I agree to Idea Online Search to Comply with 15 USC 1052 I disagree to Idea Online Search to Comply with 15 USC 1052

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Chapter 800 - Application Requirements »

Online Search to Comply with 15 USC 1052

The Lanham Act states:

"§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

* * *

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and

Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . ."

Some marks are not registered in the USPTO although they have been previously used in the United States and are not abandoned - - it may be a mark protected by common law or registered in a state, or it may be a trade name which can not be registered in the USPTO. The Applicant must verify that it has the absolute right to use the mark. But the Lanham Act specifically says that such marks may not be registered with the USPTO

However, Section 1207.03 of the Trademark Manual of Examining Procedure provides with respect to “Marks Previously Used in United States but Not Registered” that:

"As a basis for refusal, §2(d) refers not only to registered marks but also to 'a mark or trade name previously used in the United States by another and not abandoned.' Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a 'known mark.' This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating “previously used” marks, and determining whether anyone has rights in them and whether they are “not abandoned."

I recommend the the MTEP be changed so that the Examining Attorney must do an "online" search (for example, a Google search) to see if there are any relevant marks NOT registered or filed with the USPTO. If one or more relevant marks are found by the Examining Attorney by such an online search, the Examining Attorney can place the "burden of persuasion" on the Applicant to show the mark is no longer used or that it will not cause confusion, cause a mistake or deceive. If this approach is adopted, it will better protect the legal rights of those who have not registered with the USPTO and the extra effort required of the Examining Attorney will be minimal.

Comment

Submitted by loser.gary 6 months ago

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  1. The idea was posted
    6 months ago

Comments (18)

  1. loser.gary Idea Submitter

    I forgot to say that without an online search for marks not filed or registered with the USPTO, the USPTO is not complying with the Lanham Act's requirement with respect "to a mark or trade name previously used in the United States by another and not abandoned."

    6 months ago
  2. Publication for third party opposition is the means by which this Lanham Act provision is satisfied. Also disagree that the extra effort required for online searching would be minimal.

    6 months ago
    1. loser.gary Idea Submitter

      There are a vast majority of small businesses doing business in only one state. They do not know about publication for opposition. And if they did know about publication for opposition, they certainly don't want to incur the legal expenses of opposing a trademark application filed in the USPTO. That's why I think the expense of obtaining a trademark should be on the applicant rather than on a small existing business - - especially if they are located in the same state. A real life example is that here in Southwest Florida a local state college, "Edison State College," located in Ft. Myers, Florida is going to change its name to "Florida Southwestern State College." Also in Ft. Myers is a small local college named "Southwest Florida College." It is only 5 miles away from Edison State College. "Southwest Florida" is the common name when referring to the area. It appears the name "Florida Southwestern State College" was picked knowing that "Southwest Florida College" exists. I am not involved in any way with the name change matter, however, to me it should be the burden on Edison State College to show that there will be now likelihood of confusion or deceit in the new name. I did an online Google search for "Florida Southwestern State College" and in less than a minute I saw that a "Southwest College" existed. By doing such an online search, the USPTO will comply with the Lanham Act's requirement regarding previously used trademarks not abandoned and trade names. A quick search is better than no search. In the worst case, nothing turns up. I hope that you will respond regarding this situation down here in Florida.

      6 months ago
  3. I agree.

    It probably would be a substantial increase in effort for the Examiner to provide a search of the same quality, as for example, that received from Thomson and Thomson in a full domestic availability search.

    I am in favor of increasing the quality of searches for both trademarks and patents in the PTO.

    The opposition and cancellation options are not equivalents to a quality search. The costs of the former are significant for most clients. Second, most clients do not have weekly trademark watches in place for their unregistered marks and tradenames.

    If you think oppositions and cancellations are equivalent, then just go to a nonexamined registration system with oppositions and see how that works for you?

    6 months ago
  4. I disagree. Any practitioner knows how difficult and tentative even the broadest search can be, and placing the responsibility for conducting the search and making an analytic decision on the examiner creates not only burdensome amount of work (for which, I would imagine, applicants would have to pay), but could create presumptions based on the results that would make the examiner's determination either too controlling or not relevant enough. Furthermore, searching for "uses" would be only the first step -- identified uses would then have to be investigated to determine whether they are actual uses in a way that creates trademark rights.

    Trademark owners now have the burden of protecting their trademarks, including challenging the registration of trademarks they believe are confusingly similar to their registered or unregistered trademarks. One of the benefits of registration is that the registered mark may be cited against applications. To require search and refusal based on unregistered marks would remove or weaken this benefit.

    So, overall, I must vote against making this requirement on the grounds it would be unduly burdensome and inconclusive.

