Tag Archives: PTO Practice

Best of 2012: Schaden-Fraud?

Originally posted 2012-12-26 12:55:03. Republished by Blog Post Promoter

First posted on September 24, 2012.

John Welch has once again updated his Fraud-O-Meter!

Behind this clever Infographic-type thingy is a report of a meaningful legal development concerning the concept of fraud on the PTO.  As John explains:

Three years have passed since the CAFC’s decision in In re Bose raised the bar for proof of fraud at the TTAB. The appellate court jettisoned the “knew or should have known” standard, but left open the question of whether something less than proof of deceptive intent – say, reckless disregard for the truth – would suffice to establish fraud. The Board has yet to answer that question. In fact, it has not sustained a single claim of fraud since Bose. In a December 2011 article [TTABlogged here], TTAB Judge Lorelei Ritchie suggested that the concept of “willful blindness” might be borrowed from patent law and applied in the trademark [registration] context. The “willful blindness” standard requires less than proof of willful intent, but more than recklessness.

Earlier this year, I offered a beta version of a revised FRAUD-O-METER that included a “willful blindness” wedge, inspired by Judge Ritchie’s article and by a decision by the U.S. District Court for the Southern District of Florida …

On September 11, 2012, however, the U.S. Court of Appeals for the Eleventh Circuit reversed the district court decision. Emphasizing the subjectivity of the attorney’s declaration, the appellate court ruled that, because the attorney had “no awareness that any other organization was using the marks for which Plaintiff Order sought federal protection,” that fact alone compelled reversal of the fraud finding, “as [the attorney] could not have intended to deceive the PTO in attesting to an oath that he believed was entirely accurate.”Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Appeal No. 11-15101 (11th Cir. Sept. 11, 2012).

In other words, willful blindness?  Not so much.  Said the Eleventh Circuit:

We have been admonished to exercise caution before importing standards from one area of intellectual-property law into another. . . The Florida Priory has not pointed to any authority to establish the sort of ‘historic kinship’ that may justify translation of a patent infringement standard into the mark-application context.

Ah:  A mark-application context!  That, indeed, is why I added the brackets in the first quoted passage, to the words “applied in the trademark [registration] context” — because willful blindness is no stranger to trademark law, as we all know from the secondary trademark infringement context.  There, willful blindness is one of the elements of secondary liability under the standard of Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 853-854 (1982).  At least that’s how we understand it around my house. Read More…

The return of the scandalous mark denial?

Originally posted 2010-12-27 16:30:52. Republished by Blog Post Promoter

CocainePerhaps the “immoral and scandalous” rule is nothing to sniff at, after all. The Times asks: Will the COCAINE tradememark take a powder? I don’t know, but you have to just love the Cocaine pusher himself, Jamey Kirby, who strikes one as a thoughtful, public-spirited type:

Opinions differed on whether the probable loss of the federal trademark would affect Redux’s business. Jamey Kirby, the owner of Redux and inventor of the drink, has until April to file a counterargument, but sounded unconcerned about the probable rejection.

“All I have to do is look at the orders coming in and then I just laugh at the whole thing,” he said, adding that the company was producing about 200,000 cases of the drink this month and expected to double that amount in January. “As long as we sell drinks, I really don’t care.”

Blame it on chain

Originally posted 2010-11-03 01:09:48. Republished by Blog Post Promoter

You’d think a catalog page would be a great way, in a trademark registration application, to show use of a trademark “in commerce” associated with the goods or services being offered. You could be wrong, though. John Welch reports a TTAB decision upholding the denial of a trademark application for machine chain supported by a specimen of use depicting the mark in a catalog.

It seems the catalog was so fancy-shmancy that it outdid itself by not really being a sales tool so much as a kind of “brand builder” that you could hardly do anything with other than, perhaps, razor out and frame for the living room. We’re talking about machine chain here, but looking at the specimen of an ad for … yeah, chain (here’s a link! ;-)) … you would think that you were beholding an ad for fine wine, jewelry or premium gasoline.

Here’s how the TTAB explained it:

[T]here was no record evidence as to how applicant and its competitors sell chain, or “whether customers, in fact, ‘know that orders are placed over the phone.'” InValenite [where a catalog was ruled to be adequate], the appellant submitted a declaration verifying that its customers regularly order products by telephoning the customer service department.

Second, here Applicant’s specimen does not contain the information necessary to order chains. In Valenite, the webpage specimen contained links to appellant’s “Technical Resource Center,” which included specification sheets, online calculators, and reference tables, and which provided toll-free customer service telephone numbers. Thus the Valenite website provided “sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order.” Valenite at 1349-1350.

The Board found that Tsubaki’s catalog page is more like a fact sheet, catalog page, or brochure. It does not contain “any information normally associated with ordering products by the telephone or the Internet.” At best, the specimen provides a telephone number and a web address, but even the website “does not provide a means for ordering applicant’s chain online (or by telephone).”

