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Lanham Act protects trademark owners against infringement based on likelihood of confusion as to the source of goods or services via false association, affiliation or endorsement. See 15 U.S.C. § 1114 and 15 U.S.C. § 1125. A likelihood of confusion in federal courts of the Second Circuit is determined based on Polaroid factors. See Polaroid Corporation v. Polarad Electronics Corp., 287 F.2d 492, 128 USPQ 411 (2nd Cir. 1961). Mere side by side comparison of the two competing products is not sufficient on its own. Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 535 (2nd Cir. 2005).
When analyzing a likelihood of confusion, the full array of relevant circumstances under the Polaroid test shall be taken into consideration. See Vitarroz v. Borden, Inc., 644 F.2d 960, 209 USPQ 969 (2nd Cir. 1981). "No single Polaroid factor is preeminent, nor can the presence or absence of one determine, without analysis of the others, the outcome of an infringement suit." Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 254 (2nd Cir. 1982). Under particular circumstances, a trademark confusion may be ordinary (the majority of cases), reverse or even both at the same time. See Banff, Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486, 6 USPQ2d 1187 (2nd Cir. 1988).
Ordinary Trademark Confusion
Ordinary or forward confusion takes place when the consumers mistakenly believe that the senior user is the source of goods or services for the junior user’s product. In other words, a new actor in the market place is being recognized due to the prior already established goodwill and reputation of the senior user. This is the most common type of confusion.
Reverse Trademark Confusion
Reverse trademark confusion, on the other hand, is a mistaken belief that the Junior user is the original source of goods or services. This situation usually takes place when the senior user is a small business and the newcomer is much larger company with more resources and capabilities. As accurately stated by the 7th Circuit and subsequently acknowledged by the Federal Circuit, “The term “reverse confusion” has been used to “describe the situation where a significantly larger or more prominent newcomer ‘saturates the market’ with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). A “newcomer does not gain the right to register a substantially identical mark simply because the number of persons exposed to the registrant’s mark may be small in relation to the newcomer’s volume of use.” Id.
"The objectives of the Lanham act to protect an owner's interest in its trademark by keeping the public free from confusion as to the source of goods and ensuring fair competition are as important in a case of reverse confusion as in typical trademark infringement." Banff, Ltd. v. Federated Dept. Stores, at 491.
Ordinary and Reverse Confusion at the Same Time
Sometimes, a senior trademark user is able to allege both ordinary and reverse trademark confusion. For example, a relatively small business owner who specialized in high-end women apparel under the brand “BEE WEAR” was determined to have grounds for both ordinary and reverse confusion due to a newcomer’s use of confusingly similar mark “B WEAR”. The court has explained that for some customers that are not familiar with the senior user, the newcomer, who is a much larger business, could appear as the original source of clothing under the brand at issue which could cause a reverse confusion. At the same time, the customers who are already familiar with the senior user (for example, its current customers) could come to a mistaken conclusion that the junior user is associated, affiliated or endorsed by the senior trademark owner which would cause an ordinary confusion. See Banff, Ltd. v. Federated Dept. Stores, Inc.
When consumers encounter the junior user and are trying to reach out to it but mistakenly dial the phone number of the senior user (because only the latter is listed in the local business directory), it is likely to be evidence of reverse rather than ordinary confusion. See Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576 (2nd Cir. 1991). However, if current or prospect customers of senior user come to a conclusion that the newcomer is associated or affiliated with the original trademark owner and decide to purchase the new user’s goods, it would likely be evidence of an ordinary confusion. Id at 584.
Reverse Trademark Confusion can be Applicable due to a Small Size of a business or its Temporarily Economic Hardship and a Decline in Sales
When a particular business experiences an economic hardship or a decline of sales due to, for example, a fact that the product is no longer as popular as it used to be or there is a need to make a particular change in product or marketing, that situation could also qualify to assert a reverse trademark confusion against a larger newcomer on the market. One of such examples could be a decline in sales of “soda fountain syrups” in 1970th because the consumers were more and more interested in bottle and can soft drinks. See Sands, Taylor & Wood Company, Plaintiff-appellee, v. the Quaker Oats Company, Defendant-appellant, 978 F.2d 947 (7th Cir. 1992).
