Should I register a trademark on the Supplemental Register?

After applying for a trademark, brand owners often receive Office Actions from the U.S. Patent and Trademark Office (USPTO) stating that their mark is not inherently distinctive and that they can choose to amend their application to the “Supplemental Register”. This frequently occurs to brand owners applying for a trademark with a brand name which has not been screened by a trademark lawyer, which ultimately can lead to a loss of their time and money invested into a trademark application. However, amending an application to the Supplemental Register may be an option for brand owners to not entirely lose their investment.

In the U.S. trademark system, a brand can be registered on either the Principal or Supplemental Register at the USPTO. The Principal Register is preferred for its stronger and more extensive protections, but the Supplemental Register has many benefits. The former is a register for distinctive trademarks, and registration there means the full force of trademark law is behind it. The Supplemental Register holds marks which do not quite meet the “distinctiveness” requirements of the Principal Register, but are also not completely generic and devoid of any value. In a sense, the Supplemental Registration holds marks that aren’t currently distinctive, but may someday grow into something strong enough to be registered on the Principal Register once they can prove “secondary meaning”, that is, to demonstrate that it has acquired distinctiveness in the relevant market segment.

Registration of a brand on the Supplemental Register can help a brand:

  • block registration of brands which are similar to its own
  • gain federal recognition of a brand which is otherwise not capable of being registered. This means the owner can use a Supplemental Registration as the basis to bring a lawsuit for trademark infringement in federal court
  • by allowing it to use the ® symbol next to the brand, which means that the brand is registered with the USPTO
  • gain protection on the Principal Register in the future, which is often the case for “inherently non-distinctive” brand indicators such as personal names, descriptive words, and product shapes. After 5 years of Supplemental Registration, a brand owner can apply for registration of that mark on the Principal Registration by claiming that the brand on the Supplemental Register has become “distinctive” and thus meets the requirements (a Section 2(f) application)

Registration of a brand on the Supplemental Register can form the basis for registering a brand in a non-U.S. country even though it initially does not qualify for registration on the Principal Register. The Supplemental Register was developed in part to help U.S. companies with registering and protecting branding which didn’t qualify for U.S. registration, but which would nonetheless be protected in a foreign country so long as they were registered marks in the U.S.

To compare, registration on the Principal Register:

  • is prima facie evidence of the registrant’s exclusive right to use the mark
  • creates a presumption that the registration is valid
  • serves as constructive notice to potential trademark infringers
  • allows brand owners to access U.S. Customs and Border Protection resources to stop and seize importations which infringe on trademark rights
  • begins the a 5 year clock, after which the registered brand can achieve incontestable status

Google’s new Alphabet: bad writing on BMW’s wall?

Capture 2 CaptureGoogle’s entire company was restructured under a parent company called Alphabet. I really like the name, which I interpret as a clever suggestion that the parent company holds all the individual pieces which make up the entire set of technology for the company. Larry Page himself said he liked the name because “it means a collection of letters that represent language, one of humanity’s most important innovations, and is the core of how we index with Google search.” I picked up this story because I love technology and branding law, and because of the latter I did a quick trademark “clearance” search, much like I would do for a client. That search left me very curious as to the strategy behind the trademark team at Google, which I can only assume investigated the use of ALPHABET as their new brand (albeit it, just a holding company and not a consumer brand with consumer products).

Google’s legal restructuring a few days ago resulted in a holding company called Alphabet and splitting up Google into multiple independent subsidiaries which all fall under Alphabet. This was a huge move by the company to make it “cleaner and more accountable” and to allow subsidiaries to “prosper through strong leaders and independence”, as Mr. Page put it. In effect the services engaged in by Alphabet as a holding company would be business management and financial affairs services, services which fall under Classes 35 and 36 of the Nice Classification.

I’ve explained all this as a foundation to the fact that that German car company in  some people may know about, BMW, owns the trademark for ALPHABET in Classes 35 and 36 in many jurisdictions. In my brief search, I found 18 trademark registrations for ALPHABET in Class 35 and/or 36 with coverage in at least 30 jurisdictions. When we expand that to include trademark registrations for ALPHABET in related goods/services that number moves to at least 46 jurisdictions.

