Now that the Sunrise period has set for brand owners to block their respective trademarks from being used in .XXX domain names, what’s next for brand owners that opted not to participate in the Sunrise period and how concerned should they be?
The Sunrise period for members and non-members of the adult community that have verifiable trademark rights or pre-existing exact-match domain names has closed. The next phase for registering .XXX domain names is the Landrush phase reserved only for those members of the adult community. Should there be competing reservations during that phase, those domain names will be auctioned to the highest bidder. That period is set to open on November 8 and close on November 25, 2011. The last and on-going phase will be the General Availability phase, which is set to open on December 6, 2011.
For those brand owners that participated in the Sunrise period to block their respective trademarks, it’s important to note that they were only eligible for blocking domain names that correspond to the exact spelling of their trademarks or pre-existing domain names. Should they decide to reserve defensive domain names for common misspellings of their respective marks – to keep them away from typo-squatters - they must do so during the General Availability phase.
For the past several years the intellectual property trademark attorney community and many brand owners have “sounded the alarm” with respect to the Internet Corporation for Assigned Names and Numbers’ ("ICANN") proposed plan to launch potentially hundreds of new generic top level domain names (“gTLD”), such as .garden, .books, .cars (and already approved .XXX), because, they argue, such launch would be catastrophic for brand owners since they would need to spend thousands and possibly hundreds of thousands of dollars on useless defensive domain name reservations and enforcement actions against squatters.
Recently, and interestingly, however, I have seen comments by some trademark attorneys that suggest that there may now be an emerging more realistic view on that issue. Those comments concern the new .XXX gTLD and suggest to me that the trademark attorney IP community view on gTLDs might be maturing. Those recent comments concern beliefs that the purpose of domain name sunrise periods is to “bilk” / “fleece” brand owners out of their money and there is no evidence that cybersquatters have any “real” interest in reserving new gTLDs – since those corresponding sites tend to receive less traffic than sites corresponding to .com domain names. That potential “maturing” view may be the result of new business realities and/or an appreciation for taking a business practical approach on the issue and not do what some people say many lawyers do best, “over lawyer.”
If there is growing sentiment among the trademark community that reserving or blocking .XXX domain names that correspond with brand owners’ trademarks may not be worth the expense (unless the marks are famous and/or coined marks or may have a certain connotation within the adult industry), perhaps the trademark community should not be overly concerned with reserving defensive domain names for the anticipated new gTLDs – especially those that would not correspond to a brand owner’s industry. I would certainly think that, for example, an automotive company would be more concerned with the .XXX gTLD than .garden or .pets.
I have blogged about the imminent deluge of new gTLDs, including HERE, HERE and HERE, and how that may affect the average brand owner. In one of those posts, I wrote:
In my opinion, the concerns raised by brand owners appear to be limited mostly to multi-national, well-known brands that would be most susceptible to domain name squatting issues. Small to medium-sized companies and many non-consumer products companies probably have little to worry about should ICANN’s proposed plan be implemented. All companies should, however, be keeping an eye on the process as it unfolds and, if implemented, be sure to monitor for misuses of their brand names in the new online “wild wild west.”
In another post, I wrote the following:
I cannot recall the last time that I had a client call or complain about a cybersquatter using its trademark or phonetically similar trademark with one of the more obscure gTLDs (i.e., .travel, .jobs). Why? My thoughts are that there is likely not any reason for the average consumer to visit most gTLDs. Would the average consumer think to type in www.xerox.travel when searching for Xerox’s web site? Of course not. If that's the case, then why would cybersquatters care to reserve domain names that don't generate web traffic and revenue?
I have also reported the following:
Minds + Machines' study reports that “Overall, the claims of brand owners that they will be forced to spend significant amounts of money performing defensive registrations in the proposed new gTLDs are not supported by the historical data, which shows that they largely do not undertake defensive registrations in new gTLDs, nor is there any extensive cybersquatting in new gTLDs.”
The Domain Name Wire™ recently reported that the ICM Registry has already received over 42,000 applications for .XXX domain names and has pocketed over 8 million dollars – with the General Availability phase yet to open. Domain Name Wire also reports that:
The sunrise applications are five times as many as ICM Registry anticipated. If trademark holders are like many other businesses, we can expect a flurry of applications before the sunrise period ends this Friday so the numbers will grow.
