[Tmch-iag] Trademark Clearinghouse IAG - Issue N1

[Winterfeldt, Brian]

Dear Trademark Clearinghouse IAG,
The issue has been raised whether certain pictorial, design, or logo marks should be listed in the Clearinghouse with respect to their word elements.  I am of the opinion that to the extent that such pictorial marks contain terms in ASCII or Latin format (that do not have pictorial qualities such as Chinese) that these terms should not garner protection in the Clearinghouse.  As trademark practitioners know, it is easier to obtain registration in many jurisdictions for terms that would otherwise not be registrable due to their generic or descriptive qualities if they are combined with a distinctive design.  Accordingly, providing blanket protection for all terms that are included in pictorial marks would provide for over-inclusive protection of many terms.  I also believe that having the TMCH attempt to sort out which pictorial marks contain terms that are distinctive or non-distinctive is beyond the mandate of the TMCH.  Therefore, the TMCH should not accept pictorial marks with terms in ASCII or Latin format.
Thank you,
Brian
Brian J. Winterfeldt, Esq.
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036
TEL 202.429.6260 | FAX 202.261.7547
bwinterfeldt at steptoe.com<mailto:bwinterfeldt at steptoe.com>

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