Category Archives: Intellectual Property

Submitting a Trademark Application? Five Trademark Specimen Pitfalls and Best Practices

Whether you are filing a new trademark application or looking to maintain a registration, understanding trademark specimen best practices is key. A common pitfall when filing your application is failing to provide an acceptable specimen that shows how you use your trademark in commerce. This can lead to your registration being rejected by the United States Patent and Trademark Office (USPTO). Here are five trademark specimen mistakes to avoid and best practices.

What is a Trademark Specimen and Why Do You Need It?

If your application is based on “use in commerce” USPTO will require you to submit a specimen with the application. If you apply for “intent to use,” USPTO will require you to submit your specimen later on as proof of use. This is evidence that shows how you actually use the trademark in connection with your goods or services, in the marketplace. It is important to make sure your specimen shows use of the trademark on the goods or services applied for and otherwise fits USPTO’s requirements or your application can be rejected.

Is a Specimen Required for Foreign Entrepreneurs?

If your application is based on a foreign application or registration, or you filed under the Madrid Protocol, you will not be required to submit a specimen to register your mark. However, you will be required to submit specimens at other required times to maintain your trademark. It is also important to remember that foreign trademark applicants and registrants must be represented before the USPTO by a licensed US attorney.

Five Common Trademark Specimen Mistakes to Avoid

When submitting your specimen, reasons your application may be rejected are if your trademark specimen:

  1. Does not show use of the applied-for trademark with the relevant goods/services
  2. Is not a real example of how you use your trademark in commerce (ex. mock up, printer’s proof, digitally altered image, rendering of intended packaging or a draft website)
  3. Is just a picture or drawing of the trademark or a photocopy of the drawing
  4. Is a webpage that does not include the URL or the date it was accessed
  5. Does not show a functioning trademark or is just ornamentation, identifies the name or pseudonym of a performing artist or author, or uses the title or character from a creative work

Five Best Practices for Your Trademark Sample

  1. Be sure to show your trademark used with the goods or services listed in your application
  2. For goods, show the trademark as it is actually used in commerce – examples include label or tags, product containers/packaging or a website displaying your trademark where your goods can be purchased or ordered
  3. For services, show the trademark as actually used in commerce – examples include advertisements, brochures, website printouts, promotional materials and business signs
  4. Trademarks should be used in a way that is clear to consumers
  5. Avoid digitally altered images and samples

Completing a trademark application and submitting the correct specimen can be challenging. Working with a trademark attorney can help you to avoid pitfalls and help you best protect your brand.

Starting a Business in the US: Top Five Issues to Consider When Obtaining a US Copyright

As a foreign entrepreneur starting or expanding your business in the U.S., even if you are not selling literary or artistic items, you may be able to take advantage of copyright protection for advertising and promotional materials, operating manuals and packaging for your product. It is important to remember that there is no universal, international copyright that can protect your intellectual property globally. Protections against unauthorized use are unique to each particular country. These tips will help you in considering obtaining a US copyright.

Benefits of a Copyright
The  Berne Convention protects creators such as authors, musicians, poets, painters etc. with the means to control how their works are used, by whom, and on what terms. If your home coun­try is a member of the Berne Convention, no formalities are required to preserve U.S. copyrights in items created after March 1989. Certain formalities (such as a copyright notice) provide added benefits. As a non-U.S. copyright owner, you are not required to register your copyright to sue for infringement. However, if you later form a U.S. subsidiary which owns copyrightable material, registration with the U.S. Copyright Office will be necessary before your subsidiary can sue an infringer. The scope of U.S. copyright protection is driven by the date of first publication of a work. For works first published outside the U.S., the author’s nationality, place of first publication and the impact of copyright treaties must also be considered.

