Section 2(d) of the Lanham Act

Two months ago, our attention seized on a nutty and woefully deficient USPTO examination of a trademark application to register — Mr. Wonderful — for roasted nuts, and nut-based snack foods, among other food products, given the prior WONDERFUL trademark rights owned by these folks:

Just like clockwork, events now appear to be playing out as expected, so keep your eyes peeled and your watches synchronized. Last Friday, The Wonderful Company LLC, filed an extension of time to oppose registration, so the new deadline for opposition is September 8, 2018.

We’ll likely soon see whether a Letter of Protest was filed behind the scenes, giving the USPTO a chance to correct this mistake and issue a likelihood of confusion refusal —  as it’s hard to imagine the Examining Attorney’s failure to issue a refusal won’t be considered clear error, so stay tuned.

Wonderful likely has made contact with Mr. Wonderful by now — my question would be, how hard will Mr. Wonderful play to salvage the other food items currently in the identification of goods?

What do you think, are these goods sufficiently related to roasted nuts to become toast, as well?

Jellies and jams; Banana chips; Dried fruit-based snacks; Fruit preserved in alcohol; Nut butters; Olive oil for food; Potato chips; and Yogurts.

Suspended high above Chelsea Market in New York City are these eye-catching ads for OWYN:

That’s a new brand for me, I’m unsure how to pronounce it (Own, Owen or Oh Win), but OWYN apparently stands for Only What You Need — for dietary supplement protein products that “use nutritious, plant-based ingredients and leave out inflammatory animal products and allergens.”

Meanwhile, another kind of suspension has occured deep within the bowels of the USPTO, where the OWYN federal trademark application is presently suspended, because of a prior-filed pending intent-to-use application for EWYN, covering overlapping goods, including dietary supplements.

Fortunately for OWYN, it had filed an even earlier intent-to-use application for the spelled-out mark OWYN ONLY WHAT YOU NEED, beating the EWYN filing date by six months, giving OWYN the ability/leverage to file a Notice of Opposition against registration of the blocking EWYN application.

Actually though, had the OWYN application been filed when the earlier OWYN ONLY WHAT YOU NEED application was, the suspension and ITU log jam at the USPTO could have been avoided.

As it stands now, the OWYN application is suspended pending the outcome of the prior-filed EWYN application, which in turn is suspended pending the outcome of the opposition against it, which is suspended while the parties attempt to settle the conflict and discuss likelihood of confusion.

In the Opposition, OWYN contends there is likelihood of confusion between EWYN and OWYN ONLY WHAT YOU NEED, which is a bit dangerous to allege. If it loses that argument, it won’t be able to knock out the blocking EWYN application, making it difficult to then convincingly say there is no likelihood of confusion between the more similar OWYN and EWYN marks, for the same goods.

Working backwards, and as a practical matter, unless the parties are able to reach an agreement as to peaceful coexistence, the OWYN application likely will remain suspended unless and until the prior-filed EWYN application is knocked out of the way or otherwise abandoned.

This train of suspensions is a good reminder to file all pertinent intent-to-use applications sooner than later, once a bona fide intention exists to make commercial use of the mark in commerce.

It also illustrates how important intent-to-use application filing dates can be in determining priority, especially when there is a long period of time that elapses before actual use is made.

On a lighter and less technical note, and for any Lord of the Rings fans out there, do any of the marks in this discussion remind you of EOWYN (pronounced A-O-WIN)?

How, if at all, might you rely on the existence of EOWYN to argue either side of the likelihood of confusion argument between EWYN and OWYN?

SteepTea

The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.

What initially captured my interest is the large yet engaging lower case branding of the word “steep” followed by the diminutive signature line “by BIGELOW” in all caps.

Given the descriptive character of the visually-emphasized word “steep” in connection with tea, and the “by” signature line of the well-known BIGELOW tea brand, my instincts told me a USPTO search would reveal a crowded field of marks containing STEEP, likely fueling my assumption that “steep” couldn’t be owned as a trademark for tea standing alone.

Turns out, STEEP was federally-registered back in 2004, for tea (as a single word mark with no style limitations), pursuant to an apparent showing of acquired distinctiveness under Section 2(f) of the Lanham Act, but the registration expired in 2010 and was cancelled under Section 8 of the Lanham Act in 2010, making way for the crowded field I imagined.

It also turns out, there is more to the story than I have time today to turn over every tea leaf of this one: The apparent principal behind the expired registration is back at the USPTO with a new STEEP application, claiming continuous use of STEEP for tea since 1994.

