What is Immoral or Scandalous Matter?

Some may think this is a very subjective definition, but I assure you, the USPTO sees it differently. Here is what they have to say about it:

“Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.” In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word...(1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of “jack-off” were considered vulgar) ...(Board sustained opposition finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation)...(multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).”

A lot of verbiage to read in an attempt to get a feel for “scandalous” or “obscene”, I know, but the USPTO is pretty strict on their definition. And it’s no use using your creative spelling variations such as FUK or SH*T, the USPTO isn’t going to be fooled or lenient. Both of those variations are Abandoned marks after the USPTO had this to say:

Refusal: Immoral or Scandalous Matter

Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter:

Certain commonly “scandalous”, or at least questionable words or phrases, may be allowed depending on the connotation and/or industry. For example, DICK, a series of hand tools, is a registered trademark. Since no evidence of a refusal for scandalous matter is recorded, I can only attribute this to the fact that Dick is a common nickname for Richard and that the product is nothing at all to be perceived as immoral or scandalous. I am sure it would be a different outcome if the product was, for example, a line of adult toys.

On the same token, we must consider that an application is at the mercy of the Examining Attorney at the USPTO that receives the application. An example is the mark YOU [heart] COCK, refused and now abandoned on the basis of immoral and scandalous matter, while COCK BRACELET, sporting a logo inclusion of a rooster, is registered for jewelry, namely bracelets.

So, you see, there is a small window of gray area, again depending primarily on connotation, but also on the subjective opinions of the specific Examining Attorney. A good rule of thumb, however: don’t expect to get a registered trademark and make a million bucks on your favorite, crude, insulting cuss rant that you coined over a couple of drinks with your buddies. Have fun, but keep it clean, folks!

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Suggestive Marks


One of our amazing researchers, Heather Roberts, took some time to write this article, which I'm extremely thankful as time has been limited as of late. Heather wrote a few more great articles that I'll be sharing during the rest of the week. Thanks Heather!

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

What is a Suggestive Mark?

Here’s what the USPTO says: “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services...(SNO-RAKE held not merely descriptive of a snow-removal hand tool)...(QUIK-PRINT held merely descriptive of printing services)...(BUG MIST held merely descriptive of insecticide).

Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
Basically, suggestive trademarks contain words or words that are seen as suggesting the product or service being offered but are not directly descriptive.

Should I Choose a Suggestive Mark?

While suggestive marks can walk the fine line of descriptive, it is certainly possible to find a suggestive mark that will lead your consumer to a certain conclusion of what product or service you offer by merely looking at the name.

While keeping in mind the issues of descriptive marks and making a conscious lean toward a suggestive mark, it will be something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans. Some of our clients really WANT to find a name that does the explaining for them in terms of what the service or product is at a glance at the name. Other times, our clients want something very unique without suggestion to the service or product within the name.


While Suggestive marks don’t necessarily “tell” a person what the product or service is, they do tend to make a very strong impression of what it might be. This may help cut down on explaining what the product or service is in the way or marketing, website content and advertising space.

What to Avoid When I Create a Mark:

Creative a suggestive mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to suggestive marks, don’t rely simply on spelling variations of a descriptive word or words associated with your product or service.

Because the USPTO will assign what is called a PSEUDOMARK when presented with a trademark application with unconventional spelling, this can be a curse to the success of your suggestive mark. We’ll explore PSEUDOMARKS in more detail another time, but what it means in laymen’s terms is that the USPTO is recognizing an unconventional spelling to mean a very conventional word or words.


As with the example shown above, the trademark Sno-Rake for a snow-removal hand tool is registrable on the Principal Registrar, however, if that description had read: “snow-removal rake” then the mark would likely be refused for being merely descriptive.


Here is a good rule of thumb:


* If any word or words of the suggestive mark also appear in the description of the product or service, even if spelled unconventionally, it is likely that the mark will be deemed descriptive.


If you want a suggestive mark, my suggestion (pun intended) is to put on your thinking cap, find variations on the name you’ve got in mind using a thesaurus and/or dictionary and play with variations of 2 or 3 word-combos. Always be sure to check your competition! If your competition has a variation on a suggestive mark that is similar to what you want to register, take heed as you don’t want your customers going to them on accident. Be creative, try out your choices on your friends and family, use them as your focus group and by all means, have fun with it! Happy suggestive mark hunting!

