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Changing a Trademark From One Word to Two, or Two Words to One

Trademark applications frequently are filed and then need to be amended slightly. Sometimes these amendments are to change the identification of goods or services for the application, or to change the way the mark is described. Changes such as these are usually straightforward.

Sometimes, though, the trademark itself needs to be amended. This always needs to be done with extreme care and planning. This need usually arises in the context of an intent-to-use application, where an entity files a trademark application on a mark it is planning to use. Sometimes, the company or person is planning on using one form of a mark but then when the product actually goes to market, the form changes. Many times, I’ve seen a mark get filed as one word or as two words and then need to be switched to two words or one word, respectively. In other words, an application may be filed in the form ONE TWO and then need to be changed to ONETWO, or be changed from ONETWO to ONE TWO.

Changes like this are often driven by the way the mark is eventually actually used in commerce. Of course, preferably these changes can be anticipated and dealt with early; the timing of the change within the course of prosecution of the application can affect the ability and ease of making the change. Since the mark is usually already being used, changing the actual trademark is usually not an option. In other words, re-branding to keep the trademark consistent with the application is usually not an option – the costs of new designs, new printing, new labels, new stickers, new stitching, etc. are prohibitive. So usually the trademark application must be amended.

I do not recommend making changes to the mark in the application without the assistance of a trademark attorney. Per the trademark examination rules, a proposed amendment cannot materially alter the mark. If an Examiner finds that a proposed amendment materially alters the mark, the Examiner will refuse to enter the amendment, and then the application’s mark and the actual trademark will forever be inconsistent, leading ultimately to trademark application being abandoned. In some cases, depending on the timing of the amendment, the Examiner may not even be able to enter it, even if he or she would otherwise approve it. In other cases, it is better to file a response or a statement of use that shows the mark inconsistently, wait for the Examiner to raise the issue, and then respond.

Though changing the mark may seem like a very simple thing to do, it can have disastrous consequences, including abandonment of the application, and so careful planning and good counseling is absolutely necessary.



Filing an Amendment to a Trademark Application After Issuance of a Notice of Allowance but Before Submission of a Statement of Use

Trademark applications which are filed on an intent-to-use basis always present slight risks since the application is filed before the owner has begun using the trademark and before the owner knows 100% how the trademark will be used. There is always the possibility that the trademark will be changed somehow when the mark is actually used.

Generally, once a trademark application is filed, only limited changes can be made to the application, such as removing goods or services, amending the mark description, very minor changes to the mark itself, changing the attorney, some changes to the owner identification. These changes become more difficult to make the longer the application processes. Usually, the changes are most easily made before examination occurs (typically in the first 3-4 months). Once examination has begun, Examiners will often be more reluctant to approve changes. Of course, some changes may be necessitated by issues raised in an Office Action from the Examiner. After examination, most marks are scheduled for publication. Any changes should really tried to be made before publication, because once the trademark application is published, the application can only be changed on very limited grounds. Some changes cannot be made at all. Some changes require a petition to the Director.

Once publication ends, and a Notice of Allowance has issued in an intent-to-use trademark application, changes become even more limited. Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods or services, or the entire description of the nature of the collective membership organization, from the identification; (2) the deletion of a basis in a multiple-basis application; and (3) changes of attorney and changes of address. The Trademark Office will enter other amendments during this period, but only with the express permission of the Director. This requires filing a petition laying out facts and reasons for the change, as well as payment of the petition fee. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review.



How to Reinstate An Expired Patent

This article covers reinstatement of an expired patent – not revival of an abandoned patent application. They are very different, and I’ve previously written about the reviving an abandoned patent application.

After a patent issues, regular maintenance fees must be paid to keep it alive. At the each of 3.5 year mark, 7.5 year mark, and 11.5 year mark, a six-month window opens in which the patent owner can pay the required maintenance fees. The fees are different in each window, and they increase over time. If the fees are timely paid, the patent will remain in force until the next window. If the fees are not paid, however, the patent will expire.

