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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). 



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.



But What About Space Inventions?

Did you know that US patent law worries about space inventions? Congress has written provisions into statute that account for activity in space. So, if you find yourself floating around in US-controlled space, rest assured that patent law has not forgotten you. For instance, 35 U.S.C. 105 states:

(a) Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.

(b) Any invention made, used, or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used, or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry.

I’m guessing that there are plenty of other statutes which define space activity so that it can be regulated. Know of any?



What is acquired distinctiveness?

To function as a trademark, a word, symbol, logo, name, or other mark must be capable of identifying the source of the product or service and distinguishing it from other sources.  Marks are either inherently distinctive, have not distinctiveness, or acquire distinctiveness.  Many marks are “inherently distinctive.”  An inherently distinctive mark is, as its name insinuates, unique by its very nature.  The more unique a mark is, the better it is at differentiating sources of products, and the more powerful it can be in the minds of consumers.  Inherently distinctive marks are eligible for immediate registration on the Principal Register.

Marks which lack distinctivenes cannot function as trademarks.  The Trademark Office will refuse to register such marks.  In many cases, an unregistrable trademark is any term or image that the Trademark Office believes describes the applied for goods or services.  In other cases, the mark may simply be a generic name for the product or service.  Descriptive marks, however, break down into those which are either “merely descriptive” or “geographically descriptive.”  These two terms describe a situation where a trademark is descriptive of the goods or services in the application or the location or origin of the goods or services.  For example, a merely descriptive mark would be PANCAKES for a restaurant that serves pancakes.  An example of geographically descriptive would be AMERICAN BURRITO for Mexican restaurant located in the US.  The Office, upon determining a mark is merely descriptive or geographically descriptive will refuse registration of that trademark.  There are ways to respond to such a rejection, however.

An applicant can respond by arguing that the mark is not descriptive.  These are not easy arguments to make.  Alternatively, in some cases, there may be an opportunity to argue that the mark has acquired distinctiveness and thus has become eligible for registration.

Acquired distinctiveness is when a company has been using a descriptive trademark for over 5 years and that trademark has gained recognition in the industry for the company’s goods or services.  Making an acquired distinctiveness argument is known as making a Section 2(f) claim because of the statute from which the basis arises.  Without the use of a Section 2(f) claim, the Trademark Office would not allow descriptive marks to register.  The Section 2(f) claim must establish that the mark has been used for five years with continuous and exclusive use that has allowed customers to relate certain goods or services to the company’s brand they are able to apply for the mark and rely on this provision to move the application towards registration.  It is important that the use be exclusive because if another company is using the mark in the same industry, then their exists a possibility that the distinctiveness quality of the mark is not so strong.  Often, the Trademark Office will accept a Section 2(f) claim, but sometimes, the Examiner requests to see additional proof of the efforts toward and extent to which the mark has been advertised and accepted as distinguishing the applicant’s goods or services.



Super Lawyers Southwest Rising Star for Third Year

I’m pleased to announce that, for the third year running, I have been selected as a Super Lawyers Southwest Rising Star.  One of these days I imagine I will age out of the Rising Star category, but for now, it is good to be among recognized colleagues.  The patented process Super Lawyers uses for acknowledging the best attorneys includes peer nominations and third-party research.  Only 2.5% of attorneys are selected to the Rising Stars list each year.

I wouldn’t be here without the great work I get to be involved in with exceptional clients, and the support of family and friends.  I’m looking forward to making 2015 another great year for everyone!