Overcoming ‘Impossible’ Trademark Office Actions in North America

Published: May 19, 2021

Hannah Lutz Lathrop GPM LLP Minneapolis, Minnesota, USA

Tamara Winegust Bereskin & Parr LLP Toronto, Ontario, Canada Emerging Issues Committee

How can practitioners maximize chances of success in overcoming “impossible” Trademark Office actions? INTA’s Young Practitioners Committee hosted a virtual discussion in April to canvass strategies for analyzing and responding to tricky refusals in Canada and the United States. Their focus: consent letters/coexistence agreements and distinctiveness objections.

The panel consisted of Christie Bates (Cassels Brock & Blackwell LLP, Canada) as moderator, and panelists David Bowden (Clark Wilson LLP, Canada), Wynnie Chan (Bereskin & Parr LLP, Canada), and Dana Dickson (Dana Dickson Law, USA).

According to the panelists, the first step in overcoming impossible office actions is to develop a deep understanding of the legal standard for each refusal, including Trademark Office regulations and guidance. They discussed strategies for when and how to discuss refusals with Trademark Office examiners, and agreed such calls should be purposeful, well-organized, and pleasant in tone.

In providing practical suggestions for overcoming two of the most difficult grounds for refusal, likelihood of confusion and lack of distinctiveness, the panelists noted the divergence between U.S. and Canadian examiner attitudes toward consent letters/coexistence agreements, and distinctiveness objections.

On the issue of consent letters and coexistence agreements, Ms. Chan and Mr. Bowden agreed that, while they can be filed in Canada, the Canadian examination practice does not afford much weight to these types of inter-party agreements. Recent case law developments, and an emphasis on the public interest nature of trademarks in Canada, has led the Office to generally treat such letters as one factor among many in considering the likelihood of confusion in all the surrounding circumstances.

To be persuasive, coexistence agreements should contain precise details about the coexistence (the Canadian Trademarks Examination Manual lists the different types of relevant information) and the general circumstances should already show that confusion is unlikely. Therefore, Mr. Bowden suggested that, if the existing consent or coexistence agreement is not sufficiently detailed, it may be worthwhile to simply forgo filing the agreement in favor of arguments that the general surrounding circumstances show no likely confusion (which would need to be filed to overcome the objection in any event).

In contrast, in the United States, Ms. Dickson noted that many examiners welcome letters of consent. While U.S. examiners are often willing to give weight to these letters in assessing whether to reverse a refusal, she emphasized that letters of consent are still subject to scrutiny. A brief declaration that the cited registrant consents to registration will be considered an unpersuasive “naked consent.” The letter must include a reasoned assessment of the marketplace and of the likelihood (or rather unlikelihood) of confusion, as well as assurances that the parties will take steps to prevent confusion should it arise.

Concerning distinctiveness objections, the Canadian panelists addressed the recently implemented “not inherently distinctive” objection in Canada. Ms. Chan noted such objections are raised based on the examiner’s preliminary view of the mark’s distinctiveness. Evidence of acquired distinctiveness can be filed. However, it can be onerous and expensive to compile; such evidence needs to speak to acquired distinctiveness across Canada, which can require information about sales and advertising for several years prior to the Canadian filing date.

A better initial strategy could be to argue that the examiner’s “preliminary view” was misguided, and the mark possesses some degree of distinctiveness. For example, Ms. Chan suggested highlighting the difference between “no” and “low” levels of distinctiveness. The Canadian Trademarks Examination Manual sets out the types of marks that the Office typically views as lacking inherent distinctiveness (such as one or two letter/number marks, laudatory words, and phone numbers). If the objection is only raised against some of the goods or services, a divisional application may also be appropriate.

From a U.S. perspective, Ms. Dickson underscored the importance of understanding a client’s needs and goals when developing a strategy for responding to a distinctiveness refusal. The U.S. allows registration of descriptive marks lacking distinctiveness on the Supplemental Register. While the Supplemental Register lacks some of the benefits of the Principal Register, some clients may be pleased to obtain a U.S. registration on the Supplemental Register, as registration here still provides valuable benefits. For other clients, this type of registration may defeat their ultimate purpose for applying. For example, the Amazon Brand Registry does not accept Supplemental Register registrations as a basis for enrolling in the program.

Understanding the client’s goals can help to shape response strategy.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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