Florida Patent Lawyer Blog

There are quite a few differences in the way deadlines are calculated for trademark practice, as opposed to patent practice. One of the main differences is how to calculate the deadline for filing an appeal to the Trademark Trial and Appeal Board (TTAB). And one of the main problems in figuring out the deadline is that you must look beyond the TMEP to find the answer - one important rule is located in the TBMP. Below I list the main rules that dictate how the appeal deadlines are calculated for trademark practice.

• You have 6 months to file a Notice of Appeal and an Appeal Brief in response to a final refusal to register a trademark. TMEP 1501


• Assuming you file a Notice of Appeal more than two months before the 6 month deadline (see above), you have 60 days to file an Appeal Brief after the Notice of Appeal. TMEP 1501.02(a)


• You have 6 months to file a Request for Reconsideration in response to a final refusal to register a trademark. TMEP 715.03. But keep in mind that the Request for Reconsideration does not affect the 6 month deadline above.
• If you timely file a Request for Reconsideration and a Notice of Appeal in response to a final refusal , then the 6 month deadline is halted. If the Examiner subsequently decides to deny your Request for Reconsideration, the TTAB will give you additional time to file your Appeal Brief. TBMP 1204
  

Lesson Learned: You should always file a Notice of Appeal along with the Request for Reconsideration, since there is no penalty for doing so and it will stop the 6 month Appeal Brief deadline. Subsequently, you will either get a Notice of Allowance from the trademark examining attorney (which will render the appeal moot) or you will receive a new refusal and the TTAB will give you additional time to file an Appeal Brief.

The only reason not to file the Notice of Appeal with the Request for Reconsideration, would be to save the $100 (per class) fee that goes with the Notice of Appeal. But that small benefit is outweighed by the halting of the deadline and the ease of which this process fits into a standard patent/trademark docketing program. Further, if you file a Request for Reconsideration without filing a Notice of Appeal, there is a possibility that you will run into the 6 -month deadline, without having received a response to the Request, thereby forcing you to file the Notice of Appeal without having the benefit of reading the examining attorney's last refusal. Thus, it's better to stop the 6-month deadline so you can receive a response to the Request and then have additional time to prepare and file an Appeal Brief.

Continue reading "Deadlines for Responding to Final Refusals to Register a Trademark" »

Under the Federal Trademark Dilution Act, a famous trademark is one that has established a strong connection, in the minds of the consumers, between a specific good or service and the source of that good or service. For example, the Coca Cola brand has been determined to be a strong and famous mark. And with a valuation of over $67 billion, the Coca Cola brand is one of the most valuable and long lasting trademarks in the U.S.

Have you ever wondered what the original Coca Cola trademark registration looks like? Well, I looked it up at the U.S. Patent and Trademark Office and it's over one hundred years old.

Click here to see the first Coca Cola registration. There are a couple of interesting things to note about this trademark registration dating back to 1893. First, it is classified under "nutrient or tonic beverages." Clearly, people had a different idea of what constituted a nutritious food back then. Second, you can see that the stylized words are slightly different from the way they are used today on soda cans. Lastly, you can see the signatures of the original filers on the registration - a practice you don't see anymore at the Trademark Office.

As a trademark owner, we can only aspire to have a trademark with a value anywhere close to the value of Coca Cola's trademark. But it is telling that even in 1893, the owners of the Coca Cola Company knew the importance of registering their mark. Thus, my recommendation to any brand owner is to give serious thought to registering their trademark with the U.S. Patent and Trademark Office.

Continue reading "The Famous Coca Cola Trademark" »

What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow.

You are well aware that last year's Bose decision - In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) - has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: "in order to prove fraud, [the charging party] must show that [1] a statement was false, [2] the falsity was intentional, and that [3] the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven [4] to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch "Polmos" SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).

The Bose holding was so revolutionary, it spawned the following exemplary titles for law review and legal articles: "Bose changes everything," "Is there any reason to still be concerned about fraud?" "Has Bose blown away the trademark fraud cancellation crusade?," "Curtain falls on fraud on the Trademark Office." Legal pundits have opined that Bose may have raised the bar for committing fraud on the Trademark Office to a nearly unattainable level. Indeed, in light of the facts of the Bose case, a reasonable argument can be made that fraud has been virtually eliminated.

In light of the above, it is no surprise that since the Bose decision, there is not one reported District Court or Federal Circuit case regarding fraud on the Trademark Office (as of early Dec. 2010). Further, since Bose, there have been 43 cases involving fraud at the TTAB (as of early Dec. 2010), and of those 43, none have resulted in a finding of fraud. This illustrates how difficult it has become post-Bose to succeed in cancelling a registration based on fraud. As a result, a finding of fraud in any District Court or TTAB case could be negative legal history for Bose, would almost certainly be a reported decision and would surely be written about and scrutinized by the legal journals. But don't hold your breath, I suspect it will be a very long time before we see any forum find fraud after Bose.