In short, BMW has a strong interest in the ALPHABET name vis-à-vis Google’s ALPHABET, the latter of which clearly encroaches on BMW’s legal protection of ALPHABET. Under normal circumstances, a brand in BMW’s position would be advised to take legal action to fend off encroachments onto one’s brand. This might actually be the case for a hedge fund in New York called Alphabet Funds, whose founder has received phone calls from investors and friends saying things like “Google took your name.” Because Google’s Alphabet will engage in venture capital funding and asset management, it is not unlikely that there may be some competition between Google’s Alphabet and Alphabet Funds, which would be more than enough to trigger liability for Google from a trademark perspective.

My main curiosity is: what will BMW do and what have Google’s lawyers already done to address that? My first guess was that Google had a confidential agreement with BMW regarding the accepted usage of their respective brands, although that was dispelled during the writing of this blog by news reports that BMW’s spokesperson said they are looking into any trademark problems, but that there are no plans for litigation yet.

One could argue there is little risk of actual loss of business or profits if the brands continue acting as they are: BMW’s Alphabet is focused on the auto industry and all their services (finance, leasing, data collection, etc.) serve to corporate enterprises with vehicle fleets and Google’s Alphabet will merely contain self-branded projects within its basket. Even though the holding bin will contain auto-related brands, such as the Google Self-Driving Car Project, as far as these two ALPHABET brands go, they don’t exactly intersect. Additionally, any potential clients of either ALPHABET would be considered a sophisticated purchaser, which means that the threshold for a consumer to be likely to be confused (the trademark infringement standard) would be much higher than, for example, consumers of competing soft drink brands (those consumers buy products with much less thought and research than sophisticated financial/business services). This is a consideration against BMW. On the other hand, flooding a similar market with another ALPHABET brand, to the point where BMW’s www.alphabet.com website has seemingly crashed and remained down for days since the Google announcement definitely has some cognizable negative effect for BMW.

Alphabet may be a great name in and of itself, but trademark law favors the earlier user of a trademark when there is a later, similar mark used. In this case, “ALPHABET” is the brand name of an important part of BMW’s business, and even though the chance that someone would be confused between BMW and Google’s Alphabet, allowing Google to keep its Alphabet would necessarily mean a weakening of BMW’s Alphabet brand in a legal sense.

Using trademark symbols: TM, SM, and ®

I often advise clients to use the TM (for physical products) and the SM (for services) symbols next to their brand or product name. This serves many purposes, but mainly to tell the public that you consider that word/logo as your brand, as a “no trespassing sign” to competitors, and as evidence in any future litigation on trademark infringement. On the last two points, the TM/SM symbols prevent arguments of ignorance, for example, “We didn’t know that word/logo was a trademark”.

The circle ® symbol may only be used in the U.S. on trademarks which have been registered at the US Patent and Trademark Office (USPTO). State trademark registration is insufficient. U.S. courts have also upheld the use of the ® symbol in the U.S. for trademarks already registered in another country. If you are a U.S. brand doing business outside of the country, be wary of countries with civil and even criminal penalties for using the ® symbol on a brand which is not registered in that country.

Use of the ® symbol is recommended when possible because it provides “actual notice” that a trademark is registered. Not using it won’t create an absolute defense for an infringer, however, in a suit for damages only damages and lost profits occurring after actual notice can be recovered. Besides using the ® symbol, actual notice is also given in a cease-and-desist letter, which could be another point in time from which damages/lost profits may be calculated. This means that if you receive a cease-and-desist letter about infringement of a mark, and you did not know of the existence of that mark prior to the letter, you may be able to limit your financial liability to the damages/lost profits occurring after you received the letter.

Takeaway: As a brand owner, use the TM and SM symbols next to your brand until it is registered as a trademark. After registration, use the ® symbol.

Brand names: go for unusual… and something much different from related industries

This post will help guide you, a marketing professional or startup, in the development of a word(s) that will one day embody your client’s/company’s reputation to its target market. Legally speaking, some trademarks are stronger than others based purely on the word itself, and this post gets into what makes a certain word stronger or weaker in terms of trademark law. “Strong” words are given stronger protection, that is, protection over both a wider range of visual/aural variations as well as a wider range of related products/services.

