Of Brands, Logos, Trademarks, and Trade Dress
Taking the Mystery out of Trademark Use
Before a trademark can be registered, it has to be used.
There’s one exception to that — if a mark is registered in a foreign country, it can be registered in the States without having been used here. But even then, the registration eventually will cancelled if the owner deosn’t prove the mark has been used.
So what constitutes use?
Trademarks are brands. They tell consumers where the branded good or service comes from. Trademark use, therefore, means the selling or distribution of goods or services to consumers that carry a brand. For goods, that means affixing the mark to the good itself or placing it on product packaging. Services are intangible, so it’s not possible for owners to physically affix a brand to the thing they’re selling. Use of a trademark for services (technically, a “service” mark) is the next best thing — display of the mark at the point of purchase, such as on a sign in a brick-and-mortar store, and on a website where the services are offered if the owner is a web-based company. Letterhead and business cards don’t constitute trademark use, because those items refer only to the company, rather than signaling that a good or service comes from the company.
Trademark owners are often unsure what the U.S. Patent and Trademark Office (PTO) requires to support a trademark registration. There’s no mystery. What’s described above is what the PTO needs.
To register a mark with the PTO, the use also has to be interstate. That means in a sale or offering to an out-of-state or foreign purchaser. Localized use, such as sales only within a single city, usually does not constitute interstate commerce and, therefore, such use cannot support a federal registration.
Finally, use needs to be “lawful.” That means the good or service being distributed or sold with the mark can’t be illegal. This requirement has become more important recently with the legalization of medical and recreational marijuana by some states, including the State of Washington. Even if a mark would otherwise qualify for protection, it can’t be registered (or enforced) if its use is not lawful.
Trademark use is about putting the mark in front of actual customers — telling them the good or service comes from the owner. It takes the mark out of the abstract, and puts it into commerce.
Article originally appeared on Michael Atkins (https://seattletrademarklawyer.com/).
See website for complete article licensing information.
Director’s Forum: A Blog from USPTO’s Leadership
Improving the Trademark Register
Guest Blog from Commissioner for Trademarks Mary Boney Denison
When selecting a mark for a new product or service, a business will search the USPTO database of registered marks to determine whether a particular mark is available. Registered trademarks that are not actually in use in commerce unnecessarily block someone else from registering the mark.
To ensure the accuracy of our trademark registry, in 2012, the USPTO launched a pilot program to gather data on whether registered marks were actually being used on the products and services listed on their registrations.
During the pilot, in 500 randomly-selected maintenance filings we required the registrant to submit proof of use for two additional items for each class listed on the registration. Although the registrant must submit one example of use per class in a maintenance filing, typically the registration will list multiple products or services for each class.
At the conclusion of the pilot, the USPTO determined that in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods or services queried. This was in spite of the owner having recently sworn under penalty of perjury to such ongoing use as part of the maintenance filing. We issued a report on the results and held a roundtable to discuss the results and next steps. The consensus among roundtable participants was that the results of the pilot program indicated a need for some action to improve the accuracy and integrity of the register. As a result of these findings and input from the trademark community, we are now taking a three-pronged approach to tackling the so-called “deadwood” in our searchable database of registered marks.
First, we are increasing the readability of the registration declaration. We have reformatted the declaration to it make it more readable and therefore more likely for the signer to read the declaration swearing to use for each and every good or service listed.
Second, we are planning to make the random audits of existing registrations permanent. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. The comment period recently closed and we are now drafting a final rule.
Once implemented, attorneys representing trademark registrants will be able to make registrants aware that, in order to maintain their registrations, they may be asked to submit and prove use on more than the one item of goods or services per class. Specifically, for selected registrations, we may require submission of information, exhibits, affidavits or declarations, and additional specimens to ensure that the register accurately reflects the marks are in use in United States for all goods and services identified in registrations, unless excusable nonuse exists.