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Arbitrary Trademarks


The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

Arbitrary marks are not as strong as fanciful marks but they are still strong in terms of trademarks. Choosing an arbitrary mark certainly makes the trademark filing process easier, provided, of course, that the mark is legally available.

What is an Arbitrary Mark?

Here’s what the USPTO says:

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.”

This is an area that confuses folks a bit. I know that’s a question we get a lot – I can’t trademark a name that’s in the dictionary, right? Well, like anything with trademarks, it’s a gray area. If the product is apple juice then, no, the name APPLE cannot be filed for a trademark as it’s descriptive of the goods. However, if the product is a line of computers then, yes, APPLE can be filed for a trademark.


As long as your arbitrary word is just that – arbitrary – in relation to your goods/services AND the name is legally available, you’ve got a strong mark on your hands!

How do I Choose an Arbitrary Mark?

Choosing an arbitrary mark is similar to that of creating a business name. When it comes to arbitrary marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.


2) Research your competitors - how often are arbitrary words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?


3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.


Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Once you’ve got that set, start thinking about all the different words that convey that feeling.


For instance, if your business is fun and funky words/phrases like Grave Concerns or Staid are probably not a good idea. Conversely, if your business is serious and formal, you’ll probably want to stay away from words like Bubbles or Poodles. Most of all, have fun with it!

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Fanciful Trademarks


The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

On the very left of that continuum are fanciful marks, which arguably are the strongest sort of marks to file. Filing these types of marks increase the likelihood of trademark registration (provided, of course, that the mark is legally available).

What is a Fanciful Mark?

Here’s what the USPTO says: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).”

Basically, fanciful trademarks are either made up words or words that are seen as archaic.

Should I Choose a Fanciful Mark?


While fanciful marks are certainly the strongest types of trademarks, does it necessarily mean you should choose a fanciful word for your service or product? This is something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans.


Fanciful marks don’t necessarily “tell” a person what the product or service is so informing the public of that might require extensive work on your end. For a fantastic article about this very subject, I suggest reading Monster Amazon Crocs - Why Creative Brand Names Work Best by Phillip Davis.

How do I Create a Fanciful Mark?

Creative a fanciful mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to fanciful marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.

2) Research your competitors - how often are fanciful words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?

3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.

Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Now when it comes to actually creating the fanciful mark, you can peruse through dictionaries of archaic words should you want to go that route.

If you want a completely made-up word, think about words and letters in terms of appearance and sound. For instance, many pharmaceutical companies employ common sounds (e.g. Vs, Xs and Zs are often used). Start with two or three letter combos and most of all, have fun with it!

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A Trademark Touch

Check out this interesting article on 'touchmarks' written by Stephen R. Baird, Esq. He defines what a touchmark is as well as the various challenges for claiming a 'touchmark.'

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What a Tweeting Mess!

Back in August, I posted about Twitter filing for the mark Retweet. The USPTO has since sent Twitter's legal counsel an Office Action suspending Retweet's application based on prior filings. However, let's take a closer look at these filings & perhaps we can figure out where Retweet is going to end up - abandoned or a real, live Federal trademark.

Here's what the USPTO is telling Twitter:

"Although the examining attorney has searched the Office records and has found no similar registered marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 77724346, 77802071, 77797006, 77697186, 77749897, 77746004, 77725866, 77701645, 77695071...

Action on this application will be suspended pending the disposition of these application upon the applicant’s response to the office action."

Wooo, that's a whole lot of sevens! Okay, let's look at each one, in order...

TweetLaw is currently suspended pending the outcome of Tweet, which is owned by Twitter.

tweetdealz is currently suspended pending the outcome of a whole lot of filings, which includes Tweet.

TweetTV is currently suspended pending the outcome of quite a few filings. And yup, Tweet is one of them.

Cotweet is being published for opposition. This filing went to publication on the 3rd of this month. So far, no oppositions have been filed. If no oppositions are filed, this filing will move to registration.

TweetNetworking is currently suspended pending the outcome of 7 filings, which include Tweet.

tweetworking is also suspended because of other filings. And guess what? Tweet is in the mix.

