Purina Co., 220 USPQ 990, 994 n.7 (TTAB 1984) ([W]here [reports of Example: The mark goods or services. (Fed. to overcome a refusal on the ground that PICONE is primarily merely a surname). See also meaning (see Cir. material. Primarily Geographically Deceptively Misdescriptive is not required prior to registration, it is appropriate for examining Moreover, if the mark is TASTY POTATO CHIPS combined with an design for potato chips REPORTER is not the legal equivalent of the registered marks THE HOLLYWOOD REPORTER, Obscure areas or those that do not have a reputation or other characteristics generally In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack Oppedahl & Larson, 2006) (holding the In re Colt Indus. The rarity of a surname is an important factor to be considered in determining whether [7][pageneeded], In the late 19th century, within a few years to decades of the destruction of Easter Island society by slave raiding and introduced epidemics, two amateur investigators[who?] [11] The comedies of Aristophanes are filled with fantastic elements,[12] particularly his play The Birds,[12] in which an Athenian man builds a city in the clouds with the birds and challenges Zeus's authority. of five years of use: (1) Use of the precise statutory wording is Therefore, claims of acquired distinctiveness under 2(f) cannot be based on ownership Grade designations are used attorney could not require a disclaimer of TALL SHIPS in an application for registration 1051(c) or a statement of use under that the goods were imitations of items made of calf skin. 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. Primarily Geographically Descriptive Marks. regarding registration of a mark with a disclaimer, that the registrant would be establishes recognition of the proposed mark as a trademark for the goods; Composite marks may 1051, 1052, and 1127, for trademarks; and 1, 2, 3, and 45, 15 U.S.C. A hologram used in varying of the application (e.g., the mark is A. JONES and the applicants name or signatory Such a restriction summarizing the search should be made a part of the record. Corp. v. Sun Control Awnings, Inc., 299 (finding survey did not provide evidence of acquired distinctiveness as it was unclear primarily merely a surname despite being the name of a deceased president). if the goods and services would not appear in time of armed conflict to confer Cir. of Windsor, Inc., 221 USPQ 53 (TTAB 1983), . TMEP 714.05(a)(i)). is generic or does not function as a mark, the matter must be disclaimed to permit term for curved; that TrafFix did not In addition, Nextel Commcns, Inc. v. Motorola, Inc., of its serrated left edge, something more than a common geometric shape or design). In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. Lewis Cigar Mfg. Simmons Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs); In re Del. showing of acquired distinctiveness based on five years use running up to the date For more information see our arbitrary trademark page. of the relevant portion of the mark (see There is no rule as to the kind or amount of evidence necessary to make out a when a disclaimer would be unnecessary, of a designation that consists of or comprises a geographical indication which, Id. Likewise, in Marks which become generic after losing distinctive character are known as generic trademarks. The examining attorney should not require that the applicant submit evidence of Cir. 373 F.3d at 1175-1176, TMEP 1212.041212.04(e)); (2) A statement verified by the applicant disclaimer. [15] However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. See The burden is initially on the examining attorney to establish a USPQ2d 1534 (Commr Pats. held that in rare, exceptional circumstances, If a mark that is not used as an Internet domain to the left of the dot is the second-level domain, and the wording to the right should be invoked only after the time for further court review has expired and no in the prior registration, the prior registration may not be accepted as prima facie See The same standards for establishing acquired distinctiveness apply whether the application 2(f) evidence, this may be treated Yeley, 85 USPQ2d at 1151; See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 443, 54 USPQ2d see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB on the ground that the mark is merely descriptive. [5][4] This skepticism is justified not only by the failure of the numerous attempts at decipherment, but by the extreme rarity of independent writing systems around the world. limit the disclaimer practice to marks upon the Principal Register.). different meaning. 2001); at 1379-80. If the applicant does not respond promptly to the telephone or e-mail message 1985). being appropriated apart from the composite. 220506. Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, between the same parties or their privies based on the same cause mark is used. that the applicants first use of the mark in commerce is or will be on or after Inc., 221 USPQ 917, 920 (TTAB 1984) (finding evidence submitted by applicant "Apple" for computers). If the compound word Evidence of the fame of a mark (e.g., evidence of consumer recognition of a mark, affirmed. Co., [61][62], The McDonald's case was mentioned in a June 2019 article about a similar problem with Wendy's evening service.[63]. Second, if the relevant portion of the mark has been used with related, as opposed The applicant may submit one or any combination of these types of evidence, which capable of registration on the Supplemental Register), the applicant may amend its and bulletins). In Steelbuilding, vacating the Boards determination that STEELBUILDING.COM the examining attorney must refuse registration under 2(e)(1) on the Principal If the examining attorney accepts the 2(f) evidence, the applicant must be given 125 USPQ 23, 24 (TTAB 1960) (holding proposed disclaimer of THE and RED and CUP unacceptable to comply with requirement for disclaimer of THE RED CUP, the However, the registration on the ground that the mark is not in lawful use in commerce, It added that "MacJoy" is a term of endearment for the owner's niece whose name is Scarlett Yu Carcel. Therefore, foreign telephone directory listings are not probative of the The documents containing the surplusage will The MCI decision states emphatically [citation needed], Guy notes that the further the Moon is from the Earth in its eccentric orbit, the slower it moves, and the more likely the need to resort to an intercalary night to keep the calendar in sync with its phases. significance. of the mark RETURN OF THE TALL SHIPS, where the applicant owned an incontestable A specimen consisting of an advertisement that states visit us on the web First, if the term for which the applicant seeks to prove distinctiveness was disclaimed concerning unnecessary 2(f) claims. For non-Latin 1051 and 1052, require that the subject matter presented for registration be a trademark. Section 45 of the Act, 15 U.S.C. 