June 08, 2020 Webinar Feature

Responding to Trademark Office Actions

Kelu L. Sullivan

©2020. Published in Landslide, Vol. 12, No. 5, May/June 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

You file a trademark application with the United States Patent and Trademark Office (USPTO) and patiently wait for the registration certificate to arrive. Instead you get a notification that the examining attorney has refused to register your client’s trademark. What went wrong?

The answer could be nothing. Office actions are routine communications from the USPTO that cover a variety of issues. Some of these issues are easily resolved by a phone call with the examining attorney and the issuance of an examiner’s amendment.1 Other issues present more serious obstacles to the registrability of your client’s trademark and may result from complications that were not even apparent at the time you filed the application.

Your decisions about how and when to respond to a trademark office action can greatly impact your chances of successful registration, as well as the scope of your client’s eventual registration. Below are some tips and checklists for successfully responding to common situations in which the examining attorney issues a refusal to register a trademark.

Deadline for Responding to an Office Action

The first and most important step to take after receiving an office action is to docket the response deadline. A response addressing all of the issues raised in the office action must be filed by this date. The deadline is six months from the issue/mailing date of the office action.2

For applications that are filed directly with the USPTO, the issue/mailing date is typically the date the office action was sent by email to the correspondent of record. It appears in red text in the office action.

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 2/12/2019

For applications that are filed through the World Intellectual Property Organization (WIPO) and designating the United States under § 66(a) of the Trademark Act, the issue/mailing date is the date the office action was sent to WIPO.3 And for an office action in a § 66(a) application, the issue/mailing date is the create/mail date of the “IB-1rst Refusal Note” shown below on the USPTO’s Trademark Status and Document Retrieval (TSDR) system.

Create/Mail Date | Document Description
Dec. 19, 2019 | IB-Processed Transaction
Dec. 03, 2019 | IB-1rst Refusal Note
Nov. 12, 2019 | Filing Receipt Trademark Application
Nov. 07, 2019 | Offc Action Outgoing
Nov. 07, 2019 | XSearch Search Summary
Nov. 07, 2019 | XSearch Search Summary
Nov. 07, 2019 | Notation to File
Oct. 31, 2019 | Application

In the above example, the examining attorney uploaded the office action on November 7, 2019, but it was not mailed to WIPO until December 3, 2019. The deadline to respond is thus June 3, 2020. The deadline for responding to the office action is not extendable.4

Deciding When to Respond to Nonfinal Office Actions

The sooner an applicant responds to an office action, the sooner the USPTO will consider the response and decide whether the application is ready for publication for opposition. So, should you respond immediately? Not necessarily. There are many situations where it is beneficial to delay responding until closer to the deadline. Examples include the following:

The application is based on intent to use under § 1(b), and the applicant will not start using the mark for at least one year. In this situation, you may want to delay your response. Doing so will delay the eventual issuance of a notice of allowance. This could save the applicant from having to pay for extensions of time to file a statement of use.

The office action raised a likelihood of confusion issue under § 2(d) and the cited registration has a maintenance deadline in the next six months. Here, it may be beneficial to delay responding to see if the cited registration is maintained. If not, the citation will be removed without your having to submit any substantive arguments.5

The office action raised an advisory likelihood of confusion issue under § 2(d) based on an earlier-filed application. If you do not believe your response will overcome the advisory refusal, the examining attorney will suspend your application pending the outcome of the earlier-filed application. When to respond to the office action will depend on the status of the earlier-filed application. If the earlier-filed application may become abandoned within the next six months, because it did not timely respond to an office action, or it is at the end of the three-year period to file a statement of use, it may be a good idea to wait and see if the application is abandoned before filing a response. If the earlier-filed application has to amend its description of goods and services in response to an outstanding office action, it may also be a good idea to wait to respond to this refusal, so your arguments are tailored toward the amended description of goods instead of the broader description.

The office action included a descriptiveness refusal under § 2(e)(1) and the applicant would like to amend the application for registration on the Supplemental Register6 but has not yet commenced use of the trademark. In this scenario, the applicant should wait to respond until the mark is in use and file an amendment to allege use7 and simultaneously amend the application for registration on the Supplemental Register.

