Examination of the Application
About four months after the application is filed, it is assigned to an examining attorney who reviews it and determines whether the mark should proceed to registration.
Common Grounds for Refusal of Registration
Following are the most common grounds for refusing registration:
The proposed mark consists of or comprises immoral, deceptive, or scandalous matter.
The proposed mark disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols or brings them into contempt or disrepute.
The proposed mark consists of or comprises the flag or coat of arms of the United States or a state or foreign nation.
The proposed mark consists of or comprises a name, portrait, or signature identifying a particular living person who has not consented in writing to such use, or the mark comprises the name, signature, or portrait of a deceased president of the United States without his widow's written consent.
The proposed mark is primarily merely a surname.
The proposed mark, as a whole, is functional.
The proposed mark is deceptive in that it misdescribes the goods, such as using CEDAR RIDGE for hardboard siding not made of cedar.
The proposed mark is primarily geographically descriptive (using DENVER WESTERNS for western clothing originating in Denver) or deceptively geographically misdescriptive of the goods and services (using CALIFORNIA MIX for fruits and nuts not originating in California, because consumers know that California is a major producer of fruits and nuts).
The proposed mark is merely descriptive.
The proposed mark so resembles a mark already registered or applied for with the PTO that use of the mark by the applicant is likely to cause confusion, mistake, or deception.
The specimen does not match the drawing of the mark or is incorrectly sized.
The examining attorney sets forth the objections in a written communication called an office action, listing the grounds for refusal of registration and any corrections required in the application. Alternatively, for minor corrections, the examining attorney may contact the applicant by telephone. The applicant must respond to any objections within six months of the office action, or the application will be deemed abandoned unless the failure to respond was unintentional.
Some office actions are easily responded to by submitting a written consent, providing a new specimen, or correcting the size of the drawing. The more difficult office actions are those that refuse registration on the basis that the mark is merely descriptive or is confusingly similar to another mark.
Refusals on the Basis of Descriptiveness
If a proposed mark is rejected on the basis that it is merely descriptive, the applicant may be able to overcome the objection by showing that the mark has acquired secondary meaning. Secondary meaning can be shown through five consecutive years of use of a mark or through such extensive use, advertising, and renown that consumers have come to link the mark with its source. If secondary meaning cannot be shown, the applicant may argue that the mark is not merely descriptive but is rather suggestive and should thus be allowed to register without proof of secondary meaning. To show such suggestiveness, the applicant can provide evidence of similar marks that were allowed to register, comparing and contrasting these to his or her mark.
If the mark includes descriptive elements in addition to nondescriptive elements, the applicant may disclaim the descriptive portion of the mark so it can proceed to registration. Thus, the applicant for GOLDEN GRIDDLE PANCAKE HOUSE disclaimed the descriptive words pancake house. A disclaimer is an acknowledgement by the applicant that it does not claim exclusive rights to use of the descriptive portion of the mark. An entire mark may not be disclaimed. The proper wording for a disclaimer is as follows: ''No claim is made to the exclusive right to use apart_______ from the mark as shown.'' A disclaimer does not affect the display of the mark or its validity; it is merely an acknowledgement that the mark's owner does not claim exclusive rights to certain matter, such as descriptive words or a surname.
Refusals on the Basis of Confusing Similarity
If a mark is refused registration on the basis that it is confusingly similar to another registered or applied-for mark, the applicant can argue in the response to office action that the mark is not confusingly similar to the other mark. Although each case is decided on its own facts and there is no litmus test to determine confusing similarity, the following factors are considered:
The similarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression
The similarity and nature of the goods and services used in connection with the marks
The channels of trade in which the marks are used
The conditions under which and the buyers to whom sales are made, namely, whether the items are impulse purchases or whether they are the result of careful and sophisticated purchasing
The fame of the prior mark, judged by sales, advertising, and length of use
The number and nature of similar marks in use on similar goods
Whether actual confusion exists
The length of time that the marks have coexisted without actual confusion
The goods or services need not be identical for confusion to be likely. It is sufficient that the goods or services of the applicant and the prior user are related in some matter. Thus, LAREDO for land vehicles was held likely to be confused with LAREDO for tires, and MARTIN'S for bread was held likely to be confused with MARTIN'S for cheese.
Marks may be confusingly similar even though letters or words are added, deleted, or substituted. For example, COMMCASH was held likely to be confused with COMMUNICASH when both were used for banking services, and PERRY'S was held likely to be confused with PERRY'S PIZZA when both were used for restaurant services. Similarly, GAS CITY was held likely to be confused with GAS TOWN, both for gasoline, because of the similarity in meaning.
If a mark includes both wording and a design element, greater weight often is accorded to the wording because it is used by purchasers in requesting the goods or services. Strong marks may be infringed or confused more easily than weak marks. For example, MUCKY DUCK® for restaurant services is so unique that the use of the terms MUCKY DUCK in another mark likely will cause consumers to believe the marks are the product of the same source. Similarly, consumers become adept at distinguishing even minor differences between marks when numerous similar marks exist for similar products. Thus, MICROSOFT® can coexist with MICRON® and MICRO STRATEGY®. If a mark is weak in that it uses descriptive wording, similar marks may be able to coexist with it. Finally, it is well established that the relevant test is likelihood of confusion, not actual confusion. It is not necessary to show that consumers have experienced actual confusion. The PTO position is that if there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved against the newcomer.
If the examining attorney refuses registration on the basis that the applied-for mark is confusingly similar to another, the applicant can submit evidence of other registrations and applications to demonstrate that a mark or a portion thereof is suggestive or descriptive and is thus entitled to registration. The existence of other registrations is not conclusive, however, and previous decisions by the PTO in approving other marks are not binding on the agency.
If the PTO continues to refuse the applicant's argument that the marks are not confusingly similar, the applicant may attempt to obtain the consent of the prior user to use and registration of the applicant's mark. A consent agreement between the parties is given great weight by the PTO because parties in the marketplace are believed to be in the best position to judge potential confusion. If they agree that confusion is unlikely and consent to each other's use and registration of the mark, the PTO generally accepts such a consent agreement.
Another possibility is that the parties can agree to concurrent use of their marks. Concurrent use is acceptable only if the parties use their marks in different geographic areas. If so, they can essentially carve up the United States and agree as to which party will use its mark in which regions, states, or areas. The parties will enter into a concurrent use agreement, and the later party's application will be amended to state that concurrent use is being sought. The registration will then identify the particular areas or states in which the registration is valid. The PTO will allow concurrent use only when confusion is not likely to result from the parties' uses of their marks. Concurrent use proceedings are somewhat rare.
The process of office action by the examining attorney and responses to office action by the applicant continue until registration is allowed or the examining attorney issues a final refusal. The applicant may appeal a final refusal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the PTO. A party who is dissatisfied with a TTAB ruling may file an appeal in the Court of Appeals for the Federal Circuit located in Washington, D.C., but the Court of Appeals generally sets aside PTO findings only when there has been an abuse of discretion or an arbitrary holding.