On 29th September we published the first part of the “Is it a pumpkin or Jack-O-Lantern“, an interesting publication about design marks. We present to you Part II.
Key Word Searches: But what if the design does not exactly fit into one of the 24 categories? For example, a mark is described as a “jack-o-lantern” but there is not a design code for jack-o-lanterns. It could be described as a pumpkin:
05.09.12 Pumpkins
But if the design is not an actual pumpkin, what other design codes can be used to describe the design? For the purposes of this discussion, two “jack-o-lantern” designs are analyzed.
1) The first design is described as: “a profile view of a jack-o-lantern with carved human facial features and sunglasses and having a wheat hair Mohawk with an ivy vine interspersed” for “beer” in Class 32. The design was coded for several design elements including: 04.07.01 – person formed by plants; plants forming a person; plants or combinations of plants representing a person; plants representing a person and also 05.09.12 – pumpkins. A search of either of these design codes would disclose this design.
2) The second design is described as a 3D “configuration of the packaging for the goods, namely, a beverage container featuring a globular bottle shape resembling a jack-o-lantern” for “sports drinks” in Class 32. This design is coded as: 04.07.02 – objects forming a person; person formed by objects and 19.09.02 – bottles, jars or flasks with bulging, protruding or rounded sides; flasks with bulging or protruding sides; jars with bulging or protruding sides.
In these two jack-o-lantern examples, searching the individual design codes would not reveal both marks but searching by the key word, “jack-o-lantern” would disclose both marks. A search of “jack-o-lantern” in class 32 discloses only these two results. However, a search by the key word “pumpkin” in class 32 reveals a total of 18 marks. Some of which are also pumpkin head designs shown below:
Conclusion: As shown above, there is not one way to clear a design mark. It requires use of all the tools – design codes, key words, class designations and the like – in various combinations depending on the design. Design codes can designate the (i) form of the design, e.g., pumpkin or persons or objects formed by plants and; (ii) function (the second jack-o-lantern mark was also coded as a bottle). Key words can include a variety of terms and in the case above, both “jack-o-lantern” and “pumpkin” revealed different and relevant results.
On the applicant side, it is important to thoroughly describe the mark as this is one of the criteria used by the PTO to code the design. Also, once the codes are entered into the record, applicant can request that additional codes be included in the record. This could improve the ability to uncover more relevant marks that in turn would increase the chances of avoiding a potential conflict and reduce unnecessary costs associated with such a conflict.
Reported by: Mary B. Aversano
Aversano IP Law
Email: moc.walpionasrevanull@skramedarT
