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Trademark Monitoring Scam: Don’t get dooped

April 8, 2011 by · Comments Off
Filed under: trademark, Trademark Articles 

Frequently our clients will call us up and ask why the USPTO sent them a bill for a couple hundred dollars directly to their house.  The clients will often notice we already charged them for the USPTO filing fees and ask why they are getting double billed.  The first time I heard this from a client it invoked worry and confusion, now it simply serves a reminder of the plentitude of scam artists out there ready to take the money of the unwary or unsuspecting.  Our clients generally don’t have any direct contact with the USPTO and it still tricks them, I can’t imagine how many self-filers this scam tricks into paying their “bill”.

So what is this scam?  Various companies with names like “World Trademark Association”, “American Intellectual Property Coalition”, or any other official sounding name send what appears to be a bill to people who have filed an application or registered a trademark with the USPTO.  While it may appear to be a bill, it is usually just an advertisement for the applicant or registrant to purchase trademark monitoring services.  The small font, black print, long block paragraphs, boxed entry fields, and general ugliness of the form is exactly what you would expect to find on a government form, however, not a flyer for the sale of services.

While the deceptiveness of these forms range from slightly confusing to completely fraudulent, even some of our most savvy clients have come to us for confirmation about what exactly the mailing is about.

How can you avoid these scams?  You generally can’t stop these scammers from sending you their junk, as the applicant’s address is included in all USPTO trademark applications.  However, the United States Patent and Trademark Office is the only government agency that will contact you about your trademark registration or application; if the mailing is not from them then it’s not an official mailing and it’s certainly not a bill.

To be clear, while trademark monitoring services are not required for trademark registration, as some unscrupulous companies may have you believe, many of these services are not a scam.  There are many legitimate companies out there that provide this service and it can be beneficial in protecting your marks.  A trademark monitoring service will periodically search the USPTO database for any newly filed trademark applications that may infringe on your mark.  These days they are mostly done by computer programs owned by the company offering the service.  While the USPTO will generally reject any trademark applications it determines are “confusingly similar”, there may be instances where the USPTO has OKed and application that you wish to challenge.  It is in these situations where a monitoring service is valuable.

If you’re interested in using this type of service shop around and be careful; most of these companies are not as highly regulated as a law firm and will disclaim liability if they make a mistake.  As a general rule we advise clients not to purchase this service from a company that sends out deceptive advertisements.

What does ‘Use in Commerce’ mean in your USPTO trademark application?

January 14, 2011 by · Comments Off
Filed under: law, trademark, Trademark Articles 

Before a mark can be registered with the United States Patent and Trademark Office an applicant must demonstrate the mark’s “Use in Commerce”.  Simply meeting the evidentiary burdens of the USPTO application, however, does not necessarily mean your registered mark will stand up to an attack of the mark’s validity.  The concept of ‘Use in Commerce’ is essential for every trademark applicant to understand, as a misapplication of this concept can result in an abandoned application or worse, a registration that crumples under a legal challenge.

The Lanham Act (the governing US law for federal trademarks) defines ‘Use in Commerce’ as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark” (15 USC § 1127).

To satisfy the requirements of the Lanham Act an applicant must show not just a “bona fide use of a mark”, but also that the product or service associated with that mark effects interstate commerce.  While this is generally a very low threshold to meet (examples of products that Courts have held effect “interstate commerce” include commodities sold entirely intrastate if they may affect the price of interstate trade or establishments that serve out-of-state clientele) it is something to be aware of.  More information on this issue is available here.

Proper Specimens for the USPTO:

Proper specimens (i.e. examples of ‘Use in Commerce’) are different depending on whether an applicant’s mark is for a service (e.g. cleaning services) or for goods (e.g. bowling balls).  For goods a mark is used in commerce when:

“It is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

The goods are sold or transported in commerce.”

When filing a mark for some goods the Lanham Act and the USPTO recognize that it may be impractical to affix the mark directly to the product.  Many applicants choose to use an online ordering page as a “display”, which will suffice so long as the page describes or shows the product, includes the mark in association with the product, and gives a customer the opportunity to purchase the item on that page (e.g. the page has a “buy now” button).

A common mistake is for applicants to submit a “mock-up” or artist’s rendering of what their product looks like with the mark.  This is an unacceptable form of specimen (though a mock-up can be used on an order page).

