Two Common Trademark Issues

When counseling clients wanting to register trademarks, we evaluate the likelihood an application for registration of the mark will succeed and counsel the client accordingly.  One of the issues that often arises in our analysis occurs when a mark is to be used in one way but, while there is no exact use of the mark, there is a registration for the same mark used with a related good or in a related field.  Here, we need explain to the client the mark may not be registrable for the intended use because the mark is already registered for use with a different but related offering.  This is difficult to explain to a client who strongly wants to use the mark on a different offering.  Two recent appeals offer examples of the same mark used in a different way that block the registration because the mark is to be used in a related area.

In one appeal, the refusal of an application for THE CAIRN for “Spirits and liqueurs; whisky and whisky-based liqueurs” in view of a registration for CAIRN BREWING for “beer” [BREWING disclaimed] and a CAIRN BREWING design registration for “taproom services featuring craft beer” was upheld.  In another appeal, the refusal of an application for WAKE-UP CALL for “Dietary supplements; Nutritional supplements” in view of WAKE UP CALL for “Skin care products, namely, non-medicated skin serum” was upheld.

Another issue that arises when evaluating a potential new trademark application is with the use of a name that may be considered a well-known family name, or, in trademark vernacular, whether the name is primarily a surname.  A recent appeal upheld the refusal to register THE HARRIMAN HOTEL for, in sum, hotel, real estate, and health spa services, finding the mark to be primarily merely a surname. Even though the applicant provided evidence that the Office had registered the names of hotels bearing surnames more popular than Harriman, the refusal was affirmed.

Mark Goldstein, partner at SoCal IP Law Group LLP, will lead a discussion of these decisions at our SoCal IP Institute meeting on March 27, 2023 at noon.

The decisions are available at the following links.

THE CAIRN: Speymalt Whiskey Distributors Ltd, Serial No. 79296030 (March 16, 2023)

WAKE-UP CALL: Better Life Nutritional Supplements, LLC, Serial No. 90389844 (March 13, 2023)

In re Harriman Hotel, LLC, Serial No. 90096825 (March 22, 2023)