Courts and the USPTO assess the strength of a trademark in terms of conceptual and commercial strength, the “two-prong” test:

Conceptual strength: This will be discussed in a future blog!

Commercial strength: the actual customer recognition at a point in time, usually at the time of registration or litigation.

A “crowded marketplace” will have an effect on the commercial strength of a trademark, and is directly related to how wide the scope of protection of a trademark is. A trademark which is, despite being distinctive in a general sense, may be considered weak where there are many trademarks within an industry or related industries with similar names. As a hypothetical example, first imagine a fitness tracker app which has a conceptually strong name: BUDDY AND BOD. Memorable right? It’s simple, to the point, suggestive about the product, and a Google search for that exact phrase turns up only a single result!

Now, let’s suppose that there are 10 fitness tracker app companies in the US, and 8 of those companies had the word BUDDY in their name. Quickly scanning through this list to find the brands BUDDY AND BOD and TOTSFIT, I think you’ll find that one of these two pops out more noticeably:

  • FIT BUDDY
  • BUDDYu
  • HEALTHY BUDDY
  • WORKOUT BUDDY
  • MOVINGLY
  •  LEAN MEAN BUDDY
  • ATHLETI-BUDDY
  • BUDDY AND BOD
  • TOTSFIT
  • EVER BUDDY BETTER BODY

Do you feel that BUDDY AND BOD has a stronger mark than, let’s say TOTSFIT, in this market? Probably not. Taking this example, if you’re developing the 10th fitness tracker app in the U.S. and you have a name with the word BUDDY in it, not only are you are competing with all the other BUDDY-formative names, but you will have a difficult time enforcing your rights against any subsequent app-developers with a BUDDY in their name.

This would likely be considered a crowded market, and any trademark for a fitness tracker app containing the word BUDDY will have a weaker scope of protection than say, a very unusual, made-up term like TOTSFIT.

To illustrate how this might play out in a trademark infringement setting, I think TOTSFIT would be able to convince the USPTO or a court that the public may confuse the following with their own TOTSFIT: TOTFITFULLY, TOTSMITH, DOSEBIT, USFIT, and DOTSIT. Meanwhile, BUDDY AND BOD would probably have a more difficult task in convincing a court that customers would be confused by a competitor’s use of the brands BODY MIND BUDDY, BODYBUDDY, BUDDY AND SOUL, even though these are somewhat similar to their own BUDDY AND BOD.

The takeaway: developing a clever name for your brand is only a first step. The second step is to make sure that other competitors aren’t commonly using a part of your clever name. The third step, not discussed here, is having your proposed brand thoroughly cleared by a trademark lawyer trained in clearing brands before applying for trademark protection. 

UDRP: “Registered and used in bad faith” must be proven with evidence by Complainants

Yet again a UDRP decision from WIPO demonstrates that the burden of proof for complainants requires detailed evidence to be submitted. In the decision over , an Indian travel agency website, the complainant had many facts in its favor:

  • it applied for registration of SHANTI (although curiously the WIPO panel stated the application was for SHANTI TRAVEL) in August 2009,
  • it claimed it had used the mark for travel arrangement services since at least 2005
  • it spent a “huge amount” of money on advertising
  • Respondent only began using the mark TRAVEL SHANTI since 2011:

shanti

Interestingly, despite these facts, the panel did not find that the complainants established that the respondents registered and used in bad faith, which may defined as any of the following:

  • respondent registered/acquired the domain in order to prevent the owner of a mark from reflecting their mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct
  • the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor
  • the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location

The panel also did not recognize the concept of constructive knowledge, in mentioning in its reasoning that the respondents stated they had no knowledge of the complainants trademark application, despite the fact that an active trademark application existed at the time the domain was purchased by respondents.

The takeaway here is that even where facts exist in the absolute sense, UDRP complainants must provide sufficient evidence to prove those facts. Since constructive knowledge may not be taken into account, complainants should try to find and submit evidence which demonstrate actual knowledge by the respondent of complainant’s mark prior to respondents registration of the contested domain name. Lastly, complainants should submit all evidence and law which lay out the legal rights of the respondent, whether that be the rights conferred to a trademark application/registration owner and/or common law rights. If the Panel clearly understands the legal rights owed to a complainant, it makes it easier for them to make a determination favorable to the complainant where the rights are otherwise unclear, keeping in mind that Panelists are not always familiar with the national law of the country of the complainant.