Deciding When to Respond to Final Office Actions

A final office action is issued when “the examining attorney has previously raised all outstanding issues and the applicant has had an opportunity to respond to them.”8

There are a few ways to respond to a final office action. One is to timely file a request for reconsideration to overcome any of the refusals and comply with any other requirements raised in the final office action. Another is to appeal the examining attorney’s decision to the Trademark Trial and Appeal Board (TTAB) under 37 C.F.R. §§ 2.141 and 2.142.9 Either option must be filed within six months of the issue/mailing date of the final office action, and both can be pursued simultaneously. Again, deciding when and how to respond to a final office action is critical to a successful outcome.

Filing an Early Request for Reconsideration

Filing a request for reconsideration within the first three months allows the applicant to receive a decision from the examining attorney before the end of the response period, even if the request is partially denied. In the denial, the examining attorney will explain the basis for the denial and what issues remain outstanding, and the applicant can use this information to decide whether and how to appeal.10 Filing a request for reconsideration early in the response period to resolve nonsubstantive issues has the benefit of narrowing the issues the applicant has to address on appeal.

Filing a Later Request for Reconsideration

Filing toward the end of the six-month period runs the risk of not receiving the examining attorney’s determination before the end of the six-month time period, in which case the applicant will have to file an appeal in order to keep the application alive. However, the extra time may allow the applicant to obtain a letter of consent or wait to see if a cited registration is maintained.

Filing a request for reconsideration does not change the deadline to file the appeal. If the applicant does not file an appeal, even if the applicant timely files its request for reconsideration, then the application could be abandoned for incomplete response if not all issues are resolved through the request for reconsideration.11 Overturning this decision through a petition to the Director under 37 C.F.R. § 2.146 will require clear error or abuse of discretion, or that the response was in substantial compliance.12

If the applicant files the request for reconsideration and an appeal, the TTAB will suspend the appeal and remand the case back to the examining attorney pending the outcome of the request for reconsideration if at the time of the appeal the request for reconsideration has not been decided.13

Finally, address all outstanding issues raised in the final office action in your appeal brief, even if one is a nonsubstantive issue. Failure to address an issue, such as amending the description of the mark, or submitting a substitute drawing, could lead to an abandonment of the trademark application.14

Responding to Nonsubstantive Issues

Issues raised in office actions can be substantive or nonsubstantive. Nonsubstantive issues deal with the formalities of conforming an application to USPTO rules. Common examples involve descriptions of goods and services, requests for additional information, and specimen refusals.

Descriptions of Goods and Services

One of the most common issues raised in an office action is that the applicant’s description of goods and services does not comply with USPTO requirements. This is especially frequent in applications based on a foreign registration under § 44, or in an application designating the U.S. through WIPO under § 66(a). Descriptions of goods and services from other countries are rarely accepted by the USPTO without some modification.

Common problems include descriptions that are vague or overbroad, or that select the wrong classification. In these cases, the examining attorney will often propose an amendment that is acceptable under the USPTO rules. While it may be tempting to accept the proposed amendment as is, this may not always be a good idea.

The examining attorney is not an expert on the applicant’s goods and services, and the proposal may be inaccurate or unnecessarily narrow. And once an amendment narrows the scope of goods and services in an application, the applicant cannot broaden the scope. When amending the description of goods and services, it is worth spending the time to make sure you come up with a description that serves the goals of the applicant by searching for an acceptable description in the USPTO ID Manual or adopt an accurate description that was recently accepted by the USPTO in another application.

When addressing description issues, working with the examining attorney often leads to faster and better outcomes than simply filing a response and hoping for the best. For example, if you find analogous descriptions that have been recently accepted, the examining attorney will typically welcome an email or call with a reference to the ID Manual or a prior registration. If this is the only issue raised in the office action, the examining attorney may enter an examiner’s amendment, which will speed up the prosecution of the application.15 A call may also open a discussion that could lead to a description that will be accepted if you have some questions about how to amend your description of goods and services. Finally, if the amendment is complicated, an email clearly laying out your proposed changes in redline identifying recently accepted registrations with similar descriptions will help the examining attorney to decide whether your proposed amendment is acceptable.

