Tag: trademark registration

Excuse Me While I KIST the Sky

Sunkist is a trademark of Sunkist, Inc. This image is used for illustrative purposes only. No endorsement, sponsorship or affiliation with any company, product or brand is intended or implied.

The Jimi Hendrix song, “Purple Haze” contains one of the most famous misheard lyrics of all time. Ever fixated on sex and sexuality, many people insist that when he sings, “Excuse me while I kiss the sky,” he is saying, “Excuse me while I kiss this guy.” Kiss the sky and kiss this guy are near-homophones, that is to say, they are phrases that nearly sound alike. In the trademark world, homophones and near-homophones can create or contribute to a likelihood of confusion which, in turn, can result in a denial of registration to one of the marks and/or infringement liability.

Jimi Hendrix also wrote a song called Love or Confusion, but that is a story for a different day. See In re Peace and Love World Live, LLC.

Sunkist Growers v. Intrastate Distributors

Intrastate Distributors, Inc. applied to register KIST, both as a standard character mark and as a stylized mark, for soft drinks. Sunkist, Inc. filed an opposition to registration with the Trademark Trials and Appeals Board (TTAB), arguing that KIST is confusingly similar to SUNKIST, when used in connection with beverages. The TTAB dismissed the opposition, finding no likelihood of confusion.

On July 23, 2025, the U.S. Federal Circuit Court of Appeals reversed.

The DuPont Factors

Likelihood of confusion is a question of law that requires weighing of findings of fact on the DuPont factors. This list of factors comes from E.I. DuPont de Nemours v. Celanese Corp., a 1973 case that identified 13 factors relevant to likelihood-of-confusion analysis:

  1. Similarity of the marks
  2. Nature of the goods and services
  3. Trade channels
  4. Conditions of purchase (e.g., whether buyers of the product or service are likely to carefully consider options before purchasing, or are more likely to make a quick or impulsive purchasing decision.)
  5. Fame
  6. Number of similar trademarks used with similar goods or services
  7. Actual confusion
  8. History of concurrent use, if any
  9. Variety of different products and services with which the trademark is used
  10. Interactions and relationship between the applicant and the trademark owner
  11. Extent of the applicant’s right to prevent others from using the trademark on specific goods or services
  12. Potential confusion
  13. Any other relevant information.

The analysis may focus on dispositive factors, such as similarity of the marks and relatedness of the goods. Also, as a general rule, the more related the goods or services are, the less similar the marks need to be to support a finding of likelihood of confusion.

In this case, the Board found four factors supported a finding of likelihood of confusion, but determined that KIST and SUNKIST were dissimilar. The Board believed they had different commercial impressions. KIST, the Board believed, referenced a kiss, while SUNKIST referenced the sun.

The Board relied on some of IDI’s marketing materials that depict a pair of lips adjacent to the word KIST. The Court of Appeals, however, noted that lips do not appear next to the word in all of the marketing materials. Nor was the image of lips claimed as part of the trademark. Therefore, the Court held that the Board’s finding that KIST references a kiss was not supported by substantial evidence.

The Court also determined that Sunkist did not always depict an image of a sun adjacent to its mark SUNKIST.

In short, when considered as standard character marks, not as design marks, SUNKIST and KIST are substantially similar and consumers are likely to confusedly believe that beverages using either of these marks come from the same source.

Confusing Similarity

Two marks may be confusingly similar if they are similar as to appearance, sound, meaning, or commercial impression. (TMEP 1207.01(b).) The test is not whether the two marks are linguistically distinguishable, but whether they are likely to give a consumer the impression that there is a commercial connection between them.

When assessing the likelihood of confusion between compound words, courts may appropriately identify a part of the term as the dominant part and other parts as peripheral. If the dominant part is distinctive, then greater weight may be assigned to the similarity between the dominant parts of two marks than to the peripheral parts. Thus, for example, regarding CYNERGIE and SYNERGY PEEL, the TTAB determined that SYNERGY was the dominant part of both marks, and that CYNERGIE and SYNERGY were sound-alikes. Consequently, they were confusingly similar.  (TEMP 1207.01(b)(viii).)

