Smith Hopen IP Weblog

Stricter Examination of Trademark Specimens

The USPTO has issued a final rule giving trademark examiners the option to require additional specimens for allegations of use, statements of use, declarations of continued use and renewals. 

This is a sensible and long due change to trademark prosecution.  For example, a trademark registration may claim use of the ACME brand for soap and toothpaste.  However, under past practice, the owner of the registration need only submit evidence that ACME was used with soap.  However, a second company may be unfairly restricted from use and registration of ACME for toothpaste….depending on whether the first company was actually using it or not.  This resulted in substantial wasted resources including TTAB proceedings.

Practice Tip:  We have for many years required submission of evidence for each product or service listed in a recitation.  This not only avoids conflict by third parties in the future but also establishes the validity and veracity of the registration should it ever require assertion.

Accelerating Trademarks Applications

There are a number of procedures to accelerate trademark and patent applications before the U.S. Patent & Trademark Office. 

Trademarks may be accelerated by two methods. Consider the minimum requirements for post-registration maintenance:

If these deadlines are missed, there is no opportunity to revive the registration.   A new application must be filed.  However, accelerated examination may be requested with no extra fee under TMEP 702.02.  However, the application must be for the identical mark and the goods/services must be the same or narrower.

A second method (TMEP 1710) of accelerating trademarks requires a $100 fee and a showing of cause such as (1) threatened infringement; (2) pending litigation; (3) basis for securing foreign registration.  Insufficient reasons for accelerating under this basis are (1) forthcoming advertising campaign; (2) substantial investment; and/or (3) situations that apply to a substantial number of applicants.

U. Wisconsin Waives Sovereign Immunity in Trademark Dispute

University of Wisconsin’s federal trademark registration for CONDOR (product page) was cancelled by the Trademark Trial and Appeal Board (TTAB) upon petition by a private firm (Phoenix) using the same mark.  Instead of appealing the cancellation from the TTAB to the Court of Appeals for the Federal Circuit (Federal Circuit), U. Wisconsin appealed to district court and Phoenix counter-claimed for trademark infringement.

The district court reserved the cancellation finding by the TTAB and held U. Wisconsin, as a state agency, had sovereign immunity from Phoenix’s counter-claim.  The Federal Circuit disagreed upon appeal.

Had U. Wisconsin stayed on the same train and appealed the TTAB proceeding to the Federal Circuit sovereign immunity would be maintained.  However, since U. Wisconsin initiated a new action in district court the immunity was waved.

As of August 10, 2011 the USPTO still has the U. Wisconsin CONDOR registration as active (TARR Status Page).

Full opinion.

Video: Trademarking a Hypothetical Product

In this example we’ll look at the various mistakes and pitfalls common to branding a new product.

What is the best trademark for this electric grill? A study in U.S. trademark practice.

USPTO Budget Crunch Sidelines New Initiatives

USPTO Director Kappos noted Congress effectively cut $100 million from the USPTO budget.  As a result:

• Track One of the Three-Track program, which offers expedited patent examination and was scheduled to go into effect on May 4, 2011, is postponed;

• The opening of the planned Nationwide Workforce satellite office in Detroit, as well as consideration of other possible satellite office locations, is postponed;

• Hiring—both for new positions and backfills—is frozen;
• IT projects will be scaled back;
• Funding for Patent Cooperation Treaty (PCT) outsourcing will be substantially reduced;

• Employee training will be reduced;

• All overtime is suspended.

Trademarks is unaffected and will maintain normal operations. 

PTO’s 2010-2015 Strategic Plan–Details versus Rhetoric

The United States Patent & Trademark Office (USPTO) released its 2010-2015 Strategic Plan.  Separating the rhetoric from real changes is not always easy.  There are plenty of statements about diversity, cooperation, outreach and the like.  All those objectives are important.  However, what meaningful changes can patent practitioners, inventors, universities and companies expect?

