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Acceptable Specimens for a Trademark Application

One of the requirements to be granted a trademark registration with the U.S. Patent and Trademark Office is to establish that the mark is being used in the United States for the goods stated in the trademark application. This requires proving to a Trademark Examiner that the mark is actually being used with a specimen showing such use. This often creates a stumbling block. Not all material that has a trademark on it is acceptable as a specimen. Some types of specimens are improper and will always be rejected. A list of generally acceptable specimens for a trademark application including goods is shown below. This is not an exhaustive list, nor is it entirely reliable; in some circumstances, one of the specimens below will not be sufficient. Hire a local trademark attorney with whom you can talk more about trademark specimens.

  • An acceptable specimen includes a label, tag, or container for the goods, or a display associated with the goods. The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is usually an acceptable specimen.
  • In most cases, where a trademark is applied to the goods or the containers for the goods by means of labels, then an image of the label itself is usually considered an acceptable specimen.
  • Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.
  • Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is generally a proper method of trademark affixation. The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template. When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.
  • Displays associated with the goods essentially comprise point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices. Such displays should catch the attention of purchasers and prospective purchasers. The display should prominently display the mark in question and associate it with, or relate it to, the goods.
  • In appropriate cases, a catalogs is an acceptable specimen of trademark use, provided it: (1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark in association with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders). However, the inclusion of a phone number, Internet address, and/or mailing address merely as part of corporate contact information on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order.
  • A web-page display specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” Assessing the “mark-goods” association on a web page involves many variables, including the prominence and placement of the mark, the content and layout of the web page, and the overall impression the web page creates.
  • Advertising material is generally not acceptable as a specimen for goods. Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods: advertising circulars and brochures; price lists; announcements; press releases; listings in trade directories; and business cards. Moreover, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods. These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties, and business stationery.


Trademarks for Etsy Shops

Chances are, if you are considering starting an Etsy shop, you have spent a fair amount of time deciding on a name for that shop. The name symbolizes you, your branding and image, your customers, and it takes on a dominant role in the creation of an online business. Unfortunately, often once a name is picked, little more is done with respect to the name.

Until you get the warning. I’ve seen Etsy shop owners get warning letters, or notification letters, regarding the use and/or infringement of trademark rights in the shop name or product. Etsy seems to have a fairly strict intellectual property rights policy: previous clients have told me that it is a three-strikes-your-out game, and just about anyone can throw those strikes in the form of a complaint submitted through an online form in a matter of minutes.

Thus, protecting your shop name, and using it properly, is a very important next step for a new shop. Developing trademark rights is essential to the success and long-term vitality of the shop.

Trademark rights arise and inure to the benefit of a person or company selling goods or services. Typically, we think of trademarks as those names, logos, and catchphrases on billboards, storefronts, and advertising brochures. However, trademark rights can be developed in much less sophisticated, though just as proper and powerful, ways.

A correctly structured Etsy shop has everything that is needed to create trademark rights. Goods are offered. The goods are advertised in connection with a shop name. The consumer can purchase the goods. That’s about all that is necessary.

However, building trademark rights in a name is not as simple as just setting up the online shop. Some consideration must be given to how the goods are displayed, how the mark is displayed, and how the trademark is used, or things can go wrong

For instance, clothing is one of the largest markets on Etsy, but poses one of the most difficult types of goods for which one can obtain trademark protection. Decorative clothing, silk-screened shirts, handmade dresses are advertised for sale, but if not done correctly, will never lead to trademark rights because the use of the trademark can be considered to be merely ornamental by competitors, the Trademark Office, and even courts. I see the ornamental kiss of death all the time; just using a name on the front of a shirt is not going to protect that name. Not only will you not be able to protect the name, but others may be able to usurp and develop their own trademark rights in it. This is a field in which careful guidance from a trademark lawyer in developing the clothing and building the Etsy shop is crucial and fairly painless.

As another example, with these other goods, the goods or services with which the trademark is used must be related to the trademark carefully. Otherwise, you can end up developing trademark rights as a retailer of goods, rather than as a manufacturer of goods. In other words, if you sell belts, and you really see yourself as a leather worker, you may not trademark rights in “online retail store services featuring belts.” You’ll want your trademarks to be associated with the belts themselves. This is a dichotomy that the Trademark Office has been getting particularly adept at noticing in the last year or two, and can be important for the depth and breadth of your protection.

In summary, consult a local trademark attorney if you are considering starting an Etsy store and are giving any serious thought about the name. Designing, protecting, and using the name are important and necessary parts of running your online business.



