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Tag: trademark

Trademark Use in Commerce

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  

(919) 825-3309  

Email 

Albert Minn is a patent attorney with 11 years of experience practicing before the United States Patent and Trademark Office.  

Using Trademarks in Commerce

To successfully register a trademark with the USPTO, usually, the applicant must be first to use the trademark in commerce.  But, what does that mean?  What usage qualifies and satisfies these requirements?  Specifically, the Lanham Act states:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

But what do those words actually mean?  How much usage is enough? What if I haven’t really used the mark in commerce yet?  Businesses entertain these and many more questions when looking to protect their brand identity and intellectual property. 

Actual Use vs. Intent to Use; Goods vs. Services

If a business hasn’t used the mark in commerce yet, the solution is relatively simple: an applicant can file an Intent-to-Use trademark application.  An Intent-to-Use trademark application provides for an applicant to apply for a trademark when the mark has not been used in commerce, yet.  

But, what if you’ve been using the mark in commerce.  What examples of commerce suffice for actual use?  How are the requirements different for using a mark with goods vs. services?  As noted above, the Lanham act does consider advertising and marketing as “actual use” of the mark when the mark is associated with services and the services are actually rendered in commerce.   However, when dealing with a mark associated with goods, using the mark in marketing materials or advertisements for the good will usually not suffice as “actual use”.  When dealing with a mark used in conjunction with goods, the trademark owner should consider the following factors to establish actual use:

  • Avoid mere internal shipments between various offices of the trademark owner
  • Comply with federal regulatory statutes, such as laws governing the labeling of food, drugs, and cosmetics
  • All sales should be bona fide transactions made in the ordinary course of trade
  • Avoid unsolicited shipments
  • Avoid artificially low invoice price
  • Avoid product return from the purchaser after initial shipment
  • Avoid having non-owner use trademark first
  • Trademark owner should make initial shipments

Likewise, the trademark owner should consider the following factors when establishing use in commerce for services:

  • Place ads bearing the mark and identifying the services in media that circulates across state lines
  • Broadcast the mark on radio and TV
  • Advertise on billboards that are visible to interstate highways
  • Encourage patronization by interstate travelers
  • Collect credit card records, invoices, and other billing data showing patronage by out-of-state residents

If you have questions about whether your usage of a trademark satisfies the requirement to use the mark in commerce, or if you are thinking about protecting a new possible trademark that you haven’t used yet, give Grell & Watson a call at (919) 825-3309!

 

Intellectual Property Updates: Patents, Trademarks and Copyrights

By Albert Minn

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  (919)-825-3309  Email 

Patent Attorney

Albert Minn is a patent attorney with 7 years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

 

The United States Copyright Office has published an interim rule amending its regulations concerning the recordation of transfers of copyright ownership and other documents pertaining to a copyright under 17 U.S.C. Section 205, and notices of termination under sections 203, 304(c), and 304(d). Link

The United States Copyright Office has published a final rule establishing a separate, lower filing fee for recording documents with the Office when they are submitted with an electronic title list, i.e., a list of certain indexing information about the works to which such documents pertain.  Link.

The United States Copyright Office has implemented a series of technical upgrades to its electronic registration system.  Link.

The United States Patent and Trademark Office (“USPTO”) published International Trademark Classification Changes with a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks (Nice Agreement).  Link

The NC bar has published an article by Jacob Moore regarding the recent Federal Circuit decision in In Re Janssen that held that a patent issuing from a continuation-in-part (CIP) application is not eligible for 35 USC Secton 121 safe harbor protection, even if the patent is re categorized as a divisional application during reexamination.  Thus, the court determined that the patent at issue—US 6,284,471 (the ’471 Patent)—was invalid over reference patents US 5,656,272 (the ’272 Patent) and 5,698,195 (the ’195 Patent) under the doctrine of obviousness-type double patenting.  Link.

The United States Patent and Trademark Office (“USPTO”) provided a notice that addresses the new practice of requiring separate maintenance fees in each reissued patent based on a single original utility patent, and in original utility patents for which a reissue application is pending and at least one reissue patent has already issued. The new practice for multiple reissued patents and certain original patents that are the basis for reissue applications is set forth in the recent final rule to adjust patent fees. See Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780, 52791 (November 14, 2017).  Link.

