Florida Patent Lawyer Blog

As a Florida Patent Lawyer, I keep up with recent happenings at the U.S. Patent and Trademark Office (USPTO) to stay abreast on the latest in trademark law. Recently, the difficulties encountered at the USPTO by NYC-based Foursquare, which offers a location-based social networking website, has come to light.

First off, the trademark application for the company's main mark - FOURSQUARE - has been rejected because an improper specimen was submitted (see trademark application number 77956808). Apparently the attorney for Foursquare submitted an advertisement for the web site and not an actual web page where the applied-for services are rendered. This is a rookie mistake. Serious practitioners don't screw up the specimen requirement. The real question is why didn't Foursquare, which is valuated at $50 million and has 3 million unique users, employ a heavy weight trademark attorney to handle its main mark?

Second, the company's trademark application for CHECK IN (see trademark application no. 7956822) has been refused multiple times on the grounds that it's informational and/or descriptive. In the technology world, there is no hotter term than "check in" right now, especially in light of the fact that Facebook is entering into the location space with Places.While it seems likely that they weren't the first to use it, Foursquare made it ubiquitous among the location-based services. Still, it's a rather descriptive term and it was another rookie mistake to submit a 1(a) use-based application. They should have gone the 2(f) acquired distinctiveness route - they'd probably have a trademark registration by now. Instead, they took the 1(a) route and now there's a Letter of Protest on the record, which will only hurt their case moving forward. Who is this attorney, anyway?

Third, the company's trademark application for FOURSQUARE CHECK IN (see trademark application no. 77956817 ) has been refused for the same reasons as above - it's informational and/or descriptive.

The moral of the story here is that trademark prosecution can be complicated and subtle. Companies with highly-valued trademark assets should hire a specialist that knows his way around trademark law to handle their company jewels, such as an attorney that is Board Certified in Intellectual Property Law.

Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office issued the In re Calera Corp decision, which deemed the term GREEN to be merely descriptive of an environmentally friendly product or service. As a Miami Trademark Attorney, I found this decision interesting in light of the increasing number of GREEN trademarks and service marks that I see in use in every day life.

At issue was an applicant's trademark GREEN CEMENT associated with an environmentally friendly brand of cement. The Trademark Office's examining attorney refused to register this mark under the premise that it was merely descriptive of the product sold by the applicant. Among other things, the applicant argued: "there are abundant meanings associated with the adjective 'green' (at least twenty), consumers must necessarily exercise mature thought or follow a multi-stage reasoning process in order to determine what product characteristics the term GREEN CEMENT refers to. For example, it is not clear whether the cement of Applicant's goods is: 1) freshly set and not completely hardened; 2) green in color; 3) newly manufactured or poured; 4) covered in foliage; or 5) environmentally beneficial."

The TTAB disagreed and found: "The term GREEN indicates that the product is environmentally beneficial. There simply can be no dispute today that the term green, ubiquitously used as an adjective with any good or service, will be perceived as an indicator that the good or service is environmentally friendly." Therefore, since the term GREEN was descriptive of the term CEMENT, the TTAB found the mark descriptive and affirmed the refusal by the examining attorney.

When two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d1370 (Fed. Cir. 2004). This is exactly what happened in In re Calera Corp.

From a business owner's standpoint, the lesson is that you should stay away from overly descriptive trademarks. As illustrated above, merely descriptive trademarks are not registrable with the U.S. Patent and Trademark Office therefore offer reduced, if any, trademark protection.

It is common for the trademark of a business or product to at least partially describe the product or service the business sells. But can you register that trademark with the U.S. Patent and Trademark Office? This is an issue I often deal with as a Florida Trademark Attorney. In short, the answer is that the non-descriptive and non-generic portion of the trademark, if any, is registrable. This is an issue illustrated by last week's decision of the Trademark Trial and Appeal Board (TTAB) in Washington, DC.

Last week, the TTAB issued its decision in the Jonathan Drew, Inc./Drew Estate case, which involved an appeal from a refusal to register the INFUSED CIGARS mark used in connection with the sale of cigars. The Trademark Office refused to register the INFUSED CIGARS mark on the basis that the mark is generic and descriptive. The Trademark Office cited vast amounts of literature, ranging from magazine and newspaper articles to third party web sites, supporting its position. Apparently, an infused cigar is a cigar that has been imbued with a flavor. For example, some cigars are infused with a liquor or a wine. The Applicant did not rebut this evidence.

The Applicant's main argument was that Drew Estate was a pioneer cigar company - the first to infuse cigars commercially and the company that coined the term "infused cigars." The TTAB responded:

"We do not question that applicant may be a "leading maker" or perhaps a "pioneer" of "infused cigars" or even that applicant coined the term. The problem is that none of these facts overcomes the generic meaning of "infused cigars" or makes this generic term registrable. See, e.g., In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) ("Even if applicant was the first... user of a generic term or phrase,...that does not entitle applicant to register such a term or phrase as a mark."). While sellers may recognize applicant as a well known maker or blender of cigars and that applicant is a significant source for "infused cigars," they nevertheless use the term "infused cigars" to refer to a type of cigar, rather than to brand of cigar. The record is clear that they do not recognize "infused cigars" to indicate the source of those cigars only in applicant.

Thus, the TTAB was very clear that a generic or descriptive term cannot be registered, even by the first user of the term or the party that coined the term. Drew Estate is out of luck.

If Drew Estate had sought my services as a Patent and Trademark Attorney, I would have advised him to seek other forms of protection for the "infused cigar" concept, including patent protection for the final infused cigar product and/or for the infusing process. This type of protection, if attainable, would have allowed Drew Estate to stop other cigar makers from making or selling infused cigars.