Entries in U.S. Patent and Trademark Office (6)

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.

Beware of Phony Trademark Service Invoices

Trademark owners, take note. If you file an application for federal trademark registration, you should keep an eye out for misleading mailings from unscrupulous vendors trying to sell you (or trick you into paying for) things you don’t need.

This is one reason the U.S. Patent and Trademark Office warns as follows:

“By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through internet search engines and other on-line databases.”

Heed this warning. Fraudsters troll the PTO’s public database and send applicants phony invoices and other official-looking mailings. Their names frequently mimic the PTO’s, and include words like “United States,” “U.S.,” “Trademark,” “Registration,” “Office,” and “Agency.” Ignore them. They are fraudulent. The senders count on a handful of trusting or careless recipients out of thousands to pay their “invoice.” Don’t be one of them.

All official mailings will come from the PTO in Alexandria, Virginia. Or, if your lawyer filed the application, official word will come solely from him or her. All official PTO emails will have .uspto.gov in the sender’s address.

There’s no way to get around providing your contact information when filing for federal trademark registration. That shouldn’t dissuade you from making a filing; just be smart when doing so. Thoroughly ignoring any unsolicited invoices you receive is the best way to take the profit motive out of these scams. You also can report them to the PTO at TMFeedback@uspto.gov.

Be Strategic in Describing the Goods and Services Associated with a Trademark

It pays to be strategic in describing one’s goods and services when applying to register a trademark with the U.S. Patent and Trademark Office. Following are some considerations:

  • Be vague but accurate. Generally, the vaguer a description is, the more intellectual property “real estate” one gets in the resulting trademark registration. An applicant needs to be accurate, but the more words it uses to describe the goods or services associated with its trademark, the more it limits its claim. To get the broadest claim, say “shirts,” for example, not “women’s long-sleeved silk t-shirts.”
  • Consider a narrow description. Though broad claims are often best, sometimes it makes sense to describe goods and services with more specificity. Narrow claims can help put distance between an application and a prior filing, which can reduce the chances of a drawing a likelihood of confusion objection.
  • Consider an “off-target” description. Ideally, a trademark owner’s application would cover its core goods or services. But sometimes that’s not possible — either because the trademark owner’s core offerings are illegal at the federal level (say, because they involve marijuana), or because a prior filing would block such an application. An “off-target” description that omits the trademark owner’s core offerings can sometimes make a more limited registration possible. The umbrella of protection that extends from such a registration — even one that does not cover the applicant’s core goods and services — is often much better than no registration at all.
  • Minimize descriptiveness and genericness objections. Being smart in describing the goods and services can help avoid a descriptiveness objection. The PTO can deny an application if it immediately conveys information about the associated good or service. While descriptions need to be forthright, trademark owners need not invite this objection with careless wording. In this respect, a vague-but-accurate description can minimize a “merely descriptive” objection. The same is true with avoiding genericness objections. If the applicant defines the goods or services as being the same as the mark, the PTO has no choice but to deny the application.
  • Use the PTO’s pre-approved descriptions. Adopting one of the thousands of descriptions the PTO has already blessed reduces the chance the PTO will quibble with the description. Less importantly, but also a bonus, using a pre-approved description enables a TEAS-PLUS filing, which saves $50 per class. Of course, such descriptions are only appropriate if they are accurate and otherwise suit the trademark owner’s needs. Otherwise, a strategic free-form description is the ticket.

Federal Registration Gives Brand Owners National Trademark Rights

One of the main benefits of federal trademark registration is national coverage.

Once your registration issues, you are presumed to be the exclusive, nationwide, user of your trademark in connection with the goods and services listed on your registration. By illustration, this gives a Seattle owner the right to sue someone in Miami who adopted a confusingly similar mark after the date the Seattle owner applied to register its mark.

That’s right — the rights that flow from a trademark registration relate back to the date a trademark owner files its application for federal registration. That’s the day the world is legally put on notice that the registrant sought to claim national rights in its mark.

Here’s how conflicting trademark rights commonly sort out.

If you sell branded product in Seattle, Tacoma, and Portland, you have automatic common law rights in Seattle, Tacoma, and Portland. That means you can go after copycats in those markets who adopt a name that would likely confuse consumers into believing they are you, are authorized by you, or have some association with you.

But what about the rest of the country? Let’s say the brand owner is called ABC123, and it operates restaurants under that name in Seattle, Tacoma, and Portland. Can it do anything about a new restaurant that opens in San Francisco that is also called ABC123 (or a confusingly similar variant, like ABC124)?

Not without a federal trademark registration. Without obtaining national rights that a registration provides, the restaurant owner probably wouldn’t have any trademark rights in San Francisco available to enforce. In other words, without regularly making sales there, the brand owner probably wouldn’t have any legal basis to complain. That’s why a federal registration is valuable — it gives the trademark owner the legal basis to complain about any conflicting trademark use, anywhere in the United States.

What if there’s another restaurant called ABC123 in Miami that was open at the time the owner of the Seattle, Tacoma, and Portland restaurants applied to register its mark? As long as a registration issues, the Miami owner would locked into the geographic area in which it had been making sales (in this case, Miami) that existed at the time the owner of the Seattle, Tacoma, and Portland restaurants filed its application. This means the Miami owner would have superior trademark rights in Miami, and the Seattle, Tacoma, and Portland owner would have superior rights everywhere else. In this way, a registration whitewashes the map of the United States, giving the registrant superior trademark rights everywhere except for the local areas in which competing users had rights at the time the registrant filed its application.

This usually is the most valuable right a federal trademark registration provides. It can give the brand owner a powerful advantage over its competitors.

A Suspension Letter Just Means You Need to Wait Your Turn

Once in a while, the U.S. Patent and Trademark Office will issue a suspension letter to a trademark owner that has applied for federal registration.

This usually isn’t a good thing. But it’s not necessarily a bad thing, either.

All the PTO does with a suspension letter is preserve the applicants’ respective places in line. Because while the first to use a trademark generally gets better trademark rights than later users, the PTO reviews each application in the order in which they are filed.

So if I apply to register BRAND X in connection with shoes, and you apply to register BRAND X in connection with socks, the PTO might properly issue a suspension letter to you. Its doing so would simply be telling you that it needs to see if my application is going to mature into a registration. If it does, it might very well block yours on grounds of likelihood of confusion. But if I abandon my application, or for some reason it is denied, it need not stand in your way.

This first-first in, first-reviewed scheme suggests two strategies. First, when searching the PTO’s database, you need to pay attention not only to prior registrations that could block your application, but also prior-filed applications.

Second, if you’re going to file, don’t delay. Preserve your place in line by getting your application on file. If you sit on the sidelines, you risk someone getting their application in the pipeline ahead of you. And if their application is registered, it may block yours. So don’t delay!

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