[gnso-rpm-wg] Updated table of TMCH proposals and glossary of terms
Kathy Kleiman
kathy at kathykleiman.com
Wed May 3 15:15:56 UTC 2017
Quick note, I did not choose the text, but worked off Mary's table...
On 5/3/2017 10:34 AM, Greg Shatan wrote:
> 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
> <mailto: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
> <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/ <http://www.wipo.int/wipolex/en/>.
>>
>> Thanks and cheers
>>
>> Mary
>>
>>
>>
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