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Category: Trademark

US Trademark Applications Based on Foreign Trademark Applications and Registrations

Trademark applications in the US can be based on use, an intent-to-use, or a foreign trademark application.

Spud Lake north of Durango, Colorado

When a trademark application has been previously filed outside the US, for certain entities there are ways to enter the US based on that foreign trademark application.  Applications can be filed under what is called 44(d) and 44(e) bases.  There are a lot of wrinkles to prosecution under both bases, and you should consult an attorney before filing an application under either.  For example, certain actions must be taken if you, as the owner of the foreign trademark, are not domiciled in the United States.  These actions can affect the cost, timeline, and registrability of the trademark application.  And particular timelines must be followed if you are or have filed a number of foreign applications before the US one.  Despite these and other nuances, the below provides a brief overview of the two different foreign-basis processes.

Section 44(d) Filing Basis

Under Section 44(d), your US trademark application can be filed and granted a priority date because you filed a foreign priority trademark application less than 6 months before.  You must claim an intent-to-use the trademark in United States commerce.  The scope of the goods and services identified in the US application is confined by the foreign trademark application; it cannot be broader than the priority application.

The Examiner will then begin to review the US application.  If there are issues with it, the Examiner will send an office action presenting those issues, and you will have 6 months to respond and overcome those issues.  If you do overcome those issues – or they are never raised in the first place – then the Examiner will suspend the application pending an update on the foreign trademark application.

If the foreign trademark application registers and you provide proof of such, then the US application can be converted from a 44(d) basis to a 44(e) basis, discussed below, and the application will be published for opposition (https://galvanilegal.com/wp/trademark-opposition/).  If, however, the foreign application is abandoned, your US application may be re-suspended, or you may have the opportunity to rely on some other filing basis without forfeiting the priority date.  For example, if you have begun to sell the product in the US, you can change the intent-to-use basis of the US application to an actual in-use basis.

It is important to remember that Section 44(d) only provides a basis for receiving a priority filing date – an effective filing date which is earlier than the day the application was actually filed in the US – because of the foreign trademark application.  It does not provide a right to publication or registration.

Section 44(e) Filing Basis

If you own a valid foreign trademark registration, you may be able to base a US trademark application on it under Section 44(e).

When you file an application under 44(e), you must claim a bona fide intent to use the mark in US commerce, the scope of the goods or services cannot exceed that of the foreign trademark application, and you have to submit a copy of the foreign trademark registration from the country of your origin.

If the Examiner finds that all filing requirements under Section 44(e) are met, the US trademark application will be approved for publication.  If not opposed, it will then proceed toward registration.  Section 44(e) thus provides a basis for registering a trademark in the US without actually using it in the US.  There are some drawbacks to this, but it is nonetheless an important exception to the conventional requirement that a mark be used in order to be registered.



Coronavirus: US Patent and Trademark Office Extends Deadlines Further

Drive Back from Solitude Ski Resort

The CARES Act gave the US Patent and Trademark Office the authority to toll, waive, adjust, or modify deadlines related to patent and trademark owners in light of the coronavirus pandemic.  At the end of March, the USPTO announced it would do just that.  As I summarized here, certain deadlines falling between March 27 and April 30 would receive 30-day extensions when accompanied by a statement regarding the effect of the pandemic on the deadline.

The Office has now modified that deadline extension.  Yesterday, the USPTO announced that deadlines falling between March 27 and May 31 will now be extended up to and including June 1, provided that the filing or fee payment is accompanied by a specific statement that the delay was due to the COVID-19 outbreak.

Please note – this is not an additional extension.  It does not grant another 10, 15, or 30 days to file.  Rather, it simply says that eligible deadlines can now be extended (under the right circumstances) up to a specific day – June 1.  If your deadline was originally due March 27, this gives you two additional months.  But, if your deadline fell on May 31, this only gives you a single extra day.  It s unclear at this time why the Office chose to create an extension running to a specific day rather than an extension of all deadlines by X number of days, as it previously had.

It is possible that this extension allowance will be modified again.



