Florida Patent Lawyer Blog

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.

Earlier this month, the Trademark Trial and Appeal Board (TTAB) affirmed a likelihood of confusion refusal under Trademark Act Section 2(d) in the case of In re Plastic-Plus Awards . See the TTAB decision here. As a Miami Trademark Attorney with a sizable trademark prosecution docket, this case is interesting because it illustrates the law surrounding the comparison of marks in a likelihood of confusion comparison.

At issue was an existing trademark registration for MOTION TROPHY and Appellant's trademark application for MOTION XTREME. The Appellant appealed a likelihood of confusion refusal under Trademark Act Section 2(d). In regard to the comparison of the marks, the TTAB started off with a recitation of case law: "In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the source of the goods offered under the respective marks is likely to result."

But then the TTAB hedged a bit when it stated: "Although likelihood of confusion must be determined by analyzing the marks in their entireties, '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.' In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)."

This illustrates that the legal criteria for comparing two marks in a likelihood of confusion inquiry is more complicated that just looking at two marks "in their entirety" and deciding if they are similar. Various other factors are considered during the determination. In this case, the dominance of certain parts of each mark was considered, and weights were placed on certain elements of each mark to reflect that dominance. The final determination, however, was a consideration of the marks in their entireties. Thus, the resulting likelihood of confusion inquiry in this case turned out to be a hybrid of considering the marks in their entirety AND comparing individual elements of each mark. This is one of the subtleties of federal trademark law and one of the main reasons you should consider hiring a Board Certified Specialist in the area of Intellectual Property Law to service your trademark law needs.

Can anyone commence a trademark cancellation proceeding before the U.S. Patent and Trademark Office? Must you have a tie or other relation to the mark being canceled? As a Trademark Lawyer practicing in Miami, Florida, I've been asked this question more than once by a client who desires to cancel a U.S. trademark registration.

On the issue of standing to institute a cancellation proceeding, 15 U.S.C. § 1064 [Section 14 of the Trademark Act] states that a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register ... Further, 37 CFR § 2.111(b) states that any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.

The term "damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns specifically a party's standing to file an opposition or a petition to cancel, respectively. A party may establish its standing to oppose or to petition to cancel by showing that it has a "real interest" in the case, that is, a personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and TBMP § 309.03(b). There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding.See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves) a claim of likelihood of confusion that is not wholly without merit. See Lipton Industries, supra; Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993). Also, a real interest in the proceeding and a reasonable belief of damage may be found if Plaintiff pleads that Plaintiff has been refused registration of its mark because of defendant's registration, or has been advised that it will be refused registration when defendant's application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant's registration. See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000)

Interestingly, however, if Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of respondent's registration, this satisfies the "damaged" requirement. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

Therefore, a party seeking to cancel a U.S. trademark registration at the U.S. Patent and Trademark Office has a variety of options available when attempting to satisfy the standing and therefore the "damaged" requirement for commencing a trademark cancellation proceeding.

Can you cancel an active U.S. Trademark Registration that has been abandoned? As a Trademark Attorney practicing in Miami, Florida, I've been asked this question more than once by a client wanting to clear the path for their own registration.

The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when "its use has been discontinued with intent not to resume such use." The definition of abandonment is found in this provision, as follows:

A mark shall be deemed to be "abandoned" if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. ... See 15 U.S.C. §1127.

Because registrations are presumed valid under the law, the party seeking to cancel a registration on the ground of abandonment bears the burden of proof to establish the case by a preponderance of the evidence. See On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); and Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989). If petitioner makes a prima facie case of abandonment, the burden of production, i.e., going forward, then shifts to the registration holder to rebut the prima facie showing with evidence. Cerveceria v. Cerveceria, Id.

Therefore, a party seeking to cancel a U.S. trademark registration on the grounds that is has been abandoned can commence a trademark cancellation proceeding at the U.S. Patent and Trademark Office, and he bears the burden to prove abandonment by a preponderance of the evidence. Another requirement of the Plaintiff in a trademark cancellation proceeding is standing, which shall be discussed in tomorrow's blog entry.

Obtaining a U.S. trademark registration based on a foreign registration under §44(e) has its benefits, but what happens after the U.S. registration is obtained? Is the validity and/or status of the U.S. registration tied to the foreign registration? Is the foreign-based U.S. registration subject to the same provisions that apply to all other U.S. registrations? As a Florida Trademark Lawyer, I am often asked these questions by savvy clients seeking U.S. trademark protection for their foreign trademark registrations.

