The US trade mark application for ARCHEWELL, Harry and Meghan’s charitable foundation, has received a non-final office action. Some media reports suggest this is a serious hiccup but trade mark applications often receive objections, particularly in the US, many of which can be overcome fairly easily.
The ARCHEWELL trade mark has been objected to under several grounds:
1. Earlier application – whilst the US trade mark registry (USPTO) did not cite any earlier registrations that they regarded as confusingly similar to ARCHEWELL, there is a pending application for ARCHECARES. If the ARCHECARES application proceeds to registration it may lead to ARCHEWELL being refused due to this earlier right. There are steps that can be taken though, and it is likely Harry and Meghan are considering their options. It is important to conduct a trade mark search before filing or using a new trade mark so that relevant third party rights can be identified to prevent serious issues; this may have happened here and Harry and Meghan may already have a plan in place.
2. Specification – media reports have suggested the application was too vague. The US requires quite detailed terms in trade mark specifications and the USPTO will readily object to terms that are acceptable in the UK or EU on the basis they are “indefinite and too broad”. For example, in the UK/EU the term “providing monetary grants to charities” is acceptable but the USPTO has asked that a similar term in the ARCHEWELL application be expanded upon to specify what those grants are for and provides the example of “mental health research” as a guide to the detail required.
3. Fees – the USPTO has determined that an additional class is required if all of the goods and services covered are to be retained and therefore a further class fee will be due.
4. Unsigned Application – perhaps one of the interesting points regarding a US trade mark is the requirement to use a mark, or at least make a statement that the applicant has a bona fide intention to use the mark in commerce, at the time of filing. Once registered, the USPTO requires evidence of use to maintain a registration at various times, such as when renewing the trade mark registration. In the case of ARCHWELL, the application was unsigned, and therefore the statement regarding use has not been verified. The ARCHEWELL application was filed on the basis of an intention to use only (rather than on the basis of actual use or any other ground), and therefore the mark must be in use before registration will be granted. It may be the case that registration is ultimately achieved for a much narrower range of goods and services than those currently in the application, once use of the mark has commenced, to reflect the actual use that is being made in US commerce. The position is different in the UK and EU, where evidence of use is not required to achieve registration and broad specifications are therefore more common. However, UK and EU trade mark registrations can be cancelled on the grounds of non-use if they have not been put to genuine use in the relevant territory within five years of the registration date.
The deadline to respond to the objections to ARCHEWELL is 2 December 2020. No doubt its progress will be closely watched!
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.