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THE Ohio State University and the Clothing Trademark Problem

Earlier this month, the Trademark Office refused an application to register a trademark for THE in

One of the specimens used in the THE trademark application by Ohio State University

connection with clothing.

The trademark application was filed by the Ohio State University. Some people have inaccurately seen this as grab by OSU to lock down all uses of the word THE, or that it was refused because OSU can’t be allowed to take the word THE out of the public domain. Both of these assumptions are wrong, however.

Just about any word can be protected as a trademark, but it has to be used the right way, and with the right product or service.

Here, the THE trademark application was refused for two reasons. First, someone else has filed for THE as a trademark already. When a trademark application is filed, the Trademark Office checks its registers to see if someone has previously registered or filed for a similar mark. If a similar mark has already been registered, the new application will be refused. If a similar mark has been filed (but not yet registered), the new application will be suspended. OSU’s application for THE has been suspended because Marc Jacobs, the well-known fashion designer, filed for THE a few months ago, in connection with clothing. His application was refused for technical reasons that often snare clothing trademark applications. Jacobs has 6 months to respond to the refusal, and until Jacobs’ application is either abandoned or approved, OSU’s application will remain suspended, unless it can argue over the suspension.

The second issue for OSU’s trademark application is one frequently seen in trademark applications for clothing. The application was refused because THE was only being used in an ornamental sense. This happens all the time with clothing because applicants think that putting a trademark in big letters on the front of the shirt shows that the trademark is being used. Just the opposite, though. The Trademark Office consistently rejects such proof of use.  In the photo above, words appearing in big font in the yellow rectangle will almost always get rejected.  Words or logos in the small green square will usually (though not always) get approved.  I’m surprised that this attorney, who appears to specialize in trademarks and IP law, didn’t know that, or didn’t file the application some other way to avoid the rejection; though perhaps there are other reasons the filing was made despite this. OSU will now need to provide proof that it is using THE in some other way, such as on a price tag or a label.

This case beautifully exemplifies why clothing trademarks are so delicate. I see more abandoned clothing trademark applications that any other kind, and I believe it is because business owners file them on their own, thinking that putting a name on the front of a t-shirt s sufficient to establish trademark rights. It isn’t; the law just does not reflect the public perception of a name or logo on a t-shirt. If you are considering filing a trademark application for clothing yourself, please don’t – contact a local trademark attorney or contact Tom here.



Protecting Cannabis-Related Intellectual Property

Many say cannabis is the next “Wild West.”  Although a convenient metaphor, it is not entirely appropriate.  Expansion into the American West was full of risk, speculation, and fraud.  The growth of the cannabis industry has been continuous and risky, and while some of the players in the industry have questionable practices and ethics, most are sophisticated business people strategically watching the market and the law.

No Clear Roads Ahead for Cannabis Trademark Protection (photo: Grand Tetons)

For cannabis, companies must negotiate a complex and evolving patchwork of state and federal laws.  Both levels of protection can be used to gain greater security.  Federal protection is advantageous because it is centralized, national, and thus likely to be cheaper and easier to maintain and administer.  However, federal protection has been slow to evolve, and has been risky to pursue.

The availability of federal cannabis trademark registration has waxed and waned in the past ten years, and in the last year has been completely thrown for a loop.  While THC-related trademarks have always been impossible to register, CBD-related ones could be through certain avenues.  Trademark Examiners began issuing rejections against THC marks under the Controlled Substances Act (“CSA”) a few years ago – but did so inconsistently.  The industry hoped that the 2018 Farm Bill would remove the CDA blockade, and it did, but only for trademarks used in connection with products that contain certain minimal levels of CBD only.  However, the Trademark Office also began citing the Food, Drug, and Cosmetics Act (“FDCA”), administered by the FDA, which prevents the sale of anything containing a product that is under clinical investigation by the FDA.  As such, any CBD-containing product which is edible or ingestible – and some CBD products which are topically applicable – now cannot be registered for trademark protection.  Federal law has been a moving target for the past year or two, which has caused trademark owners to file trademark applications, change strategy midstream, split applications into risky and less risky new applications, and generally just keep their fingers crossed during the whole process.  While average processing time for most trademark applications can be 6-12 months, cannabis trademark applications are much longer.