The Board therefore found that Tsubaki’s specimen is not a display associated with the goods, and the refusal was affirmed.

“The crucial factual issue in this case is whether applicant’s specimen includes the information necessary to order applicant’s chain, thus making it a point-of-sale display,” wrote the Board. Guess I can follow the TTAB’s chain of thought, after all!

A fraud by any other name would… well…

Originally posted 2010-02-22 14:48:09. Republished by Blog Post Promoter

While our intrepid brother the TTABlogger resorts to reading entrails, employing dowsing rods and attending seances in his search for the answer to “fraud on the PTO” trademark truth, the crew over at New York’s Kalow & Springut has been laboring every bit as mightily to get their arms around the thing.  Frequent LIKELIHOOD OF CONFUSION® commenter, neighbor, fellow-congregant and -commuter and all around good American Tal Benschar sends along what they’ve got (note the links):

Turning Tal Benschar's creativity into my profit!

Ron:
Just wanted to share with you a couple of articles my partners and I recently published in the New York Law Journal about fraud, and related matters.  (The first was pre-Bose, the second after.)
It seems like this issue is going to continue to be a hot one in TTAB practice.
Feel free to post or ciruclate the articles as you wish.

I wish a free blog post like that would come along every day, is what I wish!

I made some effort, though:  Listen up.

These articles by Tal, along with David Kalow and Milton Springut, are not only useful because they round up pretty much all the relevant law, but because they put lawyers who prosecute trademark applications on notice of the wide range of possible grounds on which the new and improved criteria for fraud on the PTO may still be asserted.

The authors also remind us that, dramatic TTAB claims for cancellation notwithstanding, at the prosecution level, attorneys who make representations to the PTO when they prepare trademark applications are not merely “filling out a form”–an easy enough feeling to get these days when, unlike in days not so long past, a trademark registration application looked and felt a lot more like a legal paper than it does via today’s online version.  Trademark lawyers, and those they direct, are essentially pledging their professional credibility with everything they tell the PTO is true in order to get that ®.

That’s still worth something, isn’t it?

Schaden-Fraud?

Originally posted 2012-09-24 19:26:22. Republished by Blog Post Promoter

John Welch has once again updated his Fraud-O-Meter!

Behind this clever Infographic-type thingy is a report of a meaningful legal development concerning the concept of fraud on the PTO.  As John explains:

Three years have passed since the CAFC’s decision in In re Bose raised the bar for proof of fraud at the TTAB. The appellate court jettisoned the “knew or should have known” standard, but left open the question of whether something less than proof of deceptive intent – say, reckless disregard for the truth – would suffice to establish fraud. The Board has yet to answer that question. In fact, it has not sustained a single claim of fraud since Bose. In a December 2011 article [TTABlogged here], TTAB Judge Lorelei Ritchie suggested that the concept of “willful blindness” might be borrowed from patent law and applied in the trademark [registration] context. The “willful blindness” standard requires less than proof of willful intent, but more than recklessness.

Earlier this year, I offered a beta version of a revised FRAUD-O-METER that included a “willful blindness” wedge, inspired by Judge Ritchie’s article and by a decision by the U.S. District Court for the Southern District of Florida …

On September 11, 2012, however, the U.S. Court of Appeals for the Eleventh Circuit reversed the district court decision. Emphasizing the subjectivity of the attorney’s declaration, the appellate court ruled that, because the attorney had “no awareness that any other organization was using the marks for which Plaintiff Order sought federal protection,” that fact alone compelled reversal of the fraud finding, “as [the attorney] could not have intended to deceive the PTO in attesting to an oath that he believed was entirely accurate.”Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Appeal No. 11-15101 (11th Cir. Sept. 11, 2012).

In other words, willful blindness?  Not so much.  Said the Eleventh Circuit:

We have been admonished to exercise caution before importing standards from one area of intellectual-property law into another. . . The Florida Priory has not pointed to any authority to establish the sort of ‘historic kinship’ that may justify translation of a patent infringement standard into the mark-application context.

Ah:  A mark-application context!  That, indeed, is why I added the brackets in the first quoted passage, to the words “applied in the trademark [registration] context” — because willful blindness is no stranger to trademark law, as we all know from the secondary trademark infringement context.  There, willful blindness is one of the elements of secondary liability under the standard of Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 853-854 (1982).  At least that’s how we understand it around my house. Read More…

In a family way

Originally posted 2010-11-11 23:59:08. Republished by Blog Post Promoter

Family of Marx

Family of Marx

I’ve written, as is my wont, at great length regarding my skepticism about the “family of trademarks” concept. Well, once you’ve digested that, you may want to head over to Property, intangible, where Pamela Chestak — as is her wont — does some pretty darned heavy lifting on what seems to me to be a related idea:

It may make business sense to put ownership of related trademarks in different subsidiaries.  Under In re Wella, one can generally register similar marks owned by sibling companies, as long as it’s done properly.

