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Q&A Trademarks

What is the Process to Register a Trademark?

The process to register a trademark (or service mark) involves submitting an application, which is then substantively examined and a registration is ultimately either issued or refused.  Post-registration action is required to maintain a registration, which can potentially last indefinitely provided that the registered mark is still in use.  Both federal and state trademark registrations are available in the USA, and registration is also available in foreign countries.  In many jurisdictions, including for U.S. federal applications, marks are published for potential opposition by others prior to registration.  Trademark registrations are also subject to cancellation (or expungement, etc.) under certain circumstances. 

Federal registrations are handled by the U.S. Patent & Trademark Office (USPTO), which oversees two registers: the Principal Register and the Supplemental Register.  Only registration on the Principal Register establishes a presumption of exclusive rights in a mark. 

Not all Registrations are Equal in the U.S.: Federal trademark registration on the Principal Register is almost always preferable to state registration because much more expansive national rights are obtained, which is significant in the age of the Internet.  Also keep in mind that a federal registration on the Supplemental Register does not by itself establish exclusive rights, although it can block a later conflicting registration. The value of state-level registrations varies. Some state trademark registrations provide no presumption of exclusive rights.

Basic Requirements of a Federal U.S. Trademark Application

A U.S. federal trademark application must identify the mark, the associated goods and/or services, and a filing basis. 

Identification of Mark

The identification of the mark establishes what, exactly, constitutes the mark, which can include words (e.g., in “standard characters”) and/or graphical elements (e.g., color, stylized font, a design), depending on the nature of the mark.  Importantly, a mark but be one specific thing. Different spellings or different visual depictions potentially represent different marks. A trademark application must be limited to one mark, with any other potential marks pursued in separate applications.

Identification of Goods and Services

The goods and services must be identified and grouped according to a classification system, with filing fees calculated based on the number of classes of goods/services included.  There is some skill involved in wording these identifications of goods and services appropriately. One important consideration is that for U.S. federal registrations it is not possible to simply “reserve” a mark, that is, merely to block others from using it. Use of the mark with all the identified goods and services must have already occurred or at least be intended in the future. Therefore, crafting a proper identification of goods and services requires first understanding how the applicant is currently using and/or legitimately intends to use the mark.

Filing Basis

As to filing bases, first, an application can be based on actual use in commerce, that is, the mark is already in use.  Evidence of use in the form of a “specimen” must be submitted with such an application and the date of first use in commerce must be specified. 

Alternatively, a federal application can be filed based on a bona fide intent-to-use (ITU).  In this case, the mark has not yet been used in commerce but the applicant has a good faith intention to do so.  The ITU application filing date establishes constructive use in commerce.  But a statement of use (with a specimen) is still eventually required in an ITU application in order to obtain a registration—with paid extensions of time the applicant has up to about three years to do so. 

Federal U.S. registrations based upon prior foreign registrations and applications as well as Madrid Protocol extensions based on a foreign application or registration are also possible. 

Lastly, it is possible for a given application to include multiple filing bases. This is most common when a mark has already been used with some but not all goods or services, but use with the further goods/services in the future is intended. It is also common when priority to a foreign trademark registration or application is involved.

The Examination Process

Trademark office examination involves a search for conflicting registrations and an analysis of whether the applied-for mark meets applicable legal criteria.  This is called trademark “prosecution”. Applicants can respond to any refusal sent in an “office action” by making amendments and arguments.  Appeals from refusals are also possible. Additionally, even if a trademark examiner believes a mark is registrable, third parties can oppose registration and can later challenge an issued registration.

Federal registrations can take anywhere from a matter of months to years to obtain, provided that the mark is registrable at all.  The timeline tends to be longer when there is a refusal (for instance, based on a prior conflicting registration or application) or an opposition to registration is lodged. State registrations take a matter of days to weeks, provided the mark is registrable.  Foreign registration timelines vary widely. 