State trademark protection can be much easier to obtain, but it has to be done on a state-by-state basis, obviously.  This can become expensive and more difficult to keep track of.  Additionally, some of the states have changed their rules governing what is and is not permissible, requiring trademark owners to continually re-evaluate their approach.

Patent and copyright protection is much more straightforward, because they are not dependent on some of the same vulnerabilities that trademark protection has.  While trademark protection must be based on use – and thus lawful, permitted use – patent and copyright protection is not so limited.  A CBD or THC related invention is a patentable invention (presuming it meets all requirements of patentability) – and its quasi-legal subject matter does not negate that.  Same with copyrights – as long as the subject matter is something which is original and creative, it can be protected with copyright.

Despite this, we find that trademark protection is the one that cannabis companies usually want.  We work with a number of clients in this space and find that copyright is a secondary concern and patents a tertiary one, if at all.  Generally, protecting the name, the logo, and the brand is of the highest importance.  As a result, we spend a lot of time discussing strategy, short- and long-term risks, and what the road ahead holds for the client.



International Registrations under the Madrid Protocol

Nothing to do with trademarks: Flosser found at the top of Big Mountain, Utah

Years ago, I wrote about international trademark protection, which can be obtained either by directly filing trademark applications through foreign counsel or by filing a centralized trademark application for an International Registration, through the Madrid Protocol. These two routes for seeking international protection are different, and each has its pros and cons.

One of the chief drawbacks of filing for an International Registration is the vulnerability of a “central attack.” Because all IRs are dependent upon a basis application or registration for the first five years, a central attack on that basis application can have cascading effects; if the basis application is abandoned, then the foreign applications will be canceled, unless the applicant divorces them from the IR. Other drawbacks exist for an IR, but this is a major one.

However, this is mostly only a problem for International Registrations that are based on a trademark application. An IR can also be based on a trademark registration. While applications can present a lot of uncertainty and risk, registrations are far more stable. A pending trademark application can falter if there are similar marks already registered, if the mark is considered to be descriptive, if the applicant is identified incorrectly, if there is an issue with the goods and services description…. A trademark registration, however, is much more concrete – it will only expire if it is cancelled for one of two reasons: you forget to maintain it or a third-party attacks it.

Maintenance of a trademark registration requires regular work at very spaced-apart intervals. Initially, a registration must be renewed at the five-year mark, and then again at the ten-year mark, but after that, only every decade. Thus, as long as you calendar your deadline (and you will probably get spammed well in advance of that), you have no excuse for failing to file the renewal paperwork.

A third party can petition to cancel a trademark registration. They might do this if they have filed a trademark application of their own that is then rejected in light of your trademark registration; they want to clear the path of your mark so theirs can register. Or you may have accused them of infringing your registration and they want to have it removed. There are a number of other reasons why a registration might be subject to cancellation. But statistically, the chances of that happening are relatively small.

So the two main dangers posed against a registered trademark are small, which makes filing an International Registration based on a trademark registration fairly safe. There may still be reasons to directly file into some countries (for instance, Mexico and Canada do not participate in the Madrid Protocol), but generally, for a registered trademark, significant costs can be saved with little downside by filing for an international registration. As always, one should consult an experienced trademark attorney for advice on their particular situation. Tom can be reached for more information here.



US Trademark Office Proposes Requiring Foreign Trademark Applicants to Use a US Attorney

About two months ago, the US Patent and Trademark Office proposed a rule change for representation of foreign-domiciled trademark applicants. The rule would affect trademark applicants, registrants, or parties to a proceeding such as an opposition or cancellation, whose domicile or principal place of business is not located within the United States or its territories. If the rule is implemented, these parties – or their foreign attorneys – would need to seek an attorney who is licensed to practice within the US.

The change has three stated goals. First, to increase “customer compliance” with federal trademark law. The second goal is to ensure the accuracy of submissions to the USPTO, and the third is to ensure the integrity of the US trademark register.

