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WTC Sues Ironman For Kids for Trademark Infringement

The Tampa-based Word Triathlon Corporation, owner and licensor of the IRONMAN, M DOT, and various Ironman-related trademarks, has sued a San Antonio, Texas company for using the domain name “ironmanforkids.com.”

Beyond the famous IRONMAN trademark, WTC owns the trademark for IRONKIDS and many other IRON-formative marks. My own daughter has done a couple of these IronKids fun-runs before my races. WTC alleged trademark infringement and tarnishment of its reputation. Ironman For Kids apparently seeks donations to help children. WTC likely isn’t complaining of the fact of the charity, but rather that charities outside of its selection were identified as beneficiaries; the World Triathlon Corporation often selects designated charities for certain races, so that one or a few specific charities receive a benefit from one community by design.

WTC had sent a cease-and-desist letter before filing suit, but the recipient refused to budge and instead offered to sell the domain to WTC. Such actions can often prove to be incredibly damaging, as may be considered evidence of a bad faith registration, done merely to extract a premium from a trademark owner.

Often, a UDRP proceeding is a common mechanism for taking down or transferring a domain name. I ran a search through WIPO and FORUM – the two arbitration bodies for UDRP disputes – and found no history of any cases. Thus, it appears that WTC did not seek to have the domain name taken down and transferred, but instead opted to file suit directly.



What is a Trademark Statement of Use?

Earlier this month I wrote about Notices of Allowances in trademark applications. A Notice of Allowance is the United States Patent and Trademark Office’s manner of moving the substantive portion of examination toward registration; the Office notifies the applicant that application seems ready for registration and then invites the applicant to submit proof that the mark is being used in commerce. The Statement of Use is the applicant’s official response to the Notice of Allowance.

No trademark application, but for some with foreign priority claims, registers without proof of use of the mark. The Statement of Use submits proof of use. It includes a number of things. First, the Statement of Use declares that the trademark is in use in commerce with the goods and services identified in the trademark application. Second, it declares a date that the mark was first used in commerce. Third, it declares a date that the mark may have been used, regardless of whether such use was in commerce or not. Fourth, the Statement of Use provides a specimen, or an example of how the mark is being used. Multiple specimens are sometimes submitted. If the application contains multiple classes – different categories of goods and services – a specimen for each class is required. Sometimes, applicant will also file multiple specimens within a class as well.

A Statement of Use is a filing that swears that the mark is being used on all the goods identified in the application. If some of the goods or services aren’t being offered, an applicant should remove those goods not offered, lest the application and resulting registration be at risk of later cancellation, generally.

A Statement of Use must be submitted within six months of the Notice of Allowance mail date. If it is filed late, it will not be accepted unless accompanied by a Petition to Revive. However, the six-month deadline can be extended. A Request for Extension of Time to File a Statement of Use asks for an additional 6 months to submit the Statement of Use. Further Requests can be filed, but no more than five extension can be obtained in a single application. Failure to file the Statement of Use after the fifth extension results in the abandonment of the application.

The Statement of Use is thus the official mechanism for responding to a Notice of Allowance and presenting the necessary proof of use to finalize the trademark application.



What is a Trademark Notice of Allowance?

Filing a trademark application with the United States Patent and Trademark

Sample Notice of Allowance

Office initiates a lengthy process for the search, examination, and potential registration of a trademark. The Trademark Office reviews applications for technical and substantive requirements before allowing a mark to register. However, no application – with the exception of those based on foreign trademark registrations – is allowed to register without proof that the mark has actually been used in the marketplace. A Notice of Allowance is one part of the trademark application process.

Some trademark applications are filed on an in-use basis. This means that the mark is in use at the time the application is filed; the owners are actively selling their products under a brand, the company is promoting its services under a logo, or some other public, commercial use is being made of the applied-for trademark.

Other trademarks are filed on an intent-to-use basis. This means that the applicant, at the time of filing, is not using the trademark, but does have an intent to do so in the near future. At some point in the application process, the applicant must offer up proof that it has begun to use the mark in commerce.

In an intent-to-use trademark application, proof of use can be submitted early in the process. This is done by filing an Amendment to Allege Use. The Amendment to Allege Use provides the Trademark Office with an example of how the trademark is being used commercially, when the trademark was first used commercially, and then requests that the application be processed as an in-use application moving forward. An Amendment to Allege Use is not a required filing, and we file very few of them. There can be strategic reasons to file or not file an Amendment to Allege Use, but often times an Amendment to Allege Use is not filed simply because the applicant has not put the trademark to use in time.

If no Amendment to Allege Use is filed, then the Trademark Office reviews and processes the trademark application normally. If all goes well, after a publication period, the Trademark Office will issue a Notice of Allowance to the applicant. The Notice of Allowance invites the applicant to submit a Statement of Use. A Statement of Use if very similar to an Amendment to Allege Use, but is submitted after the publication period. The Notice of Allowance places a deadline on filing a Statement of Use of 6 months. If not Statement of Use is filed, the application is abandoned unless the applicant files a request to extend the time to file an SOU.

