Challenging Trademark Registrations

Obtaining a trademark registration is an important part of intellectual property protection. In the U.S., a registration may be granted to the owner of a unique and distinctive mark that does not appear to infringe on the trademark rights of any other owner.

Trademark Examination

Each trademark application that is filed with the U.S. Patent and Trademark Office is examined by an attorney. The attorney ensures that the application complies with all formalities and meets the minimum requirements for being a trademark. Additionally, the attorney performs a search of existing trademarks to determine whether or not consumers are likely to confuse the proposed mark with an existing mark.

Publication for Opposition

If the application clears all of these hurdles, then it is published. Publication marks the beginning of a 30-day period in which anyone may oppose registration of the mark. When an opposition is made, it most frequently comes from a competitor who feels that their mark is confusingly similar and that the goods and services on which the mark will be used travel in the same trade channels.

The opposition process provides an opportunity for the two sides to negotiate and perhaps arrive at an amicable resolution. For instance, the applicant may agree to eliminate a particular good or service from their description. However, if the two parties cannot arrive at an agreement, then a period for collecting discovery and evidence will ensue. Occasionally, these matters go to trial, with both sides arguing for their right to use the mark.

Petition for Cancellation

Opposing a trademark application after publication is a relatively common occurrence. Less commonly, a trademark registration may be challenged after it has already been established.

The Lanham Act enables parties to challenge a registration under certain circumstances. Any party that believes it may be damaged by the mark is empowered to challenge it. In this case, the challenging party will have to file a petition with the USPTO for cancellation of the mark from the Principal Register. Such a petition must comply with certain time periods such as:

  • The petition is made no more than five years from the publication date of the application
  • Whenever the mark in question becomes generic, is abandoned or is determined to be fraudulent
  • Whenever a certification mark is not being used within the limits of its certification

The Trademark Trial and Appeal Board, or TTAB, is the department that is responsible for deciding whether or not an application can proceed to registration after an opposition or if an existing registration can remain on the Principal Register once it has been challenged.

In the case of an application, the TTAB may elect not to allow the mark in question to proceed to registration. An existing registration may be cancelled or the TTAB may place restrictions on the use of the mark. On the other hand, the TTAB may choose to proceed with registration or maintain the registration of an existing mark.

Who Can Challenge a Trademark Registration?

Many people assume that only the owner of a similar trademark may oppose or petition to cancel someone else’s trademark. The reality is that even consumers who do not own a trademark may participate in this process.

TTAB reinforced this concept with their decision regarding United Trademark Holdings, Inc.’s application to register the mark RAPUNZEL. A law professor opposed the registration of the mark, arguing that the registration would “constrain the marketplace” and raise prices for dolls manufactured by other companies and sold under the name Rapunzel. The applicant for the mark argued that the opposer lacked standing, but TTAB disagreed. Their conclusion was that “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer.” Going on, they stated that the consumer has a “real interest” in keeping generic terms off of the Principal Register.

Free Consultation

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.

Procter & Gamble Apply to Register Trademarks for LOL and NBD

Trademark Value

A company’s trademarks are among its most valuable assets. In most cases, those words and logos are what identify a product or service. Consumers recognize the mark, and this may influence their decision to make a purchase. Really effective and recognizable trademarks can be extremely valuable, which is why many owners choose to register these marks with the U.S. Patent and Trademark Office.

Most of the strongest trademarks have little obvious connection to the products they sell. After all, what does the word “apple” have to do with laptops and cell phones? This lack of an obvious connection makes these marks incredibly distinctive and memorable, which is helpful when you’re trying to sell something. Perhaps Procter & Gamble was considering this principle when they applied to register trademarks like “LOL,” WTF” and “NBD” earlier this year.

The Conflict

When most people hear about these applications, the immediate response is, “They can’t trademark that!” The reaction is understandable. These text-message acronyms have been around for years, and millions of people use them multiple times per day. If Procter & Gamble is successful in their quest, does it mean that no one can use these acronyms anymore?

The answer is “no.” Everyone can feel free to keep LOL-ing as much as they like. Obtaining registration of trademarks in the U.S. requires the applicant to use the mark on goods or services that are sold in interstate commerce. The applicant must specifically identify these goods and then actually use the mark on those goods before the mark can be registered. Once these rights are obtained, the owner of the registration may be able to prevent another manufacturer or retailer from using the same mark for the same or similar goods, but they do not necessarily have the right to stop others from using the mark on totally different products or in personal text messages.

As an example, Procter & Gamble’s application for the “LOL” mark says that they plan to use it on products like laundry detergents and fabric softeners. If someone else decided that they wanted to sell LOL Cola, then they’d stand a pretty good chance of getting a registration even if Procter & Gamble already holds a registration for the LOL mark for laundry detergent. Why? Because it seems pretty unlikely that a consumer is going to see “LOL Cola” and assume that it comes from the same people who sell “LOL Laundry Detergent.”

The Motive

Not all of Procter & Gamble’s applications have been formally examined yet, but it seems likely that the company will be able to register the marks if they meet all deadlines and actually begin using the marks in interstate commerce on the specified products. Of course, the natural question that follows is: “Why would they want to register these trademarks?”

On the surface, the answer isn’t obvious. The acronym NBD has nothing to do with dishwashing detergents. However, all of these acronyms are immediately recognizable to teens and young adults, and that is precisely the age group to which Procter & Gamble is trying to appeal. They already have a stable of well-known brand names like Crest, Charmin, Bounty and Dawn, but they are probably looking for new brands that will appeal to a new generation.

Will P&G Succeed?

Will Procter & Gamble be successful with their applications? It’s too soon to tell. However, this is probably just one piece of a new marketing strategy that may serve to keep this venerable company relevant for a few more decades. If your company hasn’t considered registering any trademarks yet, perhaps now is the time. Contact an attorney to learn about your options.

How much does a Patent cost & Trademark cost?

September 19, 2015

Costs can fluctuate with the type of patent: provisional, non-provisional, design, continuation-in-part, divisional, or continuation application. It is hard to place a particular amount to the work. In general terms to serve as a guide, it is not uncommon for patent attorneys to charge hourly rates from $200-$400 / hour. If you call around, you will find that applications range from $1,000-$20,000 depending on the firm selected, the type of application, and the subject matter to be patented. This range in fees only emphasizes the need for the inventor to do their homework and consider the 5 tips above regarding “How do I choose a patent attorney?”

Some of the same factors noted above affect the cost of filing a trademark application. When doing a trademark application it is highly recommended to perform a search (you and/or your attorney). There is then the cost of the attorney preparing the application documents and the filing fee at the USPTO. Cost can vary depending on the type of service you select to do the work and what exactly you want. Estimated price ranges may be from $500-$2,500 (not including filing fees). Filing fees are based on the number of classes of goods or services you select to have your mark examined in. When shopping around, focus on the attorney costs and searching costs as the filing fees are inevitable and equal to all parties typically.

With a quick phone call, we can review your situation and provide a relatively reasonable estimate as to any expected costs.

Free Patent Cost Consultation