Last year, the Minnesota Vikings started a national debate after celebrating a touchdown against the Chicago Bears by playing a quick game of Duck Duck Gray Duck, or is it Duck Duck Goose? ESPN reported that Minnesota is the only state in the union that calls the game duck duck gray duck. Well one group of Minnesotans decided to capitalize on this distinction and produced a gluten-free vodka called GRAY DUCK vodka.
When we hear Chad Greenway – former Minnesota Viking linebacker – promoting GRAY DUCK vodka on The Power Trip morning show our initial reaction was that this brand is going to be short lived. Grey Goose vodka would certainly object to this mark. The goods are identical, so less similarity between the marks is necessary for a likelihood of confusion to exist. The different spelling of GRAY versus GREY is a small difference that is unlikely to overcome the identical nature of the goods and so is the substitution of DUCK for GOOSE.
The one saving grace for the GRAY DUCK mark would be in the dilution that GREY GOOSE has allowed to creep into the market. The GREY GOOSE brand peacefully co-exists with GRAY WHALE vodka, GREY WHALE vodka, and GRAYCLIFF vodka. GRAY DUCK thought it belongs on this list as well and so it filed a trademark application for its mark.
Surprisingly, the GRAY DUCK application sailed through the examination phase and did not receive a single Office Action from the Trademark Office. On June 26, 2018, the GRAY DUCK application was published for opposition. Bacardi & Company Limited did not oppose the registration of the GRAY DUCK application and on August 21, 2018 the Trademark Office issued the Notice of Allowance, which starts a six month period to submit evidence of use of the GRAY DUCK mark to the Trademark Office. Once this evidence is submitted, the registration certificate will issue.
This does not mean that GRAY DUCK vodka is out of the woods. The brand is vulnerable to a cancellation proceeding for five years after the registration certificate issues.
The United States Trademark Office is fighting for its decision to refuse registration of the mark FUCT for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; Children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments” on the ground that the mark is vulgar; thus, scandalous. Recently, the USPTO filed a Petition for Writ of Certiorari with the United States Supreme Court asking that it review the decision of the United States Court of Appeals for the Federal Circuit that held registration refusals on the ground of scandalousness violates the free speech right of the First Amendment to the U.S. Constitution.
We previously discussed the timing of the recent decisions involving Section 2(a) of the Trademark Act and the impact Federal Circuit’s decision would have on trademark searching if the decision stands. And the reason we discussed in that prior post is the argument the Trademark Office is making in its Petition to the Supreme Court. Section 2(a) will not prevent trademark owners from using immoral or scandalous terms as trademarks, it will simply prevent the trademark owner from receiving certain benefits from the Trademark Office that are afforded to registered trademarks.
When the In re Tam decision resulted in disparaging words no longer being off-limits for trademark registrations, we did not see a rash of new applications for disparaging marks. Similarly, it seems like the only person who took advantage of the Federal Circuit’s decision on immoral and scandalous terms was Erik Brunetti himself who filed five new trademark applications for or containing FUCT.
It is hard to imagine that the Supreme Court is going to make a meaningful distinction between disparaging terms and immoral or scandalous terms. Nevertheless, if the Trademark Office is successful, the concern about having to consider scandalous or immoral terms in a trademark search will remain.
It should not come as a shock that the timeline to register a trademark at the United States Patent and Trademark Office is not quick. But understanding the process and how much time it actually takes is important for companies, trademark searchers, and naming firms because it should inform when the naming process should start. The USPTO issued some timelines based on the filing basis of the application, but they are not the easiest diagrams to follow.
When a trademark application is filed with the USPTO regardless of the filing basis, the application will be assigned to an examining attorney to review the application. This assignment will not happen for three months. To the extent an issue exists with the application, the first office action will likely not issue for a couple of weeks after the assignment of the application. If no issue exists with the application, then the Trademark Office will issue the notice of publication.
Already, there is a three-month delay before you will know whether the mark is available. Let’s assume there are no issues with the application and the notice of publication issues. When the application is published for opposition, this starts a 30-day period when anyone that believes he or she will be damaged by the registration of the mark may formally oppose its registration. So now you are a little over four months before you will know your proposed mark will register.
But let’s assume a first office action issues, then a response to the office action is not due for six months from the date it issued. Most parties do not respond to the first office action right away and most wait until the six month response deadline is close. According to the USPTO’s Data Visualization Center, the total pendency of resolving a first office action is 9.7 months from the filing of the application. It is only after this first office action is resolved that the opposition period begins, which would then kick the timing out another month.
The timeline to register a trademark means that you should start the naming process early. If you don’t start the naming process early, then you need to be more conservative during the trademark search process because you may not have the luxury of starting over with a different mark.
The likelihood of confusion factors is a test used by the examining attorneys at the United States Patent and Trademark Office to determine if a trademark should be refused registration. After all, the standard for trademark infringement 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.
Examining attorneys 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. Examining attorneys also search pending applications for conflicting marks with earlier effective filing dates. Before citing a registration, examining attorneys 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 likelihood of confusion factors. 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.
As business becomes more and more global, obtaining an international trademark registration for your trademark is important. It is important because unlike the United States where the first to use a trademark governs, all foreign countries award trademark rights to the first to register their trademark.
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 sixth 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, obtain an international trademark registration, 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.