Accepting a 2(f) Registration

We have all been there. The Examiner has rejected your client's application to register a mark under ' 2(e). Assuming that it will take approximately five hours of lawyer time (including research to find the most-compelling cases to counter the Examiner's argument) and two hours of paralegal time, this exercise is going to cost the client at least $3,000. Then when you consider the time you will spend explaining the issue and the pros and cons, well, the cost is more likely closer to $5,000. Of course, you cannot even promise the client it is going to win, though if you do lose you know that your chances on appeal to the TTAB on this issue are slim.

These factors naturally push an attorney to consider offering to accept a 2(f) amendment. If the mark has been in use for a while, you may even be able to get this done via a telephone amendment. Who would not want to save the client more than $3,000 in fees, not to mention the embarrassment of predicting you will be able to overcome the examiner's argument only to have to explain later that all litigation is risky and the other time-honored consolations muttered by the losing attorney for years. And, realistically, the truth is that most registered trademarks are never enforced, so there is a good chance that the whole question of whether the 2(f) notation has any meaning will never come up, at least not until you are long gone.

Reasons to Fight Hard

Notwithstanding the ready appeal of this approach, there are, in fact, some very important reasons that a client and counsel who sincerely believe that the subject mark is not descriptive should fight hard to prove that fact to the examining attorney.

First, under ' 1212.02(b) of the TMEP, the claim of acquired distinctiveness, once entered on the certificate of registration, is an admission that the mark is not inherently distinctive. Remember, that one of the most important Polaroid factors is the strength of the mark. Savvy trademark lawyers know that strength can refer to two things: conceptual strength and market strength. Unfortunately, this distinction sometime gets lost in the case law, and a good lawyer can always find cases suggesting that the fact that a mark is conceptually weak makes it a “weak” mark. For instance, in Pocono Int'l Raceway Inc. v. Pocono Mountain Speedway Inc., the court analyzed a well-known racetrack's geographically descriptive marks POCONO RACEWAY and POCONO, deeming them simultaneously conceptually weak and commercially strong. See 171 F.Supp.2d 427 (M.D. Penn. 2001). Despite ruling in favor of the marks, the court ultimately held that “the combination of these two inquiries (conceptual and commercial strength) results in a mark strength somewhere between strong and weak.” Id. at 435. Not surprisingly, the owner of this “not strong” mark was denied an injunction, thereby illustrating how the determination of conceptual strength can undermine future enforcement efforts.

This result should not surprise the seasoned trademark lawyer. Weak marks have far more narrow zones of protection than stronger marks, while strong marks are presumed to have much more protection power. A recent survey of all trademark cases found data to support “the trademark lawyer's common advice to her clients that, at least as a matter of trademark law, if not of marketing, firms should choose inherently distinctive marks and, ideally, marks that are fanciful.” Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Cal. L. Rev. 1581, 1638 (2006). Thus, it is not surprising that this empirical review of all published decisions over a 20-year period found that marks deemed inherently distinctive are much more likely to prevail in an infringement suit.” Id. at 1639.

The classification of a mark as inherently distinctive or not was for several years also used as a bright line separating those marks that were entitled to bring federal dilution claims from those that were not. See TCPIP Holding Co. v. Haar Commc'ns Inc., 244 F.3d 88, 98 (2nd Cir. 2001). Of course, that ruling was overturned by the most recent amendment to the Federal Trademark Dilution Act, 15 U.S.C.A. 1125(c)(1). But who knows when a similar bright-line rule might be adopted in some other context. In fact, it appears that Google will not enforce its takedown policy with respect to key words if it believes the mark at issue is not inherently distinctive. See What Is Google's U.S. Trademark Policy?, http://ad words.google.com/support/aw/bin/answer.py?answer=145626 (“In the U.S., our policy permits use of the trademark in the ad text in the following circumstances: Ads which use the term in a descriptive or generic way, and not in reference to the trademark owner or the goods or services corresponding to the trademark term.”) (last visited Sept. 25, 2009).

