[gnso-rpm-wg] Updated table of TMCH proposals and glossary of terms

Wed May 3 14:34:03 UTC 2017

Comments in-line below on Kathy's first point.  More to follow on the other
points.

Greg

On Wed, May 3, 2017 at 9:50 AM, Kathy Kleiman <kathy at kathykleiman.com>
wrote:

> Re: the trademark side of the table:
>
> Under Composite Mark definition, in the USA section, there are two case
> quotes, but the rule itself is not present, and I would ask that it be
> added: *"However, the fundamental rule in this situation is that the
> marks must be considered in their entireties." *
> http://www.bitlaw.com/source/tmep/1207_01_c_ii.html, USPTO Trademark of
> Examining Procedure.
>
GSS: I agree that the extract needs to be put in context, but we're not
there yet.  First, these are not case quotes; they are quotes from the
Trademark Manual of Examining Procedure, used by USPTO trademark examiners
in examining applications.  And this is from a section on analyzing
likelihood of confusion between two marks, not a section defining composite
marks per se.

The "situation" referred to in the additional text chosen by Kathy is an
analysis of the likelihood of confusion between two "composite marks" (each
of which consist of designs and letters), and the "rule" being stated here
is that while both marks must be considered in their entireties for the
purpose of comparison, greater weight may be given to the dominant feature,
which is often the wording..  The rule that both marks should be
considered in their entiretiesshould not be mistaken for a "rule" that a
composite mark only provides protection for a mark in its entirety -- not
the same thing, though some here clearly wish it were.  And not the rule.

This is probably not the best place to extract a definition of composite
mark, and I'll look for a better section.  But if we do use this section,
the text of this section should be inserted in its entirety with cites
removed (to avoid bulking this up too much):

Often, the examining attorney must determine whether a likelihood of
confusion exists between composite marks that consist of a design element
combined with words and/or letters. Frequently, the marks at issue are
similar in only one element. Although it is not proper to dissect a mark,
if one feature of a mark is more significant than another feature, greater
weight may be given to the dominant feature for purposes of determining
likelihood of confusion. However, the fundamental rule in this situation is
that the marks must be considered in their entireties.

If a mark comprises both wording and a design, greater weight is often
given to the wording, because it is the wording that purchasers would use
to refer to or request the goods or services. The Court of Appeals for the
Federal Circuit has cautioned, however, that "[t]here is no general rule as
to whether letters or designs will dominate in composite marks; nor is the
dominance of letters or design dispositive of the issue."

The comparison of composite marks must be done on a case-by-case basis,
without reliance on mechanical rules of construction.
Here's the section in its entirety (with cites):

Often, the examining attorney must determine whether a likelihood of
confusion exists between composite marks that consist of a design element
combined with words and/or letters. Frequently, the marks at issue are
similar in only one element. Although it is not proper to dissect a mark,
if one feature of a mark is more significant than another feature, greater
weight may be given to the dominant feature for purposes of determining
likelihood of confusion. *See, e.g.*, *In re Viterra Inc.*, 671 F.3d 1358,
1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); *Giant Food, Inc. v. Nation’s
Foodservice, Inc.*, 710 F.2d 1565, 1570-71, 218 USPQ 390, 395 (Fed. Cir.
1983); *see also* *TMEP §1207.01(b)(iii)
<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e5475.html>*.
However, the fundamental rule in this situation is that the marks must be
considered in their entireties. *See Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U.*, 797 F.3d 1363, 1371, 116
USPQ2d 1129, 1134 (Fed. Cir. 2015); *In re Shell Oil Co.*, 992 F.2d 1204,
1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); *Massey Junior Coll., Inc. v.
Fashion Inst. of Tech.*, 492 F.2d 1399, 1402, 181 USPQ 272, 273-74
(C.C.P.A. 1974) .