The irony is that the STEEP BY BIGELOW registration (first use in 2015) is now barring registration of the new STEEP application, here is the recent likelihood of confusion refusal.

So, I’ll leave you with a few questions that come to mind.

First, what’s the next move for the STEEP applicant?

And, looking back in time, did Bigelow add the signature line underneath the prominent use of “steep” to facilitate registration of STEEP BY BIGELOW and perhaps reduce the perceived risk of a trademark conflict with the prior registrant of STEEP for tea?

If so, will Bigelow regret not volunteering a disclaimer of the descriptive word “steep” since the USPTO oddly didn’t ask for one?

Assuming there are prior common law rights in STEEP and Bigelow wants to explain the lack of a disclaimer, might it point to the unitary mark theory?

Better yet, will the ineffective opposition (filed by the apparent principal of the prior registrant of STEEP) bar a future petition to cancel STEEP BY BIGELOW (to clear the path for re-registration of STEEP standing alone)?

If there are, in fact, prior common law rights in STEEP and the principal behind the STEEP application finds a way to federal court, has Bigelow relinquished a classic fair use defense in making “steep” part of its trademark use?

Finally, if risk avoidance is the goal (hoping for a steep slide into neutralizing a likelihood of confusion claim), might it be more effective to play with the meaning of the marks element of a likelihood of confusion claim, perhaps by adding graphic elements that invite other meanings of “steep” as compared to the more obvious one for tea?

Yesterday we wrote about how petitions for partial cancellation under Section 18 of the Lanham Act can be creative and powerful tools when an applicant is confronted with likelihood of confusion registration refusals under Section 2(d), based on over-broad federal registrations.

Today, we’re speaking about this important tool that should be found in any trademark practitioner’s tool box, and in case you’re not able to attend, here is a table I put together that helps me consider which tool works in which context:

TTAB Proceedings ChartWhat do you think? Is it helpful in organizing your thoughts about the strategic use of TTAB proceedings to assist in overcoming likelihood of confusion refusals, or does it bring back bad memories of Jeopardy?

I’ll take Section 18 Restrictions for the Daily Double, how about you?

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in the context of inter partes cases between adversaries.

When an applicant seeking to register its mark is refused registration based on Section 2(d), it is not uncommon for applicant’s counsel to immediately argue for coexistence, explaining all the reasons why no likelihood of confusion exists, and sometimes that strategy will work.

My preference is to pause after receiving the refusal, to assess the strength of the refusal, to examine the cited mark and registration or application, to consider the relative priority positions, and determine the real necessity for and consequences of arguing no likelihood of confusion.

For example, if it could be determined that the cited registration is actually “deadwood,” the mark no longer in use and abandoned, wouldn’t it be better to hit the pause button on the refusal while the deadwood registration is removed through the filing of a petition to cancel?

Using this approach could prevent the narrowing of applicant’s trademark rights and protect the applicant from taking public positions that could be used against it by adversaries in a future enforcement matter. This strategy is frequently used by sophisticated trademark counsel.

What if the cited prior registration is not “deadwood” though, and the applicant actually has priority of use — if so, and the cited registration is not yet five years old, then it’s fair to ask why arguing for coexistence makes any sense at all, at least as an opening strategy.

Many experienced trademark attorneys with those facts would recognize the leverage given by the refusal and, at a minimum, reach out to counsel for the owner of the cited mark to discuss the multitude of options available to applicant as the senior user of the mark in question.

A tool infrequently used by trademark counsel is the option of a petition for partial cancellation, by invoking the remedy found in Section 18 of the Trademark Act. This can be a powerful tool when an applicant lacks priority and/or the cited registration is more than 5 years old.

Under Section 18, the TTAB may modify or partially cancel a cited registration by limiting and narrowing the specified goods or services. This can be a particularly powerful tool, when an applicant’s options are otherwise quite limited, without priority, or if facing an old registration.

To properly employ this tool, applicant’s counsel must plead and prove that the proposed narrowing in the cited registration would avoid a likelihood of confusion, and that the proposed narrowing of the goods/services description is consistent with the actual marketplace usage.

Think of it as a way to narrow a blocking registration enough to allow for coexistence of applicant’s mark on the Principal Register — it is a way to cure the problem of an over-broad registration, making room for your client’s pending application, if the facts support coexistence.