Trademark Office Changes Rules About Personal Emails

Descanso Gardens

About two months ago, the Trademark Office announced entities would have to begin disclosing their personal email addresses in trademark applications and trademark registrations.  I joined almost 200 trademark attorneys in protest of this rule.  We argued that it would expose clients and pro se applicants to spam emails, would eliminate applicants’ privacy, and would provide no real benefits.  The Trademark Office caved on some filings, but not all, and we were required to disclose applicants’ email addresses.

On Friday, the Trademark Office altered course.  While still requiring that personal email addresses be disclosed in trademark applications and trademark registrations, those addresses will be hidden from public view.  The exception is if a trademark applicant files an application on his or her own.

The announcement from the Trademark Office:

We’re taking steps to address your concerns about owner email addresses being visible in TSDR. The owner email address field is now masked in TEAS and TEASi documents viewable in TSDR, including submissions viewable in the documents tab, application programming interfaces (APIs), and PDF downloads. Unrepresented owner email addresses will still be viewable in the correspondence email address field. When you open a TEAS or TEASi document in TSDR, you’ll see ‘XXX’” in the owner email address field. We believe this will help reduce the number of solicitations you receive.



CORONAVIRUS: Trademark Frequently Asked Questions

Hummingbird resting outside my new home office

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office is allowing a 30-day extension to some trademark filing and fee deadlines missed because of the COVID-19 epidemic.  The below are frequently asked questions on that extension program for trademark-related issues.

Question 1: How do I take advantage of the 30-day extension of time for certain trademark- and TTAB-related deadlines?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered on-time if it is made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. See Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.

Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit?

No, there are no formal requirements for how the statement is made.  The statement need not be verified or provided in affidavit or declaration form. It can be provided in the relevant TEAS or ESTTA form or included in the document being filed.  TEAS filings all have a spot for a miscellaneous statement – this may be a good location to make the statement, provided it is very clear.  These statements are a certification under 37 CFR § 11.18(b), and violations of that section may be subject to sanctions.  The statements must, of course, be truthful.

Question 3: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?

A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with an on-time filing, response, or fee payment in a trademark application, registration, or proceeding.

Question 4: What circumstances qualify as materially interfering with timely filing or payment?

Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.

Question 5: Who must have been affected in order to take advantage of the 30-day extension of time?

The person affected by the outbreak may be a practitioner, trademark applicant, registrant, or other person associated with the filing or fee.  It is unclear whether the person must actually be sick; the language of the rule says the person must be affected by the outbreak, not by the disease itself.

Question 6: When does my new trademark or TTAB filing deadline run?

Determine your new filing deadline by adding 30 calendar days to your original filing deadline, but only if the original due date was between (or including) March 27, 2020, and April 30, 2020. If the extended deadline falls on a Saturday, Sunday, or a federal holiday, the extended deadline is the next regular business day.

Question 7: Will the US Patent and Trademark Office have further extensions available?

At this time, there has been no announcement.  However, it is expected that if the outbreak continues, and especially continue to depress the economy significantly, the availability of the extension will also be continued.

Question 8: Are all trademark filings eligibility for extension?

No, only some of the filings and fees are eligible.

Question 9: What trademark filings are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

First, only deadlines that are delayed due to the COVID-19 outbreak may be delayed.  Second, only certain filings are eligible, including the following:

  • response to an Office action in a trademark application, including a notice of appeal from a final refusal
  • statement of use or request for extension of time to file a statement of use in a trademark application
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
  • in a trademark registration, an affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a), 37 C.F.R. § 2.160(a), 15 U.S.C. § 1141k(a), and 37 C.F.R. § 7.36(b)
  • renewal application

Question 10: TEAS is electronic and sometimes does not accept filings after the deadline.  Will TEAS automatically accept a filing made under the CARES Act extension?

Yes.  TEAS will accept your filing. Locate the TEAS form for the filing you need to make, enter the required information for the filing, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the “Miscellaneous Statement” field of the form you are filing.

Question 11: Is the US Patent and Trademark Office open for filing trademark documents and fees even though its offices are closed to the public?