As such, it is crucial that patent owners create reminders for these windows. They should probably create reminders on two separate calendar systems, as deadlines years in the future can be difficult to track.

Nevertheless, sometimes a maintenance fee is missed, and the patent does expire. There is a limited avenue to bring the patent back to life, however. A petition can be filed with the Patent Office requesting the delayed payment of a maintenance fee, if the delay was unintentional.

Any petition to accept an unintentionally delayed payment of a maintenance fee must include the missed maintenance fee, a petition fee, a statement that the delay in payment of the maintenance fee was unintentional. Sometimes, with long delays, the Patent Office will request require additional information regarding the delay, to determine whether it was truly unintentional or not.

If multiple maintenance fees are missed, it is possible to still reinstate the patent. However, each maintenance fee must be paid along with the petition fee, and this could be quite expensive. At the time of this writing, the petition fee only is $2,000 for large entities and $1,000 for small entities. And, if multiple maintenance fees have been missed, the delay is likely quite long, and the Patent Office will almost certainly inquire about the delay.



Can I sign up for Amazon Brand Registry 2.0 if my trademark has not yet registered?

Unfortunately, no. Amazon Brand Registry 2.0 only accepts registered trademarks.

There are two types of trademarks: common law trademarks and registered trademarks. These two categories are not at all mutually exclusive; a common law trademark can become a registered trademark, and virtually all registered trademarks have a common law basis. Only registered trademarks can be relied on for Amazon Brand Registry 2.0.

Common law trademarks are trademarks which are used but not registered. Owners of common law trademarks develop rights in such marks geographically, as the mark is used with products or services that are offered and sold geographically. For example, if you sell bath products in Arizona, you develop common law trademark rights in the name of the bath products in Arizona. As you sell the bath products into other states – Nevada, California, New Mexico, you will begin to acquire trademark rights in those states as well. But if you haven’t sold into Kansas, or Texas, or Ohio, for example, you don’t have rights in those states.

Internet sales complicate this a bit. If you sell on Amazon, for instance, you have offerings that are available across the entire United States. Your common law rights will depend on each state’s laws governing common law rights arising from Internet use, but often this test is a multi-factorial one weighing on the number of sales into the state or other targeting or advertising activities associated with the state.

Contrasted from common law trademarks, registered trademark are those that have been vetted and approved by the United States Patent and Trademark Office. These are trademarks that have been filed, examined, approved, and registered through the USPTO, in a process that takes at least 6-7 months. Your ability to federally register a trademark requires that you use the mark in interstate commerce (which has its own particular definitions and requirements), and also that there not be any confusingly similar trademarks already registered or pending before the USPTO. And, of course, you must prepare and file the trademark application correctly.

At the time of this writing, Amazon Brand Registry 2.0 is only available to trademarks which have gone through the entire registration process at the USPTO, not common law trademarks. An application that has been filed and is still pending cannot support sign up to Amazon Brand Registry 2.0. Rather, Amazon requires that the mark have fully processed through the USPTO and issued as a registration. Because trademark applications take at least 6-7 months to process, and any hiccups can slow that process, it is recommended that those wishing to register with Amazon consult a trademark attorney to mitigate the risk of delays.



Is the U.S. Patent and Trademark Office Affected by the 2018 Government Shutdown?

The U.S. Patent and Trademark Office is not affected by the shutdown which has closed many government offices and agencies after Congress failed to pass a funding resolution.  Navigate to www.uspto.gov and you’ll be greeted by the banner announcing the Office is still open.

While other agencies are dependent upon immediate funding for their continuance, the USPTO maintains a reserve account of funds. The funds allow the Office to continue operating at nearly full capacity for at least a few weeks. These are collected, in part, from the applicants that have filed and prosecuted patent and trademark applications in the United States in previous years.

In December 2017, the Commerce Department issued a shutdown plan which noted: “The USPTO anticipates that it will have sufficient funds from other than current year appropriations to continue full operations for a brief period after a general lapse in appropriations commences. Therefore, all employees of the USPTO will be excepted for such period following a lapse in appropriations.” Commerce Secretary Wilbur Ross emailed USPTO employees on Friday, January 19, 2018 directing them to continue reporting for work until they were notified otherwise.