Even if an applicant may not have the appetite for seeing a Section 18 petition for partial cancellation through to conclusion, it can be a powerful attention-getting device that may level the playing field and spur a dialogue between the parties to explore the possibility of consent.

On a related note, in the context of possible strategies ripe for an applicant whose mark has been opposed by a registration owner having an over-broad description of goods/services, you may recall that we wondered out loud whether Section 18 might become a creative solution:

“I’m looking more forward to hearing about what in-house, corporate trademark counsel think about the decision and how it will influence their trademark enforcement strategies. . . .

But, in the meantime, what no one seems to be talking about (yet) is how the Supreme Court’s B&B Hardware decision might impact the lingering concerns surrounding trademark bullying. (I haven’t seen anyone talking about Section 18 counterclaims as a creative response strategy either, but we’ll save that topic for another day).

Although trademark bullying concerns were not before the Supreme Court, it seems likely this decision scored a victory for those who might fall into the category of trademark bullies. And, as you may recall, a couple of years ago, the Supreme Court didn’t allow trademark bullying concerns to influence its interpretation of the laws in question there: Supreme Court Upholds Nike’s Promise to “Break the Wrist, and Walk Away”.”

To the extent you’re in the Twin Cities or can get here fast, we’ll explore this topic more in tomorrow’s continuing legal education program called “Mastering U.S. Trademark Registration Practice,” during my session at 2:35 PM session entitled: “Strategic Use of Trademark Trial and Appeal Board Proceedings to Advance Trademark Registration Goals.

We hope to see you there, for details on registration, here is the link to the Minnesota Continuing Legal Education site. If you can’t make it tomorrow, the video replay of tomorrow’s live session is Monday March 7, 2016.

Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm.

If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of us who care deeply about the enforcement and protection of brands and trademarks could be facing a real paradigm shift.

Contrary to what Intellectual Property Brief has reported, the U.S. Supreme Court has not yet decided to review the Eighth Circuit Court of Appeals decision in B &B Hardware, Inc. v. Hargis Industries, Inc. Instead, back in January, it invited the SG to express the views of the United States on whether it should hear the case. Those views were filed and expressed in the form of an amicus brief on May 23, 2014.

The SG’s amicus brief encourages the Supreme Court to review the case, and it seems likely the Court will do so. If so, let’s hope the Court is flooded with thoughtful amicus briefs to help it get this important issue right. At a minimum, INTA should weigh in as a friend of the court.

SCOTUSblog identifies the two issues to be:

“(1) Whether the Trademark Trial and Appeal Board’s finding of a likelihood of confusion precludes respondent from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the Board’s finding of a likelihood of confusion absent strong evidence to rebut it.”

Basically, the Court is being asked to decide the impact (if any), of a prior win or loss (on the issue of likelihood of confusion) at the TTAB, on a later federal district court trademark infringement case involving the same marks and parties.

Unfortunately, in addressing the substance of the issues, the SG’s amicus brief borrows liberally from the dissenting judge’s perspective in the Eighth Circuit decision, such that likelihood of confusion decided by the TTAB to determine registrability apparently is believed to be the same issue as likelihood of confusion decided by a federal court for purposes of infringement. They aren’t and they shouldn’t be, for reasons I’ll elaborate on in my next post on this topic.

In the meantime, it seems to me, both the SG and dissenting Judge Colloton fail to appreciate the very limited jurisdiction of the TTAB. For those of us who regularly practice before the TTAB, we know that the TTAB is not shy about reminding parties before it of this limited jurisdiction and that cases before the TTAB should not be litigated as if more is at issue than simply the right to register a trademark.

The TTAB’s Manual of Procedure sets forth this very limited jurisdiction quite clearly in TBMP Section 102.01:

“The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office. The Board is empowered to determine only the right to register. The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. Similarly, the Board, being an administrative tribunal, has no authority to declare any portion of the Act of 1946, or any other act of Congress, unconstitutional.”

Indeed, back in 2007 when the TTAB introduced the new rules of practice, it reinforced the above, making very clear:

“Initial disclosure obligations should be easier to meet in Board cases than in civil actions. One reason is that the Board’s jurisdiction is limited to determining the right of a party to obtain, or retain, a registration. Moreover, the extent of available claims and defenses that may be advanced is not nearly as broad as in the district courts. In addition, the Board recognizes the impact of other issues relatively unique to Board proceedings. For example, a high percentage of applications involved in oppositions are not based on use of the applied-for mark in commerce but, rather, on intent to use, on a foreign registration or on an international registration. Further, certain precepts that govern analysis of issues raised by claims or defenses in typical Board cases effectively limit the Board’s focus. For example, in a [likelihood of confusion] case under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), the Board focuses only on goods or services recited in identifications, and on the mark as registered or applied-for, irrespective of many actual marketplace issues.”

