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Knockout Searches for Trademarks

A knockout search is a search run before filing a trademark application to assess,

Phoenix Mountain Preserve

primarily, the viability of obtaining a registration on that trademark. Whether you can use the mark is actually a slightly different question from whether you can register it, but a knockout search will reveal some information about the use possibilities. A knockout search is usually a recommended step before filing a trademark application.

There is no requirement that any sort of search be completed prior to a trademark application filing. Many clients forego them. However, the Trademark Office will always run a search – and so clients who skip this first step run the risk that their applications will be rejected by a similar mark that the Office pulls up in its search.

The knockout search reduces this risk. Knockout searches are usually a few hundred dollars or less, compared to the thousand-plus dollar cost of a trademark application. This is money well spent when the search reveals a conflicting mark has already been registered. It gives you the ability to decide whether to proceed forward with knowledge of that risk or to change your mark to avoid it.

When we conduct a knock-out search, we perform it on the federal database, including both the Principal and Supplemental Registers at the Trademark Office. This therefore covers every single mark that could ever be cited against your mark once you submit an application. We used to develop and run each search manually, querying the federal database directly. Now, we also run our searches through a piece of proprietary software which performs an AI-based search of the federal database. With this two-pronged approach, we have found we can provide more accurate results and better predictability to our clients. To that point, in the almost three years since we adopted the two-pronged approach, and for those applications that we ran pre-filing searches, only one was rejected in light of a mark that the Trademark Office found in its search.

Any knockout search should not only deliver a set of raw results – the potentially-conflicting trademark registrations – but should also be a report containing analysis. You hire an attorney not to run a search but for his or legal advice. Trademarks receive rejections if they are too similar to another mark; this question of “similarity” is based not just on the marks themselves, but a number of other factors that a trademark attorney should be experienced in recognizing and evaluating. Therefore, any knockout search should review those factors. In our searches, we provide the most relevant results as well as a determination of registrability, identifying the level of risk of a rejection based on those results.

Some firms only search word elements – trademarks that contain nothing but words. Searching marks that contain design elements, or that are solely composed of design elements without any words, is more difficult. However, there are advanced searching features on TESS (the Trademark Office’s search interface) which allow you to search by design element or design code. We exploit those advanced features, and our software also allows us to search design marks.

Trademark knockout searches are not comprehensive searches. A comprehensive search usually looks for similar marks at the Trademark Office, just as the knockout search does, but then goes further by looking through business name registrations, phone number databases, internet domain names, common law usage. Clients run comprehensive trademark searches if they are concerned with the potential for infringement, if they need to review foreign trademark databases, or if they believe they will expand their business quickly into many locations across the nation.

Knockout searches are also different from direct searches. A direct search covers essentially only the mark itself. This is often the sort of search that a client runs on its own; if so, clients can sometimes mistakenly believe that their marks can be registered because the direct search didn’t return any results. However, ignorance is not bliss – the direct search does not replicate the search the Trademark Office runs, and so it is not an accurate predictor of the likelihood a mark will register. Only a knockout search will do this.



Correction of Inventorship in Patents

A patent must identify the correct inventors.  A patent which names the wrong inventors can be invalidated.

Early Morning, Phoenix Mountain Preserve

Early Morning, Phoenix Mountain Preserve

Sometimes, friends and spouses want to identify each other to be nice, but a person is only an inventor if they have contributed to material claimed in the patent.  Occasionally, mistakes are made in the identification of the inventorship and they have to be corrected.

Inventorship can be corrected if the mistake occurred in the original oath or declarations, or if the inventorship was not updated as the examination was processed and the claimed subject matter changed.

Although there is no requirement that an inventorship  mistake be corrected diligently after it is discovered, there are timing requirements.  This means that corrections that are made after a notice of allowance has been mailed will not necessarily be approved; though rarely will an Examiner deny the correction.

The main requirement in fixing this mistake is ensuring that it did not happen on purpose, that there was no “deceptive intent.”  The patent rules state that if the inventorship is mistakenly submitted an executed oath or declaration in a nonprovisional application, and the mistake arose without any deceptive intent on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, then the inventorship may be corrected to name only the actual inventor or inventors.

Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or was not the sole inventor.  If such an error occurred without any deceptive intent on the part of the erroneous inventor, then the Patent Office can substitute the correct inventorship for the erroneous inventorship.  Instances where corrections can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inventors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; and erroneously identified joint inventors to a different, but actual, sole inventor.

Amendment of the inventorship requires:

  • A request to correct the inventorship, explaining the requested change;
  • A statement from each person being added (if applicable) as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
  • A statement from each person being deleted (if applicable) as an inventor that there was no deceptive intent error in inventorship occurred without deceptive intention on his or her part;
  • An oath or declaration by the actual inventor or inventors
  • The processing fee ($35 for small entities as of the time of this writing) and potentially an additional processing fee depending on the timing of the request
  • If the patent application has been assigned, then written consent of the assignee
  • A corrected Application Data Sheet that updates the inventorship with markings


Sonos Sues Google For Patent Infringement

Patent InfringementSonos pioneered wireless multi-room audio in the early 2000s and first brought consumer products to the market in 2005.  Now it has taken on a juggernaut in smart home technology.  The battle highlights the need for – and difficulty of – foresight when drafting agreements governing intellectual property joint ventures.