We all know there are benefits to filing a U.S. trademark application under §44(e) claiming priority to a foreign registration. The main benefits include not having to show use in the U.S. or having to provide a specimen. TMEP §1009 states that "Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants do not have to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application based solely on §44. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984)." That is a load off for a busy trademark attorney.

But what happens after the U.S. registration is issued? TMEP §1015 states that once issued, the United States registration issuing from a §44 application exists independent of the underlying foreign registration and is subject to all provisions of the Trademark Act that apply to all other registrations, such as affidavits of use, renewals, amendments under 15 U.S.C. §1057(e), assignments, and similar matters. 15 U.S.C. §1126(f). See Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Exxon Corp. v. Oxon Italia S.p.A., 219 USPQ 907 (TTAB 1982); Reynolds Televator Corp. v. Pfeffer, 173 USPQ 437 (TTAB 1972); Sinclair v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB 1963). Therefore, the validity and/or status of the U.S. registration IS NOT tied to the foreign registration and the foreign-based U.S. registration IS subject to the same provisions that apply to all other U.S. registrations. Thus, the foreign-based U.S. registration must continue to be used properly in order to avoid abandonment. Further, the U.S. registration must be renewed with the U.S. Patent and Trademark Office according to the same schedule as domestic-based U.S. registrations, in order to maintain is good standing with the Trademark Office. Further, the same rules pertaining to amendments, assignments and cancellations apply to foreign-based U.S. registration.

In summary, filing a U.S. trademark application under §44(e) claiming priority to a foreign registration affords you certain privileges during trademark prosecution. But once the U.S. registration is issued, the privileges have ended and the registration is treated like any other U.S. registration.

Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office agreed with Nautica Apparel's that the GET NAUTI trademark should not be registered. As a Miami Trademark Lawyer, this case is interesting because it illustrates the criteria an opposer must meet when seeking to oppose the registration of a trademark that may negatively affect him.

This case involved the well-known and registered NAUTICA trademarks which have been historically used in connection with a variety of products, such as clothing and toiletries, dating back many years. Recently, a party applied to register the mark GET NAUTI in connection with clothing and toiletries. NAUTICA opposed this trademark application on the basis that it was confusingly similar to NAUTICA's mark. As an aside, Nautica Apparel also filed a trademark infringement suit against the users of the GET NAUTI mark in federal district court, which litigation occurred parallel to this opposition.

The TTAB agreed with Nautica Apparel's arguments. The decision of the TTAB involved the use of a test to determine whether the opposition to the trademark application at issue should be sustained. The test involved an evaluation of six main factors, the preponderance of which weighed in favor of the opposer, thereby leading to the opposition being sustained. Briefly, the test included the evaluation of: 1) fame of the opposer's marks, 2) similarity of the goods sold by the applicant and the opposer, 3) the channels of trade in which the goods of applicant and opposer are sold, 4) the variety of opposer's goods, 5) the conditions (such as sales price) applicable to sales of the goods of applicant and opposer and 6) the number and nature of similar marks in use on similar goods.

As a Miami Trademark Lawyer, I am sometimes faced with a situation where a party seeks to oppose my client's trademark application. This case shows that the criteria the opposer must meet in order to successfully oppose a trademark application is rather stiff. The six-part test above provides at least six areas in which the trademark applicant can argue against the opposition. The opposer, therefore, has his work cut out for him when staging an opposition.

Do you recall the old AMC trademark that stood for American Motors Corporation of AMC Pacer fame? Chrysler, who absorbed AMC in the 1980s, has been fighting with the owner of a current trademark registration for the AMC logo, and last week suffered a setback in its attempt to retake its old trademark. As a Miami Trademark Lawyer with an active trademark prosecution docket, this case is of interest to me because it illustrates two topical subjects - the new standard for committing fraud upon the Trademark Office when obtaining a trademark registration and the recapture of an old mark by an opportunist.

Last week's decision of the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office denied Chrysler's Motion for Summary Judgment in its attempt to cancel the current trademark registration for the AMC logo (shown to the right), which is owned by an individual who registered the mark in 2005. Besides claiming that Chrysler had prior use, Chrysler also asserted fraud upon the Trademark Office since the registrant lied when submitting a false allegation of use during prosecution of the subject mark. On the issue of fraud, the TTAB stated that intent to deceive is an indispensable element of the analysis in a fraud case. See In re Bose Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). The TTAB denied Chrysler's motion for summary judgment, stating: "In this case, petitioner has not carried its burden of establishing the absence of a genuine issue of material fact as to respondent's intent to deceive. More particularly, petitioner has not introduced any direct evidence of respondent's intent to deceive the Office." Thus, this case shows the higher bar that must be met when pleading fraud upon the Trademark Office, in light of the 2009 Federal Circuit case of In re Bose.