TweetDeck is suspended because of Tweet.

tweetPhoto has filed using Twitter's pretty distinctive looking bubbly blue font but their refusal has to do with descriptiveness: "
The relevant definition of ‘tweet’ is “[a]n entry posted on the microblogging service Twitter.” See attached. The relevant definition of ‘photo’ is “photograph.” See attached. Thus, the term ‘tweetphoto’ means an entry posted on Twitter to which a photograph is attached."

TweetMarks looks pretty to good to go except the USPTO is waiting for clarification on a specimen from them. They have until December 9th of this year to respond or the mark becomes abandoned.

Wowza. Okay, let's take a step back & look at these filings. A good chunk of them are suspended based on Twitter's filing for Tweet so let's look at that filing:

"
Action on this application will be suspended pending the disposition of Application Serial Nos. 77695071, 77697186, and 77701645 upon receipt of the applicant’s response resolving the following."

TweetMarks, CoTweet, and tweetPhoto are the marks mentioned. Look familiar?


So what do you think the outcome of Retweet or Tweet will be?

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Trademarks for the Troops
A hearty THANK YOU from all of us at TradeMark Express to our troops.

Since it's Veteran's Day, I thought it'd be nifty to take a look at filed trademarks that are about the vets.

Hope for Veterans is owned by Community Hope and "is a transitional housing program...to provide a safe, supportive environment wherein former servicemen and women can start rebuilding their lives." Find out more about them here.

Recruit Veterans "is a service-disabled veteran owned and operated staffing and recruiting firm." Read more about them here.

Thank a Vet is a pending trademark for a clothing line. Buy the clothes here.
Trademarkia


Launched in September of this year, Trademarkia is a free, incredibly easy to use search engine that allows users to search the USPTO database of Federal trademarks, be they live or dead.

Two of my favorite features:


* Logo Themes: The USPTO does offer the capability to search logos on their site but it's a bit cumbersome. Here's
an article about how one can do so. But Trademarkia's interface is much easier & really, it's just neat to browse through logos.

* Trademark Categories: aka Goods/Services
Each classification is accounted for here & each has it's own snazzy design leading you into the International Classification. Once you're in a class, you can then look at Federal trademarks alphabetically.

Now it should be said that while Trademarkia is super snazzy, very easy to use & just overall cool looking -- this is a search of the Federal trademarks ONLY, meaning we're missing State trademarks & Common-Law databases.


Also another thing I noticed is in conducting my SAM test, the engine seems to work pretty similar to the USPTO, which means the user will need to be sure to check all possible variations of the mark when conducting this preliminary search.


SAM Test

USPTO Flaw #1, Sound
: Trademarkia, like the USPTO, brings up 3 marks for IShine but not Ice Shine.
USPTO Flaw #2, Appearance: Again, same results as the USPTO - Trucool but not Turcool
USPTO Flaw #3, Meaning: This one was a bit odd as Trademarkia resulted in only 1 hit whereas the USPTO comes up with 23. Not sure what happened there.

Even given the above, I still strongly recommend folks use Trademarkia as a preliminary clearance Federal trademark search engine. It's far & above easier to use than the USPTO. Then once your mark clears that preliminary step, you can move on to the comprehensive part of the trademark process.

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Distinctiveness & Descriptiveness Continuum


Here's a visual snapshot of the USPTO's Distinctiveness & Descriptiveness Continuum. Click to view a larger version. I hope it makes the PTO's guidelines a little clearer plus I like charts, graphs & whatnot :)

So far I've written about merely descriptive marks so I'll be sure to hit the other sections & re-post this visual with links to each new post.

Descriptive Trademarks

The title here is a bit misleading as descriptive words are not typically allowed to be registered on the USPTO’s trademark Principal Register. Let’s back up a little...

One of the main points (some would argue THE main point) of having a Federal trademark is to have exclusive rights to a name, a logo or a slogan within your industry. Given that, words that “merely describe” the goods or services are not going to be allowed.


There are two main reasons the USPTO provides:


1) “to prevent the owner of a mark from inhibiting competition in the sale of particular goods”


What this means: The owner of the descriptive word(s) can’t trademark it as it could create a stranglehold, of sorts, on the word(s) within the industry. For instance, the word “trademark” is disclaimed on our Federal trademark registration on
TradeMark Express, meaning we’re not claiming exclusive rights to the word “trademark” as it’s a descriptive word for our industry.

