Category Archives: Common Questions

USPTO’s Recently Announced Pilot Program on Fraudulent Specimens

by Christina Frangiosa

This is Part III 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 II was “Common Questions: How to Prove Use in Commerce (Specimens)“. This 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.

On March 6, 2018, the USPTO announced that it was launching a pilot program to uncover fraudulent specimens filed in support of use-based applications. The USPTO described these specimens as “digitally altered” or manipulated. For instance, the USPTO recently refused registration to the following use-based applications for which the specimens were held to be fake: Continue reading …

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 …

Common Questions – Can I Copyright My Formula?

by Christina Frangiosa

Probably not. No matter how new a formula (a.k.a. recipe) may be, if it simply comprises a combination of ingredients mixed together to form a new and unique dish, it is not likely to be copyrightable. And, once published, even if the recipe contains additional descriptions or commentary or similar copyrightable expressive content, nothing would actually prevent someone from making the dish.

Consider an example of the brand-new restaurant, whose chefs for have worked together to create a very unique and unusual menu for their customers. After several months, one chef leaves to start a new restaurant – and publishes a cookbook that contains many of the recipes he co-developed with his former co-owner.

Is this infringement?

Continue reading …

Common Questions: What’s the Difference Between a Trademark and a Service Mark?

by Christina Frangiosa

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:

Continue reading …