It is likely Disney’s applications will be approved. The Trademark Office seldom looks beyond its records of registered and pending marks in determining whether there is a likelihood of confusion among marks. Once a trademark application is approved, the USPTO publishes the mark for a 30-day opposition period during which time anyone who believes they may be damaged by registration of a mark may oppose its registration before the Trademark Trial & Appeal Board. It will be interesting to see what happens. More than likely Disney and the Navy will reach an agreement that will make everyone happy.

It also still begs the question who will be Disney’s Seal Team 6? As a mother of two young Mickey Mouse Clubhouse enthusiasts I am going to guess it will be Mickey, Minnie, Daisy, Donald, Goofy and Pluto. We shall see!

If the relevant term is merely descriptive, but not generic, the mark may be registered on the Principal Register with a proper showing of acquired distinctiveness under §2(f), or on the Supplemental Register, if appropriate. For example, the trademark/telephone number 369-CASH was held merely descriptive but was shown to have acquired distinctiveness as applied to mortgage brokering and mortgage-related services. However, if the proposed mark is generic, the designation is not registrable on the Principal or the Supplemental Register. Nonetheless, to support a refusal of registration on the ground that a telephone number is generic, it is not enough to show that the telephone number consists of a non-source-indicating area code and a generic term. The examining intellectual property attorney must show evidence of the meaning the relevant purchasing public accords the proposed alphanumeric mark as a whole.

I have often advised clients against adopting such a mark because of the possibility of a geographically misdescriptive refusal. However, a recent (but unfortunately non-precedential, meaning non-binding) decision by the Trademark Trial and Appeal Board issued on January 14, 2011 in the case of In re Conair Corporation, held that Conair’s application for registration of the word mark LONDON SOHO NEW YORK, in respect of “cosmetic bags, namely, cosmetic bags sold empty, cosmetic organizers sold empty, hang-up cosmetic bags sold empty and cosmetic travel bags sold empty” was not geographically misdescriptive when used in connection with those goods.

The TTAB found that the record did not support a goods/place association between the goods and the two Soho neighborhoods or, with the cities of London and New York. The TTAB further found that even if such an association had been demonstrated, the Office failed to prove the third requirement for a geographically deceptively misdescriptive refusal. To the extent some inference may be made regarding any renown for fashion generally, this is not sufficient to find that any of those places were renowned for cosmetic bags such that believing that the cosmetic bags originate in any of the locations represented in the mark is a material factor in a consumer’s decision to purchase these goods. Thus, the examining attorney failed to make a prima facie case that the mark LONDON SOHO NEW YORK was primarily geographically deceptively misdescriptive.

For example, there is a trademark for DELTA airlines and a trademark for DELTA faucets. However, there are several marks that you may not adopt as a trademark irrespective of how dissimilar the goods and services are. For example, I often get calls from people who want to adopt the word OLYMPIC as a trademark. The proposed mark could be for use in connection with frozen fish – does not matter — it is not likely getting through the United States Patent and Trademark Office and even if it does squeak through, the Olympic Committee will certainly send you a letter demanding that you expressly abandon your application. The reason is because certain various federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters adopted by the United States government or particular national and international organizations. These designations are reserved for the specific purposes prescribed in the relevant statute and must be free for use in the prescribed manner.

Congress has created statutes that grant exclusive rights to use certain designations to federally created private corporations and organizations. Violation of some of these statutes may be a criminal offense, YIKES! If you are more curious about this, see 18 U.S.C. §§705 (regarding badges, medals, emblems, or other insignia of veterans’ organizations); 706 (“Red Cross,” “Geneva Cross,” and emblem of Greek red cross); 707 (4-H Club); 708 (coat of arms of the Swiss Confederation); 711 (“Smokey Bear”); and 711a (“Woodsy Owl” and slogan, “Give a Hoot, Don’t Pollute”). I wonder if anyone has ever gone to jail for infringing on Smokey the Bear’s territory! Other statutes provide for civil enforcement, e.g., 36 U.S.C. §§153104 (National Society of the Daughters of the American Revolution); 30905 (Boy Scouts); 80305 (Girl Scouts); 130506 (Little League); and 21904 (The American National Theater and Academy).