United States Patent and Trademark Office view on Reverse Trademark Confusion
U.S. Trademark Trial and Appeal Board (“TTAB”) in its recent precedential decision on 12/20/2021 in Mahender Sabhnani v. Mirage Brands, LLC has acknowledged the existence of reverse trademark confusion, used it in its analysis of likelihood of confusion based on DuPont factors and decided in favor of the senior trademark user.
Here, a small business owner, who was a senior trademark user, filed a cancellation proceeding against a larger business who was a junior user. Both parties had used “MIRAGE”-formative marks for “perfume and related goods” in class 3.
In its Trial Brief, the Respondent argued that there was no likelihood of confusion because, inter alia, both trademarks have co-existed for more than four years without evidence of actual confusion. Petitioner, on the other hand, argued that there was a likelihood of confusion because, inter alia, the marks are confusingly similar and the goods are the same.
It is interesting to note that the Petitioner here did not specifically assert a reverse confusion. However, TTAB has explained that it “‘does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion.’” Top Tobacco, 101 USPQ2d at 1175 n.18 (quoting Am. Hygienic Labs. V. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989)).
TTAB has further explained that a reverse confusion usually takes place when a much larger business introduces its brand which is confusingly similar to a much smaller senior trademark owner’s mark. In such case, the newcomer is not necessarily benefitting from the goodwill of the senior user; “however, the senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user.” Top Tobacco, 101 USPQ2d at 1175 (quoting Shell Oil, 26 USPQ2d at 1690).
Reverse Trademark Confusion is Another Reason to Secure a Federal Trademark Registration
For the purposes of Federal U.S. Trademark registration, “use-in-commerce” is required. However, as long as a small business satisfies that requirement, the scope of trademark protection is Nationwide. U.S. Court of Appeals for the Federal Circuit has specifically explained that the rights provided by Federal trademark registration do not vary based on the size of the business as long as it complies with the requirement of use in commerce. A newcomer is not entitled to register an identical or confusingly similar mark just because the number of consumers who are familiar with the senior registrant’s mark may be small compare to the newcomer’s volume of sale. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
Conclusion
Reverse trademark confusion is recognizable form of trademark confusion. It has been accepted by both the courts and the United States Patent and Trademark Office. It could serve as a helpful tool in asserting likelihood of confusion especially by a small business owner against a larger and more prominent newcomer on the market.
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- Benefits of Intent-to-Use Trademark Application in U.S. Protecting Intellectual Property Rights before any Actual Business is Launched.
What is an Intent-to-Use Trademark Application?
There are two major types of trademark applications before the United States Patent and Trademark Office (hereinafter “USPTO”): (1) Use-based and (2) Intent-to-Use. “Use-based” application means that the applicant has actual business and is using its mark in commerce at the time of filing with the USPTO. “Intent-to-use” application, on the other hand, is used when the applicant does not have actual use as of yet but has a bona fide intent to use its mark in commerce in the nearest future (usually within 2-3 years).
Why would One be Interested in an Intent-to-Use Trademark Application in the Absence of Actual Business?
Often times creative people have great ideas and smart solutions they come up with. They do research, make inquiries and seek means of launching that new business. Sometimes they share these new ideas with other people to see how the public would react to a new brand, a product or a service. Intent-to-Use (hereinafter “ITU”) trademark application could be a useful tool that would provide such individual with a piece of mind and protect against a potential theft of its intellectual property (hereinafter “IP”) rights.
Thus, it could be a smart strategy to file an ITU application first, secure the priority date of trademark filing with the USPTO, and only then start sharing that new idea or a prospect new brand with anybody else.
More about an ITU Trademark Application
Even though actual use is not required at the time of filing, the applicant must have a bona fide intent to use its mark in commerce in the U.S. within a nearest future. ITU application allows to include a wide range of desired goods or services and limit them later if the actual use in the future covers only some of them. The key is the early date of trademark filing which grants the applicant a priority date. If the mark is finally registered, it would have the priority date of such an early filing.
Would Actual Use be Required in order for an ITU Application to Register?
Even though an ITU application allows one to file without actual use, evidence of use will be required in order to register. Thus, if an ITU application is approved and not challenged by a third party, there will be a deadline to file proper evidence of use. Failure to do so could lead to a trademark abandonment.
What if Applicant is not Sure its New Prospect Brand or a New Product Would be Successful?
Sometimes an applicant could be reluctant to spend money on a trademark application due to uncertainty in the success of that new idea or a product. This approach could be a double edge sword. If that idea turns out to be a success that many people like and are aware of, there is a risk of an IP theft or even a good faith trademark application by a third party which is either identical or confusingly similar.
Therefore, if plans to launch a new brand or a product are serious enough to invest time, energy and efforts in its research and development, it is probably worth to consider a possible ITU trademark application.
What is the Cost Associated with an ITU Trademark Application?
At present time, the official filing fee for one mark in one class is either $250 or $350 depending on the exact goods or services selected.
If mark is approved and applicant is ready to submit evidence of use, there is a $100 “Statement of Use” fee. If applicant desires to extend pendency of an ITU application for another 6 months, there is a $125 “Extension of Time” fee. This option provides one with a flexibility to continue development of a product or a service and continue to have its priority date secured as long as the mark is active and pending subject to the final deadline to show actual use in commerce. Under certain circumstances, there could be additional expenses. For example, in case of a request to divide an ITU into two separate applications, showing use for one of them and allowing the other to continue its ITU status. The attorney’s fee is separate and may vary depending on a particular practitioner.
How Long does it Take to have an ITU Application Reviewed by the USPTO?
At present time, it takes about 4-6 months from the date of filing to have a new trademark application be reviewed by the USPTO. Then, if no issues are raised, and it is approved, it would proceed to the next stage leading to its trademark registration if not challenged by a third party. Each further stage can take a few months. If applicant seeks a further extension of time, it would prolong the pendency of the ITU application until the evidence of use is filed with the USPTO.
Can Applicant Convert an ITU Application into Use-based Application?
At certain stage of trademark prosecution, it may be possible to alter the filing basis from ITU to actual use. In addition, under certain circumstances, it may be possible to divide an ITU trademark application into a few separate Use-based and ITU-based proceedings.
Is an ITU Application Subject to Similar Trademark Prosecution Rules?
Generally speaking, yes. Even though evidence of actual use is not being analyzed at the initial stage of trademark examination, TM Examiner may still refuse an ITU application on various grounds such as “genericness”, “mere descriptiveness” or “likelihood of confusion” under section 2d of the Lanham Act. Thus, it is a good idea to select a proper term that can function as a trademark. It is equally important to conduct a trademark search to make sure that the same or confusingly similar mark has not been already filed or registered.
Is it Important to Select Accurate Description of Goods or Services under an ITU Application?
Even though an ITU option allows an applicant to select a wide range of goods or services in the beginning, the applicant would be later required to claim only those goods or services that are in fact in use. Moreover, the provisions of new U.S. Trademark Modernization Act of 2020 make this requirement even more important because failure to properly claim what is in fact in use could jeopardize the entire trademark registration on various new grounds of cancellation in the future.
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- Gang Cao v. Apple, Inc. (TTAB 2021)
Term “LIVE PHOTOS” was determined to be generic or descriptive for “computer software for recording and displaying images, video and sound”, and therefore, ineligible for trademark registration.
Trademark Trial and Appeal Board (hereinafter “TTAB”) in its recent June 28, 2021 decision has sustained trademark opposition against the term “LIVE PHOTOS” in class 9 “computer software for recording and displaying images, video and sound” on the ground of being generic or, in the alternative, merely descriptive.
Applicant argued that this term is not generic but rather suggestive because the term does not immediately convey the nature of the product. In alternative, if the mark is determined to be merely descriptive, the Applicant asserted that it had established a secondary meaning through continuous and substantially exclusive use as well as massive sales and advertising, and thus, shall be eligible trademark registration.