Sonos sued Google for infringement of its patents covering smart speakers.  Sonos and Google had entered into a joint R&D venture to integrate Google Play Music into Sonos speakers, during which time Sonos shared a great deal of technological information with Google.  These ventures are common.  Sometimes, they end poorly, in litigation.  Sometimes, as happened here, the joint venture goes well but, a few years later, one of the parties comes out with products that are eerily similar to the other party’s.

Sonos and Google will have to fight it out in court or, more likely, come to a settlement regarding future use of the IP.  Sonos has additionally filed a complaint in the International Trade Commission, seeking to prevent Google from importing some speakers into the country, on the grounds that the speakers violate Sonos’s patents.  Patentees frequently take this double-pronged approach of filing an infringement suit in district court and a complaint with the ITC complaint.

Sonos has not flied suit against other manufacturers, such as Amazon, even though it is a potential target with its Echo products.  This may be because Amazon is a valuable retailer for Sonos’s speakers, and it doesn’t want to poke that bear.

This is not the first time that Google has been embroiled in such an action.  Over the past few years, Google’s affiliated company Waymo has been fighting Uber over technology they say one of Uber’s top autonomous car engineers – and former head of self-driving cars at Waymo – took from Google.

Cases such as these highlight a number of issues: how to properly handle background IP in a joint venture contract; how to deal with IP developed within a joint venture; whether and to what extent knowhow can be handled; how business relationships may affect a company’s choices in pursuing a potential infringement claim.  These are all difficult issues to negotiate, and difficult issues to predict.  However, when writing a joint venture agreement, license agreement, or other agreement concerning patents, trade secrets, and knowhow, both sides must attempt to look into the future and consider both the positive and negative possible outcomes.



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.



Are Federal Judges Disqualified From Hearing Cases Involving Trump Interests?

In 2016, Prospector Capital Partners sought to cancel a number of Donald Trump’s trademark  registrations (one of the design marks is shown to the right) for TRUMP in connection with golf courses, online retail store services featuring golf accessories, PACs, limo services, gambling services, lotion dispensers, jewelry, dress shirts, and various other goods and services. Prospector asserted that Trump had abandoned the trademark by failing to use them. Prospector did not quite set its claim correctly, however, and Trump was able to dismiss the cancellation on a technicality. The Trademark Trial and Appeal Board hearing the case granted Prospector a 20-day period to fix its error, however.

Rather than filing an amended petition to cancel, Prospector filed a motion to disqualify the entire Board on the basis that President Trump holds an interest in the trademark registrations and the judges are all appointed by the Secretary of Commerce, who serves under the President. Prospector suggested that, since Trump essentially has the ability to fire all of the judges, they could not be impartial.

The Board flatly rejected this suggestion.

First, it noted that the laws governing disqualifications of judges only apply to judges on courts. The TTAB judges are administrative judges on an administrative panel, wholly within the US Patent and Trademark Office. They are not judges on a court, and the laws pertaining to such judges therefore do not apply to them.

Second, it stated that government procedures are at least presumed to operate regularly and without improper motive.

Third, the Board countered that there were no facts indicating that the Board might be swayed by Trump’s ability to fire.

Fourth, the Board found that there was no statutory limitation in proceedings that it was incompetent to handle. Thus, the Board has the authority to determine rights of registration regardless of the owner of the registration. If such limitations were in place, the Board offered, whole classes of applicants, such as both high-level and low-level government executives, might find themselves without a forum to adjudicate their rights, which is “absurd.”

Finally, the Board highlighted the option Prospector has already: it can always appeal the Board’s decision in federal court. We’ll see if that happens….



Green Business Certification

This week the law firm was recognized as a Green Business by the City of Phoenix. We are the second law firm in Phoenix to be recognized for its efforts in diverting material away from area landfills. We emphasize all three important elements of reduce, reuse, and recycle to conserve resources here at the office.  We’re thrilled with the recognition, but more concerned that other businesses may be missing the opportunity to reduce their footprints.

If you’d like more information about our efforts or the efforts of the City of Phoenix, please give us a call and we’d be happy to talk with you about how you can help.



WTC Sues Ironman For Kids for Trademark Infringement

The Tampa-based Word Triathlon Corporation, owner and licensor of the IRONMAN, M DOT, and various Ironman-related trademarks, has sued a San Antonio, Texas company for using the domain name “ironmanforkids.com.”