Third, we are considering proposing one or more new or revised procedures to cancel registrations for marks either no longer in use or never in use. On April 28, the Trademark Public Advisory Committee convened an executive session to discuss the possibility of a new expungement procedure as well as several streamlined Trademark Trial and Appeal Board (TTAB) cancellation procedures. Preliminary meetings with various stakeholder groups continue. We are close to fully developing these concepts. Under consideration are options that include:
A Trademark Examining Operation Nonuse Expungement Proceeding where the Director will expunge registrations that have never been used, upon request, and
A new TTAB proceeding to expunge registrations that have never been used, and
Streamlined TTAB procedures where goods and services in question can be deleted if the TTAB determines that the mark has been abandoned or that use-requirements were not met during the initial USPTO examination process.
Ensuring the integrity of the Federal Trademark Register is of utmost importance to the USPTO. Please be on the lookout for further updates on this important topic.
Posted at 10:04AM Oct 05, 2016 in trademarks | Comments
Reviews of The 3 Best Trademark Search Tools for Trademark Attorneys
Conducting a trademark clearance search has never been more important.
In today’s world of global commerce, competition is no longer limited to your backyard. The Internet has opened up both national and international borders in ways our predecessors could have hardly imagined.
The number of trademarks registered each year is staggering. The United States Patent and Trademark Office has seen a 6.9 percent increase in registrations in 2016, translating to about 398,000 applications.
Factor in trademarks registered in jurisdictions around the world and you have well over a million! Because of this, the search clearance process is becoming increasingly complex.
The Best Trademark Search Tools
While free databases like USPTO, TESS, WIPO, and EUIPO have accurate information, they don’t provide enough intelligence to thoroughly assess risks from all angles. This is where trademark search service tools and providers come into play.
In this article, we’ll review the top three providers that clearly stand above the rest. Generally speaking, trademark search tools fall into two categories: Human-powered and Technology Assisted.
1. Human-Powered Search Strategy
With this route, an expert is mining databases, organizing information, and manually creating a comprehensive risk assessment on your behalf. Additionally, they will tap into their expertise to come up with as many different permutations of your chosen trademark as they can think of.
Using a “substitute this for that” methodology, they’ll analyze words for visual and phonetic similarity. This is extremely important. After all, you don’t want your client to get sued by Nike for marketing the trademark phrase, “Must do it!”
Human-Powered Provider Options
When it comes to expert-powered search, there are two reputable companies to consider: Corsearch and Thompson CompuMark. Both companies offer similar, high-quality services.
Corsearch has more than 60 years of experience in the trademark community. The organization provides full searches by country and region, as well as a worldwide search conducted by trained researchers who review thousands of potential results. Online sources, periodicals, databases, directories, books, and proprietary databases are all consulted to provide comprehensive marketplace overviews.
Once the search is completed, the information is organized according to relevance. With Corsearch, you have two options: You can pay a la carte or purchase a package. Here are some of their most popular options:
2. Thomson CompuMark
Thomson CompuMark, a business unit of Thomson Reuters, provides a broad range of trademark research and brand protection solutions. Currently the largest trademark service provider, the organization employs more than 55,000 people in more than 100 countries.
It should be noted that Thompson Reuters recently sold its Intellectual Property & Science division to Onex Corp. and Baring Private Equity Asia for $3.55 billion in cash. The media company said in a statement that it would use $1 billion of the proceeds to reduce debt and buy back stock.
As of the time of this writing, the changeover hasn’t affected the company’s standard offerings. Thompson CompuMark provides U.S. full search offerings includes coverage of identical marks in all classes, plus confusingly similar marks in classes relevant to your product or service. Similar to Corsearch, the search process is conducted by a team of researchers.
Both companies take thorough steps (i.e. reviewing search strategies, checking USPTO database records for accuracy) to provide quality results. And both offer a variety of search packages, including (but not limited to):
Pros and Cons of Human-Powered Search Strategy
Done For You: With an outsourced expert search, you can spend more time working on income-generating activities.