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I'm often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an "exceptional case." See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys' fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case "exceptional").

As an example of an exceptional case, in Nutrivida, Inc. v. Inmuno Vital, Inc., 46 F.Supp.2d 1310 (S.D. Fla., 1998), the Defendant continued to utilize the trademark at issue long after receiving a cease and desist letter. The Court found that under the foregoing authorities, such deliberate, knowing and intentional infringement warranted a determination that the case was "exceptional" for purposes of determining the trademark holder's entitlement to an attorneys' fee award under the Lanham Act.

The lesson here is that your case must be exceptional to get attorney's fee and there must be a showing of deliberate intent to make the case exceptional. This is difficult to prove in cases involving likelihood of confusion where the Defendants did not know beforehand that their mark was similar to the Plaintiff's mark. But in counterfeiting cases, or cases where the Defendant was contacted beforehand and he continued infringing, intent is easier to prove. In those cases, attorney's fees are in play.

How to determine attorney's fees is another matter altogether. The Court normally applies the "lodestar" approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party's attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that "a party should be entitled to retain the most competent counsel available" because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).

Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages.

Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of punitive damages is not to compensate the plaintiff. The plaintiff in a trademark infringement case, however, will in fact receive the punitive damage award. Often, punitive damages are awarded where compensatory damages are deemed an inadequate remedy. The public policy behind punitive damages is that the court may impose them to prevent under-compensation of plaintiffs, to allow redress for undetectable torts.

Punitive damages are available and may be pursued under the Florida common law for trademark infringement. Victoria's Secret v. V. Secrete Catalogue, Inc., 161 F. Supp. 2d 1339, 1356 (S.D. Fla. 2001); Fla. Statute 495.161. Therefore, in especially egregious cases of trademark infringement, such as cases that involve willful infringement, the Plaintiff should consider requesting punitive damages in addition to the other available remedies, e.g., Defendant's profits, attorney's fees and costs. The Florida statutes, however, should be consulted regarding the potential caps on punitive damages. Fla. Stat. 768.73.

HAPPY THANKSGIVING!!

How do you calculate damages in a Trademark Infringement case? Is the financial data of the Plaintiff relevant when calculating damages in a trademark infringement case? This is an issue that often comes up during the discovery phase of a trademark infringement case. As a Miami Trademark Attorney currently involved in multiple trademark infringement cases in the Southern District of Florida, the subject of calculating damages is always in the forefront of my mind.

With regard to a federal trademark infringement claim under the Lanham Act, a Plaintiff can elect to recover actual or statutory damages pursuant to 15 U.S.C. § 1117. Section 1117(a) allows a registrant to recover Defendants' profits, Plaintiff's damages and the costs of the action. Plaintiff's damages, however, may be calculated as Defendant's profits and therefore does not involve an inquiry into Plaintiff's financial situation. Nutrivida, Inc. v. Inmuno Vital, Inc., 46 F. Supp. 2d 1310 (S.D. Fla. 1998) ("An award of an infringer's profits has traditionally been viewed under the Lanham Act and the common law of unfair competition as a way of compensating the plaintiff for sales lost to the infringer.") Therefore, a calculation of damages under 15 U.S.C. § 1117 does not necessitate an exploration of Plaintiff's financial data in any way.

With regard to Florida common law trademark infringement, Florida common law mirrors the damages available under 15 U.S.C. § 1117. Again, under Florida common law, Plaintiff's damages may be calculated as Defendant's profits and therefore does not involve an inquiry into Plaintiff's financial data. Nutrivida, Inc., 46 F. Supp. 2d at 1315.

Consequently, a Plaintiff in a trademark infringement suit (federal or Florida state) may elect damages under 15 U.S.C. § 1117 and Florida common law, wherein Plaintiff's financial information is irrelevant. Therefore, the financial data of the Plaintiff may not be discoverable by the Defendant in a trademark infringement suit and such attempts by the Defendant should be resisted in compliance with the Federal Rules of Civil Procedure. This is especially concerning in cases where the financial information being sought can be used by the Defendant to gain a competitive edge over the Plaintiff.

Does the type of advertising employed by a Defendant in a trademark infringement case matter? Yes it does. In fact, it is one of several key factors that are central to a trademark infringement case. As a Miami Trademark Attorney currently representing litigants in multiple trademark infringement cases in the Southern District of Florida, advertising and its relation to the trademark infringement analysis are subjects that have come up more than once in a dispute.

