(1) Holding The Board denied the Petition to Cancel the registration for the mark SEXTO.
(2) Procedural History The Petitioner, Proximo Spirits, Inc., sought to cancel the registration for the standard character mark SEXTO for “alcoholic beverages, except beer; alcoholic beverages, namely, distilled agave liquor” in International Class 33.
The Petitioner’s claim was based on its own registered mark, THE SEXTON (in standard characters), for “whiskey” in International Class 33.
(4) Issues The central issue was whether there was a likelihood of confusion between Petitioner’s mark THE SEXTON and Respondent’s mark SEXTO, as used on their respective alcoholic beverages.
(5) Rationales The TTAB denied the petition to cancel based on
Goods, Channels of Trade, and Consumers: The Board found the goods to be legally identical because the identification “alcoholic beverages, except beer” includes whiskey. The Board also found that distilled agave liquor and whiskey are closely related, as evidenced by third-party registrations and distillery websites offering both under the same marks. Because the goods are identical or closely related, the Board presumed they are sold in the same trade channels and offered to the same classes of consumers. These factors weighed heavily in favor of a likelihood of confusion.
Strength of Petitioner’s Mark: The Board found Petitioner’s mark, THE SEXTON, to be both conceptually and commercially strong. The term “sexton” is arbitrary in connection with whiskey, giving it conceptual strength. The evidence also showed commercial strength through significant sales, promotional expenditures, industry awards, and a co-branding partnership with the television show The Walking Dead. This factor weighed in favor of a likelihood of confusion.
Dissimilarity of the Marks: The Board concluded that the marks are dissimilar in their overall commercial impression, particularly in their connotation and meaning.
Connotation and Meaning: Petitioner’s mark, THE SEXTON, has a specific meaning in English, referring to a church officer or grave digger. This connotation is reinforced by its promotional activities and the word “THE,” which suggests a specific individual. Respondent’s mark, SEXTO, has no understood meaning in English, and in Spanish, it means “sixth”.
Appearance: Although SEXTO is only one letter away from SEXTON, the omission of the “N” is significant because consumers are unlikely to perceive it as a misspelling of SEXTON.
Sound: The Board found it unlikely that the marks would be pronounced in a similar way.
Dissimilarity outweighed other factors: The Board held that the dissimilarity of the marks outweighed the similarities of the goods, trade channels, and the strength of Petitioner’s mark. The differences were “significant” and “substantial,” justifying a conclusion that confusion is unlikely. The Petition to Cancel was therefore denied.
Transliteration of Non-Latin Characters and English Translation Required
한글 상표를 미국에 등록하려면 반드시 transliteration(음역)이 필요한데, 쉽게 생각하면 우리가 apple 을 ‘애플’로 음역하는 것을 반대로 하면 됩니다.
아무래도 한글/영어가 다 익숙해야 해서, 한국 거주 고객이 한국특허법인 > 미국 대리인을 통해 출원하는 경우나, 미국 거주 고객이 미국 로펌을 통해 제출하는 경우에 거절(Office Action)이 많이 발생합니다.
음역의 예
예를 들어, ‘맛의천국’을 음역하면 mot-eui-chun-gook 정도가 되겠죠. 사실 음역에는 정해진 규칙이 있지는 않습니다. 음역은 경쟁사가 이미 등록된 이름을 외국어(예: 나이키)로 음역해 등록하는 걸 방지하는 역할을 합니다.
눈속임하려는 의도든 아니든, ‘나이키’를 등록하면서 nigh-key 와 같은 음역을 제출할 수도 있겠죠. 하지만 이런 경우에도 심사관이 발음해 보면 유사성을 바로 알아챌 수 있기 때문에 문제가 되지 않습니다.
음역 기재 방법
상표출원 시에는 통상 음역과 함께 번역(translation)이 들어갑니다. ‘맛의천국’의 경우 아래와 같습니다.
The non-Latin characters in the mark transliterate to “mot-eui-chun-gook” and this means “the heaven of taste” in English.
영어의 음역이 상표인 경우
간혹 영어를 한글로 적은 상표도 있는데요. 예를 들어, ‘런투유’ 와 같은 상표라면 음역은 ‘run-too-yu’ 로 적고, 번역은 ‘run to you’ 로 적으면 무난합니다.
한국어의 영문 음역이 상표인 경우
오두막을 영어로 옮겨 ‘odumak’ 이라는 상표를 등록하고 싶다면, 음역은 따로 필요가 없겠죠. 이 경우, 번역으로 ‘hut’ 정도를 포함하면 됩니다.
