Category Archives: Geographically (Mis)Descriptive

Common Questions – What’s Involved in Registering a US Trademark?

So, you’ve decided to launch a brand name in the U.S. and are contemplating registering it in the U.S. Patent & Trademark Office (“PTO“). What can you expect? Not every application is the same, so there will be variations in exactly what happens in the prosecution of your application, but hopefully this will serve as a “Trademark 101 Primer” to describe the basic process overall.  (Note – this post is for general information purposes only and does not provide any specific legal advice.  Contact your trademark attorney to discuss any areas of specific concern.)

BASICS

What is a Trademark? It’s a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark performs the same function as a trademark, but applies to the source of a service rather than of a product. (For simplicity, this post refers to trademarks and service marks collectively as “trademarks.”)

How Valuable is a Good Trademark? The value of a good trademark lies in its ability to convey to the public the source of a particular good or service. The key is to develop a mark unique enough that customers associate it with your goods or services – and only your goods and services. While temptingly simple, choosing a mark that describes your goods and services will not create any trademark value. Customers won’t know to distinguish your goods from others in the same market.

Can  Rights Develop Based on Use? Federal registration is not a requirement to protect trademarks in the U.S. – instead, rights in a particular trademark can be established simply based on use in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Nevertheless, federal registration offers more comprehensive protection than reliance upon common law rights, including providing nationwide notice of the owner’s claim to the mark.

TRADEMARK APPLICATION PROCESS
Continue reading

Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods

On July 31, 2009, Representative Daniel B. Maffei (D-NY) introduced H.R. 3499, to be called the “Trademark Protection Act” in the House of Representatives. The Bill purports to assess civil liability for unfair competition in the form of misleading the public as to the geographic source of a particular product. This provision would amend Section 1125(a)(1), which prohibits “False designations of origin, false descriptions and dilution” in the use of trademarks in commerce in the U.S. 15 U.S.C. § 1125(a)(1).

Apparent Objection to Relocating Manufacturing to China

Among the findings Rep. Maffei proposes, he explains why he introduced the Bill: “Syracuse China was an upstate New York manufacturer in the city of Syracuse. The company was founded in 1871 as the Onondaga Pottery Co. and was one of the last major china makers in the U.S. On April 9, 2009, after more than 130 years in business, Libbey Inc. (of Toledo, Ohio) halted production in Syracuse, eliminating 275 local jobs. Libbey plans to continue selling dinnerware under the name ‘Syracuse China’ even after they stop production at the New York-based plant, but the company will manufacture the product in other countries and import them into the U.S.” H.R. 3499 § 2 (3).

It appears that the Syracuse China Company (which appears to be a different legal entity than the one identified in Rep. Maffei’s Bill) owns a valid registration in the word SYRACUSE, standing alone, which is registered in connection with “China tableware and ornamental chinaware” (Reg. No. 104,744, registered in 1915, alleging a date of first use in 1897). The registration was renewed in 2005, and could be asserted against a different company seeking to confuse consumers about the source of the goods sold in connection with a confusingly similar mark. (That being said, it’s possible that the Libbey Company referenced in the Bill is somehow affiliated or related to the Syracuse China Company such that litigation would not be considered.)

Indeed, it appears that at one time, predecessors of the Syracuse China Company registered variations of the mark “SYRACUSE CHINA” and then let the registrations lapse. Specifically, the following three registrations are marked “dead” in the U.S. Patent & Trademark Office’s database – and therefore cannot be asserted in litigation against some one else’s actual use of the mark in commerce:

* SYRACUSE CHINA (& design), Reg. No. 734,163 applied to “dinnerware and tableware made of China” and was registered in 1962 (alleging a date of first use in 1961). The registration was deemed abandoned in 1987 when the registrant failed to renew it.

* SYRACUSE CHINA 1871 (& design), Reg. No. 841,235 applied to “dinnerware and tableware made of China” and was registered in 1967 (alleging a date of first use in 1966). The registration was deemed abandoned in 1989 when the registrant failed to renew it.

* SYRACUSE CHINA CORPORATION (& design), Reg. No. 975,004 applied to “dinnerware and tableware made of China” and was registered in 1973 (alleging a date of first use in 1972). The registration was deemed abandoned in 1994 when the registrant failed to renew it.

Protection of “Weak” Marks

Also interesting about this proposed Bill is the following draft “finding:” “Trademarks that describe some feature or quality of the goods or that are based on someone’s name or a geographic term are considered to be ‘weak’ and thus are not protectable under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising or other public awareness of a weak trademark, the trademark will be considered distinctive and can be registered with the [US Patent & Trademark Office].” H.R. 3499 § 2 (2).

The statement that “weak” marks are not protectable under U.S. trademark law perhaps goes too far, and despite the second sentence of these draft findings, suggests that these marks may never be protectable. Certainly, in any litigation or other dispute involving a “weak” mark, the parties will debate whether the owner of that mark has demonstrated secondary meaning or acquired distinctiveness, such that the consuming public would automatically associate such a “weak” mark used in connection with the relevant goods or services with the owner of the mark – in other words as a “source indicator”. Descriptive marks such as these can acquire distinctiveness and obtain a level of trademark protection that seems to somewhat be undervalued in the draft “findings” in this Bill.

In addition, this Bill appears to focus only on the ability to register a trademark with the U.S. Patent & Trademark Office. Under U.S. law, trademarks can be protected from misappropriation and confusingly similar use by someone else based on the actual use of the earlier mark in commerce. There is no requirement that every trademark be registered before protection from infringement is available. Instead, senior rights may even exist for unregistered marks in certain circumstances. Notably, the Bill contemplates amending the civil liability provisions relating to marks that are either registered or unregistered – including those known as “common law marks”.

There are definitely benefits to filing an application for trademark registration – including the presumption that the registrant can expand the use of its mark nationwide on the goods or services described in the registration. Even the U.S. Patent & Trademark Office will only register a mark if there has been bona fide use in U.S. commerce, as demonstrated by evidence submitted by the applicant through the application process. See Trademark Manual of Examining Procedure (“TMEP”) § 901.01 (quoting statutory language: “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”).

In addition, even after registration, if a registrant stops using the mark in U.S. commerce, the registration can be cancelled or narrowed to only those goods or services on which the mark continues to be in active use. See TMEP § 1604.10 (explaining requirements to maintain a registration, which will be cancelled if continued use cannot be demonstrated).

Conclusions

Upon introduction, the Bill was referred to the House Committee on the Judiciary. At present, no hearings are scheduled for the Bill. It is unclear whether there will be any further action taken on the Bill.

It also appears that this issue of misidentification of geographic source of origin might not be a pivotal issue for Rep. Maffei. Press releases relating to the various legislative initiatives that he has sponsored or speeches that he has delivered are available on his web site, but none of them relate to this Bill (at least, none had been posted at the time that this blog entry was prepared). Instead, the only relevant reference appears to be Rep. Maffei’s June 23rd announcement that the Syracuse China Company was eligible for Trade Adjustment Assistance.

Current status of the Bill can be found through the legislature’s search service, Thomas.gov.