Category: Trademarks

Questions & Answers About Trademarks

What Should Be Done to Maintain a Trademark?

Post author By Austen Zuege

Maintaining rights in a trademark (or service mark) requires ongoing action. Failure to continue using a mark, or use in an improper or insufficient manner, can potentially result in loss of a registration for the mark or even loss of all exclusive rights. The following guidance provides suggestions about satisfying use requirements and the proper way to use marks in business and commercial advertising/marketing contexts. The focus is on U.S. federal trademark law, but this guidance is also informative about similar requirements at the state-level and for international usage scenarios.

Continued Use Requirement

In order to maintain rights in a mark it must continue to be used in connection with bona fide (good faith) commercial offerings of the associated goods or services. This means the most basic rule of maintaining rights in a mark is: use it or lose it!

Use on goods occurs when two conditions are met. First, a mark must be placed on the goods or their containers, or on attached tags or labels, or displays associated with the goods. If the nature of the goods makes those kinds of placements impracticable, then use of the mark on documents associated with the goods or their sale qualify. Second, for federal trademark rights, use requires that the goods (bearing the mark) be sold or transported in “commerce”, meaning interstate or foreign commerce and not merely locally. Mere advertising is generally insufficient as evidence of use of a mark on goods.

Use in connection with services occurs when a mark is used or displayed in the sale or advertising of services and those services are rendered in “commerce”, or the services are rendered in more than one state or in the United States and a foreign country. An important distinction is that use of mark in advertising may be sufficient to show use in connection with services, even though advertising alone is generally insufficient to show use with goods.

Use of the trademark by an authorized licensee can be sufficient to maintain a trademark registration as long as the owner maintains control over the quality of the goods or services. Failure to maintain quality control over licensed use can result in loss of rights. Preferably, a written license agreement with a quality control provision should be executed if licensing is desired.

Non-use may make a registration subject to cancellation or the like. Moreover, non-use without an intention to resume use will result in abandonment (loss) of rights.

Excusable non-use may allow an unused registration to still be maintained. However, the requirements to establish excusable non-use are rather strict and generally require non-use to be the result of special circumstances beyond the registrant’s control.

Marks registered in the U.S. based exclusively on a foreign priority registration are subject to cancellation or expungement if they have not been used in or with the U.S. after three (3) years of registration. This is an exception to the general rule that use in commerce is required to obtain a federal registration in the first place.

Proper Form of Use

In order to maintain rights in a mark, use should take a proper form. Improper usage may weaken rights or even result in loss of rights. An explanation of proper usage follows. This includes (1) using a mark as an adjective, (2) using a mark consistently, and (3) optionally using trademark identification/status symbols. More guidance is available from the International Trademark Association here and here.

Use Mark As an Adjective

Trademarks (and service marks) function to identify the source of goods or services. To do so, the distinctiveness of the mark must be maintained. A mark that becomes the generic name for the goods or services themselves will lose trademark protection. Therefore, a mark should always be used as an adjective that modifies a noun and never as a noun or as a verb. A helpful approach is to always couple use of a mark with an appropriate generic term immediately following the mark. For instance, “EXAMPLE widgets” represents proper use of the mark EXAMPLE together with the generic term widgets.

Another helpful exercise to determine if usage is proper is to insert the word “brand” immediately after the mark (along with a generic term). If the wording still reads appropriately, in English, then usage is likely to be proper. For instance, “Buy EXAMPLE brand widgets” still reads appropriately. But “Please EXAMPLE brand me those things” reads awkwardly because the mark is being improperly used as a verb. Beyond just a theoretical exercise, the word “brand” can also be inserted into actual commercial usage this same way.

Marks should also be used prominently. This means the mark should be used in such a way that consumers would understand that it functions as a trademark (or service) mark and identifies the source of the goods or services. Consider where the mark is placed in relation to other text, graphics, or the like. The mark should grab the attention of consumers and not be buried in other text, too small to see, etc.

Although not legally required, a helpful technique is to distinguish the mark from nearby text using all capital letters, boldface or italic font, underlining, quotation marks, color, or other stylized format. A trademark symbol—discussed below—can also be used to distinguish the mark from surrounding text. These aspects of the appearance and presentation of the mark help to convey a commercial impression of the mark as indicating the source goods or services rather than in a generic or merely descriptive way.

Use Mark Consistently

A mark is a specific indicator. So usage must be consistent. If a logo is changed or word(s) are modified that materially alter the mark (so as to no longer create essentially the same commercial impression) then it is possible that rights in the mark could be challenged or lost, or renewal of a registration refused. Spelling (and punctuation, if any) should always be the same. A “refresh” of branding can lead to loss of rights in previously-used marks when it materially alters the commercial impression given by the mark.

Also, do not pluralize or singularize a mark by adding or removing an “s”, and do not use a mark in a possessive form (unless the mark itself is possessive or a non-trademark use as a company name or trade name is involved). For example, LEVI’S® for jeans should not be changed to “LEVI” because the mark includes the possessive “‘S”. Such changes do not reflect proper usage.

Use Trademark Identification/Status Symbols

It is recommended—but not legally required in the U.S. to maintain rights—to include an appropriate trademark symbol with use of a mark.

Use of the trademark registration symbol ® immediately after a mark is permitted and encouraged for any federally-registered mark, though it must not be used for an unregistered mark or for goods or services that are not listed in the the registration. For instance, a registered mark can be identified as “EXAMPLE® widgets.”

Sometimes the term “Registered Trademark” or its translation is used, or the phrases “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.,” but such terms are often less convenient than a symbol. An additional option is the use of a footnote or legend that indicates that the mark is a registered trademark, identifies the registered owner by name, and/or indicates that use of the mark is under license.