The USPTO identified a number of well-known challenges to operation:

• Funding authority to support agency performance objectives
• The volume of applications
• Rapid advances in technologies
• Necessity for global cooperation and protection
• Antiquated and decaying IT infrastructure
• Hiring, retaining, and training examiners
• Balancing competing objectives
• The need for greater transparency in defining accountability
• metrics for agency objectives and performance.

Now for the numbers.  The objectives by 2014-2015:

• Patent pendency time reduced to 10 months for a first office action.
• Trademark pendency times reduced to 2.5 and 3.5 months for a first office action.

To put these numbers in perspective, the expected average wait for a first office action this will is forecasted to be 25.4 months.  Reducing that to the goal of 10 months would be dramatic.

New Hiring of Patent Examiners

The USPTO is seeking to hire 1,000 new patent examiners in 2011 and 2012.  Whereas USPTO’s previous hiring has been focused on scientific background and experience,this new model places more emphasis on recruiting candidates with significant IP experience, such as registered patent attorneys and patent agents, former examiners, as well as skilled technologists having experience with the USPTO as inventors.

Telecommuting

The USPTO will develop a nationwide workforce using teleworker other appropriate measures that will allow them to hire experienced IP professionals interested in joining the USPTO, but who do not want to relocate to the Washington, D.C. region.  This is popular at the USPTO and we frequently have both our attorneys and the patent examiners "meeting" at the USPTO office in Arlington for interviews.  In one of my last interviews, the patent examiner took the train from his home in Boston.

Fee Increases

The USPTO wants more authority to set fees noting that the U.S. patent is "cheap" in comparison to other countries:

XML-Based Patent Applications

The USPTO wants to move patent applications to an XML standard.  In this context, it will simply mean that the document will identify the context of the sections (i.e., this is the invention title, this is the invention summary, these are the invention claims, etc...).  It is an ideal concept for streamlining the process.  However, it was attempted several years previously under the ABX system and was a disaster.  We would often spend more time getting the format in compliance than drafting a simple provisional patent application.

Other Objectives

The full report can be viewed here and includes a number of other sensible ideas.  Cloud computing, revisions to the examiner count system and other long-needed changes to USPTO operations are anticipated.  While no informed practitioner would agree with every objective proposed by Director Kappos, the direction appears to be positive and at least carefully considered.

Opposition Extension Shakedowns

Large firms have big overhead and million dollar partner salaries.  It should come as no surprise that some of these firms are looking for new ways to generate revenue.  The filing of unnecessary, cumulative or questionable legal filings (frivolous litigation) burdens the judicial process and is dissonant with the fair administration of justice. In federal courts, Rule 11 of the Federal Rules of Civil Procedure (FRCP) and Florida’s Section 57.105 lets courts impose sanctions against clients and their lawyers for "[losing] any claim or defense ... not supported by the material facts ... or ... not supported by the application of the then-existing law." 

However, every federal trademark application is published for one month so that any one potentially damaged by the registration of the trademark cam file an opposition proceeding with the Trademark Trial and Appeal Board (TTAB).  The TTAB is an administrative entity at the U.S. Patent & Trademark Office (PTO) with the authority to determine ownership rights to most trademarks and to handle appeals from refusals to approve trademark applications.  Contested proceedings before the TTAB are governed by a variation of the FRCP which is strictly enforced.  The TTAB lacks the authority to hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any party.  The sanctions which may be entered by the TTAB include, inter alia, striking all or part of the pleadings of the disobedient party; refusing to allow the disobedient party to support or oppose designated claims or defenses; prohibiting the disobedient party from introducing designated matters in evidence; and entering judgment against the disobedient party. Default judgment is a harsh remedy, but may be justified where no less drastic remedy would be effective and there is a strong showing of willful evasion.