What Can be Protected by a Copyright?
According to the U.S. Copyright Office, any original work that is created is protected by the copyright law. The law applies to authored work that is in a material form, whether it is published or unpublished. Types of work include:

  • Literary works
  • Musical works
  • Books
  • Articles
  • Pictures
  • Graphs
  • Charts
  • Website content
  • Computer software

Top Five Issues to Consider When Obtaining Your Copyright
Issues to consider when obtaining a current US copyright:

  1. Copyright protection begins automatically upon creation of the work in tangible form and continues for 70 years after the death of the author or, for works created on behalf of an organization, 95 years after publication or 120 years after creation
  2. To be protected, a work must be original and show at least a minimal level of creativity;  protection is not available for ideas, facts and processes, but is available for the expression of ideas, facts and processes
  3. Damages for copyright infringement are the copyright owner’s actual damages plus any additional profits of the infringer attributable to the infringement, or “statutory damages” (an amount set by the court within specific monetary guidelines)
  4. To protect authors and their families, many transfers of copyrighted works can be rescinded after a set period of time, despite contrary language in the transfer document
  5. The purchase of an original work does not by itself convey ownership of the copyright in that work

The Get Started Blog highlights legal issues for emerging businesses looking to establish or expand in the US.

Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your business in the long-term. To get started there are three basic steps that all entrepreneurs should consider when entering the U.S. market.

Conduct a Trademark Clearance Search

The first step in introducing a trademarked product into the U.S. is to determine whether the trademark is already in use. Dis­putes over trademark rights are usually resolved in favor of the first user, and it is wise to determine in advance whether anyone else is using the trademark. Trademark rights are territorial – this means that the trade­mark rights in your home country do not automatically apply in the U.S. Conducting a trademark search with a U.S. attorney will determine if your product’s trademark is available by providing a complete list of federal and state trademark registrations and additional information from computer databases.

Register Your Trademark

Once the trademark has been cleared for use, there are several registration options:

  • Foreign Registration Basis or Section 44(e): This can be an option if you own a foreign registration of the same trademark for the same goods and/or services from your country of origin. This requires the owner to have a good faith intention to use the trademark in the U.S.
  • Intent to Use: The second option is to file an “intent-to-use” application. This is available to individuals and businesses that have a good faith intention to use a trademark in the U.S., but have not yet sold products bearing the trademark in the U.S. It allows businesses to determine whether the U.S. Patent and Trademark Office (USPTO) will approve trademark applica­tions before spending the money to bring new products to market. It can also give the applicant an early priority date and nationwide rights. However, unlike Section 44(e), a registration based on intent-to-use will not be issued unless the trademark is used on goods within a specified time after the application is approved.
  • Actual Use: The third registration method is based on actual use. It requires that the applicant has used the trademark on goods sold in interstate commerce as part of a legitimate sales effort, not a mere “token use.” Specimens of use must be submitted with certain information such as the date of first use.

Police Your Trademark

Avoid Abandonment
In the U.S. trademark rights are created through use. The first to use a trademark on goods (or a service mark for services) sold in inter­state commerce will generally have the exclusive right to use the trademark on those goods. However U.S trademark owners must enforce these rights to avoid “abandonment.”

Monitor Infringement
The unautho­rized use of the same or a confusingly similar trademark can lead to loss of trademark rights. Many U.S. trademark owners use “watch services” to discover potential infringements of their trademarks. Once an infringement is discovered, a “cease and desist” letter should be sent. In some cases it is necessary to sue for trademark infringement. If infringement is proven, as a trademark owner – you may be able to recover damages, the infringer’s profits and, in certain circumstances, triple damages and attorneys’ fees.

Prevent Counterfeiting
A registered trademark may be recorded with U.S. Customs and Border Protection, which will exclude counterfeit and unauthorized genuine (gray market) goods from importation into the U.S. Such Customs protection may be limited, however, if the owner of the U.S. trademark is a foreign company or a U.S. company owned or controlled by a foreign company that owns the trademark outside the U.S.

Trademark Filing Requirements

Obtain a U.S. Attorney
In August 2019 USPTO implemented a new rule that all foreign trademark applicants and registrants must be represented by a licensed U.S. attorney. The exception to this is applications filed under the Madrid Protocol, which allows a trademark owner to file a single application to apply for protection in up to 122 countries.

Provide a Valid Owner E-Mail Address
As of February 15, 2020, the USPTO requires all new trademark applications and post-registration filings to include a valid email address for the trademark applicant in addition to the name, email address and postal address of a licensed U.S. attorney.