The Opposer, on the other hand, claimed that the term is generic since (i) it refers to a key aspect of the product and (ii) Applicant’s own use and reference to this term suggests its generic nature.
TTAB applied the two-part test in order to analyze the genericness: (1) Determination of the genus of goods or services; (2) whether consumers would perceive the term at issue as a generic reference.
It has been a noticeable trend in recent trademark cases in the U.S. that a term may be determined as generic not only if it directly identifies a genus or a type of goods (for example “computer software”) but also when that term is understood by the relevant consumers as a key aspect or a sub-type of the product. Here, TTAB has determined that (a) the genus of goods is “computer software for recording and displaying images, video and sound”; and (b) “LIVE PHOTOS” is an essential or key aspect of the software since specifics of the software allow it to generate that special image using high resolution photo with instant moving moments just before and right after it is created. Thus, the term “LIVE PHOTOS” was determined to be generic.
In the alternative, should this term be determined as descriptive, TTAB ruled that it has not acquired a secondary meaning, and thus, still would not be eligible trademark registration. Under the U.S. Trademark Law, a descriptive term may become eligible for trademark registration on the Principal Register if two elements are satisfied: (1) Continuous use for at least five years; and (2) Substantially exclusive use. However, there is no guarantee that it can be established. There are cases when highly descriptive terms could not satisfy that bar despite a substantial amount of time, money and efforts spent.
Business owners shall keep in mind that:
(1) If a term is determined to be generic, it may not function as a trademark, and it would not be protectable regardless of number of sales, promotions, advertisement or media coverage;
(2) In addition to trademark registration, it is also a great idea to select a strong and inherently distinctive brand;
(3) Consumers’ perception plays an important role in determination of trademark distinctiveness especially when the term is not inherently distinctive or arguably not very strong;
(4) Consumers’ perception may be affected by marketing techniques. The way a trademark is used, displayed and advertised may affect how consumers read, understand and remember the brand.
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- Sanofi v. Privacy Hero Inc./Honey Salt ltd, pat honey salt. UDRP Case No. D2020-2836
In UDRP decision on Feb. 11, 2021 WIPO has ruled that domain name <sanofi.sucks> is confusingly similar to the trademark SANOFI, the Registrant did not have rights or legitimate interest in the domain, and it was registered and used in bad faith. Despite the Respondent’s Freedom of Speech and Fair Use defenses, the trademark owner has prevailed.
In order to succeed in UDRP complaint, one shall establish 3 elements: (1) the domain name at issue is identical or confusingly similar to the trademark; (2) the Respondent has no legitimate interest or right in disputed domain name; and (3) the respondent has registered and used this domain name in bad faith.
The Complainant is a French pharmaceutical company that owns various trademark registrations for “SANOFI” including in France, Europe, and the U.S. It also owns and operates its corresponding domain names. This particular case is interesting because the analysis of these three UDRP elements is being made under consideration of Fair Use and Freedom of Speech concepts as well as the use of a “new gTLD .sucks”.
Identical of Confusingly Similar
The respondent argued that its domain name was not confusingly similar because using of generic or highly descriptive gTLD “.sucks” clearly shows the nature of the website, namely, criticism and free speech comments. However, the Board has concluded that a domain name extension, first of all, is viewed as a standard registration requirement and not necessarily a part of the domain name itself. Since the domain name incorporates the exact trademark “SANOFI” with only an addition of a new gTLD, it was found to be confusingly similar.
This is pretty interesting analysis of a new gTLD, its meaning, and its weight. The meaning and likelihood of confusion could be affected by the exact way the domain name is registered: “trademarkSUCKS.com” vs. “trademark.SUCKS”.
Rights or Legitimate Interests
In order to show fair use or free speech criticism under UDRP 4(c)(iii), the respondent’s use must be genuine and noncommercial and not be a mere pretext for “cybersquatting, commercial activity, or tarnishment”.
It is important to remember that Famous and Well-Known trademarks enjoy additional protection against trademark dilution in the form of blurring or tarnishment in addition to a regular protection against trademark confusion.
