Posts tagged with "USPTO"

USPTO TO INCREASE TRADEMARK FILING AND OTHER FEES

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Trademark application

On May 27, 2016, the United States Patent and Trademark Office (“USPTO”) published in the Federal Register a Notice of Proposed Rulemaking to adjust trademark fees [Notice].  If all goes as planned, the fee adjustments will be effective in January 2017.  Because many of the adjustments are fee increases, those planning to file an application for trademark registration may want to act sooner rather than later.

As you may know, the USPTO largely relies on self-funding to pay for trademark related operations.  This means that ideally those who use the various services provided by the Trademark Office pay for those services.  Because the overall goal is to achieve aggregate cost recovery, periodically, fees must be adjusted to match projected expenses.  The USPTO summarizes the objectives for the rulemaking as: Continue reading

Redskins Eye Supreme Court to Overturn Trademark Disparagement Restriction

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To update my earlier blog [Blog] concerning whether Section 2 (a) of the Lanham Act, 1946, which restricts federal registration of trademarks  found to be scandalous or disparaging, will withstand challenges to its constitutionality, the Redskins football team has raised the ante by its unusual petition to the Supreme Court.

In the petition, the Redskins suggests that the Supreme Court not consider the constitutionality of Section 2 (a) until after the team’s appeal of an adverse District Court ruling is decided by the U.S. Court of Appeals for the Fourth Circuit.  Continue reading

DISPARAGEMENT ISSUE IS FRONT & CENTER FOR USPTO TRADEMARK REGISTRATIONS

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Push pin on trademark textSection 2 (a) of the Lanham Act, 1946, 15 U.S.C. Sec. 2 (a), which restricts the registration of trademarks found by the USPTO to be scandalous or disparaging, was determined to be unconstitutional on the basis of the First Amendment by  the Court of Appeals for the Federal Circuit in a case (In re Simon Shiao Tam-2014-1203), brought by “The Slants,” an Asian-American rock band.  [Background]

Mr. Simon Shiao Tam, as the owner of the mark, filed in 2011 a registration application for  “The Slants” (Serial No. 85-472044).  The USPTO examiner rejected the application on the basis that the applied for mark was disparaging under Section 2 (a)  because the word had a long history of being used in a derogatory way for people of Asian decent.  The examining attorney believed that people of Asian decent would take offense from the use of the applied for mark.  The rejection was upheld by the Trademark Trial and Appeal Board (TTAB.) Continue reading

WHY ARE THE SAN DIEGO CHARGERS TAKING PRE-EMPTIVE ACTION TO PROTECT THEIR RIGHTS IN FUTURE TRADEMARKS?

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Football Play Strategy Drawn Out On A Chalk BoardThe football world is abuzz with the possible relocation of the San Diego Chargers to Los Angeles. Background for Team Move.  While the outcome of where the Chargers end up is of short term interest, the more interesting question business owners should ask is: Why did the team file “intent to use” applications  Section 1(b), Lanham Act for federal registration of two possible marks with the United States Patent and Trademark Office (“USPTO”)? 1/  The answer is that the Chargers want to block others from hindering their future adoption of the new marks if the relocation happens.

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RIGHTS OF PUBLICITY TRUMP COMMERCIAL SPEECH IN JORDAN VS JEWEL FOOD STORE CASE
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InBasketball  earlier blogs, I raised the alarm about improperly using a famous personality in the advertising of a business.  If you need a clearer example of how even a large urban supermarket chain can stir up a hornet’s nest when they try to coast on the fame of a celebrity, consider the debacle encountered by Jewel Food Stores (“Jewel”) when it placed a full-page ad in Sports Illustrated congratulating Michael Jordan for his induction into the Naismith Memorial Basketball Hall of Fame.  The “Michael” was not amused and sued them for $5 million for misappropriation of his identity under the Illinois Right of Publicity Act, the Illinois Consumer Fraud and Deceptive Business Practices Act and the Lanham Act (the principal federal trademark law).

The Seventh Circuit Court of Appeals concluded that the ad was commercial speech, not noncommercial speech which would be fully protected by the First Amendment as alleged by Jewel and, therefore, the trial can proceed on the merits, doubtless arriving at a decision in favor of actual and possibly punitive damages for Mr. Jordan, if a settlement is not reached sooner.