Whether you are in Florida or any other state in the United States and you are considering adopting a trademark, here is a list of marks you should not consider adopting as your trademark:

• American Ex-Prisoners of War, 36 U.S.C. §20907
• American Legion, 36 U.S.C. §21705
• The American National Theater and Academy, 36 U.S.C. §21904
• American Symphony Orchestra League, 36 U.S.C. §22306
• American Veterans, 36 U.S.C. §22706
• American War Mothers, 36 U.S.C. §22505
• AMVETS (see American Veterans)
• Big Brothers [and other names], 36 U.S.C. §30106
• Big Sisters [and other names], 36 U.S.C. §30106
• Blinded Veterans Association, 36 U.S.C. §30306 – An Interesting side note however if that the term “Blinded Veterans” was actually held to be generic and therefore not subject to trademark protection.
• Blue Star Mothers of America, Inc., 36 U.S.C. §30507
• Board for Fundamental Education, 36 U.S.C. §30706
• Boy Scouts of America, 36 U.S.C. §30905
• Centers for Medicare and Medicaid Services (see Social Security)
• Central Intelligence Agency, 50 U.S.C. §403m
• Central Liquidity Facility, 18 U.S.C. §709
• CIA (see Central Intelligence Agency)
• Citius Altius Fortius (see Olympic)
• Civil Air Patrol, 36 U.S.C. §40306
• CMS (see Social Security)
• Coast Guard [and other names], 14 U.S.C. §639
• Commodity Credit Corporation, 15 U.S.C. §714m
• DEA (see Drug Enforcement Administration)
• Department of Housing & Urban Development [and other names],18 U.S.C. §709
• Disabled American Veterans, 36 U.S.C. §50305
• Drug Enforcement Administration, 18 U.S.C. §709
• Fastener Quality Act, 15 U.S.C. §§5401 et seq.
• FFA (see Future Farmers of America)
• The Foundation of the Federal Bar Association, 36 U.S.C. §70506
• 4-H Club [also specific reference to emblem consisting of a green four-leaf clover with stem and the letter H in white or gold on each leaflet], 18 U.S.C. §707
• F.B.I. (see Federal Bureau of Investigation)
• Federal Bureau of Investigation, 18 U.S.C. §709
• Federal Deposit Insurance Corporation [and other names], 18 U.S.C. §709
• Federal Home Loan Mortgage Corporation, 12 U.S.C. §1457
• Future Farmers of America, 36 U.S.C. §70907
• Geneva Cross (see Red Cross)
• Girl Scouts of America, 36 U.S.C. §80305
• Give a Hoot, Don’t Pollute (see Woodsy Owl)
• The Golden Eagle [also specific reference to insignia of an American Golden Eagle (colored gold) and a family group (colored midnight blue) enclosed within a circle (colored white with a midnight blue border)], 18 U.S.C. §715
• Government National Mortgage Association, 12 U.S.C. §1723a; 18 U.S.C. §709
• HUD (See Department of Housing & Urban Development)
• United States Olympic Committee (see Olympic)
• Now “CMS”
• Now “Centers for Medicare and Medicaid Services Ladies of the Grand Army of the Republic, 36 U.S.C. §130106
• Life Saving Service (see Coast Guard),
• Lighthouse Service (see Coast Guard),
• Little League; Little Leaguer, 36 U.S.C. §130506
• Marine Corps, 10 U.S.C. §7881
• Medicaid (see Social Security)
• Medicare (see Social Security)
• The Military Chaplains Association of the United States of America, 36 U.S.C. §140304
• NASA (see National Aeronautics and Space Administration)
• National Aeronautics and Space Administration [also flags, logo, seal], 42 U.S.C. §2459b; 14 C.F.R. §§1221.101, 1221.107
• National Conference of State Societies, Washington, District of Columbia, 36 U.S.C. §150507
• National Conference on Citizenship, 36 U.S.C. §150707
• National Credit Union [and other names and acronyms], 18 U.S.C. §709
• National Music Council, 36 U.S.C. §152306
• National Safety Council, 36 U.S.C. §152506
• National Society, Daughters of the American Colonists, 36 U.S.C. §152907
• National Society of the Daughters of the American Revolution, 36 U.S.C. §153104
• National Women’s Relief Corps, Auxiliary of the Grand Army of the Republic, 36 U.S.C. §153706
• Naval Sea Cadet Corps, 36 U.S.C. §154106,
• NCOA (see Non Commissioned Officers Association of the United States of America)
• Non Commissioned Officers Association of the United States of America [and other names], 36 U.S.C. §154707
• Olympiad (see Olympic)
• Olympic [and other names] [also specific reference to (1) the symbol of the International Olympic Committee, consisting of five interlocking rings, and (2) the emblem consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with five interlocked rings displayed on the chief], 36 U.S.C. §220506
• OPIC (see Overseas Private Investment)
• Overseas Private Investment, 18 U.S.C. §709
• Paralyzed Veterans of America, 36 U.S.C. §170105
• Pearl Harbor Survivors Association, 36 U.S.C. §170307
• Peace Corps, 22 U.S.C. §2518
• Red Crescent emblem, or the designation “Red Crescent,” 18 U.S.C. §706a
• Red Cross [and other names] [also specific reference to the emblem of the Greek red cross on a white ground], 18 U.S.C. § 706
• Reserve Officers Association of the United States, 36 U.S.C. §190106
• SSA (see Social Security)
• Secret Service [and other names], 18 U.S.C. §709
• Smokey Bear, 18 U.S.C. §711; 16 U.S.C. §580p; 36 C.F.R. §261.22
• Social Security [and other names, symbols and emblems], 42 U.S.C. §1320b-10
• Sons of Union Veterans of the Civil War, 36 U.S.C. §200306
• Swiss Confederation [with specific reference to the coat of arms, consisting of an upright white cross with equal arms and lines on a red ground], 18 U.S.C. §708
• Third Protocol Emblem, 18 U.S.C. §706a
• U.D. (see Secret Service)
• USCG (see Coast Guard)
• USCGR (see Coast Guard)
• USMC (see Marine Corps)
• USO (see United Service Organizations, Incorporated)
• U.S.S.S. (see Secret Service)
• United Service Organizations, Incorporated, 36 U.S.C. §220106
• United States Capitol Historical Society, 36 U.S.C. §220306
• United States Mint, 18 U.S.C. §709
• United States Railway Association, 45 U.S.C. §711
• United States Coast Guard (see Coast Guard)
• United States Olympic Committee (see Olympic)
• 369th Veterans Association, 36 U.S.C. §210307
• Veterans of Foreign Wars of the United States, 36 U.S.C. §230105
• Veterans of World War I of the United States of America, Incorporated, 36 U.S.C. §230306
• Vietnam Veterans of America [and other names], 36 U.S.C. §230507
• Woodsy Owl, 18 U.S.C. §711a, 16 U.S.C. §580p; 36 C.F.R. §261.22

