9 March 2018
Trade marks are vital in protecting your intellectual property (IP) no matter how famous or established you are. The process applies to everyone and understanding the reason for this protection and what steps to take should happen in the beginning stages of launching your exciting new service or product.
The purpose of a trade mark is to serve as a “badge of origin” to distinguish one’s goods or services from that of others. An owner of a trade mark enjoys a monopolistic right to preclude others from using their trade mark, or any mark which is considered to be confusingly similar to theirs. However, before applying to register a trade mark, a trade mark availability search should be done to find out whether there are any pre-existing trade marks which could conflict with your potential mark. It also means avoiding any potential disputes relating to your unauthorized use of someone else’s trade mark.
An example of what can happen, Stefani Joanne Angelina Germanotta, American singer and songwriter better known as Lady Gaga, filed trade mark applications for her JOANNE TRATTORIA VINO BIANCO and JOANNE TRATTORIA VINO ROSSO wines with the United States Patents and Trademarks Office (“USPTO”), to cover, inter alia, “Alcoholic beverages, namely, wine …” (“the JOANNE TRATTORIA trade marks”).
The USPTO refused the JOANNE TRATTORIA trade marks on the basis that another company, by the name of Carriage House Imports Ltd (“Carriage House”), had already filed a trade mark for TRATTORIA to cover “wine”. The USPTO suspended Lady Gaga’s JOANNE TRATTORIA trade marks on the basis that Carriage House filed their trade mark before hers and that these trade marks would cause confusion amongst consumers in the marketplace.
This means that Lady Gaga’s JOANNE TRATTORIA trade mark applications remain suspended until Carriage House’s earlier-filed TRATTORIA trade mark application proceeds through to registration or they abandon it. It appears from the USPTO’s electronic register that Carriage House needs to file a Statement of Use with the USPTO before its TRATTORIA trade mark can proceed through to registration.
But all is not lost! Just because a trade mark has been refused does not necessarily mean that you cannot overcome the refusal. There are a number of ways of overcoming refusals of trade marks such as, inter alia, addressing written submissions to the registry in an effort to convince the registry that your trade mark will not create confusion or deception in the marketplace; or approaching the owner of the conflicting/pre-existing trade mark to consent to the use and registration of your trade mark.