Requests for Additional Information

An examining attorney may request additional information regarding the meaning of the mark in the industry or in a foreign language or may request additional documents showing the nature of the goods. These informational inquiries are often made to help determine if a trademark is descriptive or a common term in the industry. It is critical to respond truthfully and completely to these inquiries with documents attached to the response. Failure to adequately comply with this request can be grounds for a final refusal.16

Specimen Refusals

The USPTO scrutinizes the specimens submitted by applicants closely, rejecting any that appear digitally altered or that do not show use in commerce. Because of this, it is important to submit specimens that show the use of the mark exactly as it is filed.

If your client’s specimen was refused for any of these reasons, it is acceptable to submit a substitute specimen. However, keep the following in mind:

  • The substitute specimen must be accompanied by an affidavit or declaration verifying that the substitute specimen was in use in commerce at least as early as the filing date of the application (if filed under a use-based application) or the filing date of the amendment to allege use (if filed under an intent-to-use-based application).17
  • The specimen must show the mark exactly as it appears in the application, including the same color, stylization, and/or design if such are claimed as part of the mark as filed.
  • It is best to submit an unprofessional photograph showing the product being displayed on a store shelf or on a desk to affirmatively show that the image was not digitally created.
  • As of October 5, 2019, the USPTO requires packaging and tag specimens for goods to show both the packaging/tag and the goods.18
  • The new USPTO rule also requires all screenshot specimens to include a URL and access or print date.

If it turns out the applicant cannot provide an acceptable specimen, the applicant can amend its filing basis of the application to intent to use under § 1(b).19

Responding to Substantive Issues

Unlike nonsubstantive issues, substantive issues in office actions go to the underlying registrability of a mark. There are two main bases for substantive refusals: (1) likelihood of confusion under § 2(d), and (2) lack of distinctiveness refusals under § 2(e).

Likelihood of Confusion

Section 2(d) of the Trademark Act bars registration of an applied-for mark that “so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”20 Refusal can be based on one or more registered marks. If one of the citations is an earlier-filed application, then the refusal based on the earlier-filed application is only advisory, and the examining attorney cannot refuse registration under § 2(d) based on the earlier-filed application until it registers.21 Unless your response removes the earlier-filed application as a potential bar, the examining attorney will suspend the application until the earlier-filed application is abandoned or registered.22

Overcoming a § 2(d) Refusal without Making Substantive Arguments

Before you start drafting substantive arguments to address a § 2(d) refusal, it often pays to think strategically. You may find ways to easily eliminate the confusion issue altogether. At a minimum, a simple checklist should include the following:

  1. Check to see if any cited registration has been canceled (or soon might be). Occasionally, the status of a trademark registration has not been updated and should be marked canceled, but the USPTO database shows the registration as active. The examining attorney is required to cite to such a registration in a nonfinal office action and advise the applicant that the grace period has passed and the registration may be canceled.23 If you encounter this situation, you can send an email to TMFeedback@uspto.gov to advise the USPTO of the registration overdue for cancellation. Once the status of the registration is updated, a simple response to the office action stating that the cited registration is now canceled will overcome the § 2(d) refusal. Note also that if the cited registration is in the grace period, you can respond to the office action with a request to suspend the application until the end of the grace period. The examining attorney must suspend the application before issuing a final office action “pending a determination of whether the registrant timely files, and the USPTO accepts, the § 8 or § 71 affidavit and/or whether the registration is renewed.”24
  2. Check to make certain that the applicant does not own the conflicting trademark. This may seem silly, but when a party records an assignment, it is not always automatically updated. It sometimes happens that the cited registration in a § 2(d) rejection is actually owned by the applicant and should not be cited as a bar to registration.
  3. Try to review the specimens of any cited earlier-filed applications. If any specimen looks suspicious, you can report it to the USPTO through the Specimen Protests Email Pilot Program.25 This newly created pilot program allows the public to alert the USPTO to suspicious specimens by providing either objective evidence of third-party use of the identical image without the mark in question, or evidence of prior registrations or applications that show the same image with different trademarks. While this does not directly cause the earlier-filed application to be abandoned, this step could lead to the ultimate abandonment of the earlier-filed application and remove it as a potential bar. For registrations that issued in reliance on suspicious specimens, the applicant must petition to cancel the registration on the basis of fraud.
  4. Check to see if the applicant has priority over the cited registration or prior-filed application. This is especially important if the applicant’s trademark application claims priority to a foreign application under § 44(d) or is based on § 66(a), and the applicant’s priority date could be six months earlier than its filing date, which may predate the filing/priority date of the cited registration or application.26 In this scenario, the examining attorney should withdraw the refusal based on § 2(d) of the Trademark Act after receiving a simple response from the applicant.
  5. Check to see if the registrant is still using the mark. If use has ceased, it may be smart to engage an outside investigator to find out whether the registrant has abandoned the mark, or whether the registration may be canceled because of abandonment. The relevant standard is cessation of use and intent not to resume use.27 The applicant can also use the threat of a potential cancellation to negotiate a letter of consent from the registrant (discussed in more detail below).
  6. Check prosecution history. Did the registrant make arguments to overcome an earlier registration that could be used in support of your arguments?
  7. Obtain a letter of consent from the cited registrant. An applicant may submit a consent agreement in an attempt to overcome a § 2(d) refusal.28 The USPTO gives substantial weight to a letter of consent. But the consent must include representation by both parties why there is no likelihood of confusion and/or indicate that the parties have agreed to undertake actions to avoid confusion.29 The letter of consent should not be based on geographic limitations, trade channel limitations, or other terms that distinguish the parties’ goods or services that are not part of the application or registration.30 There are some potential risks involved in requesting a letter of consent because you will directly notify the registrant of your client’s mark, and if the registrant denies your request, you may end up facing an opposition or an infringement action from the registrant.

Overcoming a § 2(d) Refusal through Substantive Arguments

When none of the above resolve the § 2(d) refusal, making substantive arguments is unavoidable. Keep in mind, though, that any arguments you make are publicly available. If you argue that the cited marks and your mark are weak, or that the parties’ goods or services are not confusingly similar, these arguments can be used against the applicant in future enforcement matters.

Substantive arguments focus on likelihood of confusion factors. While there are 13 factors in total, three are especially important: (1) strength of the registered mark, (2) similarity of the marks, and (2) similarity of the goods or services.31

Strength of the registered mark. The stronger the registered mark is, the boarder the scope of protection it deserves. Strength is viewed as both inherent strength and relative strength. Therefore, if you can show that the cited mark is either inherently32 or relatively weak,33 and thus deserves a narrow scope of protection, this can help you overcome a § 2(d) refusal, especially if the goods or services are not identical.

To show that a cited mark is inherently weak, present evidence of the meaning of the mark as applied to the goods or services in the registration. To show that a cited mark is relatively weak, provide evidence of third-party use of the same or similar marks for similar goods or services. To demonstrate that a mark is relatively weak, you must submit TESS records for the coexisting registrations as an exhibit to your response.34

Similarity of the marks. The test when comparing the marks requires the examination of the similarities or dissimilarities of the marks “in their entireties as to appearance, sound, connotation and commercial impression.”35 In arguing that the marks are not similar, keep in mind that the comparison of the marks is based on the marks as they are depicted in the registration and the application, without any consideration of real-world conditions, such as use with other marks, or design elements.36

In addition to the obvious comparison of the marks’ appearance and sound, you can present arguments that marks have different connotations or commercial impressions because they have different meanings as applied to each parties’ goods or services,37 or because the mark is a double entendre,38 an incongruous mark,39 an alliterative mark,40 or a unitary mark.41