    6 months ago
    1. loser.gary Idea Submitter

      Please show me where in the Lanham Act it says that the USPTO need not comply with the trademark act because it causes to much work for the Trademark Examining Attorney. If that the case, isn't the USPTO required to go back to Congress and explain the problem and request Congress to revise the Lanham Act to solve the problem - - should it agree with the USPTO's position. Essentially, taking your position to an extreme, by your logic General Electric is not required to pay taxes because the tax laws requires to much work for GE to do. Please explain why putting the burden on the APPLICANT is more unfair than it is to put the burden on an innocent third party that has previously used the trademark or trade name and has not abandoned it.

      6 months ago
  5. The trademark act does not require common law searching as I read it -- and owners of common law trademarks do have the opportunity to file Letters of Protest if they believe an applied-for trademark would be confusingly similar to their common law trademark. To make the requirement you suggest would require some specification of the scope of common law searching required -- and where would you place the limits? I simply think the requirement unworkable and potentially prejudicial to all involved rather than helpful.

    6 months ago
  6. loser.gary Idea Submitter

    I disagree. Below is the relevant part of my initial posting which I think makes the USPTO obligated to search for "a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . ." Trade names can not be registered with the USPTO and the phrase regarding a " or mark" follows "a mark registered in the Patent and Trademark Office." So the relevant phrase is directed to marks that ARE NOT registered in the USPTO. Here is the relevant directions from Congress that I am concerned about:

    "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

    * * *

    (d) . . . or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . ."

    6 months ago
    1. loser.gary Idea Submitter

      I forgot to say in my last reply that Section 1207.03 of the Trademark Manual of Examining Procedure says with respect to “Marks Previously Used in United States but Not Registered” that:

      "As a basis for refusal, §2(d) refers not only to registered marks but also to 'a mark or trade name previously used in the United States by another and not abandoned.' Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a 'known mark.' This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating 'previously used' marks, and determining whether anyone has rights in them and whether they are 'not abandoned.'" The USPTO does not have the right (as far as I know) to override what Congress has instructed it to do.

      6 months ago
  7. Gary:

    If there were a single database or resource to which an examiner could turn to discover the existence of unregistered trademarks, I might agree with you. However, under the present circumstances, such a search is not only burdensome, it is virtually impossible. Furthermore, I do not see Congressional instruction that a search must be made -- only that registration cannot be refused UNLESS there is a likelihood of confusion.

    6 months ago
  8. I strongly DISAGREE, for the following reasons:

    - There is so much information available on the web that a simple Google search can uncover tens, if not hundreds, of potential conflicts. If the burden then shifts to the applicant to refute each cited mark, it may be an impossible burden to meet.

    - There are many flash-in-the-pan ideas and products that make there way onto the web; because there is no database on dba's or entities that list discontinued goods or services, my concern is it may be nigh impossible for "the Applicant to show the mark is no longer used or that it will not cause confusion, cause a mistake or deceive."

    - The Trademark Act already has built-in protections for owners of unregistered marks, e.g., publication before a mark is registered, five years to contest a registered mark, cease-and-desist letters, litigation, etc.; more bootstrapping simply is not needed, especially at the cost of insurmountable hurdles.

    5 months ago
  9. I disagree. The existence on the web of a purported use of a mark isn't really evidence of very much. What's the standard to be--listing in an online yellow pages? A functioning web site? A listing in one of those fly-by-night trademark databases? It is the duty of a trademark owner to properly police its mark, and one way to do that is to register the mark. Neither the applicant nor the examiner need scour the known universe for other potential uses.

    5 months ago
  10. The way the provision reads, the presumption seems to be in favor of registration unless certain disqualifiers apply, so if USPTO doesn't find the disqualifiers, then it can proceed. While I think you're right in that it sounds like examiners aren't looking for them and aren't being required to look for them, since federal agencies have limited resources, I think they are able to take the position that the procedure by which such disqualifiers are identified is the publication for third party opposition. Giving free notice to the public counts for a lot in the world of federal agencies. Trademark owners have to police their marks. One might call it part of the privilege of claiming something and saying no one else can use it. They also have the right to register their marks. If they aren't compelled to do that, and aren't compelled to look into whether anyone may be infringing or attempting to usurp them, how much do they care, can they really complain, perhaps they are constructively abandoning them. Also, this way encourages people to register federally. If more people did, then theoretically the process would get easier and easier. Can't fault an agency for providing incentives to keep itself used. Finally, if examiners had to assure themselves regarding whether any uses anywhere in the U.S. are abandoned or not, imagine the backlog. Best to keep the system moving in as transparent a way as possible. No one wants their application held up while an examiner looks into every possible unregistered use of a similar mark and whether it has been abandoned. Isn't a system of publication and associated deadlines a much more sensible approach? One might say a reasonable interpretation of the applicable law. Congress didn't say that a process couldn't be used, and that the examiners had to do x.