Others argue that whatever limitations there are disappear after the registrant files an affidavit of incontestability. After all, once that affidavit is on file your mark is no longer subject to attack as being descriptive without secondary meaning. That argument misses the point. The defendant can still argue that the zone of protection for your mark depends on your establishment of secondary meaning for any products or services not within the four corners of the recitation of goods/services in the registration. A similar question was recently considered in Victoria's Secret Brand Management v. Sexy Hair Concepts, 2009 WL 959775 (S.D.N.Y. 2009), which found that the scope of protection to be afforded a particular mark was not limited by the fact that the mark had obtained incontestable status under the Lanham Act. In this case, Victoria's Secret sought to overturn a TTAB ruling upholding Sexy Hair Care's opposition to Victoria's Secret's registration of SO SEXY for use in connection with hair-care products. In its discussion of whether the term “sexy” in SO SEXY should be analyzed as a descriptive term, the court held that Sexy Hair Care's incontestable registration status was irrelevant to the determination and treated descriptiveness as a major factor in determining what protection to afford the mark. Victoria's Secret 2009 WL 959775 at *9 (“[M]ost critically, the ownership of an incontestable [sic] registration for the mark SEXY HAIR is irrelevant to whether individuals hearing the term “sexy” are likely to perceive it as a descriptive term '”).

Conclusion

Bottom line: There are many ways that accepting a 2(f) notation can come back and haunt you once litigation has commenced.

In the end, however, the most compelling reasons to fight the 2(f) battle are to avoid the headaches and additional costs your client will incur every time you seek to enforce your client's rights in any area outside the four corners of the recited goods/services. The infringer is going to demand evidence of your acquired distinctiveness with those goods. You will reject that argument, but it takes time, money, and possibly the willingness to go to court to fight this battle at least a couple of times so your client can point to some consent judgments (or better) in its favor.

When you consider the cost of establishing this record of enforcement (which will easily run in excess of $10,000), you will recognize the relative bargain fighting this battle will be with the USPTO.

Of course, this discussion presumes that your client's mark is in fact inherently distinctive and that you have strategies for establishing that fact to the Board. It never makes sense to fight a losing battle. But this is one battle that if you believe your client has a decent shot at winning should be fought.

Stephen W. Feingold, a member of this newsletter's Board of Editors, is a partner in the New York office of Kilpatrick Stockton LLP, where his practice focuses on trademark, copyright, advertising, and Internet matters. He can be reached at [email protected]. He thanks Ashford Tucker, a first-year associate in the firm's New York office, for his assistance in researching some of the issues discussed herein.

We have all been there. The Examiner has rejected your client's application to register a mark under ' 2(e). Assuming that it will take approximately five hours of lawyer time (including research to find the most-compelling cases to counter the Examiner's argument) and two hours of paralegal time, this exercise is going to cost the client at least $3,000. Then when you consider the time you will spend explaining the issue and the pros and cons, well, the cost is more likely closer to $5,000. Of course, you cannot even promise the client it is going to win, though if you do lose you know that your chances on appeal to the TTAB on this issue are slim.

These factors naturally push an attorney to consider offering to accept a 2(f) amendment. If the mark has been in use for a while, you may even be able to get this done via a telephone amendment. Who would not want to save the client more than $3,000 in fees, not to mention the embarrassment of predicting you will be able to overcome the examiner's argument only to have to explain later that all litigation is risky and the other time-honored consolations muttered by the losing attorney for years. And, realistically, the truth is that most registered trademarks are never enforced, so there is a good chance that the whole question of whether the 2(f) notation has any meaning will never come up, at least not until you are long gone.

Reasons to Fight Hard

Notwithstanding the ready appeal of this approach, there are, in fact, some very important reasons that a client and counsel who sincerely believe that the subject mark is not descriptive should fight hard to prove that fact to the examining attorney.

First, under ' 1212.02(b) of the TMEP, the claim of acquired distinctiveness, once entered on the certificate of registration, is an admission that the mark is not inherently distinctive. Remember, that one of the most important Polaroid factors is the strength of the mark. Savvy trademark lawyers know that strength can refer to two things: conceptual strength and market strength. Unfortunately, this distinction sometime gets lost in the case law, and a good lawyer can always find cases suggesting that the fact that a mark is conceptually weak makes it a “weak” mark. For instance, in Pocono Int'l Raceway Inc. v. Pocono Mountain Speedway Inc., the court analyzed a well-known racetrack's geographically descriptive marks POCONO RACEWAY and POCONO, deeming them simultaneously conceptually weak and commercially strong. See 171 F.Supp.2d 427 (M.D. Penn. 2001). Despite ruling in favor of the marks, the court ultimately held that “the combination of these two inquiries (conceptual and commercial strength) results in a mark strength somewhere between strong and weak.” Id. at 435. Not surprisingly, the owner of this “not strong” mark was denied an injunction, thereby illustrating how the determination of conceptual strength can undermine future enforcement efforts.