2) “to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products”

What this means: People should have the freedom to use descriptive words in advertising or in describing their goods/services. Using the example above, other companies offering trademark services should be able to use the word “trademark” to describe their services, in their advertising, etc.


So How do I Know if my Name is Descriptive?


As with anything trademark, it’s never black & white. Each situation is going to vary from the next. The basic litmus test is “does this word describe the product and/or service?” and if the answer is yes, then you’ve most likely got a descriptive name on your hands.

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product/service to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property.

Here are some examples provided by the USPTO:


• APPLE PIE held merely descriptive of potpourri (most likely because the words describe the scent)

• BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services

• MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer

If you’d like help determining if your name is descriptive, please leave a comment or email me at dc@tmexpress.com

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Brainstorming Tips for Creating a Business Name


Here's a few things to keep in mind:

1) Keep your industry, your clients/customers, your advertising plan in mind.

2) The more unique & distinctive a name, the higher the chances that the name is legally available for use. And the higher the chances of obtaining the trademark.

3) Think of your business as having a personality. What kind of image do you want your business to portray?

Specific brainstorming tips:

Think about what you want but more importantly, think about what you DON'T want. If you don't want a 3-word name, don't bother with those. If you don't want non-English words, don't bother with those & so on and so forth.

What are the "types" of names you like? Think about words in their simple forms, e.g. adjectives, Latin roots, mythological names, etc. Compile a listing of the types & then seek out resources, such as books or sites, which specialize in those types.

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Free Preliminary Trademark Search

TradeMark Express implemented a new service recently - ONE free preliminary USPTO search completed over the phone with you. We always conduct a preliminary USPTO search before we start comprehensive search but this new feature does NOT require that an order be placed first.

If you'd like your ONE free preliminary USPTO trademark search, contact me: shannon@tmexpress.com; Contact Page; 800.340.2010
Twitmark Express

TradeMark Express has joined the twitter party finally. I've been toying around with the idea for awhile and finally got around to it.

Follow me at TradeMarkExpres

Tweet you later!
Trademark International Class: Class 36 (Insurance and Financial Services)


All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 36.

What is International Class 36 All About?


Each class has a short title heading that gives a snapshot of what that class is all about -- IC 36's short title is insurance and financial services. The USPTO has 724 accepted descriptions that fit into IC 36; check them out here.

Almost anything you can think of that’s in the insurance or financial fields is going to be in IC 36. This is going to include services like investing, appraising, banking or credit unions and real estate services that delve into finance (brokerage, listing, escrow, management).


What's New for International Class 36?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 36, good plus date added to the guide:

• Charitable fund raising services by means of a golf event 6 Aug 09

• Electronic financial trading services 10 Sep 09

• Financial services, namely, raising debt and equity capital for others 17 Sep 09

• Providing a website featuring non-downloadable videos in the field of financial planning 26 Mar 09

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Trademark International Class: Class 35 (Advertising and Business Services)
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?


Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.
Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are not technically a service though are definitely part of a service; tangible paper-based advertising goods are in IC 16. Training, coaching, educating, etc. about advertising, marketing or promotion is NOT going to be in IC 35 but rather in IC 41, which is the educational class.

The second part of IC 35’s description, business services, is not straightforward at all. Semantically, all services could be considered as business services, yes? No way says the trademark powers that be; at least no way if those services can fit within a different international classification.


So What Business Services are in International Class 35?


Ooh this is a tough nut to crack as there are definitely some discernible patterns within this class but there’s a whole lot of slap-dash in here too. Here’s a general breakdown:


• If your services consist, in part, of the word business, you’re likely in IC 35. This includes consulting, advising, administration, management, development, information, organization, research, planning, etc.


• Employment services are in this class, which includes hiring, recruiting, placement, staffing and career networking.


• Retail services selling ANY products under the sun, which means a brick and mortar store, online retail sites, mail order, catalog, wholesale, etc.


Obviously there’s a whole host of other services in IC 35. If you’re wondering about your services, feel free to
email me.


