Seattle Trademark Lawyer

Hola from Madrid!

Still hard at work, but I decided to take the show on the road for a couple weeks.

Not at all why I’m here, but trekking around I couldn’t help but note what appears to be Madrid’s intellectual property office.

I also had to note Madrid’s trademark, the bear and the madroňo tree.  The statute is located in the Plaza del Sol.

Photos by STL

A sample application for statewide trademark registration.
Users can now search filings from 1888 to 2011 for free

It’s now possible to search Washington trademark registrations for free.

The Washington Secretary of State’s digital archives have added trademark records to its searchable online database.

Start with the digital archives home page. Select “Trademark Records” from the dropdown menu under the “Search by Keyword” or “Detailed Search” options, enter the search criteria, and click the “Search” button. 

The “Detailed Search” option enables searching by keyword, registration number, owner name, document type (amendment, application, assignment, renewal, and reservation), and range of filing dates.

Results display the trademark number, owner’s name, document type, received date, and even a copy of the application, specimens of use, and registration certificate.

The site states the database includes “active and inactive trademark records filed with the Secretary of State’s Office, Corporations Division from 1888 to 2011.”

This is a pretty awesome tool that previously was available only through third-party vendors.

Thanks to the State of Washington for making this available. And thanks to Shannon Whitmore for letting me in on the secret!

We can all learn something from MARCH MADNESS.

There’s no profit in trying to register someone else’s trademark.

Check it out. The NCAA owns a registration for MARCH MADNESS. Actually, a bunch of them. This one’s for “Enterertainment in the nature of basketball tournaments between college teams,” with a first-use date of March 31, 1982.

But does that stop others from trying to grab a piece of the madness? It should, but it doesn’t.

Here’s a few of the applications to register MARCH MADNESS by wrong-headed entrepreneurs (or fans) with a little extra spring spirit:

• MARCH MADNESS OR MARCH MADDNESS, for “Two words describing College Basketball in March or proceedings March, surrounding the NCAA, Women’s NCAA, Men’s or Women’s NIT Tournaments or any corresponding Men’s or Women’s NCAA Conference Tournaments; regardless of division classification; as described by the NCAA or any of its collegiate partners.” Status: Abandoned
• MOBILE MARCH MADNESS, for “SMS automatic sports updates.” Status: Abandoned
• MARCH MADNESS, for “shoes and clothing, namely sweatshirts, T-shirts, sweatpants.” Status: Abandoned

Revel in the madness. But trying to copy it and claim it for your own just doesn’t work.

For old time’s sake, check out this March Madness post from the dusty STL archives here.

I’m not much of an insurance guy, but these cases don’t come along too often, so they’re interesting when they do: courts interpreting insurance policies as they relate to coverage for trademark infringement.

The underlying dispute arose out of a trademark infringement complaint that AcademyOne, Inc., filed against CollegeSource, Inc. AcademyOne claimed that CollegeSource had registered AcademyOne’s trademark as its domain name, which was likely to divert AcademyOne’s customers to CollegeSource’s Web site.

CollegeSource tendered a claim to its insurer, Travelers Indemnity. When Travelers denied the claim, CollegeSource sued for breach of contract.

Travelers moved for judgment on the pleadings, and the Southern District of California granted the motion. It found the underlying trademark infringement claim fell within the policy’s exclusion for “‘personal injury,’ ‘advertising injury,’ and ‘web site injury’ arising out of the unauthorized use of another’s name or product in your email address, domain name or metatag, or any other similar activities that mislead another’s potential customers.”

On appeal, the Ninth Circuit agreed. It found that “[e]ven construing the exclusion narrowly, the phrase ‘any other similar activities that mislead another’s potential customers’ can be read only as referring to activities similar to ‘unauthorized uses of another’s name or product in your e-mail address, domain name, or metatag,’ because ‘use’ is the only word in the clause which constitutes an ‘activity.’”

It also rejected CollegeSource’s contrary interpretation. “The only reasonable reading of the complaint’s allegation (that CollegeSource used AcademyOne’s domain name in its own domain name in a way likely to cause confusion in the marketplace) is that it claims injury from an activity that (1) is ‘similar to’ the unauthorized use of another’s name or product in one’s domain name, and (2) would mislead customers. We also reject CollegeSource’s argument that Travelers’s removal of a trademark infringement exclusion from the policy shows an intent to provide coverage for domain name infringement. Because the language of the Unauthorized Use exclusion is unambiguous, we do not consider drafting history or other extrinsic sources to determine the parties’ intent.”

The case cite is CollegeSource, Inc. v. Travelers Indem. Co. of Connecticut, No. 11-55708, 2013 WL 492462 (9th Cir. Feb. 11, 2013).

New clients often ask what it takes to get a federal trademark registration. Here’s a quick rundown:

1. Trademark clearance - The first step entails searching the U.S. Patent and Trademark Office’s database to find previously-filed applications and registrations to determine if your trademark would create a likelihood of confusion. If the marks are similar and the goods or services are similar, the PTO’s examining attorney will deny your application. It makes sense to know what your chances are of getting your trademark registered before you file (and pay the fees). Generic, descriptive, and other types of marks also will be refused and, therefore, risk not being registered.

2. Filing the application - It’s easy to fill out the PTO’s interface. The challenge is making judgment calls along the way, including who owns the application; whether any part of the mark needs to be disclaimed as being unprotectable; how to describe the associated goods or services; what the PTO will accept as proof of use; and whether the mark is generic, descriptive, likely to cause confusion with an existing application or registration, or is subject to any of the other statutory bars to registration. The PTO charges $275 per class of goods or services (if you avail yourself of one of its pre-approved descriptions) and $325 if you write your own.

3. Examination - After filing, your application will sit in an electronic “in” box for a few months before anyone looks at it. When your time comes, an examining attorney will review your application for completeness and against the statutory bars to registration. The more common refusals are for being descriptive and for causing a likelihood of confusion with an existing application or registration. If the examining attorney objects, he or she will issue an “office action” explaining the basis for the refusal. You will then have six months to respond in an effort to address the deficiency or to change the examining attorney’s mind.

4. Publication - Once you clear the examination hurdle, you’re almost home free. The next step is the PTO publishes your mark for potential opposition by third parties. Once published, third parties have 30 days to file a notice of opposition, essentially starting a mini-lawsuit about whether you are entitled to your registration. Third parties can oppose based most commonly on claimed earlier trademark rights in a confusingly similar trademark. Opposition proceedings are decided by a three-judge panel of the Trademark Trial and Appeal Board, the PTO’s administrative law arm.

5. Notice of allowance - If you filed on an intent-to-use (reservation) basis, after clearing the examination and publication hurdles, the PTO issues a “notice of allowance.” That means your mark has been accepted subject to your proving that you have put your mark to use in connection with all of the goods or services listed in your application. You have six months to do so. The PTO charges $100 to process your proof of use. If you need extra time, you can literally buy some. The PTO charges $150 per class of goods to extend the time to file your proof of use by six months. You can keep paying for extensions every six months for up to three years. After that point, if you haven’t proven that you have put your mark to use, your application will be deemed to be abandoned — as if your application had never been filed.

6. Registration - If the PTO accepts your proof of use (if you filed on an intent-to-use basis) or if you cleared the examination and publication hurdles (if you filed on a use basis), the PTO will issue your registration. Congratulations — you’ve accomplished your goal. The filing-to-registration process takes at least 10-12 months.

7. Maintenance - After getting your registration, you’re in the clear for five years. But then you need to start making a series of periodic filings with the PTO to keep your registration current and, in one instance, to cut off potential attacks on your registration. Failure to do so can work to abandon your registration.

I hope this clarifies the process!