Domain Name Wire author also comments that:
.XXX has benefited from some savvy (and expensive) marketing, lots of free press, and intellectual property lawyers selling fear to their clients.
I have provided a list of six actions that brand should consider to take now to ready themselves for the potential deluge of hundreds (and some argue thousands) of new gTLDs in my post HERE.
So what will it be for most brand owners? Take the business practical approach and defensively block and reserve only those gTLD names that make business sense or continue to do what most have done over the past decade plus, be “over-lawyered”?
Sunday, November 6, 2011
Saturday, July 2, 2011
Uniform Domain-Name Dispute-Resolution Policy (UDRP): To Catch a Cybersquatter
An issue that regularly arises for many brand owners is whether third party use of a certain domain name infringes their trademark rights. The analysis for each case of alleged trademark infringement may vary depending upon the facts. While some cases give rise to clear trademark infringement, some cases are not that clear and others verge on that fine line of “reverse domain name hijacking.”
Trademark owners concerned with third party use of their trademarks in domain names may utilize - what is known as - the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). The UDRP – as opposed to litigation – is a quick and economical procedure for seeking transfer of an “infringing” domain name. In many instances, respondents in UDRP proceedings tend to be domain name speculators and/or cybersquatters.
Domain name speculation is the practice of reserving or purchasing domain names for the purpose of later selling them for profit. Selling – or flipping – domain names are akin to what we saw in the real estate market several years ago. Those electronic “real estate” owners that speculate in domain names are known as “Domainers,” many of which have successfully built businesses around buying and selling domain names.
Domain name speculation should not be confused with cybersquatting. Domain name speculation is the practice of identifying generic or descriptive (not trademarks) domain names and utilizing them to develop web site traffic for purposes of generating revenue from what is known as “pay-per-click” advertising. Domain names may also be re-sold or “flipped” for profit. Much like real estate investment and speculation, Domainers evaluate electronic real estate and decide, based upon available information, what the “property” is worth. The goal: make a profit. No harm, no foul -- until Domainers use trademarks in domain names in violation of a trademark owner’s rights.
Cybersquatters on the other hand reserve or purchase domain names that use someone’s trademark. A cybersquatter may also engage in - what is known as - “typo-squatting” by reserving domain names of commonly misspelled trademarks for the purpose of capturing misdirected Internet traffic when a user misspells a trademark (www.Walmrt.com). The definition of a cybersquatter is one that registers, traffics in, or uses a trademark of another in a domain name with bad faith intent to profit from the goodwill belonging to that trademark owner.
When cybersquatters misuse trademarks in domain names, trademark owners may take action by filing UDRP proceedings. Complainants in UDRP proceedings must establish the following three elements to successfully compel transfer of a disputed domain name:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. The registrant does not have any rights or legitimate interests in the subject domain name; and
3. The registrant registered the domain name and is using it in "bad faith."
Below are a few considerations when contemplating the use of the UDRP process or determining whether your company has rights in a disputed domain name:
1. May trademark owners of non-registered, common law trademarks utilize the UDRP process and successfully compel transfer of infringing domain names?
Yes. As long as complainants establish that consumers have come to recognize their marks as being distinctive identifiers associated with them or with their goods and/or services, they may successfully assert common law trademark rights and potentially compel transfer of subject domain names – even if they do not own a registered trademark.
2. Do trademark licensees have rights for purposes of utilizing the UDRP process?
Yes. Licensees are generally considered to have rights in trademarks under the UDRP. Licensees must, however, establish their licensee status and/or provide evidence that the trademark owner has authorized the filing of the UDRP complaint.
3. Is a domain name that incorporates a trademark and a descriptive or generic term (as viewed in relation with complainant’s products and/or services) still considered “confusingly similar” to the complainant’s mark?
Generally yes. The addition of descriptive or generic terms to the complainant’s trademark would normally be regarded as being confusingly similar and thus sufficient to find confusing similarity under the first prong of the UDRP test.
4. Are domain names that use misspellings of trademarks (i.e., typosquatting) considered confusingly similar to complainants’ trademarks?
Generally yes. As long as the misspelling is obvious or common, the misspelled domain name will generally be found to be confusingly similar to a complainant’s mark.