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Yadda Yadda Yadda

The suit against Jerry Seinfeld's author wife, Jessica, has come to an end. The District Court dismissed all claims set forth by Missy Chase Lapine; however, there apparently is still the matter of the defamation claims stemming from Jerry Seinfeld's remarks on the David Letterman show. Read the entire article here.
New McRuling

In Malaysia, local restauranteurs McCurry won an 8 year legal battle against McDonald's for the right to use the Mc- prefix. The McReign of McDonald's seems to be nearing an end as long as other restaurants serve food that is different enough from McDonald's so as not to confuse customers. Read the entire article here. This ruling will undoubtedly result in a McBurst of new restaurants.
Trademark International Class: Classes 32 & 33 (Light beverages; Wines and spirits)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 32 & 33.

What are International Classes 32 & 33 All About?


These 2 classes represent the beverage classifications for trademarks. Class 32 is light beverages and has
182 possible descriptions; class 33 is wines and spirits & has 129 possible descriptions.

Almost any non-alcoholic beverage is in IC 32 except beer, which is in IC 32. This class includes waters, juices, sodas as well as syrups and essences used in making non-alcoholic beverages.

IC 33 is going to be any type of liquor, wine or spirit. Also included are syrups and essences using in making alcoholic beverages.


Geographical Indications for Wines & Spirits


Wines and spirits get a special little section of their own in the
Trademark Manual of Examining Procedure and it's all about location, location, location. When a geographic name is used as part of a name for wine or spirits, the USPTO has all kinds of things to say about that. Let's break it down by what they say and what that means:

Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place

"Geographical indications" are defined...as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." ... Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).


Clear as a bell, eh? Basically this means that USPTO will refuse a mark that contains a place name if (1) the place is known for that particular good (e.g. Champagne, France as cited in the refusal against Champagne from Spain AND (2) your goods do not originate from that place, as in the champagne example.

There is an exception and that's for obscure areas or for areas that don't necessarily have a reputation for wine or spirits, such as with
Tropical Liqueurs of Florida.

Geographical Indications Used on Wines and Spirits That Originate in the Named Place

This one's a bit easier to understand. Here's what the USPTO says:


"If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate."

This is talking about wines or spirits that do originate in a known geographic location and the above has a two-fold explanation.


First, if the ENTIRE mark is the name of the place, the USPTO will refuse it on the grounds that it's descriptive, as they did with
Shampagne. As you can see in this case, even an alternate spelling does not bypass the descriptive refusal.

Second, if a PORTION of the mark is the name of the place, the USTPO will require a disclaimer of that portion, as they did with
Bialla Napa Valley.

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Retweet This

Last Thursday, Twitter filed a Federal trademark application for RETWEET for three different classes. Take a look at the record here.

What does this mean for the 4.9 million uses found online? Does this mean Twitter's going to start sending out please-stop-using-our-trademark-as-a-verb letters a la Google?
Trademark International Class: Classes 29, 30 & 31
(Meats & processed foods; Staple Foods; Natural agricultural products)


All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 29, 30 & 31.

What are International Classes 29, 30 & 31 All About?

These 3 classes represent the food classifications for trademarks. Class 29 is meats & processed foods and has 699 possible descriptions; class 30 is staple foods & has 900 possible descriptions; class 31 is natural agricultural products and has 345 possible descriptions.

Meats, poultry, seafood, game are, of course, going to be in IC 29. Also within that class are things like oils, frozen foods composed primarily of meat or fish, canned meats, fruits & vegetables. Nearly anything you'd find at the butcher or in most of the food aisles is going to be in IC 29.

IC 30 are for goods you find in your baking aisle and also includes things like coffee, tea, flavorings, noodles, breads, etc.

Most anything you find in the produce section is going to be in IC 31. Also included are things like fresh flowers and things that are alive be they animals or Christmas trees.

How do I file in International Classes 29, 30 or 31?

Filing in any of the food classes has the same process as any other name. First, comprehensive research is needed to ensure that the name is legally available. That research should entail looking at the ENTIRE of the food and beverage industry. There can be some crossover when it comes to the same or similar name within the entirety of the industry but each situation is different. Let's look at a couple of examples:

1) In 1948, Bluebird was filed for canned fruits and juices in IC 29

2) In 1972, Bluebird was filed for ham & pork in IC 29

3) Fast forward 20+ years when the USPTO was a lot stricter and you'll find that Bluebird was still able to be registered for snack cakes in IC 30.