Beyond the famous IRONMAN trademark, WTC owns the trademark for IRONKIDS and many other IRON-formative marks. My own daughter has done a couple of these IronKids fun-runs before my races. WTC alleged trademark infringement and tarnishment of its reputation. Ironman For Kids apparently seeks donations to help children. WTC likely isn’t complaining of the fact of the charity, but rather that charities outside of its selection were identified as beneficiaries; the World Triathlon Corporation often selects designated charities for certain races, so that one or a few specific charities receive a benefit from one community by design.

WTC had sent a cease-and-desist letter before filing suit, but the recipient refused to budge and instead offered to sell the domain to WTC. Such actions can often prove to be incredibly damaging, as may be considered evidence of a bad faith registration, done merely to extract a premium from a trademark owner.

Often, a UDRP proceeding is a common mechanism for taking down or transferring a domain name. I ran a search through WIPO and FORUM – the two arbitration bodies for UDRP disputes – and found no history of any cases. Thus, it appears that WTC did not seek to have the domain name taken down and transferred, but instead opted to file suit directly.



Acceptable Specimens for a Trademark Application

One of the requirements to be granted a trademark registration with the U.S. Patent and Trademark Office is to establish that the mark is being used in the United States for the goods stated in the trademark application. This requires proving to a Trademark Examiner that the mark is actually being used with a specimen showing such use. This often creates a stumbling block. Not all material that has a trademark on it is acceptable as a specimen. Some types of specimens are improper and will always be rejected. A list of generally acceptable specimens for a trademark application including goods is shown below. This is not an exhaustive list, nor is it entirely reliable; in some circumstances, one of the specimens below will not be sufficient. Hire a local trademark attorney with whom you can talk more about trademark specimens.

  • An acceptable specimen includes a label, tag, or container for the goods, or a display associated with the goods. The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is usually an acceptable specimen.
  • In most cases, where a trademark is applied to the goods or the containers for the goods by means of labels, then an image of the label itself is usually considered an acceptable specimen.
  • Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.
  • Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is generally a proper method of trademark affixation. The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template. When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.
  • Displays associated with the goods essentially comprise point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices. Such displays should catch the attention of purchasers and prospective purchasers. The display should prominently display the mark in question and associate it with, or relate it to, the goods.
  • In appropriate cases, a catalogs is an acceptable specimen of trademark use, provided it: (1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark in association with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders). However, the inclusion of a phone number, Internet address, and/or mailing address merely as part of corporate contact information on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order.
  • A web-page display specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” Assessing the “mark-goods” association on a web page involves many variables, including the prominence and placement of the mark, the content and layout of the web page, and the overall impression the web page creates.
  • Advertising material is generally not acceptable as a specimen for goods. Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods: advertising circulars and brochures; price lists; announcements; press releases; listings in trade directories; and business cards. Moreover, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods. These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties, and business stationery.


Ownership of Works Within the Scope of Employment

In copyright law, ownership of a Phoenix Copyright Attorneycopyright in a work originally vests in the author, the person who creates the work. The presumption is that the author owns the work. This presumption is excepted in some situations. For instance, when a work is specially commissioned, the hiring party is often considered the owner. Or if a work made for hire agreement has been written, the contract will specify who owns the copyright – the author or someone else. Or, if the work was created by an employee within the scope of employment.

It is usually pretty clear whether a person is an employee. There is often tax, payroll, control, and business evidence to demonstrate whether someone is an employee or not. Where an employment relationship exists, the work must be created within the scope of employment for the employer to be considered to copyright owner. Courts frequently define the scope of employment very broadly. Even if someone creates something on a home computer, outside of work hours, it might still be considered to be employer-owned if it is closely related to the work of the employer, or the work the employee typically does. Additionally, employee handbooks or policy manuals may define the scope of employment, normal job duties, or other aspects of work that may help color the analysis.

In short, determining whether an author is the copyright owner or a hiring party is the owner is vitally important in determining ownership of intellectual property rights, and subsequent licensing rights. There are no bright line rules on ownership, and a lot of factors can be considered when deciding who the copyright owner is. It is important to consult a competent intellectual property or employment attorney when tackling ownership issues like this.



Continuation Application Strategies

Kate S. Gaudry, Ph.D and Thomas D. Franklin, of Kilpatrick Townsend & Stockton LLP, wrote a few days ago an article on Patently-O regarding continuing application practice. I have written previously about continuing applications (here, here, here, and here), which include continuations, continuation-in-parts, and divisionals, but the authors did an excellent empirical study of such applications.  The authors found that the large majority of continuing applications filed were continuations, that more continuations are being filed each year, and that each year a larger percentage of the continuing applications filed are continuations.

Somewhat surprisingly, the study found that continuations are not prosecuted with much more success than original applications, nor are they likely to receive far fewer rejections.  The statistics only slightly more favorable treatment of a continuation application than an original app.  This runs somewhat counter to my experience, in which I’ve found continuations generally to be much more likely to receive an allowance and receive it faster.