    5 months ago
  11. loser.gary Idea Submitter

    Sorry, but I don't think that you are being practical. All that I'm recommending is that the Trademark Office do a REASONABLE online search to help protect the legal rights of small companies that do not check the Gazette for new trademark registrations. (Check with 10 stores that you go to to see if they check the Gazette for trademark registration so they can file an Opposition) They are interested only in the success pf their company. And they don't want to have to spend their hard earned money on litigation to protect their company name. So, for the moment, let's drop my argument with respect to trademarks (though it still applies), and focus on "TRADE NAMES." The Lanham Act says:

    "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

    * * *

    (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark OR TRADE NAME previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . ."

    First, it is clear that TRADE NAMES can not be registered with the Trademark Office. But Congress has said that a federal trademark registration can not be permitted if the mark resembles a TRADE NAME so as to cause confusion or cause mistake or to deceive. To me that imposes an obligation on the Trademark Office to check for TRADE NAMES that may be harmed by the federal registration.

    So where would the Trademark Office quickly and reliably find information regarding Trade Names that have previously been used and not abandoned? I believe that companies must register with the state in which they are formed. As a result there are (should be) 50 data bases which contain the TRADE NAMES. Why doesn't the Trademark Office get on-line access to those trade name listing so that it can comply with the Lanham Act. Should not take long to do such a search and it would be a reasonable online search - not take up much time of the Trademark Examining Attorney. Do you want to make sure that it likely still exists and hasn't been abandoned? Presumably, companies must file tax forms with the U.S. government. Hook up with that database and a quick reliable online search could be done to show that they still exist. With this info the Trademark Examining Attorney could reject the application and require the APPLICANT to give evidence that the TRADE NAME is not a problem for their mark. For the Applicant's confirmation of no problem, it could do a Google search and obtain the phone number, email address, letter address, etc., and see what they can find to confirm their position.

    Does the federal government have the right to preempt states rights to control the establishment/registration of businesses in their states? For example, do a TRADE NAME search for a company named "Geo-Flo" and a TRADE NAME search for "Strait-Flex." No federal trademark registrations. And suppose the owners don't check the Gazette to look for new trademark registrations. Suppose that a new trademark application by a third party is filed for "Geo-Flo" and one for "Strait-Flex." These could certainly be easily found if the Trademark Office searched state web sites for company names or the IRS web site for company names - - for even Google. Try it first; and then say why it wouldn't work. Even the next generation of children do Google searches for anything it wants to know. Schools are now introducing electronic means of learning (bring your iPhone or iPad to class) Nothing is 100% reliable, but whatever the results are, it's better than the 0% success of a non-search.

    If the Trademark Office is convinced that it can not meet the TRADE NAME burden of the Lanham Act it should go to Congress to explain why it can not do the work and see if Congress will change the law. It should not implement a rule that says it will not comply with what Congress said it must do because of the work load.

    5 months ago
  12. The recommendation, although well intentioned, is not acceptable for the reasons set forth by the previous comments. An applicant is not required to prove a negative. The burden is that of the examining attorney. For a common law reference to be asserted it must have been in use prior to the earlier of the filing date of the application or the alleged date of first use. An examining attorney is ill equipped to support such an allegation given the limited information provided by the internet.

    The Lanham Act provides several remedies for common law users: an Opposition; a Cancellation Proceeding as well as the owner of a common law trademark to evict the owner of a registration from its geographic area of prior use. In view of the above, in my opinion, the proposed increased powers will needlessly increase the work load of the Office and the expense to applicants.

    5 months ago
  13. loser.gary Idea Submitter

    It continues to appear that practicing trademark attorneys continue to agree with my position - a cursory internet search is the thing to do before filing a trademark application.

    "A legal battle is simmering over Sea Salt, an upscale Naples restaurant that contends a waterfront Miami eatery stole its trademarked name and is cashing in on its good reputation.

    Sea Salt, which has been lauded by Gourmet, Esquire, Wine Spectator and The New York Times, alleges Sea Salt and Pepper is confusing customers and restaurant suppliers after a Naples attorney asked it to cease and desist and the U.S. Patent and Trademark Office rejected its application.

    “A CURSORY SEARCH OF THE INTERNET would have uncovered the strong presence of Sea Salt and its use of the Sea Salt trademark,” Naples attorney Jeanne Seewald wrote to Sea Salt Miami LLC, which in November opened the 200-seat restaurant and bar housed in a converted industrial warehouse on the Miami River.

    It’s the second time the 6-year-old Third Street South restaurant has fended off a trademark for “restaurant and bar services.” In 2012, a Cape May, N.J., resort hotel restaurant abandoned its federal application after Sea Salt opposed it.