But registration in one or more U.S. states does not permit use of the ® symbol, or any wording that suggests federal registration.

The symbols ™ (for trademarks used with goods) or ^SM (for service marks used with services) can be used even with unregistered marks. For instance, an unregistered or registered trademark can be identified as “EXAMPLE™ widgets.” If there is doubt, or a given use of a mark encompasses both goods and services, use of the ™ symbol might be preferred because it is more widely recognizable.

An appropriate trademark symbol should be used with the first and/or the most prominent use of the mark on the goods, their packaging, or given advertising materials (such as a single web page or single print ad). It is not necessary to continually use trademark symbols with each and every instance of the mark on the same item. On the other hand, there is no legal penalty for unnecessary or redundant use of trademark symbols. Though over-use of trademark symbols may simply be less aesthetically pleasing in some circumstances.

Failing to use a trademark symbol does not result in the loss of U.S. federal trademark rights. However, such a failure may limit recovery of monetary damages. When a mark is federally registered in the U.S., either use of a symbol (or accepted alternative) or actual notice to an infringer is required in order to recover profits and damages for infringement. Use of the trademark registration symbol ® (or the phrase “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”) along with a registered mark provides acceptable notice of federal registration to all potential infringers to allow recovery of monetary damages.

Note that some jurisdictions prohibit the use of the ® symbol with an unregistered mark. So be careful about usage across multiple jurisdictions—the ™ symbol can be used instead with a mark that is unregistered in a given jurisdiction. In the U.S., use of the ® symbol with an unregistered mark may bar remedies for alleged infringement due to unclean hands, may constitute fraud, and/or may create liability for false advertising.

Retain Evidence of Use

The requirement that a mark must be used to maintain rights gives rise to a need to keep and retain evidence of use of that mark with the relevant goods and/or services. If someone ever seeks to challenge the mark for alleged non-use, or if a registration is audited, such evidence can be important. For some marks subject to extensive use, evidence of use may be plentiful and easily obtained. However, for other marks, usage might be less widespread. For example, some marks might be used with a seasonal service business such that evidence of use is mostly available only at certain times of the year.

The first important point is that evidence of use should be maintained for all goods and services in which rights to the mark are claimed. For a registration, this means all of the explicitly-identified goods and services. Evidence of use with only some but not all of the identified goods or services will usually be insufficient (at least with respect to those goods and services for which evidence of use is lacking).

The sort of evidence retained should also show proper usage of the mark. Proper use is discussed above. It may be unhelpful to retain evidence that shows improper usage in a generic or merely descriptive sense rather than to identify the source of goods or services.

Also, evidence of use should be maintained for each jurisdiction where rights in a mark are claimed. Evidence of use in one country is usually insufficient to show use in a different country, for instance. If you wish to maintain rights to an international portfolio of marks, be sure to retain suitable evidence in each jurisdiction of use.

Lastly, if a registration was initially filed based on a claim of an intent to use the mark (including based on foreign priority without actual use in the USA), then evidence of that intent at the time of filing should be retained too. This sort of evidence can include written business plans or the like.

Renew Your Registration

A registration of a mark must periodically be renewed to stay in effect. Registrations can usually be renewed indefinitely so long as there is continued use. The U.S. requires renewals at ten-year intervals, plus a one-time certification of use after the first five years of registration. All renewals and declarations of use to maintain a registration require supporting evidence of use.

In the U.S., “common law” rights in a mark may continue to exist even if a registration in that mark is abandoned but commercial use of the mark continues. However, that may not be the case in other countries. If a registered mark is still in use, it is usually worthwhile to renew the registration.

Extensions of an international registration under the Madrid Protocol require that the underlying international registration be maintained too. This means that both the U.S. extension registration and the international registration must be renewed in order to maintain registration in the USA.

However, BEWARE of misleading, official-looking notices sent by private entities regarding a trademark registration requesting payment of fees. These are often scams. See examples of such misleading scam communications here (USPTO-related) and here (WIPO/Madrid-related).

Updating and Amending a Registration

If the use of a mark changes, or the ownership of the mark changes (including a merger or change of name or the owner), then a registration should be updated or amended. The owner and any legal representative also have a duty to maintain current and accurate addresses in official records. This allows for prompt receipt of any official post-registration correspondence, including notifications of any challenges to the registration.

Amendments to the scope of the registration may be possible, and even required. Selected goods and services can be deleted from a registration while others remain, if the scope of use is reduced. But expansion of use generally requires filing a new application—existing registrations cannot be expanded to add new identifications of goods and services. Amendments to the depiction of the mark itself are rarely permissible.

Monitor the Marketplace

It is helpful to proactively monitor the marketplace for potentially problematic activities by others. A few instances of infringement or improper usage of a mark will generally not result in loss of trademark rights in the USA. However, the widespread presence of infringing or simply improper uses might eventually lead to genericide, that is, the mark becoming generic, which would result in the loss of exclusive rights. Laches or other equitable doctrines might also bar certain forms of relief against an infringer if a lawsuit is inexcusably delayed—though this is very context-specific.

Additionally, the existence of similar marks and registrations by others can have the effect of weakening the scope of exclusive rights. So even if third party usage does not completely destroy rights in a mark those third party uses may still weaken it.

In theory, the existence of a registration should automatically block a later registration by someone else that is likely to cause confusion. That is the point of regular examination procedures for all new trademark applications. But examination is not always perfect. There are opportunities to challenge the applications and registrations of others. But the opportunities to do so decrease over time. In any event, potentially problematic uses by others must first be identified before they can be challenged.

When it comes to infringement, mark owners must police their own rights. That is, in most situations, the government will not police infringement for you. It is generally up to the brand owner to identify infringement and pursue legal action where appropriate and desired.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Tags Trademark Renewal, Trademarks

Q&A Trademarks

How Can a Brand Be Protected as a Trademark?

