Helping “Insure” Your Success: When and How to Use “Insurance” Extension Requests for US Trademark Applications

You might remember from our “How Much Use Equals ‘Use’?” post that the USPTO can be picky when it comes to accepting proof that a brand is in use (and, of course, when we say “use,” we mean that special kind of “trademark use” that the USPTO is looking for – i.e., use of a brand in connection with products or services offered in commerce).

Luckily, owners of trademark applications based on proposed use have some time to develop and submit proof of use.  After an initial 6-month period, a trademark owner may request up to five 6-month extensions before it has to file proof that its brand is in use (that’s a total of three years!).  Of course, while taking advantage of these extensions might be helpful in some cases, the faster a trademark owner can submit an acceptable example of use, the faster its application can proceed to registration.

You might be thinking:  “I’m using my brand – but am I using it in a way that meets all of the USPTO’s strict criteria?”  If you’re not sure, you could file an “insurance” extension request along with your proof of use.  An “insurance” extension request provides trademark owners with six additional months to submit new proof of use, if needed.

Example B below shows how a trademark owner can use an “insurance” extension request to its advantage:

Example A:  A US trademark application is allowed on January 1, 2017.  A trademark owner submits evidence of use on July 1, 2017.  The USPTO rejects the evidence of use on July 30, 2017.  In some cases, the application may lapse unless the trademark owner can convince the USPTO to accept the original evidence of use.

Example B:  The application is allowed on January 1, 2017.  A trademark owner submits evidence of use on July 1, 2017, and also files an “insurance” extension request.  The USPTO rejects the evidence of use on July 30, 2017.  Because it filed an “insurance” extension request, the trademark owner has until January 1, 2018 to file entirely new evidence of use.

And there you have it – one way to gain a few extra valuable months when finding and submitting proof of use.   This can make the difference between maintaining an existing application or having to start the application process all over again.

A few pointers when considering whether to file an “insurance” extension request:

Timing:  Only one “insurance” extension request may be filed per application, and it must be submitted in the same 6-month period as the proposed example of use.  Once an “insurance” extension is requested, the trademark owner cannot request any further extensions of time.  Filing an “insurance” extension request also can’t extend the time allotted for the trademark owner to file evidence of use by more than three years.

Additional Fees:  Submitting an “insurance” extension request requires additional filing fees.

Office Actions:  Filing an “insurance” extension request alone is not a sufficient response to an Office action, or rejection of evidence, from the USPTO.  It also doesn’t extend the deadline to respond to the Office action.

Not sure an “insurance” request is right for you?  Might be a good time to ask a trademark attorney to lend a hand!

Let the Games Begin – But Only After the Rules Are In Place (Sweepstakes & Promotions Series Part 2)

As we mentioned last month in our kickoff post on this topic, we are excited to dive deeper into the world of sweepstakes and promotions law.  This post explores several key elements to keep in mind when formulating the official rules and abbreviated rules for a promotion.

The main goal of the official rules in any promotion is two-fold: (a) to inform participants and the public regarding the details of the promotion, and (b) to comply with a series of federal and state laws and regulations.  Both of these goals are critical – no company wants to face either disgruntled participants or angry regulators.

The rules must be in place and finalized before the promotion begins.  If you are running a U.S.-based sweepstakes with a total prize value of over $5,000, you may also be required to register and bond the promotion with various state agencies up to thirty days before the promotion begins. Registration will require you to submit a copy of the promotion rules, so keep in mind that in those cases, the rules must be finalized at least thirty days before the beginning of the promotion.  That means the clock is ticking!  Depending on the type of promotion, other state laws and regulations may also be implicated, so be sure to check well before the beginning of the promotion. Continue reading

Trademark Traps for the Unwary, Part 1: Black-and-White Registrations Abroad are a Gray Area

US trademark aficionados know that US registrations depicting logos in black and white allow the trademark owner to display the registered mark in any color.  Filing in black and white is often a good way to achieve broader protection in the States, and it helps avoid your having to file a new application if you change the color of your logo in the future.  The next time you want to protect your logo outside the USA, however, pause before you send that email to local counsel or submit your Madrid Protocol application depicting the logo in black and white.  It’s not safe to assume that a black-and-white registration outside the USA confers “universal” protection for a mark displayed in any color.

To elaborate:  counsel in a number of jurisdictions have informed us that black-and-white registrations may not protect marks displayed in any color.  We’ve heard this from the EU, Kazakhstan, and Thailand, among other places – though you will of course want to check this with your own local counsel, since this is a fact-specific issue.  Worse yet, black-and-white registrations outside the USA may be subject to attack on non-use grounds if the trademark isn’t used in black and white.  (How often does that happen?!)

We haven’t run across a treatise or other resource that drills down to this level of trademark nerddom, so this might be a good topic to add to the next edition of the Country Guides (accessible to members of the International Trademark Association).  In the meantime – now you’re equipped to ask some more pre-filing questions, to help ensure that your future logo applications will achieve maximum protection.

The Dos and Don’ts of Letters of Protest

We think letters of protest are so great that we wrote our very first blog post about them.

