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The Rolf Institute of Structural Integration created a motion video in order to visually demonstrate the benefits of Rolfing and asked The Ollila Law Group (OLG) to protect their new visual materials.  OLG recommended that the client protect their new materials by filing a U.S. trademark application for registration of the video as a “motion mark” trademark application.

Until recently, this type of trademark was relatively uncommon.  In fact, in 2000, there were only ten applications filed with the USPTO for motion trademarks. Since then, the motion mark has become more prevalent. In the case of the “Little Boy Logo,” OLG, which has experience in protecting non-traditional trademarks, was confident in recommending filing for the motion mark. 

Requirements for Motion Marks vs. Traditional Trademark

Although the filing process required for applications for a traditional trademark application and a motion mark have similarities, there are important differences between these types of applications.   First, there are obvious differences in the specimen requirements because the mark is in motion and the specimen must reflect this.  Therefore, it is important to work with the client to develop a specimen that the PTO will accept. 

Second, in order to file a motion mark, the specimen, showing use of the mark, has specific requirements due to the fact that the mark is in motion. The specimen requirements for a motion mark include a video clip depicting a series of still photos and screen shots. The specimen must also include a video with freeze frames depicting five points of movement (see figure below). These criteria must be met in order for a motion mark to proceed to publication and, eventually, registration. 

 Specimen of still photos for “Little Boy Motion Mark” 





Office Action and Response

Once the Ollila Law Group submitted the application for the “Little Boy Motion Mark,” the USPTO raised no serious substantive issues.  The PTO required a disclaimer of “INSTITUTE OF STRUCTURAL INTEGRATION” apart from the mark as shown. In addition, the USPTO required a specific claim of color and in order for the application to proceed to publication; the USPTO required that OLG amend the application to include a color claim. In response to this office action, the attorneys at OLG were able to make the required amendments; the USPTO accepted the amendments for the “Little Boy Motion Mark.” The mark then proceeded to publication and by August 8, 2017, the “Little Boy Motion Mark” mark was approved for registration. 

Even though a motion mark is non-traditional and more complicated with the respect to what the client must provide and what is required to meet the USPTO requirements, with experience and careful planning, the prosecution can be relatively straightforward with minimal objections from the USPTO.  

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Peach-Street-DistillersThe USPTO refused Peach Street Distillers’ application for “GOAT ARTISAN VODKA” on the basis of likelihood of confusion with various registrations containing the word “CABRON” that are owned by Cabron Family Holdings, Inc. The Examiner alleged that the English translation of “cabrón” is “goat” and that the application should be refused for likelihood of confusion in accordance with the doctrine of foreign equivalents.

OLG found ample evidence in dictionaries suggesting that other Spanish words are more commonly used when referring to goats. The Examiner attempted to focus on dictionaries that only supported the USPTO’s position, such as food dictionaries, and did not show entries of the other Spanish words in the cited sources that Applicant argued could be equally used, or even preferred, to mean “goat.”

Peach-Street-VodkaIn addition, OLG presented strong evidence in the form of news articles, dictionaries, and other publications that “cabrón” has a well-known colloquial meaning that is vulgar. In fact, CABRON brand tequila cannot be sold in Mexico due to this well-known secondary definition, despite the brand owner’s arguments that the primary meaning of the mark is “goat.”

The cited CABRON registration could be challenged on the grounds that it should have been refused registration under Section 2(a) of the Lanham Act, which forbids registration of immoral or scandalous matter.  However, with the successful outcome, a separate cancellation proceeding was unnecessary.

In light the evidence presented, OLG was able to demonstrate that the average consumer would not “stop and translate” CABRON into GOAT and that no likelihood of confusion would result between the CABRON family of marks and GOAT ARTISAN VODKA.  Registration was permitted.

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Rolf-InstituteEarly monitoring of trademark applications offers a strategic benefit in the United States compared to monitoring applications only upon publication. OLG offers global trademark application monitoring for its clients’ key brands and was able to flag and watch a US trademark application that conflicts with The Rolf Institute of Structural Integration’s trademark portfolio. In this case, a trademark application under OLG’s monitoring program was approved for publication on the Supplemental Register.

Trademark applications designated for the Supplemental Register present unique challenge for trademark owners. Marks published on the Supplemental Register are not subject to Opposition proceedings. An interested party who believes they will be injured by the registration of a trademark, must wait for the application to mature to registration before they can initiate a Cancellation proceeding before the TTAB. Without access to an Opposition proceeding, an interested party’s only alternative for early recourse before the USPTO is to submit a Letter of Protest. The Letter of Protest presents several of its own challenges and is rarely successful.

