Making Trademark Applications “Special”

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.

A quick caveat:  Just because the PTO examines an application quickly doesn’t mean it has a better chance of getting registered.

Scenario 1:  You realize that your trademark registration inadvertently lapsed.  (Deep breaths.)  Perhaps a deadline was docketed incorrectly or there was a miscommunication about minding a portfolio during a transaction.  Whatever the reason, if the registration lapsed due to a mistake on your (or your counsel’s) part, it’s time to file a new application.  Consider also submitting what’s called a “Request to Make Special,” asking the PTO to advance examination of the application.

Keep in mind that a Request to Make Special is only appropriate if the applicant owned the cancelled registration or is an assignee of the prior registrant.  The mark in the new application must also be identical to the formerly registered mark and identify a description of goods or services that is identical to, or narrower than, the description in the cancelled registration.  (One piece of good news:  No PTO fees are required to submit this request!)

Scenario 2:  You may lose rights in your brand if you don’t obtain a registration quickly.  For example, someone is infringing, or threatening to infringe, on your brand, or you need to secure a foreign registration.

Here, it might be a good idea to file a new application accompanied by a “Petition to Make Special.”  Like a Request to Make Special, this petition asks the PTO to speed up the initial examination of an application.  A petition requires a little more legwork, though – it must include the reason for expedited examination, supporting facts and a fee.

The PTO only grants these petitions under pretty extraordinary circumstances.  If your situation applies to a lot of other applicants, the PTO may not consider special treatment necessary.

Strategies for Squashing Sketchy Specimens

So your time-of-filing trademark watching service [1] warned you that someone filed a use-based application to register a mark that’s awfully close to your mark.

You drill into their application file history and notice that their proof of use of their trademark looks like this:

Sketchy, right?

Worse, you check into other applications filed by the same company, and the proof of use they filed for a totally different trademark looks like this:

Even sketchier!  (Would anyone really buy that stuff?)  We’ve noticed this happening more and more lately, sometimes from US applicants, but more often from other countries.  Applicants also shamelessly copy well-known retailers’ or manufacturers’ ads or photos, use software to paste in new brand names, and then submit that to the PTO as so-called proof of use.  Um, bad guys, if you are going to do that, you might want to pay attention to details.  For instance, if you’re claiming use of the mark in the USA, probably best not to submit a storefront photo where the signs  are in Swedish, and the Swedish flag is flying atop the store.  Ahem.

In any event, no need to let the bad guys get a leg up.  You might even be able to avoid spending money on opposing their application, if you send a little old email to TMSpecimenProtest@uspto.gov no later than the 30th day after publication.  See here to learn what you need to include in your e-mail.  The PTO won’t update you as to whether it’s going to reject the bad guy’s application, though, so better mark your docket to check on it occasionally, in case you end up having to oppose (booooo, hisssss).

Hooray for the PTO for giving us an option other than an opposition!

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[1] You do have a time-of-filing watching service, right? Here is why you need one.

A Look at Brand Lifeguarding: Trademark Watching

In a September 6, 2018 webinar hosted by CompuMark, I presented on the very important topic of trademark watching services. Thanks to CompuMark for inviting me to speak, and to everyone who attended the webinar and asked great questions!  (If all goes according to plan, future blog posts may cover some of the questions we ran out of time to answer during the webinar).  For those who weren’t able to make the webinar during the live presentation, you can access a copy on CompuMark’s website (you’ll need to register on the right side of the screen).

In the webinar, I discuss strategies and tips for leveraging trademark watching services for protecting your brand.  As our regular blog readers know, trademark watching services are one of our favorite topics, and we rely on them for effective – and early – trademark enforcement.  In the webinar, I discuss watch-facilitated strategies like filing letters of protest.  I also walk through setting up and maintaining watches, and give a window into outside counsel’s thought process when deciding whether to report watch notices to clients, and what to think about during enforcement, should the client decide to act.  I touch on recent infringement trends, including the increasing filing of fraudulent specimens with US applications and the USPTO’s pilot program combatting them.  With infringement on the rise globally, now is as good a time as ever for businesses to think about doubling down on brand protection.

Note: CompuMark is a trademark watching service provider to the author and other Drinker Biddle trademark lawyers. Neither the author nor Drinker Biddle was compensated for this article or the author’s participation in the September 6 webinar. 

 

Tricks to Transferring Trademarks

A trademark assignment is the transfer of ownership of a mark.  This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.

Sounds pretty straightforward, right?  Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries.  Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned.  Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name.  The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.

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Five Reasons NOT to Register Your Trademark

Our followers know that we get a little giddy at the prospect of registering trademarks.  It’s almost as much fun as deep-fried Twinkies!  (Um, make that “Twinkies® brand sponge cakes.”)  So why are we posting about reasons NOT to register your mark?  Well, although we love global brands, you may sometimes be better off skipping or delaying those new applications.  Consider, for example, the following:

  1. How long will you continue to use the brandIf you will only use the mark for a short time, or in a limited geographical area, maybe it’s not worth spending the money on registration.  You might even stop using the brand before the application matures to registration!
  2. Is your industry brand-focused?  In some industries, brands can be (gasp!) a little less important. If your competitors don’t tend to copy your brand names, consider applying to register only your most important brand names.
  3. Might the Trademark Office consider the mark descriptive? If you’re at risk of a refusal to register the mark on descriptiveness grounds, you might refrain from applying, or wait until after you have used the mark for five years.
  4. Is there a crowded field of similar marks? If you’re not keen on trying to persuade the Trademark Office to withdraw a refusal to register your mark on the ground of confusion with five prior third-party registrations (ugh), maybe your resources would be better spent on something other than a new application…like finding a new brand?
  5. Is there a compelling reason to register the mark now? In some cases, if you’ve been using an unregistered brand for a while, maybe there’s no need to disrupt the status quo, particularly if the brand isn’t especially valuable or distinctive, you’re facing serious registrability hurdles, and there’s no infringement you need to stamp out.  Why call attention to yourself and invite oppositions when no confusion has arisen in the real-world marketplace?

Of course, the above considerations may not apply in every case.  If a brand’s importance is increasing, you’re entering new territories, or you have infringement concerns, it’s often a good idea to conduct searches and file applications.  Just wanted to share some (fat-free) food for thought before you rush into filing globally!

Boo, Lean, and Truncate: A Guide to Getting Your Search On

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.”

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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.

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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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