Joe Whitcomb
A trademark is an intellectual property right that protects a company’s brand. The idea is to allow a producer of goods or services to distinguish their goods or services from those of a different producer. If you purchase a hamburger that comes in a bag with the McDonald’s arches on it, you know that burger came from McDonald’s, not Wendy’s.
There are state, federal, and international trademark laws that interact with one another. These laws impact your business, whether you know it or not, and should be considered when developing a trademark strategy.
Following are three cases that illustrate several types of legal issues that you might face in registering a Trademark.
Sample Case: Medkit, LLC
Recently, the Trademark Trial and Appeal Board (TTAB) decided the case of Mylan Inc. v. Medikit, LLC, 2017 WL 3102600. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.Medikit, LLC submitted an application for trademark registration of the mark “EPI-KIT” for “injectable pharmaceuticals for treatment of anaphylactic reactions.” Medikit sought to register this mark under International Class 5, a category that includes “pharmaceuticals and other preparations for medical or veterinary purposes.” Mylan Inc. owns a registered trademark for EPIPEN. Mylan’s mark also refers to “injectable pharmaceuticals for treatment of anaphylactic reactions” under International Class 5.
Relevant to this discussion is a 2004 settlement agreement between Medikit and Mylan. Medikit attempted to register the EPI-KIT mark back in 2002. Mylan opposed that registration. To resolve the dispute, both parties entered into a settlement agreement.
In the settlement, both parties made certain representations:
- Medikit agreed to use the mark EPI-KIT solely for a “medical kit for the treatment of anaphylactic shock”;
- Medikit agreed not to use the words “EPI” or “PEN” for “any auto-injector products or goods” (emphasis added);
- Mylan agreed that Medikit owned the EPI-KIT mark; and
- Mylan agreed to not oppose any trademark applications by Medikit for the EPI-KIT mark.
Returning to the present case, Mylan opposed Medikit’s requested registration of EPI-KIT on two grounds:
- Under 15 U.S.C. 1052(d) of the Trademark Act, Mylan argued that registration of the EPI-KIT mark was likely to cause confusion, due to similarities with Mylan’s registered mark of EPIPEN.
- Under 15 U.S.C. 1052(c) of the Trademark Act, Mylan contended that registration of the EPI-KIT mark would result in dilution, due to similarities with Mylan’s registered mark of EPIPEN.
Medikit responded that the settlement agreement prevented Mylan from opposing registration of the EPI-KIT mark.
Analysis
The TTAB reviewed the arguments from both parties and considered the evidence in the record. Focusing on the plain language of the trademark settlement agreements, the TTAB underlined that Medikit agreed not to use the words “EPI” or “PEN” for “any auto-injector products or goods.”Nonetheless, Medikit applied for the EPI-KIT mark for use with “injectable pharmaceuticals for treatment of anaphylactic reactions.” The TTAB considered this a clear breach of the settlement agreement.
In light of this breach, the TTAB determined that Mylan was permitted to challenge Medikit’s trademark application. Mylan was seeking to enforce – not breach – the settlement agreement.
Overall, the TTAB granted Mylan’s request and denied Medikit’s trademark application for the EPI-KIT mark.
Sample Case: ABK, GmbH
The Trademark Trial and Appeal Board (TTAB) decided the case of ABK Betriebsgesellschaft der Aktienbrauerei Kaufbeuren GmbH (ABK) WL 3102594 (2017). ABK applied for a trademark. ABK sought to register the mark “ROSE” for “beer based mixed beverages.” ABK attempted to register this mark on the Supplemental Register under International Class 32, which includes beer as a category.The Trademark Examining Attorney (TEA) rejected ABK’s application for the ROSE mark, stating that the mark was “generic and therefore incapable of distinguishing its goods.” The TEA relied on Sections 23(c) and 45 of the Trademark Act in justifying this decision. After receiving the TEA’s decision, ABK protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, ABK appealed to the TTAB.
Analysis
The TTAB first outlined several key aspects of trademark law. Under 15 U.S.C. 1091(c), only marks “capable of distinguishing the applicant’s goods or services” will be registered. A mark is generic if it does not distinguish a company or product from competitors, because it fails to indicate “a unique source.”Citing In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987), the TTAB said that generic terms “are the antithesis of trademarks, and can never attain trademark status.” Furthermore, allowing trademarks for generic terms “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” Overall, generic marks are not suitable for trademark protection because such marks do not differentiate one product from another.