Collections from previous years enable the USPTO to operate despite furloughs at other federal agencies. The USPTO is well-funded; in fact, it generates far more money in fees than it consumes in expenses. However, fee diversion moves much of its revenue to other governmental agencies. The 2011 America Invents Act allows the Office to trap some of those fees into the reserve account before they can be diverted outside the agency.

Should the shutdown continue and the reserve funds be consumed, employees would begin to be furloughed. A small staff would nevertheless remain to accept new applications and to maintain the IT infrastructure. The electronic filing systems through which most patent attorneys and agents correspond with the USPTO would continue to operate, allowing filing dates to be established and deadlines to be met. The shutdown does close down the File Repository Warehouse, where the paper files for older patent applications are maintained. That warehouse is not operated by the USPTO and so is affected by the shutdown. As such, requests for copies of paper files (which normally take 1-4 weeks for production) will likely be delayed. This would not affect electronic files, of course.

In 2013, the government shut down lasted for two and a half weeks. The USPTO stayed open then, too, using the same reserve fund.



Patent Prosecution Highway to Expedite Examination of a Patent Application

The Patent Prosecution Highway, or “PPH,” speeds up the examination process for patent applications filed in participating intellectual property offices around the world. In most countries, patent prosecution can take quite a long time, on the order of 1-3 years or more.

However, under the Patent Prosecution Highway, participating patent offices have agreed that when an applicant receives a final ruling from the patent office of one country, and that office determines that at least one claim is allowed, the applicant may then request fast tracked examination of corresponding claims in a corresponding patent application that is pending in the patent office of another country. For example, if you file a US patent application and a Chinese patent application, and the Chinese patent application receives favorable examination first, indicating that four of the claims are allowed, you can expedite examination of those four claims in the US application.

PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

There is no fee under the PPH programs, and often, applications advanced under the Patent Prosecution Highway receive favorable examination. This creates considerable cost and time savings in what is otherwise a very expensive multi-national filing.

Many countries or bodies participate in the Patent Prosecution Highway and have reciprocity with the US. Most notably, Australia, the European Patent Office, Canada, China, Japan, Germany, Korea, and the UK all participate. Further, the results of a favorable written opinion or examination of a PCT application can be used as the basis for a PPH request.



Utility and Design Patent Issuances Up in 2017

Nearly every year for the past decade, the Patent Offices have issued more utility and design patents.  2017 was no exception.  While former Director Kappo’s guiding hand has often been praised for increasing patent quality, the patent numbers during his oversight improved as well.  The Office was without an official director during most of Trump’s first year and is now headed by acting Director Joseph Matal.  Despite the uncertainty, in 2017, there were approximately 5% more issued utility patents and roughly 10% more issued design patents than in 2016.  Charts from Patently-O can be seen here.



Registered Trademarks for the Amazon Brand Registry

Earlier this year, Amazon rolled out its Amazon Brand Registry, which is an effort to work with registered trademark owners to protect the customer experience on Amazon’s site. Since that time, as the official correspondence address on my clients’ trademark registration, I have received many requests from Amazon asking to validate and verify trademark owners for the registry. Enrollment in the Amazon Brand Registry provides trademark owners with improved tools for fighting trademark infringement.

It is well known that having a listing removed or a seller flagged for trademark infringement has often been a difficult endeavor on Amazon. Common types of trademark infringement or misuse I’ve seen there include:

  • Someone sells their own product using your name, logo, or trademark
  • Someone sells their own product using a name, logo, or trademark that is similar, but not identical, to yours
  • Someone hijacks your listing but ships a different product
  • Someone improperly lodges an infringement claim against a trademark you own

Handling things like the above generally required contacting Amazon’s automated service, eventually getting through to a person, and having the listing or complaint analyzed and then potentially taken down. This process was slow and cumbersome, especially if there was infringement by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently popping up under different seller’s accounts. The Amazon Brand Registry is intended to ease and speed the process of finding and handling potentially trademark infringement on Amazon.com.