The Notice of Allowance is thus the Trademark Office’s way of formally inviting the applicant to submit proof of commercial use of the mark, and restricting the amount of time in which to do so. This moves the trademark application forward to registration or lets it abandon.



Information Disclosure Statements in Continuing Patent Applications

When filing a continuing patent application, such as a continuation, continuation-in-part, or a divisional, it may not be necessary to submit a new Information Disclosure Statement.

When a continuing application claims benefit to a U.S. parent application, it is not necessary to submit an IDS that identifies the prior art cited by the Examiner in the parent application. The only reason to do so is if the applicant wishes such prior art information to be printed on the issued patent. The Examiner will consider prior art that was made part of the file history of the parent application regardless of whether it is presented in a new IDS or not.

However, that does not absolve an applicant from ignoring the IDS. A continuation-in-part will present new material, and will claim new material. Such new claimed subject matter could rope in different relevant art, and it would be appropriate to file an IDS that identifies at least that new art. A continuation or divisional application – even though they don’t present new subject matter – could claim subject matter not claimed before, and thus could require submission of a new IDS.

In short, if newly claimed subject matter is presented, an IDS may very well be likely. If the same subject matter is claimed, an IDS might not need be filed. However, caution, and the risks associated with not disclosing information, might direct one to file an IDS in a continuing patent application.



Trademark Knockout Searches

Before a trademark application is filed, it is often advisable to perform a trademark search. A search can be used to evaluate the risks associated with using a mark and is also helpful for determining the likelihood of federally registering the mark.

There are two types of trademark searches that can usually be run: a comprehensive search and a knockout search. A comprehensive search usually looks for identical and similar marks at the Trademark Office and in common law usage, which includes any instances of the mark being used outside of the Trademark Office, such as business trade names, internet usage, phone numbers, and other local usage. Comprehensive searches require a significant amount of investigation, analysis, and time.

A knockout search is a much more cursory search. The purpose of the knockout search is limited to reviewing filings at the Trademark Office for anything that may pose an immediate danger. Identical marks and very, very similar marks – in terms of sight and sound, generally – may be found in a knockout search, while confusingly similar marks may be missed. Knockout searches are merely quick reviews to eliminate the potential mark if an obvious problem exists.

Some law firms bill for knockout searches. This firm doesn’t charge. However, even though a knockout search can be done quickly and cheaply, its purpose shouldn’t be confused; it is intended to find only the most obvious of issues for a mark as means of eliminating a vulnerable mark. If you’re planning on expanding geographically, using the mark broadly, or establishing a legitimate brand force, you should strongly consider a comprehensive search. Speak with a local trademark attorney for more advice on your particular situation.



Top Reasons To File a Trademark Application

  • To Protect Your Trademark – trademark registrationVery basically, filing an application to register your trademark federally is an essential step in protecting your mark. It gives defensive and offensive benefits, and is absolutely critical in protecting your brand and brand value.
  • You’re Expanding Your Brand – You’ve got an existing line of products under a brand name, but you’re expanding that brand to a new line. A trademark registration will help protect that new line, and prevent others from using similar names.
  • You’re Expanding Geographically – Because a federal trademark registration provides national priority but can be established with quasi-local use, you can prevent others from using your mark around the nation, thus letting you expand from a local or regional use into a larger geographic area.
  • Presumption of Ownership – Parties that use your trademark after you do are infringers, presumed to have knowledge of your trademark registration. Registering a trademark establishes constructive use across the entire nation.
  • Basis for Foreign Protection – A trademark application filed in the US can be made the basis for foreign protection, either through direct national filings or via an international registration under the Madrid Protocol
  • Asset Establishment – Trademarks are representations of goodwill, and as such, can establish considerable value on a company’s books that otherwise would be difficult to quantify and attribute
  • Perpetual Protection – Trademarks are unique in that they provide continuing protection for as long as it they are used.
  • Multiple Avenues of Enforcement – A federally registered trademark can be enforced through a variety of mechanisms:
    • Cease and desist letters are often the most cost-effective, and depending on the recipient and the grounds, can be the most legally effective
    • Infringement can be proven through a lawsuit. Lawsuits are expensive, but can result in the award of damages
    • UDRP – A Uniform Domain Name and Dispute Resolution Policy proceeding can be used to wrest a domain name that infringes on a trademark. If a cybersquatter is using your trademark in a domain name, a UDRP proceeding can grab that domain name back
    • Customs – Registering your trademark with US Customs helps control importation of infringing products


Government Trademark Fees To Rise

The United States Patent and Trademark Office will be increasing certain trademark fees on January 14, 2017. The USPTO is unique among government agencies in that it is a profit center for the US; it generates more revenue for the government than it expends in operating costs.

Most, if not all, of the increasing fees are for paper filings. Trademark applications filed by paper are much more time-consuming than those lodged electronically through the Trademark Office’s online filing system. The filing fee for paper applications is nearly doubling to $600. It appears the costs associated with pursuing a registered trademark are not going to change.

Trademark fees are set at levels projected to cover future costs, including operating costs and reserve funds. The number of applications filed, and the number of registered trademark issued, continues to climb this year, as it has for the past six years. The Trademark Office is predicting that this will not change in the near future. Further, the Office desires to not increase the pendency of a trademark application, which currently averages 9.8 months, despite the predicted increase in trademark filings. Further, the Trademark Office is upgrading its IT systems.