번역이 애매한 경우
간혹 애매한 경우도 발생하는데, 예를 들어 ‘설매’라는 화장품 브랜드는 사람에 따라서 눈과 매화라는 뜻으로 해석할 수도 있지만 아닐 수도 있죠.
이때는 향후 마케팅적으로 눈과 매화의 뜻을 포함할지에 따라서 번역을 추가할 수도 아닐 수도 있습니다. 다만, 예를 들어 ‘설매’ 로고에 매화 이미지가 포함되어 있다면 번역은 당연히 포함해야겠죠.
번역이 필요할 경우, ‘snow plum flower’ 정도의 번역을 포함하면 무난하고, 향후 제3자가 Snowy Plum Blossom’ 과 같은 상표를 등록하지 못하게 하는 효과가 있습니다.
반대로, 이미 유사한 이름 snowy plum 등 이 화장품으로 등록되어 있다면, 오히려 유사성을 근거로 등록이 거절되는 문제가 발생할 수 있겠죠.
영문으로 음역하기
만약 유사한 이름과의 마찰이 우려된다면, 선제적으로 Sulmé 정도로 음역해서 상표 등록을 진행할 수 있습니다.
이때 한국어에 능통한 사람이라도 Sulmé 라는 이름을 눈과 매화라는 뜻으로 해석하기는 어렵죠. 따라서, 출원 시 번역을 포함할 필요가 없고, 경우에 따라 혹은 심사관의 요청에 따라 “The wording “Sulmé” has no meaning in a foreign language.” 라는 문구를 추가하면 됩니다.
맺음말
한글을 등록하려면 문구 자체에 대한 권리를 주장할 수 없고, 무조건 글자체 및 기타 디자인 요소를 포함해 등록하게 됩니다. 그럼에도 불구하고, 한글의 아름다움과 한국 브랜드 정체성을 유지하기 위해 한글 상표의 미국 등록은 늘어나고 있습니다. 적절한 transliteration(음역)과 translation(번역)으로 무탈한 심사통과 뿐 아니라 유사 상표로부터의 보호까지 꼭 챙기시기 바랍니다.
The United States Patent and Trademark Office, the government agency responsible for trademark registrations, provides up-to-date, comprehensive guides and toolkits:
It’s important to note that the USPTO is a SELF-FUNDED AGENCY.
This means they are incentivized to make every effort to help you through the application process. Well, it’s in their self-interest because they charge a flat fee for examining your application; poorly prepared applications cost them more time and resource.
Please do not ignore what they say “basics”. They are basics in the sense that you MUST KNOW THEM before applying for registration. It’s your first step toward legally securing one of your most valuable assets, your brands.
These are called “trademarks”. Trademark is a way to tell people that products bearing the “words, logos, etc” are from you.
Once you register your trademark with the USPTO, you put everyone in the U.S. on the notice that you own the trademark.
This makes it easier for you to stop others from selling fake goods/services that pose to be yours.
Average client spends about $710 including all government fees and other expenses to get a trademark registered.
The amount is based on actual billing data for IPfever clients’ trademarks that are registered in the past two years as of writing this article.
B. Product design
You can get “design patent” for the ornamental feature, like the wing-shaped sleeves.
Once you patent the design, you get a legally sanctioned monopoly for the design in the U.S. for more than a decade.
Getting a design patent can be a tedious and expensive process. However, for industrial design, it’s often the only option.
Average client spends about $4,020 including all government fees and other expenses to get a design patent.
The amount is based on actual billing data for IPfever clients’ design patents that are issued in the past five years as of writing this article.
C. It’s all in the making.
Manufacturing techniques,
special treatments,
textile printing method,
special construction,
and more
When people say “patent”, they mean “utility patent”.
If you developed a new product, it’s likely you invented something. In other words, unless you copied someone else’s goods/services without a single improvement, there is something you can patent.
Nevertheless, it is important to understand that patent doesn’t protect a product as a whole. It rather protects a specific feature of the product. Sometimes, the patented feature is so minor that others can outcompete you without it, making the patent useless.
Average client spends about $7,600 including all government fees and other expenses to get a utility patent.
The amount is based on actual billing data for IPfever clients’ design patents that are issued in the past five years as of writing this article.
Of course, there are more ways to protect your IP, but the above three should give you a head start.
You may be able to move the USPTO to expunge or cancel a trademark registration for not being commercially used in the U.S.
What is Expungement (and Reexamination) of Trademark Registration?
Virtually anyone can petition for an expungement of a registered trademark with the evidence of record supporting that the registered mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.
Similarly, for registered marks that were not used at the time of filing or by the time provided for statement of alleged use, a petition for a reexamination can be filed with the corresponding evidence.
