Continuing our discussion — from yesterday and the day before — about the description of a mark provided to the USPTO during the registration process, the below images from two unrelated federally-registered, non-verbal logos for banking services, help tell another related story:
As the links on the USPTO images reveal, the one on the left is associated with Lloyds Bank, based in London, and the one on the right is associated with First Security Bank of Missoula, based in Missoula, Montana.
Despite the fact that both horse images show raised front legs and a head turned backward (and even putting color aside), the commercial impressions of these two non-verbal logos appear to me to be quite different. So, let’s compare the descriptions of each mark approved by the USPTO, but first let’s refresh our understanding of what the USPTO requires for descriptions of marks.
The USPTO generally requires that the description of the mark be clear, accurate, and concise. It also provides through TMEP 808.02 that the “description should describe all significant aspects of the mark” and “[i]nsignificant features need not be included in a description.” In addition, “[w]hen a mark includes a large number of elements, they are not all necessarily significant. For example, background design elements can sometimes be considered insignificant if they do not change the overall commercial impression of the mark.”
But, “because of the requirement to describe where colors appear in the mark, marks that include color will generally have a more detailed description.”
With that background in mind, perhaps it is not surprising that the word count for Lloyds Bank’s horse logo is only eight words (“the mark consists of image of a horse”) while the First Security Bank of Missoula’s colored horse logo includes a whopping 136 words:
“The mark consists of a trotting horse depicted in bold brush strokes with the horse’s head turned to the viewer’s left. The horse’s head appears to be painted in blue with yellow, orange, and red highlights. The horse’s neck and front appears to be painted in blue with pink, purple, and yellow highlights. The horse’s front two legs appear to be painted in yellow, blue, pink, purple, orange, and red. The back of the horse, including the tail and the two hind legs, appears to be painted in yellow with orange and red highlights. Grass appears below the horse, which appears to be painted in green and blue. The horse is not painted in completely, and there are areas in the horse that are transparent where the background appears. The background of the mark is transparent.”
Here is where it might be beneficial to obtain not only a registration that claims color, but one that is not limited by color too, as the word count drops, and the scope of rights likely increases. I’m thinking it would have been possible to obtain the following description, keeping the USPTO’s guidance of the description being clear, accurate and concise (in an application not claiming color as part of the mark): “The mark consists of a horse depicted in bold brush strokes.”
Given the inherent subjectivity in application of these principles, how broad or narrow a description that the brand owner is able to obtain from the USPTO may depend on the assigned Examining Attorney, but counsel should keep in mind the “description of the mark” section of an application as an important element of the brand owner’s overall trademark portfolio strategy.
Short and sweet descriptions should support broader rights, but more detailed descriptions might be beneficial or even necessary to avoid getting hung up on broader prior registrations.
With that in mind, any trademark types out there ever file a petition for partial cancellation to narrow an overbroad description of the mark to make room for a newcomer’s application?
In particular, I’m left wondering, might it be possible to compel a narrower Lloyds Bank mark description, perhaps requiring more description about the position, pose, and activity of the horse?
As you may recall, we’ve written before about rearing and prancing horse non-verbal logos (recall this gem: Striking The Pose of Differentiation? from the deep, dark archives?), so I’m left assuming, given an appropriate set of facts, it could be a viable option in overcoming a likelihood of confusion refusal, any thoughts or insights to share?
Finally, let’s not forget the USPTO’s further instruction that “the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission.”
Going back to my related post from yesterday, was Pepsi’s description misleading?