Category Archives: 2(a) Refusals

Letters of Protest – Interesting Initial Findings

We’re now starting to index Letter of Protest decisions — the “Letter of Protest Memorandum” responses. These are classified as “Administrative Response (ADR)” as a “Document Type,” under “Office Action Criteria” in manual Search. Occasionally, a Letter of Protest itself makes it into the file for some reason — these are flagged as “Letter of Protest” or “LOP.”

This blog post takes an initial look at some of the more interesting trends that we noticed from some initial research.

A. The Vast Majority are 2(d)-related.

Unsurprisingly, most Letters of Protest decisions (and thus most Letters of Protest) are attempts to keep third-party applications for arguably similar marks. These accounted for 95%+ of the currently-flagged Protest-related content. Of those that had ADR or LOP flags, only about 12% made it through to registration, suggesting that Letters of Protest are extremely effective tools in proactively protecting clients’ trademarks.

B. The Red Cross is Super Active

The Red Cross seems to be filing a bunch of Letters of Protest relating to use of the cross or “plus” designs.

Sometimes, they just point out that the design element might be a “Swiss flag,” e.g. a black and white logo for healthcare cost tracking and insurance apps (abandoned) and a mark for IMMUNITYAID (with the white cross in the red “D”) for dietary supplements (registered; no refusal issued).

In others, they more expressly make a 2(a) claim based on the Red Cross mark. These are often but not always medical related, e.g. compare a G+ mark for surgical equipment (published for opposition) and POWER PLUS for motor oil (still pending, 2(d) refusal unrelated to the Red Cross). Sometimes these do result in 2(d) refusals, like a dove+red cross design for healthcare services (abandoned), or 2(a) refusals, like THRIVE HYDRATION & design (cross in the “t”) for vitamin injection services.

C. Specimen Protests Haven’t Been Especially Common

While most Letters of Protest related to 2(d) refusals, there were a few specimen ones! A number resulted in digitally-altered image refusals, and applications so refused usually went abandoned. Not always, though; some applicants just swapped in a substitute specimen and made it through to registration.

We’ll pay attention to these as the data pool expands. In the meantime, enjoy the new research opportunities!

Geo-Significant Wording and Your Food Mark

When the USPTO issues an examination guide, it’s usually a big deal for trademark lawyers. The exception that proves the rule is Examination Guide 2-20, Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats (May 2020). It hasn’t had much impact.

I. What Does Exam Guide 2-20 Do?

The guide deals with “geo-significant wording,” and three sets of lists of production standards. The first is the FDA’s list of “standards of identity” for cheese – a list of generic standards for cheeses like cheddar, edam, romano, and provolone. The second is the USDA’s list of processed meat names, like frankfurter and bologna. The last is the Codex Alimentarius, organized by the U.N. Food and Agriculture Organization and the WHO, relating to cheese food standards.

Since the standards all relate to production methods and ingredients, not places of origin, the Guide requires Examiners to require disclaimers of “geo-significant” wording, to issue genericness refusals where appropriate, and to ensure that the description of goods contains the listed product in order to avoid a §2(a) deceptiveness refusal, in consultation with the Office of the Deputy Commissioner for Trademark Examination Policy.

II. What’s the Impact of Exam Guide 2-20?

Exam Guide 2-20 has had zero direct impact. It has been directly cited zero times by Examining Attorneys since its introduction. It has been cited zero times by the TMEP. It has been cited zero times by applicants and their counsel.

How about indirect impact? We searched for any of the terms in the three lists that were “geo-significant,” looking for outbound Office Actions (or comparable documents), and found only 24 since May 2020.

The vast majority were simple Examiner’s Amendments, like amending the description of goods for ASIAGO CCFN (stylized) from “cheese” to “asiago cheese,” in accordance with (but without citing to) the Guide; it already disclaimed “asiago.” The rest were additions of disclaimers.

The Office still isn’t catching everything; for example, a registration issued for SUPREME BRIE BITES (stylized) for just “cheese,” when under the Guide it should have been amended to “brie cheese” or something comparable. It’s worth noting that variations of the word will still trigger the requirements; a filing for BRIETTE had its ID amended to “milk products, namely, cheese and cheese preparations in the nature of processed brie cheese, brie cheese sauce and brie cheese food” to comply.

III. How Does This Impact My Practice?

If you represent a client in the food space, and they have a mark that includes a geo-significant term related to cheese or meat, just disclaim the term and be adequately specific in your description of goods, and you can avoid a near-inevitable Office Action.

If you represent a client that thinks it owns rights in one of these geo-significant terms, don’t bother arguing it out with the USPTO — go lobby the US government or the international entities that organize the Codex Alimentarius. That probably won’t work either, but it can’t possibly be less successful than trying to change the Office’s mind.

What’s Left of Section 2(a) of the Lanham Act?

Section 2(a) of the Lanham Act lays out five grounds for refusal if it contains matter that is (1) immoral, (2) deceptive, or (3) scandalous, or (4) that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or (5) is a geographical indication used for wines or spirits that identifies a place other than the origin of the goods and is first used after the WTO Agreement entered into force in the US.

The disparagement section was struck down on Constitutional grounds in Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017); the immoral and scandalous sections came to the same end via Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019). What remains? The prohibitions on deceptive marks, false suggestion, and geographic indications.

By far the most common type of 2(a) refusal now is for potentially deceptive marks, which have generated over 3,000 refusals in 2019. This refusal is often raised in the alternative to a 2(e)(1) refusal, and so is piggybacking on a much more common refusal a bit.

Immoral or scandalous marks each have around 300 refusals, largely suspension notices issued early in the year; these are starting to move forward to publication after the recent Brunetti decision. Most applications that received disparagement refusals have moved through to publication or registration or will do so shortly.

There were about 550 false suggestion refusals; about 1/5th of them have already gone abandoned, and a roughly equal number have moved through to publication or registration. These refusals appear to be especially common in the fashion space.

Finally, geographic indication-based refusals were extremely rare; there were only a handful and 2/3 have already moved through to publication or registration.

What’s Going to Follow Brunetti?

The US Supreme Court has, as you’ve doubtless read a million articles about already, struck down the Section 2(a) bar on registration of “immoral [] or scandalous matter.” Iancu v. Brunetti, ___ U.S. ___ (2019). It was no surprise to anyone who had read Matal v. Tam, the 2018 decision finding the 2(a) bar on disparaging matter to be unconstitutional. 582 U.S. ___ (2017).

This blog post will take a more practical look at what applications will be impacted, using TM TKO’s searchable issue tagging.

More than five hundred applications that are currently suspended based awaiting issuance of the Brunetti decision. The following numbers show the common terms that have resulted in suspensions, and include more easily-searched spelling variations.

Fuck and variants – 173

Shit and variants – 59

Breast-related – 16

Penis-related – 71

Vagina-related – 36

Butt-related – 17

Quite a few more related to specific sex acts, although there’s too much variation for easy enough searching for the purposes of this blog post.

A bit under half of the suspended applications do not have counsel; those applicants represented by counsel were somewhat more likely than the unrepresented applicants were more likely to have multiple applications suspended awaiting the Brunetti decision.

There does not appear to have been a land rush to file new applications for offensive – yet. Application data can take a few days to a week to filter into the USPTO data set, so it’s possible that there has in fact been a profane land rush that will become apparent over the next few days.