The Letter of Protest is an informal procedure which requests the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) consider objective evidence relevant to the registration of a target mark. Letters are only accepted if they 1) present objective evidence that can be dealt with by the examiner in the ex parte examination and 2) it is determined that the evidence is relevant and supports a reasonable ground for refusal in examination.

Adversarial arguments are not accepted as the Letter of Protest does not replace the Opposition or Cancellation proceedings. The decision to accept a letter is made by solely the Deputy Commissioner and the letter is not made part of the application file. Instead a Letter of Protest Memorandum is added to the file and the examiner reviews the application in light of the evidence supplied in the letter.

The Letter of Protest should be filed before publication. If filed after publication, the letter will be accepted only for 30 days and only for evidence showing clear error by the USPTO in approving the mark for publication. An interested party monitoring an application has a window where they can wait to see if the examiner will reject an application, thus saving the cost of having to take action. If the examiner does not reject the application, the interested party can submit a Letter of Protest before publication.

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slatebridge-logoSlatebridge Restaurant Group, Inc. uses the brand, “SONOMA’S MARKET CALIFORNIA INSPIRED, LOCALLY PREPARED” and design on a variety of grab-and-go meals and food service items prepared under its Plaza Foodservice business, which has locations in the Kansas City and Denver areas.

Sonoma-MarketRegistration was refused on the grounds that the mark is geographically deceptive and geographically misdescriptive under Sections (e)(3) and 2(a) of the Lanham Act.

The Examiner refused the application on the basis that Sonoma is a known location in California, that the goods do not originate in Sonoma and that purchasers would be likely to make a goods-place association and believe that the goods originated in California. The examiner believed the misrepresentation of geographic origin would be a material factor in consumers’ decision to buy the goods. As a basis for the refusal, the Examiner alleged that Sonoma is well known for produce generally and therefore consumers would be likely to believe that Slatebridge’s salads, sandwiches and other food items originated or contained ingredients from Sonoma, California.

Overcoming the Refusal

OLG demonstrated that the image used in the mark is a fictional artist rendering of a landscape and is not a picture of any actual location, including Sonoma.

OLG also established that the entirety of the mark suggests that the food reflects what is known as “California Cuisine” but does not indicate origin. Further, the phrase “Locally Prepared” would indicate to consumers in the Kansas City and Denver metro areas that the food items did not originate in California. Thus the mark when viewed as a whole conjures up memories or images of the California or the Sonoma region, but any such association falls short of a likelihood of a goods-place association in the minds of consumers.

OLG submitted numerous documents from the USDA, the California Department of Agriculture, agriculture reports for Sonoma County and California tourism sources to show that Sonoma is not well known for produce in general, but is known for wine. California produces substantial agricultural products, but the total crop value of fruits and vegetables from Sonoma is not significant as compared to the rest of the state and pales in comparison to Sonoma County’s yield of wine grapes.

Finally, OLG argued that this case is analogous to the 2003 Federal Circuit case In re Les Halles De Paris J.V., 334 F.3d 1371, 67 U.S.P.Q.2d 1539. In Les Halles, the Federal Circuit held that a restaurant patron would be fully aware that the source of restaurant services in a New York restaurant named “Le Marais” would not originate from the Parisian neighborhood of the same name. Likewise, due to the entire impression created by the mark, direct customers of the goods are fully aware of the local origin of the goods and are therefore not likely to be misled into making an erroneous goods-place association between the goods and Sonoma, California. Registration was allowed to proceed.

Case Takeaway

Trademark applicants must be cautious in using geographic terms in its trademarks, because there is a risk that the mark could be deemed merely descriptive (if the goods are correctly associated with the geographic area) or primarily misdescriptive and deceptively misdescriptive (if the goods do not originate from the geographic area). However, this case demonstrates that a geographic term may lend itself to a suggestive trademark that creates a strong brand image, capable of registration on the US Principle Register, without misleading consumers as to the source or nature of the goods or services.

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0cGrljJKR0fZF65Swp1B2vhvJseycmSBSfQUwjUMgsoRecently, Kathleen Ryan had the opportunity to represent the Ollila Law Group at the Licensing Association Conference (LAT) in Bangkok, Thailand. The LAT is composed of over 100 public and private professionals from around the world who are involved in the licensing of intellectual property rights. Ultimately, the aim of the LAT is to provide greater understanding of licensing practices by providing a platform for members to share experiences and create guidelines in an effort to push toward a more innovation-driven society.

