Here’s a notable observation we’ve come across while parsing through PTO data used each week to generate our popular 2(d) Citation Watch: Applicant’s frequent use of another’s registered trademark within the identification and classification of goods. Notable examples of this (mal)practice are just about any product by APPLE Inc. (iPhone, iPad,etc.,) and apparently those of HOODIES USA.
Using the example of APPLE, we’ve seen the following notations by the examiner countless times.
The wording “IPHONE” in the identification of goods is a registered mark not owned by applicant. See enclosed registration. In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party. A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant. TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). Therefore, applicant must amend the identification of goods by deleting the wording “IPHONE” and substituting the common commercial or generic name for the goods.
In general, isn’t this a basic tenet of TM-101? Is there sufficient awareness by applicants and their counsel of this restriction within the description of goods?
And here are some stats to back it up. There were approximately 85 applications with the terms IPHONE in the description of Goods, increasing each year since 2007 with the majority appearing in 2010. A similar pattern is now emerging for IPAD. Lastly, there are zero REGISTERED marks with any of those terms in the description of Goods, which shows that the USPTO is consistent in applying the criteria – at least for APPLE Inc.!
Can we conclude that this situation has led to much wastage of time, effort and money by all parties involved, due to the necessity to file, refile, respond to office actions and correct existing applications…not to mention taxing the examiners’ workload and leading to further traffic snarls and backlog along the TM prosecution highway? Is this another measure of APPLE’s success in the marketplace, that it has created this new vernacular that itself is used by others, yet detrimentally so by impacting the timely registrations of these third party trademarks? Do you think they planned it that way?
Lets hope that in 2011 applicants learn this lesson….