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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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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