Friday, February 16, 2024

Trade Name Use is not Trademark Use, Says TTAB

The Board affirmed a refusal to register the proposed mark EXPERIMENTAL AND APPLIED SCIENCES for “Dietary and nutritional supplements” on the ground that the mark is used solely as a trade name to identify applicant's business and therefore is not registrable. In re Hi-Tech Pharmaceuticals, Inc., Serial No. 88291540 (February 14, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

A “trade name” is defined in Section 45 of the Trademark Act as “any name used by a person to identify his or her business or vocation.” 15 U.S.C. § 11. "A designation used merely as a trade name cannot be registered under the provisions of the Trademark Act." See, e.g., In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985).

A designation may function as both a trade name and a trademark. “The distinction between trade name use and either trademark or service mark use is often a difficult one to make and often is nebulous in character.” In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 167 (TTAB 1976).

Factors to consider include whether Applicant has used its full corporate name or entity designation, capitalized its name, utilized its name in the same lettering style as other matter, used its name in a significantly bolder or larger style of type, or displayed its name in a contrasting color. In re Univar Corp.,20 USPQ2d 1865, 1869 (TTAB 1991); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1202.01 (Nov. 2023) and cases cited therein.

Each of applicant's specimens showed the mark displayed as depicted above, in only one location — on one line of a four-line group, all sharing the same color, identical or at least nearly identical font size and style, and left-hand and right-hand justification.

We agree with the Examining Attorney that “[i]ndeed, applicant would be hard-put to present the term in a less prominent manner.” Because the proposed mark appears in a four-line stack, i.e., with the lines sharing the same left- and right-hand justification, these lines form a visual unit which reinforces the impression that the proposed mark EXPERIMENTAL AND APPLIED SCIENCES should be read in conjunction with the line above it (indicating that the manufacturer is being introduced) and the lines below (providing contact information).

The fact that Applicant does not include a corporate designation, such as “Inc.”, does not detract from its perception as a trade name, particularly where, as here, the designation immediately follows the introduction “Developed and exclusively manufactured by”, which explicitly informs the consumer that what follows is the name of an entity.

The Board therefore found that "Applicant’s designation EXPERIMENTAL AND APPLIED SCIENCES functions solely as a trade name," and so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? Refusal seems as inevitable as a Caitlin Clark three-pointer

Text Copyright John L. Welch 2024.


At 10:00 AM, Anonymous Anonymous said...

The applicant should have filed an "insurance" extension request when it filed the SOU. Then, when the trade-name refusal was issued, the applicant could have modified its labeling to reflect trademark usage and submitted a substitute specimen. The applicant would have achieved a registration and saved money.

At 11:42 AM, Anonymous Steve Zemanick said...

How can a term, whether it's called a trade name or trademark, following the phrase "developed and exclusively manufactured by" not be considered an indicator of source? I think we are off in the bushes on this one.

At 5:25 PM, Anonymous Anonymous said...

Good decision. I remember when I first started practicing long ago and no one could clearly explain to me the difference between a trade name and trademark. It is nice to have a simple decision.

If they had refiled a new application with a proper specimen they would have a registration by now. So far they have not. Curious who pushed this clear loser case forward, the attorney or the client?

At 7:42 AM, Blogger Sylvia Mulholland said...

A consumer should not have to hunt through the fine print on the back of a product label to "find" the trademark.


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