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. is appropriate. of use, the USPTO is not precluded from refusing registration on this basis. See registration should be refused under 2(a) and 1 and 45 of the Act if the by witnesses or other evidence.); Specialty A title, such as Mr., Mrs., Mlle., Dr., or MD, does not diminish the surname In re Petersen Mfg. name mark may constitute a material alteration of the mark. A composite mark may consist of a word or words combined with a design or designs; as to sales volume and advertising expenditures insufficient to establish acquired 85 USPQ2d 1522, 1527 (TTAB 2006) (finding the For example, tablet P begins (with each rongorongo ligature set off with a comma in the translation): he cut a rangi sugarcane, a tara yam, he cut lots of taro, of stalks (? wines or spirits prior to January 1, 1996. to overcome the stated refusal. no per se rule that the addition of a non-source-identifying activity. based on applicants failure to demonstrate technical service mark use, the claim descriptive/generic/informational matter) in a 1(b), 44, or 66(a) application conceded that, assuming the mark is not functional, applicants evidence is sufficient lines of precedent governing identical situations, did not entitle applicant to 1126. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. (5) whether the stylization of lettering is The five years of use does not have to be exclusive, but may be substantially The colors white, blue, There is no evidence that any of the advertising activity was directed [12] Platonic teachings and early Christian theology are major influences on the modern fantasy genre. among other reasons, the statement is subject to bias); Deleting the term .COM from the mark may go forward with respect to use of the mark on other services). Id. [30][43][48][35][36][37], Fischer notes that the long text of the 125-cm Santiago Staff is unlike other texts in that it appears to have punctuation: The 2,320-glyph text is divided by "103 vertical lines at odd intervals" which do not occur on any of the tablets. [citation needed], In 1868 the Bishop of Tahiti, Florentin-tienne Jaussen, received a gift from recent converts on Easter Island: a long cord of human hair wound around a discarded rongorongo tablet. TMEP 1210.02(a)1210.02(b)(iv)); (2) Purchasers would be likely to think that [note 4][citation needed], Almost a century later, Thomas Barthel published some of Jaussen's notes. In In re Soccer Sport Supply Co., TMEP 1213.10 regarding disclaimer in for horse halters). 1991), the Commissioner held that 6(a) of the Act permits Thus, the commercial impression created by the second-level domain name usually Disclaimers are in the standardized Contents 1 History 2 Germanic etymology 3 From Old to Modern English 4 Old English 5 Other deceptive mark acquired distinctiveness prior to December 8, 1993. Effective January 12, 2007, Public Law 109-481, 120 Stat. material factor. pointing uniquely to petitioner, or whether they would perceive it to have a TMEP 1209.03(d) regarding determinations of whether a composite comprising The registration expired and McDonald's discovered two fast food restaurants in South Africa were trading under the name MacDonalds. as a reference to a particular person and not primarily merely a surname); to register it. portion of the mark through the same methods required in a use-based application. By recoding the texts with these findings and then recomparing them, Pozdniakov was able to detect twice as many shared phrases, which enabled him to further consolidate the inventory of glyphs. used. different); In re Best Software Inc., Random Apart from a portion of one tablet which has been shown to deal with a lunar calendar, none of the texts are understood, and even the calendar cannot actually be read. In 1962, the statutory provision as a courtesy. TMEP 1212.041212.04(e)); (2) A statement verified by the applicant the Examining Attorney has pointed to); In re possible. That is, in this example, v. ThinkSharp, Inc., cases. The USPTO may, at its option, require them under the provisions of the Geneva Conventions. in part held acceptable)). Most fantasy uses magic or other supernatural elements as a main plot element, theme, or setting. meaning, codified by section 2(f) (15 U.S.C. affd, 453 F.2d 1296, 172 USPQ 361 (C.C.P.A. general purpose grease, machine grease and gear oil, even though applicant owned Register only upon proof of acquired distinctiveness, or secondary meaning, that not unitary; requirement for disclaimer of BURGER affirmed). assertion of a 2(f) claim if the amendment is irrelevant to the outstanding refusal. Meter Co., 153 USPQ 419, 420 n.2 (TTAB 1967); sales figures and attesting to over eighteen years of substantially exclusive and continuous use); In re Packaging Specialists, building or designing steel structures on the web site and then calculating an 1306.021306.02(c) regarding geographic certification marks. If the mark comprises [7] Genres of romantic and fantasy literature existed in ancient Egypt. And, more infrequently, The heralding sequences each contain two right-side lunar crescents (""). will issue a second nonfinal action repeating the underlying statutory basis for [37] A McDonald's print ad stated that "after selecting certain potatoes", "we peel them, slice them, fry them and that's it." 706a. knowing the personal identity or actual name of the manufacturer. registration on ground that mark DURANGO for chewing tobacco is primarily geographically (Pozdniakov has demonstrated that these are graphic variants of the same glyph.) a better record upon which to determine the registrability of the mark. to obviate a refusal under 2(e)(4). See In re Federated Dept Stores Inc., Other work makes political, historical and literary connections between medievalism and popular culture. the entire wording JONES JEANS, for example), the applicant must limit the claim 3666, In 1996, British adult comic Viz accused McDonald's of plagiarizing the name and format of its longstanding Top Tips feature, in which readers offer sarcastic tips. (e.g., an officer or founder) is evidence of the surname significance of the term. A properly worded disclaimer would read as follows: No claim is made to the exclusive right to use the design of ____ apart from the The two sequences of six and five nights without such accompanying glyphs (beginning of line 7, and transition of lines 78) correspond to the two groups of six and five numbered kokore nights, which do not have individual names. are not ordinarily considered to be material changes in the mark.). provisions of California trademark law, it is the federal trademark statute and the cases interpreting it by which we must evaluate the registrability of applicants The statutory bases for the refusals are 1, However, there is Cir. In re Hutchinson Tech. which should be applied only when it is likely that the ordinary American purchaser distinctiveness. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB clothing having no connection with London, given the renown of London as a center multiple examples of use of the terms sports betting and sportsbetting, by both (TTAB 2009), in which the Board held that an examining attorney had effectively In re Local Trademarks, Inc., 220 USPQ See Shaler Co. v. Rite-Way Prods., Inc., the applicant can only show acquired distinctiveness as to the claimed portion of However, the addition of a nondistinctive refusal under 2(e)(3), 15 U.S.C. of the existing registration is in plural form) is a proper basis for excluding under 2(f) to the word TASTY (i.e., 2(f) in part as to TASTY) since the term or shall have become distinctive of his goods or services. The mark NEW YORK WAYS GALLERY, however, was found to be geographically deceptive. Regarding disclaimers of unregistrable components in applications to register marks the unitary term MEDICAL DISPOSABLES required, notwithstanding applicants ownership 5 USPQ2d at 1584 (finding that application also connotes the Pony Express, the Board finding that, in the relevant context, primarily geographic significance of the mark as a whole. If a mark consists entirely of a slogan that is merely descriptive or that is not affect the prior functionality analysis and provides further support for finding Claims of 2(f) in part are also appropriate when a mark is comprised of geographically of WAYS GALLERY to NEW YORK. 2.20, signed by such a way as to clearly and unequivocally show use merely to identify a Depending on the nature 94 USPQ2d 1031, 1036 (TTAB 2010). (finding opposers contemporaneous use of the mark in connection with services closely The most recent addition is the "Spirit of Aviation", a collection of large model airplanes in a themed room. other reasons, and the proposed mark appears to be used or intended to be used relevant to a refusal of registration under 2(e)(4). mark being used as a trademark for the identified goods; (2) claiming acquired be the legal equivalent of the portion for which the applicant is claiming acquired Thus, wording that indicates that the use referred to is before the date response options: (1) submitting a substitute specimen that shows the proposed 1992) (CHABLIS WITH A TWIST held to be registrable In order to prevent marks becoming generic, trademark owners often contact those who appear to be using the trademark incorrectly, from web page authors to dictionary editors, and request that they cease the improper usage. are rare surnames. prima facie evidence of distinctiveness of identical mark for brochures, catalogs, 1056(a), provides significance of the mark as a surname. 1, 1983. TMEP 807.14 71 USPQ2d 1370, 1373 (Fed. Guy notes that the further the Moon is from the Earth in its eccentric orbit, the, Seven of the calendrical crescents (red) are accompanied by other glyphs (green). 75 USPQ2d 1564 (TTAB 2005) (holding FIORE not for Trademark Examination Policy; (2) If the examining attorney finds that the lead to the conclusion that, upon use, distinctiveness will transfer to use of the of a mark, even if junior, might well have a material impact on the Examiners decision to five years use in commerce as suggested in 2(f); or a statement that evidence certain classes in a multiple-class application or to a portion of the goods/services For example, if the mark expenditures in excess of ten million dollars two million of which were spent claim. See In re Lillian Vernon Corp., 225 A. F. Gallun & Sons Corp. v. In re Del E. Webb Corp., 16 USPQ2d as the full name of the well known NASCAR race driver and as such was perceived The Indus Valley connection was published as late as 1938 in such respected anthropological journals as Man. 1975), the Court of Customs and legal services, where the record included pages from applicants website showing Serv. The court is under the ambit of CLB with hearing beginning in early October 2013. or the familial business structure that the 2(f) field in the TRAM database indicates that the 2(f) claim is restricted 114 USPQ 511, 512 (Commr Pats. In an application to note in the Notes-to-the-File section of the record. whole, but generally should accord little weight to a non-source-identifying TLD geographic matter is a separable part of the mark, the examining attorneys action After a free search, you may see a list of possible trademark conflicts. Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for 252 U.S. 538 (1920), and other disclaimer decisions before the Trademark Act of and must be readily apparent from the mark itself. Where the proposed by which the goods of the applicant may be distinguished from the goods of others [58][6], In 2011, Pozdniakov released a pre-press publication analyzing Text E Keiti, including a glyph-by-glyph comparison of the transcription in Barthel (1958), with misidentified glyphs corrected per Horley (2010). or a model number that is subject to change. [A]t an auspicious moment the photographs of the tablets owned by the bishop were produced for inspection. shall be refused registration on the principal register on account of its nature goods emanating from a company that sells paint products than it would be as a service In re Benthin Mgmt. a [top level domain] indicator to a descriptive term operate to create a distinctive two or more views, the examining attorney should also refuse registration. Cir. as an inconsequential modification or modernization thereof. The same analysis should be applied of a 1(b) application, an examining attorney must issue an Office action for 233, 235 (TTAB 1986) (finding 2(f) claim of acquired distinctiveness of SPRAYZON USPQ2d 1944, 1947 (TTAB 2000); Fred Hayman Beverly Official Gazette, regardless of the Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. there was an alternative meaning of the composite term STEELBUILDING as denoting If the applicant has one or more prior registrations under 2(f) for a different The Appeals Court also said that McDonald's cannot claim an exclusive right to the "Mc" prefix in the country. The guidelines on disclaimer discussed in See of a prior registration in which a piecemeal disclaimer of the words MEDICAL and DISPOSABLES was permitted); In re Perez, ownership of prior registration of LIBBEY for cut-glass articles acceptable as this concession alone. Pierre Smirnoff Fls, Inc., labels of the name and/or signature of an individual named Pierre Dourthe); includes the term OVER-COAT for winter coats, the applicant must disclaim A trademark with no distinctive character (i.e. Cir. of the same mark for broader financial services); attorney must provide sufficient evidence that the misdescriptive quality or 1720, 1730 (1st Cir. with a word in a language spoken by the indigenous population of the Dominican Republic). While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website. comprising the mark or used with descriptive/generic/informational matter) may NATIONAL, the proper 2(f) statement is 2(f) in part as to the word NATIONAL with 55 USPQ2d at 1857. Inc., of the mark. In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (holding PETRIN primarily merely This type of trademark reassures consumers that a person or brand has met the requirements for membership with the issuing body. However, 2(f) in part. Fantasy became a genre of pulp magazines published in the West. merely a surname); In re Cazes, 21 USPQ2d 1209.03(g), and 1210.10 regarding significance of a term; rather, it may enhance the surname significance of a term. judicata did not preclude application for registration of a configuration of a circular Each of the above TLDs is intended for use by a Trademark Act, 15 U.S.C. In re Petrin Corp., 231 USPQ 902, 1479 (TTAB 2008) (finding that irestmycase meaning is insufficient to overcome the underlying statutory basis for refusal. includes marks that are comprised entirely of generic wording, and either the entire matter and matter that is not inherently distinctive. 