Post author By Austen Zuege

Trademarks (and service marks) serve to identify a particular source of a product or service. The purpose of trademark law is tied to that source-identifying function. Trademark rights arise through use. Registration is optional. What matters most in terms of a brand eligibility for trademark protection is its strength or distinctiveness, together with any any prior conflicting uses of identical or similar brands already taken by others.

Generally, a brand can be protected under trademark law if it is distinctive enough to serve such a source-identifying function—and it is actually used for that purpose. There is a continuum of kinds of marks that separates distinctive ones capable of exclusive rights and ones that are not distinctive and do not entitle the user to any exclusive rights. The possibility of exclusive trademark rights depends first of all upon selecting a mark that is distinctive enough. Doing that properly requires some understanding of the strength continuum of mark distinctiveness.

Continuum of trademark strength/distinctiveness — Pyramid Illustration of the Strength Continuum of Marks

Brands and marks are categorized along the following range or continuum of increasing conceptual distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. A mark that is fanciful, arbitrary, or suggestive is considered to be inherently distinctive and automatically is eligible for federal trademark protection—long ago these were referred to as technical trademarks. While these categories are well-established now, there may be dispute as to where any given mark falls on this continuum. Changes in how a mark is used over time can also complicate these determinations.

A fanciful mark is a non-dictionary word concocted by the user. These are sometimes referred to a coined marks. Some examples are EXXON® for petroleum and petroleum products, and many pharmaceutical brands that are completely made-up names.

An arbitrary mark is a known word used in an unexpected or uncommon way. An example is APPLE® for computers.

A suggestive mark is one for which a consumer must use imagination or any type of multistage reasoning to understand the mark’s significance. A suggestive mark does not directly describe features of the product or service but instead suggests them. Example are ESKIMO PIE® for frozen confections and KITCHENAID® for small household devices and utensils.

Descriptive terms define qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood. Merely descriptive terms are not entitled to trademark protection. Only marks that have acquired secondary meaning through extensive and substantially exclusive use over a sufficient period of time attain acquired distinctiveness to potentially be protectable as trademarks. Simply being the first to use a descriptive term is not enough. An example of a merely descriptive term is “cotton” for t-shirts made at least partly from cotton, or the term “large” to describe the size of the t-shirt. An example of a descriptive mark that has acquired secondary meaning in the USA is AMERICAN AIRLINES® for air transport of passengers and freight.

Generic terms are what the public understands to be the common names of associated products or services. Another way of stating this definition is that a generic term denotes a category (genus) of goods/services of which a particular brand is one species. A generic term does not signal any particular source and can never serve as a protectable mark under trademark law. Usage and advertising can never make a generic term protectable. Some examples of generic terms are “breakfast cereal” or “television” for those same goods. Some terms that were at one time protectable can also become generic, such as “escalator” for moving walkways.

The distinctiveness of a mark depends on how it is being used. The same mark might fall in different distinctiveness categories in different contexts. For example, the mark APPLE® may be arbitrary when used to identify a source of computers but “apple” is generic when applied to the fruit widely known by that name.

When it comes to trade dress, a form of trademark protection, functional aspects are not protectable. In this sense, functional aspects of things themselves are treated like generic terms—alone they are ineligible for trademark protections. An example of a functional feature is the shape of a key that allows it to fit into a corresponding lock.

A “trade name” is somewhat different from a trademark. A trade name is the formal legal name of a corporate entity, or its formal assumed name (DBA). For instance, “Acme, Inc.” a hypothetical corporation registered in a particular U.S. state, is a trade name. While it is possible that such a company sells ACME or ACME, INC. brand widgets, it might instead sell EXAMPLE brand widgets. Trade name and trademark usage may not be the same. There tend to be different (and less stringent) legal standards applied to securing trade names than to securing trademark rights. A common mistake is to believe that forming a corporation or registering an assumed name with a state—alone—creates trademark rights, when trademark rights in the U.S. require both use of the mark (as a mark) and a sufficient level of distinctiveness.

Also keep in mind that registering an Internet domain name does not by itself establish any trademark rights. While the availability of a suitable domain name is often an important consideration when selecting and adopting a brand, domains can be registered without regard for the use and distinctiveness requirements that apply to trademarks. Moreover, using a domain URL merely as an Internet address is not the same as trademark use as a source identifier.

When selecting a mark, it is common for businesses to gravitate toward conceptually weak marks as brands because they “sell themselves” and are immediately recognized by consumers for what those marks represent. So there is less investment required at the outset to establish consumer recognition of the brand. But some things are too weak to even function as marks and will not be protectable at all. Selecting a merely descriptive term as a brand will not allow for any exclusive rights unless and until secondary meaning (acquired distinctiveness) is achieved over a significant period of time. But even descriptive marks that have acquired distinctiveness are still subject to descriptive fair use defenses that limit the scope of exclusivity. And a generic term is never entitled to exclusivity, regardless of usage or advertising effort. Anyone who wants to have exclusive rights in a brand needs to select a mark that is distinctive enough to merit trademark protection.

Also, trademark strength can actually be assessed in different ways, to refer to either protectability or scope of exclusivity. There is inherent or conceptual strength, which categorizes how a mark naturally is or is not capable of serving as a source identifier. That is about protectability, and whether there can be any exclusive rights for a given mark when used with particular goods/services. But there is also commercial or marketplace strength, which refers to the level of exclusive use as a brand by a particular entity (secondary meaning). That is generally about the scope of exclusive rights. For instance, a suggestive mark may be conceptually/inherently strong (distinctive) enough to be protectable, but if there are many other entities using similar marks due to similar suggestive connotations then the commercial strength and degree (scope) of exclusivity in the coexisting marks is lessened. Likewise, a fanciful/coined term may be conceptually strong as a mark but may still be commercially weak if its usage has been limited in duration and there has been negligible advertising.