Similarity of the goods or services. The test in determining whether the relevant goods or services are similar for the likelihood of confusion analysis is whether the public will believe that the registrant’s goods or services originated from the same source as the applicant’s goods or services.42 The goods or services need not be identical to be considered similar; also, the examining attorney must presume that the registration encompasses all nature, type, channels of trade, or class of purchasers unless it is otherwise specified in the description of goods or services.43

As with similarity of marks, do not submit evidence of real-world differences in trade channels, potential customers, or prices, unless they can be inferred through the description in the registration or application. If it is obvious that the goods or services are not related, consider amending the description of the goods or services in the application to help overcome such a refusal. You might also demonstrate lack of similarity by pointing to third-party registrations of the same or similar marks that are owned by neither the applicant nor the owner of the putatively conflicting marks.44

Mere Descriptiveness Refusals

The second main category of substantive refusal is lack of distinctiveness. This category includes several different refusals, but the most common is that the mark is merely descriptive under § 2(e)(1) of the Trademark Act.45 The applicant has several options in responding to this office action, including: (1) submitting arguments and evidence to show that the mark is inherently distinctive, (2) amending the application for registration to the Supplemental Register, or (3) providing evidence that the mark has acquired distinctiveness.

Submitting Arguments of Inherent Distinctiveness

The determination whether a mark is merely descriptive is made in the context of the goods or services contained in the application. The burden is on the examining attorney to show that the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose, or use of the goods or services.46 But the examining attorney only has to demonstrate that the mark merely describes just one significant attribute, function, or property.47

The key to overcoming a descriptiveness refusal is demonstrating that the mark is not merely descriptive of the goods or services contained in the application. If the connection between the mark and the goods or services is less than instantaneous, then the mark is suggestive, not directly descriptive.48 Consider the following sources when looking for evidence to prove this claim:

  1. Consider the evidence provided by the examining attorney. Examining attorneys often cite dictionary definitions and internet printouts in demonstrating how consumers understand the mark to merely describe an ingredient, feature, function, or purpose of the goods or services. If the applicant licenses its mark to third parties, then it is possible that third-party uses of the same mark for similar goods or services all originate from the same source: the applicant! This can eliminate many third-party citations from consideration.
  2. Consider whether the mark creates a double entendre. For example, the TTAB found that the mark THE FARMACY for retail store services and online retail store services featuring natural herbs and organic products created a double entendre, and thus was not merely descriptive.49 The key in a successful double entendre argument is that one of the two meanings for the word or phrase is not merely descriptive of the goods or services.50
  3. Consider if the combination of the words in the mark creates a new and unique commercial impression. An example is an incongruous combination of words51 that creates unexpected meaning, such as RANGE FARMS for “poultry,”52 TENNIS IN THE ROUND for tennis facilities,53 and SNO-RAKE for a snow-removal hand tool.54

Amending to the Supplemental Register

If arguments alone are not sufficient to overcome a refusal based on § 2(e)(1), the applicant has the option of amending the mark for registration on the Supplemental Register.55 This option is only available to applications based on use under § 1(a) or based on § 44(e),56 but not to applications filed under § 66(a).

It is important to note that registering a trademark on the Supplemental Register includes an admission by the applicant that the mark is merely descriptive, and the effective filing date of the application that was filed solely based on § 1(b) of the Trademark Act will change to the date of the allegation of use.57

While a registration on the Supplemental Register does not establish that the owner has proprietary rights in the trademark, it can provide the owner standing in an opposition.58 There are other benefits to registering a mark on the Supplemental Register, such as barring subsequent registration of a confusingly similar mark and allowing use of the ® symbol with the mark.

