Trademark/Trade Dress Prosecution

• Author: David R. Gerk - John M. Fleming
• Pages: 201-252

P A R T 2

Trademark/Trade Dress

Prosecution

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It is a pretty recognizable brand name. Originally it was “Jerry’s

Guide to the World Wide Web,” but we settled on “Yahoo!”

—Jerry Yang (co-founder of Yahoo!®)

While the prosecution of trademark applications differs in many ways from

the prosecution of patent applications, there are also many similarities, or

at least synergies, with the prosecution of patent applications, particularly

with respect to some of the formalities and the handling of examination

and procedural matters. The similarities in some of the procedural opera-

tions and processing may not be overly surprising given that the same

bureau of the United States Government, the U.S. Patent and Trademark

Office (USPTO), is charged with the authority and responsibility to handle

these administrative agency matters. To avoid duplicate discussion that

may arise because of the similarities, some of the common procedural

handlings of the USPTO may be covered more completely in the Patent

Prosecution Section.1 Also, in many instances, the particulars about office

procedure may have distinct nuances, but the concepts and general han-

dling will be the same. Applicants and representatives should reference the

Trademark Manual of Examining Procedures (TMEP) (or the Manual of

Patent Examining Procedure (MPEP) in patent matters) as well as the

1. For example, the concept of a “Certificate Mailing” and its use and

effect is substantially similar in the spheres of trademark practice and patent

practice.

Part 2

202 Section 3, Part 2

relevant provisions of the United States Code and Code of Federal Regula-

tions when practicing before the USPTO. While there might be an almost

infinite number of factual circumstances and considerations that trademark

applicants could encounter or consider during the procurement process,

this section will provide insight on many of the more regularly encoun-

tered matters relating to trademark prosecution.

I. COMMON-LAW RIGHTS

Trademark protection is purported to date back to at least as early as the

1790s, when Thomas Jefferson sought to protect marks of sailcloth mak-

ers. Much later, Congress made its first attempt at establishing a federal

regime to protect trademarks that was an extension of the copyright pow-

ers under the Constitution, but it was struck down. Later Congress fi-

nally enacted trademark laws under the Commerce Clause (Article I, §8,

cl. 3) rather than under Article I, §8, cl. 8, which provides for the patent

and copyright systems. In 1946, Congress passed the Lanham Act, our

current basis for federal trademark. The Lanham Act2 sets forth provi-

sions for federal protection and registration for trademarks and grants

administrative authority to the U.S. Patent and Trademark Office. Be-

cause trademarks are derived from a provision of the Constitution dis-

tinct from patents and copyrights, state trademark law continues to operate

and provide its own protections complementary to that of the federal

trademark system.

Trademark rights are tied to commercial use of a mark or marks.

Accordingly, trademark rights can be acquired for certain goods or ser-

vices where the mark or service is commercially used. This commercial

use may be embodied in any of a variety of commercial uses. In the

United States, an entity or individual acquires “common law” trademark

rights, without filing an application or any other request with the federal

government, through its commercial use of the mark in relation to goods

or services. As will be discussed later, entities may also acquire federal

rights throughout the entire United States by applying for and receiving

a federal registration from the USPTO.

At common law, the extent of the rights associated with that mark

may vary from mark to mark and will relate to how pervasive the use of

the mark may be. An entity that is only commercially using a mark in

one or a handful of states, or even just a portion of a state, may only have

2. 15 U.S.C. §§1051–1127.

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Trademark/Trade Dress Prosecution

trademark rights for those categories of goods or services in that single

state, handful of states, or portion of the states. These common-law rights

also will be tied only to certain types of goods or services and like goods

or services. It is not difficult to imagine scenarios in which several enti-

ties use the same or similar marks or related or similar goods in various

geographic regions.3 These entities can theoretically own the same or

similar marks or similar goods in various distinct regions across the country.

However, it is extremely likely in today’s global economy tha t successful

marks will grow and expand geographically and with respect to product

and service coverage. A conflict will then necessarily arise between simi-

lar or like marks even if they began in geographically disparate and

separate areas of the United States. However, federal registration pro-

vides trademark rights and coverage throughout the United States, and it

is generally preferable to relying on common-law trademark rights.

II. FEDERAL REGISTRATION OF TRADEMARK

A. Benefits

Like other forms of intellectual property, registration provides for a give-

and-take in which the applicant will provide information to the public

through the USPTO in exchange for certain rights or benefits. As such,

trademark owners are enticed to register their marks with the USPTO,

and in exchange they receive various benefits, including the following:

1. Nationwide priority—By registering its mark, a trademark owner

receives nationwide rights. This complete coverage often exceeds

the coverage area it would otherwise receive under common-law

rights. As such, registration of marks is often recommended to

3. The mark “Burger King” provides an example of just such a scenario.

The current well-known Burger King fast-food restaurant (a Florida company)

was not the first to commercially use the mark Burger King and not even the

first in relation to hamburgers. Instead, as the story goes, a small ice cream and

burger stand in Mattoon, Illinois, owned by the Hootses was senior in use to

the now large and well-known Florida Burger King fast-food restaurant. How-

ever, the later Florida Burger King federally registered its mark. As a result of

litigation under the Lanham Act, it was found that the as a result of federal

registration, the later Florida Burger King owned rights to the “Burger King”

trademark throughout the United States except for the market area of the

Mattoon Burger King—a 20-mile radius around the restaurant in Mattoon,

Illinois. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir.).