Lastly, recognize as well that many marks are already taken by others, which limits the universe of marks freely available for another business’ use at the time of adoption. It is not unusual for a first-choice mark (and second-choice…) to be already taken. Conducting a legal clearance when adopting a brand is recommended to avoid conflicts with someone else’s preexisting trademark rights.

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Tags Trademark Prosecution, Trademarks

Q&A Trademarks

What is an Acceptable Trademark Specimen?

Post author By Austen Zuege

Federal trademark rights in the United States are based on use in commerce. A specimen is evidence of actual, real-world use of a trademark (or service mark), such as a photo of a product bearing the mark. It is evidence of what consumers encounter when considering whether to purchase the branded goods or services. The U.S. Patent & Trademark Office (USPTO) generally requires specimens both to initially obtain a registration and to maintain an existing registration to keep it active. The Trademark Office will scrutinize a specimen to ensure that it is acceptable under current guidelines. So you need the right specimen(s). A knowledgeable trademark attorney can help identify suitable specimens.

General Requirements for Specimens

There are some general requirements that apply to all specimens. What all the requirements have in common is that they look at the branding a U.S. consumer is presented with when considering purchasing the goods or services. These considerations take into account industry norms.

First, an acceptable specimen must show the mark used in a way that consumers would perceive it as a source indicator—something that allows consumers to identify and distinguish goods or services emanating from different manufacturers, sellers, or producers. In that sense it must function as a mark.

One consideration is whether usage of the mark is prominent enough. If the mark is used only in passing or is difficult to identify amidst other things then the specimen is probably not acceptable. There must also be a direct association between the mark and the identified goods or services. A label or tag unattached to anything that shows only the mark but no other information fails to make that association.

Another consideration is proper usage. A term used generically or merely to provide information about the goods or services, or a graphic used merely for ornamentation or decoration, is not functioning as a mark.

graphic of example acceptable and unacceptable specimens on shirts — Examples of acceptable (left) and unacceptable (right) mark usage for shirts

In the graphic above, the specimen on the left represents a hypothetical photo of a shirt with an attached tag bearing the EXAMPLE mark. This would be an acceptable specimen of use of the EXAMPLE mark because the goods (a shirt) is visible, and a tag bearing the mark is attached inside the shirt at the collar in a customary way. This same specimen would not be acceptable to show use of “large” or “100% Cotton” as marks, however, because those are merely pieces of information about the size and materials of the shirt itself, in a generic sense. The specimen on the right is usually unacceptable because it shows ornamental (or aesthetically functional) use of the word “Example” rather than use as a mark. Acceptability depends on context.

It is necessary for a specimen to show a real use. A specimen cannot be a mock-up, printer’s proof, digitally altered/fabricated image, rendering of intended packaging, or draft of a website that shows how a mark might appear. Similarly, a copy or reproduction of a drawing of the mark in isolation (for instance, a logo alone), and not actually applied to commercial goods or service advertisements, is insufficient. A specimen must provide enough context for someone to understand how it specifically shows usage with the relevant goods/services. In general, you can think of a specimen as representative evidence of actual use that is already occurring. But anything that only portrays planned, hypothetical, or theoretical use is not acceptable as a specimen.

photo of pill bottle with digitally altered label text — Unacceptable digitally altered specimen

The example above shows a photo of a pill bottle with a label that has been digitally altered to add the EXAMPLE mark. The digital alternation of the photo is clear because the text does not wrap around the bottle like the rest of the label. There is also no other information or decoration on the label that would normally appear on a commercial product like this, such as to convey the number of pills contained or the net weight of the contents. The digitally altered image above would not be acceptable as a specimen of use.

Specimens must also correspond to usage with the particular goods and services identified in an application or registration. Usage with one good or service will not suffice to show usage with an entirely different good or service. If there are multiple classes of goods or services at issue, then multiple specimens are usually required.

The date a specimen was captured matters. For new trademark applications, a specimen should be recent. Specimens used to maintain existing registrations must be current, meaning the specimen must be from the window of time in which proof of current use can be submitted. Whenever a web page screenshot or printout is used as a specimen, the date and URL must be included. Ideally screenshots and printouts should be captured in a way that automatically includes that information.

A specimen must also show the same mark identified in the application or registration. Sometimes marks change over time. Such changes, if material, can mean the old mark is no longer being used. A common problem involves redesigning or refreshing a graphical logo to look more modern, which may affect the ability to maintain an existing registration. Changes to colors and graphical elements of a logo may mean you are using a new and different mark, even if the same words appear in both versions. Inconsistent spelling or wording of a mark may also make a specimen unacceptable.

But the particular sorts of evidence acceptable as specimens will depend on whether it is for a trademark (for goods) or a service mark (for services). Those different goods/services requirements are taken up below.

If a specimen is defective, there may be opportunities to submit a substitute. But failure to submit a proper specimen from the start might lead to loss of priority if a suitable substitute specimen (gathered on or before the date the trademark application was filed) is not available.

Specimen for Goods (Trademarks)

A typical form of an acceptable trademark specimen for goods is a photograph of a product bearing the trademark on an attached label or tag. A photo of the trademark stamped or imprinted on products themselves or on their packaging or container is also common and acceptable. But a package insert bearing the mark that is not visible to customers (unlike a conventional label or tag) is generally not acceptable.