Although the Court of Appeals did not invoke this particular rationale in its KIST decision, it seems to me that this doctrine also would support a determination that KIST and SUNKIST are confusingly similar. KIST is the dominant part of both marks and it is distinctive.

Conclusion

Changing the spelling of, or adding or subtracting peripheral parts from, an existing trademark is not often likely to solve a likelihood of confusion problem, particularly when the goods or services are identical, similar, or related. A standard character trademark search should look not only for identical matches but also for words and phrases which, although not identical, might look or sound similar, in whole or in part, or have meanings similar to the one you are trying to clear.

New Trademark Fees Coming

The USPTO has announced that trademark fees in the United States will be undergoing significant increases on January 18, 2025. Here is a summary of the changes.

Application Fees

You will no longer enjoy a discounted fee for filing a TEAS-Plus application instead of a TEAS-Standard application. All applications. other than applications filed under the Madrid Protocol, will require a fee of $350 per class. For Madrid applications, the fee is $600 per class.

Additional fees must be paid in the following situations:

  • Insufficient information in the application: $100
  • Use of a custom-made identification of goods or services (as distinguished from using one of the pre-approved descriptions appearing in the Trademark ID Manual): $100
  • Each additional group of 1,000 characters over the first 1,000 characters in an identification: $200.

Madrid applications are not subject to these additional fees.

Statement of Use Fees

Beginning January 18, 2025, filing a Statement of Use or an Amendment to Allege Use will cost $150 each instead of $100.

Maintenance Fees

The filing fee for a declaration of use under Section 8 or 71 will be $325 per class instead of $225 per class.

The filing fee for an affidavit of incontestability under Section 15 will be $250 per class.

The filing fee for a Section 9 registration will be $350.

In conjunction with the Trademark Office’s new audit program, these fee increases provide a strong incentive to review your registration portfolio to see if there are any registrations, or registration classes, that should be removed.

You can find a full list of the fee changes here.

Is Jazz Confusingly Similar to Music?

Is jazz confusingly similar to music? No, that wasn’t the issue in this case. It was a contest between APPLE JAZZ and APPLE MUSIC involving tacking.

Bertini v. Apple Inc., No. 21-2301 (Fed. Cir. 2023). Apple, Inc. attempted to register the trademark APPLE MUSIC for both sound recordings and live musical performances (among other things). Bertini, a professional musician, filed an opposition, claiming to have used the mark APPLE JAZZ in connection with live performances since 1985, and to have started using it in connection with sound recordings in the 1990s. Bertini argued that APPLE MUSIC would likely cause confusion with APPLE JAZZ.

The first question that popped into my head, of course, was whether a consumer would really be likely to confuse jazz with music. I mean, come on.

Sadly, however, that was not the legal issue in this case. The legal issue was whether, and in what circumstances, priority of use can be established by “tacking” a new trademark registration onto an earlier one for a mark in a different category of goods or services.

The Opposition Proceeding

Apple applied to register APPLE MUSIC as a trademark in several categories of services in IC 41, including the production and distribution of sound recordings, and organizing and presenting live musical performances. Bertini, a professional jazz musician, filed a notice of opposition to Apple’s application, on the basis that he has used the mark APPLE JAZZ in connection with live performances since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini opposed Apple’s registration of APPLE MUSIC on the ground that it would likely cause confusion with Bertini’s common law trademark APPLE JAZZ.

The Trademark Trials and Appeals Board (TTAB) dismissed the opposition. Bertini appealed to the Federal Circuit Court of Appeals.

The Appeal

On appeal, the parties did not dispute that there was a likelihood consumers would confuse Bertini’s use of APPLE JAZZ and Apple’s use of APPLE MUSIC. The only dispute on appeal was priority of use.

Apple, Inc. began using APPLE MUSIC in 2015, when it launched its music streaming service, nearly thirty years after Bertini had begun using APPLE JAZZ. Apple, however, argued that it was entitled to an earlier priority dating back to a 1968 registration of the mark APPLE for “Gramophone records featuring music” and “audio compact discs featuring music.” (The company had purchased the registration from Apple Corps, the Beatles’ record company.)

The TTAB agreed with Apple’s argument, holding that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corp’s 1968 use of APPLE and therefore had priority over Bertini’s APPLE JAZZ.

