the only factor determining the sophistication of a consumer. I would tend to agree with the applicant that cosmetic purchases are more involved than the Board’s portrayal of them as an impulse buy. However, the applicant likely did not offer any evidence to support the time a cosmetic consumer will spend inspecting different products before ultimately making a purchasing decision.
As searchers, we would be aware of the arguments and evidence that may be required to overcome a refusal when our clients are more apt to accept some registration risk. The reason for this is to suggest possible clarifications to an identification of goods or services description at the application stage to avoid a conflict or to get the client thinking about the effort it may require to ultimately get a registration.
The United States Patent and Trademark Office allows a trademark owner to file a trademark application claiming an intent-to-use basis. Before the mark will register, the trademark owner must submit evidence of use in commerce. The trademark owner has six opportunities to provide evidence of use to the Trademark Office, which last three years from the date of the notice of allowance. Assuming no major refusals that need to be overcome, relying on an intent-to-use basis will allow the trademark owner to keep an application alive for about three and half to four years.
Another option that applicants should consider is relying on a foreign registration. Under Section 44(e) of the Latham Act, the owner of a foreign registration will obtain a United States trademark registration even if the mark if not being used in commerce. Assuming the mark in the Section 44(e) application is otherwise registrable, the U.S. Trademark Office will issue the registration upon receiving a copy of the foreign registration. After the registration issues, the trademark owner must produce evidence of use by the six-year anniversary of the registration date in the U.S.
Foreign countries do not require evidence of use before they will issue trademark registrations. Accordingly, a U.S. trademark applicant can file first in, for example, the European Union and then rely on Section 44(e) to get a registration in the U.S. Obviously, the key to this strategy is selecting a foreign a country that examines applications in a relatively expeditious manner. The European Union expeditiously examines trademark applications, the Chinese Trademark Office does not.
Why utilize this strategy? For one, you may need the additional time from a research and development perspective. Having an extra two years can be very important. It can also be used as part of an enforcement strategy. Additionally, when there is a potentially conflicting application, the USPTO will suspend the examination of the later filed application until the conflicting application matures into a registration. But with a registration based on Section 44(e), the applicant will have to respond to the office action.
If you think you will be doing business in foreign countries, the Madrid Protocol is something you should be aware of. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries or intergovernmental organizations that have joined the Madrid Protocol by submitting a single application, called an international application. The international registration system is administered by the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), in Geneva, Switzerland. Currently, there are 100 contracting countries to the Madrid Protocol.
To apply for a Madrid Protocol application, the original application or “parent application” is filed with the United States Patent and Trademark Office. The USPTO then sends the application to the IB. The USPTO and the IB will separately examine the application. The IB will also send the application to the countries identified in the application. Each country will separately examine the application as well.
The benefit of a Madrid Application is cost savings and the ability to designate new countries in the future if necessary. It can be based on an application for the principal or supplemental register. However, if the parent application or resulting registration is abandoned or cancelled, then the international registration issued by the IB will be cancelled as well.
If the parent application is cancelled before the foreign applications mature into registrations, then the Madrid applicant has the option of converting the foreign Madrid applications into national applications. The conversion is not free, and requires paying the difference between the Madrid application and the cost to file direct in a particular foreign country.
As searchers, it is important to know if your client has aspirations to do business in any foreign countries. If they do, it may alter their risk tolerance when it comes to the trademark search. A thorough search is going to be required to ensure that the parent application is on solid footing from a likelihood fo confusion perspective.
Traditionally, trademark searches are performed manually either by a trademark lawyer or the trademark owner. But software applications are becoming more common place to perform B2B services, and trademark searching is no exception. Software applications do not have the limitations that humans do and can perform the same task more efficiently and cost effective.
Trademark conflicts are determined by applying the likelihood of confusion test. This test is comprised of 13 factors, one of the most important factors being the relatedness of the goods or services at issue. The best way to evaluate the relatedness of goods factor is to look at prior court decisions where a finding of relatedness was made.
For example, consider “restaurant services” as the services for a proposed mark. There has been a lot of trademark litigation involving “restaurant services,” which courts have found are related to over 100 different goods and services. Theoretically, a human conducting a trademark search should search for the proposed mark not only in connection with “restaurant services” but also in connection with the over 100 different goods and services that were found to be related to “restaurant services.”
Practically, though, no manual search will do this because it would take days to complete this thorough of a trademark search and would not be cost effective. If you estimate approximately 10 minutes per search when using the USPTO TESS database, conducting 100 searches would take about two, full business days to complete. If you also assume a cost of $50 a search, the cost would be about $5,000. Because of these costs in terms of time and money, humans cut corners when conducting trademark searches by relying on their intuition, which can lead to the wrong decision.
On the other hand, a computer will conduct the trademark search in connection with all 100 related goods or services, and will do it in minutes not days. The result is a more thorough trademark search at a fraction of the price of a manual search.