Joint applicants also enjoy rights of ownership to the same extent as any other “person” who has a proprietary interest in a mark. Therefore, joint applicants may license others to use a mark and, by exercising sufficient control and supervision of the nature and quality of the goods or services to which the mark is applied, the joint applicants/licensors may claim the benefits of the use by the related company/licensee.

In all franchise and license situations, the key to ownership is the nature and extent of the control by the applicant over the goods or services to which the mark is applied. A trademark owner who fails to exercise sufficient control over licensees or franchisees may be found to have abandoned its rights in the mark.

It has been held that offering services via the Internet constitutes use in interstate commerce because the services are available to national and international consumers who must use interstate telephone lines to access a website. Very few businesses thrive today without a website and the costs to start a website can be a minimal investment. Other examples that have been deemed to have use in interstate commerce include restaurants, automotive repair shops, and hotels with only one location within a state because they service out of state patrons and people who are using federal highways. Likewise, retail shops that send catalogs out of state and companies that advertise in national magazines or in multiple states despite only having one location have been held to have use in interstate commerce.

It has been held that offering services via the Internet constitutes use in interstate commerce because the services are available to national and international consumers who must use interstate telephone lines to access a website. Very few businesses thrive today without a website and the costs to start a website can be a minimal investment. Other examples that have been deemed to have use in interstate commerce include restaurants, automotive repair shops, and hotels with only one location within a state because they service out of state patrons and people who are using federal highways. Likewise, retail shops that send catalogs out of state and companies that advertise in national magazines or in multiple states despite only having one location have been held to have use in interstate commerce.

The moral or this blog is do not limit yourself to a Florida state trademark registration before you speak to a qualified trademark attorney who can help you evaluate whether your use will likely constitute use in interstate commerce and therefore make your mark eligible for federal trademark protection.

