Making Your Mark : Successful Trademark Practice before the USPTO HIPLA September Luncheon

1. Making Your Mark: Successful Trademark Practice before the USPTOHIPLA September Luncheon Elizabeth W. King Osha ● Liang September 20, 2007

2. Successful Prosecution of a TM Application • Effective searching of the PTO database and other public search engines • Submit an accurate and complete application • Proper responses to Office actions • “Tricks of the Trade” – there is a lot of science, but also a lot of art to working with the Office • Appropriate attorney conduct • Understanding the constant changes to the Office – procedures and processes are always in flux To Successfully Prosecute a TM Application, You Must Realize the Seamless Integration and Dependency of All Aspects of the Process

3. Searching the PTO Database • The basics of a PTO database search • At a minimum, search at the PTO database before filing • Website: http://www.uspto.gov/main/trademarks.htm • Click the Search link which will take you to the Trademark Electronic Search System (aka “TESS”)

4. Searching the PTO Database (cont.) Use the Free Form/Advanced Search Page THE THREE THINGS YOU NEED TO KNOW: [bi] * live[ld]

5. Searching the PTO Database (cont.) • Determine the dominant feature of the mark • Omit searching generic or highly descriptive terms • Use the basic index [bi] • Search with right and left truncation by inserting “*” at the beginning and end of each term • Cut off letters that have phonetic equivalents such as: “C” “K” “Q” “S” “Z” • Cut off beginning and ending vowels: “A” “E” “I” “O” or “U”

6. Searching the PTO Database (cont.) • E.G. Mark is TABLE TALK for cocktail napkins • Advanced Search String: *tabl*[bi] and *tal*[bi] • Tip: If search returns more than 350 marks, limit further by knocking out the “dead” marks: • *tabl*[bi] and *tal*[bi] and live[ld] • What follows is some snap shots of two different TESS searches. The first was conducted using the structured/boolean search engine. The second using the free form/advanced search engine. Notice the citable mark “TABLE TALKERS” that was found from the advanced search, but NOT found by the structured search.

7. Searching the PTO Database (cont.)

8. Searching the PTO Database (cont.)

9. Searching the PTO Database (cont.)

10. Searching the PTO Database (cont.)

11. Searching the PTO Database (cont.)

12. The Trademark Application Q: Why does the PTO Search Really Matter? A: Because it Affects How You will Craft the ID, and the ID is the LYNCHPIN to achieving Registration • Understand that the TM Office doesn’t care about the real world. So if you find a mark that your client knows isn’t confusingly similar but reads like it could be, then unless your recitation shows a clear distinction, you are probably going to get a Refusal • State the function or purpose of the goods • Use terms like “namely” to give additional specificity to a recitation: “Computer software for graphics applications, namely, software that allows users to modify animation from one graphics format to another” • Carefully consider descriptiveness and likelihood of confusion issues when crafting the ID Be as Specific as Possible in your Listing of Goods and Services

13. The Trademark Application (cont.) What to Avoid in the ID • ID’s that use terms like “such as” or “including” • ID’s that contain parenthesis  • ID’s that use a registered mark within the description • ID’s that read like claims made in a patent application

14. The Trademark Application (cont.) ID Example • Registered mark and Applied for mark are similar • Registered mark is for “software that allows users to send electronic messages containing animation” • Two ID options for applied-for mark: • Option 1: “software that enables users to convert and upload animation to a website” • Option 2: “software that enables users to convert and upload images from one graphics format to another on a website” • PICK OPTION 2 !!! - The function is accurately set forth and yet the refusal is less likely to occur. AVOID using the same terms within your ID as what you find in a registered or prior pending mark when you can use synonyms to convey the same information…BUT MAINTAIN ACCURACY!!

15. The Trademark Application (cont.) Miscellaneous Application Comments • Issue disclaimers on generic matter at the outset • Keep in mind the psychology of the Examining Attorney • The “Balanced Disposal” (BD) “point” system: 2 points per file • The bi-week system: a push to move through TM applications at the end of each bi-week

16. Responding to Office Actions Avoid “Dead in the Water” Arguments • Collateral Attack on Cited Registration • Absence of Actual Confusion • Non-Competitiveness • Descriptiveness in the Abstract; or • Existence of Design or Utility Patent

17. Responding to Office Actions (cont.) • Losing Argument #1: “The cited registration does not accurately state the goods or services the registrant is actually offering.” This is not properly raised in ex parte examination. • Losing Argument #2: “There is no evidence of actual confusion.” That is the 6th prong of DuPont, but can only be used a supplemental evidence in the likelihood of confusion analysis, and usually not successfully. • Losing Argument #3: “Our goods and their goods are noncompetitive.” If the Examiner can show the circumstances surrounding their marketing is such that they are likely to be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they originate from a single source, the Refusal will stand. (Exceptions: Department stores or at times food versus restaurants) • Losing Argument #4: “A purchaser who hears our mark without knowing the goods would not perceive it as being ‘descriptive’.” Descriptiveness in the abstract is not the test for descriptiveness. • Losing Argument #5: “We have a design patent, so therefore our product design functions as a trademark.” Totally different standards and analysis: Purpose of design patent is to keep anyone else from making that design for a particular article of manufacture irrespective of use; whereas a product design TM must be in use, must have acquired secondary meaning, and must function as a source identifier.

