Mastering Specimens of Use: Tricky, but Essential

Proving up trademark use to the USPTO’s satisfaction can be tricky.

It needn’t be, but it’s not always intuitive, which can lead to mistakes.

The first thing to remember is that the proof of use — called the “specimen” — needs to reflect the exact trademark the applicant applied to register. If the “drawing,” or form of mark the applicant applied to register, is in color, has a box around it, or contains other words, then the specimen needs to have all of those things. The only exception is for very minor — hardly noticeable — differences. This means the applicant needs to be careful to apply to register the precise form it is using or plans to use. Any legally significant difference between the drawing and the specimen will cause the examining attorney to deny the application.

The other main thing to consider is that the proof needs to show the mark being used in the context of the goods or services listed on the application. This means if the application is for a restaurant, the proof needs to show the mark being prominently used to promote the restaurant. This could be on a restaurant sign or menu, for example — as long as the photograph showing such use makes it clear the mark is being used to promote the restaurant. Since a restaurant is considered to be a service, a website screen shot would also work — again, as long as the page prominently showed the mark being used to promote the restaurant.

Goods are different story. The USPTO usually will accept proofs of use of a trademark for goods only if the mark is affixed to the good or is displayed on product packaging. Website screen shots don’t cut it.

Apparel presents its own pitfalls. The government will object to specimens that only show the mark being used for “decorative” purposes. This means that a mark on the chest of a t-shirt, for example, won’t support trademark use. The USPTO deems such use to be just a decoration, rather than an indicator of who made the shirt. To prove up use for clothing, the trademark needs to be on a tag or hang-tag attached to the garment. The same is true for coffee mugs, prints, magnets, and other promotional-type items, though marks can also be displayed on the back or bottom of the item, or on a box or container.

At first, these principles can be hard to learn. However, they need to be mastered because they’re essential to getting a trademark registered.

NYT Best-seller Illustrates How Trademarks Can Become Meaningless

I’m pleased to report that excerpts from a 2011 STL post appear in the 2016 NYT best-seller, “Real Food/Fake Food.”

Author Larry Olmsted riffs on my discussion about “American” Kobe beef. I like what he’s done.

The point of the post, and one of the points of the book, is that marketing labels stop meaning anything when they are stretched beyond their original designations. Kobe beef is a case in point. It used to designate special (and especially tasty) beef raised in Kobe, Japan. But when it shows up on menus as “American” Kobe beef, and the U.S. Patent and Trademark Office allows different producers to register trademarks like “AMERICAN STYLE KOBE BEEF,” “AMERICAN CERTIFIED KOBE BEEF,” and “PREMIER AMERICAN KOBE BEEF,” the Kobe beef designation no longer means what it used to. Indeed, it arguably no longer means anything at all.

This is a good example of how a strong trademark can lose its power. When other producers co-opt a brand, and give it their own twist, consumers eventually no longer think of the original trademark owner. Eventually, they may not think of anything.

If Kobe beef can come from producers in the States, what does it mean to say it’s Kobe beef?

Trademark owners should learn from this lesson. If you don’t stop others from using your trademark, you eventually can lose the equity you worked so hard to build up in your brand.

New PTO Interface Clarifies Applicant's Factual Representations

The U.S. Patent and Trademark Office recently revised its online interface. It now requires applicants for federal trademark registration to check boxes confirming the representations they’ve always made when filing new applications.

I like what they’ve done, since it forces applicants to consider the factual and legal basis for their filing.

Applicants now must confirm:

If the application is based on existing use in customer sales

  • The applicant believes he/she/it is the owner of the trademark or service mark sought to be registered;
  • The mark is in use in commerce on or in connection with the goods/services listed in the application;
  • The proof of use shows the mark as used on or in connection with the goods/services listed in the application; and
  • All facts stated in the application are true.

If the application is based on intended future use

  • The applicant believes he/she/it is enttitled to use the mark sought to be registered;
  • The applicant has a bona fide intent to use the mark in customer sales; and
  • All facts stated in the application are true.