This result should not surprise the seasoned trademark lawyer. Weak marks have far more narrow zones of protection than stronger marks, while strong marks are presumed to have much more protection power. A recent survey of all trademark cases found data to support “the trademark lawyer's common advice to her clients that, at least as a matter of trademark law, if not of marketing, firms should choose inherently distinctive marks and, ideally, marks that are fanciful.” Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Cal. L. Rev. 1581, 1638 (2006). Thus, it is not surprising that this empirical review of all published decisions over a 20-year period found that marks deemed inherently distinctive are much more likely to prevail in an infringement suit.” Id. at 1639.

The classification of a mark as inherently distinctive or not was for several years also used as a bright line separating those marks that were entitled to bring federal dilution claims from those that were not. See TCPIP Holding Co. v. Haar Commc'ns Inc. , 244 F.3d 88, 98 (2nd Cir. 2001). Of course, that ruling was overturned by the most recent amendment to the Federal Trademark Dilution Act, 15 U.S.C.A. 1125(c)(1). But who knows when a similar bright-line rule might be adopted in some other context. In fact, it appears that Google will not enforce its takedown policy with respect to key words if it believes the mark at issue is not inherently distinctive. See What Is Google's U.S. Trademark Policy?, http://ad words.google.com/support/aw/bin/answer.py?answer=145626 (“In the U.S., our policy permits use of the trademark in the ad text in the following circumstances: Ads which use the term in a descriptive or generic way, and not in reference to the trademark owner or the goods or services corresponding to the trademark term.”) (last visited Sept. 25, 2009).

Others argue that whatever limitations there are disappear after the registrant files an affidavit of incontestability. After all, once that affidavit is on file your mark is no longer subject to attack as being descriptive without secondary meaning. That argument misses the point. The defendant can still argue that the zone of protection for your mark depends on your establishment of secondary meaning for any products or services not within the four corners of the recitation of goods/services in the registration. A similar question was recently considered in Victoria's Secret Brand Management v. Sexy Hair Concepts, 2009 WL 959775 (S.D.N.Y. 2009), which found that the scope of protection to be afforded a particular mark was not limited by the fact that the mark had obtained incontestable status under the Lanham Act. In this case, Victoria's Secret sought to overturn a TTAB ruling upholding Sexy Hair Care's opposition to Victoria's Secret's registration of SO SEXY for use in connection with hair-care products. In its discussion of whether the term “sexy” in SO SEXY should be analyzed as a descriptive term, the court held that Sexy Hair Care's incontestable registration status was irrelevant to the determination and treated descriptiveness as a major factor in determining what protection to afford the mark. Victoria's Secret 2009 WL 959775 at *9 (“[M]ost critically, the ownership of an incontestable [sic] registration for the mark SEXY HAIR is irrelevant to whether individuals hearing the term “sexy” are likely to perceive it as a descriptive term '”).

Conclusion

Bottom line: There are many ways that accepting a 2(f) notation can come back and haunt you once litigation has commenced.

In the end, however, the most compelling reasons to fight the 2(f) battle are to avoid the headaches and additional costs your client will incur every time you seek to enforce your client's rights in any area outside the four corners of the recited goods/services. The infringer is going to demand evidence of your acquired distinctiveness with those goods. You will reject that argument, but it takes time, money, and possibly the willingness to go to court to fight this battle at least a couple of times so your client can point to some consent judgments (or better) in its favor.

When you consider the cost of establishing this record of enforcement (which will easily run in excess of $10,000), you will recognize the relative bargain fighting this battle will be with the USPTO.

Of course, this discussion presumes that your client's mark is in fact inherently distinctive and that you have strategies for establishing that fact to the Board. It never makes sense to fight a losing battle. But this is one battle that if you believe your client has a decent shot at winning should be fought.

Stephen W. Feingold, a member of this newsletter's Board of Editors, is a partner in the New York office of Kilpatrick Stockton LLP, where his practice focuses on trademark, copyright, advertising, and Internet matters. He can be reached at [email protected]. He thanks Ashford Tucker, a first-year associate in the firm's New York office, for his assistance in researching some of the issues discussed herein.