Either one is an ex parte proceeding before the USPTO, meaning once you establish that there is a prima facie case of non-use (see below), the registrant will need to prove otherwise.
Eligible period?
The registration should be in between 3 and 10 years from the date of registration. However, till December 27, 2023, you can file for an expungement proceeding for a registration that is at least 3 years old, regardless of the 10-year limit.
What is a prima facie case?
It’s a legal term of art that requires a working knowledge regarding burden of proof in a legal proceeding. The more important thing is how to establish a prima facie case.
When you file a petition for an expungement or reexamination you must include evidence as follows:
a. The elements of the reasonable investigation of nonuse conducted, as defined under § 2.91(d), where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and
b. A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in § 2.91(a);
A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
What can be used as evidence?
As set forth in § 2.91(d)(2), appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
State and Federal trademark records;
internet websites and other media likely to or believed to be owned or controlled by the registrant;
internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
Print sources and web pages likely to contain reviews or discussions of the relevant goods and/or services;
• Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;
Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.
Notes
If you find a trademark registration that blocks your trademark’s registration or simply in the way of your commercial utilization of the trademark, it is definitely worth a look to see if the registration was legitimate and valid.
Also, the ex parte proceedings can be an effective way to respond to any claims against your trademark use or application based on a previous trademark registration, including a letter of protest, a TTAB opposition proceeding, and other legal disputes. The ex parte proceedings will suspend any actions before the USPTO and the TTAB.
Updated on 2/6/2024 for the all-new Trademark Search by USPTO.
Trademark attorneys, like myself, use USPTO’s Trademark Search like everyone else. I will walk you through the entire process with helpful tips you can use right away.
Now, hit the “Search by all” button on the top left, and choose “Wordmark”.
If you know what company name (or brand) you’re looking for, you can simply type it here.
Alternatively, it should give you a good start if you’re concerned about others using more or less same name or design as your brand.
For example, if you search “apple”, it will show you all trademarks in the USPTO’s database that contain the word “apple” as well as any design related to the fruit “apple.”
The above are just the first 16 trademarks out of 4,694 results that I got today.
Narrow it down using description of goods or services
Let’s start by saying a trademark can’t stand alone without association with a good or service. When you see a sign saying “Apple” in a grocery store, would you assume that the fruit is produced by Apple, Inc.?
No. That’s why you should be interested only in the trademarks used in association with the goods/services related to your business.
You can narrow your search result by typing your own description of a good or service. Just locate a new box, pre-filled with the title “Refine search by goods or services”, next to the search box you just used.
You can, for example, search “socks” if you’re in the socks business, but that’s when you are interested in pretty ordinary items like socks.
Alternatively, use the International Classes
Trademark examiners are more likely to use International Classes (or ICs) than descriptions like “socks”.
A brief introduction to the ICs. Countries around the world decided to categorize trademarks into 45 international groups or classes. International Class 1 is for chemicals; 3 is for cosmetics and cleaning preparations; and so on. There are only 45 ICs. Because it’s easy to presume that goods or services in the same category are closely related, when a trademark has a similar mark registered in the same IC, it’s an automatic red flag for trademark examiners.
Also, you should consider related ICs. For example, meats and processed foods (IC 29) are often sold at the same place as staple foods (IC 30) and natural agricultural products (IC 31). This is covered by “coordinated” feature of the Trademark Search. More about this further down.
First, it’s a good idea to skim through the list of ICs.
Incorporating ICs into your search is so easy although it’s called “Expert”. You only need to click the button “Expert” next to the search boxes.
Now you can see the list of ICs on the left column. You only need to click on the ICs you’re interested in.
You probably already found this, but there’s a “Coordinated” toggle above the list of ICs. When you select an IC, some ICs will be automatically selected in a lighter color, if the toggle is on. These are ICs that the USPTO deems related to the IC you selected.
You can play with other toggles such as “Live” and “Dead” in the “Status filter” above to further narrow down the search.
Advanced search
Unfortunately, people don’t always use correct spellings for brand names. Sometimes, the number “0” may replace “o” in a trademark, making your search incomplete.
Trademark Search offers you an option to use Regular Expression (Regex) instead of simply typing “Apple”, but this calls for the use of “FIELD”.
I put FIELD in all-caps because “fields” should always be capitalized in Trademark Search. So are Boolean operators like AND and OR.
Start with a CM FIELD.
Combined Mark FIELD lets you search not just the words but also alternative spellings and translations.
First, we want to find out the most distinctive and recognizable part (or parts) of your trademark. We will be calling the part(s) keyword(s).