For both types of applications

  • To the best of the applicant’s knowledge and belief, no other persons have the right to use the mark in commerce in the identical form or such a similar form that the use would be likely to cause consumer confusion; and
  • The applicant makes its statements under penalty of perjury.

Again, these factual representations are nothing new. However, the new filing format helpfully clarifies the representations that applicants for federal trademark registration make. If any are not true, it’s not appropriate to file the application. And if the applicant falsely makes a factual representation, he/she/it risks having the resulting registration be invalidated.

Posted on January 17, 2017 by Registered CommenterMichael Atkins | CommentsPost a Comment | EmailEmail | PrintPrint

Can I Use the Seahawks Logo in My Crafts?

These last few years, the Seattle Seahawks have been good. Really good. And the Sounders, too. Here’s to a lot more of that!

With the rise of our teams’ success, I get more of the same type of question. It focuses on whether local craftspersons can incorporate team names, logos, slogans, and/or colors in their handmade clothing, cakes, beer labels, and art. It’s to celebrate team pride; it’s to give the people what they want; and it’s to make a buck.

So what’s ok, and what’s not ok?

The answer turns on trademark law. Names, logos, slogans, and even colors tell consumers where goods and services come from. By incorporating these indicators into a product, an artisan risks misleading purchasers into thinking the goods are made by the team, are licensed by the team, or are approved by the team. Mistaken consumer assumptions hurt the team because it doesn’t profit from the sale, it doesn’t have a say in how its brand is used, and because bad-quality or inappropriate goods could hurt its reputation.

For practical purposes, small-time producers probably can fly under the teams’ radar. But that doesn’t mean it’s legal for them to wrap up their products in a team’s brand without permission.

The more a craftsperson takes from the team’s image — particularly its name and logo — the more likely he or she is to infringe the team’s trademark rights. As long as you’re selling goods or services, you’re subject to trademark laws. So, you shouldn’t be surprised if you hear from your favorite team if you use their brand without permission.

The same is true if you take your favorite athlete’s name. Natural persons often have extra rights against use of their names, likenesses, and signatures for commercial purposes without their permission, thanks to “personality” rights laws.

Artists are often exempt from these concerns. As long as the artwork contains a minimum amount of artistic embellishment, the First Amendment usually trumps trademark and personality rights protections. But regular folks who want to sell crafts on Etsy or in front of the stadium: you probably can’t “borrow” from your favorite team without stepping on its toes.

Let the Market Guide Your Trademark Decisions

Believe it or not, trademark law is here to serve you. Therefore, you should let the market guide your decisions in what trademarks to register and what enforcement actions to take.

Much of trademark law is optional. You don’t need a federal (or state) trademark registration. Getting a registration can be smart, but it’s not required. So, let the cost guide you in deciding whether it’s worth the effort.

The same is true with enforcing your trademark rights. The law doesn’t require trademark owners to oppose every application for a potentially-conflicting trademark registration. It also doesn’t require you to sue every potential infringer. Oftentimes, you get to pick your battles, and you should do so carefully.

It usually comes down to whether you would get a good return on your investment. In other words, you should apply to register your name, logo, and/or tag line if it would likely be worth your while to do so. The corollary is that if you wouldn’t likely obtain a good return on your investment, you shouldn’t bother. The same is true with seeking to enforce your trademark rights. Now, it’s often not very expensive to do what’s needed to maximize one’s trademark rights, but owners should be strategic in allocating their resources.

Granted, if you’re on the receiving end of a cease-and-desist letter or trademark infringement lawsuit, your options are more limited. But the value of your trademark investment and likelihood of success in maintaining it — read: practical economics — should still drive the train.

Let the market be your guide. Whether you’re playing offense or defense, a trademark lawyer can help you decide what steps are likely worthwhile, and what steps you can skip. But in the end, it’s usually not complicated. It should be about getting your money’s worth — doing the things that provide good value, and forgoing the things that don’t.