- To Protect Your Trademark – Very 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
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.”
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.
Several 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.
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.
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.
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.
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
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.
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.
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- I'm Tom Galvani, a patent> and trademark lawyer in Phoenix, Arizona. I help inventors, entrepreneurs, and businesses develop and control their intellectual property. I host this site and the blog on it to give you an idea of the services I provide and to keep you updated on current developments and helpful information related to patents, trademarks, and copyright. Legal and Disclaimer
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