Trademark

Brooke Penrose and Deb Peckham

Brooke Penrose and Deb Peckham

In a recent decision, the Trademark Trial and Appeal Board (TTAB or Board) considered whether an application based upon an “intent to use” a mark in commerce may be predicated on proposed use with currently unlawful goods that may become lawful in the future.

In In re Joy Tea Inc., the applicant proposed to use its mark with, among other items, “tea-based beverages also containing CBD.” The Examiner refused to register the mark on the grounds that applicant’s claim of proposed use of a mark “in lawful commerce” was invalid due to not complying with the Food, Drug and Cosmetic Act at the time the application was filed.

On appeal to the Board, the narrow question became: “[D]oes a trademark applicant’s belief that the cannabis goods specified in its trademark application will become federally lawful in the future provide a sufficient basis upon which to predicate its claimed ‘intent to use’ the mark in lawful U.S. commerce?”

The TTAB’s answer was “no.”

The TTAB upheld the Examiner’s refusal to register the applicant’s mark based on the longstanding prohibition against attempting to reserve a right in a mark, rather than having the ability to use the mark in commerce.… Keep reading

Spilling the Tea on Lawful Use According to the Trademark Office

Does a trademark applicant’s belief that the cannabis goods specified in its trademark application will become federally lawful in the future provide a sufficient basis upon which to predicate its claimed  “intent to use” the mark in lawful U.S. commerce? This was the question recently presented at the Trademark Trial and Appeal Board (TTAB) – the administrative body tasked with hearing appeals of refusal to register marks by the U.S. Patent and Trademark Office (USPTO).

Overview of Federal Trademark Lawful “Use” Requirement

In general, federal trademark rights provide the owner with national, exclusive rights to use a mark in connection with a specific set of goods and services. Unlike most other countries, the USPTO has a “use based” trademark system, meaning it requires trademark owners to demonstrate actual use of their marks in lawful U.S. commerce in order to register and/or maintain their trademark rights.

A federal trademark application must include a description of goods and services described with sufficient particularity to be understandable to the average person. The application can be based either on current use of the trademark in connection with the claimed goods and services in U.S. commerce or based on its future intent … Keep reading

Fixated on “Affixation”: Navigating the US’s Tricky “Use” Requirement

Unlike most of the world, the United States Patent and Trademark Office (USPTO) requires trademark owners to demonstrate actual evidence of use of their marks in order to register and/or maintain their trademark rights. For domestic trademark owners, this “use” requirement is raised at the application stage as U.S. trademark owners are required to file evidence of use before the office will issue a registration. Non-U.S. filers who seek registration in the U.S. may be able to bypass this initial evidence of use requirement at the initial application stage if the U.S. application is based on an extension of the trademark owner’s foreign trademark rights. However, both domestic and foreign trademark owners are required to file evidence of use at both the maintenance deadline – between the fifth and sixth year after registration – and renewal deadlines – file every 10 years after registration.

What exactly is “evidence of use” in the U.S.? The answer is likely far more specific than you may think. The short answer is the USPTO only recognizes current marketplace evidence showing the applied for or registered mark affixed to the goods and services claimed in the application or registration. But what qualifies as “affixation” … Keep reading

Top 5 Legal Considerations When Selecting a New Trademark

Companies often leave decisions on the new company name or the name of a new product for “another day,” believing that finding the right word is just a matter of internal consensus building or exercising a relatively minor amount of creative thought. But choosing a new name can be a time-consuming, emotionally draining, and resource-intensive task that is rarely accomplished in short order.

Part of the complication with choosing names and trademarks derives from internal company issues. Choosing names involves understanding the mission and marketing plans of the company. Often these criteria are ill-defined or not agreed upon before the naming process begins. Another common misstep is that the task of naming is given to a business unit that works independently of or external to other management-level employees. This leads to the clearance and selection of names that another business unit or manager may dislike or refuse to accept.

A fundamental key to success in choosing names and trademarks is putting in place an internal process that involves agreement on who will be involved and how the name should be selected. In particular, if at all possible, company personnel should decide what the new name or mark is intended … Keep reading

Brexit and Intellectual Property in Europe: What You Need to Know

Join Intellectual Property Group Co-Chair Deborah Peckham and attorney Christopher Carroll for a debriefing on critical points you need to know about Brexit’s impact on pan-European IP claims, including patents, trademarks, and design rights. Which pan-European rights will give rise to U.K. rights post-Brexit? How will U.S. owners ensure that their IP rights stay protected in the U.K.? How does Brexit impact tracking of renewals and maintenance of IP Rights in the U.K.?

Christopher Carroll is an intellectual property partner based in the firm’s Boston and London offices. He has practiced extensively before both the U.S. Patent and Trademark Office and European Patent Office. His practice concentrates on developing strategies for clients related to patents, trademarks, and copyrights in the U.S., Europe, and internationally.

Click here to watch the full micro-webinar.… Keep reading

Vetting a New Trademark: How Upfront Trademark Diligence Can Minimize Future Headaches

Before adopting a new trademark or filing an application for federal trademark registration, it is wise to conduct clearance searching. There are various purposes behind clearance. These include 1) dispute avoidance; 2) ensuring the mark as strength; 3) evidence of diligence and good housekeeping.

