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Category: Trademark

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.



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.



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.

The firm has successfully filed and prosecuted many trademark applications for clients selling on Amazon and assisted in registering for Amazon Brand Registry status.  If you are in need of an attorney to guide you through this process, please don’t hesitate to contact Tom or call 602-281-6481.



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.



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.

The firm has successfully filed and prosecuted many trademark applications for clients selling on Amazon and assisted in registering for Amazon Brand Registry status.  If you are in need of an attorney to guide you through this process, please don’t hesitate to contact Tom or call 602-281-6481. More info is also available at https://services.amazon.com/brand-registry.html