This case further illustrates a phenomena that has been happening with more frequency. Savvy opportunists are registering old, abandoned marks that still have some notoriety or goodwill in public. It is not uncommon for a savvy entrepreneur to register or simply use an old, abandoned mark, usually in the context of a kitchy product, such as vintage T-shirts. There is nothing illegal in doing so, per se, since a trademark owner loses trademark rights when he stops using the mark in commerce. In this case, the registrant noticed that the AMC logo was long abandoned and was successful in obtaining a registration for the logo. This case shows that even an old mark can have value. Thus, trademark owners should give a second thought before abandoning use of a mark and should consider continued use of the mark, even if on a minor scale, in order to retain trademark rights and avoid situations such as these.

Last week, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office reversed an examining trademark attorney who refused to register the RENATI mark based on its significance as a surname. As a Florida Trademark Attorney with an active trademark prosecution docket, this is a noteworthy case that I will keep in mind when I get "surname" refusals in the future.

It is not uncommon for the U.S. Patent and Trademark Office to refuse to register a mark based on the fact that the mark is primarily a surname. The reasoning behind this is explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007), the "purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses..." Thus, there is a public policy of keeping surnames open for use.

In this case, the Trademark Trial and Appeal Board (TTAB) reviewed the evidence, which showed only 6 people in United States with the RENATI surname and therefore only 6 people in the United States that could potentially be adversely affected by the RENATI registration. This turned out be the main factor considered in the TTAB decision of last week.

Some of the other factors considered by the TTAB include whether anyone connected with the applicant uses the trademark as a surname, whether the trademark has any recognized meaning other than as a surname and whether the trademark has the look and feel of a surname. The TTAB found, in light of the evidence, the applicant did use the trademark as a surname, the trademark does have a recognized meaning as a given name and that the trademark did not have the look and feel of a surname. In sum, the factors considered weighed in favor of allowing the trademark to register. Therefore, the TTAB reversed the examining attorney's refusal to register the mark.

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.

As a practicing Florida trademark attorney, I'm often asked about what is registrable as a trademark. Can you register a slogan? Can you register a work of art? Can you register the name of a work of art? Google's current trademark dispute illustrates the answers to some of these questions.

After much fanfare, yesterday Google made its Nexus One phone available for purchase. As promised, the phone operates Google's Android operating system. But science fiction buffs might notice the literary allusion to Phillip K. Dick's novel "Do Android's Dream of Electric Sheep?" made famous by the movie adaptation, Blade Runner, featuring Harrison Ford. The novel features androids, i.e., robotic humans, gone awry. Specifically, the novel focuses on the "Nexus-6" line of androids. The owners of Mr. Dick's estate noticed this similarity and are now threatening to sue Google for trademark infringement. But does Mr. Disk's estate own a trademark?

Phillip K. Dick's "Do Android's ... ?" novel was a single creative work not part of a series, as was the Blade Runner movie. Single creative works and, by extension, characters in those works, are generally not afforded trademark rights (see TMEP sec. 1202.08). Further, to my knowledge, the characters in the Dick movie and novel were never merchandised (such as in "action figure" form) by Dick, Dick's estate or any other licensed party. Without "use in commerce" of the "Android" term in connection with the sale of goods, trademark rights could not have been created.

Mr. Dick's estate will surely point to Verizon's licensing of the "Droid" mark from LucasFilms. The Droid mark, used in the Star Wars films to denote a robot, is now used under license by Verizon as a mark associated with its new smart phone. The Nexus One situation, however, is quite different because LucasFilm has manufactured and sold merchandise featuring the word "Droid" as far back as the 1980s. Thus, LucasFilm created trademark rights dating back decades. Further, LucasFilm's Star Wars franchise spawned a series of movies and books, not a single creative work. The title and the characters used in a series of works can be registered as a trademark (see TMEP sec. 1202.08c)

Therefore, it seems that Mr. Dick's estate is out of luck. Returning to my client's inquiries about items that are registrable as trademarks: slogans and works of art are registrable, but the title of a single creative work is not registrable unless it subsequently becomes the title of a series of works.