Now, users who are enrolled with the Amazon Brand Registry will be able to create and upload unique videos and photos that are keyed to their accounts. Misuse of that content by others is easier to find and stop. Enrollment also gives you a faster takedown process, letting you clear infringement more quickly than with the old system. Enrolled sellers have access to text searches, image searches, and automated responses to potential intellectual property infringement. Sellers who are enrolled will also appear more legitimate to prospective customers, who may opt to purchase from that seller rather than one with a cheaper price but a more questionable status.

Some points and prerequisites concerning the Amazon Brand Registry:

  • Only owners of federally registered trademarks are eligible to participate in the Amazon Brand Registry. Common law trademarks and pending federal applications do not provide an enrollment basis.
  • Word marks are definitely eligible – these are sometimes known as “standard character marks” because they usually appear simply as capital letters without claim to style or font.
  • Composite marks appear to be eligible. Amazon says that “words, letters, or numbers in a stylized form” and “illustration drawing[s] which include[] words, letters, and/or numbers” are eligible. This seems to imply that a mark or logo having both text and graphical elements will qualify.
  • It appears that pure design marks – graphical elements which have no text, words, or letters – may not qualify.
  • You will need to provide proof of your registered trademark, as well as proof of how the mark is actually being used on the product or packaging for the product.
  • I’ve seen discussion that your trademark has to be registered on the Principal Register, not the Supplemental Register. I have not been able to verify this with Amazon, however.

If you are a trademark owner, consider the following for moving forward:

  • Registering your trademark. Registration is a fundamental requirement for enrollment now, so this action must be taken.
  • Filing the application for trademark registration now. This process typically takes at least 6-7 months, and Amazon’s requirement that your mark be registered means you should start the registration process sooner rather than later. The longer you wait to file, the longer it will take before you can enroll.
  • Registering a word mark version of your mark, if you only have a design or composite mark registered. The word mark will not only be definitely eligible for enrollment in the Amazon Brand Registry, but it typically offers the best and broadest protection for you trademark in the larger marketplace.
  • Does the way you use your trademark on listings, products, and packaging match the registered trademark? Different spelling, spacing, hyphenation, or other variations can limit your ability to use, or potentially even enroll, in the Amazon Brand Registry.
  • Failure to enroll in the Amazon Brand Registry does not mean you cannot report alleged trademark infringement on Amazon, it just means you won’t have all of Amazon’s potential tools available to you for finding and combating that infringement. Typically, clients find it difficult and cumbersome to monitor and remove trademark infringement.
  • If your trademark is on the Supplemental Register, consider moving it to the Principal Register. Not all marks are eligible for this and so attempting the move requires careful analysis together with a use and filing strategy.
  • If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically re-enrolled. You have to manually re-enroll.

More info is available at https://services.amazon.com/brand-registry.html



Making Corrections to an International Patent Application under PCT Rule 91

A PCT application is a special tool created by international treaty which lets applicants secure international patent protection. It does not create an “international patent,” but it does establish a foundation from which patent applications may later be filed all around the world. Most countries in the world subscribe to the PCT treaty, with a few exceptions (Taiwan, notably). One advantage of a PCT application is that it allows an application to be centrally searched, examined, amended, and if needed, corrected, rather than having to take those steps in X countries at X times the cost.

Making amendments and corrections one time, to one application, is much easier and cheaper than making them several times for several applications (and usually through several foreign associates). Changes to the claims can be made in various ways, but normally through Article 19 or Article 34 amendments, which have specific timing and formatting requirements and also involve payment of a submission fee.