Yes, the USPTO is open for the filing of trademark documents and fees. Use TEAS for all trademark application and post-registration filings. For more information,

Question 12: What TTAB deadlines are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

There are only two deadlines that can definitely be extended at the TTAB.  They are:

  • a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a)
  • a notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a)

For any other TTAB situation where the COVID-19 outbreak has interfered with a filing, you can request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time.  It may or may not be granted, however.

Question 13: Will ESTTA accept a filing made under the CARES Act extension?

Yes. ESTTA will accept your filing. Locate the ESTTA form for your filing, enter the required information, add any attachments, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the attachment or appropriate field of the form you are filing. Make sure that the request is conspicuous and obvious.

Question 14: How do I receive an extension for a TTAB filing?

You must file the extension request through ESTTA and include a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Question 15: Will the TTAB grant a final 60-day extension of time to oppose because of the COVID-19 outbreak?

The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak. When specifying the good cause or extraordinary circumstances, the statement that the delay was due to the COVID-19 outbreak can be included in the “other” basis for the extension.

Question 16: Has the USPTO provided any other relief for trademark filers in view of the COVID-19 outbreak?

Yes. For trademark applications and registrations that were abandoned or canceled due COVID-19 outbreak, the USPTO is waiving the petition fee to revive the abandoned application or reinstate the canceled registration.

The petition to revive or reinstate must include a statement describing how the missed deadline was caused by the COVID-19 outbreak, and it must be filed within two months of the issue date of the notice of abandonment or cancellation.  If the trademark applicant or registrant did not receive that notice, the petition must be filed no later than six months after the date the Trademark Office’s electronic records show that the application is abandoned or the registration is canceled.

Question 17: If I have a question about CARES Act extensions, whom do I contact?

While the Patent Office has a help email dedicated to COVID-19, the Trademark Office is using a general inbox: TMPolicy@uspto.gov.  I have found, however, that emails sent to general email addresses at the USPTO never get returned.  You can also contact the Trademark Office of Petitions at 571-272-8950, or for TTAB matters, you can use TTABInfo@uspto.gov or 571-272-8500.  You can also call Arizona trademark attorney Tom Galvani.

 



CORONAVIRUS: US Patent and Trademark Office Response

Quail eggs in our backyard

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office has made extensions available to filing, response, and fee deadlines in certain patent and trademark matters. The Office recognizes that the outbreak, and the economy impact thereof, have made it difficult or impossible for some entities to meet their deadlines. Applicants have been affected. Patent and trademark owners have been affected. Law firms and legal personnel have been affected. The Office is allowing some deadlines to be extended for 30 days under certain circumstances.

In all cases, a deadline can be extended only if the outbreak materially prevented or interfered with an on-time trademark filing, response, or fee payment. “Materially prevented” or “materially interfering” includes situations such as office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances. Further, only certain people can claim the extension: the person affected by the outbreak must be a practitioner, applicant, registrant, or other person associated with the filing or fee.  Lastly, only deadline falling within certain dates will qualify.

If you request an extension, you need to do so explicitly and conspicuously; if the request is hidden, it will probably be delayed or may even

be missed completely. This will require further follow-up by you with the Patent and Trademark Office to make sure it gets processed – just extra work from you during a time when you don’t need more on your plate, if you’re being truthful that the outbreak has affected you. And of course, you must be truthful when making the statement. It is a good idea to at least internally and carefully document the circumstances that are preventing the filing from being made on time, and then to keep those detailed records in case a question about their veracity ever arises. I predict that in five to ten years, some patents and trademarks could be invalidated in litigation because a COVID-19 extension was taken but shouldn’t have, or because the legitimacy of the conditions around the delay could not be shown.

An extended deadline window starts the day after the original deadline. That is day 1. Day 30 – the end of the window – is 30 business days afterward, so long as day 30 is not a weekend or federal holiday. If it is, then the extended deadline falls to the next regular business day.

I’m publishing more information about the US Patent and Trademark Office’s response to coronavirus this week. In the meantime, you can contact patent and trademark attorney Tom Galvani at 602-281-6481.  During the pandemic, Tom is working remotely and will likely return your call from a 435 number.  Videoconferencing is also available.



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.