For services a mark is used in commerce when:

“It is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”

Specimens for services are generally pretty easy to produce as acceptable specimens include a brochures, fliers, images of a sign, or web advertisements.

Date of First Use:

This is a problem that trips up a lot of people and can cause a mark to be canceled if the applicant is not careful.  Generally, in the application process the USPTO will simply take an applicant on their word about the date of first use for their mark.  However, if the mark is contested in the USPTO Trademark Trial and Appeal Board (TTAB) or in federal court the person contesting can claim that the applicant’s use of the mark was after the date specified in the application.  A registration that claims first use earlier than actual first use will be considered “void ab initio”, and the registration will be canceled.

The USPTO and federal courts have not given definitive guidance on what actions constitute first use in commerce, but generally the use must be in connection with the sale or offering of the product or service specified in the application.  People run into problems when they put down the first date they started using the mark at all, and not the first date the mark was first used in connection with the goods or services on the application.  For example, suppose a start-up hotel company picked a name (“Alpha Hotels” let’s say) and took numerous steps to get their business operational in 2009.  They registered a business name, purchased a building, hired interior decorators and staff, and got loans from a bank all using their mark Alpha Hotels.  They open the doors to the public in 2010.  If they file the trademark Alpha Hotels for “hotel services” their date of first use will be in 2010.  Despite all their activity in 2009 involving the name Alpha Hotels, they didn’t actually offer hotel services (i.e. temporary accommodations for people) until 2010.

Other issues to consider:

Ornamentation is another problem that applicants run into regarding their specimen, particularly when they apply for a design mark.  The typical example is on items like t-shirts or coffee mugs.  If consumers will buy the product because they like the design then the USPTO may argue that the design is an ornamentation that consumers will not recognize as a brand.

Consumers need to view a mark as a brand or source indicator in order to get protection under trademark law.  The USPTO has often rejected specimens where the mark is buried in the body text of an advertisement or otherwise displayed in a way that would not suggest the word or design is functioning as a mark.  Including a “TM” after the word will not be dispositive in showing that consumers will perceive the word or design as a mark.

A specimen to the USPTO will never be proper if it does not include the mark as the mark is described in the application.  Failure to meet this requirement results in what is called “mutilation”.  This problem usually occurs when there are additional elements surrounding the mark such that consumers might believe the mark includes those additional elements and not be limited to just the portion described in the USPTO application.

Conclusion

While ‘Use in Commerce’ is only one of many considerations when filing a trademark, an error in this area can be quite costly for the applicant.  Some considerations, like the date of first use, the applicant only gets one shot at, so care should be taken.  Many applicants are individuals who choose to file their own mark.  The USPTO website has good information available for explaining the trademark process and the requirements for filing a trademark application.  The application form may seem straight forward, but there are complex legal rules at play that may result in pitfalls for the unwary.  Hiring a trademark attorney is an applicant’s best bet in ensuring that their trademark rights will be properly protected and should be a serious consideration for any businesses that expects to invest significant money into publicizing their mark.

The above information is not legal advice.  If you have a question regarding trademark law or other law please contact an attorney.

Rosetta Stone Gears up for a Battle Against Google and the Future of Adwords

November 5, 2010 by · Comments Off
Filed under: law, trademark, Trademark Articles 

By Caroline Kotila

Google has been the target of a tremendous amount of litigation in regards to intellectual property, as would be expected for such an industry giant.  The most recent target has been their tool AdWords, which generates ads based on keywords that users input into Google’s search engine.  The problem occurs when a company has trademarked a term, and a competitor uses that term to have their product show up as an ad next to the relevant links .  For example, if Lexus were to buy the keyword “BMW” through AdWords, anyone who searched for the BMW X5 could expect to see an advertisement for the Lexus RX350.  This method of advertising leads many companies to argue that Google has infringed their trademark.

In 2007, Rosetta Stone filed a lawsuit against Google, claiming that their trademark had been infringed by the use of AdWords to advertise competing language software. The company lost its case this August and has sought appeal by the 4th Circuit Court of Appeals.  Rosetta Stone argues that Google’s use of AdWords to generate revenue by selling these trademarked competitors, who ultimately piggy-back off the success of the larger companies, is unlawful.  Additionally, Rosetta Stone alleges that the use of AdWord has caused widespread “consumer confusion” due to conflicting ads.  The company is hoping that the Circuit Court will overturn the Virginia Federal District Court’s decision in favor of Google.