Dispute Avoidance. First and foremost, searching helps assess whether the chosen mark is likely to trigger a dispute with someone who already adopted the same or a similar mark. Importantly, trademark conflicts are not limited to the use of an identical mark for an identical product or service. Instead, the legal analysis typically focuses upon whether the existence of two similar marks in the marketplace might lead consumers to assume that the products come from the same source or that the sources have a relationship or are otherwise associated with each other. Furthermore, contrary to popular belief, trademark rights are effective upon the first use of a mark on a commercial product or service. Marks need not be registered. Therefore, the best way to avoid a dispute is to search the landscape of other users in the marketplace to be sure someone else didn’t hatch your great branding idea before you did.

Strength AssessmentKeep reading

Top 4 Trademark Enforcement Tools

A trademark’s value can be lost or weakened when a trademark owner fails to protect or police rights in the marketplace. Even improper and/or inconsistent use of a mark can hamper a trademark owner’s ability to enforce exclusive rights in a selected brand. Even if you own a federal trademark registration, the exclusive rights you own are not “self-executing,” and as the trademark owner, you are ultimately responsible for policing the marketplace, and sometimes your own use, to safeguard against losing rights.

Here are some of the top tools every trademark owner should consider incorporating into its trademark enforcement strategy:

1. Include Proper Notices Of Ownership and Registration of Trademarks. If your mark is not registered, but you have a good faith belief that you own a mark exclusively, you should use “TM” with your mark. This symbol tells the world that you believe yourself to be the rightful mark owner.

Once registered, you should use one of the following forms of notice in connection with each use of the registered trademark, which relates to the types of goods or services described in the Certificate of Registration: ®, Reg. U.S. Pat. & Tm. Off., or Registered in Keep reading

Expanding Your Trademark Portfolio Overseas: Filing Strategies to Consider

Trademark rights are jurisdictional, meaning a trademark registration issued in the U.S. may be all but worthless in trying to stop infringement in say, Australia. If you do business outside of the U.S., pursuing trademark registrations in other countries may be valuable. U.S. trademark owners have several options with respect to pursuing international trademark rights and the best choice for your company depends on a few factors, including your goals and budget. As a very general rule we often tell clients that, subject to any budgetary constraints, it makes sense to try to obtain trademark protection in those countries where your company currently trades AND where you intend to trade (meaning generate sales/shipments) in the next 18-36 months.

The main paths to pursuing trademark registration in other countries are:

  • to file separate national/regional (where available) applications directly with each local intellectual property office in the country or region of interest; or
  • where feasible, file a single application via the World Intellectual Property Office (“WIPO”), designating the individual countries and regions of interest.

The One Size Fits All Approach – Filing Through WIPO using the “Madrid System”

  • Can be Less Expensive, But Rights Will be Narrower and Vulnerable

One filing … Keep reading

U.S. Trademark Office Heightens Scrutiny of Trademark Applications and Registrations

A relative outlier compared to the trademark regimes in most of the world, the United States Patent and Trademark Office (“USPTO”) only permits registrations to be maintained for goods and services that are actually being provided in the U.S. and only allows registrations to issue based on a future “intent to use” in limited circumstances.  In other words, under the U.S.’s trademark system, trademark owners are not entitled to grab additional registered rights beyond the scope of their actual business activities in the U.S.  While previously the Office was somewhat lenient in accepting claims, more recently the USPTO appears to be cracking down on applicants to ensure consistency on the U.S. Register.  A few emerging examination trends demonstrate this trend:

BROAD CLAIMS BASED ON INTENT TO USE

Previously: Applications based solely on the applicant’s stated bona fide intent to provide all claimed goods and services were accepted based on this representation alone.

Recently: The USPTO has started requiring applicants of seemingly unrelated goods and/or services to justify how they could have a bona fide intent to provide various, disparate goods and/or services and explain to the office their business plans to support such a claim.

BROAD CLAIMS Keep reading

Trademark Office Proposed Fee Changes Could Change Filing and Prosecution Strategies

The U.S. Trademark Office announced its intent to increase various filing fees, and assess new categories of fees, in response to its continually increasing operational expenses.  The last time the U.S. Trademark Office changed its fee schedule was January 2017.

Fortunately, the Office has also indicated that it will not implement its proposed fee changes until October 2020 at the earliest.  Even then, the notice suggests that it would weigh its operational needs against the state of the U.S. economy before moving forward with the fee adjustments.

Below is a summary of many of the highlights of the proposed filing fee changes for electronic filings (which the U.S. Trademark Office continues to encourage through lower filing fees compared to filing by paper):

Two new categories of fees are worth noting as they may significantly impact trademark portfolio management strategies.

New Fees Assessed for Delayed Requests for Reconsideration

For the first time, the Office is proposing to assess fees for submitting a Request for Reconsideration where such a request is filed more than three months from the issue date of a Final Action.  Under U.S. trademark practice, if the Office raises an objection, the applicant will have six months … Keep reading