This does NOT mean that same or similar names can be trademarked all over the food & beverage industry. Again, like with anything trademark related, it's taken on a case by case basis.

For example, Jack Daniel's has attempted to oppose numerous filings food products using either the name Jack or Daniel. Sometimes they succeed as they did with Whiskey Jack and sometimes they don't such as with Doc Jack's.

As you can see, filing a name or logo within the food and beverage industry can be complex so be sure to get the proper help first.

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Trademark International Class: Class 28 (Toys and sporting goods)



All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 28.

What is International Class 28 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 28's short title is toys and sporting goods. But, as with anything trademark, there's more to it than that. The USPTO has 1317 accepted descriptions that fit into IC 28; check them out here.

This class is fairly straightforward -- essentially almost any tangible item that's used in play or as part of a sport is going to be living here. This includes things like balls, bats, paddles, rackets, nets, poles, boards, pucks, sticks, clubs and on and on. Bags for specific sports are in this class, while all-purpose sporting bags are in IC 18.

Almost (emphasis on this word) any toy you can think of is going to be in this class. There are some exceptions for different products that you'd think would fall into this class - video games are in IC 9 but hand held and stand alone video games machines are in IC 28; arts and craft kits are in IC 16; costumes are in IC 25 while masks are in IC 28.

What Else is in International Class 28?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 28 is no exception. Here are a few items living in IC 28 that seem a bit weird:

• aquatic canine treadmill
• Christmas tree ornaments, decorations and stands
• confetti
• lottery cards and tickets

What's New for International Class 28?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 28, good plus date added to the guide:

• Amusement devices, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure 23 Apr 09
• Arm bands for designating team member positions in sports activities 30 Apr 09
• Educational toys in the nature of an illustrated wall map 08 Jan 09
• Game equipment set sold as a unit comprised primarily of a playing board and playing cards and also including rules of play, dry erase boards and erasers, markers, a timer and T-shirts 25 Jun 09

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Gonna Keep Going


Looking over the blog's stats I can tell that all the different international classification posts have been fairly popular. Given that, I'm going to keep on keeping on.

I wanted to give my readers a quick summary of the different classes I'll cover as well as any respective issues.

If you see something missing or you have a question (or five) about classes, please comment below & I'll be sure to post about it.


Left off at IC 25, clothing -- any other questions or issues not yet resolved for anyone?

Will write posts about:
IC 28
ICs 29, 30, 31
ICs 32, 33
- geographically deceptively misdescriptive marks (say that three times fast)


Then it'll be time to move on to Services and I'm thinking it'd be a good idea to write a post for each class, from IC 35 to IC 45. As I go along, I'll address any other side issues that seem to come up when talking about these classes. Of course, feel free to ask questions galore in the comments section.

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Trademark International Class: Class 25 (Clothing)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 25.

What is International Class 25 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 25's short title is clothing. But, as with anything trademark, there's more to it than that. The USPTO has 887 accepted descriptions that fit into IC 25; check them out
here.

IC 25 is pretty straightforward in that clothing of virtually any type you can think of is going to be here. The exceptions are clothing that's of a protective nature (e.g. bulletproof vests, clothing worn by motorcyclists for protection against injury), which, oddly enough, is in
IC 9

How do I File in IC 25?


Filing in IC 25 is a bit different from other goods classes in terms of the required specimen. When it comes to clothing, the best thing to send to the USPTO is either a tag or a label. This makes it clear that the name and/or logo is being used for a clothing line. Your specimen can be a tag that's attached to the garment, such as a hang tag, or it can be a tag that's sewn into the garment.

The USPTO will no longer accept a picture of, for instance, a t-shirt with the name appearing only on the front. Those days are over. The USPTO considers this
ornamental as it's "conveying a message rather than indicating the source of the goods."

What Else is in International Class 25?


Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 25 is no exception. Here are a few items living in IC 25 that seem a bit off:


• gift packages sold as a unit consisting primarily of a sweatshirt and also including a photo frame, a coffee mug, and a tote bag

• race number belts that hold a paper number on the race participant's front or back during competition
• undergarment accessories, namely, removable silicone buttock enhancer pads

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Trademark 101: What is a Trademark?

Source Welcome to the first day of class! Before we get into the nitty gritty of trademarks, let’s go back to the beginning. And the be...