Wednesday, October 08, 2008

USPTO Trademark Practice: The USPTO Brush-back

Subject: USPTO Trademark Practice: The USPTO Brush-back

Definition: "The USPTO Brush-back": Commonplace or typical USPTO grounds for the refusal of an application based on statutory and case law. Origin: The brushback pitch in baseball is an aggressive pitch on the inside of the plate facing the batter intended as a means for the pitcher to regain control of the inside corners of the plate. This term has been adopted and hyphenated to refer to the USPTO office practice of refusing trademarks that stretch beyond the parameters of the USPTO Rules of Practice, including but not limited to, the Lanham Act, the TMEP, TTAB rulings, etc.

Example: This term was first used in our last post on this blog in discussing the USPTO response to the filing of an otherwise merely "laudatory" trademark in an application for "THE BEST BURGER IN L.A.". For instance, in paragraph 1 of this earlier referenced blog post, this term of art was incorporated as follows: "1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely 'laudatory'." Additionally, in paragraph 2, "... And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term..."

Thus, the term "brush-back" applies to grounds for refusal as well as technical requirements such as 'disclaimers' or recommendations for transfers to the supplemental register, etc. Such brush-backs are a common part of USPTO Trademark Practice. Some are well reasoned and some are not. On some occasions antiquated refusals are issued based on case law that is ambiguous and not compulsory. For instance, in the apparel field the refusal basis as to a specimen being merely 'ornamental' continues to be played out by the USPTO and Applicants. To avoid this costly and often unreasonable expense to an Applicant having to pay their attorney to traverse or overcome such a refusal, it is always recommended that an Applicant provide a sample clothing label or hang-tag that features the trademark in view of the USPTO's near-sighted position on, for example, silk-screened reproductions of the trademark directly on the garment.

In this regard, a USPTO brush-back refusal based on an apparel specimen being rejected as merely "ornamental" and thus not legitimate trademark use seems to even be supported by the TMEP at:

"Sec. 1202.03(f)(i) Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (“DAMN I’M GOOD,” inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (“SUMO,” as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (“YOU ARE SPECIAL TODAY” for ceramic plates found to be without any source-indicating significance)."

Such a brush-back, however, may be overcome citing other principles and case law, including both Federal Court decisions, as well as those of the TTAB.

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