The appellate court reversed, holding that Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records, and that its application to register APPLE MUSIC must therefore be denied.

The Court of Appeals construed the tacking doctrine narrowly. Framing the question as “[W]hether a trademark applicant can establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application,” the Court answered no. While Apple might have been able to use tacking to claim priority in connection with the production and distribution of sound recordings, it could not use that priority to establish priority with respect to other categories of services, such as organizing and presenting live performances.

Contact attorney Thomas James for help with trademark registration.

New TM Office Action Deadlines

The deadline for responding to US Trademark Office Actions has been shortened to three months, in many cases. Attorney Thomas B. James shares the details.

by Thomas B. James (“The Cokato Copyright Attorney”)

Effective December 3, 2022 the deadline for responding to a U.S. Trademark Office Action is shortened from 6 months to 3 months. Here is what that means in practice.

Historically, applicants for the registration of trademarks in the United States have had 6 months to respond to an Office Action. Beginning December 3, 2022 the time limit has been shortened to 3 months.

Applications subject to the new rule

The new, shorter deadline applies to most kinds of trademark applications, including:

  • Section 1(a) applications (application based on use in commerce)
  • Section 1(b) applications (application based on intent to use)
  • Section 44(e) applications (foreign application)
  • Section 44(d) applications (foreign application)

Applications not subject to the new rule

The new deadline does not apply to:

  • Section 66(a) applications (Madrid Protocol)
  • Office actions issued before December 3, 2022
  • Office actions issued after registration (But note that the new deadline will apply to post-registration Office Actions beginning October 7, 2023)
  • Office actions issued by a work unit other than the law offices, such as the Intent-to-Use Unit or the Examination and Support Workload and Production Unit
  • Office actions that do not require a response (such as an examiner’s amendment)
  • Office actions that do not specify a 3-month response period (e.g., a denial of a request for reconsideration, or a 30-day letter).

Extensions

For a $125 fee, you can request one three-month extension of the time to respond to an Office Action. You will need to file the request for an extension within three months from the “issue date” of the Office Action and before filing your response. If your extension request is granted, then you will have six months from the original “issue date” to file your response.

Use the Trademark Office’s Request for Extension of Time to File a Response form to request an extension. The Trademark Office has issued a warning that it will not process requests that do not use this form.

The form cannot be used to request an extension of time to respond to an Office Action that was issued for a Madrid Protocol section 66(a) application, an Office Action that was issued before December 3, 2022, or to an Office Action to which the new deadline does not apply.

Consequences

Failing to meet the new three-month deadline will have the same consequences as failing to meet the old six-month deadline did. Your application will be deemed abandoned if you do not respond to the Office Action or request an extension on or before the three-month deadline. Similarly, your application will be deemed abandoned if you you are granted an extension but fail to file a response on or before the six-month deadline.

The Trademark Office does not refund registration filing fees for abandoned applications.

As before, in some limited circumstances, you might be able to revive an abandoned application by filing a petition and paying a fee. Otherwise, you will need to start the application process all over again.

More information

Here are links to the relevant Federal Register Notice and Examination Guide. 

Contact attorney Thomas James

Need help with trademark registration? Contact Thomas B. James, Minnesota attorney.

“The” A Registered Trademark Now

It happened. “The” is a registered trademark now. The USPTO issued a registration certificate for the word “The” to Ohio State University (Sorry; the Ohio State University) on June 21, 2022. How did this happen, and what does it mean?

The The Saga

The legal quest to own “the” began on May 6, 2019, when Marc Jacobs Trademarks, LLC (MJT) filed an application with the United States Patent and Trademark Office (USPTO) to register the word as a trademark for use on clothing, bags and similar merchandise. MJT claimed a first use date of December 3, 2018.

On August 8, 2019, the Ohio State University filed its own application to register the word as a trademark for use on clothing. The university claimed first use in commerce at least as early as August, 2005.

Due to the earlier filed MJT application, the examining attorney issued an office action to the Ohio State University. It referenced the earlier filed MJT application as a potential bar to registration of the Ohio State University claim. The application was suspended pending the outcome of MJT’s “the” application.