It is standard in a trademark infringement case to discover information about advertising employed by the Defendant, since similarity in advertising media is one of the seven factors used in assessing whether likelihood of consumer confusion - the touchstone of trademark infringement - has occurred. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.1997).In determining the likelihood of confusion between two marks, the 11th Circuit requires a district court to analyze the following seven factors:
(1) type of mark,
(2) similarity of mark,
(3) similarity of the products the marks represent,
(4) similarity of the parties' retail outlets and customers,
(5) similarity of advertising media used,
(6) defendant's intent and
(7) actual confusion.

As such, the type of advertising (element 5 in the seven factor test above) employed by the infringing party is probative of whether there was similarity between the advertising used by the infringer, as compared to that of the Plaintiff. Frehling Enterprises v. Int'l Group Select, 192 F.3d 1330, 1339 (11th Cir., 1999). Consequently, it is important that all information pertaining to the advertising used by the Defendant in a trademark infringement case is requested and produced during the discovery period of a lawsuit, since similarity in advertising media is crucial to the trademark infringement inquiry

Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew exactly what to present to a group of patent practitioners and he has really changed my outlook regarding the Patent Office. Just some of the good news he presented:
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• a program to decrease pendency to first action to 10 months


• a program to decrease TOTAL pendency to 20 months


• a First Action Interview program to encourage Examiner's to initiate an interview after the first search but before the first action is entered


• hiring 1,000 Examiners this fiscal year and another 1,000 next fiscal year (yes, that's three zeros)

Of course, as a full-time patent practitioner I was ecstatic to hear that one day I may get a first office action 10 months after filing a utility patent application. In my ten years practicing, I've seen that only once. And to think that I could get a call from an Examiner BEFORE the first office action! That would greatly facilitate getting cases to final resolution quickly. Theoretically, if these programs were fully implemented, you could file a patent application on Jan. 1 and you could have an issued patent in the same year. If I could tell my clients they could potentially have an issued patent within one year, I think they'd want to file many more patent applications. Thus, if these programs stay on course, the USPTO can expect increased filings.

In short, Commissioner Stoll's programs are aiming to reduce unnecessary back-and-forth between practitioners and the USPTO and to expedite the process of getting to final resolution. For that reason, his programs are immensely popular, especially among us patent attorneys.

As a side note, Commissioner Stoll came off as a supremely cool spokesperson for the Office, deftly handling complaints about the USPTO from attendees while focusing on his agenda to improve the USPTO. From a practitioner standpoint, we should support Bob Stoll's programs, as they will make patent prosecution easier for us and surely increase business.

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO)issued another decision evidencing how enormously difficult it is to invalidate a trademark registration on the basis of fraud on the USPTO. In the decision of MCI Foods v. Brady Bunte (TTAB 92046056), the TTAB found that a knowingly overly-expansive description of goods and services did not constitute fraud on the USPTO. As a Miami Trademark Lawyer with a full docket of trademark disputes, this case is instructive in its exposition of the law surrounding fraud on the USPTO.

The registrant owned a federal trademark registration for CABO PRIMO in association with a plethora of Mexican foods, such as burritos, tortillas, tacos, etc. The problem is that the registrant had ONLY used the mark in association with burritos. And the registrant testified to this in his deposition. That is, he admitted that he had not used the mark with any other products other than burritos. You'd think this would constitute fraud on the USPTO, wouldn't you? No.

The TTAB held: "While MCI sought to obtain a registration covering as broad a description of goods as possible despite the fact that it was not using the mark on all the goods listed in the description of goods, there is no evidence or testimony indicating that MCI was advised that it could not or should not apply for Mexican food products not identified by its ... mark." Consequently, the TTAB allowed the registration to stand and merely restricted the registration to burritos only. That is, the TTAB deleted all other goods, except for burritos, from the registration, which remained valid.

The educational moment here is how Courts respond when there is a misrepresentation during trademark prosecution that does not rise to the level of fraud on the USPTO. The answer is restriction of the registration - not invalidation of the registration. This and recent decisions of the TTAB seem to indicate that it's practically impossible today to invalidate a registration based on fraud on the USPTO. Restriction of the registration is more likely.

Earlier this week, the famed coupon startup, Groupon, filed a trademark infringement complaint against an Australian web site named Scoopon, which does the same thing. As a Florida Trademark Attorney with several active trademark infringement cases, I keep up to date on the latest happenings in trademark enforcement.

This case involves Groupon's U.S. trademark registration number 3685954 for the word GROUPON associated with a web site that promotes the goods and services of others. The infringer, Scoopon, is an Australian copycat web site. See the Complaint here.

