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 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!

[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.