    Los Angeles trademark attorney George Gallegos, who has represented restaurants, says branding a name is more important now than years ago.

    “Consumers now rely heavily on websites such as Yelp, food blogs and have easy access to national publications, such as The New York Times or Esquire magazine to help make their dining choices,” Gallegos said. “It represents your restaurant and the quality and experience a consumer can expect.”

    Trademark law protects the investment of time, money and talent a restaurateur puts in to develop a brand and reputation by preventing imitators from using a protected name misleading customers and profiting from its success, he said.

    “If you want to be successful in today’s marketplace, a restaurant owner has no choice but to be proactive in protecting its brand and reputation by filing these types of lawsuits,” Gallegos said.

    Last week, U.S. District Judge John Steele in Fort Myers gave Miami attorney Robert Zarco until July 1 to respond to the trademark-infringement lawsuit. Zarco could not be reached for comment.

    The Miami restaurant’s owners, Carlos Miranda and Stephane Dupoux, did not return calls. They’re embroiled in two lawsuits against each other and investors. Miami attorney José Espinosa, who applied for their trademark, referred questions to Zarco.

    Seewald and co-counsel Michael Shue of Naples also declined to comment.

    They filed the lawsuit in April for Sea Salt’s parent company, Nane Jan LLC, which is owned by Venetian-born chef Fabrizio Aielli, winner of the 2002 James Beard Foundation Star Chef Award, and his wife, Ingrid. They operated upscale restaurants in Italy, the Caribbean and Washington, D.C., and own Barbatella, several doors down from Sea Salt, which features organic produce from local farms and fish, fresh off local boats.

    “Defendant continues to take advantage of plaintiff’s goodwill and valuable reputation ... and to convey that its goods and services are of the same high quality and standards as those associated with plaintiff,” the lawsuit says.

    The Naples restaurant opened in 2008 and registered its trademark with the state that year. U.S. Patent and Trademark Office records show it applied for a trademark in April 2011. It was granted in March 2013.

    Last November, SeaSalt Miami LLC applied for a federal trademark and a month later, opened SeaSalt and Pepper — SeaSalt Brasserie and a bar-lounge, Pepper, prompting Seewald to fire off a cease-and-desist letter.

    Although Sea Salt didn’t file opposition, the U.S. Patent and Trademark Office denied the Miami application in February, finding services were identical and would cause confusion. It noted consumers focus on the first part of a name and the logo features “and Pepper” in small letters.

    So the Naples restaurant wouldn’t be confused with the Miami account, court records show, two food suppliers asked it to specify “Sea Salt Naples.”

    Sea Salt is asking the judge to issue an injunction to stop the Miami restaurant from using SeaSalt on the building and website. It’s seeking the illegally gained profits and revenues, and punitive damages, which are meant to punish wrongdoing and deter others.

    A lawsuit Dupoux filed against his Miami restaurant’s parent company, Hemingway’s Warehouse LLC, says it’s making $300,000 weekly."

    1 month ago
  14. While I agree with the majority that this is not a realistic proposal, I have often wondered about how the Trademark Office would handle an application for a legitimately abandoned but famous mark. A search for TWA airlines reveals that the marks for airline services are long gone and there actually are a few pending applications for TWA for airline services. The interesting part is that a review of the file reveals that American Airlines has kept the TWA marks alive by selling toy airplanes under the mark. The examiner actually had to use those marks to enter her 2(d) rejection and said that airlines frequently offer toy airplanes for sale and thus since American Airlines offers both toy airplanes and airline services the applicant's mark would cause confusion. (I have not yet read the applicant's response to the OA.) There was absolutely no mention of the fact that TWA used to be a very famous airline and the applicant was potentially trading off of its reputation and goodwill which survives. This is similar to the proposal at hand because an unregistered mark like an abandoned mark, will not show up in the examiner's search since they only search (and cite) live marks! Maybe the examiner is right out of law school and doesn't recall TWA.

    The TTAB recently issued a precedential case in which it granted Bayer's petition for cancellation of the mark FLANAX even though Bayer does not use the mark in the US. The reasoning was that its extraterritorial use of the mark was sufficient to create a source indicator connection in US consumers mind's and the applicant would be the beneficiary of this confusion if its mark was allowed to stand. I see the potential for an analogy here. (Note: the TTAB case came out after the OA issued for TWA.) Thoughts?

    28 days ago
  15. If a mark owner is so concerned about other business not infringing its mark, it should just apply to register its mark. The $325 application filing fee is far less expensive than any time and resources the USPTO needs to invest in training its examiners and having its examiners conduct additional internet searches and far less expensive than oppositions and litigation.

    25 days ago