Recent Roadblocks to Federal Trademark Registration
Most Common Trends in Trademark Roadblocks to Registration
As preferences (and philosophies) ebb and flow at the United States Patent and Trademark Office (“USPTO”), treatment of federal trademark applications can start to follow certain patterns or trends. In some years, the overall approach of the USPTO appears to be more lenient, allowing most applications to proceed to registration without the need to overcome hurdles such as office actions or other objections to registration. In other years, trademark applications appear to face stronger resistance and much closer examination, with more and more applicants having to respond to office actions or Examiner amendments to attempt to push their application through to registration. In recent years, applicants have faced the latter scenario, with a large number of applications facing at least an initial refusal and applicants having to respond to office actions and advocate for the publication, and ultimate registration, of their mark.
While examiners commonly refuse registration on the basis of a “likelihood of confusion” with a prior-registered mark (Trademark Section 2(d), 15 U.S.C. § 1052(d)), many are also refused as “merely descriptive” of the goods or services associated with the proposed mark (Trademark Section 2(e), 15 U.S.C. § 1052(e)). In recent years, certain roadblocks to registration appear to be trending, including, (1) refusal of a mark as “primarily merely a surname” under Trademark Section 2(e) and (2) broad-form refusal of a mark for goods or services as “likely to cause confusion” with another mark in a separate industry, i.e., equating hotel services to restaurant or gym services or equating mixed-use in the real estate industry to nursing or assisted living facilities, restaurants, or bars. As an applicant, it is not possible to ensure this issue will not arise for a proposed mark, but there are steps one can take to minimize the risk of these types of refusal.
Trademark Roadblock: Primarily Merely a Surname
Currently, refusals to register based on Trademark Section 2(e) on the ground that a proposed mark is “primarily merely a surname” appear to be on the rise. Trademark Section 2(e) states, in part, that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it... (e) Consists of a mark which... (4) is primarily merely a surname. 5 U.S.C. §1052. In other words, a mark that is primarily merely a surname is not registrable on the Principal Register unless it can be shown that the mark has acquired distinctiveness under §2(f), 15 U.S.C. §1052(f) (more on that below).
According to the legislative history of the Trademark Act of 1946, the word “primarily” was added to the existing statutory language “merely” in order to exclude registration of names such as “Johnson” or “Jones,” but not names like “Cotton” or “King” which, while surnames, have a primary significance other than as a surname. See Sears, Roebuck & Co. v. Watson, 204 F.2d 32, 33-34, 96 USPQ 360, 362 (D.C. Cir. 1953); Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955). Section 2(e)(4) also reflects the common law that exclusive rights in a surname cannot be established without evidence of long and exclusive use that changes the significance of the mark to the public from that of a surname to that of a source for particular goods or services.
As an initial matter, refusal on the basis of primarily merely a surname turns on the term primarily, i.e., whether the primary and only significance of the term is that it constitutes a last name. In conducting this analysis, the Trademark Trial and Appeal Board (TTAB) has identified the following factors to be considered:
(1) whether the surname is rare;
(2) whether the mark is the surname of anyone connected with the applicant;
(3) whether the mark has any alternative meanings other than as a surname (i.e., non-surname significance);
(4) whether the mark has the structure and pronunciation of a surname;
(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.
See generally TMEP §1211.
In recent decisions, TTAB has given much less weight to the rarity factor, refusing registrations of marks consisting of a (purported) surname, even when the names at issue are exceedingly rare. For example, in In re Olin Corp., the TTAB affirmed refusal of registration of the OLIN mark for chemicals on the ground that it is a surname based on evidence showing that there were only 4,163 people in the United States with the surname during the 2010 census and that there were multiple renowned people with the surname. 124 USPQ2d 1327 (TTAB Sept. 22, 2017) [precedential]. The Board reached similar decisions regarding the proposed mark KIPLING in In re Kipling Apparel Corp. No. 86356569 (TTAB Sept. 28, 2018) [not precedential] and the mark BELUSHI In re Beds & Bars Ltd., 122 USPQ2d 1546 (TTAB May 5, 2017) [precedential]. Moreover, the addition of what could be considered a “descriptive” term to the surname likely will not be sufficient to support registration. In fact, in most cases, the decision appears to come down to a combination of more than one of the factors above.
Options to Overcome Surname Trademark Roadblock
So what can be done? Even prior to filing a trademark application for a mark that could be considered a surname, business owners and proponents of trademarks should first consider application of the above factors to their own situation. Is the proposed mark a well-known or commonly used surname? Does anyone associated with the owner bear the same surname? What words, logos, or other distinguishing components are or can be added to the surname to further distinguish it? What evidence exists of the proposed mark’s primary meaning in the market (other than as a surname)? Longstanding use of the mark on or in connection with the same goods or services? Extensive marketing and advertising of the mark to the public such that the mark is now primarily seen by consumers as a source of those goods and services rather than primarily as a surname? Determining the answers to these questions prior to submitting a trademark application, and adjusting the proposed mark accordingly, can help lower the risk of a 2(e) refusal on the basis of “primarily, merely a surname.”