Increased Trademark Fees

The Trademark Office is proposing fee changes for many trademark filings. Some of these are fairly drastic. For instance, the fee for filing an initial trademark application is currently $375, but the Office is proposing that this fee be increased to $600. Most of the increased fees are associated with paper applications and paper filings. Clearly, the Office is trying to deter applicants from filing in paper because of the increased time which such applications demand in initial processing and examination. The fee changes have not been approved yet, but could go into effect this year. A comments period is currently open; more information is available here: Federal Register Notice



Corrected Application Data Sheets

Corrected Application Data Sheets

Occasionally, an Application Data Sheet (“ADS”) needs to be corrected because the information in it is wrong. A corrected ADS is a fairly minor correction. However, submitting a corrected ADS is actually fairly tedious. It requires striking through or bracketing out information to remove it and then underlining newly added information. Not that hard, but the ADS form doesn’t provide a lot of space for those corrections. Some of the boxes are barely big enough for the original material. And where a check-the-box needs to be corrected, it can be difficult to show a change from the previous version of the ADS.

The Patent Office has thus developed a Corrected ADS web filing. It already had a web-based ADS that could be filled out and submitted entirely online. I’ve not been a fan of that because the ADS contains quite a lot of information and thus a lot of opportunity to make an error. I prefer to prepare the ADS in PDF form and then review it before filing. However, if a mistake does get made in the ADS, the Corrected ADS web filing seems like a good option for entering corrections into the record.

The Corrected ADS web filing is access through the Patent Office’s EFS filing system.  After submitting the app number and confirmation number for the case, the information gathered from the original ADS will be displayed. Changes are made easily by simply typing in the new information. The Patent Office software will take care of the rest when generating a Corrected ADS.

Almost all of the fields of the original ADS can be changed. The order of inventors can be changed. Note that you cannot add or remove inventors through a corrected ADS. That is done through another, much more complicated, process, which is beyond the scope of this article. You will also not be able to change publication request information. If you have any questions about submitting a Corrected ADS, it is best to contact a local patent attorney you can visit in person to discuss.



Notice of Non-Compliant Response in a Patent Application

Pro se inventors – inventors trying to write a patent application on their own – should discourage themselves from attempting to write and file without help. I say this not for my own job security, but for the good of the inventor. There are many obvious, and many more unobvious, ways to make a mistake in a patent application, an inventor going on his or her own cannot possibly avoid some of them. Even experienced patent attorneys sometimes commit them.

The Supreme Court quoted its own Topliff v. Topliff, 145 U.S. 156 in Sperry v. Florida, when it said that drafting the specification and claims of a patent application “constitute one of the most difficult legal instruments to draw with accuracy.” To that end, writing a patent application requires considerable attention, care, predictive abilities, creative thinking, and hard work. There are so many substantive areas in which a mistake can be made. Beyond that, however, there are even more technical opportunities for a mistake.

I received a notice of non-compliant response recently. This is a notice I received for the first time, and for a very minor oversight. In this case, the notice just pointed out a very small, non-prejudicial, technical error in a response, but one which had to be resolved before the Examiner would consider the response. When a patent application is initially submitted, it presents a list of claims at the end. The claims are numbered, and the numbering helps the Patent Office identify and track claims as they change. Each time you submit a response that amends the claims, the claims must designate their status as original, previously presented, currently amended, new, etc. Failure to designate the status in an amendment will trigger a non-compliant response notice. Fairly easy to get over, but the correction has to be made by a deadline or it will cause the application to be abandon. This is a small mistake I’ll likely never make it again – we made it because we were repeating the original claims and pointing out to the Examiner that she had inappropriately cut and pasted a rejection from an old case with different claims. However, for a pro se application, this could cause a lot of stress and possibly lead to the abandonment of the application if not handled correctly.

I should note that a notice of non-compliant response can be issued for a variety of reasons, not just the one described above. This article is meant to illustrate but one example of such a notice and not to be advice on how to handle any notice. If you receive a notice like this, I strongly recommend you contact a competent patent attorney in your area that you can meet face to face.



Patent Stakeholder Training on Examination Practice and Procedure

The Patent Office has begun offering a Stakeholder Training on Examination Practice and Procedure (“STEPP”), part of its Enhanced Patent Quality Initiative in which it improves quality and communication between the Patent Office and the public. The Patent Office states: “Training delivered through STEPP is designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.”

The STEPP program is intended to increase the transparency by educating the public about examination practice and procedure, provide perspective to attorneys and applicants about how an examiner approaches an application and an office action, and aiding patent attorneys in compact prosecution by showing them how an application is examined under the MPEP.

This program is a good program. I recently attended a presentation by the Silicon Valley Patent Office which serves the west coast on Patent Office operations. It was interesting and helpful, but some of the audience tried to use it as a personal gripe fest about examiners they had faced. That same waste is a concern I have with the program. More importantly, however, one issue with this program is that apparently is only available if you are at the Patent Office, or perhaps one of the regional offices. Expansion to WebEx or other online training should be a goal.



Acquired Distinctiveness Requires Both Continuous and Exclusive Use of a Trademark

When you file a trademark application for a mark that is descriptive of the goods and services – or a quality or characteristic of the goods and services – the Trademark Office will refuse to register it initially. You can still generally achieve registration by amending the application to the Supplemental Register. Or, if you can show long, continuous, and exclusive use, you can keep the application on the Principal Register by claiming acquired distinctiveness under Section 2(f) of the Lanham Act. Basically, you are asserting that the public has come to recognize your mark as indicative of the source of your goods or services because of the efforts you’ve made over several years to associate your brand with a certain quality.

