Seattle Trademark Lawyer

It’s been a long time in coming.

Ten years, to be exact.

That’s right, ten years ago, Atkins IP opened its doors.

It was a happy experiment to discover our place in the market, to work virtually, and to serve clients in new ways.

Since then, we’ve worked hard to protect our clients’ trademarks and copyrights — in court, and through government offices.

I couldn’t have done it without you. Really. As a solo practitioner, I’ve been the fortunate beneficiary of so many people’s time, trust, and help. Thank you, thank you, thank you! 

With all my gratitude, here’s to the next ten years!

In 2012, the U.S. Patent and Trademark Office launched a pilot program to audit claims of continued trademark use when registrations were renewed. The purpose of the audit was to detect fraud or ignorance of the use-in-commerce requirement. Of the 500 registrations audited, 253 (51%) failed to demonstrate trademark use.

In 2017, the Trademark Rules of Practice were amended to authorize the USPTO to require additional evidence of use when a registration is renewed. Since then, almost 5,000 registrations have been audited. Again, more than half resulted in the amendment to delete goods and services from the registration — presumably, because the owner could not establish use in commerce.

A mark is used in commerce for goods when the mark is place on the goods, and the goods are sold or transported in United States commerce. For services, a mark is used when it is displayed in the sale or advertising of the services, and the services are rendered in commerce. Use in commerce is a prerequisite for most applicants to get a registration in the first instance, and is required for all registrants to renew.

Going forward, the USPTO plans to audit approximately 5,000 registrations per year. Audited marks are selected at random from renewed registrations that include four or more goods or services in a single class or two or more goods or services in two or more classes.

Trademark owners should expect to be audited. This means that upon renewing their registration, they should ensure that every good and service included in their renewal is both in use and can be demonstrated to the USPTO’s satisfaction. For goods, this usually means photographs showing the mark on a tag or label affixed to the good, including through hang-tags attached to a good; and for services, it usually means copies of brochures, signs, or website screen shots that show the mark being used to promote the service, and include the URL and date the page was accessed or printed.

The USPTO’s audits don’t change the substantive requirement that a mark be used in commerce. However, it broadens the need to prove that each listed good or service is actually being used. While random, audits should no longer be a surprise. To the contrary, owners should plan for them by confirming that each and every good and service included in the renewal is still being used. Any good or service that is not in use should be deleted. And owners should gather and safeguard any hard-to-find proofs so they are not deleted, recycled, or lost in the ordinary course of business.

As a result of these efforts, trademark owners should not be disadvantaged by an audit, and the Principal Register should more accurately reflect marks that qualify for the expanded protection that registration provides.

The U.S. Patent and Trademark Office can deny your application for federal trademark registration for any of the reasons stated in Section 2 of the Trademark Act, 15 U.S.C. § 1052.

There are about twenty. However, you can forget about most of them. For practical purposes, the main ones to worry about are: likelihood of confusion, mere descriptiveness, deceptive misdescriptiveness, primarily merely a surname, and unlawful use. These objections are summarized below. 

• Likelihood of confusion. Frequently, the most tricky objection to consider is whether your mark is confusingly similar to a prior filing. This mainly means that your mark is too similar to the mark reflected in a prior-filed application or registration, in the context of the associated goods and services, such that ordinary consumers would likely, or probably, mistakenly believe that your goods or services come from the prior filer. This includes both identical trademark matches, as well as close variants. You even might have superior rights in your mark because you used before the cited prior-filer, but the USPTO still will deny your application if someone else filed before you. There are potential ways around this objection, but that’s the basic gist.
• Mere Descriptiveness. A descriptive trademark immediately conveys information about the good or service being sold in connection with the mark, e.g., SEATTLE’S BEST COFFEE or SPEEDY AUTO GLASS. Such marks leave nothing to the imagination. The USPTO objects to descriptive trademarks because they primarily provide information, rather than identify the maker or provider of the branded good or service. In other words, the mark mainly provides information, rather than functions as a trademark by identifying the source. Longstanding use can convert a descriptive (and unprotectable) trademark into a protectable and registrable one, but doing so usually requires at least five years of “substantially exclusive,” continuous use. Otherwise, your application to register such a mark will be denied (though it may be possible to obtain registration on the Supplemental Register).
• Deceptive Misdescriptiveness. If a shirt sold under the brand COTTON actually contains cotton, you should expect the USPTO to object based on grounds of descriptiveness. However, if the shirt doesn’t actually contain cotton, the mark wouldn’t be descriptive. The examiner instead would likely object that the mark is deceptively misdescriptive, i.e., that it claims to have an attractive attribute, but it actually does not. In an effort to protect consumers, such marks cannot be registered.
• Primarily Merely a Surname. No one should have a monopoly over using a surname (last name) as a trademark. Therefore, if consumers are likely to perceive a mark as being “primarily merely a surname,” the examiner will object. The analysis includes the mark as a whole, so including other word or design elements can sidestep the objection. So can longstanding use, which is why MCDONALD’S and FORD can be registered.
• Unlawful Use. Don’t forget that even though marijuana might be legal in your state, it’s still not legal at the federal level. Same with many CBD uses. If your good or service isn’t kosher under federal law, it’s a waste of money to apply to register your mark with the USPTO. Federal laws could change, but until they do, violating one can prevent your mark from being registered with the feds (though state registration could still be possible).

There are other reasons why your application to register a trademark with the USPTO could be denied, but in my practice, these represent the most common reasons. There are some smart workarounds — both before an application is filed, and after an examiner objects — so it often pays to work with a trademark lawyer. However, knowing the basic reasons why a mark can be refused registration is a good first step.

Being locked in isn’t anyone’s first choice, but it does offer one nice advantage: a great excuse to plow through Netflix’s catalog of movies.

I recently watched “Sour Grapes,” a 2016 documentary about a counterfeiter of high-end wine. It covered one man’s operation, from sourcing empty bottles to old corks to distressed paper for faking labels. These wines sold for thousands of dollars a bottle — a long ways from the cut-rate shoes, jerseys, and watches that you might see on the street. However, the operation squarely fits within the same definition of counterfeiting: putting someone else’s brand on a good that the trademark owner didn’t make or approve.

Counterfeiting is a multi-billion dollar problem — not only for the impacted trademark owners, but also for consumers. If that wine with the Château Lafleur label didn’t really come from Château Lafleur, then where the heck did it come from? Maybe the wine inside that bottle is a less-expensive wine made by someone else. Maybe it’s poison, like the kind that killed 70 drinkers in Mexico. Who knows? 

That’s the whole point of trademarks. You know what you’re getting. You see a name or logo, and you instantly recognize the reputation of the seller. Château Lafleur? Great wine. Boone’s Farm? Probably less so. But the economic magic that trademarks provide is ruined when consumers don’t know what’s real and what’s fake. Yes, it’s pretty bad when that jersey you bought didn’t actually come from your team. But think about how bad it is when you don’t know what you’re putting in your body.

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.