To understand why it is not a good idea to try to hitch your business to a “star” by including the name, image or likeness of a celebrity in any of your products (i.e., website, domain name, T shirts) or marketing materials, it is important to recognize that famous people, even deceased ones, can own rights in the commercial exploitation of their own celebrity status.  Moreover, this right is not limited to the United States, but is recognized in other countries, an important consideration if you are doing business over the Internet.  (See list of states and countries protecting the Right of Publicity.)

Basically, celebrities have property rights in their fame and, therefore, they decide how to exploit it commercially.  Jewel argued that it was not trying to benefit commercially from the advertisement, but rather were exercising its First Amendment Right to congratulate Michael Jordan.  The Seventh Circuit was not persuaded given that Jewel’s logo and marketing slogan were conspicuously linked to Mr. Jordan in the text of it’s ad’s congratulatory message. (See the Seventh Circuit’s opinion for full factual details and analysis.)

                While it is true that commercial speech is entitled to protection under the First Amendment, nonetheless, it can be subjected to governmental restriction unlike the more favored full protection accorded to noncommercial expression.  That is why in this instance, because the Seventh Circuit has concluded that Jewel’s ad was commercial speech, the company finds itself in the unhappy position of getting more than it bargained for.

WHAT IT TAKES TO PROTECT A CERTIFICATION MARK? (Part 2)
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Orange Tick Circled Shows Quality And Excellence

This blog follows on my earlier examination of why a certification mark could improve the bottom line for both for-profit and not-for-profit organizations.

If you think that setting up a certification program is in your future, or you already have one in place, here are some points to consider as you develop or perfect the program:

1.         A certification mark is not the same as the mark your organization uses to identify its goods and services (“identification mark”).  While the design of the certification mark may incorporate some elements from your identification mark, it should nonetheless have distinctive elements to eliminate confusion between the two. 

2.         Because there are basically three types of marks, it is critical to understand which kind applies to your organization, because the standards for the United States Patent and Trademark Office (“USPTO”) registration process differ: 

            a.         Marks that certify that goods or services originate from a specific geographic region (“Champagne” for wine, “Roquefort” for cheese, “Indian River Fruit” for Florida citrus);

            b.         Marks that certify that goods or services meet certain standards for quality, materials or mode of manufacture (“UL” mark certifies electrical equipment meets certain safety standards; “Pure Wool” logo means the product is made of a 100% wool); and

            c.         Marks that certify that the work or labor for a product or service was performed by a member of a union or other person meeting certain standards.( Union workmanship).

3.         Identify the standards that an applicant to your program must meet.  These may be created by your organization or based on standards established by a governmental agency or other standard developer.

4.         The certification mark will be used by third parties, not by your organization.  Once the third party has met the standards your organization has set, they will be permitted to use the certification mark in connection with their own goods or services to tell the world they are “qualified” to do so by the certifier.

5.         Consider federally registering your certification mark with the USPTO, which, once accomplished, basically gives your organization protection in all 50 states.

6.         If you are going to request federal registration of the mark, the USPTO will require you to submit a copy of the standards you have established to determine whether others may use the certification mark. (37 C.F.R. §2.45)

7.         To protect your rights in the mark and not risk being deemed to have abandoned it, maintain an appropriate policing program to insure that it will be used correctly by the third parties.  Here are two actions you should take:

a.         Issue a letter that makes it clear that they are using the certification mark under license from your organization and if they fail to maintain the standards you have required, you can revoke the privilege; and

b.         Monitor third-party use of your certification mark.  For example, depending on what is appropriate, you could require periodic refresher training or status reporting.  At such intervals, your organization could charge fees to support this monitoring process.

In these difficult economic times, developing a certification program can not only help to set you apart from your competition but also force others to play by your rules.  That is definitely an enviable position.

CERTIFICATION MARKS USEFUL TO TRADE ASSOCIATIONS, CHARITIES AND FOR-PROFITS (Part 1)
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Blue Tick Circled Shows Checked and Verified

One good method for a trade association, charitable organization or for-profit entity to expand its mission while simultaneously generating additional revenues is to establish a certification program. 