If a mark comprises both wording and a design, greater weight is often
given to the wording, because it is the wording that purchasers would use
to refer to or request the goods or services. *See, e.g.*, *Viterra*, 671
F.3d at 1366, 101 USPQ2d at 1911; *In re Max Capital Grp. Ltd.*, 93 USPQ2d
1243, 1247 (TTAB 2010) ; *In re Appetito Provisions Co. Inc.*, 3 USPQ2d
1553, 1554 (TTAB 1987) . The Court of Appeals for the Federal Circuit has
cautioned, however, that "[t]here is no general rule as to whether letters
or designs will dominate in composite marks; nor is the dominance of
letters or design dispositive of the issue." *In re Electrolyte Labs. Inc.*,
929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).

The comparison of composite marks must be done on a case-by-case basis,
without reliance on mechanical rules of construction. *See, e.g., Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U.*, 797 F.3d at 1371-72, 116 USPQ2d at 1134-35 (holding that Board
finding lacked substantial evidence for minimizing the literal element in
composite mark); *Spice Islands, Inc. v. Frank Tea & Spice Co.*, 505 F.2d
1293, 184 USPQ 35 (C.C.P.A. 1974) (reversing TTAB’s holding that SPICE TREE
with tree design, for garlic powder and minced onion, and SPICE ISLANDS
with and without tree design, for seasoning herbs and spices, is not likely
to cause confusion); *In re Covalinski*, 113 USPQ2d 1166 (TTAB 2014)
(holding confusion unlikely between REDNECK RACEGIRL and design of large,
double-letter RR configuration and registered mark RACEGIRL, even when used
on in-part identical goods);*In re White Rock Distilleries Inc.*, 92 USPQ2d
1282 (TTAB 2009) (holding VOLTA for vodka infused with caffeine, and TERZA
VOLTA and vine shoot design for wines, not likely to cause confusion); *In
re Sun Supermarkets, Inc.*, 228 USPQ 693 (TTAB 1986) (holding applicant’s
mark, SUN SUPERMARKETS with sun design, for retail supermarket services,
and registrant’s marks, SUNSHINE and SUNRISE (both with sun designs), for
retail grocery store services, likely to cause confusion).
https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e5036.html
 (this is a preferable cite, since it goes to the authoritative source and
the current April 2017 version of the TMEP; the bitlaw cite seems to go to
a 2015 version).

> Further, as Mary notes under "stylized mark," the Trademark Office
> confides that its definitions between stylized marks and marks with design
> elements are distinctions without difference: [from Mary's table]
> *USA: "No clear distinction, for definitional purposes at least, between a
> mark comprising stylized text only and a mark comprising stylized text with
> a design element." *
>
> The key difference, of course, is the *"**registration of a standard
> character mark would entitle you to use and protect the mark in any font
> style, size, or color"* and the others don't. I look forward to our
> discussion today and note again that it is this clear distinction that
> original rules captured when they created the TMCH Database, TM Claims and
> Sunrise period.
>
> Best, Kathy
>
> On 5/2/2017 1:01 AM, Mary Wong wrote:
>
> Dear all,
>
>
>
> Staff has updated the table of open TMCH questions (on design marks, GIs
> and TMCH matching rules) with the new proposal on GIs submitted on Friday
> by Jonathan Agmon (see attached document). Given the ongoing Working Group
> discussions on the mailing list on some of these topics, we have not
> attempted to summarize the specific discussion items and sub-topics, but we
> will be happy to do so if this will be helpful.
>
>
>
> Also attached is the staff-prepared glossary of terms relating to design
> marks and GIs, which we have updated slightly to note the new Amending
> Regulation in the EU concerning the definition of a trademark. We hope the
> glossary is helpful to everyone in distinguishing and/or defining many of
> the terms and usages around design/device/composite/figurative marks,
> collective and certification marks, GIs and appellations of origin, etc.
>
>
>
> You may also wish to note that WIPO maintains a searchable database of the
> IP laws of many countries, which you can specify the country of search as
> well as the type of IP right (e.g. copyright, GIs, industrial design,
> patents, trademarks etc.) for which you are seeking the applicable
> legislation or treaty: http://www.wipo.int/wipolex/en/.
>
>
>
> Thanks and cheers
>
> Mary
>
>
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