Helpful Tips:

  • Although U.S. applicants can apply for registration themselves, subject to identity verification, legal advice from a knowledgeable attorney can help in obtaining the best and most appropriate coverage. Foreign trademark applicants are generally required to hire a licensed U.S. attorney.
  • Registrations of word marks in “standard characters” are usually the broadest because they do not include any limiting claim as to color, font, or other graphical elements in a mark that includes one or more words.  On the other hand, words that are unregistrable in standard characters alone can sometimes become registrable when distinctive graphical elements are added as part of a “composite” mark that includes both word(s) and graphical element(s). 
  • State-level registration might be worthwhile if usage does not qualify for federal registration, such as purely local usage that is not part of interstate commerce.
  • Trademark registrations are territorial. A registration in one country will generally not provide exclusive rights in any other country. Consider foreign registration(s) if a mark is or will be used in multiple countries.
  • Registrations are generally even more important in other countries, where trademark rights are often determined on a first-to-register basis—sometimes without regard to priority of actual use.
    • For example, unrelated companies concurrently using similar brands in two different countries but later expanding to a common third country can sometimes lead to disputes.
    • As another example, outsourced manufacturing can also sometimes lead to trademark disputes. Export-only manufacturing in a foreign country of goods having trademarks applied to them may still be considered trademark use under foreign law (e.g., “OEM” manufacturing in China), even without any local commercial sales in that foreign country.
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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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Q&A Trademarks

What Should I Do Now That My Trademark is Registered?

Maintaining a U.S. trademark registration requires certain post-registration action. The following is a brief summary of the most important actions a registration should take or consider taking to maintain a trademark (or service mark) registration.

Continue Using the Mark

Continue using the mark in commerce in a consistent and non-generic manner.  Such usage should be prominent enough to be recognized as a distinctive mark by consumers.  Also ensure use is proper trademark usage, as an adjective that modifies a noun rather than as a noun or verb.  Abandoned marks are subject to cancellation.  For marks registered based solely on foreign priority, use in or with the USA must begin within three years of registration or be subject to cancellation or expungement. 

Use Registration Symbol

It is recommended to use the registration symbol ® with a mark in jurisdictions where registered, or alternatively the ™ symbol.  At least the first or most prominent appearance of the mark on a given article, advertisement, etc. should carry such a symbol.  Use of “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” is also permitted for U.S. federally registered marks as well. For U.S. federal rights, there is no legal requirement to use ® or ™ symbols or the like (that is, marking is not required) in order to preserve rights in a mark. However, U.S. federal law does say that failing to use the ® symbol or an equivalent phrase can limit monetary recovery for infringement of a registered mark.

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.

Maintain Control

If a mark is licensed for use by another, the mark owner must maintain control over the quality of the associated goods and services.  Any such license should be in writing and should include an explicit quality control provision. 

Retain Evidence of Use

It is recommended to periodically collect and retain in your records evidence of use of the registered mark in commerce in the U.S., particularly if not routinely documented in the ordinary course of business.  Such evidence can be useful as a specimen of use or to defend against a challenge to the registration by another entity.  If registration was filed on an intent-to-use (ITU) basis, or a foreign priority basis with an intent to use in the USA, it is further recommended to retain written records of that intent at the time of U.S. filing, such as detailed business plans. 

Evaluate Expanded or Changed Use Over Time

If your use of the mark has expanded to encompass new or different goods/services that are not identified in the registration, it may be worthwhile to pursue an additional registration to ensure full protection.  If use has ceased with some but not all of the goods/services identified in the registration, an amendment can be filed to delete only the unused goods/services.  If your branding has changed, such as a “refresh” that materially alters the commercial impression of a graphical logo or the wording of a mark, it is important to evaluate whether the that new usage supports the existing registration and whether a new application should be filed. 

Make Required Filings and Renew the Registration

If the owner’s name or address has changed, official records must be updated. 

