Challenging USPTO Trademark Registrations Based on Lack of Use: Trademark Expungement and Reexamination

By: Vivek Vaidya When a trademark application is filed with the United States Patent and Trademark Office (USPTO), it is examined for a host of issues including whether there are confusingly similar trademarks that have already registered.  However, the USPTO doesn’t perform a deep dive of actual use when a trademark application is first filed,… Read More

By: Vivek Vaidya

When a trademark application is filed with the United States Patent and Trademark Office (USPTO), it is examined for a host of issues including whether there are confusingly similar trademarks that have already registered.  However, the USPTO doesn’t perform a deep dive of actual use when a trademark application is first filed, so it is possible that a trademark may register fraudulently in the US, even though the registrant never sold a good or provided a service in the country.

For years, the only way to challenge a trademark registration was through Cancellation Proceedings before the Trademark Trial and Appeal Board (TTAB).  However, that process places a heavy burden on those challenging trademarks from a time and cost perspective. 

The Trademark Modernization Act seeks to simplify the process of challenging certain types of trademark registrations by asserting that certain goods and services were never used in the United States, so a particular trademark registration should be altered or altogether cancelled.  This is done by filing either a Petition for Expungement or a Petition for Reexamination.

A petition for expungement would be used if the registered trademark has never been used in commerce or connected with some or all of the goods and/or services listed in the registration. The time frame for filing a petition for expungement is between three and ten years after the registration date.

A petition for reexamination would be used to claim that the trademark was not in use in commerce on or in connection with some or all of the goods and/or services listed in the registration on or before the date that the USPTO required the registrant to file its proof of use (whether with the application or, later, through a Statement of Use.) The time frame for filing a petition for reexamination is within the first five years after registration.

Once either filing is submitted, the petitioner no longer needs to participate and the USPTO takes it from there – which is a much simpler procedure than a full-blown Cancellation Proceeding that can take up to 18 months.

If you have a situation where a registered trademark that is not actually is in use in the US is blocking your trademark application, Expungement or Reexamination may be a viable option to remedy your situation.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Trademark Modernization Act: Providing New Tools for Trademark Applicants

By: Vivek Vaidya After years of fraudulent trademarks stacking up in the United States Patent and Trademark Office (USPTO) database, major reform is under way.  The Trademark Modernization Act will go into effect in December of 2021 to provide new tools for applicants to overcome certain refusals to their trademark applications. Specifically, the new processes… Read More

By: Vivek Vaidya

After years of fraudulent trademarks stacking up in the United States Patent and Trademark Office (USPTO) database, major reform is under way.  The Trademark Modernization Act will go into effect in December of 2021 to provide new tools for applicants to overcome certain refusals to their trademark applications.

Specifically, the new processes will focus on challenging trademark applications and registrations that contain inaccurate use claims. The hope is that business owners in the U.S. will make smarter and more honest branding decisions for their products and services.

The TMA will set forth the following new procedures:

Two new post-registration proceedings can be filed with the USPTO Director Institute, in order to request the cancellation of unused trademarks.

1) Expungement: one may request the removal of specific goods/services in a trademark registration because the registrant never used the trademark in US commerce.

2) Reexamination: one may request the removal of specific goods/services by arguing that the trademark was not in use by a particular date as alleged by the registrant, usually by showing the specimen showing the trademark in use was not accurate.

After initiating either of these proceedings, the registrant will have an opportunity to respond with evidence that the information in their trademark registration is accurate.

Changes to the Letter of Protest Procedure.

The TMA codifies the Letter of Protest process, which has been long standing but seldom used.  A Letter of Protest allows third parties to submit evidence prior to an application’s registration that challenges its eligibility to be registered.

Changes to the process and rules around seeking injunctive relief.

As per the TMA, a trademark owner who is seeking injunctive relief (a fancy term for getting someone to stop doing something) is entitled to an arguable presumption of irreparable harm upon a finding of infringement based upon the facts of the case. This rule will help trademark owners enforce their rights against infringers in federal court.