Ms. Ryan spoke about Regulatory Impingements on Registered IP Rights. Ms. Ryan explained the purpose of trademarks and how they are used, specifically in the area of alcoholic beverages. Mr. Le Marquer shared examples of how the regulatory impingements in Thailand have affected the alcohol industry while Ms. Laohaphan (of Diego) provided an industry perspective on such regulations. Additional representatives spoke on topics including IP management for technology, recent developments in IP licensing, and copyright licensing.

kNSzqIXBD92N_ZT9D4-25prnRV6jJTR4pLEvCNti6QAConference participants observed a variety of insightful and high-quality presentations, all of which are now available to the public through the LAT website.

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wipo-logoKathleen Ryan attended The World Intellectual Property Organization (WIPO) Mediation and Arbitration Workshops in collaboration with the USA and Canada’s Society of Licensing Executives and the New York Branch of the Chartered Institute of Arbitrators.

The purpose of the WIPO workshops is to provide training for professionals looking for more efficient and cost effective means of settling disputes. In the world of Intellectual Property, employing the practices of mediation and arbitration can serve to improve the client’s experience in resolving disputes and lead to better outcomes for both parties. Experienced arbitrators can help to eliminate uncertainty and a skilled mediator can help parties reduce costs by narrowing issues, in turn reducing litigation expenses. Use of WIPO arbitration clauses in International agreements, combined with WIPO mediation or WIPO expert determination clauses, may facilitate efficiency in disputes arising out of International Agreements.

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reeses-hersheyIn June, The Ollila Law Group assisted The Hershey Company and Hershey Chocolate & Confectionery Corporation with a trademark infringement lawsuit against TintureBelle LLC and TinctureBelle Marijuanka LLC, companies located in Colorado Springs and Pueblo West, Colorado. TinctureBelle, who makes marijuana infused edibles for medical dispensaries, caught Hershey’s attention when TinctureBelle started packaging their products in wrappers that looked extremely similar to Hershey’s candy products.

Although executives at TinctureBelle denied these claims, Hershey was worried that TinctureBelle’s products packaged in such confusing packaging would be associated with Hershey and create a safety risk to consumers, especially children, who may unknowingly eat the candy thinking it was ordinary candy.

Additionally, Hershey was concerned that TinctureBelle’s products could potentially dilute the brand name’s recognition. Since June, the lawsuit has been settled, and TinctureBelle agreed to recall and destroy all products that were in question and to refrain from using the same or confusingly similar packaging on its medical marijuana products in the future.

Read the article in The Denver Post.

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Rights and Remedies for United States Trademark Registrants Obtaining Protection under the Madrid Protocol or other Foreign Filing Basis:

Is Trademark Use in the U.S. Required for Enforcement Prior to Filing a Declaration of Continued Use between the Fifth and Sixth Year of Registration?

I – Overview of U.S. filing procedure based on foreign or International registrations

wipo-logoA party may apply for a U.S. trademark registration under Lanham Act Sections 1 or 44, or a party may request an extension of protection to the U.S. of an International Registration issued by WIPO under Section 66 via the Madrid Protocol.  Section 44(e) applications based on an existing foreign trademark registration and Section 66(a) extensions for protection under Madrid may proceed to registration in the U.S. on the Principal Register without a showing of actual use. [1]  Both Section 44(e) and Section 66(a) applications require that the Applicant submit a “declaration of bona fide intention to use the mark in commerce.” [2]  The standard for determining whether the Applicant has a bona fide intent to use the mark in U.S. commerce is the same as for applications made under Section 1(b).  However, for registrations based on foreign or International registrations, actual use need not be shown until the first declaration of use is due between the 5th and 6th year following registration.

II – Standing to sue for trademark infringement

A party who has obtained a U.S. registration based on a Section 44(e) or Section 66(a) who has not yet begun using the mark in the U.S. still has standing to sue another party for trademark infringement. [3]  Accordingly, should a third party start using the mark after the date of “constructive use” afforded to the registrant, the registrant may bring an infringement action based upon its federal registration regardless of whether the registrant has begun using the mark in the U.S.

III – Risks of litigation

Although the mark owner may have standing to sue for infringement based on its registration, such an infringement action carries significant risks.  The party being sued for infringement will have a high incentive to bring a counterclaim for cancellation of the trademark registration.  This is particularly true in the case of an International Registration that contains an apparently overly broad description of goods or services, and the description was not limited in the U.S. request for extension.  In some countries, it may be easy and desirable to obtain registrations covering entire classes or several international classes of goods or services.  In the U.S., however, the Applicant must be using the mark on all of the goods or services listed in the identified classes or declare that it has a bona fide intent to use the mark on all of the goods or services.  Where the International Registration is very broad on its face and the Applicant does not amend the listing of goods or services upon extension into the U.S., such a listing invites an attack via cancellation or opposition, where it may be reasonably anticipated that the Applicant would not be putting all of the goods or services into U.S. commerce.