Acceptable as Specimen for Goods	Unacceptable as Specimen for Goods
Photo of mark on product itself or attached tag/label	Mock-ups/digital renderings/altered images
Photo of mark on product packaging/container	Package insert not visible at time of purchase
Printout or screenshot of an e-commerce web page where the product can be purchased (for example, showing “Add to cart” or cart/bag icon)	Web page, brochure, or catalog with no way to purchase product
Copy from catalog page where ordering information is provided (for example, “Call this number to place an order”)	Copy of magazine advertisement
Screen shot of web page for downloading installable software	Receipt or invoice confirming prior purchase
Installable software in-app screen capture	Business card

Table of examples of acceptable and unacceptable trademark specimens for goods

A display associated with the goods might be acceptable. Examples of displays include in-store displays, catalogs, and web pages. But to be acceptable a display specimen must show use of the mark (a) directly associated with the goods and (b) that display usage must be at the point-of-sale.

Display specimens often raise acceptability problems. The USPTO looks at “point-of-sale” rather strictly by analyzing whether and how ordering information is provided. Web pages, in particular, sometimes fail to meet all the requirements. Acceptability can sometimes hinge on web page layout.

Typical e-commerce “shopping cart” and “shopping bag” buttons and icons shown near the goods meet point-of-sale requirements. But “contact us for more information” or “where to buy” links are insufficient because they put an extra step between the online display and the ability to purchase the goods. Telephone numbers and email addresses may be sufficient if accompanied by special instructions for placing or accepting orders, such as “call now to buy” or “e-mail your order.” But the mere presence of a phone number or email address is often not sufficient.

For downloadable or installable computer software, an acceptable specimen can be an in-app screen shot showing the trademark. Alternatively, a web page screen shot can be used but only if (a) it creates an association between the trademark and the software and (b) provides sufficient information to enable the user to download or purchase the software from the website—like the point-of-sale display requirements discussed above. Another important distinction here is that cloud computing systems (SaaS, PaaS) used on a temporary basis but not downloaded or installed by a consumer are treated as services rather than goods for trademark purposes.

Various non-traditional trademarks (sounds, scents, etc.) have different specimen requirements. But those sorts of trademarks are rather uncommon.

When it comes to goods, however, mere advertising is generally not acceptable as a specimen. This is probably the most frequent area of misunderstanding. Mere advertising typically does not occur at the point-of-sale for goods. Though there are exceptions, such as an ad that includes purchase instructions, like a TV infomercial. But usually a copy of something in a magazine or online that merely merely tells prospective purchasers about the goods or promotes the goods won’t be accepted as a specimen of use for goods—even though advertising is accepted as specimens for services.

The USPTO provides some examples of acceptable and unacceptable specimens for goods.

Specimen for Services (Service Marks)

A service mark specimen must show the mark as actually used in the sale of the services. But a wider range of specimens are accepted for services than for goods. Acceptable specimens show use in the performance or rendering of the services or in the advertising of the services. A typical form of an acceptable service mark specimen is a web site printout or screen capture that shows the mark in direct association with a description of the services as part of an online advertisement.

Acceptable as Specimen for Services	Unacceptable as Specimen for Services
Screen shot of web page mentioning services	Screen shot of web page that does not mention the services
Copy of magazine ad or brochure mentioning services	Copy of magazine ad or brochure that does not mention the services
Sign-in screen capture for online, cloud-based software platform (SaaS/PaaS)	Screen capture of online software not showing the mark
In-app screen capture showing use of non-downloadable software	Screen shot of web page to download installable software
Copy of business card or letterhead referencing services	Copy of business card that does not mention the services
Photo of service vehicle bearing the mark	Photo of service vehicle not showing the mark
Invoice with service details	Blank form for invoice or receipt that does not describe the services

Table of examples of acceptable and unacceptable service mark specimens for services

Even though a broader range of specimens can be used for service marks for services than for trademarks on goods, not anything will suffice. The USPTO provides a number of helpful examples of acceptable and unacceptable service mark specimens.

Common reasons a service mark specimen might be insufficient include a failure to function as mark or an insufficient identification of the applied-for or registered services (in direct association with the mark). For instance, if an application identifies services that are not clearly identified in the specimen it will not be accepted—even if that same specimen might be acceptable for different (but not applied-for) services. And web site screenshots showing vague descriptions of services might not support an application for services identified in a more specific way. For example, a web site saying “we deliver a variety of customer solutions” would not be sufficient for an application identifying “computer programming services.”

annotated web site screenshot specimen — Example service mark specimen for web site

In the example above, a web page screenshot of blueovergray.com would be an acceptable specimen for services identified as “providing a web site featuring legal information.”

Another important requirement is that the URL and date of capture must be provided for web site printout and screenshot specimens. The USPTO’s “TEAS” online system allows the URL and date of capture to be manually entered for a specimen. But ideally a web site specimen should be captured in such a way that the URL and date are directly embedded in the capture or printout. The example above shows the URL and date of capture embedded in the specimen.

State Trademark Specimens

Individual U.S. states also permit trademark registrations. The specific requirements vary by state. Though specimens are usually required. The criteria for determining what is an acceptable will depend on state law. But the guidelines discussed above for federal trademark registration still represent a good starting point when thinking about such things. Though, as you might expect, specimens for a state registration typically must show usage of a mark in that particular state.

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Tags Specimens, Trademark Prosecution, Trademark Renewal, Trademarks

Q&A Trademarks

Why Are There Trademarks?

Post author By Austen Zuege

Trademark Law Is Directed Against Forms of Unfair Competition

Trademark law is part of unfair competition law. It generally prohibits uses of trademarks (or service marks), trade names, and trade dress that are likely to cause confusion about the source of a product or service. Trademark infringement law traditionally protects consumers from being misled by the use of infringing marks. It is the source-distinguishing ability of a mark that permits it to serve that basic purpose.