MJT’s application was published for opposition on October 27, 2020. The Ohio State University filed an opposition. The Ohio State University alleged that;

[MJT’s THE mark] “so resembles Ohio State’s THE mark as to be likely, when used on or in connection with the applied-for goods, to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of MJT with Ohio State, or as to the origin, sponsorship or approval of the applied-for goods or commercial activities by Ohio State, all in violation of § 2(d) of the Trademark Act….”

Opposition of The Ohio State University in re: TM Application No. 88416806

It appears that the parties have reached a cooperative use agreement of some kind. The opposition has been withdrawn and the opposition proceeding has been terminated.

Ornamentation vs. The Registered Trademark

Both companies have faced objections from examining attorneys that their uses of the word “the” on clothing were ornamental. A decorative use of a word, symbol, design, etc. that does not function as an identifier of the source of a particular product or service is not sufficient to satisfy the “use in commerce” requirement for trademark registration.

After the USPTO rejected the MJT application in March, 2020, MJT filed a successful request for reconsideration. That led to the publication for opposition to which the Ohio State University responded. The USPTO issued a Notice of Allowance on October, 2021. The MJT application is still pending in the USPTO.

The Ohio State University initially encountered the same kind of resistance from the USPTO. The university remedied the problem, however, by showing that it wasn’t just using the word ornamentally; it was also putting it where trademarks usually go, such as inside the shirt at the back of the neck and on its website.

That satisfied the examiner. The mark was published for opposition, and on June 21, 2022 a registration certificate issued.

Scope of The Registered Trademark

Does this mean nobody can use the word “the” in a trademark anymore? No.

To begin with, the Ohio State University has only registered it in Class 25. Class 25 consists of sports and collegiate athletics clothing.

The trademark registration certificate

The ultimate question, in all cases, is whether another company’s use of the word would be likely to confuse consumers as to the origin of a product or service. The Tax Curative Institute should have very little to fear from the Ohio State University’s registration of “the” as a trademark for collegiate and athletic clothing.

What about displaying the word on clothing, though? Does the Ohio State University’s ownership of the “the” trademark for clothing mean that no one can display the word “the” on a T-shirt now?

Not necessarily. Purely ornamental uses of the word should not expose a T-shirt seller to a risk of infringement liability. For example, a company selling T-shirts emblazoned with the band name “The Slants” should not have to worry about being sued by the Ohio State University.

Of course, unless they have a license from The Slants, they might encounter some pushback for using the band’s name. That’s because the band owns a trademark in their name (“Slants”). Merely using the word “the,” however, should not be a problem. Consumers are not likely to think that every shirt they come across originates from The Slants merely because it has the word “the” on it.

Get in touch with The Cokato Copyright Attorney.

The Trademark Modernization Act

Not many people are aware that tucked into the 5,593-page Act are two major pieces of intellectual property legislation: the Copyright Alternative in Small-Claims Enforcement Act and the Trademark Modernization Act. Since the TM Act just went into effect, it seems appropriate to address it first.

By Tom James, Minnesota attorney

The Consolidated Appropriations Act of 2021 was signed into law on December 27, 2020. Most people have heard of the provisions relating to COVID-19, such as rental and other kinds of financial assistance, and Title XIV of Division FF of Section 2 (COVID-19 Consumer Protection Act). Most people are probably also aware that it contains the usual annual appropriations for things like the promotion of women’s interests. Not as many people are aware, however, that tucked into the 5,593-page Act are two major pieces of intellectual property legislation: the Copyright Alternative in Small-Claims Enforcement Act (“the CASE Act of 2020”) and the Trademark Modernization Act (“the TM Act of 2020.”) I will be talking about the CASE Act in later articles. Since the TM Act just went into effect, it seems appropriate to address it first.

Injunctions against infringement

In order to obtain an injunction, it is necessary to convince a court that you will suffer irreparable harm unless the court issues one. That can be difficult – and expensive – to do.

Historically, courts relieved some of the burden on trademark owners by applying a rebuttable presumption of irreparable harm upon a showing of likelihood of confusion. The United States Supreme Court, however, disrupted that practice in some circuits in 2006. In eBay, Inc. v. MercExchange, 547 U.S. 388 (2006), the Court held that an injunction against patent infringement cannot be granted unless the plaintiff makes an evidentiary showing that irreparable harm will ensue unless an injunction is granted. A split in the circuits resulted with respect to the question whether the requirement also applies to injunctions against trademark infringement. Some courts continued to apply the presumption; others did not.