Here, the Respondent claimed that it only provided an opportunity for other people to express free criticism of the Complainant’s business and practices. The trademark owner, however, argued that the domain name holder has engaged in “fake and misleading presentation of the Complainant’s true activities”. It was also established that the domain name was linked to other websites and was likely promoting them by increasing internet traffic.
After considering the totality of circumstances, the Board decided that the Respondent’s use of the domain name was not genuine and fair exercise of the freedom of speech but rather it was “set up to serve as a pretext to create an impression that the registration and use of the disputed domain name is legitimate and not in bad faith”.
Registered and Used in Bad Faith
In addition to establishing that there was no genuine noncommercial speech, the Board has concluded that content of the website was automatically generated rather than represent true statements of independent consumers. The fact the domain name holder copied and used a famous and well-known trademark also supported finding of bad faith.
Thus, the Board ordered that the disputed domain name be transferred to the trademark owner.
To read the entire case, use this link
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- Keep Australia Beautiful National Association Ltd v. Keep Australia Beautiful Council Qld Inc, Community Projects Queensland Ltd (also known as Keep Queensland Beautiful) UDRP Case No. DAU2020-0018
In recent UDRP decision on Oct. 27, 2020, WIPO has ruled that even though the trademark <KEEP AUSTRALIA BEAUTIFUL> was in fact identical to the domain name at issue <keepaustraliabeautiful.org.au> (First Element of the UDRP), the Complainant could not establish the second (“lack of legitimate interest”) and the third (“bad faith”) required elements of the complaint. Thus, the Complaint was denied.
In order to succeed in UDRP complaint, one shall establish 3 elements: (1) the domain name at issue is identical or confusingly similar to the trademark at issue; (2) the Respondent has no legitimate interest or right in disputed domain name; and (3) the respondent has registered and used this domain name in bad faith.
This particular case is interesting because the Complainant was able to establish the first element since the domain name <keepaustraliabeautiful.org.au> is in fact identical to the trademark <KEEP AUSTRALIA BEAUTIFUL>. It is a well-established rule that mere domain name extension such as “.org” or “.au” is a necessary part of a domain name registration and is not taken into account for the similarity test.
However, proving the second element has turned out to be a real challenge for the Complainant who was not able to overcome it. Both parties here have contested this part and presented their own arguments to defend their position. Interesting that both parties here claimed that they and not the other party owned the trademark. In fact, it was a challenge to determine who really owned the trademark in view of the parties’ prior relationship and unclear language in a trademark license agreement between them.
Based on facts presented, the Complainant was a licensee of the Respondent under the Trademark License Agreement. However, the license agreement was not very clear, and it also named the Complainant as “Assignee” and the Respondent as the “Assignor” indicating a trademark assignment which is not a common way to handle this type of situation. Moreover, later in 2003, in fact there was a trademark assignment of the TM registration at issue to the Complainant. Later, for some reason, this tm was not renewed, was expired and became inactive in 2011. Nevertheless, the parties after that further extended their original trademark license agreement up to 2021. This not traditional approach in handling TM license created an uncertainty as to who ended up to own the mark and as the result the complainant was not able to establish this second element of the UDRP.
Usually in TM license agreements, the Licensor (TM owner) continues to own the trademark and all intellectual property rights associated with the mark allowing the Licensee (the authorized user) only a right to use the trademark. This is why it is very different from a TM Assignment when the ownership of the mark is being transferred to the Assignee. This case is probably a good reminder to be accurate and clear with the TM License language as to who owns the mark and associated intellectual property rights, who controls it and how, what rights the licensor and the licensee has and what happens if one party violates them, whether there is a license, whether it is exclusive or not exclusive, whether there is an assignment or not, and if there is one, then under what conditions.
Here, WIPO decided that even though the trademark <KEEP AUSTRALIA BEAUTIFUL> was expired (not renewed), the Complainant (Licensee) has admitted the trademark rights of the Respondent (Licensor) even if unregistered (expired) at this time because they have extended the license agreement between them again up to 2021. The fact that both parties have extended their trademark license agreement even after the expiration of the TM registration, shows their mutual understanding and agreement that it is the Respondent who owns the trademark and not the Complainant.