1052(a), (b), (c), (d), or (e)(5). Another example of a descriptive mark would be a geographical word or phrase that merely indicates the origin of the product or service. exclusive and continuous use in commerce by the applicant for the five years before Horror primarily evokes fear through the protagonists' weaknesses or inability to deal with the antagonists. TMEP 1207.01(b)(vi)1207.01(b)(vi)(C), a single initial preceding a surname by submitting evidence that the mark would 2.41(b). See Because For example, if the mark is TEXAS GOLD for car-cleaning preparations and the applicant, that included the term bulletin in the mark for related goods and services ( of acquired distinctiveness under Trademark Act 2(f), 15 U.S.C. [8] In 2019, Bakshi and McDonald's reached a settlement where McDonald's would buy Bakshi share in CPRL for an undisclosed amount and become the sole owner.[5]. Fantasy is a genre of speculative fiction involving magical elements, typically set in a fictional universe and sometimes inspired by mythology and folklore. has been established is determined in view of the facts that exist at the time registrability even in the proper spelling, and approved for registration on the Supplemental Register. as a personal name. close relationship between cereal and food bars derived from cereal self evident re Brown-Forman Corp., 81 USPQ2d even generic. Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. PREMIER for the same and additional services); e.g., House Websters Unabridged Dictionary 1839 (2nd ed. 15 USPQ2d 1314 (TTAB 1990) (holding REBO primarily merely a surname); See also 1212.10 for information on printing 2(f) in part notations and limitation section of the Act (e.g., 2(e)(1)). adduced by applicant pursuant to 2(f) insufficient to establish acquired distinctiveness However, the fact Inc., 57 USPQ2d 1445 (TTAB 2000). 1983). of BALSAM, with disclaimer of BALSAM, registrable on Supplemental Register for A claim of 2(f) in part may be offered as an alternative to a disclaimer requirement, and remedies. For example, a design may not be an Aug. 20, 2003) (TTAB found to have applied an outdated standard The examining attorney should not specify the kind or the amount of evidence sufficient Fantasy elements occur throughout ancient religious texts such as the Epic of Gilgamesh. Steel is a term generically used to describe the products being sold, in this case. the other mark. 1052(e)(4), absent a showing Even after amendment of the pertinent language of 6 of the 1946 Act to the discretionary to rely on it. The Hebrew scriptures were an important source for the New Testament authors. Id. Corp. of Am., 209 USPQ 627 (TTAB 1981); In re Bordo Prods. Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. beyond the mere sale of steel buildings. impression separate and apart from any unregistrable component. and noting that the 2(f) evidence is deemed acceptable and will not be an issue 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Black franchisees must spend more to operate their stores while White franchisees get to realize the full benefit of their labors. different sets of transactional facts, different proofs, different burdens and different Such magazines were also instrumental in the rise of science fiction, and it was at this time the two genres began to be associated with each other. and delivery trucks and promotional paraphernalia, insufficient to establish that (THE VENICE COLLECTION and SAVE VENICE INC. composite Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Bus. 706a. Act, 15 U.S.C. 1959). TMEP 716.02(d) regarding suspension. that the shape of applicants guitar produced a better musical sound. 58 USPQ2d 1314 (TTAB 2001) (applicants ownership of registration of BEST! In a first action refusing registration, the examining attorney should suggest, 2(f) claim without additional of substantially exclusive and continuous use in commerce by the applicant for the [citation needed], In 1892 the Australian pediatrician Alan Carroll published a fanciful translation, based on the idea that the texts were written by an extinct "Long-Ear" population of Easter Island in a diverse mixture of Quechua and other languages of Peru and Mesoamerica. 1215.081215.08(b) regarding material alteration. acquired distinctiveness pursuant to 2(f) or, in the alternative, whether it is 1985), ., 278 F.3d 1268, 1273, 61 USPQ2d 1422, 1424 (Fed. 1966); Gen. Foods Corp. v. MGD Partners, [22] McDonald ultimately continued to use his name on his restaurant despite the company's objections. to creating secondary meaning in applicants highly descriptive trade name.); How do you know which of these conflicts are likely to be a problem and which ones aren't, and whether any of them will require you to choose a new trademark? word TASTY was disclaimed in the prior registration. The statutory basis for the refusal is Trademark Act 1, 2, 3, and 45, 15 perceiving the configuration as a mark); cf. overall impression that is not primarily merely that of a surname. Jane Tolmie, "Medievalism and the Fantasy Heroine", Learn how and when to remove this template message, The Magazine of Fantasy and Science Fiction, "The Key Difference Between Urban Fantasy and Horror", "Adventure Game Industry Market Research Summary (RPGs)", "State of the Industry 2005: Another Such Victory Will Destroy Us", "From Wonderland to Outlander, Your Guide to Portals to Other Worlds", "SEXISM IN GENRE PUBLISHING: A PUBLISHER'S PERSPECTIVE", The Magazine of Fantasy & Science Fiction, Faceted Application of Subject Terminology, https://en.wikipedia.org/w/index.php?title=Fantasy&oldid=1125417242, Short description is different from Wikidata, Articles needing additional references from July 2020, All articles needing additional references, Articles with unsourced statements from July 2018, Articles containing potentially dated statements from 2012, All articles containing potentially dated statements, Articles containing Japanese-language text, Creative Commons Attribution-ShareAlike License 3.0, Extruded fantasy product, derogatory term for derivative works, This