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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.

Student Inventor Competition — Win Cash

May 17, 2010 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles 

CONTACT: Richard Maulsby (571) 272-8400
EMAIL:
richard.maulsby@uspto.gov

The Invent Now Collegiate Inventors Competition, now in its 19th year, is inviting inventive students to enter its 2010 competition.  Deadline to enter is June 25, 2010.

The Collegiate Inventors Competition is designed to recognize and honor student innovators at the graduate and undergraduate levels.  Since 1990, the Competition has honored numerous individuals and teams for their outstanding inventive contributions and innovative research.  This year, nearly $80,000 in cash prizes will be awarded to the winning undergraduate and graduate students and advisors at a special awards ceremony in Washington, D.C. in the fall.    The Competition is sponsored by the United States Patent and Trademark Office and the Abbott Fund.

The deadline for entering this year’s Competition is June 25, 2010.   Entries are judged on originality of the idea, process or technology, and their potential value and usefulness to society.

Collegiate Inventors Competition winners from 2009 included a team from Dartmouth who developed a device to filter arsenic from drinking water in third world nations,  Geoffrey von Maltzahn from MIT who created nanoparticles that communicate with each other to more effectively target therapy to tumors, Stephen Diebold from the University of Illinois at Urbana-Champaign who invented a tool to facilitate independence for quadriplegics, and Harris Wang from Harvard whose Multiplex Automated Genome Engineering, or MAGE, is an efficient way for faster cell programming, perhaps resulting in manufactured microorganisms.

Competition judges select 10-12 finalists who receive an all-expense paid trip to the final judging round and awards ceremony.  National Inventors Hall of Fame Inductees participate in the final round of judging, and past judges have included individuals such as Don Keck, inventor of optical fiber for communications; George Smith, 2009 Nobel Prize recipient and inventor of the charge-coupled device; and James West, inventor of the electret microphone.

Entry forms and more information on the program are available at www.invent.org/collegiate.

USPTO Pilot Program Keeps Patent Applications on Track

April 6, 2010 by · Comments Off
Filed under: Inventor & Entrepreneur Updates, Patent Articles 

The USPTO is pleased to announce a new Ombudsman Pilot Program. The Ombudsman Pilot Program is designed to enhance the USPTO’s ability to assist applicants and/or their representatives with issues that arise during patent application prosecution. More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program can assist in getting the process back on track.

The Ombudsman Pilot Program is not intended to circumvent normal communication between applicants and/or their representatives and examiners or Supervisory Patent Examiners (SPEs).  The USPTO encourages inventors to continue to use established customer service offices throughout the USPTO for information on other related topics. The USPTO has provided a list below of other offices, information each office provides, and their respective telephone numbers. If none of those customer services numbers is appropriate to assist you, please contact the Ombudsman Pilot Program using the electronic form on the USPTO website.  For the phone numbers and information, please click here for the USPTO OBUDSMAN link.

For more questions and answers, please click on the FAQ link for the OMBUDSMAN program.

USPTO seeks Patent Public Advisory Committee Nominations through June 11, 2010

[Federal Register: March 29, 2010 (Volume 75, Number 59)]
[Notices]
[Page 15417-15418]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr29mr10-40]

———————————————————————–

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[PTO-C-2010-0033]

Public Advisory Committees

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice and request for nominations.

———————————————————————–

SUMMARY: On November 29, 1999, the President signed into law the Patent
and Trademark Office Efficiency Act (the “Act”), Public Law 106-113,
which, among other things, established two Public Advisory Committees
to review the policies, goals, performance, budget and user fees of the
United States Patent and Trademark Office (USPTO) with respect to
patents, in the case of the Patent Public Advisory Committee, and with
respect to trademarks, in the case of the Trademark Public Advisory
Committee, and to advise the Director on these matters (now codified at
35 U.S.C. 5). The USPTO is requesting nominations for three (3) members
to each Public Advisory Committee for terms of three years that begin
from date of appointment.

DATES: Nominations must be postmarked or electronically transmitted on
or before June 11, 2010.

ADDRESSES: Persons wishing to submit nominations should send the
nominee’s resum[eacute] to Chief of Staff, Office of the Under
Secretary of Commerce for Intellectual Property and Director of the
USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450; by
electronic mail to: PPACnominations@uspto.gov for the Patent Public
Advisory Committee or TPACnominations@uspto.gov for the Trademark
Patent Public Advisory Committee; by facsimile transmission marked to
the Chief of Staff’s attention at (571) 273-0464, or by mail marked to
the Chief of Staff’s attention and addressed to the Office of the Under
Secretary of Commerce for Intellectual Property and Director of the
USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450.