The Trademark Office has chosen to fund these changes and improvements by shifting the fee burden to those still filing by paper. I don’t have figures for the number of applications filed electronically versus in paper, but I find it fascinating that there are apparently enough paper filings that these fee increases will bring in enough money to fund its changes. As the Office puts it: “The fees will allow the Office to further USPTO strategic objectives by: Better aligning fees with the full cost of the relevant products and services; protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings and more efficient resolution of appeals and trials; and promoting the efficiency of the process, in large part through lower-cost electronic filing options. The changes will also continue to recover the aggregate estimated cost of Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations.”



Securing a Domain Name with Pre-Existing Trademark Rights

Domain names are addresses for websites. Domain names are often chosen because of their ability to be remembered, marketed, or commercialized. However, sometimes a domain name is chosen for more illegitimate reasons, such as extracting a premium purchase price out of someone who wants the domain and may have some reasonable claim to it. For example, a business owner may be forced to pay a much higher price for a website domain name embodying the business name if someone is able to register the domain name before the business owner.

There are several processes that can be used to wrest the domain name from the registrant. One of them is a UDRP proceeding. A UDRP proceeding is an arbitration initiated by a trademark owner to establish superior rights in a domain name and force a registrant to cancel or transfer the domain name.

All registrants, when they purchase a domain name, agree to follow UDRP rules and policies, and to be bound by decisions of an arbitration panel ruling on those rules and policies. Thus, when someone registers a domain name that may touch on a trademark, the trademark owner can institute a UDRP proceeding. A successful UDRP proceeding will show that the domain name is similar to the trademark, that the registrant has no legitimate rights in the domain name, and that the domain name was registered in bad faith. When successful, the registrant may be forced to transfer the domain name to the proper trademark owner.

A UDRP proceeding can be an inexpensive, quick, and very effective way to obtain a domain name from an illegitimate registrant, or even a cybersquatter. However, there are very strict technical rules for the manner in which a proceeding has to be prepared and filed, and, of course, the proceeding must be based on substantively strong grounds as well. You should contact a local, competent trademark attorney if considering pursuing a domain name held by someone.



Bicycle Saddle Patent Litigation

bicycle-patent-on-saddle-1 bicycle-patent-on-saddle-2Several bicycle manufacturers around the world have found themselves under attack from an Australian company, Icon-IP, that is suing for infringement of two bicycle saddle patents.

Icon IP had previously twice sued Specialized Bicycle Components, Inc. in 2013 in US courts for its use of a split saddle. Specialized, of course, makes many of the components it uses on its own bicycles, the seat included. Split saddles, those with split noses, or with longitudinal central slots, have become much more popular in the last 5-10 years, with many manufacturers now offering such saddles stock with a new bicycle. Specialized successfully dismissed one of those suits and settled another.

Now Icon IP is suing Merida Industry and well-known saddle manufacturer Selle Royal in Germany for infringement, and has given notice to Giant Bicycles that it may also be receiving a legal complaint.

 

 



Patent Examiners Mostly Accurate in Time

The Office of Inspector General, following up on a report from last year about a patent examiner who had received $25,000 by falsely claiming worked hours, has just released a report on two concurrent studies of about 80% of the 10,000 examiners at the United States Patent and Trademark Office. The study found that while most examiners accurately report their hours and time worked, there is still a large amount of waste in salary, overtime, and bonuses paid out.

The OIG conducted a 9-month study as well as an overlapping 15-month study in looking at time spent. It compared timestamp data from several independent sources within the Patent Office with hours reported by the examiners themselves. The OIG notes that its study was “conservative,” excluded significant amounts of unsupported hours, and thus likely underestimates the number of hours falsely reported, perhaps by as much as half.

The short and long studies were generally consistent in their findings. Approximately 180,000 examiner-hours each year are unsupported by any electronic records, timestamp, or method of verification. It appears therefore, that those hours were wasted, in that compensation was paid for them without any work being performed in return. In the 9-month period, $8.8 million dollars was potentially paid out on unsupported hours; in the 15-month period, $18.3 million was paid out.

Much of the waste comes from a few of the examiners. About 3.5-5% of the examiners accounted for 39-43% of the waste; at least 10% of their hours were unsupported. Of those, many had above-average performance ratings, and about 10% essentially took 3 days off every 80 work hours. One-quarter of the wasted compensation was for overtime work. Further, had the compensation been paid out for actual work, the OIG found that the backlog would have been reduced by 7,500 applications in 9 months and by 16,000 applications in 15 months. This is quite troubling when one considers that most applicants wait 1-2 years for an application to receive examination.

The OIG concluded that there were several reasons for the waste. First, some examiners have realized that they can game the system by falsely reporting time. Second, some examiners are very efficient and get their work done faster than the time allotted yet still report the full time. Other examiners complete more work in the allotted time but then claim overtime. The time allowances and production goals have not been updated since 1976. The OIG recommends enhancing the time-tracking systems and updating production goals within the art units.