Competitor attempting to trademark common t shirt phrases?

[johndaniels]

What is the name of your state (only U.S. law)? Arizona

Hi,

I sell t shirts online and a competitor is attempting to quietly trademark several common phrases that are sold
on t shirts and workout wear by dozens of online vendors (including my company). He is not the originator of the
lines nor are they related to his business name, brand names, advertising taglines, etc.

My understanding is that common 2-4 word t shirt lines cannot be trademarked.

The trademarks have recently reached the publication for opposition period. Does anyone have any advice
on drafting a well-worded letter of protest?

Thanks

 

[quincy]

Two to four words will not be copyrightable but they can (potentially) be registered as trademarks (think, for example, of Speedy Printing, Dunkin' Doughnuts, Ace Hardware).

Marks proposed for placement on the Supplemental Register are not published for opposition. Marks published for proposed registration on the Principal Register can have the registration opposed with a written opposition submitted within 30 days of the mark's publication in the Official Gazette (although it is possible to request an extension for filing).

The USPTO website offers direction on how to oppose registration. The USPTO website offers direction on how to file an application to have the trademark registration that was submitted by your competitor cancelled. Your reasons are, apparently, that the mark's placement on the Principal Register or Supplemental Register will cause your business harm (http://www.uspto.gov).

When you submit your written opposition or you file an application to have the registration cancelled, there will be a hearing to resolve the matter. The Patent and Trademark Commission may refuse to register the opposed mark or it may cancel the registration of the mark or it may place restrictions on the use of the mark.

Even if the registration is successfully opposed or cancelled, however, if your competitor is using these two to four words as identifiers for his products or services, he can still challenge your use of the words to identify yours. Marks do not have to be registered to confer rights in them. Whether you can successfully defend your rights to use these words will be a matter you should review with an attorney in your area.

Good luck.

 

[justalayman]

He is not the originator of the
lines nor are they related to his business name, brand names, advertising taglines, etc.

If he does not and has not used them in commerce, his registration should be rejected or at best, allowed to be registered as in ITU registration. Even if accepted as an ITU registration, he still must use the mark to earn rights to it after which it could be accepted as fully registered. If he fails to use it in commerce by the 6 month term and provides such a claim to the USPTO, he can apply to extend that or his application will be denied.

 

[quincy]

What is the name of your state (only U.S. law)? Arizona
. . . .The trademarks have recently reached the publication for opposition period. . . .

justalayman, the sentence quoted above is what is confusing, and perhaps johndaniels will post back to clarify.

Trademarks that are not in use cannot be registered.

And "common word" marks that have not gained a secondary meaning will (generally) not be distinctive enough to be placed on the Principal Register.

The type of mark described by johndaniels here seems destined to be rejected by the USPTO.

Of course, the competitor (if in fact he has been using these words to identify his products or services) could have applied for placement on the Principal Register hoping the mark would be accepted, but maybe knowing that the Supplemental Register is where it would wind up (and then the mark would not be published for opposition).

At any rate, johndaniels, if you are going to be opposing a trademark registration that is soon to be published in the Official Gazette, you will need to show that you have legal standing (you have the same or a similar trademark), and you will want to provide evidence that harm will result to your business if the competitor's trademark is registered.

An attorney in your area can be consulted and can help you with your written opposition.

 

[justalayman]

=quincy;3180951]

Of course, the competitor (if in fact he has been using these words to identify his products or services) could have applied for placement on the Principal Register hoping the mark would be accepted, but maybe knowing that the Supplemental Register is where it would wind up (and then the mark would not be published for opposition).

At any rate, johndaniels, if you are going to be opposing a trademark registration that is soon to be published in the Official Gazette, you will need to show that you have legal standing (you have the same or a similar trademark), and you will want to provide evidence that harm will result to your business if the competitor's trademark is registered.

got any links I can read for education (my own). The above described actions are over my head.

 

[quincy]

A link, huh? How about http://www.uspto.gov?

15 USC Section 1602(12) Publication, and Section 1063(13) Opposition, and Section 1064(14) Cancellation, and Section 1091(23) Supplemental Register, will have the information I provided here.

Essentially what happens with trademark registration is the trademark holder files an application (application form, drawing, fee, specimen) and submits it to the USPTO, where it is assigned to an examining attorney. The examiner will determine if the mark qualifies for placement on the Principal Register.

If nothing disqualifies it, then the mark will be published in the Official Gazette and the public can oppose the registration of the mark. If there is no opposition, the mark is registered. If there is opposition, there will be a hearing.

If the mark is rejected for placement on the Principal Register, then the trademark applicant can alter or amend his application or reapply later, or he can apply for the Supplemental Register. With the Supplemental Register, there is no publication element but if someone objects to the registration, they can file a petition to cancel the registration.

Registration of a mark can take a year or two or three or more, depending on various issues that may arise.

At any rate, the fact that johndaniels says that the registration has "reached the publication for opposition period" leads me to think that either the competitor has been using the mark in commerce for some time and it has gained a secondary meaning or the mark is otherwise distinctive, or the mark has NOT reached the publication for opposition period and johndaniels is in some way mistaken about the status of the mark.

 

[justalayman]

A link, huh? How about http://www.uspto.gov?