Conclusion

The TMA provides trademark applicants with new tools to challenge trademark registrations that are blocking against their applications.  Instead of costly and lengthy Opposition and Cancellation Proceedings, the expungement, reexamination and Letter of Protest procedures will make it easier and more efficient for rightful trademark owners to establish their rights through registration with the USPTO.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Why Trademark Registration is Crucial for E-Commerce

By: John Butcher In the world of online sales, branding can be the main factor that leads to a business’s success or failure. 21st-century consumers have no shortage of options, and with many companies vying for similar markets, the difference between them comes down to the brand more than the product. This is where trademarks… Read More

By: John Butcher

In the world of online sales, branding can be the main factor that leads to a business’s success or failure. 21st-century consumers have no shortage of options, and with many companies vying for similar markets, the difference between them comes down to the brand more than the product. This is where trademarks come in.

What are Trademarks?

Trademarks fall under the general category of intellectual property law, or IP law. They are one of four primary elements of IP, the other three being copyrights, patents, and trade secrets.

Whereas copyrights and patents can protect a brand’s creative work and inventions, and trade secrets protect confidential information, trademarks exist to protect the brand itself. Trademarks shield elements related to brand identity from imitation or impersonation. This extends from the obvious aspects such as company names and logos, to more subtle details like brand color schemes, soundmarks, and slogans.

Trademarks do not legally have to be registered if business is being done only in one geographic location, but in the case of e-commerce that point is moot. Customers online can come from anywhere in the US and abroad. In this case, a trademark should be registered with the U.S. Patent and Trademark Office (USPTO) in order to be able to litigate against brand identity theft.

Why Register a Trademark?

The small “TM” or “R” symbol next to a brand name may seem innocuous, but with it comes an association of trust and identity. Registered brand names ensure that other companies cannot try to impersonate them without fear of litigation. Without a registered trademark, the original owner has little to no protection against infringing parties.

Brand identity also involves taglines and logos, which should be trademarked as well. Going beyond trademark registration , it is also crucial to file design patents for the aesthetic properties of a product that can define a brand. Just like Apple products are recognizable by their white, sleek color scheme, and glass Coca Cola bottles have a signature shape, most successful companies make their products instantly identifiable without the need to see a logo or brand name.

Trademark registration at its core exists to enforce brand identity, and design patents help add to that principle. But what exactly makes brand identity important?

Brand Identity in E-Commerce

The reason that brand identity, and thus trademark registraton, is so important in the e-commerce market is that being successful involves so much more than offering a good product.

Of course, having a great product or service to sell is a great foundation, but the rapid evolution of consumer-focused e-commerce adds many more factors into the equation. The main issues here are a saturation of options and the reliance on consumer trust.

The online marketplace is not limited by geography or a time schedule. This mean that consumers don’t need to buy based on convenience or proximity; they can find the exact product they’re looking for, sold by a myriad of providers, and choose the one that most appeals to them. Given this saturation of supply, purchasing decisions become more influenced by brands.

This leads to the second factor: consumer trust. The internet, being as intangible as it is, offers many options but among those there will be lower quality products and numerous scams. According to J.D. Houvener of Bold Patents:

“E-commerce offers a decreased ability to try things ahead of time and engage with real people to get a sense of their reliability. Thus, consumers will try to find companies they trust and become very loyal to those that reward their trust with good, reliable service.”

Having a consistent brand identity enables that building of trust among consumers; people will know the brand’s name, logo, and slogan and will be able to recognize other people using its services or buying its products. A collective trust can develop when people see other people using a product; this almost becomes an endorsement. Thus, trademark registration becomes crucial to e-commerce market success in the long term.

The Takeaway

Trademarks are essential for e-commerce because they establish brand identity. This means that no other companies in the field can tarnish a brand’s reputation by using the same name, logo, or slogan.

A positive brand association, or even just name recognition, boosts e-commerce sales and success. In a market where consumers have so many options to choose from, good brand awareness can often make the crucial difference. Every business should make sure to register trademarks as soon as they can to reap their benefits.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Architectural Design and Copyright Law

By: Matthew Cox The construction industry is governed by many different bodies of law.  Arguably, contract law lays the unifying foundation for the industry. But other bodies of law still play vital roles in shaping the ever-changing legal landscape.  Intellectual property, and specifically copyright law, is vital to the industry. Just who owns architectural or… Read More

By: Matthew Cox

The construction industry is governed by many different bodies of law.  Arguably, contract law lays the unifying foundation for the industry. But other bodies of law still play vital roles in shaping the ever-changing legal landscape.  Intellectual property, and specifically copyright law, is vital to the industry.

