Seattle Trademark Lawyer

A “force majeure” clause in a trademark license agreement or other contract accounts for “acts of God.” It can relieve a party from having to perform under the agreement when an unforeseeable event, like a natural disaster, prevents it from doing so. Whether and to what extent particular contract language applies to a given situation can be a tricky call.

Our friends at Perkins Coie offer a timely analysis of force majeure provisions in the context of the coronavirus crisis. It’s a good means to determine where you (or a contracting party) might stand given the current state of the world.

The place to start in interpreting any contract is with the contract itself. Usually, words are given their ordinary meanings. Therefore, the more force majeure language seems to apply to the coronavirus, the more likely it will control. Beyond this principle, you’ll have to consider how courts in the governing jurisdiction have applied the doctrine.

“Although oft-ignored as boilerplate language, careful review and negotiation of force majeure provisions is necessary to ensure that a party—particularly the party that will be the primary provider of services under the agreement—is protected from situations outside of its control. A typical provision (1) lists certain types of outside events that are agreed to potentially excuse a party for nonperformance, and (2) provides that a party’s nonperformance due to such an event will be excused, at least for the duration of the triggering event.”

The authors write that “[w]here a party invokes a contract’s force majeure provision to excuse its obligation to perform under the contract, the success of such excuse depends on the obligations at issue, the precise wording of the provision, the specific outside event that is alleged to have triggered the provision, and the variations in contract interpretation rules under governing law. In some situations, an outside event may allow the affected party to delay its performance, but in other situations, the outside event may release such party from all of its unperformed obligations under the agreement.

“Under most force majeure provisions, the mere occurrence of a force majeure event will often be insufficient to excuse a party’s performance of an obligation; rather, depending on the precise wording of the provision, the force majeure event must somehow prevent, make impossible, make impracticable, or delay the party’s performance. In other words, the force majeure event must be the cause of the party’s inability to perform. Further, if the force majeure event affects some, but not all, of the party’s obligations, the unaffected obligations most likely remain in effect unless the provision expressly provides otherwise.”

Good thoughts. Another helpful article is accessible here.

Stay safe out there! Including when deciding whether force majeure excuses performance under a contract.

It’s always a treat when The New York Times tackles a trademark issue.

The latest is an interesting take on how the Amazon Marketplace has impacted trademark filings. USPTO filings have spiked in recent years simply because Amazon requires a trademark registration before enrolling a seller in its Brand Registry program. Amazon’s program is popular because it gives trademark owners additional tools to fight counterfeiters and control how their brands appear on Amazon’s platform.

In particular, Amazon has led to the rise of “pseudo-brands,” sometimes-temporary, often meaningless trademarks intended to help a seller set itself apart in the crowded Amazon Marketplace. Think FRETREE, MZOO and SPEXCEL. Sellers using pseudo-brands like these rely on user reviews (real or fake), search engine results, and the Amazon name to make sales more than the reputation embodied in their own brands. This strategy is especially popular with Chinese sellers of consumer goods who compete in a particular product market until it’s saturated, then move on to another. 

“The result is something like a trade war in miniature,” the article notes, “with corresponding Amazon-specific battles over intellectual property, counterfeit products, product pricing and business ethics.”

The writer opines that “Amazon’s peculiar relationship with trademarks is slowly but surely altering the greater brand atmosphere. I ordered my FRETREE gloves for this story, but I’ll wear them — they’re fine. There’s already an MZOO sleep mask in our bedroom, and SPEXCEL cycling gear in my closet.

“The recreational path that I take to work is a parade of athletic apparel — for years now, the flow of logos from Nike and Under Armour and Rapha and Lululemon has been speckled by runners in head-to-toe Baleaf and cyclists with loud jerseys branded SPONEED.”

The U.S. Patent and Trademark Office usually examines applications for trademark registration in the order in which they are received.

This means that even if you have priority of rights, your application will be denied if someone filed an application before you for which your trademark is likely to cause confusion — even if the prior filer only beat you by a few minutes or a few days. In such a case, you’d normally need to oppose the prior-filed application to block it (if the application is still pending) or petition to cancel the registration (if the registration has issued).

However, a narrow exception exists. If you are involved in actual or threatened infringement, pending litigation, or have a need to register your trademark in order to secure a foreign registration, for $100, you can petition to make your application “special.” If accepted, your application is given expedited treatment and leap-frogs prior filings.

An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon request. No petition is required.  

Being on the verge of launching an advertising campaign, however, doesn’t cut it.

This little-known device can avoid the need for procedural acrobatics. Why wait for a prior-filed application to be published or go through the pain of opposing it if you don’t have to? The smart answer is that you shouldn’t — as long as you’re “special.”

Michael Atkins joined podcasting business consultant Jeremy Epp for two talks on trademarks and copyrights. The podcasts are available to stream starting today.

The first session focuses on what entrepreneurs need to know about trademark law — selecting and adopting a trademark, maximizing rights by registering the mark with the U.S. Patent and Trademark Office, and enforcing trademark rights against infringers. It’s all you need to know about trademarks in 49 minutes.

The second session focuses on copyrights. It again is geared to the business owner. It covers copyright protections and limitations, registration, enforcement, common pitfalls of using material taken online, and independent contractor agreements. It spans 45 minutes.

Mr. Epp, the host, gives upbeat business advice through “The Jeremy Epp Show,” styled as “Expert Interviews. Business Advice. Straight Talk. Encouragement. All With a Sense of Humor.”  

He writes: “We find out most about ourselves when we’re down and out, having the School of Hard Knocks kicking us time and time again. How we respond will determine our success. It is these lessons, and others that I’ve learned in my journey that I wish to share with you to help you along your journey. You’ve read this far. You’ve researched enough. It is time to take action! Are you with me? Let’s do this!” 

To heed his call, give The Jeremy Epp Show a listen. If you tune in soon, you’ll also learn the basics of trademark and copyright law in bite-sized portions, courtesy of Atkins IP.

Foreign-domiciled trademark owners now need U.S. attorneys to prosecute their interests before the U.S. Patent and Trademark Office and U.S. Trademark Trial and Appeal Board.

The rule, effective August 3, also means that Canadian patent agents no longer can represent Candadian trademark applicants, registrants, or parties before the USPTO. Canadian trademark attorneys and agents can continue to represent their clients, but cannot correspond with the USPTO.

According to the USPTO, the change is intended to “maintain the accuracy and integrity” of the USPTO’s trademark registers. It ostensibly is in response to an increasing number of “inaccurate and possibly fraudulent submissions” made by foreign-domiciled parties.

The rule affects all USPTO filers and parties that are not domiciled in the United States. A “domicile” is a person’s home or an entity’s principal place of business where “its senior executives or officers ordinarily direct and control the entity’s activities.”

Requiring a USA attorney in this context seems awfully protectionist, but hopefully it will accomplish the stated goal. If it does, I’m ok with it.