5. Can resellers or distributors of trademarked products have legitimate rights with respect to securing domain names that incorporate those products’ trademarks?
Maybe. If distributors or resellers use the subject domain name with the actual sale of the branded products and services, use the subject domain name for only the corresponding branded products and accurately and prominently disclose its relationship with the trademark owner, they may be regarded as having a bona fide interest in a subject domain name.
6. Can there be a finding of bad faith when a domain name has not been put to use and the domain name holder has not attempted to sell a subject domain to a brand owner?
Generally yes. Some panels have found that the act of holding domain names for years without putting them to a bona fide use - and even when there has not been an attempt to sell the subject domain name to a brand owner – does not preclude a finding of bad faith.
For read more about this topic, you can read some of my previous blog posts here, here, here and here.
Trademark owners concerned with third party use of their trademarks in domain names may utilize - what is known as - the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). The UDRP – as opposed to litigation – is a quick and economical procedure for seeking transfer of an “infringing” domain name. In many instances, respondents in UDRP proceedings tend to be domain name speculators and/or cybersquatters.
Domain name speculation is the practice of reserving or purchasing domain names for the purpose of later selling them for profit. Selling – or flipping – domain names are akin to what we saw in the real estate market several years ago. Those electronic “real estate” owners that speculate in domain names are known as “Domainers,” many of which have successfully built businesses around buying and selling domain names.
Domain name speculation should not be confused with cybersquatting. Domain name speculation is the practice of identifying generic or descriptive (not trademarks) domain names and utilizing them to develop web site traffic for purposes of generating revenue from what is known as “pay-per-click” advertising. Domain names may also be re-sold or “flipped” for profit. Much like real estate investment and speculation, Domainers evaluate electronic real estate and decide, based upon available information, what the “property” is worth. The goal: make a profit. No harm, no foul -- until Domainers use trademarks in domain names in violation of a trademark owner’s rights.
Cybersquatters on the other hand reserve or purchase domain names that use someone’s trademark. A cybersquatter may also engage in - what is known as - “typo-squatting” by reserving domain names of commonly misspelled trademarks for the purpose of capturing misdirected Internet traffic when a user misspells a trademark (www.Walmrt.com). The definition of a cybersquatter is one that registers, traffics in, or uses a trademark of another in a domain name with bad faith intent to profit from the goodwill belonging to that trademark owner.
When cybersquatters misuse trademarks in domain names, trademark owners may take action by filing UDRP proceedings. Complainants in UDRP proceedings must establish the following three elements to successfully compel transfer of a disputed domain name:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. The registrant does not have any rights or legitimate interests in the subject domain name; and
3. The registrant registered the domain name and is using it in "bad faith."
Below are a few considerations when contemplating the use of the UDRP process or determining whether your company has rights in a disputed domain name:
1. May trademark owners of non-registered, common law trademarks utilize the UDRP process and successfully compel transfer of infringing domain names?
Yes. As long as complainants establish that consumers have come to recognize their marks as being distinctive identifiers associated with them or with their goods and/or services, they may successfully assert common law trademark rights and potentially compel transfer of subject domain names – even if they do not own a registered trademark.
2. Do trademark licensees have rights for purposes of utilizing the UDRP process?
Yes. Licensees are generally considered to have rights in trademarks under the UDRP. Licensees must, however, establish their licensee status and/or provide evidence that the trademark owner has authorized the filing of the UDRP complaint.
3. Is a domain name that incorporates a trademark and a descriptive or generic term (as viewed in relation with complainant’s products and/or services) still considered “confusingly similar” to the complainant’s mark?
Generally yes. The addition of descriptive or generic terms to the complainant’s trademark would normally be regarded as being confusingly similar and thus sufficient to find confusing similarity under the first prong of the UDRP test.
4. Are domain names that use misspellings of trademarks (i.e., typosquatting) considered confusingly similar to complainants’ trademarks?
Generally yes. As long as the misspelling is obvious or common, the misspelled domain name will generally be found to be confusingly similar to a complainant’s mark.
5. Can resellers or distributors of trademarked products have legitimate rights with respect to securing domain names that incorporate those products’ trademarks?
