How likely is it that REDDplus (or REDD+) can be registered as a trademark in the US? Who can object? What would this mean for the use of the term by others?
1. How likely it is – in your view – that the application will be approved?
The application has been initially refused by the US TM Office Examining Attorney on the grounds that REDD+ is merely descriptive of the services listed in the application. Under US law (like most other countries) a descriptive mark is not generally available for registration, nor can a single entity acquire exclusive rights to the mark if it is descriptive of the services listed in the application. After some period of promotion and use (typically 5 years, but it can be as short as 3 years) an applicant can, in some instances, prove to the satisfaction of the TM Office that a mark has “acquired distinctiveness” such that consumers now associate what was originally a descriptive mark with a single source, the applicant.
In this case, the Examining Attorney has recognized that REDD+ is the acronym for “reduce emissions from deforestation and forest degradation.” Because the services listed in the application are related to “consultancy on environmental regulatory matters” I believe that the Applicant will face an uphill battle in securing registration on the Principal Register before the US Trademark Office.
The Applicant claims to have used the REDD+ mark in the US since 2007. The Applicant’s chances of success depend upon the evidence of use which it can present to the TM Office, showing that the Applicant has made widespread use of this mark and that the public, when seeing the acronym REDD+, thinks of the Applicant and not the general deforestation initiative. The chances of success also depend upon the quality of the evidence which the Examining Attorney has provided in support of the rejection and the evidence with the Applicant will submit to combat the initial rejection.
The Applicant has the opportunity now to contest the initial rejection and to submit evidence to support its position. The TM Office and the Applicant can bounce this ball back and forth several times in presenting new evidence and arguments in support of their respective positions. The Applicant can also appeal the rejection up several layers of formal administrative and judicial review should it not succeed in convincing the Examining Attorney to withdraw the rejection.
2. Who can object to the application and how?
The most appropriate time to object is typically after the application has been approved for registration on the Principal Register and that has not yet occurred in this case. As noted, the Application has been initially rejected and the Applicant has until Feb. 2, 2017 in which to collect evidence in support of its position and to submit arguments against the rejection. If the Examiner never approves the Application, then there will be no need to oppose the Application.
According to the Trademark Office rules, with respect to any TM application which has been approved, any party who believes it will be damaged by the registration of the mark has the opportunity to file an Opposition. This standard of “any party who believes it will be damaged” arguably creates a fairly wide scope of potential challengers to such a registration. Any party who has used, or has reason to use the term REDD, either as a trademark or in an entirely descriptive manner, would be entitled to challenge the registration of the mark, if it is ever approved.
There is only a short window of time, 30 days after publication, in which to lodge a formal opposition so it is important that somebody checks the status of the application monthly to ensure that the application is never approved and published for opposition. If you see that the application is ever approved, then prompt action will likely be required to take the steps needed to either oppose the application, or extend the deadline to oppose the approved application.
3. If the trademark application was approved what would this effectively mean for the use of the term REDD+ by others, the public, in general?
If the Applicant succeeds in securing a registration for REDD+, then the registration grants this entity the legal presumption that it has the right to exclude use in the US of the mark by others in conjunction with environmental matters. This is a legal presumption, the public and any alleged infringer retains the right to challenge the merits of the Registrant’s rights in the mark for at least 5 years after registration. So, if the Applicant is successful in securing a registration, then there remain various strategies and opportunities that can be pursued in order to challenge this registration and any asserted exclusive rights therein.