Snapchat and ephemeral media: trademark law implications?

snapchat

This morning I learned that Vladimir Putin gifted Egypt a Kalashnikov rifle on a state visit through Washington Post on Snapchat. Interesting to me was the fact that I paid full attention to this short tidbit of information due to the simple fact that I had to hold my finger down to my phone’s screen in order to watch the 10 second video, under the threat that release of my finger would cut my video off and would need to be restarted again.

Snapchat is a messaging/media sharing app which I call an ephemeral content provider (“ECP”) because it requires users to press and hold their mobile screen in order to view and continue viewing content such as pictures and short videos, which then self-destruct like a tape from Mission Impossible. Limited time is another characteristic of Snapchat: media either self-deletes 10 seconds after content is opened or is available for unlimited viewing for a 24 hour window, set by the content creator. But self-destruction always occurs.

Think about what this means at a basic level for content: fuller attention is being paid to the content. I have to actively do something to access information, and if I don’t pay attention it will disappear. Snapchat has assured content providers that when people take in content its platform, they are likely paying active attention to the content. They’ve done this by introducing scarcity to the content through Snapchat’s touch/hold/watch/disappear process for users to view content. Did I mention that in four years Snapchat has attracted 100 million monthly active users (MAUs)? For a reference point, Facebook reported 350 million MAUs in 2014.

No, I haven’t become a spokesperson for Snapchat, but the magnitude of Snapchat and other contending ECPs must be explained because I’m assuming that some readers of this blog may not know what Snapchat is despite the large user base, and for good reason: it’s unknown to “older” people. The chief demographic of Snapchat users is 13-25, and even one 32-year-old professional  technology writer has admitted that trying to use Snapchat makes him feel old. To sum it up: “If Facebook is where your parents live, and Instagram and Twitter where millennials hang, Snapchat is where kids of Generation Z have gone to seek refuge.

All this hoopla aside, there are some interesting movements within the expansion ECPs which tug at some of the underpinnings to IP law, namely trademark law. One side effect of a consumer base accustomed to digesting self-deleting media is that advertising and brand infringement carry on as usual, maybe even more intensely, but the latter gains an advantage as a consequence disappearing tracks. Put in other words, the user base of an app like Snapchat is even more influenced by content, including infringing content, but the owners of infringed brands have less time to detect and react to infringement, and evidence gathering will also be more difficult. Imagine all increasing amount of subpoenas to access Snapchat data before data is deleted from their servers, a feature which is an express selling point of the Snapchat model.

There is support for the notion that people are paying attention to media distribution on Snapchat; some are even calling it a replacement of cable television. The “Discover” platform on Snapchat released January 27, 2015 as a designated portal for media content (in addition to the Snapchat “Stories” option). Discover launched with 11 publishers including CNN, The Daily Mail, and National Geographic, and the content operates similarly to the messaging app itself: stories are ephemeral. Content is published once a day and appear for one day only (in case you didn’t know, Snapchat messages are set to automatically delete after 3-10 seconds after viewed). Within Discover stories, more adspace is sold: BMW will advertise on CNN’s channel and T-mobile on The Daily Mail to name a few.  This is already in addition to Snapchat’s 24-hour ad campaigns which sell for an unwavering $750,000 (McDonald’s and Samsung are in).

As a trademark lawyer, I think there are many implications which ephemeral media will have with IP law. DMCA is rendered useless because ephemeral content providers take down content at regular, short intervals; discovering potential infringement requires more, real-time monitoring; and evidence gathering will be hampered because the time between detection and action will be abbreviated. These issues will arise as more ECPs develop. I’d love to hear what you think and/or why you disagree below.

Company name and logo: to change or not to change?

“Should I change my logo?” It’s a question I hear a lot from up-and-coming business owners concerned about whether their chosen name or logo infringes on another brand which may be protected (it’s not about changing your logo to update your brand, as the picture may suggest. It’s the only one I could find that’s free to use and communicates what I wanted to!). The answer to the question depends on several factors, among which the legal test is only one component, that is, whether your mark is likely to confuse potential consumers as to the source of the branded products. While much information exists on the internet regarding the legal test, what is often failed to be mentioned is that the legal test by itself only tells you whether you would prevail in a full-blown trial fought by two motivated litigants, which is seldom the case.

