Non-Final Action Mailed Domain Registration

Discussion in 'Legal Discussion' started by headsupp, May 19, 2017.


  1. headsupp

    headsupp Active Member PRO

    Jan 15, 2008
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    I am looking to purchase a domain name and I was wondering if a trademark that has a non-final action mailed after being just recently being filed for is enforceable. Since issue where filed with the trademark is the trademark enforceable of the first date of filing or the date the issues get resolved via the non final action?
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

    Aug 4, 2004
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    You are asking the wrong question entirely.

    Let's break this down, from "Berryhill's big bag of things domainers consistently don't understand about trademarks and trademark registrations"....

    A trademark does not have "a non-final action mailed". A trademark is either a trademark, or it is not a trademark. In the US, one doesn't have to file anything with anyone in order to have a trademark.

    This is like asking "if the dog license office rejects my payment for a dog license, then do I have a dog?"

    You have a dog whether your dog is registered and licensed or not. You obtain a dog by acquiring a four-legged shaggy creature which sh*ts on the carpet and chews up your clothing. IF you want to obtain certain legal privileges for you and your dog, THEN you go and apply for a license to own your dog, if you live in a jurisdiction which requires such things.

    It is the same thing whether we are talking about a dog, an automobile, or a trademark. If I own an automobile, but do not register my automobile, then I can't, for example, drive it on public roads, but I can still run your ass over with it, if I choose to do so.

    So, first, get this notion out of your head that registration with the USPTO is some kind of requirement for having a trademark in the first place.

    You "get a trademark" in the US by offering goods or services in commerce which can be distinctively identified in the relevant marketplace for those goods and services from those of your competitors in that marketplace. Once you have a trademark, you may apply for federal registration of that mark by filing an application with the USPTO and declaring that your trademark is used in interstate commerce in the United States. If your application is granted on the Principal Register, then you are (a) entitled to sue in federal court instead of state court, and the registration will be prima facie evidence of the ownership and distinctiveness of the mark, (b) entitled to enforce your mark anywhere in the US, and (c) entitled to a presumption that the defendant knows or should know that you have a mark. That's what trademark registration buys you. The USPTO does not "grant trademarks". You either have one or not. The USPTO REGISTERS trademarks. The USPTO also registers some other things, which domainers typically likewise don't understand (e.g. the Supplemental Register), which is why questions about "I saw something in the USPTO, and..." typically drive me bananas. Because, as here, it is just not a relevant question to what you need to know.

    That would be a use-based application under Section 1(a) of the Lanham Act, and if you point your nose at the record you are looking at, it may, or may not, say "filing basis: 1(a)".

    Another route to obtaining a trademark registration is that you are planning to use a mark in the near future, so rather than waiting to begin actual use, you can file an intent-to-use application under Section 1(b). Again, the thing you are looking at in the database will say "1(b)" if it is that type of application. HOWEVER, if you file an intent-to-use application, the USPTO will examine the application, decide if it is capable of distinguishing the goods/services and a few other things, and even if the USPTO grants the application, it will just sit there. To proceed to registration of an intent-to-use application, you still have to come back to the USPTO with a specimen of use and a declaration that you are using the mark.

    Finally, there are some other things that might be noted under "filing basis" such as various parts of "Section 44". Those are US applications which are given certain treaty benefits because they are based on trademarks registered in other countries with whom the US has a relevant treaty.

    But the bottom line on all of that is that it appears you are trying to figure out if they have a trademark or not. The question you are asking is totally unrelated to what you are trying to figure out.

    You can get some clues from the data in the USPTO database. For example, if it is a 1(a), then what is their alleged date of first use? Can you conjur up their stuff by, for example, doing a Google search on their mark and those goods/services to find it actually being used?

    Another clue is that, again looking at your screen, is a button labeled "TSDR" which will take you to a tabbed menu of a bunch of stuff. One of those tabs is labeled "Documents". If you click on that tab, you will be able to read the actual non-final action in question. What kind of an action is it? Was the mark refused on the basis of descriptiveness or genericness? Was it refused on the basis of confusing similarity with another mark? Or was it one of the umpteen other grounds of refusal. Reading the action will give you an important clue as to whether or not their application might eventually be successful. They have six months to come up with a response. Maybe they will succeed, maybe not.

    The USPTO is not a magic eight ball with answers to all of the questions in the universe. It can provide useful information, but it alone is not going to provide an answer to what it is you are trying to figure out.

    What's more important to you, is "do they have a trademark and, if so, what kind of a trademark is it?" For example is it:

    1. Fanciful - a totally made-up word like "Xerox" which has no other meaning than as a reference to the mark itself.

    2. Arbitrary - a word which, indeed, is a word, but is arbitrarily applied to things to which the word does not apply - e.g. "APPLE" computers, or "RED BULL" beverages.

    3. Suggestive - a word which hints at what the product might be, but requires a bit of imagination to get from the word to the actual goods/services - e.g. "FRESH STEP" cat litter or "ARMOR ALL" plastic cleaner.

    4. Descriptive - a mark that actually describes the goods/services, but has been in longstanding exclusive use by the mark owner such that it has acquired distinctiveness - e.g. "AMERICAN AIRLINES" for an American airline, or "COCA-COLA" for a drink combining coca and cola extracts.

    5. Generic - generic words are not marks. Unlike descriptive marks, which can be marks upon establishing acquired distinctiveness, generic terms are not going to graduate to being a mark. Ever. These are things like "FLOOR WAX" for floor wax or "DOG FOOD" for dog food.

    The questions of "are they using this as a mark" and "what kind of a mark is it", are much more important than "what does it mean if there is a non-final action in their application to register a mark".
    Last edited: May 19, 2017
  3. headsupp

    headsupp Active Member PRO

    Jan 15, 2008
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    Great insight and highly appreciated.

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