How You Sign a USPTO Application can be Crucial

It’s an innocent mistake. 

You sign your company’s application for trademark registration in your individual name, rather than in the name of your company. Innocuous, right? Yet, if your company is the one that uses the trademark, that mistake could be fatal to your application.

The USPTO clarifies: “If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned.” Trademark Manual of Examining Procedure § 803.01, citing 37 C.F.R. § 2.71(d).  

In particular, the USPTO notes that an officer who applies to register his or her organization’s trademark in his or her individual name commits a fatal error in the filing that cannot be corrected:

Non-Correctable Errors. The following are examples of non-correctable errors in identifying the applicant:

(1) President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Id. at § 1201.02(c).

So whether you seek an advantage by keeping the trademark in your personal name, or because you don’t know any better, listing yourself as the owner when the trademark is actually owned by your entity can be dangerous. It can render your application void — as well as any registration that later issues.

Study Links Trademark Filings to Innovation and Growth

An interesting new study from researchers at the USPTO, Center for Economic Studies, and the US Census Bureau explores who makes trademark filings and why they do so. 

The paper, “An Anatomy of U.S. Firms Seeking Trademark Registration,” was published in September by the nonprofit, nonpartisan, National Bureau of Economic Research.  

It links USPTO data of trademark filings with census data about the filers. It concludes that companies that make trademark filings are more likely to grow, and more likely to make patent filings, than companies that do not.

Following are some highlights: 

  • The average trademark filer makes about two filings.
  • “When firms successfully leverage trademarks to differentiate goods or services and insulate themselves from copying and competition by registering trademarks, they can achieve faster growth.”
  • “[Y]ounger firms may have more incentive to apply for trademark registration relative to older counterparts.”
  • On average, companies that make a trademark filing upon inception as a company more than triple in size, from roughly two-to-five employees to nearly ten, by year one.
  • Companies that apply to register a trademark tend to grow much faster than companies that do not.
  • “In the period following first trademark filing, treated firms have, on average, approximately 34% higher employment and 24% greater revenue compared to the control group.
  • Almost 50% of firms with both patent and trademark applications filed for their first patents and trademark registrations within a five-year window, which “strongly supports the notion that the two activities are intertwined.”
  • “[W]hile most of the firms that applied to register a trademark did not engage in innovative activity as measured by patent filings or grants, the proportion of trademark filing firms with a patent application is significantly higher than that of all firms.”

The paper also noted that less than three percent of all trademark filings are opposed. While this is small number, the fact that it is not zero demonstrates the perceived value of trademarks. If they weren’t seen as valuable, no one would spend the time and money to oppose someone else’s filing.

Minor Changes to a Trademark Usually Don't Avoid a Likelihood of Confusion

The U.S. Patent and Trademark Office will deny an application for federal trademark registration if the trademark is “likely to cause confusion” with a prior registration. This inquiry mainly boils down to whether the marks and associated goods or services are sufficiently similar that ordinary consumers would mistakenly believe that the applicant’s goods or services come from the registrant, or vice-versa.

There are strategies that can minimize the chance of drawing this objection. For one thing, you can be smart in describing your goods or services. Describing them in narrow terms can avoid an appearance of being closer to a prior filing than you need to be. That sometimes works.

One thing that doesn’t work is adding or deleting a space between tradmark elements (TRADEMARK vs. TRADE MARK) or adding a “.COM” suffix to the dominant part of the mark. The USPTO largely ignores spacing and domain name extensions when evaluating likelihood of confusion. As it should — consumers don’t focus on such small details when deciding which product to buy.

Hats off to trademark owners who think about these things. But when a target trademark is close to a registered mark, a meaningful change — like adding a distinctive trademark element — is usually required to avoid a likelihood of confusion objection.

Beware of Copyright Trolls

There’s been an unfortunate uptick in claims by copyright trolls. Beware, as this is a costly problem you can easily avoid.

Copyright trolls often create innocuous “placeholder” images that websites and blogs frequently use as a visual to fill dead space. Think of a photograph of papers on a desk or a fountain pen resting on a contract. Trolls then upload the images to stock photo sites that appear to allow their download and use free of charge. But… the site actually conditions such use on attributing the photographer, or noncommercial use, or attaches other strings. Those terms are buried in the bowels of the license agreement, which are frequently accepted with a click and without the user understanding or even reading.

That’s a shame, because that’s where the troll strikes. They find unauthorized use, and then they pounce. Ah ha! Your use is unauthorized! You’re infringing my copyright! Pay me $10k! If you don’t, I’ll sue!

Realizing its use was technically improper, and that fighting it in court will cost a bundle, the user figures it’s worth paying something to make the problem go away. In legal parlance, this is known as a “nuisance” settlement.

It’s a difficult situation. Payment enriches the troll, rewards predatory abuse of the Copyright Act, and depletes scarce resources from a productive member of society. In my book, this is a social wrong — if not an evil — that’s as bad or worse as spamming and cybersquatting.

Don’t let this happen to you. Only use images from a source you trust, read the fine print, and if you have any doubt about an image, don’t use it. Until the law treats copyright trolls (and the unsavory lawyers who help them) as criminals, the best you can do is ensure that you don’t become their victim.

USPTO Invites Reports of Phony Trademark Specimens

After starting to audit trademark registrations, the U.S. Patent and Trademark Office has rolled out a pilot program inviting trademark owners to rat out their competitors’ filing of fraudulent specimens.

Specimens are proofs of use that a trademark owner submits to show its mark is being used in customer sales — usually a prerequisite to registration. Apparently, some file bogus proof in order to get a registration.

I didn’t realize this was a problem. The USPTO seems to think so. It identifies two scenarios in which it invites notice of a suspicious filing: when the reporting party (1) has “objective evidence of third party use of the identical image without the mark in question, such as the URL and screenshot from an active website or a digital copy of a photograph from a print advertisement and the publication in which it was featured”; or (2) can identify “prior registration numbers and/or serial numbers of applications in which identical images of objects, mock ups of websites, etc., all bearing different marks[,] have been submitted to the USPTO.”

In these cases, the USPTO asks that notice be sent to: TMSpecimenProtest@uspto.gov.

Timing is key. The USPTO states that emails must be received no later than 30 days after the date the subject mark is published for opposition. It doesn’t say what it will do in response to the notices. Apparently, it will decide whether (and what) action is warranted. The USPTO states the program will continue based on “operational need,” and may be discontinued at any time.

As with its auditing program, I support efforts that promote honesty in trademark filings and the accuracy of our trademark registers. It doesn’t benefit bona fide trademark owners to have fraudsters lurking in their midst. It’s just curious that there apparently are enough bogus filings that the USPTO believes there is a problem. 

If the USPTO is correct, rat ‘em out!

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