USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Primarily Geographically Descriptive The PTO can refuse an application because the mark is primarily descriptive of the geographic location from which the goods or services originate. The PTO can also refuse an application if it is deceptively misde - scriptive of the geographic origin of the associated goods or services. – The applicant can respond similarly to the descrip - tiveness refusal. Merely a Surname The PTO can refuse registration if the mark is primarily merely a surname. – The applicant can argue that consumers do not understand the mark primarily as a surname or that it has acquired distinctiveness. Lack of Permission of Individual Whose Name Used The PTO can refuse registration if the applicant does not show that it has permission to use the name of a living person. – The applicant can respond by providing signed con - sent. Specimen Fails to Show Use of Mark The PTO can refuse registration if the specimen does not show use of the mark as a mark. For example, the specimen is a mere advertisement for goods, fails to show context as to what the goods are or shows that your goods have not yet been sold or transported (eg, pre-sale orders for goods not yet available). – The applicant can file arguments against this refusal or file a substitute specimen showing use at the time of the filing of the original specimen. Mark on Specimen Does Not Match the Drawing and/or Mark as Filed The PTO can refuse registration if the specimen does not match the drawing of the mark. – The applicant can file a new drawing that is not a material alteration or file substitute specimens show -
ing use at the time of the filing of the original speci - men. Goods and Services Description is Indefinite The PTO can refuse registration if the description of the goods or services is vague, unclear or otherwise indefinite. – The applicant can overcome this refusal by amend - ing the description so it is clear and specific. The Design is Functional In a trade dress product design setting, the PTO can refuse registration if the design is functional. – The applicant can file arguments that the design does not have a function. 4.11 The Madrid System The US participates in the Madrid System. An appli - cant through the Madrid Protocol does not need to show use before the mark registers; however, it must certify it has a bona fide intent to use. After the initial registration, however, US use require - ments apply. The owner of a US registration is required to file a Declaration of Use before the sixth anniversary of registration and to renew the registration showing use every ten years. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Trade mark oppositions and cancellations are filed with the Trademark Trial and Appeal Board (TTAB), which is part of the PTO; except that a defendant in an infringement suit may seek to cancel a registration asserted against them as a counterclaim in court. Trade mark oppositions (or extensions of time to oppose) can be filed during the 30-day publication period. Up to a 90-day extension is available for good cause. Another extension of 60 days can be obtained with consent of the applicant.
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