Maybe. If distributors or resellers use the subject domain name with the actual sale of the branded products and services, use the subject domain name for only the corresponding branded products and accurately and prominently disclose its relationship with the trademark owner, they may be regarded as having a bona fide interest in a subject domain name.
6. Can there be a finding of bad faith when a domain name has not been put to use and the domain name holder has not attempted to sell a subject domain to a brand owner?
Generally yes. Some panels have found that the act of holding domain names for years without putting them to a bona fide use - and even when there has not been an attempt to sell the subject domain name to a brand owner – does not preclude a finding of bad faith.
For read more about this topic, you can read some of my previous blog posts here, here, here and here.
Sunday, June 5, 2011
Authors: A Title Of A Single Book (Works) Is Not Registrable As A Trademark At The U.S. Patent And Trademark Office - Or Is It?
An issue that comes up from time to time in my practice and one that I handled regularly when I was a trademark attorney with the United States Patent and Trademark Office (“USPTO”) is that of authors seeking trademark protection for titles of books or similar works. Seeking federal trademark protection for book titles or a portion of a book title (known sometimes as “phantom marks”) may be an import issue and branding strategy for some authors, especially if they would like to prevent others from using the same or similar title on competing books. Unfortunately for authors, however, the USPTO does not issue trademark registrations for a book title of a single work.
Section 1202.08 of the Trademark Manual of Examining Procedure (“TMEP”) (the trademark examination guide followed by trademark examiners at the USPTO) states the following (with emphasis added):
1202.08 Title of a Single Creative Work
The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from a series, does not function as mark).
Authors, and even some practitioners not well versed in trademark law, are blindsided with this harsh reality when they receive Office actions from the USPTO refusing registration of their respective “trademarks” – or book titles. First reaction may be a sense of panic, since it may now appear that all of that hard work writing the book (believe me, I know…), obtaining the domain name corresponding to the title of the book and working with a somewhat disagreeable-at-times-publisher has not resulted in proprietary rights in the title – or a portion thereof - of my book! Second reaction may be to ask the question “what do I do now…!?” The frequent answer from USPTO trademark examining attorneys handling these cases - and even perhaps from legal counsel – is “write a second book!” Once you have written your second book, they say, (oh that’s easier said than done), you would have a book series, which may entitle you to trademark registration protection for your title. But what should be done in the meantime to keep others from using the same or similar title?
Ok. So, here you are. Not in a place you wanted to be. Was your situation avoidable? Doesn’t looks like it, right? The law is the law. One book, one title = no trademark registration. Series of books, one title = trademark registration. Wrong. Understanding the intricacies of trademark law and the TMEP before filing your trademark application could have avoided the rejection to registration.
The preparation and filing of a trademark application itself is only the administerial piece to the trademark registration puzzle, not the legal piece. Most of the work and strategy takes place before a trademark application is prepared and filed. Remember, as I have said before, there are attorneys that handle trademark cases and then there are trademark attorneys. Enough said. Trademark applicants should anticipate issues that may arise during trademark application prosecution and be equipped with a strategic “road map” for overcoming USPTO objections. Reacting to USPTO Office actions is a loser’s game. Anticipating those objections is the best way to ensure that brand owners have the best chances for successfully registering their trademarks.
Navigating this "Slippery Slope"
There are also other strategies for protecting (registering) a portion of a book title. That is especially important if an author intends to create a series of books surrounding a certain theme and wishes to modify the title slightly with each new book. Authors should also consider other important trademark (and copyright) aspects while creating their brands around their books and creative works. Putting all of the pieces together before a book publishes is the best strategy for building a successful brand and securing your intellectual property rights for the published work(s).
Sunday, May 1, 2011
United States Trademark Trial and Appeal Board Crushes Trademark Application for MONSTER Mark
Although this is not my typical style of blog post, I promised my 7-year-old son that I would use the recent U.S. Trademark Trial and Appeal Board (the “Board”) decision in In re Monster Cable Products as a “teachable moment.” You may be asking yourself why would my son know about that decision? Well, I must confess, and I’m a bit embarrassed to say so, when my son was a bit younger I began reading aloud Board decisions during our programmed “reading time” unbeknownst, of course, to my wife. Amazingly he enjoys them! Or at least I think he does, since he asks some pretty good questions and is able to stay reasonably “tuned-in.” Or maybe he just likes being with dad. Either way, it’s all-good.