You might remember from Tore DeBella’s post that we often file letters of protest in an attempt to persuade the U.S. Patent and Trademark Office to refuse registration of third-party trademark applications.  Such letters can help delay or even avoid having to file costly oppositions – if you follow the rules, that is.  Some highlights of the rules are as follows.

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Launching a Sweepstakes or Contest – What You Need to Know (Part 1)

As we proudly admit on this blog’s “About Us” page, we’re passionate about all things brand related – and what better way to promote your brand than by running a sweepstakes or contest?  At a time when we are seeing the “gamification” of every part of our lives, it should come as no surprise to see that many brands now include prizes and rewards as a significant component of their consumer outreach.  Where once upon a time this was a niche explored by only a handful of large companies or fly-by-night operators, today, prize promotions are seen by many of our clients as among their most effective forms of advertising.

The concept is wonderfully simple: in a prize promotion, someone enters the promotion, and someone wins a prize.  Yet this basic formulation encompasses a nearly endless number of variations, including sweepstakes, contests, games, trade promotions, sales incentives and viral engagement.  Some of these variants are legal; some are not.  And because we have been so passionate about sweepstakes and contests for so long, we’ve decided to explain the basics in a helpful, multi-post series on the topic.  There’s a lot of nuance, and it would be impossible to cover it all in one place, but we think that once we’re done you’ll be as excited about this area of the law as we are. Continue reading

How Much Use Equals “Use”? Decoding Common Specimen Refusals issued by the USPTO

Filing a trademark example of use in the USA?  You think, piece of cake.  At this point you have jumped through the application hoops, chosen and narrowed your classes of goods and services appropriately and are ready to get the coveted “circle R.”  You jump on your website, see the mark clearly used on the first page, hit “print,” and send it to the USPTO.

Except…

Wait, how can use not be considered “use”?  As it turns out, simply displaying a mark is often not enough.  Below are some tips for decoding three common specimen rejections issued by the USPTO and finding a suitable example of use. Continue reading

Lee v. Tam: January 18 Panel Discussion on Supreme Court Oral Argument

On January 18, the Supreme Court will conduct oral argument in Lee v. Tam, a much-discussed case presenting a First Amendment challenge to the disparagement provision of Section 2(a) of the Lanham Act.  The Supreme Court is reviewing a Federal Circuit en banc decision that the disparagement provision is unconstitutional.  Later that day, the American University College of Law Program on Information Justice and Intellectual Property (PIJIP) will be hosting and webcasting a live panel discussion of the Supreme Court argument.

Drinker Biddle partner Jesse Witten will participate in the panel, along with other attorneys for the parties and amici.  Mr. Witten filed an amicus brief on behalf of Amanda Blackhorse and other Native American individuals who have sought cancellation of the trademark registrations of the Washington NFL team.

You are invited to attend the panel discussion or to watch the event live by webinar.  The discussion will occur from 4:15 to 5:15 p.m., Eastern, on January 18 at 4300 Nebraska Ave., NW, Washington, D.C., followed by a reception.  For more information, please visit the PIJIP website: http://www.pijip.org/tam/

Minimizing Website Infringement Liability: (Re)Designate Your Digital Millennium Copyright Act Agent

If you have a brand, chances are you have a website.  And if you have a website, chances are you have content on the website – probably some combination of text, music, photos, and graphics, including a logo that may be registered with both the USPTO and the Copyright Office.  You’re probably taking steps to help ensure that infringing content isn’t posted to your website –right?  In case you hadn’t heard of it, here’s an additional nifty, inexpensive way for you to help minimize liability even further: compliance with the Digital Millennium Copyright Act (DMCA). Continue reading

A Second Chance for Supplemental Register Registrations: Debunking “Myths” about Re-Filing on the Principal Register

You might remember from Tore DeBella’s post on deciding between Principal and Supplemental Register registration that the Principal Register is the place to be if you’re a trademark owner. But what if the best you could do was secure a Supplemental Register, or “second best,” kind of registration?

Don’t despair!

It might be possible to find your way to the Principal Register even if your mark initially landed on the Supplemental Register.  If a mark has acquired distinctiveness – or significance as a brand name – while on the Supplemental Register, it may become eligible for registration on the Principal Register.  We’ve noticed a few common misconceptions about this process.  Below, we do our best to debunk the “myths” we most often hear: Continue reading

Review of 2016 ANA/BAA Marketing Law Conference

This past weekend, the Brand Activation Association (BAA), a division of the Association of National Advertisers (ANA), held its 38th Annual Marketing Law Conference in Chicago, Illinois.  The author, along with two other members of Drinker Biddle’s branding team, attended the conference, which is widely regarded as one of the top conferences on marketing and advertising law, with deep practical legal content.  The conference was co-chaired by legal counsel from Coca-Cola, Wells Fargo, and Twitter, and speakers included representatives from Airbnb, American Express, Buzzfeed, Expedia, Facebook, Intel, Lyft, MasterCard, McDonalds, Procter & Gamble, VISA, AT&T, WPP, Mondelez, Sears and at least 30 other companies. Continue reading