Tag: 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.

USPTO building housing the Trademark Center

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.

Contact attorney Thomas James

Visit my extensive Trademark FAQs page.

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?

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.

Looking for more answers to questions about trademarks? Visit my extensive trademark FAQs page, or get in touch with me.

No Trademark Registration .sucks

The U.S. Trademark Office denied an application to register “.sucks” as a trademark. The Court of Appeals affirmed. Cokato attorney Tom James explains.

Most people are familiar with a few gTLDs (generic top level domains). The gTLDs .com, .net, .biz, .info, .edu and .gov come to mind. The list of available gTLDs has grown considerably over the past few years, however. Now there are literally hundreds of them. Some examples: .food, .auction, .dog, .beer. (View the full list of top-level domains.)

And .sucks.

The United States Trademark Office denied an application to register that gTLD as a trademark. The Federal Circuit Court of Appeals just affirmed that decision. The case is  In re Vox Populi Registry, Ltd.,  No. 2021-1496 (Fed. Cir., February 2, 2022).

The applications

Vox is the domain registry operator for the .SUCKS gTLD. The company filed two trademark applications with the USPTO. One was for the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” as well as “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” The other application was for the stylized form of the mark, as shown in the illustration accompanying this article.

The examining attorney refused both applications, on the ground that they failed to operate as trademarks, i.e., as source identifiers. The TTAB agreed, finding that consumers will perceive “.sucks” as merely one of several gTLDs that are used in domain names, not as a source identifier.

Concerning the claim in the stylized form, the Board concluded that although the pixelated font resembling how letters were displayed on early LED screens is not common today, it is not sufficiently distinctive to qualify for trademark protection in this case.

Vox appealed the part of the decision relating to the stylized font to the Federal Circuit Court of Appeals. The court affirmed.

The standard character mark

Under the Lanham Act, a service mark may be registered only if it functions to “identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services.” 15 U.S.C. § 1127. Matter that merely conveys general information about a product or service generally does not function as a source identifier.

In this case, the court held that substantial evidence supported the Board’s finding that consumers will view this standard character mark as only a non-source identifying part of a domain name rather than as a trademark. The court pointed to specimens from Vox’s website that treated domain names ending in “.sucks” as products. rather than as identifier of Vox’s services. Consumers are likely to see gTLDs as part of domain names, not as identifiers of domain name registry operators.

The stylized design

Design or stylization can sometimes make an otherwise unregistrable mark registrable, provided the stylization creates an impression on consumers that is distinct from the words or letters themselves. Here, the Board determined that because of the ubiquity of the font in the early days of computing, consumers would view the pixelated lettering as ordinary rather than as a source identifier.

It appears that Vox did not claim that the stylized presentation of .SUCKS had acquired distinctiveness. If it had done so – and if it could present persuasive evidence of acquired distinctiveness – then the stylized mark might have been registrable.

Conclusion

Does this decision mean that a gTLD can never serve as a trademark? No. To give just one example, AMAZON is both a gTLD and a trademark. The import of the case is only that a gTLD is not likely to be registrable as a service mark for a domain name registry service, where consumers are more likely to see it as simply being a part of a domain name, not as an identifier of a particular domain registry service.

Contact Tom James

Contact attorney Tom James for help with trademark registration.

For answers to common questions about trademarks in general, visit my Trademark FAQs page.

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