The mark consists of the configuration of a blue, red, white, and green fuel dispenser with the word “MOBIL” where the letters are displayed in blue except for the “O” which is displayed in red on a white background positioned at the top of the dispenser, the color blue displayed in the middle and bottom portions of the dispenser with the word “REGULAR” displayed in white on a green background, the word “SPECIAL” displayed in white on a red background, and the word “SUPER +” displayed in white on a blue background. A red flying horse in a white circle with white shading and stripes indicating motion is displayed on a blue background positioned on the lower portion of the fuel dispenser. The other matter shown in broken lines in the drawing demonstrates the positioning of the mark only and is not claimed as a feature of the mark.
The mark claims the colors blue, red, white, green as a feature of the mark. The mark also claims the words MOBIL SPECIAL SUPER +, but disclaims the exclusive right to use the word REGULAR; a sigh from its competitors!

It appears it took so long for the application to be approved for publication because Mobil’s drawing did not look the same as its specimen and therefore several amendments to the drawing were made. In any event, assuming no one feels they will be damaged by the registration of Mobil’s gas pump tradedress, the registration will register in due course. So next time you are at the pump you will likely be able to lean over to your fellow patron with some trademark trivia regarding the tradedress of the Mobil gas pumps. Unfortunately no one is usually that excited unless you happen to run into a trademark attorney!

When deciding whether a trademark is primarily merely a surname, the inquiry depends on the primary, not secondary, significance to the purchasing public. There are five factors, which are analyzed by the Trademark Examiners at the USPTO to determine whether the trademark is primarily merely a surname; the factors are:

(1) whether the surname is rare; This is an important factor and typically the rarer the surname the more likely the trademark will not be considered primarily merely a surname, but of course, the case law goes both ways and you may have to argue this factor. In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (the relatively rare surname HACKLER held not primarily merely a surname, in light of dictionary meaning); but see, In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1368 (TTAB 1987) (N. PIQUET (stylized) held primarily merely a surname despite significance of the term “piquet” as “the name of a relatively obscure card game”).

(2) whether the term is the surname of anyone connected with the applicant; kind of a dead giveaway that the mark is a surname but that in and of itself does not mean registration should be refused.

(3) whether the term has any recognized meaning other than as a surname; If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. If the surname appears in the dictionary, such as King or Cotton, that is usually a strong indicator that the name is NOT primarily merely a surname, and therefore the trademark should be allowed registration on the Principal Register without a showing of acquired distinctiveness.

(4) whether it has the “look and feel” of a surname; I have to admit I have successfully prosecuted hundreds of trademark applications before the USPTO and this factor still makes me say huh? How exactly does a surname “feel” — just curious. If you have ever felt one before please reply to this blog and let me know. In any event, this is exactly what the Trademark Examiners consider:

“Some names, by their very nature, have only surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (PIRELLI held primarily merely a surname, the Board stating that “certain rare surnames look like surnames and certain rare surnames do not and … ‘PIRELLI’ falls into the former category….”); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (PETRIN held primarily merely a surname). Conversely, certain surnames are so rare that they do not even have the appearance of surnames. In such cases, even in the absence of non-surname significance, a reasonable application of the “primary significance to the purchasing public” test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. “Baik,” 84 USPQ2d 1921 (TTAB 2007) (lack of other recognized meaning does not in itself imbue a mark with the “look and feel” of a surname).”

(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. (This factor is not relevant if the mark applied for is in standard characters without any design element or a claim to a particular font).

If you have read this blog and you think your surname may be primarily merely a surname you still may be able to register your trademark on the Supplemental Register, which again will have to be the subject matter of another blog, or feel free to contact my office if you are looking for a Florida trademark attorney and we can discuss it further.

So what do you do to protect your mark? If your use qualifies, you should file a federal trademark application. A qualified trademark attorney can help you determine whether your use qualifies for federal protection. A federal trademark registration provides its owner with nationwide priority. Federal trademarks, State trademark, or trade name registrations cannot override the rights provided by federal trademark law. When state trademark law conflicts with federal trademark law, the U.S. Constitution provides that federal law preempts state law. In fact, state registration does not even guarantee a person the right to use the name or mark throughout the state. Federal law provides that a state registrant may use a name only in the limited geographic area where continuous use had been established prior to the date of the competing federal registration.