We say that marks must be sufficiently “distinctive” to be able to serve as a protectable mark. Generic, merely descriptive, and functional things do not serve a source-identifying function and therefore are not protected by trademark law. For instance, trademark law does not allow someone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first. Terms that are or that become generic are also not protectable. And functional features of goods are distinguished from things that identify their source.

In the U.S., trademark registration is optional—though it provides many benefits for the owner. Trademark laws generally apply even to use of unregistered marks. Rights in unregistered marks are referred to as “common law” rights.

There are both federal and state trademark laws in the United States. Federal or state trademark laws, or both, can apply in a given situation. Though usually federal law is the most important to consider; state laws tend to be similar but are geographically limited. Also, most countries have some form of trademark law, though these laws can differ considerably.

Long ago trademark rights were more limited to counterfeiting and palming-off situations. There has since been an expansion of trademark rights and unfair competition law through modern history. Things like “dilution” are are now addressed too. But these expansions have raised concerns, as have even the pre-modern policy foundations. Like a lot of things, judgments about what is fair or unfair competition tend to be subject to political disagreement. Of course, whether competition should be encouraged or discouraged is itself a normative policy position too.

Justification for trademark law on consumer protection grounds sometimes seems like a “Trojan horse”. Consistent with observations about early Twentieth Century U.S. law concerning business activity in general, trademark law seems to persist because of its ability to shield established firms from new-entrant rivals. In this sense, it fosters a polarization between a small number of highly-profitable firms and a large number of lower-profit firms. The ability of some firms to reap exclusive financial rewards that arise only because trademark laws exist has been partly acknowledged by courts. That those aspects can overshadow purported consumer protection benefits is not as frequently acknowledged, however.

Additionally, trademarks are sometimes said to protect “goodwill”. But is this goodwill held by the consumers in whose minds it arises, or is it some kind of customer loyalty built-up and cultivated around a mark that is the property of the business asserting trademark ownership? In other words, is it customers’ goodwill or the producer’s/supplier’s goodwill? U.S. courts have tended to adopt the latter view through the Twentieth Century. But such a policy has a character of colonization or propertization of the beliefs and views of the public. So this is yet another area where the policies behind trademark law are sometimes criticized.

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Tags Policy, Trademarks

Q&A Trademarks

What is the Source of Federal Authority for Trademark Law?

Post author By Austen Zuege

U.S. federal trademark laws are enacted under the “Commerce Clause” of the Constitution. This is different from patent and copyright laws, which are expressly constitutionally authorized. Trademark law doesn’t have any special constitutional authorization. And the Tenth Amendment says that powers not delegated to the federal government by the Constitution are reserved to the States (or to the people). So, in order to be constitutional, federal trademark law has to be tied to certain types of commerce that the federal government has authority to regulate under the Commerce Clause. Lawyers learn about the Commerce Clause in law school. But it isn’t something that comes up in typical history courses in schools.

In brief, the U.S. federal government didn’t do a whole lot before the Civil War. It focused mostly on foreign policy. But during the post-Civil War “reconstruction” period it started to take on new and expanded roles that hadn’t been meaningfully considered before. Reconstruction provoked deep political debates that were not fully settled by the war. President Lincoln’s assassination added to this post-war tumult. Some constitutional amendments were passed but various proposals failed. Supporters of “lost cause of the confederacy” mythology advocated for “states rights” to try to block federal initiatives and undo advancements of the Civil War.

As time went on, court rulings limited federal powers—and even reconstruction era constitutional amendments—culminating in the so-called Lochner Era. Nearly any regulation of business was struck down. But then the Great Depression and the New Deal Era changed political alignments and an expansive view of the Commerce Clause took hold—for a time at least. Courts started to uphold new and unprecedented federal government laws and initiatives.

The federal trademark laws still in effect today were originally set forth in the Lanham Act. Congress passed the Lanham Act in 1946, during the New Deal Era. Aside from trademark provisions, it also addressed things like public funding of child day care (if only for a short period of time). But the Lanham Act still rests on the Commerce Clause, meaning it can only extend to commerce that may lawfully be regulated by Congress. Such constitutional limits to trademarks are not exactly by design. But in the absence of a constitutional amendment, any federal trademark laws must be limited to what the Commerce Clause permits.

Courts have not sustained any constitutional challenges to federal trademark authority under the Lanham Act as a whole, to date, having struck down only isolated aspects. Though courts have offered shifting justifications for aspects of trademark law. And interpretations of the law have altered and expanded its scope in ways that generally reflect post-New Deal political alignments. The Lanham Act has also been amended in various ways by Congress since its original enactment.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

Tags History, Trademarks

Q&A Trademarks

What Is Use in Commerce?

Post author By Austen Zuege

Use in commerce in U.S. trademark law boils down to two distinct requirements: (a) bona fide use in (b) federally-regulated commerce. Both must be satisfied to have federal rights in a trademark (or service mark).

Bona Fide Use

The first requirement pertains to what sort of use makes a mark eligible for federal trademark protection. The U.S. Patent & Trademark Office (USPTO) scrutinizes evidence of use by requiring “specimens”. U.S. trademark laws—which were amended in 1988 to be stricter about this point—say there must be “use in commerce”, which is a term given a special legal meaning.

“Use in commerce” means the “bona fide [that is, good faith] use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark.” The way this applies to marks on goods versus services varies somewhat. And what is considered the “ordinary course of trade” will vary by industry. But the main point is that federal trademark rights require a connection to actual real-world use. Token uses, sham uses, or purely internal uses are not bona fide uses. So what sorts of uses are sufficient?

