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!

USPTO Auditing Continued Use of Registered Trademarks

One of my clients received a new type of office action from the U.S. Patent and Trademark Office. It was in response to a declaration of use filed under Section 8 of the Lanham Act to renew its registration for five more years. The USPTO stated it wanted more proof that each item listed on the registration certificate was still in use — even though my client’s filing was accompanied by an affidavit to that effect.

“Really?” the USPTO seemed to say. “Prove the continued use with specimens showing that each branded item is still being sold.”

According to the government, the inquiry was random. It explained that ”[t]he USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods and/or services identified in the registration.”

“To comply with the audit,” the USPTO added, “you must submit proof of use of the registered mark for two additional goods and/or services per class. If proof of use for the goods and/or services identified is not available, the identified goods and/or services and any other goods and/or services not currently in use should be deleted from the registration.”

For those audited, this means more work. Nonetheless, I like the idea. Registrations that are renewed for all goods and services listed on a certificate — regardless of whether the mark is actually still being used for all such items — wrongly clutter up the trademark registry. Such “zombie” registrations can prevent actual trademark users from registering similar marks in connection with similar goods or services. They also give the registrant the appearance of trademark rights beyond those it actually has.

An audited registry better serves those who qualify for its benefits. It also gives our trademark registration process more credibility. I think the result is worth the effort.

New State Trademark Filings Eliminate Goods and Services Descriptions

The Secretary of State quietly changed an important feature of Washington State trademark filings. They re-did their application form for trademark registrations. And, in doing so, they eliminated the applicant’s description of its branded goods and services.

So now, it’s possible to claim the entirety of a classification. Rather than say “Class 35 - Retail clothing store services,” for example, applicants now are prompted to just identify “Class 35 - Advertising & Business.”

It’s a curious departure from U.S. Patent and Trademark Office practice, which requires applicants to specify the goods and services for which they seek expanded rights. It’s closer to foreign trademark schemes that only recognize rights if a mark is registered. In those registration-based countries — which make up most of the world, but differ from use-based countries like the States — it’s common for applicants to list all imaginable goods and services in an effort to occupy the field for a particular trademark.

I thought this change was strange, so I asked about it. Washington’s trademark office told me it was intended to bring Washington’s filing scheme more in line with the authorizing statute.

In the end, Washington’s trademark statute is the same, so trademark rights presumably are the same. Trademark owners are protected against a “likelihood of confusion” with later-adopted marks, and a state registration certificate gives the presumption of trademark rights statewide. But do these rights now encompass the entirety of a class if that’s what’s listed on the registration certificate? Or are they limited to the branded goods and services the registrant actually provides in commerce? It’s not clear.

For now, applicants will likely be motivated to claim the entirety of a class (or multiple classes) if they’re not forced to limit their claim to the particular goods and services they sell. After all, more seems better than less. When enforcing one’s rights, however, I imagine courts will pare back overly broad claims to reflect how the mark is actually used.

It’s just a little curious the State has broken with the USPTO’s identification requirements in issuing trademark registrations in favor of those more frequently seen abroad. The uncertainty the new scheme introduces seems like a shame.

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