A new action in Texas once again calls into question the breadth of the doctrine of “nominative fair use” in trademark. Boiled to its essentials, it allows a party to use a trademark, without permission, in order to refer to the actual goods of the trademark holder. Here’s part of what the International Trademark Association says about nominative fair use.
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Good and Bad Marks Can Be Closely Related
It’s an interesting paradox that some poor choices as trademarks can be closely related to excellent marks. Probably the #1 reason we give negative opinions on trademark searches, and the #1 reason for trademark rejections by the trademark office, is that the proposed mark is descriptive.
A descriptive mark, or as the trademark office likes to call them, marks that are “merely” descriptive, are marks that “merely” describe the goods and services. Because they are descriptors of the kind of the goods, they can’t serve as identifiers of the source of the goods. Therefore, they can’t act as trademarks or service marks, because the purpose of marks is to assure the public of the provider of the goods, not the nature of the goods themselves.
Trademark Abandonment – How long is long enough?
A question that comes up with some regularity in our practice goes something like this; “So-and-so has stopped using their trademark, can I file a registration application for, and use, that same mark now?”
A well settled point of trademark law is that a mark must be used in commerce to be maintained, or else it is abandoned. (Read more about trademark abandonment in our post here). And a gap of three years or more of not using a trademark in the United States will create a presumption that the mark has been abandoned. But the clarity ends there, because in the U.S., the issue turns not always on time, but on “intent.” If a trademark owner “intends” to stop using a mark, the time becomes irrelevant, and the mark would be immediately considered abandoned. But what if the use of a mark simply ceases, at least for a while, and the mark owner, either actively or passively, suggests that they intend to resume the use of the mark.
Foreign Language Words as Trademarks
Making Non-English Trademarks Work
One of the lesser known rules of trademark registration is the so-called, “Doctrine of Foreign Equivalents.” Under the Trademark Manual of Examining Procedure (TMEP), in examining for genericness or descriptiveness, the Examiner is directed to first translate foreign words or phrases, and then to compare that translation to existing marks. The rule states, “Words from modern languages are translated into English to determine descriptiveness or genericness… The test is whether, to those American buyers familiar with the foreign language, the word would have a descriptive or generic connotation.” TMEP 1209.03(g). This rule has been recognized by the courts for more than 80 years.
Use It or Lose It in Trademark
Most trademark holders understand that a trademark must be used in business to be maintained. A more complicated issue is how and when time gaps in the use of a mark may lead to cancellation. A new ruling by the Trademark Trial and Appeal Board (TTAB) reviews many of the basic rules in this area. Read the full case here: Ziebarth v Del Taco, LLC; TTAB Cancellation 92053501
A Trade Name is not a Trademark!
And you need to know the difference. Maybe there would be less confusion if instead of using the words “Trade Name,” we called it by a more accurate term: “Business Name.” We see this quite commonly in our trademark practice, and here’s the usual scenario. A new company or entrepreneur registers a “business name” (say “XYZ, Inc.”) with their home state. The state, usually through the Secretary of State’s office, searches the name, and if it doesn’t find any competing names on the state’s business register that are either the same or confusingly similar, will approve and register the business name. The business owner takes the state’s clean result in the search for competing business registrations as assurance that it’s OK to use “XYZ” as a trademark in its branding and advertising. No! Not true! The state only searches for business registrations, not for product names or trademarks. If there is another company, say the “ABC” company, offering a product called “XYZ,” then it’s “ABC” that owns the trademark, and XYZ, Inc. is looking at a trademark infringement lawsuit if they try to use their business name as a trademark.