Use in commerce on goods occurs when two conditions are met. First, a mark must be placed on the goods or their containers, or on attached tags or labels, or displays associated with the goods. If the nature of the goods makes those kinds of placements impracticable, then use of the mark on documents associated with the goods or their sale qualify. Second, use in commerce on goods requires that the goods (bearing the mark) be sold or transported in “commerce”.

Use in commerce for services occurs when a mark 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.

Note that these definitions for the first requirement are explicitly tied to the second requirement about federally-regulated “commerce”. But otherwise this first requirement can be summarized by saying that you have to actually be using a given mark directly in connection with meaningful commercial offerings of goods or services.

Federally-Regulated Commerce

The second requirement ensures that trademark rights fall with a type of commerce that can be federally regulated. In other words, federal trademark law is limited to certain types of commerce that the federal government is able to regulate as opposed to individual states (find out about the historical background of that requirement here). So in federal trademark law, “commerce” means only commerce that is interstate, territorial (in or with a U.S. territory), or between the United States and a foreign country or tribe. Activities that occur only within a single state on a localized basis often don’t meet that requirement.

Offering services via the Internet is considered use in “commerce”, because the Internet utilizes interstate communications networks. Services such as restaurant and hotel services are considered to be rendered in “commerce”—though courts have been inconsistent on this point historically. Also, intrastate use of a mark may qualify if of a type that would, taken in the aggregate, have a direct effect on interstate commerce. But goods or services offered only locally, entirely within one state, without a significant effect on interstate commerce, would not qualify for federal trademark protection.

Foreign trademark applicants can obtain a U.S. registration without first establishing use. This gives foreign trademark applicants more leeway than domestic U.S. applicants. This is partly because of international treaties the U.S. federal government has signed. But it is also because the federal government has special authority over foreign commerce. However, even foreign registrants must eventually establish use in commerce in or with the U.S. to maintain a federal registration.

The USPTO does not scrutinize the type of commerce when examining trademark applications. Instead, the USPTO presumes that use of a mark is of a type that is federally regulated unless there happens to be evidence to the contrary. It is the responsibility of the applicant and the applicant’s attorney to determine whether an assertion of use in commerce is supported by the relevant facts. So a failure of a use to be in federally-regulated “commerce” generally only comes up if a registration or application is later challenged on those grounds by someone in an opposition, cancellation, or court proceeding.

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Tags Trademark Prosecution, Trademark Renewal, Trademarks

Q&A Trademarks

What is Likelihood of Confusion?

Post author By Austen Zuege

Overview

Under U.S. federal trademark law, a trademark registration can be refused or trademark infringement found if there is a likelihood of confusion. The “likelihood of confusion” standard covers more than identical uses, intentional copying, counterfeiting, and knock-offs. It is ultimately a question of determining what ordinary consumers understand and what would confuse them. Trademarks (and service marks) are intended to avoid consumer confusion about the source of commercially available goods and services. So these issues go to heart of trademark law.

Likelihood of confusion is a multi-factor analysis. There are a number of different facts that are taken into account in order to draw a legal conclusion about the likelihood an appreciable number of consumers would be confused. Each individual factor can point toward or away from confusion, or be neutral. Different factors can carry different weight in the overall analysis depending on the circumstances.

Keep in mind, however, that the likelihood of confusion analysis is about whether an appreciable number of ordinary consumers is likely to be confused. That a few undiscerning or careless prospective purchasers might occasionally be confused is not enough. There is generally no obligation under trademark laws to protect negligent, indifferent, inattentive, or careless purchasers from confusion or to make the market foolproof. The owner of a trademark is not entitled to a guarantee against confusion in the minds of careless and indifferent buyers. Even evidence of actual confusion among a few customers may be de minimis and not conclusive of likelihood of confusion.

A reliable consumer opinion survey is highly informative about likelihood of confusion. Actually, it is usually the best kind of evidence. But surveys are complicated and costly. The practical difficulty is to make a judgment about the likelihood of confusion without having survey results available.

A useful exercise is to try to envision a hypothetical consumer survey. This can help you be more objective and avoid looking at likelihood of confusion in too self-serving a way. Splitting hairs about insignificant differences is a common mistake. Thinking that established rights extend to any and all goods and services (that is, thinking that similar marks can never coexist) is also a common mistake. But turning to the idea of a hypothetical survey of ordinary consumers might help avoid those biases. Because, in the end, the likelihood of confusion question is about ordinary consumers’ perspectives not your own.

The specific list of factors considered is phrased in different ways by various courts and the U.S. Patent & Trademark Office (USPTO)—as discussed further below. But under the any formulation of likelihood of confusion factors, the overall analysis is similar. The marks do not have to be identical. Similarly, the respective goods/services do not have to be identical. It is sufficient that they are related in such a manner that an appreciable number of ordinary purchasers are likely to assume—mistakenly—that they originate from a common source.

Registrations at the USPTO

In the USPTO, six so-called DuPont factors are used for the likelihood of confusion analysis. These DuPont factors can be used to refuse registration because there is a prior conflicting registration. They can also be used in deciding oppositions to applications and attempts to cancel an existing registration based on prior use of a mark. Two DuPont factors are always considered:

similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression
relatedness of the goods or services as described in the application and prior application(s)/registration(s)

Four additional DuPont factors might also be considered, though there may not be any evidence available to allow consideration of these other factors:

similarity or dissimilarity of established, likely-to-continue trade channels (that is, actual sales methods used)
conditions under which and buyers to whom sales are made (for instance, “impulse” vs. careful, sophisticated purchasing)
number and nature of similar marks in use on similar goods or services
existence of a valid consent agreement between the applicant and the owner of the previously registered mark

The six factors listed above are actually a condensed list of the ones that are most commonly relevant in the examination of new applications. The DuPont case actually set forth a total of thirteen factors. Though the other factors omitted from the condensed list above rarely come up except for certain contentious cancellation or opposition proceedings where an opposing party is involved, and even then may not be as significant as other factors.