Accordingly, the UDRP Complaint was denied.
To read the entire case, use this link
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- OANDA Corporation v. Contact Privacy Inc. Customer 0156022288 / Oanda Ltd, Philimonon Co. (WIPO UDRP Case No. D2020-1901)
In recent UDRP proceeding dated October 2, 2020, World Intellectual Property Organization decided that <oandaassets.com> domain was confusingly similar to the trademark <OANDA> and ordered transfer of the domain name to the Complainant.
Complainant has successfully established that the domain name <oandaassets.com > was confusingly similar to its registered mark <OANDA> as well as the other required elements of the UDRP proceeding. The complainant is a global company that provides financial services. It owns <OANDA> trademark registrations in various jurisdictions including the U.S. TM Reg. 2874938 in Class 36: “Currency exchange services; financial information services.” It also owns a corresponding domain name <oanda.com>.
When a domain name is the exact duplication of the trademark, it is easy to conclude that the disputed domain name is identical to the trademark. However, when the domain name is not identical, the Complainant should prove that it is confusingly similar by making its case.
Here, the domain name was found to be confusingly similar to the trademark at hand because it incorporates the exact same trademark <OANDA> with addition of a mere descriptive term “assets”. The descriptive or generic terms are usually weak and cannot create a sufficient distinctiveness to prevent confusing similarity with the trademark. The gTLD “.com” is usually disregarded for the purposes of this analysis.
The Complainant has also successfully proved that the Respondent did not have rights or legitimate interests in the domain name as well as registered and used it in bad faith. General rule here is that the Complainant shall make its prima facie case with the evidence at hand. Then the burden of proof shifts to the Respondent to show the opposite. Here, the Complainant has made its case, and the Responded has failed to respond.
Accordingly, the Panel has ordered that the disputed domain name be transferred to the Complainant.
To read the entire case, use this link
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- WhatsApp Inc. v. Varun Kumar (WIPO UDRP Case No. D2020-2166)
In recent UDRP proceeding dated October 5, 2020, World Intellectual Property Organization decided that <whatsappshopping.com> domain was confusingly similar to the trademark <WHATSAPP> and ordered transfer of the domain name to the Complainant.
Complainant has successfully established that the domain name <whatsappshopping.com > was confusingly similar to its registered mark <WHATSAPP> as well as the other required elements of the UDRP proceeding. The complainant is a well-known company that provides a cellphone app allowing users to communicate with each other. It owns “WHATSAPP” trademark registrations in various jurisdictions including the U.S. TM Reg. 3939463 in Class 42: “Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the field of personal productivity…”
When a domain name is the exact duplication of the trademark, it is easy to conclude that the disputed domain name is identical to the trademark. However, when the domain name is not identical, the Complainant should prove that it is confusingly similar by making its case.
Here, the domain name was found to be confusingly similar to the trademark at hand because it incorporates the exact same trademark <WHATSAPP> with addition of descriptive term “shopping”. The descriptive or generic terms are usually weak and cannot create a sufficient distinctiveness to prevent confusing similarity with the trademark. This is especially true when the trademark is well-known and famous and thus any use of it in combination with descriptive terms would likely cause a confusion in the eyes of the consumer rather than create an independent commercial impression. The gTLD “.com” is usually disregarded for the purposes of this analysis. Moreover, as WIPO arbiter duly noted here, it is “a technical registration requirement” for a domain name.
The Complainant has also successfully proved that the Respondent did not have rights or legitimate interests in the domain name as well as registered and used it in bad faith. General rule here is that the Complainant shall make its prima facie case with the evidence at hand. Then the burden of proof shifts to the Respondent to show the opposite. Here, the Complainant has made its case, and the Responded has failed to respond.
Accordingly, the Panel has ordered that the disputed domain name be transferred to the Complainant.
To read the entire case, use this link
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- United States Patent and Trademark Office v. Booking.com B.V., 140 S. Ct. 2298 (2020)
A business applied to register “BOOKING.COM” mark for “hotel booking services” with the United States Patent and Trademark Office (USPTO) but was refused registration on the ground of being a generic term. This case has been challenged up to the U.S. Supreme Court under the Petition of Certiorari.