After you get the legal answer, as someone in charge of a brand you will need to consider other things:

  • How long have you and the other trademark owner actually owned your trademarks?
  • How litigious is the other trademark owner?
  • How difficult would it be to negotiate a concurrent use agreement?
  • How much time and energy would it take you to rebrand your whole company?

Without knowing and considering how vested you and the other side are, changing your logo may be a task ranging from simple (e.g. – brand new internet startup using solely internet marketing) or extremely challenging endeavor (e.g. – 4 year old company producing 20,000 pairs of shoes per year using internet, print, and TV advertising), and that will weigh in on whether you will want to change your logo or not.

Thus, to answer the question of whether you need to change your branding, you will need to consider not only your legal position but also the costs of changing your brand in terms of time and money spent on re-educating your potential customer base as well as the loss of recognition in your brand due to the change.

When to translate your trademark in an application

Translations of trademarks in a non-English language matter in trademark applications before the USPTO. A non-English mark which may be understood by American consumers needs to be translated in the trademark application. Perhaps more importantly, even if the mark seems to be a non-English language, the application needs to clearly state that that mark in fact has no meaning in a foreign language.

The USPTO typically requests for a translation of the mark if the examining attorney thinks that the mark might be a non-English word. This may be because the word follows a structure that may seem like a foreign language, even if it in fact not a real word. For example, SCHLOGBOATAUFT might seem German to an examiner because of its letter structure, and that examiner would ask you to translate it in your application. In this case, the example is not an actual German word at all. But since it seems like it may be seen as a German word by a USPTO examiner, I would indicate that this mark in fact has no meaning. This can be done in the section of the trademark application called “Additional Statements”, one of the first steps of the application (you would need to click a link to access it from within the application).

If you are making your own word up to be your brand name, I would at least use Google Translate to help rule out possible foreign meanings when applying for a trademark registration.

Also keep in mind that this translation issue must be dealt with in your initial application in order to preserve TEAS PLUS application status (essentially a $100 discount from the full price of an application) if you filed the application as a TEAS PLUS application. If you do not address it and the examining attorney issues an office action to clarify the translation issue, you may be required to pay an extra fee if you made a TEAS PLUS application.

Ultimately, only the translation issue has been discussed here and there are other issues which may affect your trademark application. This is something a trademark attorney can help you with before you apply, and just one of the many ways that an experience attorney can actually help you cut costs and save time when you’re developing and protecting your brand.

Internet Startup Challenges in Branding and Trademark Protection

When it comes to my area of expertise, protection of branding, internet startups begin their business lifecycle with a unique challenge: trademark protection is a step taken jurisdiction by jurisdiction, but internet startups are often launched to the entire world instantly. One the one hand, you should protect your trademark in your home country, but even though the rules may be different in future markets, a startup probably doesn’t have the funds to file for trademark protection in every potential future market. Let’s take a look at what kinds of potential issues I’m referring to.

We’ll take the US and European Union markets and jurisdictions for example. It may be clever to brand your statistical analysis app CURVE and then register that as a trademark in the US. However, once success comes to your company and you begin expansion efforts into the EU, you’ll find that you won’t be able to register your brand as a CTM (the EU-wide trademark) because the word CURVE is likely to be pronounced as koor-vah in Poland, which refers to someone practicing the oldest profession in the world and is therefore unregistrable as a CTM. This means you’ll either have to operate your business without trademark protection (ie, the ability to stop others from using your brand to market your products) or you’ll need to rebrand your product in the new market.

From time to time, I make a shameless plug for my own legal services, so here goes! As a California trademark lawyer with more than 2 years of experience working directly with EU trademarks, I can offer the type of insight and long-term strategy that usually comes at a prohibitive price from law firms with overseas partners. Kuehn Law offers the unique combination of local, lean counsel attention and fees with the foresight of an international firm. If you’ve ever considered expanding your business into the European market, send me an email to ck@cliffkuehn.com and I’d be happy to spend some phone or Skype time with you to issue spot. Of course, your emails will be treated with confidentiality.