These goals all strike me as a little impersonal and machine-like, which may be the purpose behind an efficiency-driven rule change. They really just boil down to the hope that using a US attorney will increase the likelihood that the trademark application or registration, or proceeding flows smoothly through the Trademark Office because the person responsible for it will more likely be familiar with the Trademark Office’s rules. Of course, I’m not sure that these rules are effective measure for achieving the goals: plenty of US attorneys file trademark applications but shouldn’t – just because an attorney is barred in a US state does not mean that he or she is qualified to file a trademark application with the USPTO. We see lots of non-trademark attorneys that screw up filings because they just don’t know what they are doing. I am sure there are many foreign-based trademark attorneys who are better at prosecuting US trademarks than US non-trademark attorneys.

Many practitioners believe this is a response to the influx of Chinese sellers on Amazon and their use of protections offered through the Amazon Brand Registry 2.0 platform. This seems possible. We have seen more cases filed by Chinese applicants without an attorney of their own. Last week, we filed two actions against trademarks owned by Chinese-based applicants without any attorney at all. In both cases, the applications included specimens that appeared fraudulent, digitally-created photograph mock-ups meant to trick a US Examiner into accepting the application. And, both were instances where the applicants were also selling knock-off products on Amazon of my clients’ products. More so, it is well known that, while it costs as little as $225 to file a trademark application pro se, the Chinese government will award around $800 to a successful registration. Therefore, filing fake applications can be a revenue source for a Chinese resident.

The rule change is certainly good news for US attorneys, because it will drive more business to us. Much of that business likely doesn’t really need us – it can probably be competently handled by an experienced foreign attorney. But, some foreign applicants will benefit. And, some fraudulent trademark applications will be curtailed. If the Trademark Office were to require foreign applicants to first find a US attorney, this would raise the bar for filing slightly and would undoubtedly reduce the number of junk trademark applications.

We handle trademark applications in the US and outside the country frequently, both for domestic and foreign clients.  If you have questions about this rule change, or if you are in need of a US attorney, please don’t hesitate to contact us or call +1-602-281-6481.



Trademarks on Software During Beta Testing

A trademark application filed with the United States Patent and Trademark Office must meet certain requirements to be eligible for registration.  At some point, almost all trademarks must be deemed “in use” before the Trademark Office will register them.  “In use” is short for “in use in commerce,” which itself is short for “in use in commerce that can be regulated by Congress,” i.e. interstate commerce or activities that impact or affect interstate commerce. 

Often, determining whether a trademark is in use is not a difficult act.  A restaurant has been operating for years with customers from all over the state?  In use.  Products are branded and sold to customers across the country?  In use.  A blog gets traffic everyday from all over the world?  In use. 

But the law is defined by its contours, its grey areas, and beta testing of software is one of them.  Beta testing, most frequently associated with software, is the practice of releasing a product to a group of customers who not only use it, but test it.  They may provide direct or indirect feedback about its operation.  It is a near-real-world test, allowing the owner to find and fix issues before a widespread release or launch. 

Because beta testing is often experimental, limited to a small number of customers, and done without a fee exchange, questions arise as to whether a trademark used in beta testing is “used in commerce.”  There are no clear answers here.  Courts have found beta testing to be either sufficient or insufficient to establish trademark use, each case having its own set of facts that leaned one way or the other. 

There are some factors that be evaluated to attempt to determine whether a trademark is in use during beta test.  More testers are more likely to be considered “in use.”  Testers outside the state that the company is in will weigh toward a finding of use in commerce.  Arms-length testers – not friends and family – will help lean toward use.  If the beta testing is consistent with other forms of beta testing in the ordinary course of trade within the relevant industry, use is more likely to be found.  The beta testing should not be simply marketing, but rather be part of an ongoing and eventually successful march toward launch.  The more widely available the beta testing is to the public, the better.  The consistency and normalcy with which the beta tested product is marked can affect the “in use” determination.  These factors are not determinative or exhaustive – others may exist and may be more influential, so it always a good idea to contact a trademark attorney to discuss whether your particular use of a trademark is sufficient. 

Lastly, to emphasize that this not a clear test, here is an excerpt from some of the Trademark Office rules:  “Specimens for software may also indicate that the software is a ‘beta’ version. This term is commonly used in the software field to identify a preliminary version of a product. Although some beta products may not be made available to consumers, others are. Thus, the appearance of this term on a specimen for software does not, by itself, necessarily mean that the relevant goods are not in actual use in commerce or that the specimen is unacceptable. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration … because the applicant has not provided evidence of use of the applied-for mark in commerce. ”  TMEP 904.03(e). 