Maintaining a U.S. federal registration also requires submission of a Declaration of Use, with supporting evidence, between the 5th & 6th years of registration.  Additionally, renewal is required between the 9th and 10th years of registration and at ten-year intervals after that, each such requiring a Declaration of Use and supporting evidence.  Madrid Protocol extensions to the USA further require that the underlying international registration be maintained. 

Beware of misleading, official-looking notices sent by private entities seeking payment of trademark-related fees as scams. Have a trusted trademark attorney review such notices if in doubt about whether they are a scam.

More Information

More information about maintaining trademark rights is available here.

More information about strengthening protection of a registered trademark is available here.

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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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Articles

New and Upcoming Developments in U.S. Patent & Trademark Law for 2022

Important Developments to Note

At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.


Patents

“DOCX” filing format deadline extended

The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January 1, 2023.  In recent years, most U.S. patent applications have been filed electronically in PDF format.  DOCX-format filings are currently possible but non-DOCX PDF-format filings are still permitted without any surcharge.  The non-DOCX surcharge will eventually be $400/$200/$100 for large/small/micro entities.  Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA. The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English is still rather unclear (it is not clear if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the surcharge). 

In general, the greatest concerns about DOCX format have to do with rendering of complex application content, such as embedded mathematical equations created with a word processing program’s equation editing functionality, which may not render as the applicant intended at the USPTO side.  The official reason given for the implementation delay is to “provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format[.]” But while the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants.  The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations.  Though for applications containing only simple text, without complex or unusual formatting or embedded equations (other than equations inserted as images), DOCX-format filing should not pose any major problems. 

Digital-only patents

Starting sometime in 2022, the USPTO will cease issuing paper patents and will issue digital patents instead.  However, paper “presentation copies” (also called ribbon copies) of patents (on heavy paper with an embossed gold seal and the USPTO Director’s signature) will still be available upon request for a $25 (US) official fee per copy.  The USPTO says that digital patent issuance will speed up the process of issuance after payment of the issue fee, with a target of one week to issuance.  This will shorten the time available to file a divisional or continuation patent application, which must be filed no later than the day of issuance of the parent patent.  Though it has always been—and will remain—a recommended best practice to file any desired divisional/continuation application no later than the date of issue fee payment. 

Bilateral exchange of certified priority documents with EPO ending

The USPTO’s bilateral electronic priority document exchange (PDX) program with the European Patent Office (EPO) is ending.  For any U.S. applications filed on or after January 01, 2022 with a priority claim to an earlier EP application, a WIPO Digital Access Service (DAS) code will need to be provided in order to electronically retrieve a certified copy through PDX.  This will require registering the EP application with the WIPO DAS exchange.  This change will not affect PCT national phase entries into the USA where the EP priority document is made available under PCT Rule 17. 

More U.S. patent filing information

Please also see the “Guide to Foreign Priority Patent Filings in the USA” (available for download as a set of condensed presentation slides titled “Patent Filings in the USA: Important Considerations”) for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.


Trademarks

“Flexible” (shortened) response periods

Starting December 1, 2022, the time to respond to trademark office actions (under 37 C.F.R. § 2.62(a)) will be shortened to three (3) months.  A single three-month extension of time to respond can be requested, which will carry an official fee of $125 (US).  The extension must be affirmatively requested within the original three-month period.  However, the shortened response periods will not apply to Madrid extensions to the USA.  For refusals in Madrid extension cases (§66), the applicant will still have a full six-month response period available without paying any extension fees.   

Digital-only registration certificates

Starting in spring 2022 the USPTO will cease issuing paper trademark registration certificates and will issue digital certificates instead.  [UPDATE: the USPTO began issuing only electronic registration certificates on May 24, 2022.] However, paper “presentation copy” trademark registration certificates (on heavy paper with an embossed gold foil seal, the name(s) of the owner(s), the mark, bibliographic data, and the classes of goods and/or services) will still be available upon request for a $25 (US) official fee per copy.  Registrants who filed an initial trademark application before the implementation date (a date that is not yet fixed) will be able to order presentation copies with no official fee.  Additionally, certified copies of U.S. trademark registration certificates with current title and status information are also available with payment of an official fee, currently $30 (US).