A trend that appears to occur with greater frequency is the filing of an extension to oppose a trademark application already approved by the trademark examining attorney at the PTO.  With amazing regularity the extension is filed by a large law firm willing to draft a long, tedious and clearly unnecessary consent agreement restricting future use of the applicant’s trademark.  It has been clear from many of these negotiations; the entity opposing the trademark has absolutely no risk of confusion with the published trademark application and would be subject to sanctions under Rule 11 if an action were filed in federal court.  However, these law firms are testing the waters against the trademark applicant.  If the applicant calls the bluff and indicates a willingness to engage in a TTAB proceeding (which can run tens of thousands of dollars) then the large law firm will generally not actually file the opposition.  They’ve run up their fee for “policing” their client’s trademark but know they would lose before the TTAB.  We refer to this as the “opposition extension shakedown.”

For smaller clients that cannot necessarily afford the risk of engaging in a TTAB proceeding, they may face signing an otherwise unnecessary consent agreement that restricts the scope of their trademark in the future despite the fact the mark has already been approved by the trademark examining attorney at the PTO.

However, these chickens may come home to roost one day as noted in Hickory Farms, Inc. v. Snackmasters, No. 05 C 4541, Slip Op. (N.D. Ill. Apr. 2, 2008) (Kennelly, J.).  Judge Kennelly awarded defendant approximately $350,000 in attorney's fees, costs and interest that included substantive work and research in an earlier TTAB proceeding that formed the core of defendant's successful motion for summary judgment in a later district court proceeding.  In addition, conduct in violation of the Canons and Disciplinary Rules set forth in 37 CFR part 10 may be referred to the Office of Enrollment and Discipline for appropriate action under 37 CFR §§ 10.18(d) and 10.20.  Furthermore, virtually every state bar association has its own code of ethics related to frivolous law suits.  Going to the bar may be a “nuclear” option, but if the clients risk are at stake and the over-lawyering is clearly abusive and frivolous, then opposing counsel should be informed of the same and given the opportunity to reconsider the opposition extension shakedown.

Trademark Considered Disparaging to Muslims

The Trademark Trial and Appeal Board (TTAB) reached a 3-2 decision in In re Lebanese Arak Corp. affirming the USPTO’s refusal to register the mark “KHORAN” for wines. The refusal was made because the mark “KHORAN” is disparaging to Muslims. The examiner determined that in English “KHORAN” is pronounced the same as “Koran,” the Muslim Holy Book.

Since Islam forbids consumption of alcohol, USPTO argued that using KHORAN as a name for an alcoholic beverage would offend Muslims. Lebanese Arak Corporation (“Arak”) stated that “KHORAN” actually means “ALTAR” in Armenian, and Arak had no intention of making references to the Muslim Holy Book. Furthermore, Arak argued that “KHORAN” had a distinct pronunciation because in Armenian the “H” is not silent.

The majority in this case relied on unrelated blog posts, in which Americans misspelled “Koran” as “Khoran.” The majority concluded that Americans are more likely to associate the mark “KHORAN” with the sacred text of Islam than with the Armenian word for “altar.” The arguments that the mark would be disparaging only to Muslims or that Arak had no intention for the term to be disparaging were found irrelevant. The dissent noted that Arak should have contested the USPTO’s contention that the word “Koran,” which is not disparaging in itself, becomes disparaging when it is associated with wine solely because wine is an alcoholic beverage.

Dunkin Donuts Trademark History

Buy a dozen donuts and learn a little trademark law?  I picked up a box of Dunkin Donuts for the Tampa office this morning and the graphic design showed the various trademark logos used by the chain in their sixty (60) year history. 

Unless all of these trademark designs are still in use (unlikely), some of them have gone abandoned.  There is nothing wrong with that but while the graphics and logos have evolved the words themselves, DUNKIN’ DONUTS® has stayed the same.  When a trademark application is filed we always see the standard character claim (words only) first.  Trademark owners update their designs to keep them modern but they then to keep the words themselves indefinitely. 

Apples makes trademark blunder

iPad invoked numerous snickers from numerous techies across the world.  Some calling it an “intimate iPhone for feminine hygiene.”  Or “coming soon… iPad 2.0…now with wings.”

Of course, no one could forget Disney’s “Cooking with Pooh”

It makes good sense to email your proposed trademark to your most cynical and sarcastic friend first….every brand requires a vetting process.