We frequently handle software-based patent and trademark applications.  If you have questions or are in need of an attorney with experience in software, please don’t hesitate to contact Tom or call +1-602-281-6481.



The Patent Office is Not (Yet) Affected by the Government Shutdown

Nearly a month into the government shutdown, the United States Patent and Trademark Office continues to run at full capacity.  The Patent Office is somewhat self-funded, in that the fees that applicants pay to file and prosecute patent applications are used to pay examiners and other staff.  However, the Patent Office is not allowed to spend all of that money willy-nilly; its budget is set by Congress, and the Office is permitted to spend up to that budget limit assuming sufficient fees are collected. 

In past years, sufficient fees have been collected, and with great foresight, the Patent Office has funded an operating reserve account with some of those fees.  While the Patent Office has a separate reserve fund which is supplied by fees paid in excess of the budget, the money into the operating reserve represent fees siphoned from the budget, perhaps the delta between the budget and the operating costs of the PTO.  And, while the reserve fund is empty, the operating reserve has about $300 million.  This is enough to keep the Patent Office running for a short time, about five weeks.

The operating reserve is not exhausted, but is being steadily consumed with this shutdown.  As it drains further, “non-essential” activities will be suspended.  Examiners will likely pause their reviews of applications.  However, the filing systems – and the staff necessary to support them – will remain online so that application filing deadlines can continue to be met.  It is not clear what will happen if the shutdown continues to the point where there aren’t even fees to keep the filing systems up….



Request to Divide a Trademark Application

Occasionally, there will be a need in a trademark application to divide a portion of it out of the application. Dividing an application removes, but does not delete, the identified portion and creates a new application on that portion. This will be done for a number of reasons, such as:

  • The application has been rejected on some of the goods or services but not all of them
  • The mark is being used on some goods or services but not all
  • A suspension has been issued, but only against some of the goods or services

Dividing the goods or services will allow the original application to proceed for further examination. The divided goods or services are made subject to a new application where their particular issues can be addressed separately, without affecting the original application.

There is a cost for dividing an application. In the case of a request to divide out one or more entire classes of goods or services, only a dividing fee is necessary ($100 at the time of this writing). However, in the case of a request to divide out some, but not all, of the goods or services in a class, the dividing fee is required in addition to a new application filing fee (probably $225 or $275 per new class). In other words, it is cheaper to divide an entire class of goods or services than just a portion of that class. In some cases, a trademark applicant may have the luxury of choosing between these, while in other cases, the decision may be forced by the circumstances.



Patent Office Transitions to MyUSPTO Login

For many years, registered patent attorneys, patent agents, and some pro se inventors have been able to log into a secure portal at the Patent Office website to file and monitor patent applications. The portal is protected by both a password and a digital key that requires a lengthy certification process with the Patent Office, so it has mostly just been used by attorneys and agents.

This past month, the Patent Office introduced MyUSPTO.gov, which it billed as a “new, simpler, and safer USPTO.gov account” through which you can access patent and trademark files, monitor a docket, create watches to keep track of competitive patents or your own, and to access the search databases for both patents and trademarks. It is an attempt to unify patent and trademark records, as well as the filing and monitoring systems previously available through the Patent Office only.

Practitioners were asked to link their old portal accounts to their new MyUSPTO.gov accounts by the end of October. Fearing that the old portal would become inaccessible come November, I did this at the beginning of October. What I’ve learned is that while MyUSPTO.gov does offer all the things mentioned above, it also additionally requires two-step verification each day, after completing a prolonged CAPTCHA. This is annoying and unnecessary. I’m not aware of any other provider that requires daily two-step verification; even WIPO doesn’t have it.

As a result, I haven’t been using the MyUSPTO.gov login at all. All of the old services are accessible, and more easily accessible than MyUSPTO.gov. The USPTO is reporting that the digital keys will be officially retired in December, and that a new Patent Center software suite will be rolled out in 2020. As long as the Office continues to provide the old portal login system, I will probably use it, unless they ease this two-step requirement.



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.