The weight given to any of these individual factors can vary. There is no precise mathematical formula for how they are applied to reach a conclusion. Though the comparison always involves the specific mark and the specific goods or services identified in the application or registration in question. Actual uses of the mark in the marketplace that are not identified in the application or registration at hand are generally irrelevant—the USPTO only decides what can or cannot be registered. Questions about infringement are dealt with by courts instead.

The USPTO provides some useful hypothetical examples of likelihood of confusion comparisons.

Disputes in Court

Courts decide infringement allegations as well as issues about the validity of trademark rights. But there are slightly different formulations of the likelihood of confusion factors applied in courts from different parts of the country. So the applicable factors will depend on which “circuit” handles a given case.

For instance, in the 8th Circuit—whose jurisdiction covers the states of Minnesota, Iowa, Missouri, Arkansas, Nebraska, South Dakota, and North Dakota—six so-called SquirtCo factors are used to assess likelihood of confusion:

the strength of the owner’s mark
the similarity between the owner’s mark and the alleged infringer’s mark, based on an examination of the marks as a whole
competitive proximity (the degree to which the products compete with each other, though infringement may be found in the absence of direct competition)
the alleged infringer’s intent to “pass off” its goods as those of the trademark owner raises an inference of likelihood of confusion, but intent is not an element of a claim for trademark infringement
incidents of actual confusion (if any; not required to establish likelihood of confusion; requires more than isolated incidents of inattentiveness; its presence is also not conclusive of likelihood of confusion)
the type of product, its costs and conditions of purchase

The weight given to any of the factors for likelihood of confusion can vary. And there is no mathematical formula for applying them. Depending on the evidence available, some factors may be more important than others.

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Tags Litigation, Trademark Infringement, Trademark Prosecution, Trademarks

Patents Q&A Trademarks

What is an Office Action?

Post author By Austen Zuege

“Office actions” are official communications about patent or trademark applications. In general, an office action specifies a reason (or perhaps multiple reasons) why an examiner believes that a patent or trademark registration cannot be issued. Applicants can generally file a response to an office action within a specified period of time. Specific types of office actions are discussed below. Skip to: patent or trademark.

Patent Office Actions

For patent applications, an office action makes a rejection or objection, or both, for some aspect of the application. Office actions are part of patent “examination” or “prosecution”. An office action is prepared by a patent examiner assigned to examine the given application to assess patentability. So, in other words, the office action indicates why the examiner believes a patent cannot be granted.

Most commonly, office actions will reject some or all claims of the application for (allegedly) being unpatentable in light of cited “prior art”, which might be an existing patent for a similar invention, for example. Though an office action might also indicate that some claims are patentable (allowable).

Example patent office action summary (form PTOL-326) — Sample Patent Office Action Summary Page

The first page of an office action is a cover sheet with important mailing/sending date information. The next page is a summary. The remainder explains the substantive basis for the rejection or objection. Multiple office actions can be issued for a given patent application. Though eventually an office action will be made “final”, meaning the examiner considers prosecution closed.

There are other types of official communications that are not “on the merits”, like restriction and election requirements. Patent practitioners typically use different terms to refer to those other communications. That distinguishes them from regular office actions dealing with patentability.

Office actions are common. The overwhelming majority (almost 90%) of all new patent applications receive some sort of rejection or objection in an office action. So there is nothing unusual about receiving one. Most importantly, an applicant is generally still able to file a response to continue pursuing patent protection even if a rejection is made. An office action just opens up the opportunity for back-and-forth dialog between the applicant and the examiner regarding patentability.

However, an important feature of an office action is that it establishes a response deadline. The applicant will need to take action to respond to the office action by that deadline in order to keep the patent application active. Failure to respond will result in abandonment and loss of rights. Extensions of time to respond to an office action are available, though such extensions carry an official fee.

In other countries, different terminology may be used. Office actions may instead be called notices of reasons for refusal, examination reports, search reports, written opinions, etc.

Trademark Office Actions

For federal trademark (and service mark) applications, an office action (or official letter) will state grounds for refusal of registration. Office actions are part of trademark “examination” or “prosecution”. Office actions are prepared by trademark examining attorneys assigned to particular applications. The office action indicates why the examiner believes a mark cannot be registered.

example trademark office action — Sample Trademark Office Action

Office actions will often reject part or all of the application for (allegedly) creating a “likelihood of confusion” with a conflicting prior registration. Though it is also common for trademark office actions to raise formalities requiring action or amendment, such as to change the wording in some part of the application.

Multiple office actions can be issued for a given trademark application. Though eventually an office action will be made “final”.

Trademark office actions are common. There is nothing unusual about receiving an office action for a trademark application. Most importantly, an applicant can generally still file a response to continue pursuing trademark registration even if a refusal is made. An office action just opens up the opportunity for a conversation between the applicant and the examiner regarding registrability.

An important feature of an office action is that usually establishes a response deadline. The trademark applicant will need to take action to respond to the office action by that deadline in order to keep the application active. Failure to respond will result in abandonment of the application. An extension of time to respond to an office action is available, though such extensions carry an official fee.

However, because U.S. trademark rights are based on use in commerce and registration is optional, abandonment of trademark application may not affect so-called “common law” rights stemming from ongoing use of a mark. Though the existence of a conflicting registration may mean there is a risk of infringement. And, if there has not yet been use of the mark, abandonment for failure to respond to an office action may result in a loss of a priority date—potentially allowing someone else to claim the mark.

Tags Patent Prosecution, Trademark Prosecution