Category: Trademark Registration

U.S Trademark Registration Process: Avoiding A Specimen Trap

In a predictable case before the U.S. Trademark Trial and Appeal Board involving the mark DELI EXPRESS SAN LUIS, the Board held that Applicant’s applied-for mark was not a substantially exact representation of the mark as used on the packaging for the goods. Accordingly, the Board denied registration.

Applicant, E.A. Sween Company, sought registration of the mark “DELI EXPRESS SAN LUIS” (shown below) for burritos; snack cakes; and snack rolls, namely sweet rolls.

In the United States, trademark applications based upon use of a mark in commerce require the filing of a specimen of use (i.e., packaging for goods or advertising materials for services depicting the applied-for mark). The applied-for mark and mark appearing on the specimen of use must be substantially exact. Meaning consumers must perceive the applied-for mark as used on the specimen as having the same overall commercial impression. 

The examining attorney handling the application argued that the applied-for mark as shown on the packaging depicts two separate trademarks; thus two different commercial impressions. Accordingly, the examining attorney refused registration of the mark. Applicant appealed that decision.

The question on appeal was whether consumers would perceive the applied-for mark as a unitary whole or as two separate marks. In support of its case on appeal, Applicant noted that it is the owner of two registrations, one for the mark DELI EXPRESS and one for SAN LUIS. Applicant then argued that its applied-for mark is a composite of its registered marks and that, pursuant to trademark rules and regulations, it is “free to choose the elements of its composite mark that it wants to register.”

In evaluating the use of the mark on the specimen, the Board noted that a portion of the applied-for mark consisting of DELI EXPRESS appears in the top left corner of the package in a red and yellow border. The Board further noted that a portion of the applied-for mark consisting of SAN LUIS appears to the right with a green background following a stylized yellow triangle.

The Board concluded that consumers would perceive the applied-for mark as two separate marks. The Board rendered its decision based upon the following factors:

1. The term DELI EXPRESS is not only in a different font but is contained within a yellow background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package.

2. The term SAN LUIS is outside of the DELI EXPRESS border and is further separated by a fanciful triangle and placed upon a green background.

Do you perceive the mark on the packaging as a single mark? I surely don’t. In my opinion, this appeal was DOA. Given the facts of this case, wouldn’t it have been a wiser decision to simply re-file the application with an acceptable specimen then take the savings and enjoy a relaxing vacation in San Luis?

How to Acquire United States Trademark Rights

How to Acquire Trademark Rights

In the United States, unlike many foreign countries, trademark rights stem from use, not from registration. Use of your trademark must be “public,” however, and must be used to designate certain products and/or services. The mark cannot simply be a “project name” or a name used internally between company employees.

U.S. Patent and Trademark Office Campus

Actual sales/shipments of products bearing the mark may not be necessary to create trademark rights. Pre-sales activities, such as attending trade shows, placing advertisements and giving product presentations to prospective buyers may be enough to establish trademark rights as against subsequent users of the same or confusingly similar mark. However, a federal trademark registration will not issue until your mark has been put to use in connection with the actual sale of your products or carrying out of your service.

While registration is not required to create trademark rights in the United States (and in certain other countries), securing federal trademark protection is a best practice and carries with it certain valuable rights, presumptions, and remedies for trademark infringement. Even if a mark has not yet been put to use, a federal trademark application may still be filed on an “intent to use” basis, thereby potentially reserving rights in that mark for your company. That holds true even if a competitor were to begin use of the same or confusingly similar mark after the filing of your application but before your company’s use of the mark.

Planning ahead and properly clearing marks and filing “intent-to-use” federal trademark applications at least four months in advance of product launches is a recommended strategy for securing rights in marks before their actual use. That strategy may also avoid the all too common last-minute scrambling to find available names.  You know, that last-minute Friday afternoon exercise of “the product launches on Monday and we really really really need you to approve this name, Roger!”

Yeah, that one.