Ok, just got finished with that.



Q, you a funny guy

I am not familiar with the process well enough to be aware of the terms:

Official Gazette (isn't that a four legged animal that bounds across the plains of parts of Africa? I suppose that would mean there is also a false Gazette out there somewhere as well)

Supplemental register (that is the added air outlet they place in my floor when the primary registers didn't allow for enough airflow, right?)


Principal Register (first (and seriously), is it actually a princiPAL register and not a princiPLE register?) (so now to the humor)( what does the Principal of my high school have to do with all of this?)

thanks for the explanation in 'layman's terms (and notice the '. It is intentional)

 

[quincy]

Ok, just got finished with that. . . .

Hahaha.

Although you probably ran across the following in your (very fast) read of the information on the USPTO site, here are two links to material on the site that johndaniels or others may find helpful:

The Trademark Manual of Examining Procedure: http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Apr2013/d1e2.xml

The trademark process: http://www.uspto.gov/trademarks/process/index.jsp

and here is an additional link from Cornell just for the heck of it: http://www.law.cornell.edu/wex/trademark

Principal Register (first (and seriously), is it actually a princiPAL register and not a princiPLE register?) (so now to the humor)( what does the Principal of my high school have to do with all of this?)

Surprisingly, yes, it is Principal and not Principle (although I admit I hesitate every time I write it). So much for what we learned in elementary school, huh?

As for all of the other terms, you seem to have a pretty clear understanding of them.

 

[johndaniels]

Hi,

Thanks for your advice and the links.

He registered 3 trademarks at the same time - all as standard character marks with Intent To Use (although he currently sells t shirts and / or
tank tops with the phrases on them) so no specimen was submitted. All 3 were published a week ago in the Official Gazette for opposition. The phrases
are generic and sold by dozens of sellers online. None of the phrases are associated with one seller or indicate a source.

My guess is that with the design specimens included, the applications would not have made it to publication (they are just dumb t shirt phrases,
not a brand, logo, company slogan, etc.).

I was reviewing T.M.E.P. § 1202.03 - Refusal on Basis of Ornamentation and wondered if these points would be valid to cite in a Letter of Protest:

1202.03 Refusal on Basis of Ornamentation

Subject matter that is merely a decorative feature does not identify and distinguish the applicant's goods and, thus, does not function as a trademark.
A decorative feature may include words, designs, slogans or other trade dress. This matter should be refused registration because it is merely ornamentation
and, therefore, does not function as a trademark as required by §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.

This portion concerns me:

1202.03(e) Ornamentation with Respect to Intent-to-Use Applications

Generally, the issue of ornamentation is tied to the use of the mark as evidenced by the specimens. Therefore, no ornamentation refusal will be issued in an
intent-to-use application until the applicant has submitted specimens of use with either an amendment to allege use under §1(c), or a statement of use under
§1(d), 15 U.S.C. §§1051(c) or (d).

I feel that once he receives the Notices of Allowance, he will take them to online marketplaces (ebay, etc.) where products with the same phrase are sold and
demand that the products be removed. Unfortunately these sites generally comply with requests from attorneys even if he does not have fully registered trademarks.

 

[quincy]

Hi,

Thanks for your advice and the links.

He registered 3 trademarks at the same time - all as standard character marks with Intent To Use (although he currently sells t shirts and / or
tank tops with the phrases on them) so no specimen was submitted. All 3 were published a week ago in the Official Gazette for opposition. The phrases
are generic and sold by dozens of sellers online. None of the phrases are associated with one seller or indicate a source.

My guess is that with the design specimens included, the applications would not have made it to publication (they are just dumb t shirt phrases,
not a brand, logo, company slogan, etc.).

I was reviewing T.M.E.P. § 1202.03 - Refusal on Basis of Ornamentation and wondered if these points would be valid to cite in a Letter of Protest:

1202.03 Refusal on Basis of Ornamentation

Subject matter that is merely a decorative feature does not identify and distinguish the applicant's goods and, thus, does not function as a trademark.
A decorative feature may include words, designs, slogans or other trade dress. This matter should be refused registration because it is merely ornamentation
and, therefore, does not function as a trademark as required by §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.

This portion concerns me:

1202.03(e) Ornamentation with Respect to Intent-to-Use Applications

Generally, the issue of ornamentation is tied to the use of the mark as evidenced by the specimens. Therefore, no ornamentation refusal will be issued in an
intent-to-use application until the applicant has submitted specimens of use with either an amendment to allege use under §1(c), or a statement of use under
§1(d), 15 U.S.C. §§1051(c) or (d).

I feel that once he receives the Notices of Allowance, he will take them to online marketplaces (ebay, etc.) where products with the same phrase are sold and
demand that the products be removed. Unfortunately these sites generally comply with requests from attorneys even if he does not have fully registered trademarks.

johndaniels, I think you will probably want the specifics of your situation personally reviewed by an attorney in your area, because I am afraid I cannot understand, among other things, exactly how these "common" and "generic" words that you say have been used frequently on tee shirts by others (including the competitor who is registering them) are distinctive enough now as a trademark to qualify for placement on the Principal Register.

You can sit down with the attorney and work on the opposition to registration of the mark(s) at that time.

Good luck.