Until recently, it was common that five years of continuous and exclusive would generally satisfy a Trademark Examiner such that you could successfully make a 2(f) claim. However, a discussion I had recently with an Examiner revealed that the Trademark Office has sent down orders to the examining corps that longer use is now going to be necessary, absent other factors such as massive branding or marketing expenditures relative to revenues.

This indicates that showing an adequate length of use is going to be more difficult moving forward. However, a recent ruling within the Trademark Office has raised a new issue. An application was just defeated in an opposition proceeding because it lacked the requisite exclusivity that is part of the 2(f) test. There, an opposer asserted that, while the trademark applicant had used the mark for a long time, it had not done so exclusively, presenting evidence that the opposer and several third parties had used the identical trademark. This was enough to weigh against the application. While absolute exclusivity – likely an impossible standard – is not required, widespread use is inconsistent with a 2(f) claim.



Ownership of Works Within the Scope of Employment

In copyright law, ownership of a Phoenix Copyright Attorneycopyright in a work originally vests in the author, the person who creates the work. The presumption is that the author owns the work. This presumption is excepted in some situations. For instance, when a work is specially commissioned, the hiring party is often considered the owner. Or if a work made for hire agreement has been written, the contract will specify who owns the copyright – the author or someone else. Or, if the work was created by an employee within the scope of employment.

It is usually pretty clear whether a person is an employee. There is often tax, payroll, control, and business evidence to demonstrate whether someone is an employee or not. Where an employment relationship exists, the work must be created within the scope of employment for the employer to be considered to copyright owner. Courts frequently define the scope of employment very broadly. Even if someone creates something on a home computer, outside of work hours, it might still be considered to be employer-owned if it is closely related to the work of the employer, or the work the employee typically does. Additionally, employee handbooks or policy manuals may define the scope of employment, normal job duties, or other aspects of work that may help color the analysis.

In short, determining whether an author is the copyright owner or a hiring party is the owner is vitally important in determining ownership of intellectual property rights, and subsequent licensing rights. There are no bright line rules on ownership, and a lot of factors can be considered when deciding who the copyright owner is. It is important to consult a competent intellectual property or employment attorney when tackling ownership issues like this.



Late Payment Surcharges in Patent Application Filings

Through what feels like a clever loophole, but really is just common sense, there is a way to file a patent application one day and pay the filing, exam, and search fees another day without incurring any surcharges.

Typically, if you pay those filing fees after filing, you’ll have to pay a surcharge of $140 (for large entities as of this writing). Best practices therefore dictate that you pay the filing fees contemporaneously with an initial filing of a patent application. I’ve never been in a situation where I didn’t want to pay the filing fees immediately after filing the application, though I can envision a few very particular situations in which you might strategically do this.

Intentional non-payment aside, sometimes you may not be able to pay the filing fees. The Patent Office’s payment system – Revenue Accounting and Management, or RAM – sometimes goes down for maintenance, and sometimes for unexpected reasons. Extreme caretakers would check to see if RAM was up before lodging an application. However, because you pay for a filing after making the filing, there would still be the possibility that RAM goes down after you check, while you’re filing, and before you’ve paid. In that situation, you’ll likely incur the surcharge. An exception is if you are filing late at night. If you’ve lodged the application in the wee hours in Alexandria (as one on the East Coast can easily do at 9 or 10pm), you can go to sleep, wake up, and pay the fees the next day. Because your application will receive a filing date post-midnight, the filing fees can still be paid on the filing date, even though they weren’t filed contemporaneously.

I called the Patent Office to confirm this, and they agreed. One representative in the Revenue Accounting Department did note, however, that the payment would still need to be received by 1:45pm EST lest it be timestamped the next day. I couldn’t get her to explain why, so if you adopt a strategy as above – which I really can’t recommend – get that payment in early after waking up.



Petitions to Make Special Based on Age

Patent applications generally take quite a long time to prosecute. From the day they are filed, they can easily take two years before issuance, and often take much longer. Much of this time is usually consumed by initial waiting – the Patent Office assigns an examiner to the case, and you simply wait for the examiner to work through all the cases in front of yours. Sometimes this takes a year to two years. I’ve had a few cases that have received initial examination in as little as six months, but it is by far the exception to the rule.

There are ways to expedite examination of an application. When one of the inventors is older, a patent application can be expedited through what is known as a petition to make special based on age. As of this writing, the inventor must be at least 65 years old. A statement must also be made swearing that the inventor is at least 65 years. Only one of the inventors need be 65 or older – the fact that the other inventors may be younger does not destroy the opportunity.

When such a petition is submitted in an application, especially at the initial filing, it can significantly decrease the time to examination. I’ve had some cases that have been examined in as little as three months.   Just this morning, I received a notice of allowance in a case that was filed merely four months ago with a petition to make special based on age.