Just who owns architectural or engineering design documents associated with a construction project?  Does the owner who contracted with the design professional for design services own the documents? Or, does the designer, by way of work product created by intellectual means, retain ownership of the plans and specifications?

Design documents are subject to copyright laws in the United States; they fall under the category of “technical drawings,” which includes architectural plans.  Whether or not unique aspects of the design were protected after construction was completed remained a looming question until 1990. Finally, litigation resulting from this issue persuaded legislators to clarify the code.

The straw that broke the camel’s back was a case brought in 1988 by an architect against a homebuilder who allegedly copied the architect’s design after it had already been used to build the home for which the design was initially drawn up.  The homebuilder used the design and constructed an identical home elsewhere. The court found for the builder…. and found no violation of the copyright.

In response, Congress amended the copyright laws to more clearly define architectural work as the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.  This tightening of the rule brings in arrangement and composition of elements, but still excludes individual features. Under this rule, the design professional, by law, owns both the design documents, as well as the unique design elements of the structure—but not the individual elements.

Parties are still free to contract how they see fit, so most agreements contain provisions for the owner to retain a limited license for the plans and specifications while the design professional retains ownership of the  documents. The copyright can also be transferred. Issues arise when the design professional has concerns about use of the design in unanticipated ways by the project owner. In this situation, an indemnity agreement holding the design professional harmless and charging the project owner with providing a defense upon suit is an adequate risk management option.  The general rule of thumb has become: the professional designer retains ownership of design documents unless the parties agree otherwise by contract.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Amazon Brand Registry: Add Trademarks To The Cart

By: Vivek Vaidya The retail industry has been revolutionized by online marketplaces. Amazon leads the charge, with programs like Amazon Prime making it easier to purchase products online than going to a brick-and-mortar stores. The rise of Amazon has also caused an increase in counterfeiting, trademark infringement and the unauthorized resale of products on the… Read More

By: Vivek Vaidya

The retail industry has been revolutionized by online marketplaces. Amazon leads the charge, with programs like Amazon Prime making it easier to purchase products online than going to a brick-and-mortar stores.
The rise of Amazon has also caused an increase in counterfeiting, trademark infringement and the unauthorized resale of products on the platform. Third parties are selling products using the good will of others, resulting in lost sales and licensing revenue to the true owner of the brand. Previously, the only option for parties who believed their products may be victim to counterfeiting was to prove the infringement to Amazon, instead of the seller bearing the burden of proving that they are not violating the law. There has also been a growing concern with fraudulent complaints by parties who are not the true owner of a brand.

In an effort to streamline the thousands of complaints filed each day, Amazon has launched the Amazon Brand Registry. The Amazon Brand Registry allows brand owners, manufacturers, distributors, and resellers to control its content and marketing materials, including its titles, product descriptions, and product photographs. Most importantly, successful registration with the Registry establishes a brand owner’s valid ownership of a trademark with Amazon and provides an expediated process for causing Amazon to remove unauthorized sale of products bearing its trademarks. It also serves as a deterrent and a defense against fraudulent complaints.

The threshold requirement for joining the Amazon Brand Registry is trademark registration with the United States Patent and Trademark Office (USPTO). Not only can the store name be registered as trademark with the USPTO, but so can the individual products that are being sold, along with any logos and tag lines that are used. Copyrights registered with the U.S. Copyright Office can also be included, allowing copyright owners to efficiently cause the removal of infringing photographs, videos and other content.

If you sell your goods on Amazon, registering your trademarks with the USPTO and then with the Amazon Brand Registry is extremely important in the new retail landscape, and will provide great return on your investment. The process can be complicated, but we’re here to help with the logistics of protecting your intellectual property on Amazon and beyond.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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US Supreme Court Decision Opens the Floodgate for Racially Offensive Trademarks

By: Paul Hirsch Since the Lanham act was passed in 1946, the United States Patent and Trademark Office had rejected trademark applications that include racially offensive language and symbols, because they “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. In June, the US Supreme Court… Read More

By: Paul Hirsch

Since the Lanham act was passed in 1946, the United States Patent and Trademark Office had rejected trademark applications that include racially offensive language and symbols, because they “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. In June, the US Supreme Court ruled that racially offensive trademarks are now protected under the First Amendment.

