Section 2.b.iv. “Presence of Other Marks.”
These comments pertain to section 2.b.iv. “Presence of Other Marks” in the draft Examination Guide on website displays. I appreciate that it is difficult to definitively identify factors that do, or do not, weigh for or against whether a particular website display qualifies as an acceptable specimen. It requires a nuanced analysis. However, I respectfully submit that proposed Section 2.b.iv is not helpful to the analysis ...more »
These comments pertain to section 2.b.iv. “Presence of Other Marks” in the draft Examination Guide on website displays.
I appreciate that it is difficult to definitively identify factors that do, or do not, weigh for or against whether a particular website display qualifies as an acceptable specimen. It requires a nuanced analysis. However, I respectfully submit that proposed Section 2.b.iv is not helpful to the analysis and should be deleted. It is misleading because it treats word marks as the only trademarks that may be encountered on a website display, and ignores the fact that designs, logos and slogans appear on such specimens as well. It overstates the case in opining that “[a]ssociation is more likely when the applied-for mark is physically near the goods and no other marks appear to be used in connection with the goods, see example 3 in Appendix (LACOSTE)” and “[association] becomes less likely if other marks are used in connection with the goods and seem to be trademarks for those goods.” That this contention is not the case is amply illustrated by the very Example 3 cited in this section. Example 3 shows the LACOSTE word mark, but immediately above that word mark is the LACOSTE Alligator logo, which is also a trademark. Thus, this example shows a case in which two trademarks are used in close association with the goods, yet this does not undermine the ability of either to function as a trademark for these goods.
It is not just cases in which the word mark is accompanied by a logo that more than one mark can be used for the goods in a source-indicating manner. The website display specimen accepted by the TTAB in In re Dell displayed numerous word marks that were used on or in connection with the product.
Rather than “distracting” the consumer, as suggested in the first sentence of this section 2.b.iv, the use of more than one mark may instead reinforce the consumers’ association of the mark with the goods. Consumers are very accustomed to associating a trademark with a product even if other trademark(s) are also used for the goods. McDonald’s meals are packaged in bags and boxes that bear the McDONALD’S mark, the Golden Arches logo, and some of them also bear the HAPPY MEAL mark. Nike shoes carry the NIKE mark, the Swoosh logo, and some of those also bear the LUNARLON mark to identify a feature of the goods, or are displayed with the NikeID mark to identify the product as one that may be customized. In sum, the presence of other trademarks on the specimen may sometimes be relevant in evaluating whether the applied-for mark is being used to identify the source of the goods, but I disagree that a general rule about this exists in the way suggested by Section 2.b.iv.
Thank you for the opportunity to submit comments.
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