“God of Thunder” meets the USPTO

Some of you may have heard that Gene Simmons (AKA “The Demon” AKA “Dr. Love” AKA “God of Thunder”), the bass guitarist for the band KISS, filed a trademark application to register the “horns” hand gesture on June 9, 2017. I’ve seen quite a few articles reporting on the application, but I’m not aware of any trademark attorneys that have weighed in on the registrability of the “sign of the horns.” I’ll give it a go.

My first thought is that the gesture is “generic” and therefore unregistrable. A mark is generic if “the relevant public would understand the term” to primarily “refer to that genus of goods or services”[1]. But how does this inquiry apply to gestures, as opposed to words or designs? I’m thinking that, where a gesture is so closely associated with a genus of services (like performance of rock music), as opposed to a brand or business (like a specific band), it’s not eligible for registration. Anyone who has been to a rock concert knows that the horns gesture is the universal symbol for approving of the performance in question.Sign of the horns

If the USPTO determines the mark to be generic or descriptive, Simmons would have to prove that the gesture has “acquired distinctiveness”, but I don’t think that argument will work here. Terms that wouldn’t ordinarily be registrable because they are descriptive or generic, may, “through usage by one producer with reference to his [or her] product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer.”[2] Let us know in the comments if you think an examiner would buy the argument that the consuming public only associates the “horns” gesture with KISS.

P.S.: Ashley pointed out to me that, if the gesture has a meaning in ASL, it could be relevant in the “genericness” analysis; however, it doesn’t look like the “sign of the horns” means anything in ASL. Additionally, it occurs to me that the applied-for mark may not be identical to the typical sign of the horns. If anyone has insight into the differences between the applied-for mark and the “sign of the horns” or the ASL significance of the “sign of the horns”, please jump in and let me know.

by Alex Hecker


[1] In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986).

[2]TMEP §1212; Nims, Unfair Competition and Trademarks at §37 (1947).

Limitations on Knock-Out Searches

Clients frequently ask me to perform a “knock-out” search to determine the availability of their desired trademark or trademarks. A knock-out search typically refers to a search that is conducted by an attorney and is limited to searching the USPTO website (and maybe some googling to find some common law uses). Clients like knock-out searches because they’re generally cheaper than using a third-party search service like CompuMark or Corsearch. That said, a knock-out search is not nearly as comprehensive as a search conducted by a third-party search service. Results of knock-out searches are also subject to the following notable limitations, among others:

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Who doesn’t love free-use stock photos? This one doesn’t even require attribution! Thanks anonymous kangaroo illustrator.

The databases relied-on for knockout searches are not always up to date. Entries in the databases relied-on for knockout searches are often delayed. This delay creates a risk that the searched-for trademark  may conflict with a filed application that did not show up in the USPTO database or supplemental databases at the time of the search.

Conflicts from meaning are difficult to anticipate. Marks that look different from one another may nonetheless conflict if they convey a similar commercial impression. For example, USPTO official guidance indicates that marks like “lupo” (which means “Wolf” when translated into English) and “wolf”, although appearing completely different, could conflict because they have identical meaning. Similarly, the words “City woman” and “city girl” could conflict because they convey a “similar general meaning and produce the same mental reaction.” Your average knock-out search won’t turn up these types of conflicts.

Conflicts from phonetic equivalency are usually outside the scope of a knock-out search. Marks that look different from one another may nonetheless be conflicting if they sound the same. For example, an application for “QUICKSTART” might be denied if the mark “KWIXTART” was previously registered. Knock-out searches usually rely on the exact letters that clients give us, so they won’t pick up on conflicts from phonetic equivalency.

Foreign priority applications could be an issue. Applicants of many foreign countries are permitted to file a corresponding United States trademark application within six months of their foreign filing date and receive as a priority date their date of foreign filing. These foreign-priority marks are outside the scope of a knock-out search.

Common law trademark uses and state registrations may limit scope. Trademarks need not be registered with the USPTO or listed anywhere for them to be enforceable at common law. Additionally, many states have their own registrations for marks used within those states. Although a bit of googling may help minimize the risk of unforeseen common law marks and marks registered with state agencies, it’s extremely difficult to eliminate the possibility of an unforeseen common law use of a mark by a third party.

Likelihood of Confusion is a subjective analysis. The question of whether one mark infringes on or dilutes another mark is a subjective analysis made by human beings, whether it be a trademark examiner or trier of fact in the course of litigation. Examiners reach their conclusions after weighing a number of factors, not all of which can be judged using the search methods that attorneys use in a knock-out search.

To sum up, a knock-out search can be a great tool for determining the availability of a trademark, but it’s subject to some risks. For more information, get in touch with me or Ashley.

By Alex Hecker

Frequently Asked Questions re: Trademarks

Do I have to file a trademark application to protect my trademark?

No. But if you can, it may be worth your while (check out Alex’s post on the Supplemental Register, which contains a brief discussion on the value of a federal trademark registration). Trademark rights can be established in the United States by commencing use of a trademark in commerce.

What does “use” mean?

For goods, use means the affixation of the mark on goods actually moving through commerce. A mark can be affixed in a number of ways, e.g. on product packaging, on an e-commerce webpage, or on a physical display associated with the goods.

Note that a sale of the goods isn’t necessarily required for “use” – what’s important is that the goods are moving through commerce. So, if you have a bunch of game players around the country beta testing your mobile game, that counts!

If a brand owner is providing services under a mark, “use” means the actual provision of those branded services (and not merely advertising them) in commerce.

Can I register my trademark with the United States Patent and Trademark Office?

Maybe. A brand owner who uses its trademark in more than one state (i.e. interstate commerce) may seek federal registration of its trademark. Federal registration confers many important benefits to the brand owner, including nationwide exclusive rights to the trademark.

A brand owner whose use of a trademark is limited to only one state cannot seek federal registration of a trademark. However, they can probably register the trademark with their home state’s Secretary of State office.

What if I really want to register my trademark with the USPTO, but don’t have interstate use yet?

Although you can’t register your trademark until it’s in use, you can still secure an early filing date with an “intent-to-use” application. The only requirement for filing an intent-to-use application is that you must  have a good faith belief that you will use your trademark in interstate commerce in less than 3 years. The USPTO will examine your application, but won’t issue a registration until you can demonstrate use. It may cost more to do it this way, but you’ll hold your place in line (more on this in another post).

What if I have more questions?

Check out our other posts, or drop us a line!

By Ashley Long

PS: We’ll continue to update this list as we get more questions from rabid fans of the IP HOTBOX, which has been referred to as the “Game of Thrones of IP Law blogs.” Note: no one has actually said that.

So, you received a “descriptiveness” refusal?

If you’re reading this, it’s probably because you received an Office Action from the USPTO on the grounds that the trademark you’re applying for is “descriptive.” Applicants whose marks have been refused on descriptiveness grounds have three options: (1) move the application to the Supplemental Register, (2) abandon the application, or (3) file a response to the office action.1lvvg6

Background

Trademarks that are “descriptive” aren’t eligible for registration on the Principal Register unless the applicant can demonstrate that the mark has become distinctive of the applicant’s goods in commerce. A trademark is “descriptive” if it “merely describes a feature, characteristic, purpose or function” of applicant’s goods or services.  Examples of marks that the USPTO has found to be descriptive include “APPLE PIE” used to identify potpourri and “BED & BREAKFAST REGISTRY” used to identify lodging reservations services.

Move the Application to the Supplemental Register.

Trademarks may be registered on the Principal Register or the Supplemental Register. The Principal Register grants the broadest protection to a trademark, because it creates a presumption that the mark is valid and in-use nationwide. However, marks that are “descriptive” can’t be registered on the Principal Register and are only eligible for registration on the Supplemental Register.

The main drawback of a registration on the Supplemental Register is it does not establish that the registrant has a proprietary interest in its mark. Basically, a registrant must first prove that consumers associate its goods with the registered mark in order to exclude third parties from using it.

Nonetheless, the Supplemental Register does still provide some protection. A registration on the Supplemental Register allows its holder to use the ® symbol in connection with the mark. This signifies that the mark is registered, and a lot of would-be third-party trademark users don’t realize the distinction between the Principal and the Supplemental Registers. Additionally, the USPTO will still refuse third-party applications to register marks that are confusingly similar to a mark registered on the Supplemental Register.

Perhaps the most common strategy for dealing with a “descriptiveness” refusal is registering a mark on the Supplemental Register and then “upgrading” to the Principal Register. As mentioned earlier, substantially exclusive and continuous use of a mark for five years is evidence that “the mark has become distinctive of the applicant’s goods in commerce” and is therefore eligible for registration on the Principal Register. Accordingly, an unopposed registration on the Supplemental Register for five years can be used as evidence that a mark as become distinctive and is therefore eligible to be on the Principal Register.

Abandon the Application.

An alternate solution to registration on the Supplemental Register is to simply abandon the application and wait five years to refile a full-fledged application for the Principal Register. Many applicants prefer this method because it allows them to fly under the radar with their use of the mark. Also, a registration on the Supplemental Register is tantamount to an admission that the registered mark is “descriptive” or otherwise doesn’t meet the requirements of the Principal Register. The drawback of abandoning the application is that the applicant will not be entitled to use the ® symbol.

Office Action Response.

An Office Action response is a set of legal arguments submitted to the USPTO asserting that a mark is eligible for registration. The biggest issue with filing an Office Action response is the costs associated with it. Office Action responses for descriptiveness refusals typically require a significant amount of research and drafting, and the legal fees can run in the thousands of dollars in connection with their preparation. Furthermore, responding to an Office Action does not guarantee registration of the applied-for mark. This is a usually only a good option only where there is a compelling need to have the mark registered as soon as possible.

By Alex Hecker