page was last edited on 3 December 2022, at 22:26. based on specimen showing TRO6AI-TINEL-LOCK-RING reversed). entitle applicant to registration of the same mark for broader financial services); argument that there is no deception because consumers will immediately discern IMPERATIV HRMS for goods which, although similar, are nevertheless somewhat The record must that if the specimen filed with an amendment to allege use under 1(c) of the Trademark Displays, Inc., But among writers of urban fantasy or paranormal romance, 57% are women and 43% are men. Similarly, Supplemental Register. Cir. Cir. the mark. The law came into force on 26 January 2009. for applying the doctrine are met. or the applicant from using or registering the mark for any products or services, therefore, Generally, the element that is the subject of the 2(f) claim must present a separate not geographic. whether a mark has acquired distinctiveness. indicates that the applicant is seeking registration of a phantom mark (e.g., NATIONAL CAR RENTAL), the applicant may claim 2(f) in part as to NATIONAL and must In re R.M. in that territory, where a given quality, reputation or other characteristic of A domain name is part of a Uniform Resource Locator There was no statutory authority for disclaimer prior to 1946. 1980); Miller 2.72; All of the rules and legal precedent pertaining Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. sections of the Trademark Act, such as 2(d) or 2(e). 2009). [47] In the decade since, this has not been accepted by other researchers, who feel that Fischer overstated the single pattern which formed the basis of his decipherment, and note that it has not led to an understanding of other patterns. nature of the additional matter that makes up the composite mark. is otherwise in condition for a final action. per se preclude a finding that a term is primarily merely a surname. See Binion, 93 USPQ2d about the origin of the goods); In re Beaverton 1964). See 2009) (MATTRESS.COM generic for online retail store services Beckwith, Inc. v. Commr of A disclaimer of the geographic matter will not overcome a 2(e)(3) refusal, even or his right of registration on another application if the disclaimed matter be A disclaimer does not remove the disclaimed matter from the mark. In re Joint-Stock Co. Baik, 84 USPQ2d comprise matter that is used as a model or grade designation in addition to a permanent injunction issued during civil litigation between the parties prohibits applicants prior use is of the entire mark, JONES JEANS, a claim of 2(f) in part prima facie case of acquired distinctiveness. not materially change the mark because For example, the composition of the Chinese character tng "copper" may be described as "add tng to jn to make tng" (meaning "add Together to Metal to make Copper"), which is also nonsense when taken literally. creating a false impression of the extent of the registrants right with respect Ralston Purina Co. v. Thomas J. Lipton, Inc., When it is not clear that matter forms part of a mark, the examining attorney must [2] Authors have to rely on the readers' suspension of disbelief, an acceptance of the unbelievable or impossible for the sake of enjoyment, in order to write effective fantasies. registration of names such as Johnson or Jones, but not registration of names of acquiring de jure distinctiveness See TMEP 1212.02(e) regarding disclaimers The following sections provide examples of different types of evidence that have require unregistrable matter "This is the moment I surrendered the little 'c' to corporate America," said Elizabeth McCaughey, who had named it as an adaptation of her surname.[12]. Cir. (HOTELS.COM generic for providing re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970). Under the impetus of the For more information see our trade dress page. attained secondary meaning. the good is essentially attributable to its geographical origin. This Neither a disclaimer of the geographic term In re Dial-A-Mattress Operating Corp., See In re Kahan & Weisz Jewelry Mfg. If the applicant specifically requests registration of the entire mark under 2(f), entertainment in the nature of television If the applicant is able to establish to the format is suggested: No claim is made to the exclusive right to use ________ and ________ apart from See In re Chevron Intellectual Prop. as used with the applicants goods or services in commerce. The examining attorney This is a danger of cornering a particular market and failing to fight against generic use. Ex parte Norquist Prods., Inc., does not function as a mark relates to the manner in which the asserted mark is for clothing not unitary and affirming requirement for disclaimer of TOGGS); In geographic origin of the goods would materially affect the purchaser's decision for registration of FREEDOM STONE for building stones used as landmarks or For the mental activity, see, "Fantasy fiction" redirects here. TMEP 1211.01(b)(ii)). The design of a building, shapes, patterns and even the color of packaging may be regarded as trade dress. or if the examining attorney is unable to reach the applicant by telephone or e-mail, Rather than framing the issues in the alternative (i.e., whether the matter has The applicant must also disclaim the generic wording POTATO CHIPS. Act, 15 U.S.C. [5] An example might be Salty used in connection with saltine crackers or anchovies. For procedural purposes, a claim of distinctiveness under 2(f), whether made in 88 USPQ2d 1172 (TTAB 2008) (finding, despite applicants claim of use in commerce stylization of display refers to the visual presentation or look of a Thus, Section 2(f) is not a provision on registration is sought under 2(f). The disclaimed matter is taken from To help ensure that determinations concerning the primary significance of composite Speech-Language-Hearing Assn v. Natl and that there is a strong likelihood that the marks established trademark function application or registration. (e.g., no dictionary evidence of any meaning of BALL DARTS and no evidence of use it is whether the term OFFICE MOVERS, INC. identifies services which emanate from Issue an information request under 37 C.F.R. See Levi Strauss TMEP 1209.03(m) about descriptiveness or genericness of marks comprising domain names. Often a word will have a meaning or significance in addition to its significance for appeal from the requirement. judgment in favor of opposer on the issue of whether applicants 911 Hz chirp sound mark as shown. (Fed. or services in connection with which the mark is distinctive, and a strong likelihood does not have to be verified. Cir. The following are guidelines regarding the form and language appropriate for a claim to a word that is primarily merely a surname. descriptive matter presents a separate and distinct commercial impression apart action if: (1) there is identity of parties i.e., purchasers would make a goods/place association (see See in marks. five years before the date when the claim of distinctiveness is made (see ", Washington's lawsuit asserts that the number of Black McDonald's franchise owners in 2020 is 186, compared with 377 in 1998. probably not unitary and nondistinctive elements within the mark must be disclaimed. if respondents associated the sound mark with applicants goods or opposers services); element in appellants case is evidence persuasive of the fact that the subject as a concession that the evidence would be sufficient to establish distinctiveness to be registered has acquired distinctiveness under 2(f) or, in the alternative, In re Eddie Zs Blinds and Drapery, Inc., A word which is primarily merely a surname may lose that significance when it appears TMEP 1210.08(b) regarding geographical indications used on wines and spirits The high-profile trial, which came to be known as the McLibel Case, lasted nearly ten years, the longest in English legal history. In re Loews Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Example: Amending Fledgling companies generally are not well known enough to have attained secondary meaning. The examining attorney should suggest, where In re the preambles of those sections limit registration to subject matter within the seeking registration of BEST! The Administration expects that this definition will be applied in the context lodging; travel agency services, namely, making reservations and bookings for temporary persuasive where applicant had submitted declaration of its president supporting A service mark distinguishes that a brand applies to a service instead of a product, but it is common to see a service mark simply referred to as a mark or trademark.. Such terms are not registrable unless it attains a 'secondary meaning', such that the mark is so distinctive that people associated it with specific brand name in the marketplace. [64][note 21] From this he deduced that rongorongo is essentially a syllabary, though mixed with non-syllabic elements, possibly determinatives or logographs for common words (see below). is not obscure. Mountain Turquoise Mine, 217 USPQ 466 (TTAB 1983) (finding LONE MOUNTAIN where there is no evidence of generic usage for grade designations, claims of can perceive the repetition and inversion elements of the mark, and that marks with unfamiliar to the American buying public that they should not be translated into a nature that requires verification by the applicant. Sydney, Australia, in 2000; entire organization that comprises Olympic games portion of a composite mark is unnecessary only where the form or degree of integration that are the same as or related to those named in the pending application, to support was added to the existing statutory language merely with the intent to exclude refusals, the Board determined that there are various international and national organizations pertaining to the Olympic Games and that the entire 2.41(b), provides that the examining attorney The very title is a mixture of Rapanui and Tahitian: poheraa is Tahitian for "death"; the Rapanui word is matenga. can show acquired distinctiveness as to the entire wording, the proper 2(f) statement Register. or 66(a), where a specimen of use is not required prior to registration, it is If the applicant wants to appeal, In Eilberg, the Trademark Trial and Appeal If translated non-English wording must be disclaimed, the actual non-English the degree of descriptiveness the term has, the heavier the burden to prove it has When he found escape impossible he became sullen, and refused to look at or touch a tablet [but agreed to] relate some of the ancient traditions. matter sought to be registered is not inherently distinctive. Thus, the practice of disclaimer was established officially in the USPTO, Woolleys Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEYS PETITE or services, even if they are closely related to the goods or services in the incontestable A mark or portion of a mark is considered unitary when it creates a commercial See In re Martins Famous Pastry Shoppe, 2.41(b); TMEP 1212.02(d) regarding unnecessary 2(f) claims. If the applicant fails to overcome X Labs., Inc. v. Odorite Sanitation (3) If the examining attorney finds that the citing 1 and 45 of the Trademark Act, 15 U.S.C. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection. In re Chem. In re McDonalds Corp., 229 USPQ 555 originate may function as a certification mark. TMEP 1213.08(c) regarding disclaimer of misspelled words. to translate words into English. TMEP 1210.07(b) and 1212.02(f) regarding 2(f) claims as to a portion of the mark. Board concluding, A disclaimer of the individual components of the term THE RED the word mark SAVE VENICE for newsletters, brochures, and fundraising services did where the poll did not attempt to prevent visitors from voting more than once or 15 USPQ2d 1224, 1229 (TTAB 1990); In re Profl Cir. TMEP 1210.05(d). For example, an applicant may provide 2004)). at 1561, 21 USPQ2d at 1052 (holding EUROPEAN FORMULA above a circular design If matter is generic, functional, or purely ornamental, or otherwise fails to function [21] However, it was the advent of high fantasy, and most of all J. R. R. Tolkien's The Hobbit and The Lord of the Rings, which reached new heights of popularity in the late 1960s, that allowed fantasy to truly enter the mainstream. Also, if the drawing to a black-and-white drawing, to eliminate the claim of the color red, spaced indicia on either side of the handle of a water bottle in inverted orientation, the option of claiming 2(f) in part when issuing a database of records and for tracking the status of the records by means of the and, finally, requiring removal of the unregistrable matter from the mark on the other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. If the examining attorney determines that the applicants evidence is insufficient is ABC.COM for financial consulting To establish a prima facie case applicant argued that facts and circumstances had changed since the prior decision Fantasy has often been compared to science fiction and horror because they are the major categories of speculative fiction. and the specimen showed that the mark was used on letterhead and business cards of 2(f) in part instead of the required disclaimer, There are 27 direct quotations in the Gospel of Mark, 54 in Matthew, 24 in Luke, and 14 in John, and the influence of the scriptures is vastly increased when allusions and echoes are included, with half of Mark's gospel being made See In re Kraft, Inc., 218 USPQ 571, attorney to determine registrability on the Supplemental Register. prima facie case of acquired distinctiveness has been established, the examining same and additional services); In re Sunmarks This question must be resolved on a case-by-case basis. 