If the changes are very minor, they could potentially be submitted through a Rule 91 Rectification requests. These requests are reserved for “obvious mistakes,” and the bar for such mistakes is quite high. However, there is no fee involved with lodging a request under Rule 91, and so it can provide an attractive alternative to making an amendment under Article 34, which has about a $400 fee. Rule 91 requests are limited to changes that are so obvious that is becomes clear that “nothing else could have been intended than the proposed rectification.” After speaking with PCT Office specialists who handle these requests, I’ve learned that the requests are granted for things like misspellings and other typographical errors, like capitalization. However, even in some circumstances, capitalization of may considered to give that word a special meaning, and some examiner may refuse such requests. Incorrectly identifying the parts of your invention by typing the wrong reference character (widget 4 instead of widget 44, for example) is not an obvious error, even when the part is correctly identified in every other instance.

If in doubt about the acceptability of the correction, a Rule 91 request can be filed. It may be rejected, or refused, and then an amendment under Article 19 or 34 will have to be filed.



Intellectual Property Lawsuit Between Google/Waymo and Uber

Trial is moving forward in the Google/Waymo v. Uber intellectual property case. It has been thought that this lawsuit might help crown an early king of the self-driving vehicle industry, which Uber describes as potentially “the most lucrative business in history.”

In February 2017, Google spin-off Waymo sued Uber for misappropriation of trade secrets and patent infringement, stemming from the actions of former Google employee Anthony Levandowski. Levandowski was a high-level engineer in Google’s self-driving car division. He downloaded nearly 10GB of Google’s data – over 14,000 files – a few weeks before leaving Google to start his own company in January 2016. His company, Otto, was focused on autonomous truck technology. Just six months after he started the company, Uber acquired it for $680 million, and Levandowski was named to head Uber’s self-driving car work.

Not long after, one of Uber’s supplies mistakenly emailed information to Waymo about a circuit board Uber had ordered. Waymo looked at the board, thought it was a little too similar to the technology it had been working on while Levandowski was part of its team, and filed suit for a preliminary injunction against Uber.

A preliminary injunction is, essentially, a temporary restraining order. It is an order from a court temporarily preventing an entity from taking certain actions until more evidence can be gathered and a lawsuit filed (or not filed) or settlement reached. Here, Waymo requested that Uber’s work on self-driving cars be halted until Waymo could figure out possible damages and how to proceed next. Waymo won that injunction, showing a likelihood of prevailing in an eventual lawsuit and the danger of irreparable harm.

The case revolves primarily around LiDAR, which is a laser-based radar technology that allows a computer to map or “see” an environment. LiDAR has been used extensively for decades, but has recently come to prominence with autonomous vehicle developments. The trade secrets and patent claims revolve around this technology. The trade secrets claims rest, in part, on things like the designs for the printed circuit boards that Waymo developed, the position and orientation of the diodes and photodetectors on the boards, the selection and placement of optical elements for modifying LiDAR laser beams, and the laser pulse rate in the LiDAR system to create a precise resolution profile of objects in the environment. The patents (U.S. Patent Nos. 8,836,922, 9,368,273, and 9,086,273) also cover LiDAR technology. For instance, the ‘922 patent claims protection in a LiDAR device including a rotatable housing including transmit blocks and receive blocks, with a number of transmitters and detectors in them, such that light is emitted from the device and return light is gathered and collimated, or aligned, and focused back into the detectors. This technology assists in three-dimensional mapping of the environment.

Uber has several different types of LiDAR devices, and the patent claims reflected actions against them. However, in July, most of the patent claims were dropped after the judge encouraged the parties to narrow the issues, and after Uber stopped work on its “so-called” Spider technology on one of the LiDAR devices.

Last week, Waymo’s case grew more tenuous with the release of a due diligence report Uber commissioned before it acquired Otto. Although report includes dark details like Levandowski’s deletion of files and then destruction of the hard drives holding those files. Levandwoski tried to talk with Uber CEO Travis Kalanick about the hard drives, but Kalanick put up a brick wall to the discussion. Together with the report, documents regarding Uber’s designs were released, and even the judge noted that “the product is dissimilar. In many ways, it may be a vast improvement of what was going on at Waymo. So [Waymo has] come up a little short there.” In light of the documents release, trial, set to begin yesterday, has been postponed now to early December.