Indeed, by signing the declaration in an overbroad application or request for extension, the Applicant may be committing fraud on the USPTO.  It is more difficult to prove allegations fraud before the USPTO after the Federal Circuit’s decision in In re Bose Corp., [4] which would invalidate the entire registration, because it is a high burden to establish the requisite intent.  In contrast, a claim that the registrant lacked a bona fide intention to use the mark on some or all of the goods or services, which would warrant at least partial cancellation, may be difficult for the registrant to defend, particularly where no use of the mark has been made in the U.S. at the time the dispute arises.

The Trademark Trial and Appeal Board (TTAB) has determined that a solely subjective and unsubstantiated intent to use the mark on the identified goods or services will not support a claim of a bona fide intent to use the mark in U.S. commerce.  Accordingly, the registrant will need to produce objective documentary evidence demonstrating that it had a bona fide intention to use the mark in U.S. commerce on all of the goods and services applied for, continuing to any date of actual use.  Such evidence may include documented business plans, product design or manufacturing efforts, correspondence with prospective licensees, records of ongoing business discussions, or promotional activities related to using the mark in the U.S. [5]  The opponent must merely show, by a preponderance of the evidence, that the registrant lacked a bona fide intention to use the mark on the identified goods or services, and such burden may be met by the fact that the registrant lacks the objective documentary evidence to rebut the claim.  Whether the cancellation claim is decided by the TTAB or a court, the failure to provide sufficient evidence of a bona fide intent to use the mark could result in cancellation of the registration in whole or in part.

It may be possible to defend the cancellation counterclaim without the objective documentary evidence, but it will be difficult to accomplish, and it is not clear what additional facts could adequately explain or outweigh the registrant’s failure to provide the evidence. [6]

IV – Recommendations

Limit Overly-Broad Descriptions of Goods

When extending trademark protection into the U.S. based on a Section 44(d), (e) or Section 66(a) application, the listing of goods and services should be reviewed to determine whether it is overly broad.  If so, an amendment should be filed to delete any goods or services that would not reasonably be used prior to registration of the trademark in the U.S.

Before bringing an infringement action against a junior user of a mark in the U.S. based on a Section 44(e) or Section 66(a) trademark registration, the registrant should first ensure that its registration is not overly broad with respect to the goods or services.  If it is, the registrant should file an after-registration amendment and/or anticipate that the court may direct the registrant to make an amendment in the USPTO to delete some goods from the registration.

Collect Information that Supports Bona Fide Intention to Use the Mark

The registrant should document its intention to use the mark in the U.S. prior to bringing an infringement action if use has not already begun.  It is recommended that the registrant save documentation that supports its bona fide intention to use the mark in the U.S.  This information will be useful in the event litigation is considered and will also be available to support the declaration of use that is required post-registration.  If such information is routinely collected, it will reduce the possibility that records are unavailable when needed in the future and possibly lessen the burden on a company’s legal department or outside counsel to collect relevant business development information when evaluating its litigation strategy.  If some use of the mark can be demonstrated by the registrant, such evidence would be important to protect the mark from partial cancellation with respect to additional goods or services included in the registration but not yet active.  This would be just as important as protecting the mark from total cancellation where the registrant does have a desire to expand into the market for the yet-unused goods or services.  Notably, the declaration made by the registrant or its counsel during the application process alone will not support a finding of requisite intent to use the mark, even though such declaration was made “under penalty of perjury.”  Similarly, mere arguments of counsel during court or TTAB proceedings will be insufficient without supporting documentary evidence. [7]


[1] § 44(d) applications based on an earlier filed foreign application must also state a basis for registration under another provision of the Lanham Act.

[2] 15 U.S.C. § 1226(e).

[3] See, e.g., Sandro Andy, S.A. v. Light Inc., No. 12 Civ. 2392, 2012 U.S. Dist. LEXIS 182401 (S.D.N.Y. Dec. 27, 2012).

[4] 580 F.3d 1240 (Fed. Cir. 2009).

[5] See Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (T.T.A.B. 2009) (precedential opinion).

[6] See Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (T.T.A.B. 2009) (precedential decision).

[7] Id.

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