We are tickled pink when we get to work with trademark registrations that issued before we were born. (We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).
But what if your old, venerable logo is due for some sprucing up? Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)
If trademark infringement and dilution are frequent headaches for brand owners, counterfeiting – which the U.S. Trademark Act defines as use of “a spurious mark identical with, or substantially indistinguishable from, a registered mark” – is a migraine. As a practical matter, counterfeiting in most cases renders perfunctory the task of analyzing the “likelihood of confusion factors” required in traditional infringement cases. In counterfeit cases, the marks and goods are identical, and the counterfeit mark was applied with the intent to deceive consumers into believing that fake goods are genuine, so it’s reasonable to assume it will do exactly that.
We tend to think that trademarks, in general, are pretty special.
However, a “special” trademark application has a … well … special meaning to the PTO. The PTO normally examines applications in the order it receives them, which can take about three to four months. That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.
Ever wonder what dance parties and trademark searching have in common? Neither did we. But I can’t deny this title reminds me of a dance party. Maybe because today is Friday (today is Friday, right?).
We often receive requests to file new applications for clients who have already cleared a potential mark through searching the PTO records and the Internet. If done properly, a bit of self-help can cut down on legal expenses. However, a proper preliminary search can be tricky – it involves more than just plugging the exact mark into the “basic search” feature on the PTO website here (“Quick Links” -> “TESS” -> “Basic Word Mark Search”) and hitting “submit query.”
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.
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.
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.
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 →
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 →