This is yet another case of the trademark selection process running off the track. As I have blogged about many times, brand owners cannot ignore the importance of trademark selection and how the improper selection of marks has the potential to kill (or at least potentially harm) a brand. Brand owners must not only consider marketing aspects of trademarks (how a “mark” itself can “advertise” a product) but also legal ones. In my practice I work closely with many of my clients during the trademark selection process to ensure that valuable names are considered and ultimately selected. Getting trademark counsel involved early during internal trademark selection discussion should result in the selection of valuable brand names and may even reduce the costs associated with the clearance phase due to the pre-screening of proposed marks early in the selection process.
In the case of Monster Cable Products, Inc., Monster Cable sought registration for the mark MONSTER, in standard character form, for various automobile products, including suspension struts, bumpers, automotive fender flares, automotive grab handles, automotive grille, grille guards, automotive light bars, rear view mirrors, roll bars, running boards, automotive seats, shock absorbers, air intake manifolds and truck bed liners.
The Trademark Examining Attorney refused registration of the mark MONSTER on the ground it describes certain characteristics, features and/or qualities of truck accessories. The Examining Attorney argued that because the term “monster truck” means a very large pickup truck, the use of the term MONSTER in connection with truck accessories identifies products used for monster trucks. So the Examiner refused registration. The Examining Attorney based his decision on the long standing trademark principle that a term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.
Monster Cable argued that the term MONSTER, when used in connection with automotive accessories, is suggestive, if not arbitrary, for the following reasons:
1. Just because the record shows that there is a vehicle referred to as a “monster truck” does not mean that the word “monster” is descriptive of automotive accessories;
2. The word “monster” per se has no direct relationship with automotive accessories; and
3. Because the average consumer does not drive a monster truck, the word “Monster” does not directly describe automotive accessories.
The Board disagreed, however, by stating the following:
One of the primary characteristics of a “monster truck” is its modified suspension. One of the products listed in the description of goods is “suspension struts.” Consumers encountering MONSTER brand suspension struts will immediately perceive the products as being for monster trucks. Furthermore, the record shows that roll cage kits, roof racks, nitrogen shock absorbers, floor mats, battery cable kits and parts, windscreens, windshields, and canopies are sold for monster trucks. These products correspond with roll bars, automotive cargo management systems, floor mats, shock absorbers, automotive battery accessories, and window covers and deflectors listed in the description of goods. As indicated above, consumers encountering the MONSTER mark in connection with these products would likely perceive the products as being for monster trucks. Finally, a consumer encountering MONSTER for truck steps and truck bed liners would also understand, without any need for analysis, that the products were for monster trucks.
In view of the foregoing, the Board affirmed the Examiner’s merely descriptiveness refusal.
Trademark Principles for Non-Distinctive, Merely Descriptive “Marks”
When selecting new brand names, brand owners must understand that descriptive terms are not protectable as “trademarks” upon first use. Descriptive terms must acquire secondary meaning before any trademark rights are acquired – if ever any. To read more about avoiding the pitfalls of descriptive “trademarks,” read my blog posts on that topic, including here, here, here and here.
As pointed out by the Board in In re Monster Cable, below are certain key trademark principles you need to know to avoid adopting non-distinctive, descriptive terms as “trademarks”:
1. A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services.
2. Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling.
3. The question is not whether someone presented with only the mark could guess what the goods are. Rather, the question is whether someone who knows what the goods are will immediately understand the mark as directly conveying information about them (i.e., whether someone familiar with applicant’s truck accessories will understand MONSTER to convey information about the goods).
4. It is a well-settled legal principle that where a mark may be merely descriptive of one or more items of goods in an application, but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought.
5. A term or terms are not merely descriptive of goods or services if one must exercise mature thought or follow a multi-stage reasoning process in order to determine the product or service characteristics.