Claim Acquired Distinctiveness under Trademark Section 2(f)
Additionally, mark owners should consider whether sufficient evidence exists to meet a claim of acquired distinctiveness under Trademark Section 2(f). Acquired distinctiveness, or “secondary meaning,” means that a mark has become distinctive of the applicant’s goods in commerce. See TMEP §§1212–1212.10. “A term which is descriptive... may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer.” See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972), citing 1 Nims, Unfair Competition and Trademarks at §37 (1947).
Tackling Trademark Roadblock with Acquired Distinctiveness Evidence
There are three basic types of evidence which may be used to establish acquired distinctiveness under §2(f) for a trademark or service mark:
(1) Prior Registrations: A claim of ownership of one or more active prior registrations on the Principal Register for the same mark for goods or services that are sufficiently similar to those identified in the pending application (37 C.F.R. §2.41(a)(1); see TMEP §§1212.04–1212.04(e)); See, e.g., In re Lytle Eng'g & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960) (holding applicant’s ownership of prior registration of LYTLE for various services, including the planning, preparation, and production of technical publications, acceptable as prima facie evidence of distinctiveness of identical mark for brochures, catalogs, and bulletins).
(2) Five Years’ Use: A verified statement that the mark has become distinctive of the applicant’s goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made (37 C.F.R. §2.41(a)(2); see TMEP §§1212.05–1212.05(d)); and
(3) Other Evidence: Other appropriate evidence of acquired distinctiveness (37 C.F.R. §2.41(a)(3); see TMEP §§1212.06–1212.06(e)(iv)).
To the extent you already have federal registration(s) for the same mark (or it’s legal equivalent) in use in connection with sufficiently similar goods and services, you may be able to submit a claim for acquired distinctiveness under Section 2(f) that would overcome any objection that the mark is primarily merely a surname.
Trademark Roadblock: Likelihood of Confusion Alleged as to Marks From Separate Industries
Another common basis for an Examining Attorney to refuse registration is that the proposed mark is likely to cause confusion with one or more existing marks that are federally registered on the Principal Register. In recent months, there has been an uptick in 2(d) refusals based on goods and/or services in completely separate industries. For example, equating hotel services to restaurant or gym services or equating mixed-use in the real estate industry to nursing or assisted living facilities, restaurants, or bars.
In one example, an Examiner refused registration of a mark for use in connection with the leasing of apartments on the grounds that the mark was likely to cause confusion with the same mark previously registered for use in connection with “fitness centers and providing exercise facilities” at hotels. The basis for the Examiner’s refusal was that both apartment complexes and hotels provide “exercise facilities” to consumers such that the evidence “establishe[d] that the same entity provides the relevant services and they are commonly provided together.” In another instance, an Examining Attorney refused registration of a mark in International Classes 36 (real estate services), 37 (real estate development services), 43 (restaurant services, hotel services), and 45 (hotel concierge services) on the ground that the purported mark was likely to cause confusion with similar (but not identical) marks on the Principal Register in use in connection with assisted living facilities.
In each instance, the applicants and owners of the cited marks were not involved in and the marks were not even offered within the same industries. And while the initial objections ultimately were overcome, there were additional legal expenses involved in responding to the various office actions and, in latter case, the filing of an appeal to the Trademark Trial and Appeal Board. Again, there is no magic process for ensuring one’s applications do not face similar roadblocks. But it is possible to minimize risk.
As we generally advise in almost all cases, it can be immensely helpful to conduct a trademark search prior to filing a trademark application. In the event the same or similar marks are identified, even within different industries, you can at least be aware of those marks and their use prior to moving forward with the registration process. As needed, you can also add additional terms or a design to your proposed mark to further distinguish it from others identified in the search. And in some cases, it may be possible to craft a description of goods and services for your application that could minimize any potential conflict with existing marks. These steps cannot guarantee that an application will not face unreasonable challenges or frustrating costs. But they can help minimize the risk or even identify the risk early on when it is less expensive to revise or add to a proposed mark or even change directions to another proposed mark altogether.
Given the random assignment of Examining Attorneys to trademark applications and the subjectivity that comes from separate individuals reviewing and assessing those applications, as well as the discretion afforded Examining Attorneys, the trademark application process can be frustrating and can present unforeseen obstacles that translate to increased costs. While business owners cannot change the nature of the process, you can take steps to expose (and in some cases, minimize) your risks. If you identify and assess potential roadblocks to registration in advance of filing an application, you can ensure a greater likelihood of making it down the road to registration with fewer pit stops.
For more information about trademark prosecution, see our Trademark Services and Industry Focused Legal Solutions pages.
This article has been provided for informational purposes only and is not intended and should not be construed to constitute legal advice. Please consult your attorneys in connection with any fact-specific situation under federal law and the applicable state or local laws that may impose additional obligations on you and your company. © 2023 Klemchuk PLLC