This is Part I in a series on establishing use in commerce in the US for federal trademark purposes. Part II will discuss how to prove use in commerce and what kinds of specimens qualify. Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.
Clients frequently ask for guidance about how to establish use in commerce to support their applications to the U.S. Patent & Trademark Office (USPTO) for registration of their trademarks and service marks. This post will address establishing use in commerce, generally, including why it is necessary to evidence such use and how much use would be sufficient. Continue reading
Yesterday, the U.S. Patent & Trademark Office (“USPTO”) and the Trademark Public Advisory Committee (“TPAC”) held a public roundtable on the topic of “Fraudulent and Misleading Solicitations to Trademark Owners” to discuss the pervasiveness of fake “invoices” being sent by third parties to trademark owners seeking to collect additional fees, while appearing to be official notices from the USPTO. (See also Meeting Notice, 82 Fed. Reg. 29535 (June 29, 2017)).
However, these “invoices” are NOT official notices from the USPTO. Depending on the results of your due diligence (see below for “What Can You Do?”), disregarding them should not have a negative impact your trademark application or registration with the USPTO. Continue reading
Both can serve as examples of trademark use in connection with membership in an organization. In May, the Wall Street Journal reported on enforcement actions by the New Hampshire Board of Barbering, Cosmetology & Esthetics to fine the unauthorized use of a barber pole by a hair salon that did not have any barbers on staff. Jennifer Levitz, “Barber Poles Have Their Own Police Force, With Badges and Everything,” Wall Street Journal (May 2, 2017) (subscription may be required). The article also reported on the enforcement actions by the Arizona State Board of Barbers carried out by their state inspectors against salons for unlawful displays of barber poles or its likeness, without a licensed barber on duty (a violation of the Arizona Administrative Code). Id.
On January 25, 2017, the USPTO released its Draft Examination Guide on “Incapable Informational Matter” (“Draft Guide”) for public comment. As it has with several prior requests for comment about draft examination guides, the USPTO has requested interested parties to submit their comments electronically through the USPTO’s Idea Scale “Trademark Policy Collaboration Site.” Initially, the USPTO requested that comments be submitted no later than February 13, 2017 (Trademark Alert 1/25/17), but has since extend the deadline until March 15, 2017. (Trademark Alert 2/7/17). To date, no comments have been posted about the guide.
In its January 25 Alert, the USPTO explained the purpose of the Draft Guide:
“The types of wording held as merely informational by case law is growing. Marks that include such wording must be refused because they do not identify the source of the goods or services. Each section of this guide discusses a common category of informational matter and covers case law, analysis, and possible response options. This guidance is intended to promote consistency by clarifying examination policies and procedures.”
See Alert; see also February 13 Alert (same message with minor editorial changes). More particularly, the Draft Guide focuses primarily on refusals to register marks that fail to function as source indicators (in other words, instances where marks, or portions of marks, “fail[ ] to distinguish the applicant’s goods/services from those of others or to identify a single source” and which are thus not qualified to be registered as trademarks because they “fail to function as a mark.” Draft Guide at 1.
EXAMPLES OF MATTER THAT FAILS TO FUNCTION AS A MARK
The Draft Guide focused on three main categories of “informational matter” that are incapable of functioning as a trademark and thus is not registrable: matter that is 1) “used in a manner merely to convey information about the goods/services;” 2) a widely-used message; and 3) a “direct quotation, passage and/or citation from a religious text.” Highlights in each category will be addressed below.
This is actually a trick question – the answer is, “not much”. Generally, trademarks refer to source-identifying marks used in connection with goods (products) and service marks are used for the same purpose, but in connection with services. The associated rights – to be able to preclude others from using a confusingly similar mark in connection with similar goods or services – are the same.
But one important way in which they are different is the way in which an applicant for registration of a mark with the U.S. Patent & Trademark Office (“PTO”) demonstrates that it is using the mark in commerce. Whether an applicant applies for registration of a mark based on actual use in commerce (§ 1(a)) or based upon a bona fide intent to use the mark in commerce (“ITU” – § 1(b)), each applicant must at some point during the prosecution of its application submit an example (“Specimen”) of how the mark is used in commerce in connection with the specific goods or services. (For more about the trademark application process, see Common Questions: What’s Involved in Registering a U.S. Trademark.)
Acceptable Specimens for Trademarks
Simply put, if an applicant seeks to demonstrate use of its mark in connection with goods, it must show the mark as used in the process of selling or offering to sell those goods to the purchasing public. Examples of such use include: