Seattle Trademark Lawyer

It’s not much, but it’s something.

The U.S. Patent and Trademark Office is extending filing and payment deadlines by 30 days for papers due between March 27 and April 30, inclusive, if a delay was caused by the COVID-19 crisis. The extension comes without cost and covers many filings with the USPTO and Trademark Trial and Appeal Board. Qualifying late-filers merely need to state that the coronavirus materially interfered with their ability to act in a timely fashion.

The USPTO clarifies that “[c]ircumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.”

The extension applies to responses to office action, statements of use, requests to extend the time to file a statement of use, and the renewal of trademark registrations, among other filings.

The USPTO is also waiving the petition fee to revive abandoned applications or reinstate cancelled or expired registrations if the failure to act was caused by the COVID-19 outbreak.

Official guidance on the extensions is available here and here.

This doesn’t offer much relief, but it’s better than nothing. It would be much more meaningful if the USPTO waived payments and extended filing deadlines for six months. That would benefit many more trademark owners and represent a helpful baby step toward restarting the economy.

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.”

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.

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!

Screen shot from the U.S. Patent and Trademark Office’s Web site

The PTO has some excellent resources for learning about trademark law. Videos, even. They’re all free and are collected here.

My favorite tool is the Trademark Electronic Search System (TESS) database. I use it constantly. It’s accessible here.

Click the “Basic Word Mark Search (New User)” hyperlink, click the “Live” radio button, type the desired trademark into the search box, and click the “Submit Query” button. The results will give you hyperlinks to all pending trademark applications and registrations in the PTO’s system. The hyperlinked pages provide basic information about each trademark — the owner, the associated goods and services, the application date, etc. And best of all, you can drill down further from that page by clicking the blue “TDR” button, which provides links to the various documents in the application file — from application to registration certificate. It’s an invaluable tool that I use every day.

The database has its limitations. For example, it doesn’t provide information about a party’s use of the trademark, and you must include confusingly similar trademarks in your search for the results to be meaningful. But it’s a heck of a resource that shouldn’t be limited to trademark attorneys. Anyone can use it, and they should.