Even Princes Make Trademark Application Errors

To qualify for trademark registration, the USPTO's examining attorney must find that the proposed mark is not confusedly similar to a previously registered mark, and not merely descriptive or generic. Even if the proposed mark meets these threshold requirements, additional registration requirements must be met. For example, the description of the mark's associated goods and services for each specified international classification of goods and services must comport with the USPTO's requirements and appropriate specimens must be provided. Regarding applications submitted in other jurisdictions, it must be emphasized that each country has its own trademark registration rules. The registration of a mark in one country does not guarantee that the USPTO will grant registration of the mark.

Prince Harry a/k/a the Duke of Sussex recently found the above statement to be true for the applied-for mark SENTEBALE. The applicant is the charity set up by Harry and the Prince of Lesotho in 2006. The charity reportedly aims to support children and young adults in the African countries of Lesotho and Botswana. The USPTO found that the mark itself met the threshold requirements. However, the application was rejected because the descriptions of the goods and services for international classes 35, 36, and 41 were found to be vague and lacking the requisite specificity required for US applications.

The application was filed with the USPTO under section 66(a) of the Trademark Act. This section is used for a trademark application where the person or company filing the application already owns an International Registration through the World Intellectual Property Organization (WIPO), and now they want to have that registration extended so that they have trademark protection in the US. The US application no. is 79367231.

To better illustrate the "pickiness" that goes into a trademark application evaluation, the application's original description of goods for IC 036 is presented versus the examining attorney's rewrite recommendation.

Charitable fundraising; arranging charitable collections; management and monitoring of charitable funds and payment of funds to charity; financial grant making (terms considered too vague by the International Bureau - Rule 13 (2) (b) of the Common Regulations).

The above description minus the reference to the International Bureau is the exact wording provided in the UK's registration of the SENTEBALE mark. It is noted that the "parenthetical language was inserted by the International Bureau (IB) because the IB was not able to determine if the classification assigned to particular goods and/or services by the applicant's Office of origin (the UK/Wales) was correct." See the examining attorney's Nonfinal Office Action available at www.uspto.gov. The IB reference will not appear in any registration of the mark by the USPTO.

The USPTO's examining attorney's proposed rewrite is as follows:

Charitable fundraising; arranging chartable collections, namely, charitable fundraising; management of charitable funds, monitoring in the nature of managing charitable funds, and payment processing of funds in the field of donations to charity; financial grant making, namely, providing grants for [specify health and education initiatives in Africa].

Note the specificity of the examining attorney's rewrite and how much better it reads. Interestingly, the original application did not even reference Africa even though, according to the news, the charity's services are Africa-based. The recommended rewrites of the descriptions for the other two specified ICs are even more detailed. As the examining attorney stated in the nonfinal rejection, "[a]n application must specify in explicit manner, the particular goods or services on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce."

The Princes' charity has 6 months to respond to the office action. A general requirement for U.S. registration is that the mark must be in use in the United States with the date of first use in commerce designated. Specimens showing usage the mark consistent with the descriptions for each specified class of goods/services must be provided in most cases. For a 66(a) application, however, the international trademark does not have to be currently used in the U.S. Nevertheless, the application must state a legitimate intent to use the trademark in U.S. interstate commerce. Within a couple of years, the applicant will need to file Use Affidavits or Excusable Nonuse Affidavits with the USPTO to maintain the registered extension of protection. Registered Section 66(a) trademarks are placed on the Principal Registry. Section 66(a) marks are also published in the Official Gazette and subject to opposition proceedings.

Finally, if it responds to the office action, the charity must be represented by a U.S. licensed attorney to respond to or appeal the refusal. The charity is registered in the UK. The examining attorney refers to the "US licensed attorney" requirement in the non-final rejection. An email address for the charity must also be provided. These attorney and email requirements were formalized a few years ago to help reduce fraudulent and error-prone trademark applications with the USPTO.

What's the bottom line? The US trademark registration process is arguably more detailed and specific than many jurisdictions. Here, the errors in the SENTEBALE application are fixable if the charity chooses to do so. Otherwise, the mark will not be registered in the US.

Trademark law, as copyright law, can appear deceptively simple. It is not. An experienced trademark attorney can help ensure that the process proceeds smoothly and consistent with trademark law's requirements for registration. For example, although not required for 66(a) applications, inadequate specimens showing use in commerce can also prevent registration of a mark even if the application otherwise meets the other requirements for registration. Contact me for a complimentary consultation on trademarks. See my reviews at www.dhirubhai.net and www.avvo.com.

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