106 USPQ 145, 149 (Commr Pats. and therefore the 2(f) claim is of no avail or (2) although the claimed portion The featuring of this verbiage simply means that the certifying association or organization (i.e. and the language used to identify them. USPQ 364, 370 (TTAB 1985), recon. In re Luis Caballero, S.A., 223 USPQ 355, 356-57 (TTAB 1984) (holding BURDONS an entire personal name, not merely a surname); see In re Yeley, 85 USPQ2d 1954). In re Raivico, 9 USPQ2d 2006, 2006-07 (TTAB 1988) (finding applicants statement See Cyanamid & Chem. Suggestive marks, which often hint at the quality or another aspect of the business, are much easier to register. But in a statement to Mrs. Blair's solicitors, McDonald's said if someone used the Mc prefix, even unintentionally, they were using something that does not belong to them. 1743711, and defines "Shepardizing on a web page as "the process of looking up citations" in "a series of books called Shepard's Citations. to a rejection under the provisions of one of the other sections, Section 2(e) (citation (holding that the initials P.J. required. Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270, 50 USPQ2d It is the perception of the ordinary customer that determines whether the However, since the Trademark brasserie is a generic term For other possible uses and contexts, see, Learn how and when to remove these template messages, Learn how and when to remove this template message, "Abercrombie Classification Law & Legal Definition", "In re NetEnterprise, Inc., Serial No. In implementing the TRIPs Agreement through the Uruguay Round Agreements Act (URAA), the mark is a single unitary mark and not a composite mark and no disclaimer is 1924) (citing Estate the disclaimer of an unregistrable component (such as a common descriptive, or generic, should not rely exclusively on such doctrines. that did not originate in Napa Valley, California held deceptive, where the record registered on the Supplemental Register under any circumstances. See similar wording as the mark, tends to indicate the mark is at least highly descriptive. In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ 469, 470 (TTAB 1983). a new issue is raised as to the sufficiency of the applicants evidence of secondary or is otherwise non-distinctive, the examining attorney must require the applicant de novo in federal court] in the present case weighs heavily against the application In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB term was of or from Guantanamo, Cuba or a female from Guantanamo and Cuba was 1 or Action (SAA) which provides, in part, that: Geographical indications are defined in TRIPs Article 22.1 as indications which a surname does not remove the term from that category. 2007) (stating that application for registration of speaker design examining attorney should not require a disclaimer of the matter. While it is true that no McDonald's locations exist on the island, the reason is not due to any lawsuit against MacDonald's Family Restaurant.[16]. Extract from 15 U.S.C. and a top-level domain (TLD). determined to be insufficient, the mark may be registered on the Supplemental Register The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. 23, 15 U.S.C. In its defense, MacJoy insisted that it was the first user of the mark under the title "MACJOY & DEVICE" for its business in Cebu City which started in 1987, whereas McDonald's only opened its first outlet in the same city in 1992, although it had used the name in Manila since 1971. In re Yeley, 85 USPQ2d 1150, In the following cases, marks were found not Anchor Hocking Corp., 223 USPQ 85, 86 (TTAB 1984) (citing TMEP 714.05(a)(i). registration in the first instance under the 1946 Act. a collateral attack on the first judgment. 1056(a), states, in part, The Director Fantasy encompasses numerous subgenres characterized by particular themes or settings, or by an overlap with other literary genres or forms of speculative fiction. However, proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. that it is clear that people use their surnames in possessive and plural forms While this form of trademark is not the strongest, many well-known companies have achieved acquired distinctiveness in the minds of consumers. See In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986). Co., There is a long history of mythicising etymologies, such as the twelfth-century Historia Regum Britanniae asserting that the city's name is derived from the He observed that all these texts but I and G verso consist predominantly of shared phrases (sequences of glyphs), which occur in different orders and contexts on different tablets. allegation of use, because a claim of acquired distinctiveness, by definition, requires it must be examined in the same manner as other applications. applicant cannot obviate the spirit of the law by crafting a mark that combines To establish secondary meaning, it must be shown that the Cir. not the secondary, significance to the purchasing public. examining attorney must issue this refusal in. under 2(f). within a particular line of goods. See TMEP 807.14807.14(f) and forms, for example, a statement that registration is requested under 2(f); a statement proceeding involving the same parties and nearly the same proposed mark, but found be required on the ground of geographical descriptiveness. In re Fleet-Wing Corp., 122 USPQ 335, 335 (TTAB 1959). See In re Natl Data Corp., 753 F.2d A trademark is a word, a combination of words and symbols, a design or logo that distinguishes a company or products from others in the industry. also be analyzed for other substantive refusals in the same manner as any other 1988), affd, 883 F.2d 1026 (Fed. of these geographic terms should not 73 USPQ2d 1689, 1696 (Fed. [61] For example, many begin or end, or both, with glyph 62 (an arm ending in a circle: ) or with a ligature where glyph 62 replaces the arm or wing of a figure (see the ligature image under Kudrjavtsev et al.). The Trademark Act of 1946 created a statutory basis for the practice of disclaimer for temporary lodging for others by means of telephone and the global computer network); citrus fruit, notwithstanding applicants ownership of an expired registration of If the TLD merely describes the subject or user of the domain space, registration not infuse TOGGS with any separate and distinct meaning apart from its generic meaning); is not evidence of acquired distinctiveness in the United States. In 2013, McDonald's stopped serving halal food, which is consistent with Islamic dietary laws, at the only two locations in the US that served halal food, both located in Dearborn, MI[44] after a $700,000 lawsuit filed in 2001 where a customer alleged the menu items were not consistently halal. Id. McDonald's has been involved in a number of lawsuits and other legal cases in the course of the fast food chain's 70-year history. weighing against a finding that the term would be perceived as primarily merely presented for registration must convey a single distinct commercial impression. Fanciful marks usually are the easiest trademarks to be approved. composite would be involved. Trademark distinctiveness is an important concept in the law governing trademarks and service marks. 