FOR FURTHER INFORMATION CONTACT: Andrew H. Hirshfeld, Chief of Staff,
by facsimile transmission marked to his attention at (571) 273-0464, or
by mail marked to his attention and addressed to the Office of the
Under Secretary of Commerce for Intellectual Property and Director of
the USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450.

SUPPLEMENTARY INFORMATION: The Advisory Committees’ duties include:
Review and advise the Under Secretary of Commerce for
Intellectual Property and Director of the USPTO on matters relating to
policies, goals, performance, budget, and user fees of the USPTO
relating to patents and trademarks, respectively; and
Within 60 days after the end of each fiscal year: (1)
Prepare an annual report on matters listed above; (2) transmit a report
to the Secretary of Commerce, the President, and the Committees on the
Judiciary of the Senate and the House of Representatives; and (3)
publish the report in the Official Gazette of the USPTO.

[[Page 15418]]

Advisory Committees

The Public Advisory Committees are each composed of nine (9) voting
members who are appointed by the Secretary of Commerce (the
“Secretary”) and serve at the pleasure of the Secretary for three
(3)-year terms. The Public Advisory Committee members must be United
States citizens and represent the interests of diverse users of the
USPTO, both large and small entity applicants in proportion to the
number of such applications filed. The Committees must include members
who have “substantial backgrounds and achievement in finance,
management, labor relations, science, technology, and office
automation.” 35 U.S.C. 5(b)(3). In the case of the Patent Public
Advisory Committee, at least twenty-five (25) percent of the members
must represent “small business concerns, independent inventors, and
nonprofit organizations,” and at least one member must represent the
independent inventor community. 35 U.S.C. 5(b)(2). Each of the Public
Advisory Committees also includes three (3) non-voting members
representing each labor organization recognized by the USPTO.
Administration policy discourages the appointment of Federally
registered lobbyists to agency advisory boards and commissions.
Lobbyists on Agency Boards and Commissions, http://www.whitehouse.gov/
blog/2009/09/23/lobbyist-agency-boards-and-commissions (Sept. 23, 2009,
2:33PM EST); cf. Exec. Order No. 13490, 74 FR 4673 (January 21, 2009)
(while Executive Order 13490 does not specifically apply to Federally
registered lobbyists appointed by agency or department heads, it sets
forth the Administration’s general policy of decreasing the influence
of special interests in the Federal Government).

Procedures and Guidelines of the Patent and Trademark Public Advisory
Committees

Each newly appointed member of the Patent and Trademark Public
Advisory Committees will serve for a term of three years from date of
appointment. As required by the Act, members of the Patent and
Trademark Public Advisory Committees will receive compensation for each
day while the member is attending meetings or engaged in the business
of that Advisory Committee. The rate of compensation is the daily
equivalent of the annual rate of basic pay in effect for level III of
the Executive Schedule under section 5314 of Title 5, United States
Code. While away from home or regular place of business, each member
will be allowed travel expenses, including per diem in lieu of
subsistence, as authorized by Section 5703 of Title 5, United States
Code. The USPTO will provide the necessary administrative support,
including technical assistance, for the Committees.

Applicability of Certain Ethics Laws

Members of each Public Advisory Committee shall be Special
Government Employees within the meaning of Section 202 of title 18,
United States Code. The following additional information includes
several, but not all, of the ethics rules that apply to members, and
assumes that members are not engaged in Public Advisory Committee
business more than sixty days during each calendar year:
Each member will be required to file a confidential
financial disclosure form within thirty (30) days of appointment. 5 CFR
2634.202(c), 2634.204, 2634.903, and 2634.904(b).
Each member will be subject to many of the public
integrity laws, including criminal bars against representing a party,
18 U.S.C. 205(c), in a particular matter that came before the member’s
committee and that involved at least one specific party. See also 18
U.S.C. 207 for post-membership bars. A member also must not act on a
matter in which the member (or any of certain closely related entities)
has a financial interest. 18 U.S.C. 208.
Representation of foreign interests may also raise issues.
35 U.S.C. 5(a)(1) and 18 U.S.C. 219.

Meetings of the Patent and Trademark Public Advisory Committees

Meetings of each Advisory Committee will take place at the call of
the Chair to consider an agenda set by the Chair. Meetings may be
conducted in person, electronically through the Internet, or by other
appropriate means. The meetings of each Advisory Committee will be open
to the public except each Advisory Committee may, by majority vote,
meet in executive session when considering personnel, privileged, or
other confidential matters. Nominees must also have the ability to
participate in Committee business through the Internet.

Procedures for Submitting Nominations

Submit resum[eacute]s for nomination for the Patent Public Advisory
Committee and the Trademark Public Advisory Committee to: Chief of
Staff to the Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office, utilizing
the addresses provided above.

Dated: March 23, 2010.
David J. Kappos
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-6900 Filed 3-26-10; 8:45 am]
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