The Supreme Court decision emerged from the case Matal v. Tam, where an Asian-American rock band attempted to trademark their band’s name as “The Slants”, language considered to be a racial slur. The band had their trademark dismissed by the USPTO  for being “disparaging” under Section 2(a) of the Lanham Act. In June, the Supreme Court unanimously agreed that Section 2(a) of the Lanham Act “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” This decision cleared the way for offensive language, such as “The Slants”, to be trademarked.

Since the Supreme Court’s ruling in Matal v. Tam, the USPTO has seen a large influx of applications to trademark racially offensive language and symbols.

For example, an African-American man named Curtis Bordenave filed a trademark application for the “N-word” the same day the Matal v. Tam decision was made. Bordenave filed to use the language in association with retail store services, namely the sale of general merchandise.His goal is keeping the “N-word” out of visible circulation because he can enforce his trademark rights against its use.

Another example is Steven Maynard, an attorney, who has filed a trademark for the swastika symbol. Maynard plans on commercializing the offensive symbol on clothing and then charging an abnormally high price for the clothing, which effectively minimizes the symbol’s visible circulation in commerce.

Federal trademark registration protects parties against the unapproved use of their trademarked brands. In these cases, that includes the use of, or profit from, privately owned racially offensive language and symbols such as the n-word and swastika. However, there are conditions to attaining and keeping a registered trademark.

Prior to registering the trademark, applicants must show that there is a relationship between the brand, the product that is branded, and the consumer connection to both. If a design or word is universal or generally used by others the US Patent and Trademark Office may dismiss the trademark registration. Thus, it will difficult for applicants like Maynard to trademark the swastika, a universally known symbol.

After a trademark is registered, the trademark must be continuously used or it will be considered to have been abandoned. A party may not register trademarks for racially offensive language and simply hide it away forever. Thus, trademark owners who intend to control the censorship of the racially offensive language in commerce must simultaneously enter the trademark into commerce at a continuous rate. This could prove difficult.

Parties who intend to trademark racially offensive language to control the message will undoubtedly face difficulties along the way. Although the US Supreme Court’s decision in Matal v. Tam has opened the floodgate for racially offensive language to be trademarked, it is still unclear how these trademarks will be handled by the US Patent and Trademark Office. We may not have an answer anytime soon, as trademarks are normally not decided upon immediately, and may take years to approve or deny.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article

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Thinking Like an Examining Attorney

By: Vivek Vaidya When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), an examining attorney is assigned to your application and decides whether or not to allow the registration.  They will consider if the registration should be barred because of a host of trademark law issues, the most… Read More

By: Vivek Vaidya

When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), an examining attorney is assigned to your application and decides whether or not to allow the registration.  They will consider if the registration should be barred because of a host of trademark law issues, the most basic being if another mark is registered that looks or sounds similar and/or is involved with a similar stream of commerce.

That is why it is important to think like an examining officer.  Instead of using and applying for a mark that cannot be registered, it is best to be proactive when deciding what mark to use when starting a business and when going through the registration process.  Before filing a trademark application, you should perform as rigorous a search for conflicting marks as the USPTO examining attorney. Consulting with a trained attorney during this search process, and working with an attorney to analyze the viability of the mark based on trademark law, can often end trademark disputes before they arise and ensure a seamless registration rather than applying to register a mark that will only cause headaches later.

Once a mark is chosen, you must file an application with the USPTO.  The application contains many questions about the business, including making a determination of what class(es) to register in and an appropriate description of the goods or services that the mark is associated with.

After an application is filed, an examining attorney will analyze the application. The examining attorney relies on the Trademark Manual of Examining Procedure (TMEP) for guidance and decides whether or not to allow the registration.  If the examiner rejects an application for any reason, the examining attorney will issue an office action letter laying out their objections.

Responding to office actions requires a deep understanding of trademark law and USPTO process. Typically applicants hire experienced attorneys to handle office action responses.

If the examining officer decides that either the trademark should be registered straight out of the gate or the objections in an office action are remedied, the mark is published under a federal publication called the Official Gazette for a period of time.  This publication provides notice to others that the mark is to be registered, and it gives them an opportunity to oppose the registration. If there are no oppositions, the USPTO will register the mark, and mail you a certificate of registration. At this point, you will officially own a federally registered trademark, and all the benefits that come along with it.

Need some help thinking like an examining attorney?  Contact Bend Law Group, PC for all your trademark needs at (415) 633-6841 or info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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