18. Responding to Office Actions (cont.) Responding to the Substantive Refusal • First consider how you can amend the id in such a way as to maintain accuracy but obviate similarity in instances where you have received a likelihood of confusion refusal, OR to demonstrate suggestiveness in instances where you have received a descriptiveness refusal. • Second, in cases where you have received a 2(d) based on a same or similar “dominant features”, consider whether the Examining Attorney has improperly “dissected the mark”. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (C.C.P.A. 1974) TMEP Section 1207.01(c)(ii). Marks must be considered in their entireties. • Use third party registrations only to show that the common terms are weak for the specific goods or services; a prevalence of shared terms within several marks in the same trade channels demonstrates that each is entitled to a narrower scope of protection. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); TMEP • CAVEAT: DO NOT CROSS INTO DISCUSSING PREVIOUS ACTIONS BY EXAMINING ATTORNEYS IN APPROVING OTHER MARKS.

19. Miscellaneous Tips • Remember FAME for likelihood of confusion and dilution are two different concepts. Fame in the likelihood of confusion analysis is based on varying degrees and within each industry. Fame for purposes of dilution is an either/or proposition. • While your mark must be filed in jpg format, specimens of use and/or evidence attached to Office Action Responses can be in PDF. • Filing a Section 15 Affidavit of Incontestability is optional and does not entitle the filer to any additional rights. A registrant’s failure to file one will not affect the Section 14 limitation which precludes certain claims from being raised by a petitioner who files to cancel more than five years after the registration issued. TMEP 1605.06

20. Attorney Conduct • If you are at an impasse with the Examiner and you truly have assessed that their position is contrary to the law, feel free to call the Managing Attorney. But be circumspect before doing so and only call when most reasonable people would agree that circumstances warrant it; you DO NOT want to get a reputation for being an attorney who causes trouble at the Office. • To reach the Managing Attorney: http://www.uspto.gov/teas/contactUs.htm

21. Attorney Conduct (cont.) • DO NOT SIGN ANYTHING FOR YOUR CLIENT (except maybe Extension Requests) Read 37 CFR §10.18 • An Attorney signing a Declaration on behalf of an Applicant is certifying that any statement in the filing is not “false, fictitious, or fraudulent.” If it is later found to be fraudulent, then the Attorney can be subject to discipline by the Office of Enrollment and Discipline (OED). • Do not allow your client to allege use for any goods or services that aren’t in use: This is considered FRAUD, and if attorney signs then they can be held to account for the fraud by being named a material witness and deposed. • The test isn’t whether the applicant or its attorney intended to commit fraud: proof of specific intent is NOT required. If the assertion was materially false, then it recent Board decisions would suggest a finding of fraud is likely.

22. Attorney Conduct (cont.) Scary Cases To Keep You From Sleeping Well Tonight Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) (inaccurate recitation of goods in application) Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) (Use based application where use in United States had not yet commenced) Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (Statement of Use contained goods that weren’t in use) Central Mfg. Inc. v. Third Millennium Technology, Inc., 61 USPQ2d 1210 (TTAB 2001) (individual corporate officer sanctioned for filing papers based on false statements and material misrepresentations)

23. Attorney Conduct (cont.) 23 But Before You Decide to Charge Opposing Counsel with Fraud, Keep This In Mind: You must have sufficient evidence to establish a reasonable belief that the attorney or applicant has engaged in fraud or inequitable conduct. Absent this evidence, the attorney making the charge can himself or herself be subject to disciplinary action by the Office of Enrollment and Discipline. 37 CFR §10.23(c)(18)

24. Attorney Conduct (cont.) Other Considerations • Do NOT initiate Board Proceedings or file documents in a Proceeding against anyone solely to harass or attempt to procure a royalty or “license” See Leo Stoller Sanction Order July 14, 2006 http://www.shapeblog.com/Order%207-14-06.pdf • And finally, Do not EVER contact judges or interlocutory attorneys at the TTAB to complain about a decision rendered against your client.

25. Attorney Conduct (cont.) 25 Concluding Considerations • If you sign any Declaration on behalf of your client, be prepared at a minimum to be hauled before the TTAB and deposed as a fact witness in the event of Opposition or Cancellation, and at a maximum to be sanctioned and/or disciplined. • Be forewarned that the TTAB gives short shrift to specific intent. If the averment is materially false, fraud will likely be found. As many have said, it is akin to a “strict liability” standard of analysis. • Always conduct yourself with decorum and professionalism when speaking to employees of the Trademark Office.

26. Changes to the Office Be on the Lookout for the Following Changes • E-mail notifications and online docketing using the PTO website • Discontinuation of the print version of the OG • Office to allow members of the public to provide input on language and case cites in the TMEP • You can now cite non-published cases in Appeals before the TTAB, and the TTAB is working on issuing more citable decisions

27. Making Your Mark 27 Presented By: Elizabeth W. King Osha ● Liang, LLP One Houston Center 1221 McKinney Street, Suite 2800 Houston, Texas 77010 Tel: 713.228.8600 Alt: 713.871.0958 Fax: 713.228.8778 king@oshaliang.com