The United States Patent and Trademark Office (“USPTO”) provided a final rule with changes in requirements for collective trademarks and services marks.  Link.

The United States Patent and Trademark Office (“USPTO”) electronically provided the ninth edition, Revision 08.2017, of the Manual of Patent Examination Procedure (MPEP).  Link.

The United States Copyright Office has published a final rule amending regulations that govern the deposit requirements for certain types of literary works and musical compositions. Link.

The United States Copyright Office has provided notice of modernizing its practices to increase the efficiency of the group registration option for photographs. Link.

Call Albert Minn for a Free patent consultation (919) 825-3309 or email.

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  (919)-825-3309  Email 

Supreme Court okays “FUCT” immoral trademark

Happy Fourth of July!!!

In Iancu v. Brunetti, the Supreme Court confirmed that trademarks will no longer be refused registration because they constitute “immoral or scandalous” matter.  Writing the 6-3 majority opinion, Justice Kagan stated that the bar against federal registration of an “immoral or scandalous” mark is unconstitutional because it violates the First Amendment. 

As we celebrate Independence Day and our declaration “that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness,” the United States Supreme Court recently reaffirmed another hallowed pillar of our country: the First Amendment and Freedom of Speech.

According to the Patent & Trademark Office:Since it was enacted in 1946, Section 2(a) of the Lanham Act prohibited the federal registration of a trademark that “[c]onsists of or comprises immoral … or scandalous matter.”  The case originated from a trademark application filed in 2011 for the mark “FUCT”, covering various clothing goods. Although the Respondent, Erik Brunetti, declares the mark is pronounced as four letters, one after the other: F-U-C-T, anyone and everyone else reading the words would probably argue differently.  But now, it appears anyone can register marks that some would find “immoral or scandalous matter” because refusing registration based on a viewpoint of whether a mark is “immoral or scandalous” necessarily favors one perspective over another and would violate the First Amendment.

Immoral Trademark


Only time will tell whether this decision results in a rise in applications for marks that may previously have been refused based on the “immoral or scandalous” bar of immoral trademarks.  And Congress may possible heed the words from the concurring Justices that they should amend Section 2(a) of the Lanham Act to include a narrower basis for refusal than the substantially overbroad “immoral or scandalous.”  If Congress decided to amend the Lanham Act to refuse marks that were “obscene, vulgar, or profane”, some new trademark applicants might find themselves… fuct.

Please contact a US trademark attorney at Grell & Watson

(919)-825-3309  Email

We would be happy to discuss your potential trademark application and answer any trademark questions.

Can I Register a Dead or Abandoned Trademark?

Abandoned Trademark – Brainstorming brand names, logos, and other trademarks are always difficult tasks when you start a business.  Protecting them can be even harder when you’ve discovered that someone else has already attempted registration of your ideal trademark, but the mark is now listed as either “dead” or “abandoned” by the USPTO.

Abandoned Trademarks

According to the Patent & Trademark Office:The USPTO states that “a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing.”  Trademarks registrations can be abandoned for any number of reasons, such as, failing to respond to a USPTO Office Action or failing to file a statement of use.  So while you could theoretically register a dead mark, there are other potential pitfalls. 

For example, just because the USPTO lists a mark’s particular status as “dead” does not mean it is available to register or even available for use without registration or consequences.  The registrant very well may have abandoned the federal trademark registration, but is still using the mark, thereby still establishing their common law trademark rights.  In other cases, a trademark may have acquired so much goodwill and recognition from consumers that reviving the dead mark (by anyone other than the original registrant) can be difficult and expensive. 

Other factors to consider include how long the mark has been abandoned.  If the mark hasn’t been used for 3 years, it’s presumed to be abandoned unless the owner can prove to the contrary.  But, the original owner can still stipulate that they have been using the trademark and had an acceptable reason for not maintaining the mark in the federal registry.

It’s important to determine how much a dead or abandoned mark is worth to you and your business.  How essential is it to use that specific mark?  Ultimately, the benefits of pursing such a mark must outweigh the potential liabilities.  Give us a call today to discuss your options in obtaining registration for a dead or abandoned mark and how Grell & Watson can help protect your most valuable assets. 

Please contact a US trademark attorney at Grell & Watson 678-373-4747