Baby trademark lawyers have been taught for decades that the right to register a trademark is separate and distinct from the right to use a trademark. Every day we clear marks for brand owners understanding the critical difference between these important rights.

It is not uncommon for a brand owner to be refused registration of a trademark based on another’s prior registration for a similar mark, but that doesn’t necessarily mean the brand owner’s use of the mark is infringing, or that it should be enjoined, or that monetary awards are appropriate for the continued use of the mark.

More on this to follow, but for the purposes of today, I’m not convinced that the TTAB’s likelihood of confusion decision about registrability ever should preclude a federal district court from deciding for itself the question of likely confusion for infringement purposes.

How do you come down on this issue?

Fame tends to attract attention, and imitation, especially unwanted imitation from, well, even pests. The Google trademark appears to have obtained such a high degree of fame that no third party can include the word “Google” in its mark without having a problem, regardless of what the third party happens to be selling. Ron, can you say, right in gross?

A couple of weeks ago, the USPTO refused registration of GOOGLE UNIVERSITY for college consulting services and in doing so, it not only relied on likelihood of confusion under Section 2(d) of the Lanham Act, as a substantive basis for refusal, but it also relied on Section 2(a) of the Lanham and the false connection prohibition (a clever way to avoid the fact that Examining Attorneys at the USPTO cannot rely on dilution of a famous mark under Section 43(c) for ex parte registration refusals):

“Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Google, Inc.  Although Google is not connected with the services provided by applicant under the applied-for mark, Google is so famous that consumers would presume a connection (please note the attachment from About.com, which refers to Google as one of the top 5 most popular websites in  the world).”

Indeed, the only third party marks — arguably containing the Google mark — that have achieved federal registration are those consisting of or comprising the plural form of the word (apparently creating a distinct commercial impression from GOOGLE): GOOGLES for pet toys, children’s books, plush toys, fireworks, conducting theme parties, cookies, and protective eye and face shields for dental offices. OK, there is one exception, but it’s understandable: Barney Google and Snuffy Smith for a cartoon series.

Yet — given the appearance of the above depicted Bugaboo Pest Control logo that clearly refrains from using the word “Google” — in copying the distinctive and widely recognized lettering style and colors of the Google logo, one might ask a related “right in gross” question, namely: Is the non-verbal visual impression of the Google logo so well-known and famous, that it may not be replicated by others, regardless of the words infiltrating this particular appearance and style.

Perhaps something can be learned from the breadth and wide scope of protection afforded the famous Coca-Cola script trademark against another’s poster depicting the words “Enjoy Cocaine” using the same color and distinctive lettering style, where the court noted in 1972:

“One would have to be a visitor from another planet not to recognize immediately the familiar ‘Cola’ in its stylized script and accompanying words, color and design.”

And, to that point, what sort of planet might house living organisms unfamiliar with colors and style of the Google logo, and what sort of pesticide might Google be tempted to unleash on this most recent trademark bugaboo?

The question for the day is not, why did the chicken cross the road, but rather, why did the chicken file an ex parte Letter of Protest with the Office of the Deputy Commissioner for Trademark Examination Policy at the United States Patent and Trademark Office (USPTO), just a few months ago?

To get to the other side of the USPTO?  To avoid an inter partes, direct and face-to-face trademark opposition with its adversary? Because we’re talking about a chicken after all, right?

Or, perhaps no cowardice or clandestine motives at all, but instead, to conserve resources by letting the USPTO do its bidding? Or maybe, better yet, to avoid fanning the flames of negative trademark enforcement publicity? Or, how about, because it can? Other possibilities?

As you may recall, back in November of last year, we covered the trademark bullying allegations against Chick-fil-A — asserting its “Eat Mor Chikin” tagline and trademarks against Vermont resident Robert “Bo” Muller-Moore’s “Eat More Kale” tagline and trademark. So did Techdirt, Brandgeek, and IPBiz, among others, none feeling any love for Chick-fil-A’s apparent concerns.