Rather than taking the “easy” way out by adopting “marks” that are capable of “advertising” the associated goods or services, select suggestive, arbitrary or coined terms to use in combination with the desired descriptive term(s). If Monster Cable had adopted a mark using that strategy, such as “Monster Planet” - “Monster Craze” – or “Pinnacle Monster Accessories” (assuming there are no prior users of those marks or similar mark, of course) it likely would not have been run over by the Board.Sunday, April 24, 2011
United States Trademark Registration Process: Five Potentially “Fatal” Mistakes Commonly Made by Foreign Applicants
Seeking United States trademark registration protection is full of traps for the unwary. Not only for pro se applicants (those that represent themselves without the assistance of trademark counsel) but also for attorneys that step outside of their every-day specialties. This post focuses on five trademark traps that many foreign trademark applicants fall victim to when seeking trademark registration protection in the United States.
1. United States is not a first to file country. Because many foreign trademark applicants are domiciled in countries that grant exclusive trademark rights to those that file first, they fail to understand that trademark rights in the United States are created based upon trademark use and not federal trademark registration. Thus, just because there are no pending trademark applications or registrations on the United States Patent and Trademark Office (“USPTO”) database for the same or similar mark does not mean that a foreign trademark owner need only file a trademark application (and secure registration) to secure senior trademark rights in the United States.
Example: Company A begins use of the mark APEX in 2008 in San Francisco for insurance services and slowly begins to expand its services in neighboring states. Company A does not seek federal trademark registration. In 2011, a foreign trademark applicant (also applies to US applicant) files a federal trademark application for the mark APEXX for insurance and financial services. Although the foreign trademark owner is the first to file a trademark application with the USPTO for the mark APEXX (or formatives thereof), Company A may still object to the filed application for APEXX via an opposition proceeding or seek cancellation of a resulting registration, within a certain period of time, on the basis of priority of rights. It is well established that the first company to use a mark in the U.S. (on a systematic and continuous basis) has priority not only with respect to use of the subject mark for the associated goods/services and related goods/services but also with respect to federal trademark registration.
For that reason, it is imperative that foreign applicants undertake a comprehensive trademark search not only for marks on the USPTO database but also for common law trademarks (those in use but not federally registered) as well as business name to ensure that the proposed mark is available. Failure to undertake such review is risky and may result in thousands, if not hundreds of thousands, of dollars in litigation costs and re-branding efforts.
2. Lack of Bona Fides. Under U.S. trademark law, a brand owner may file a U.S. trademark application after or before its mark has been put to use in U.S. commerce. As long as a brand owner has a bona fide intent to use a mark in U.S. commerce, as of the trademark application filing date, it may file an intent-to-use trademark application under Section 1(b), an application based upon a foreign registration under Section 44(e) and/or an application, via the Madrid Protocol, based upon a foreign application or registration under Section 66(a), of the Trademark Act.
Many foreign applicants secure U.S. trademark registration under Sections 44(e) (based upon a foreign registration) and 66(a) (based upon a foreign registration via the Madrid Protocol), which require that the applicant have a bona fide intend to use the applied-for mark in U.S. commerce. Although securing registration under Sections 44 and 66 do not require a foreign applicant to use its mark in the U.S. as of the application and registration dates, the applicant must still have a bona fide intent to use its mark in U.S. commerce. Lack of a bona fide intent to use a mark in U.S. commerce for the goods/services listed in an application, renders an application and resulting registration vulnerable to attack by third parties. This is problematic for many foreign applicants because many rely upon their home country registration, which may list goods and/or services of which they have no intent to sell under the applied-for mark in the U.S. or in their own country.
Should a foreign brand owner’s “lack of bona fides” be challenged by a third party, its trademark applications or registrations would be vulnerable to cancellation if it’s unable to demonstrate that it had a bona fide intent to use the applied-for mark for the listed goods/services as of the filing date of the application.
For that reason, foreign applicants should list only those goods/services in their U.S. trademark applications that they intend to sell under the applied-for mark in U.S. commerce. To read more about this issue, check out my blog post here.
Furthermore, a foreign applicant may also subject itself to a claim of fraud on the USPTO, as discussed in more detail below in trap #4.
3. Use of Mark in U.S. is Required to Maintain Registrations. As mentioned above, foreign applicants may secure U.S. trademark registration without having used an applied-for mark in U.S. commerce. At a certain point, however, the foreign registrant must show use of a registered mark in the U.S. in order to maintain its registration. During the fifth and sixth year of registration, and at the tenth year anniversary and every ten years thereafter, a trademark registrant must provide evidence of use of the registered mark in the United States. Failure to show valid use of the registered mark in the U.S. during those periods will result in the cancellation of its registration by the USPTO.
