Thursday, September 8, 2016

Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Marks

I've blogged about it many times before. Descriptive words and phrases are weak trademarks and cannot be registered with the U.S. Patent and Trademark Office, on the Principal Register at least, without acquiring distinctiveness (which isn't that easy). 15 U.S.C. 1052(e)(1); 15 U.S.C. 1052(f).

Descriptive terms do not typically serve as source indicators (aka trademarks) but rather describe the underlying goods or services (which, in theory, everybody should be allowed to do without risking infringement).
Consider the federal trademark application for COOLING MATTRESS PAD filed by a company in Pennsylvania on September 3rd. The company filed this application in Class 024 for "[b]ed sheets, fitted bed sheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources."

Is COOLING MATTRESS PAD merely descriptive of the underlying goods? Possibly. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. TMEP 1209.01(b).

Therefore, if the bed sheets, bed sheet covers, and/or pillow cases sold under the COOLING MATTRESS PAD mark have cooling features, this application will likely receive a refusal under Section 2(e)(1) of the Trademark Act for being merely descriptive of the underlying goods. Whether these goods actually have a cooling feature is unclear from the description, so the Examining Attorney who reviews this application will likely request additional information. TMEP 814.
In any event, the applicant will need to correct the specimen it submitted with the application. A specimen shows the manner in which the mark is seen by the public. TMEP 904. For goods, a good specimen typically shows the mark on the goods labels, tags, or commercial packaging. See TMEP 904.03.

The applicant, however, only submitted the text seen above. The Examining Attorney should give the applicant an opportunity to submit a substitute specimen, which must have been being used in commerce at least as early as the filing date.

If the Examining Attorney does refuse registration of this application for being merely descriptive (or any other reason), and the applicant cannot overcome the refusal, the applicant's $225 nonrefundable filing fee will be lost.

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