Then, a week later, the New York Times covered the dispute too, confirming the wild chicken legs of this story. So, why hasn’t anyone yet mentioned in all this coverage, Jerry Jeff Walker’s “Taking it As it Comes” recording in 1984, with the playful “Eat More Possum, God Bless John Wayne” chorus, apparently quite popular, at least in certain circles, more than a decade prior to Chick-fil-A’s earliest claimed first use date for “Eat Mor Chikin” in 1995? Hat tip to our good friend Doug Farrow for this clever observation.

In any event, lately, I’ve been wondering about the status of the “Eat More Kale” dispute, wondering whether a law suit has been filed (none that I’ve seen, to date), whether the USPTO has refused registration of Muller-Moore’s “Eat More Kale” trademark application based on Chick-fil-A’s “Eat Mor Chikin” rights, and if not, whether a trademark opposition has been filed.

So, in preparation for an upcoming March 6th Strafford Publications webinar on the ever-popular Trademark Bullying topic, I took a quick look at the status of the “Eat More Kale” trademark application, and honestly, I was not very surprised to find that the assigned USPTO Examining Attorney found no basis for refusing registration of “Eat More Kale” on likelihood of confusion grounds, writing December 18, 2011:

“The Office records have been searched and there are no similar registered or pending marks that would bar registration  under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.”

In fact, Mintz Levin’s Copyright & Trademark Matters blog also noted this development in an update on December 18, 2011.

What is much more interesting from the present state of the file history– and far less common — is correspondence from the Office of the Deputy Commissioner for Trademark Examination Policy, dated four days later, on December 22, 2011, granting an ex parte Letter of Protest with these instructions to the assigned USPTO Examining Attorney:

“A Letter of Protest filed before publication has been granted. It has been determined that the evidence submitted by the protester is relevant and may support a reasonable ground for refusal appropriate in ex parte examination. Therefore, you must consider the following and make an independent determination whether to issue a requirement or refusal based on the objections raised in the Letter of Protest.”

Then the correspondence goes on to identify three prior registrations brought to the USPTO’s attention by the un-named protester: U.S. Reg. Nos. 2,062,809, 2,197,973, 2,538,050.

Hmmm, I wonder who the mysterious un-named stealth protester is, since the three registrations are for the “Eat Mor Chikin” marks owned by Chick-fil-A?

Of course, we could request a copy of the Letter of Protest and supporting evidence from the USPTO, using a Freedom of Information Act (FOIA) request, to be sure, but I’m thinking I’ll save the stamp. Indeed, I’d be shocked if Chick-fil-A were not behind the Letter of Protest submission and stealth strategy.

Actually, this is a pretty smart strategy, given the particular facts and circumstances of this dispute — if it works, and a likelihood of confusion refusal is made by the USPTO and sustained, it would obviate the need for a formal and very public opposition with Mr. Muller-Moore and his moral and financial supporters.

Of course, hind sight is always twenty-twenty, and here, if the registration refusal is made, I suspect Chick-fil-A will wish it had quietly filed the Letter of Protest before sending Mr. Muller-Moore the cease and desist letter. I also suspect the media attention on this one might have been more favorable to Chick-fil-A had the USPTO issued a refusal by the time it sent a cease and desist letter, even if it were discovered later that the refusal was prompted by a Chick-fil-A stealth filing.

So, stay tuned to learn how the assigned Examining Attorney exercises his “independent” judgment on this one, and whether he actually refuses registration of “Eat More Kale” based on Section 2(d) of the Lanham Act and Chick-fil-A’s “Eat Mor Chikin” registrations. What are your predictions?

We’ve spilled a lot of digital ink discussing the trademark bullying topic, going all the way back to my original blog post from 2010: “The Mark of a Real Trademark Bully.”

Within the last several days, there has been quite a bit of online media coverage about Trademarkia’s new features that tout an ability to “Find a Trademark Bully” or rank the “Biggest Bullies“.

Maybe I’m missing something, but it appears that the only investigative skill required to apply the label is one’s ability to count the total number of oppositions filed by a trademark owner.

So, nevermind the size of a trademark owner’s portfolio, nevermind the strength or possible fame of the trademarks within a trademark owner’s portfolio, nevermind the number of conflicting applications filed by third parties who don’t search or aren’t well-advised about likely conflicts, nevermind the reasonableness of the trademark owner in working to resolve and settle those concerns, nevermind the trademark owner’s appropriate litigation conduct during the opposition proceeding, and perhaps most importantly, nevermind a qualitative analysis of the actual facts and claims asserted by the trademark owner — ignoring all this, we’re led to believe that if a brand owner files a lot of trademark oppositions, it automatically earns the pejorative label “Biggest Bullies”.