Filer Identify Verification

[UPDATE: the USPTO has postponed the deadline for filer identity verification to August 6, 2022.] By April 9, 2022, persons filing trademark applications, responses, and the like must complete identity verification in order to electronically file with the USPTO.  These identity verification procedures will be available starting January 8, 2022.

New expungement and reexamination proceedings

Two new proceedings are available for an existing trademark registration to be challenged.  Both of these new proceedings are conducted on an ex parte basis.  That is, a challenger files a petition to request expungement or reexamination and, if granted, the rest of the proceeding is conducted only between the USPTO and the registrant in a manner similar to original examination.  Unlike traditional cancellation (or opposition) proceedings, after institution of an expungement or reexamination proceeding, the challenger cannot substantively participate.  Summaries of the two new proceedings follow, but more details about applicable procedures can be found in the USPTO Examination Guide 1-21.  In addition to the two new types of proceedings, expungement is also available as a new ground for a traditional cancellation proceeding after three years of registration (15 U.S.C. § 1064(6)). 

Expungement proceedings: Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the mark in commerce with those goods or services.  The official filing fee for an expungement proceeding is currently $400 (US) per class.  An expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, there is currently an extended expungement filing period.  Until December 27, 2023, expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit.  In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023.  Expungement proceedings are available for all registrations but will be especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required to initially obtain a U.S. registration. 

Reexamination proceeding: Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before either (1) the application filing date (when the underlying application was initially filed based on use of the trademark in commerce under §1(a)) or (2) the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired (when the underlying application was filed with an intent-to-use basis under §1(b)).  Reexamination proceedings are available for registrations under 15 U.S.C. §1051 (§1) but are not available for marks registered under the Paris Convention (§44) or the Madrid protocol (§66).  The official filing fee for a reexamination proceeding is currently $400 (US) per class.  Reexamination must be requested within the first five (5) years after registration.

More U.S. trademark filing information

Please also see this “Filing Guide for Trademark Registration in the USA” for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.


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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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Q&A Trademarks

How Can a Brand Be Protected as a Trademark?

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. 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 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. 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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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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Q&A Trademarks

What is an Acceptable Trademark Specimen?

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 unacceptable mark 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 mark might appear. You can think of a specimen as representative evidence of actual use that is already occurring. But anything that only portrays planned 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 must be recent. Specimens used to maintain existing registrations must be current, meaning the specimen should 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 may mean the old mark is no longer being used. A common problem involves redesigning or refreshing a graphical logo to look more modern, which can 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 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/labelMock-ups/digital renderings/altered images
Photo of mark on product packaging/containerPackage 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 captureBusiness 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.

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 servicesScreen shot of web page that does not mention the services
Copy of magazine ad or brochure mentioning servicesCopy 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 softwareScreen shot of web page to download installable software
Copy of business card or letterhead referencing servicesCopy of business card that does not mention the services
Photo of service vehicle bearing the markPhoto of service vehicle not showing the mark
Invoice with service detailsBlank 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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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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Q&A Trademarks

What Is Use in Commerce?

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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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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Q&A Trademarks

What is Likelihood of Confusion?

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:

  1. similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression
  2. 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:

  1. similarity or dissimilarity of established, likely-to-continue trade channels (that is, actual sales methods used)
  2. conditions under which and buyers to whom sales are made (for instance, “impulse” vs. careful, sophisticated purchasing)
  3. number and nature of similar marks in use on similar goods or services
  4. 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 are still rarely significant.

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:

  1. the strength of the owner’s mark
  2. the similarity between the owner’s mark and the alleged infringer’s mark, based on an examination of the marks as a whole
  3. competitive proximity (the degree to which the products compete with each other, though infringement may be found in the absence of direct competition)
  4. 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
  5. 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)
  6. 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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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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Patents Q&A Trademarks

What is an Office Action?

“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.

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.

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.