But In re Koolatron Corp. discloses a risk I hadn’t thought about before, that is, that the registrations won’t serve the function of preventing the registration of the same or similar marks. How is that, you say?

You may need a chart to follow this one, but if you register trademarks for money, it’s probably worth doing so.

Redskins redux 2

Originally posted 2014-02-27 18:10:01. Republished by Blog Post Promoter

I didn’t have a chance to mention that last month, the order denying the legal challenge to the Washington Redskin’s use of its trademark American Indian logo was upheld.

Now I have a chance!

And do the unhappy Indians have a chance?  They think they do.

UPDATE: They don’t (via @ABAJournal).

Mark their words

Originally posted 2013-08-20 13:17:59. Republished by Blog Post Promoter

Stop Islamization of America Logo

Very incorrect.

Jihad Watch and Atlas Shrugs — two websites run by friends of mine who have very clearly articulated views about Islamic radicalism, and controversial ones about what to do about it — are busy, and then some, with this story:

A federal agency has rejected a request for a trademark by the organization “Stop Islamization of America” because its name may “disparage” Muslims.

The group launched by Atlas Shrugs blogger Pamela Geller and Robert Spencer of Jihad Watch has drawn national attention for its bus-sign campaign offering support for Muslims who want to leave Islam. SIOA currently is organizing opposition to plans for an Islamic mosque at Ground Zero in New York City.

Now the group reports the U.S. government has refused its request for a trademark designation for its name.

The government response, posted on the site, states, “The applied-for mark refers to Muslims in a disparaging manner because by definition it implies that conversion or conformity to Islam is something that needs to be stopped or caused to cease.

“The proposed mark further disparages Muslims because, taking into account the nature of the services (‘providing information regarding understanding and preventing terrorism’), it implies that Islam is associated with violence and threats,” the government agency said.

This is the application; the Office Action is here.

Forget the politics of this.  Besides the fact that I have no idea why these two thought a word trademark (as opposed to protection for the logo) was needed here — being dubious, as I am in general, to the extension of trademark protection to words people say to mean things in English — I’m not too surprised about the outcome of their application on the “scandalous or offensive” denial.

This is because, as I’ve written before (and of course I’m in good company), while the PTO’s criteria for “scandalous and offensive” denials under Section 2(a) of the Trademark Act are a conceptual and a practical mess, the outcome’s certainly predictable when it comes to racialethnic or other “protected class” categories:  Only the politically correct need apply.

That’s a “criterion” Pam and Bob are not going to meet!

Predictable or not, though, that “standard” doesn’t have much to recommend it as either law or policy.  But I can’t blame these two bloggers for not knowing this when they dove head-in to their trademark registration application the way they do with everything else in life:  With passion and abandon.  They know more than I’ll ever forget (maybe more than I want to remember; certainly more than others want to even think) about radical Islam.

But what could they do if they just didn’t know a decent radical trademark lawyer?

Best of 2011: Trademark do it yourself?

Originally posted 2011-12-24 08:50:57. Republished by Blog Post Promoter

First posted on June 28, 2011.

The Gifted Amateur

Aaron Franklin, co-founder of LazyMeter — an intriguing project that’s still in Beta but is not what it sounds like — writes as follows on Seattle 2.0:

At first glance, a trademark can be a complicated and expensive legal process. This is the story of how I successfully registered a trademark for a total of $275 (the minimum USPTO fee).

When I started to think about a trademark, I visited a lawyer.  He wanted over $1,000 to manage the process, and told me I would regret submitting it myself.  He said I wouldn’t be equipped to respond if the application was challenged.

Moreover, the application is confusing.  What is a trademark class?  What description should you use for your goods/services? What qualifies as a specimen to prove use in commerce?  It’s no wonder most fork over the cash to a lawyer.

Wondering how it turns out?

I decided to break down the process by researching the implications of making a mistake.  During my research, I found that only 3% of trademark applications are challenged. With those odds, I decided I could apply myself, and then go to a lawyer if it was challenged.

All that was left was filling out the application, and this turned out to be more simple than expected.  Since you can search trademarks on the USPTO Site or Trademarkia, you can find similar trademarks (e.g. competitors) and look for patterns.  Other questions had simple answers as well.  For example, all you need for a specimen to prove use in commerce is a screenshot of your site.  I filled out the form in less than an hour, and 6 months later we received the trademark certificate pictured above.

Hurray!

Okay, so my sarcasm is a little obvious. It isn’t meant to be all that sarcastic. This is, rather, a teaching moment.

But first, the disclaimers. Read More…

Best of 2009: “Keeping it real — the ultimate use in commerce”

Originally posted 2009-12-27 16:56:22. Republished by Blog Post Promoter

This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

Ron ColemanI have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

Read More…