Furthermore, a mark not used within the first three years of registration is vulnerable to cancellation on the basis of non-use/abandonment.
4. Failure to Delete Unused Goods or Services in Use Affidavits. Although the issue of fraud on the USPTO may be “all but dead,” registrants should still be cognizant that failure to delete goods and/or services listed in applications or registrations that are not in use as of the filing of use affidavits can result, if challenged by third parties, in the cancellation of the application or registration on the basis of fraud.
Fraud on the USPTO may be found if an applicant or registrant knowingly makes a false representation with respect to use of a mark for the goods and/or services listed in an application or registration with a willful intent to deceive the USPTO. For that reason, foriegn registrants should delete those goods and/or services listed in their applications or registrations that are not in use as of the filing date of use affidavits. Otherwise, they may subject their U.S. trademark applications and registrations to oppostion or cancellation proceedings on the basis of fraud.
5. Specimens of Use Needed to Maintain Registrations. During those periods in which applicants and registrants must evidence use of their respective marks in the U.S. in order to acquire or maintain their registrations, registrants must provide acceptable specimens of use or -- in other words -- advertising for those services and packaging or labels for those goods listed in an application or registration that bear the trademark. Failure to provide the USPTO with acceptable specimens of use would result in the cancellation of the application or registration.
Specimens of use for services must show a direct connection between the services listed in the registration and subject mark. Also, the services must be rendered within the United States or between a foreign country and United States. Furthermore, if the trademark depicted on a specimen does not match the mark as registered, the USPTO may refuse to accept the use affidavits; thus cancel the registration on the basis the mark, as registered, is not in use.
Specimens for goods must show the registered mark being used on or in connection with the goods listed in the registration. Such use includes tags, labels, packaging, the mark depicted on the goods themselves and point of sale displays. The USPTO would not accept, for example, invoices, bills of lading, advertising or specification sheets.
Accordingly, failure to use a registered mark in the United States in a manner acceptable to the USPTO may result in the cancellation of the registered mark.
Conclusion
Before foreign applicants begin the U.S. trademark registration process, may it be via a national filing or the Madrid Protocol, they should first consult, or request that their local agent consult, with U.S. trademark counsel for a listing of filing and registration requirements and to ensure that the proposed mark is available for use and registration in the U.S.
1. United States is not a first to file country. Because many foreign trademark applicants are domiciled in countries that grant exclusive trademark rights to those that file first, they fail to understand that trademark rights in the United States are created based upon trademark use and not federal trademark registration. Thus, just because there are no pending trademark applications or registrations on the United States Patent and Trademark Office (“USPTO”) database for the same or similar mark does not mean that a foreign trademark owner need only file a trademark application (and secure registration) to secure senior trademark rights in the United States.
Example: Company A begins use of the mark APEX in 2008 in San Francisco for insurance services and slowly begins to expand its services in neighboring states. Company A does not seek federal trademark registration. In 2011, a foreign trademark applicant (also applies to US applicant) files a federal trademark application for the mark APEXX for insurance and financial services. Although the foreign trademark owner is the first to file a trademark application with the USPTO for the mark APEXX (or formatives thereof), Company A may still object to the filed application for APEXX via an opposition proceeding or seek cancellation of a resulting registration, within a certain period of time, on the basis of priority of rights. It is well established that the first company to use a mark in the U.S. (on a systematic and continuous basis) has priority not only with respect to use of the subject mark for the associated goods/services and related goods/services but also with respect to federal trademark registration.
For that reason, it is imperative that foreign applicants undertake a comprehensive trademark search not only for marks on the USPTO database but also for common law trademarks (those in use but not federally registered) as well as business name to ensure that the proposed mark is available. Failure to undertake such review is risky and may result in thousands, if not hundreds of thousands, of dollars in litigation costs and re-branding efforts.
2. Lack of Bona Fides. Under U.S. trademark law, a brand owner may file a U.S. trademark application after or before its mark has been put to use in U.S. commerce. As long as a brand owner has a bona fide intent to use a mark in U.S. commerce, as of the trademark application filing date, it may file an intent-to-use trademark application under Section 1(b), an application based upon a foreign registration under Section 44(e) and/or an application, via the Madrid Protocol, based upon a foreign application or registration under Section 66(a), of the Trademark Act.
Many foreign applicants secure U.S. trademark registration under Sections 44(e) (based upon a foreign registration) and 66(a) (based upon a foreign registration via the Madrid Protocol), which require that the applicant have a bona fide intend to use the applied-for mark in U.S. commerce. Although securing registration under Sections 44 and 66 do not require a foreign applicant to use its mark in the U.S. as of the application and registration dates, the applicant must still have a bona fide intent to use its mark in U.S. commerce. Lack of a bona fide intent to use a mark in U.S. commerce for the goods/services listed in an application, renders an application and resulting registration vulnerable to attack by third parties. This is problematic for many foreign applicants because many rely upon their home country registration, which may list goods and/or services of which they have no intent to sell under the applied-for mark in the U.S. or in their own country.
Should a foreign brand owner’s “lack of bona fides” be challenged by a third party, its trademark applications or registrations would be vulnerable to cancellation if it’s unable to demonstrate that it had a bona fide intent to use the applied-for mark for the listed goods/services as of the filing date of the application.
For that reason, foreign applicants should list only those goods/services in their U.S. trademark applications that they intend to sell under the applied-for mark in U.S. commerce. To read more about this issue, check out my blog post here.
Furthermore, a foreign applicant may also subject itself to a claim of fraud on the USPTO, as discussed in more detail below in trap #4.
3. Use of Mark in U.S. is Required to Maintain Registrations. As mentioned above, foreign applicants may secure U.S. trademark registration without having used an applied-for mark in U.S. commerce. At a certain point, however, the foreign registrant must show use of a registered mark in the U.S. in order to maintain its registration. During the fifth and sixth year of registration, and at the tenth year anniversary and every ten years thereafter, a trademark registrant must provide evidence of use of the registered mark in the United States. Failure to show valid use of the registered mark in the U.S. during those periods will result in the cancellation of its registration by the USPTO.
Furthermore, a mark not used within the first three years of registration is vulnerable to cancellation on the basis of non-use/abandonment.
4. Failure to Delete Unused Goods or Services in Use Affidavits. Although the issue of fraud on the USPTO may be “all but dead,” registrants should still be cognizant that failure to delete goods and/or services listed in applications or registrations that are not in use as of the filing of use affidavits can result, if challenged by third parties, in the cancellation of the application or registration on the basis of fraud.
Fraud on the USPTO may be found if an applicant or registrant knowingly makes a false representation with respect to use of a mark for the goods and/or services listed in an application or registration with a willful intent to deceive the USPTO. For that reason, foriegn registrants should delete those goods and/or services listed in their applications or registrations that are not in use as of the filing date of use affidavits. Otherwise, they may subject their U.S. trademark applications and registrations to oppostion or cancellation proceedings on the basis of fraud.
5. Specimens of Use Needed to Maintain Registrations. During those periods in which applicants and registrants must evidence use of their respective marks in the U.S. in order to acquire or maintain their registrations, registrants must provide acceptable specimens of use or -- in other words -- advertising for those services and packaging or labels for those goods listed in an application or registration that bear the trademark. Failure to provide the USPTO with acceptable specimens of use would result in the cancellation of the application or registration.
Specimens of use for services must show a direct connection between the services listed in the registration and subject mark. Also, the services must be rendered within the United States or between a foreign country and United States. Furthermore, if the trademark depicted on a specimen does not match the mark as registered, the USPTO may refuse to accept the use affidavits; thus cancel the registration on the basis the mark, as registered, is not in use.
Specimens for goods must show the registered mark being used on or in connection with the goods listed in the registration. Such use includes tags, labels, packaging, the mark depicted on the goods themselves and point of sale displays. The USPTO would not accept, for example, invoices, bills of lading, advertising or specification sheets.
Accordingly, failure to use a registered mark in the United States in a manner acceptable to the USPTO may result in the cancellation of the registered mark.
Conclusion
Before foreign applicants begin the U.S. trademark registration process, may it be via a national filing or the Madrid Protocol, they should first consult, or request that their local agent consult, with U.S. trademark counsel for a listing of filing and registration requirements and to ensure that the proposed mark is available for use and registration in the U.S.
Subscribe to:
Posts (Atom)
