On January 25, 2017, the USPTO released its Draft Examination Guide on “Incapable Informational Matter” (“Draft Guide”) for public comment. As it has with several prior requests for comment about draft examination guides, the USPTO has requested interested parties to submit their comments electronically through the USPTO’s Idea Scale “Trademark Policy Collaboration Site.” Initially, the USPTO requested that comments be submitted no later than February 13, 2017 (Trademark Alert 1/25/17), but has since extend the deadline until March 15, 2017. (Trademark Alert 2/7/17). To date, no comments have been posted about the guide.
In its January 25 Alert, the USPTO explained the purpose of the Draft Guide:
“The types of wording held as merely informational by case law is growing. Marks that include such wording must be refused because they do not identify the source of the goods or services. Each section of this guide discusses a common category of informational matter and covers case law, analysis, and possible response options. This guidance is intended to promote consistency by clarifying examination policies and procedures.”
See Alert; see also February 13 Alert (same message with minor editorial changes). More particularly, the Draft Guide focuses primarily on refusals to register marks that fail to function as source indicators (in other words, instances where marks, or portions of marks, “fail[ ] to distinguish the applicant’s goods/services from those of others or to identify a single source” and which are thus not qualified to be registered as trademarks because they “fail to function as a mark.” Draft Guide at 1.
EXAMPLES OF MATTER THAT FAILS TO FUNCTION AS A MARK
The Draft Guide focused on three main categories of “informational matter” that are incapable of functioning as a trademark and thus is not registrable: matter that is 1) “used in a manner merely to convey information about the goods/services;” 2) a widely-used message; and 3) a “direct quotation, passage and/or citation from a religious text.” Highlights in each category will be addressed below.
Probably not. No matter how new a formula (a.k.a. recipe) may be, if it simply comprises a combination of ingredients mixed together to form a new and unique dish, it is not likely to be copyrightable. And, once published, even if the recipe contains additional descriptions or commentary or similar copyrightable expressive content, nothing would actually prevent someone from making the dish.
Consider an example of the brand-new restaurant, whose chefs for have worked together to create a very unique and unusual menu for their customers. After several months, one chef leaves to start a new restaurant – and publishes a cookbook that contains many of the recipes he co-developed with his former co-owner.
Is this infringement?
This is actually a trick question – the answer is, “not much”. Generally, trademarks refer to source-identifying marks used in connection with goods (products) and service marks are used for the same purpose, but in connection with services. The associated rights – to be able to preclude others from using a confusingly similar mark in connection with similar goods or services – are the same.
But one important way in which they are different is the way in which an applicant for registration of a mark with the U.S. Patent & Trademark Office (“PTO”) demonstrates that it is using the mark in commerce. Whether an applicant applies for registration of a mark based on actual use in commerce (§ 1(a)) or based upon a bona fide intent to use the mark in commerce (“ITU” – § 1(b)), each applicant must at some point during the prosecution of its application submit an example (“Specimen”) of how the mark is used in commerce in connection with the specific goods or services. (For more about the trademark application process, see Common Questions: What’s Involved in Registering a U.S. Trademark.)
Acceptable Specimens for Trademarks
Simply put, if an applicant seeks to demonstrate use of its mark in connection with goods, it must show the mark as used in the process of selling or offering to sell those goods to the purchasing public. Examples of such use include:
I am pleased to announce that I have joined the IP practice of the law firm, Eckert Seamans Cherin & Mellott, LLC, in its Philadelphia Office. While I’m getting settled, I will not be in a position to post updates to this blog. However, this interruption will only be temporary and I hope to resume posting on new developments in the IP world again shortly – either here or on a blog to be created within the firm. Please stay tuned. If you need to reach me in the meantime, please email me directly.
Privacy and IP Law Blog
On May 11, 2016, Pres. Obama signed into law the Defend Trade Secrets Act of 2016, S. 1890, 114th Congr. (2d Sess. 2016) (“DTSA“), which provides for the first time a federal private right of action to litigants for trade secrets violations. Most states – except for Massachusetts and New York – have enacted versions of the Uniform Trade Secrets Act (“UTSA“) but the DTSA provides additional remedies without preempting state laws or eliminating any of the protections offered by them. Business owners will need to take some actions in the short term in order to take advantage of some of the more powerful remedies created by the DTSA.