The entity wishing to set up a certification program (the “certifier”) would require an “applicant” wishing to acquire new skills to demonstrate competence in a particular field by meeting the standards set by the certifier.  Once a course or test was successfully completed, the certifier would then allow the applicant to use the certifier’s certification mark, in other words its “seal of approval.” (Think of the quintessential “Good Housekeeping Seal of Approval.”)   

By adopting a certification program, the certifier has taken steps not only to improve the standards of performance within its area of interest but also to create a new source of revenue generated from any training or monitoring it requires to maintain quality controls.

The breadth of activity that lends itself to the adoption of a certification program is huge.   Based on a recent review of the records of the United States Patent and Trademark Office (“USPTO”), there were more than 10,000 live records for applications and registrations of certification marks.  (Examples of certification marks) This suggests that many organizations recognize the value of running such programs.

If your company is considering incorporating a certification program into your general mission, a critical element is the selection of the designation (i.e., the certification mark itself), which a successful applicant may use to show its level of competence. 

So. . . what exactly is a certification mark?  It can be any word, name, symbol, device or combination of same which is used by a person other than the owner of the mark to certify (a) to regional or other origin; (b) to the material, mode of manufacture, quality, accuracy or other characteristics of such person’s good or services; or (c) that the work or labor on goods or services was performed by members of a union or other organization. . . . .” (Applicable USPTO regulations.) 

A distinct message is conveyed by a certification mark which differs from that of an identification mark that informs the consuming public of the source of the goods or services which they are buying (GM versus Ford; Apple versus Samsung).  When the consumer sees a certification mark, the mark signifies that the goods or services have been examined, tested or inspected by someone other than the entity displaying the mark and that the independent standards of the marks’ owner have been met.

In my next blog, I will cover some basics principals to aid in the design and protection of your organization’s certification mark.

 

Apple’s Woes in China Provide Lessons for All Trademark Owners
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Who would think that Apple does not own the trademark rights in “iPad”?  Few would dream of manufacturing a computer tablet and calling it an iPad.  Well, it appears that Shenzhen Proview Technology (“Proview”), a Chinese company, won a Chinese court decision that, in fact, it and not Apple owns the mark in China.  This ruling led to the seizure of iPads from some retailers and Proview is pursuing such enforcement in 30 other Chinese cites. See http://www.washingtonpost.com/business/technology/chinese-company-to-seek-ban-on-ipad-import-export-in-dispute-over-ownership-of-name/2012/02/14/gIQA3a2dCR_story.html?wpisrc=nl_tech

This situation for Apple is not only awkward but could also have a profound effect on its bottom line.  Worse, since all of Apple’s iPad tablets are manufactured in China, its sales inside and outside of China could be halted.

Apple claims to have bought Proview’s rights in ten different countries including China.  But was that the case?  It appears that Apple dealt with Proview Taipei, a Taiwanese company affiliated with Proview in Mainland China.  Did the Taiwanese company have the requisite authority to bind its Mainland affiliate?  So far it seems that Proview is winning the dispute, although Apple has taken an appeal.

What about smaller firms? Can anyone other than a Fortune 500 company learn from Apple’s travails in China?  Yes! 

  • Lesson 1: Just because you own trademark rights in the United States does not mean you own rights in the identical mark in any other country.   Registration of a mark with the United States Patent and Trademark Office (USPTO) offers protection only within the US borders.  If you plan to sell your goods or services in other countries, it is important to register your mark there. 
  • Lesson 2:  You need to know exactly with whom you are negotiating a trademark deal.  Do they have the requisite authority to sell or license the rights that you are negotiating to purchase?  Apple’s agreement with the Taiwanese company surely contained representations and warranties (“reps and warranties”) as to authority, and may even provide for the indemnification of Apple should the reps and warranties prove to be untrue.  So what?  Regardless of the liability of the Taiwanese company for breach of the reps and warranties, Apple still has a problem.  The money it might get from the Taiwanese company in no way would compensate Apple for its loss of the large Chinese market or its ability to have the product manufactured on the Mainland.
  • Lesson 3: Difficult as it is for large companies to protect their marks worldwide, it can also be a problem and a large expense for smaller firms.

If you hope to make a worldwide splash with your product or services, careful advance planning for how you will introduce your trademarks will be critical to avoid some of the dilemmas now being faced by Apple.