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.

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New Law Prohibits Non-Disparagement Provisions in Form Consumer Contracts

by Christina Frangiosa

On December 14, 2016, President Obama signed into law H.R. 5111, a bill that prohibits companies from including within their standard form contracts with its consumers a non-disparagement clause that would prevent such customers from making any statements about the company’s products, services or employees. The Consumer Review Fairness Act of 2016 (“CRFA” or “the Act”) passed overwhelmingly in both the House and the Senate, garnering bipartisan support. See also House Debate, 162 Cong. Rec. H5295-H5298 (daily ed. Sept. 12, 2016) (statements upon introduction by bipartisan cosponsors). In fact, H.R. 5111 passed in the Senate, without amendment, on Unanimous Consent on November 28, 2016. See Senate Debate, 162 Cong. Rec. S6520 (daily ed. Nov. 28, 2016). Upon signing by the president, the Bill became Public Law No. 114-258.

Provisions and Application of CRFA

The law prohibits any “person” (which could be an individual or an entity) from “offer[ing] a form contract containing a provision described as void in subsection (b).” Id. §2 (c). Such provisions that are “void from the inception of the contract” include at least one of the following prohibited characteristics: Continue reading …

USPTO Requests Comment on Draft Examination Guide for Matter “Incapable” of Registration

by Christina Frangiosa

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.

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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?

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