The TM Act resolves the split. Now, 15 U.S.C. § 1116(a) requires courts in all jurisdictions to apply a rebuttable presumption of irreparable harm upon a finding of likelihood of confusion with a federally registered trademark, when an injunction is sought under the Lanham Act. In the case of a motion for a preliminary injunction or TRO, the presumption arises upon a showing of likelihood of success on the merits of an infringement claim brought under the Lanham Act.

The rebuttable presumption applies not only to infringement claims, but also to claims for injunctive relief with respect to false advertising, unfair competition, trademark dilution, or cyberpiracy under Section 43 of the Lanham Act.

By codifying this rebuttable presumption in the Lanham Act, the TMA removes uncertainty in the law and makes it easier for trademark owners to establish entitlement to injunctive relief.

Throwing out unused trademarks

If you’ve ever conducted a trademark search at the USPTO website, you’ve probably noticed an overabundance of registrations. In many cases, a trademark is registered in more categories of products and services than is really needed. Trademarks are often registered for good or services that either never have been used, or are not current being used, in connection with the mark. The TM Act provides new ways of clearing some of them out.

Expungement

The TM Act makes non-use a grounds for cancellation of a trademark registration. Cancellation of a trademark upon proof of abandonment is not new. The ability to remove unused goods or services from the coverage of the registration is. Moreover, an expungement does not require proof that the registrant has stopped using the mark since it was registered. To the contrary, it allows claims that a trademark has never been used (or has never been used for specified goods or services) to be made.

It is now possible to initiate a proceeding (called an “expungement”) to cancel a registration or narrow the categories of goods and services on the grounds of non-use.

Anyone may file an expungement petition. It may be brought between three and ten years after the registration. Until December 27, 2023, petitions to expunge trademarks may be brought with respect to registrations that are more than three years old, even if they are more than 10 years old. Thereafter, a petition may be brought only if the registration is between three and 10 years old.

Reexamination

The TM Act also makes it possible to petition the Trademark Office to reexamine the registration of a trademark. Under the TM Act, it will now be possible to seek the cancellation of a trademark on the grounds of that it was not actually used in commerce prior to the registration date. There is a 5-year limitations period for filing such a petition, measured from the date of issuance of the registration.

Who may initiate a proceeding

Anyone may initiate a proceeding. In addition, the USPTO may commence one on its own initiative. The filing fee is $400 per class of goods or services.

Appeals

The director’s determination with respect to an expungement or reexamination petition may be appealed. A party seeking to challenge the determination must first seek review from the Trademark Trials and Appeals Board (TTAB). Further review may then be sought from the Federal Circuit court of appeals.

Madrid Protocol registrations

A foreign or Madrid Protocol registration under Sections 44(e) or 66 cannot be cancelled on this new ground of non-use if the nonuse was due to special circumstances excusing the non-use.

Office Action response deadlines

Currently, trademark applicants have six months to respond to an Office Action. The TM Act authorizes the USPTO to specify a shorter time period.

The USPTO has announced that people (other than Madrid Section 66(a) applicants) will have three months, instead of six, to respond to office actions. For $125, you can request a 3-month extension. This shorter time period, however, will not be implemented until December 1, 2022.

Third-party evidence in examinations

Finally, the Act facilitates the submission and consideration of evidence submitted by third parties during the examination process. In the past, opponents of an application for registration typically initiated an opposition proceeding to contest a registration application. Under the new provisions, we are likely to see more attempts to forestall registration even before the application is published for opposition.

The Law Office of Tom James

Need help with a trademark matter? Whether it’s an application to register a trademark, an expungement or re-examination petition, an opposition proceeding, or an appeal, Cokato Minnesota attorney Thomas James at the Tom James Law Office can help you.

Take my course on Trademark Law

Enroll in attorney Tom James’s 90-minute on-demand course, “Trademark Law: Key Concepts” at Udemy to learn the basics of U.S. trademark law.

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