At the heart of this matter is whether there's a likelihood of confusion between the two marks - Groupon and Scoopon. In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court held the factors relevant to a determination of likelihood of confusion pertain to the similarity or dissimilarity of the marks and the relatedness of the goods or services.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In light of the above, it seems to me that since Groupon and Scoopon are so phonetically similar (I mean, they rhyme) and both web sites offer the same service, the likelihood of confusion factors clearly lean toward a finding of infringement. Scoopon would be wise to work out a settlement with Groupon before it gets hit with some large damages.

It's an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer's trademark registration. As a Florida Trademark Lawyer, this is a situation I've seen more than once and I'm constantly looking for the courts' and the Trademark Trial and Appeal Board's (TTAB's) take on this issue. The TTAB's recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it's usually the registrant that wins.

As originally reported in the Property Intangible blog, strike one against the manufacturer was that it brought the cancellation action almost 11 years after the mark was registered, well after incontestablity is established. Incontestability means, of course, that there are limited bases for cancelling a registration, and incorrect ownership isn't one of them. The manufacturer therefore had to rely on fraud as its basis for cancellation, i.e., the manufacturer. The court stated:

"claims that respondent fraudulently obtained the registration by asserting that it was the owner of the mark when, in point of fact, petitioner owned the mark. Because petitioner has alleged and attempted to establish a willful withholding of ownership information by respondent when it prosecuted the underlying application that matured into the involved registration, the ownership question may be addressed, but only in the context of fraud."

(italics in original.) Fraud has to be "proven to the hilt," showing that a statement was false, the falsity was intentional, and that the false statement was material to obtaining or maintaining a registration.

There's more than one lesson to be learned here. First, ownership of the mark is not a premise for cancelling an incontestable mark. Second, fraud on the USPTO is really hard to prove, since the Bose case.

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.

The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the "heavy burden" in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client's rights at the USPTO. The holding in this case illustrates how a "fraud on the USPTO" claim can and cannot be won.

The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud. The TTAB stated in the Metal Gear decision: "To prove its claim of fraud, opposer would need to prove "to the hilt" with "clear and convincing evidence" that applicant knowingly" made a "false, material misrepresentation of fact" regarding the ownership of the relevant mark." In the Bose decision, the Court emphasized that proving falsity was insufficient. Citing earlier precedent, the Court noted, "absent the requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation." Id. at 1940, citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1011 n.4, 212 USPQ 801 (CCPA 1981).

The TTAB went on to state: "Even if applicant's witness is incorrect in his belief that applicant owns the mark, however, opposer has not carried its heavy burden of proving the "subjective intent to deceive," which, the Court in Bose noted, "however difficult it may be to prove, is an indispensable element in the analysis." Id. at 1941, citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366, 88 USPQ2d 1001 (Fed. Cir. 2008). Accordingly, since we find that opposer has not proven "to the hilt" with "clear and convincing evidence," the "subjective intent" of applicant "to deceive" the USPTO by falsely claiming ownership in the METAL GEAR mark, the claim of fraud fails."

The lesson here is that prosecuting a "fraud on the USPTO" claim is super difficult. If you can't get the registrant to admit under oath that he intended to deceive the USPTO, and you don't have a smoking gun document, the fraud claim will lose.

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.

What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors.

The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment. The Imperial Tobacco Federal Circuit case stands for the holding that the trademark owner may rebut the presumption of abandonment arising from its non-use by presenting evidence showing that its non-use during that period was excusable, or evidence showing that, during the period of non-use, it maintained an intent to resume use of the mark. So what constitutes intent to resume and what constitutes an excuse?

The court in Imperial Tobacco set a high bar for proving intent to resume use. Even though the party claiming trademark rights took steps each year from 1981-1987 - the period of non-use - towards introduction of the cigarette brand bearing the mark, the court held this was not enough to prove intent to resume use. Specifically, the following activity was found to be inadequate: 1) developing a marketing strategy for the products bearing the mark, 2) seeking registration of the mark for the goods in question, and 3) making efforts to license the mark.

Similarly, in another case the registrant was found not to have the intent to resume use even though he took the following steps during the non-use period: 1) making trips abroad in an effort to establish stores under the mark 2) meeting with real estate agents and 3) visiting possible sites for the stores and examining stores of competitors. Richard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998).

The only acceptable excuse outlined explicitly in the Imperial Tobacco case was the pending resolution of trademark litigation, see, e.g., La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274, 181 USPQ 545, 550 (2nd Cir.1974); New England Duplicating Co. v. Mendes, 190 F.2d 415, 418, 90 USPQ 151, 153 (1st Cir.1951). But the court in Imperial Tobacco did not agree that pending litigation was the cause of the non-use in that case.

In conclusion, the bar is pretty high when attempting to rebut a presumption of abandonment of a trademark due to non-use. A successful rebuttal requires a substantial factual showing of a concrete and uninterrupted series of actions to get the mark in use in commerce during the entire period of non-use.