After establishing the legal basis for concluding that a mark is generic, the TTAB applied the law to ABK’s application for the “ROSE” mark. The term “rose,” as applied to beer or wine, is employed as a description of the color of the beverage. Moreover, the TTAB referenced common use of “rose” as a term to describe a specific subset of beer beverages. As applied to beer, specifically, the TTAB determined that “rose” was generic and “should be freely available for use by competitors.”
Consequently, the TTAB denied ABK’s appeal, confirming that ROSE was generic in this situation.
Sample Case: Yuzu Labs
The Trademark Trial and Appeal Board (TTAB) decided the case of Yuzu Labs Public Benefit Corporation (Yuzu), 2017 WL 3102592. Yuzu submitted an application for trademark registration of the mark “SITECONNECT.” Yuzu sought to register this mark on the Principal Register under International Class 42, a category that includes “design and development of computer hardware and software.” Yuzu sought to register the SITECONNECT mark for a website designed to help users locate and participate in “clinical research studies.”The Trademark Examining Attorney (TEA) rejected Yuzu’s application for the SITECONNECT mark, elaborating that the mark was “merely descriptive of [Yuzu]’s services.” The TEA relied on 15 U.S.C. 1052(e)(1) of the Trademark Act in justifying this decision.
After receiving the TEA’s decision, Yuzu protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Yuzu appealed to the TTAB.
Analysis
The TTAB first explored the descriptive requirement of trademark law. Under 15 U.S.C. 1052(e)(1), trademark protection is not appropriate when a mark is “merely descriptive or deceptively misdescriptive” of the product in question. Essentially, this means that a mark cannot simply describe the product or service offered. Alternatively, the mark cannot deceive the general public by providing a description unrelated to the product or service offered.The TTAB then considered whether the “SITECONNECT” mark had independent significance, beyond a mere description of Yuzu’s website and corresponding services. The TTAB considered that SITE referred to the “clinical research sites of the users” and CONNECT referred to “function of the software.” The TTAB also considered that both terms have commonly understood definitions, making it difficult for SITECONNECT to “create a separate commercial impression.” Stated otherwise, the SITECONNECT mark does not convey a separate meaning outside of the standard definitions of the words “site” and “connect.” As a result, it is “merely descriptive.”
The TTAB also addressed Yuzu’s argument that “SITECONNECT” was a unique mark because it was not used by other businesses. Citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004), the TTAB stated that trademark law does not allow a business to achieve “a complete monopoly on use of a descriptive term simply by grabbing it first.” In other words, a descriptive term does not gain independent meaning simply because no other business uses that term.
Consequently, the TTAB denied Yuzu’s appeal, confirming that SITECONNECT was “merely descriptive” in this situation.
Do You Need Legal Advice from a Trademark Attorney?
Navigating the ins and outs of trademark law can be a challenge. There are various legal regulations and considerations at play, which can make it difficult to understand the proper course of action. Legal counsel is always advised before entering into any trademark settlement agreements. Knowledgeable patent and trademark attorneys can make all of the difference and help you avoid pitfalls and resolve any issues that might arise.Obtaining a trademark and using the trademark for a number of years can help build name recognition among your customers. This name recognition can support a higher “goodwill” value if you sell your business, or can support a larger loan amount if you decide to borrow for your business. One of the most common ways our law firm helps individuals is by correcting mistakes that were made in the Trademark Filing. If not properly remedied, some of these errors have the potential to create problems for the mark holder. The United States Patent and Trademark Office has particularly complex laws regarding how trademark applications should be filed. Due to these complicated laws, statistics for the first quarter of 2017 reveal that not every trademark is properly filed.
Further information about trademark law is available here: Trademark Law. In order to ensure that a trademark is properly filed, or to resolve an issue after a trademark application is approved, you should consider retaining the assistance of a skilled attorney. The attorneys at Whitcomb, Selinsky Law PC would love to share their expertise with you. For a free consultation, please call (303) 543-1958.