Proving Acquired Distinctiveness under § 2(f)

Finally, if the applicant has been using the mark for some time, it may be possible to provide evidence that the mark has acquired distinctiveness through use. An applicant can claim acquired distinctiveness by (1) demonstrating ownership of an active prior registration for the same mark for sufficiently similar or related goods or services,59 (2) demonstrating five years’ continuous and substantially exclusive use of the same mark with sufficiently similar or related goods or services,60 or (3) submitting actual evidence of acquired distinctiveness for the same mark with respect to sufficiently similar or related goods or services.61

The first two options entail simple declarations as a response. The third option requires the applicant to provide evidence of its marketing spend, sales revenue, and length of use in the form of a declaration or affidavit to demonstrate that the mark is recognized by the relevant public as a source indicator and not merely descriptive of the goods or services.62 If the examining attorney is convinced of the acquired distinctiveness, the § 2(e)(1) refusal will be withdrawn.

If the usual sales and advertising data are not sufficient to overcome the § 2(e)(1) refusal, the applicant may be able to demonstrate acquired distinctiveness through survey evidence on market outcomes or consumer reactions. This type of evidence is given significant weight when the research is conducted with appropriate care and rigor.63 Surveys can, however, be expensive to conduct and do not guarantee favorable results. Survey results can also be discovered in later litigation where the distinctiveness of the mark is in dispute. Therefore, the applicant should weigh the costs and benefits of this strategy before proceeding with a survey.

Conclusion

This article does not cover all of the possible refusals and scenarios that can arise in trademark office actions and prosecution. But hopefully it has provided some useful tips and checklists you can use to formulate strategies and conduct research that will help you successfully respond to the most common issues.

Endnotes

1. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 707 (Oct. 2018).

2. Id. § 711.

3. Id.

4. Id. §§ 301, 711.

5. See id. § 716.02(e).

6. Id. §§ 815.02, 816. Applications filed under § 66(a) cannot be amended to the Supplemental Register. Id. § 816.01. Applications filed solely under § 44(e) may be amended to the Supplemental Register without alleging use in commerce or use anywhere in the world. Id. § 815.02.

7. Id. § 1104.

8. Id. § 714.03.

9. Id. § 714.

10. Id. § 715.03(a)(ii)(B).

11. Id. § 715.03(a)(ii)(D).

12. Id.

13. U.S. Patent & Trademark Office, Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1204 (June 2019).

14. See In re Rainier Enters., LLC, 2019 U.S.P.Q.2d 463361 (T.T.A.B. Dec. 3, 2019).

15. TMEP, supra note 1, § 707.

16. In re Gaugewear, Inc., Serial No. 86569473 (T.T.A.B. Aug. 21, 2017) (nonprecedential) (affirming a refusal to register the mark GAUGEWEAR because the applicant failed to comply with the examining attorney’s request for information; the applicant provided a link to its website and identified a relevant utility patent but did not provide a copy of the information, and did not provide any additional information upon a second request from the examining attorney).

17. TMEP, supra note 1, § 904.05.

18. Changes to the Trademark Rules of Practice to Mandate Electronic Filing, 84 Fed. Reg. 37,081 (July 31, 2019).

19. TMEP, supra note 1, § 806.03(c).

20. 15 U.S.C. § 1052(d).

21. TMEP, supra note 1, § 1207.01.

22. Id. § 1208.02(c).

23. Id. § 716.02(e).

24. Id.

25. U.S. Patent & Trademark Office, TM Specimen Protests Email Pilot Program (2018), https://www.uspto.gov/sites/default/files/documents/Specimen%20Protests%20Email%20Pilot%20Program.pdf.

26. TMEP, supra note 1, § 206.

27. 15 U.S.C. § 1127.

28. TMEP, supra note 1, § 1207.01(d)(viii).

29. Id. Compare In re Am. Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (T.T.A.B. 2018) (finding a consent agreement with reasons why the parties believed confusion was not likely sufficient to reverse a § 2(d) refusal), with In re Bay State Brewing Co., 117 U.S.P.Q.2d 1958 (T.T.A.B. 2016) (finding the consent agreement insufficient to overcome a § 2(d) refusal because the agreement included geographic limitations that were not a part of the application).

30. TMEP, supra note 1, § 1207.01(d)(viii).

31. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).

32. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338–39 (Fed. Cir. 2015); TMEP, supra note 1, § 1207.01(b)(ix).

33. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373–74 (Fed. Cir. 2005); see also In re FabFitFun, Inc., 127 U.S.P.Q.2d 1670 (T.T.A.B. 2018) (reversing a refusal to register the mark I’M SMOKING HOT for cosmetics, makeup, and other personal care products because of confusion with the mark SMOKIN’ HOT SHOW TIME for cosmetics because the registered mark is conceptually weak and relatively weak due to numerous third-party use and registration of similar marks).

34. TMEP, supra note 1, § 1207.01(d)(iii); In re Aquitaine Wine USA, LLC, 126 U.S.P.Q.2d 1181, 1186 (T.T.A.B. 2018).

35. DuPont, 476 F.2d at 1361; TMEP, supra note 1, § 1027.01(b).

36. See In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 (Fed. Cir. 1993).

37. See, e.g., Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (finding that COACH for educational software does not create a likelihood of confusion with COACH for handbags, luggage, etc., because the same mark created different meanings as to the different goods).

38. TMEP, supra note 1, § 1213.05(c).

39. Id. § 1213.05(d).

40. Id. § 1213.05(e).

41. Id. § 1213.05(b)(iii), .05(h).

42. See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1470 n.6 (T.T.A.B.), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988).

43. TMEP, supra note 1, § 1207.01(a).

44. See In re Thor Tech, Inc., 113 U.S.P.Q.2d 1546 (T.T.A.B. 2015) (reversing a refusal to register the mark TERRAIN for “recreational vehicles, namely, towable trailers” because of a prior registration for TERRAIN for “motor land vehicles, namely, trucks” based on evidence of third-party registrations showing a pattern of registration that rebuts the evidence provided by the examining attorney).

45. TMEP, supra note 1, § 1209.

46. In re Fat Boys Water Sports LLC, 118 U.S.P.Q.2d 1511 (T.T.A.B. 2016).

47. TMEP, supra note 1, § 1209.

48. In re Driven Innovations, Inc., 764 F. App’x 996 (Fed. Cir. 2017) (finding the mental leap between DOTBLOG to “providing specific information as requested by customers via the internet” is not instantaneous, and therefore deserves registration on the Principal Register).

49. In re Tea & Sympathy, Inc., 88 U.S.P.Q.2d 1062 (T.T.A.B. 2008); TMEP, supra note 1, § 1213.05(c); see also In re Madson Prods. LLC, Serial No. 78565462 (T.T.A.B. Sept. 13, 2007) (finding the mark YAK SAK is not merely descriptive because it creates a double entendre).

50. TMEP, supra note 1, § 1213.05(c).

51. In re Lamex Foods Inc., Serial No. 86567416 (T.T.A.B. Dec. 14, 2016) (finding the mark RANGE FARMS to be an incongruous combination and therefore registrable on the Principal Register); TMEP, supra note 1, §§ 1209.01(a), 1213.05(d).

52. Lamex Foods, Serial No. 86467416.

53. In re Tennis in the Round Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978).

54. In re Shutts, 217 U.S.P.Q. 363, 364–65 (T.T.A.B. 1983).

55. TMEP, supra note 1, § 816.

56. A § 44 applicant may register its mark on the Supplemental Register without filing any allegation of use. Id. § 1014.

57. Id.

58. Id. § 801.02(b); Otter Prods. LLC v. BaseOneLabs LLC, 105 U.S.P.Q.2d 1252, 1256 (T.T.A.B. 2012).

59. TMEP, supra note 1, § 1212.04.

60. Id. § 1212.05.

61. Id. § 1212.06.

62. Id.; see also In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985).

63. See In re Van Valkenburg, 97 U.S.P.Q.2d 1757, 1767 (T.T.A.B. 2011) (finding “no basis on which to conclude that the survey is based on scientifically valid principles” where the survey consisted of questionnaires distributed to an unknown number of people who filled them out and mailed them back to the applicant’s counsel”).

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Kelu L. Sullivan is of counsel at Kelly IP, LLP in Washington, D.C. She specializes in trademark and copyright prosecution, enforcement, and portfolio management.