Author Archives: Christina Frangiosa

Common Questions: How to Prove Use in Commerce (Specimens)

by Christina Frangiosa

This is Part II in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.” 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 what specimens (i.e., examples of current use of their trademarks or service marks) to submit in support of their applications for registration with the U.S. Patent & Trademark Office (USPTO). The answer, to some degree, is “it depends.”

What Specimens are Acceptable for Which Goods/Services?

For additional information on this topic, see also Common Questions: What’s the Difference Between a Trademark and a Service Mark?

The basic guidance from the USPTO’s Trademark Manual of Examining Procedure (TMEP) is as follows: Continue reading …

Common Questions: How to Establish US Trademark Rights

by Christina Frangiosa

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 …

IP Claims Fail Against ISP for Merely Hosting Infringing Material

by Christina Frangiosa

In a recent decision by the United States District Court for the Eastern District of Pennsylvania (ED Pa.), the court dismissed an individual author’s suit against Amazon for hosting an infringing copy of his copyrighted work. Parker v. Paypal, Inc., Civil Action No. 16-4786, 2017 WL 3508759 (E.D. Pa. Aug. 16, 2017).

I.  THE FACTS

Plaintiff, Gordon Roy Parker, wrote a book entitled “Outfoxing the Foxes: How to Seduce the Women of Your Dreams,” for which he registered his copyright in 1998. In October 2015, he learned that his book was being sold online as part of an “anthology of books and articles written by and for pickup artists.” Id. at *2. He requested that the work be removed from the site – which appears to have occurred, at least for a time.

Several months later, in December 2015, he learned that sales of the anthology (including his copyrighted work) had resumed. In addition to seeking a take down of the book from this site, and to restricting the site’s access to its PayPal account, Parker notified Amazon.com, Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) regarding Amazon’s hosting of the infringing work. (The Court’s opinion does not discuss any response by Amazon at this time.)

Parker alleges in his complaint that despite providing such notice to Amazon, the infringing work was still being hosted through Amazon’s cloud servers at least as late as Spring 2016.

In a May 2016 email, Parker told Jeff Bezos (CEO of Amazon) about the infringement and said that Parker was removing six of his titles from Amazon’s Kindle Books program. The distribution of his books through Kindle was undertaken under contract between Parker and Amazon. In response to Parker’s email, representatives of Amazon asked him to report potentially infringing material “consistent with the Digital Millennium Copyright Act.” Id. at *3. (Note: Within Amazon’s Conditions of Use Page, its “Notice and Procedure for Making Claims of Copyright Infringement” Section includes a link to an online form to report instances of infringement.)

II. AMAZON MOVED TO DISMISS THE CLAIMS

Amazon moved to dismiss Parker’s claims against it on the grounds that: (1) Parker failed to state a proper claim for copyright infringement or unfair competition as to Amazon; (2) Parker’s claim for breach of contract (based on the Kindle publishing agreement for seven of his e-books, including the infringed work) was pre-empted by the Copyright Act; and (3) the remaining claims for misappropriation of likeness and unjust enrichment are barred by the Communications Decency Act, 47 USC § 230 (“CDA”).

The Court agreed with Amazon’s analysis and dismissed Parker’s complaint as to Amazon. (Note that the case still proceeds with respect to other defendants.)
 Continue reading …

Don’t Assume Post-Registration Invoices for Trademark Fees Are Legitimate

by Christina Frangiosa

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 …

What do Barber Poles and Lapel Pins Have in Common?

by Christina Frangiosa

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.

Continue reading …