Monday, September 10, 2007

Why having an attorney file you trademark application may be worthwhile.

As a regular feature, I will try to bring to you examples of bad trademark applications. Reviewing bad applications is an excellent way to understand successful trademark prosecution.

Today’s bad application is S/N 77/270,897 filed on September 4, 2007, for the mark SNACK MACHINE (standard character mark). The application is a Principal Register Section 1(b) intent-to-use application and the goods and services the mark seeks to cover is “Snack Machine.” Anybody see a problem with this?

Trademark 101 Lesson of the Day: A trademark can be refused registration where the proposed mark merely describes a characteristic, function, feature, purpose or use of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). A mark is merely descriptive under Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); see also TMEP §1209.01(b).

As an intent-to-use application, the mark cannot be applied for registration on the supplement register. Even if it could, given that the mark is a generic name for the applicant's goods, registration on the Supplemental Register will also be refused under §23 of the Trademark Act, 15 U.S.C. §1091. Furthermore, it is doubtful that the applicant can claim that the mark has acquired distinctiveness under 15 U.S.C. §1052(f) (given its generic nature). Looks like the applicant is out the $325 filing fee.