Peace of Mind: Hiring a reputable search company can reduce your risk of human error.
Comprehensive Coverage: Thomson covers more than 192 regions (the largest breadth in the marketplace), while Corsearch covers nearly as many.
Large Common Law Source: Thomson boasts the largest common law source on the market. However, it should be noted that approximately 40 percent of those sources no longer exist and are old repositories.
Slow: Since search strategies are conducted by actual humans, you’ll have to wait a few days for your report. Manual search clearances average 3 to 5 days.
No Ranking of Results: Unfortunately, your search results won’t be returned to you in order of highest threat to lowest. Expect a lot of data mining.
No Guarantees: Reviewing thousands of search results leaves room for human error. Foreign languages, connotations, and cultural implications can all easily be overlooked.
Expensive: It’s important to remember you’re paying for a professional’s time and expertise. Though prices vary, they generally fall into these averages: $1,500 for a full U.S. search, $8,900 for a full European search, and $40,000 a worldwide search—and that’s just for one category.
While issuing an expert-led search is often more comprehensive than delegating to paralegals, it obviously has some drawbacks, the primary one being cost.
If, for whatever reason, your client needs to search outside of the parameters originally agreed upon, or outside of some pre-agreed searching limit, he or she will be charged per result. That can cost anywhere from 50 cents to $2 per entry. The problem? You really don’t know how many results you’re going to have until you search. If you receive 1,000 search results at $2 per entry, that’s an extra $2,000.
Technology Assisted Search Strategy
Thanks to recent advances in technology, trademark attorneys now have the option of DIY search options.
Although both Thomson and Corsearch provide online tools, these are largely “data pulls” that can be used to retrieve copious amounts of information that still need to be sifted through manually. In other words, a human being still needs to spend countless hours analyzing the results, ranking them and ultimately, highlighting the most concerning marks. For this reason, these options don’t fit into the technology assisted search category.
In contrast, a technology assisted program can yield a number of specified search queries before delivering ranked and relevant results generated by scientific algorithms. TrademarkNow is currently the only provider on the market to offer this technology.
TrademarkNow brought together some of the brightest minds in the software and legal industries to develop something different: An artificial intelligence program designed to instantly evaluate word linguistics, product types, and jurisdictions—in seconds.
Basically, the NameCheck system completes the same quality of search conducted by a human being in as little as 15 seconds. For due diligence, the results should be reviewed for a final risk assessment by a Trademark lawyer. But, the results, and speed of search will make their job much easier, and cut out days or weeks of waiting and work.
The major benefit? Unlimited search options for one flat rate.
Unlimited global search
App store data common law source
All class and product categories
Phonetic and visual similarity of proposed mark words
Semantic distances between product classes
International/Global word meaning
Internet domain registrations
Unregistered marks used in commerce
Unregistered products/services in active commerce
Pros and Cons of Technology Assisted Search Strategy
Control: The trademark search process is 100 percent in your control.
Immediacy: Obtain search results in less than 15 seconds.
Relevancy: Review ranked results of potential candidates.
Affordability: Suitable pricing (with flat rates available in many cases).
Peace of Mind: A scientific algorithm that eliminates human oversights.
Creatively Supportive: Search as many names as you want.
Design Search Function: With LogoCheck.
Fewer Regions: While nearly all regions will be covered soon, TrademarkNow currently covers 67 regions (including all major ones).
Which Tool Is Right for You?
Need to register a trademark in Ghana? You’ll want to go with a service provider that covers more obscure regions.
Don’t have the time to conduct a search strategy and sift through data? Artificial intelligence or man-powered search could work for you.
Need the flexibility to change directions on the fly? Artificial intelligence is definitely your most cost-effective option.
Similarly, if you’re simply looking for unlimited search, ranked risk assessment reports and greater independence in the search clearance process, TrademarkNow is your best option.
Last updated: September 26, 2016
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