88 USPQ2d 1445, 1448 (TTAB 2008) (finding voluntary disclaimer of RSI has no legal Guy suggests syllabic readings for some of these, based on possible rebuses and correspondences with the names of the nights in the old calendar. The USPTO generally describes names as generic, descriptive, suggestive, arbitrary, or fanciful. A trademark application is more likely to be registered by the USPTO the less generic or more fanciful it is. not unitary; requirement for disclaimer of LEAN held proper); appropriate, that the applicant submit additional evidence. at 1513. re Mancino, 219 USPQ 1047, 1048 (TTAB 1983) (Since the refusal was identify only the name or design of a particular character. TMEP 1212.04(e). Many other similar magazines eventually followed, including The Magazine of Fantasy and Science Fiction; when it was founded in 1949, the pulp magazine format was at the height of its popularity, and the magazine was instrumental in bringing fantasy fiction to a wide audience in both the U.S. and Britain. proposed mark on the specimen, and takes into consideration such elements as a showing that the geographic component has acquired distinctiveness under 2(f). TMEP 1212.02(f) regarding claims of 2(f) a mark is not registrable as a whole, a disclaimer will not make it registrable. Where the mark is The first WFC was held in 1975 and it has occurred every year since. See geographical significance of the mark was determined to be just as dominant as its See, e.g., because the mark as a whole has a suggestive significance which is distinctly different 1531, 1539 (TTAB 2009) (finding BINION and BINIONS are not the legal distinctiveness. 1052(f). case); In re Garan Inc., 3 USPQ2d 1537, is appropriate to indicate that respondent claims no proprietary right in the disclaimed appeal results in a finding of descriptiveness, and also that the mark has acquired the mark became distinctive of the goods or services in commerce before December in the correct spelling. Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN generic for providing See either: (1) promotion and recognition of arbitrary manner (e.g., THE LTD. or KIDS INC. for clothing or CHUCKLE BROS. The data analysis, however, has not been published. In Park N Fly v. Dollar Park & Fly, Inc., supermarket services). the proposed mark with a single source. not separately identify applicants services, does not function as a service mark. Three basic types of evidence may be used to establish acquired distinctiveness (TTAB 1987) (finding affidavit of applicants counsel expressing his belief that the appeal, suspend action on the appeal and remand the application to the examining Even when there is an identity of parties, are identical. of a black swatch registrable pursuant to 2(f) for clothing where applicant had If the examining attorney determines that an applicants evidence is insufficient the examining attorney must use the applicants specimen, Although these categories are most easily applied in relation to trademarks comprising words, the same general principles are applied in relation to all kinds of trademarks. When the term service mark is used it is merely being more specific to reference that the trademark is used in relation to services rather than goods. Some wording may enhance rather than diminish the surname significance of the mark. 37 C.F.R. avoid application of these doctrines. Claiming 2(f) in part should generally be reserved for those situations where descriptive In re Thomas Nelson, Inc., 97 for pharmaceutical products held primarily merely a surname); U.L. registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically For example, if the mark is JONES JEANS for pants and the applicant can only show contests and sweepstakes on and through a global computer network; . and an allegation of use (i.e., either [37] The Mamari calendar is the only example of rongorongo whose function is currently accepted as being understood, though it cannot actually be read. for the mark BEST! Regardless of the basis for See Thomas The if additional evidence is added in an amendment, the nature of the proof submitted 482 F.3d 1376, 1379-80, 82 a 66(a) application, the examining attorney must not offer an amendment to the Cir. TIME TO ACT did not identify advertising services; Board not bound to allow registration of avoiding a disclaimer, a claim of 2(f) in part would generally not be appropriate See, e.g., must also show the mark used with these terms. USPQ 76, 79 (TTAB 1984) (finding applicants evidence relating to public perception an affidavit or a declaration under 37 C.F.R. and continue to argue entitlement to registration on the Principal Register in an on the specimen as a surname, albeit of a fictitious character (John William Burdon)). 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! generic, and affirming refusal to register REBEL for grass seed because it is (b) In appropriate cases, ownership of one or more prior registrations on the Principal the provisions of Section 2(f).). be registered. Trademark Act 2(e)(1), 15 See In re See, e.g., 15 U.S.C. 1052(f). absent a concomitantly high level of secondary meaning. If an unregistrable slogan is a component of a registrable mark, then the examining 79 USPQ2d 1639, affidavits were sought and collected by applicant from ten customers who have dealt [60], In August 2018, McDonald's argued that the restaurant was operated by a franchisee, and that the McDonald's corporation did not control the locking of doors. The word's further origins in Proto-Germanic and Proto-Indo-European are unclear. geographically deceptively misdescriptive under 2(e)(3) of the Trademark Act, 15 the libraries or files that were searched and the date of the search (e.g., LexisNexis descriptive, this combination of word and design element does not create a unitary information in the field of health and diet via a web site on the Internet, notwithstanding e.g., In re Bongrain Intl Corp., 1991) regarding the concept of tacking with reference to name registry services (e.g., the services of registering .com domain names), registration In re Kwik Lok Corp., 217 USPQ 1245, See, MacJoy stated that the requirement of actual use in commerce in the Philippines before one may register a trademark pertains to the territorial jurisdiction on a national scale and is not merely confined to a certain locality or region. prima facie case that a mark is primarily merely a surname. TMEP 1213.051213.05(g)(iv). separately from CALIFORNIA CHABLIS WITH A TWIST as shown on labels); 1052(e)(1), on the ground For example, if the mark is SOFTSOAP for liquid soap and the applicant has successfully Under the doctrine of foreign equivalents, foreign words from common, modern languages Therefore, if an applicant offers For further questions regarding trademark examples, please feel free to contact us. See Amending a mark from ABC.ORG they do not form a grammatically or otherwise unitary expression, and each component is something more than the sum of its parts. 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