Rosetta Stone has many supporters in their case, as many companies disapprove of Google’s AdWords policy.  Numerous large companies have stated that they will file Amicus Briefs supporting Rosetta Stone, including Ford Motor Company, Carfax, PetMed Express,  1-800 Contacts, and many others. As the market for web advertising is growing this case will have a major impact on how search engines can generate their revenue and the power of registered marks in the context of internet technology.

Trademark Abbreviations & The Public Use Doctrine

August 18, 2010 by · Comments Off
Filed under: Business, law, trademark, Trademark Articles 

Does trademark registration protect the nickname of the registered mark?  For example, if someone owned the mark PEANUT BUTTER & JELLY would the abbreviation PBJ or PB&J be protected?  Under the public use doctrine, abbreviations or nicknames used by the public can give rise to protectable trademark rights.  Nat’l Cable Television Ass’n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed. Cir. 1991). That is, the terms “Coke”, “BUD, and “MAC” are protected under the respective registrations for Coca-Cola, Budweiser, and Macintosh Computers.

Under certain conditions, the public use doctrine will extend trademark rights to abbreviated or shortened version of a registered mark.  In the 2009 case of George & Co. v. Imagination Entertainment Ltd. et al., the Plaintiff sought to apply the public use doctrine in the reverse and use the doctrine to extend rights to the elongated word based on the registered abbreviation. 575 F.3d 383 (4th Cir. 2009).  The Plaintiff owned a trademark registration for the abbreviation LCR for a dice game, which stands for “Left Center Right.”  Id. at 390.  The Plaintiff filed suit claiming that the Defendant’s mark, LEFT CENTER RIGHT, was infringing upon its LCR mark. Id. at 392.

The Plaintiff claimed that the public use doctrine expanded trademark protection of the registered LCR mark to cover the mark’s elongated form, namely “LEFT CENTER RIGHT.” Id. at 403.

The Fourth Circuit disagreed with the Plaintiff, ruling that the public use doctrine should be narrowly construed to apply only where: (1) the formal mark that is the object the public nickname is well-known; and (2) the nickname “adds distinctiveness” to the formal mark.  And, that ruling is interpreted as finding that the public use doctrine only applies when the public abbreviates or nicknames a mark, not the other way around.  Id.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, the public use doctrine will not expand the scope of protection of these shorter forms to encompass their elongated counterparts.  At the same time, introducing a new product into the market with both an elongated name and an abbreviated name may cause confusion and interfere with the consumer identifying one brand with the product.  And, here is the ah-ha moment to recognize that branding is not always about strategic marketing, but also about how the public processes and associates nicknames or abbreviations. 

DISCLAIMER: This article is NOT intended to provide legal advice and is for informational purposes only.

Antonio Vann joins Williamsburg, VA intellectual property law firm

August 17, 2010 by · Comments Off
Filed under: Business, Press release 

WILLIAMSBURG, VA        The law firm of Bambi Faivre Walters, PC hires Antonio G. Vann to join its Williamsburg, Virginia, legal team.  Vann focuses his practice on trademark, unfair competition, and copyright law as well as business and commercial transaction law.  He offers services to assist with protecting, commercializing, and enforcing intellectual property assets.

In this Internet era, Vann understands the value of protecting and rewarding creative works as well as balancing economic and business interests.  He counsels clients on the role of intellectual property in market recognition as well as managing and leveraging these assets.  Vann’s legal background lends expertise and strengthens the firm’s copyright, trademark, trade secret and complex business litigation practice areas.

Vann received his B.A. in political science from Hampton University and attended The John Marshall Law School in Chicago, IL, receiving his J.D. with specific instruction in the area of intellectual property law.  Prior to receiving his law degree, he worked for several large law firms in the Washington, DC area.  Vann has over eight years of experience in the area of trademarks and copyrights and has worked with businesses, individuals, federal government, and others.

Antonio Vann is admitted to the Virginia State Bar (VSB No. 79765).  He is a member of several professional organizations including the American Intellectual Property Law Association (AIPLA) and the Virginia State Bar Intellectual Property Law Section.

Mr. Vann is a Virginia native, born and raised in the Hampton Roads area.  He is a graduate of Maury High School and remains active with the Boys & Girls Clubs of Southeast Virginia.  If your organization is interested in discussing intellectual property or complex business issues, please feel free to contact the firm at 888-388-9614.