If all it takes to make Trademarkia’s Top Ten Biggest Trademark Bullies Listing is filing more trademark oppositions than anyone else, does it really have any value for the stated purpose?

The last time I checked, every week of every year the USPTO issues scores and scores of Section 2(d) refusals (based on a perceived likelihood of confusion) (hat tip to Towergate Software) — refusals that are eventually withdrawn and resolved through the USPTO’s consideration of apparently valid argument, evidence, and/or amendment (or a combination of these).

Does that make the USPTO a surrogate trademark bully because it issues a lot of registration refusals and throws up a lot of registration road blocks based on likelihood of confusion, especially since many of the refusals end up being withdrawn upon further consideration, after hearing only one side of the argument — the Applicant’s side (and without any required notification of the trademark owner whose registrations were cited)?

When those initial USPTO refusals are withdrawn based on a one-sided limited record, is there no surprise that oppositions will be filed? Is there no surprise that oppositions will be filed when the USPTO doesn’t see a valid conflict for whatever reason? That’s why serious trademark owners watch their marks — the process doesn’t purport to be perfect. Afterall, the purpose of an opposition is to provide a second backstop before registration, so that the USPTO can consider both sides, on a more complete record, making it an essential part of keeping the federal trademark register intact.

From my perspective, boiling the question down to a numbers game might gain headlines, spark some drama, fan the flame, generate more web traffic, but it doesn’t add to the conversation.

In the end, I’m left wondering whether Trademarkia has purchased insurance coverage for “advertising injury” claims, and I’m also left wondering how long it will take for a brand owner on the infamous list to take issue with the labels as false and/or misleading.

What do you think about the labels Trademarkia is applying to brand owners?

A few bits of trademark advice recently passed across my screen from The Marketing Blog: Turning Entrepreneurs Into Marketers — advice that I believe deserves some friendly comment and critique, leaving you to decide whether any of it rises to the level of brilliant trademark advice or sinks to the level of trademark baloney:

“Trademark as you go. Don’t wait until you have a bunch of stuff to trademark before you decide to move on it.”

“By seeking to protect something with a trademark, you’re also taking on some obligations. One of which is an obligation to police the market for competing trademarks that might be problematic.”

“A trademark doesn’t act as a shield as much as a sword. It doesn’t actively protect you against much of anything.”

1. Keeping “Trademark” Terminology Straight: From each of these excerpts, what becomes apparent, at first, is the need to make sure the use of  the term “trademark” is clear to the reader. From the context of the entire blog post, it appears the author is using the term as a verb to reference the act of seeking federal registration and also as a noun to reference the hopeful business asset resulting from that process, namely, a federal trademark registration.

For more on the various meanings of the term “trademark” to keep clear in your communications, feel free to refresh your memory by reviewing these prior posts:

2. The Timing of Seeking Trademark Registration: The “trademark as you go” comment seems to mean, register your trademarks as you go, as you create them, and that direction is hard to argue with given the geographic limitations of common law unregistered trademark rights. Indeed, the cost of waiting to register until after commencing use can be quite high in some cases.

Of course, the best time to file for and seek registration is immediately after the necessary due diligence has been done to clear the proposed mark for actual commercial use in the marketplace (for reasons we have already discussed).

3. The “Obligation to Police” Trademarks: To the extent the the author is suggesting that unregistered common law trademarks are free of any “obligation” to enforce and the mere act of registration creates such an “obligation,” the suggestion is incorrect. Without an appropriate level of policing and enforcement trademark rights will shrink over time, whether or not the mark in question is federally registered.

And, as to the “obligation” comment, in general, savvy Duets Blog readers already know that the referenced “obligation to police” is overblown. Indeed, it is more helpful and accurate to think in terms of consequences of failing to act, not in terms of breached obligations or duties.

4. The Trademark Registration as a Sword and a Shield: To conclude that a trademark registration “doesn’t actively protect you against much of anything,” ignores a significant benefit of registration, namely, nationwide constructive use, which can serve as an amazing shield in fending off challenges to a trademark owners growing and expanded geographic use over time.

It also ignores the statutorily required protection the USPTO undertakes on behalf of federal trademark registrants in preventing others from registering marks that conflict with prior registered marks because of a likelihood of confusion — according to Section 2(d) of the Lanham Act.

Clearly, a trademark registration acts as a valuable sword and shield.

So, what say you, dear readers, brilliant advice or baloney, or perhaps something in between?