This is an interesting case because it presents an argument as to whether a mark is generic (and thus, may never be registered) or merely descriptive (and thus, may acquire distinctiveness and become eligible for trademark registration with the USPTO).
Generic terms are words that identify a type (or a category) of goods or services. They are not eligible for trademark registration. Descriptive marks describe a particular quality, function, characteristic, or ingredient of goods or services. Descriptive marks lack inherent distinctiveness, however, contrary to generic terms, they may acquire distinctiveness (secondary meaning) and may become eligible for trademark registration.
The U.S. Supreme Court held that a genetic mark when used in combination with a domain name “.com” may function as a protectable trademark if the consumers do not perceive it as a generic term but rather view it as a source identifier. If so, the mark may be considered as a descriptive term since it describes the nature of services provided. A descriptive term, even though not inherently distinctive from the beginning, may acquire a secondary meaning (acquired distinctiveness) and then become eligible for trademark registration.
The court explained that whether a particular mark is a genetic term is determined by the consumers’ perception (what they think about it when they experience it). Use of a generic term with “.com” and in combination with the corresponding website creates a particular image, and when consumers experience it, they form their opinion on to how they perceive it. Apparently, in this particular case, there was sufficient evidence to show that the consumers viewed this website along with the domain name not just as a reference to a generic term but rather as a source of particular services being offered. When they saw the website, they would more think about a particular company offering services rather than a generic type of services for “hotel booking”. Therefore, the mark in its entirety is not genetic.
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- Iancu v. Brunetti, 139 S. Ct. 2294 (2019)
An entrepreneur applied to register its mark “FUCT” with the United States Patent and Trademark Office for a clothing line but was refused registration under Section 2 (a) of the Lanham Act which prohibited registration of immoral or scandalous marks. This case was challenged up to the U.S. Supreme Court with final determination that this provision under the Lanham Act is unconstitutional. Accordingly, going forward, USPTO may no longer refuse a new trademark application based on the ground of being “immoral or scandalous”.
Scope and impact of this case. This 2019 case, similar to Matal v. Tam in 2017, addresses constitutionality of regulation of Free Speech by the Federal Government. Going forward, the USPTO may no longer refuse a new trademark application based on the ground of being “immoral or scandalous”.
USPTO may still refuse a new trademark application on the other grounds, for example, being identical or confusingly similar to another trademark application or registration. A trademark owner of a senior mark may still oppose a registration of a new trademark application if it has standing and priority rights.
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- Matal v. Tam, 137 S. Ct. 1744 (2017)
A rock group applied to trademark their name “The Slants” with the United States Patent and Trademark Office (USPTO) but was refused registration under Section 2 (a) of the Lanham Act which prohibited registration of disparaging marks. It was an established law for many years that allowed USPTO to refuse trademark registration to a mark that conveys a negative meaning to a particular group of people. In this case, USPTO concluded that mark “THE SLANTS” could mean a derogatory term for Asians. This case was challenged up to the U.S. Supreme Court with final determination that this provision under the Lanham Act is unconstitutional. Accordingly, going forward, USPTO may no longer refuse a new trademark application based on the ground of disparagement.
It is important to understand the scope and impact of this case. This case was primarily focused on constitutionality of section 2 (a) of the Lanham Act in allowing the Federal Government (Federal Agency) to exercise its discretion to refuse a new trademark application. It was not about whether a new trademark applicant can register its mark if it is disparaging or derogatory to another registered trademark. The focus of this case was on the First Amendment of the U.S. Constitution and the scope of the Federal Government regulation of Free Speech.
USPTO may still refuse a new trademark application on the other grounds, for example, being identical or confusingly similar to another trademark application or registration. A trademark owner of a senior mark may still oppose a registration of a new trademark application if it has standing and priority rights. A new trademark applicant now has more freedom in selecting its new brand subject to the above rights of senior trademark owners and other provisions of the Lanham Act.