If your mark is “T-mobile” for telecommunication services, I would say the keyword is the letter “T”. If your mark is “NinjaBlender” for blenders, “Ninja” would be your keyword. If it’s “Saks 5th” for a retail store, it’s “Sak” and “5th”.
For made-up words like Noorola, just pick a part that looks familiar, like “rola”.
You should type in (or copy and past and change KEYWORD to your own keyword):
CM:/.*KEYWORD.*/
in the search box after changing the blue box to “Search by filed tag” as shown above.
e.g.
If you have more than one Keyword, you can connect them (KEYWORD_1 and KEYWORD_2) with “AND” to find only marks that have both.
CM:/.*KEYWORD_1.*/ AND CM:/.*KEYWORD_2.*/
e.g.
This search pulls up all the trademarks that had been registered and applied as well as currently registered trademarks as long as they include your Keywords. Because we added the regex “.*”, if your keyword is home, the result will include Homedics. However, your search won’t include “fifth”, more about this later on.
A good thing is that because we used the field “CM”, you will not miss a foreign equivalent of your keyword. e.g. Primera Banco for an equivalent of First Bank.
Other fields to use.
I personally try to go through at least hundreds of marks that are most similar. However, on many occasions, the Keyword search populates thousands or more.
There are many ways to narrow down your search. For example, you can simply see only “live” entries, meaning applications pending examination and active registrations, by adding “AND LD:true” at the end.
CM:/.*KEYWORD.*/ AND LD:true
This sometimes helps, but dead applications and cancelled registrations can give you a fuller picture, so it’s not always a good way to perform your clearance search.
In a similar way, if you want to see only “registered” marks that are live, you can use “SA:registered”.
CM:/.*KEYWORD.*/ AND LD:true AND SA:registered
This gives you only registered marks that are still active. If you want to search for every mark that has been registered, including currently cancelled, you can drop the middle part.
CM:/.*KEYWORD.*/ AND SA:registered
Incorporate ICs.
Incorporating ICs into your search shouldn’t be hard. Just remember you should always put them in a three-digit format such as 001, 012, and so on.
IC:THREE_DIGIT
For example, you can search IC:001 to see all trademark applications and registrations for chemicals.
Because we wanted to narrow our search, we should add it to the previous search with a preceding “AND”.
Note, “OR” is used here because you are interested in both of ICs separately, not just trademarks that are registered for both ICs.
It’s important to note that if you want to use “OR” in tandem with other fields connected with “AND”, you should use parenthesis to get a correct search result.
I want to remind you that you can always use the “Expert” mode, left column to choose ICs, with coordinated toggle on/off, but the above should illustrate how to perform a nested search with parentheses.
Now, you have it.
Before I let you go. A word of caution. The narrower your search gets, the more you will miss.
Also, in practice, my search gets a little crazy with keywords. For example, I may use
CM:/h[ou]n[aeiou].*/
instead of
CM:/.*honey.*/
because I want to include marks like “huneyboo” in my result. FYI, the first regex will return more than double the total search results than the second regex. If you’re concerned about the alternative spellings but don’t know a thing about regex, you stick with the Wordmark search above illustrated.
If you’re not familiar with regex but want to learn more, just look up tutorials for regular expression, which is more widely used than you think and certainly not an invention by the USPTO.
If you are wondering if the invoice or bill you received by mail is legit, please read on.
Scammers consistently target US trademark applicants and registrants. Many of those have names bearing a close resemblance to the name of the United States Patent and Trademark Office (USPTO) such as Patent and Trademark Office, LLC.
First off, if you have hired a U.S. attorney to work on your trademark application, you can safely ignore all but your attorney. The USPTO do not contact trademark owners directly when it has other contacts such as an attorney of record.
Second, the renewal of trademark registration requires paperwork. You simply cannot extend the life of a trademark registration by just footing a bill. Hence, the USPTO never sends you a bill; instead, it accepts filing fees along with required paperwork.
Lastly, this goes without saying. But when you are in doubt, do not pay!
To register a trademark, you need to either (1) have used a mark (could be a brand name, a company logo, or even a unique color) in association with your good or service or (2) have a bona fide intent to use it.
The USPTO has helpful videos and TEAS instructions to help out trademark applicants, but how disclaimer affects your legal rights and potential to be initially rejected for registration via office action?
Let’s talk about the disclaimer in terms of registrability and trademark owner’s right.
Just google trademark registration, and you will see a bunch of under-$100 trademark services online. How is it possible? There is a hidden cost of trademark registration: your mandatory response to the USPTO’s initial conclusion that your mark is not registerable. (SeePossible Grounds for Refusal of a Mark | USPTO) By the way, this type of office actions are quite common.
client spends about $710 including all government fees and other expenses to get a trademark registered.
