Seattle Trademark Lawyer

In 2012, the U.S. Patent and Trademark Office launched a pilot program to audit claims of continued trademark use when registrations were renewed. The purpose of the audit was to detect fraud or ignorance of the use-in-commerce requirement. Of the 500 registrations audited, 253 (51%) failed to demonstrate trademark use.

In 2017, the Trademark Rules of Practice were amended to authorize the USPTO to require additional evidence of use when a registration is renewed. Since then, almost 5,000 registrations have been audited. Again, more than half resulted in the amendment to delete goods and services from the registration — presumably, because the owner could not establish use in commerce.

A mark is used in commerce for goods when the mark is place on the goods, and the goods are sold or transported in United States commerce. For services, a mark is used when it is displayed in the sale or advertising of the services, and the services are rendered in commerce. Use in commerce is a prerequisite for most applicants to get a registration in the first instance, and is required for all registrants to renew.

Going forward, the USPTO plans to audit approximately 5,000 registrations per year. Audited marks are selected at random from renewed registrations that include four or more goods or services in a single class or two or more goods or services in two or more classes.

Trademark owners should expect to be audited. This means that upon renewing their registration, they should ensure that every good and service included in their renewal is both in use and can be demonstrated to the USPTO’s satisfaction. For goods, this usually means photographs showing the mark on a tag or label affixed to the good, including through hang-tags attached to a good; and for services, it usually means copies of brochures, signs, or website screen shots that show the mark being used to promote the service, and include the URL and date the page was accessed or printed.

The USPTO’s audits don’t change the substantive requirement that a mark be used in commerce. However, it broadens the need to prove that each listed good or service is actually being used. While random, audits should no longer be a surprise. To the contrary, owners should plan for them by confirming that each and every good and service included in the renewal is still being used. Any good or service that is not in use should be deleted. And owners should gather and safeguard any hard-to-find proofs so they are not deleted, recycled, or lost in the ordinary course of business.

As a result of these efforts, trademark owners should not be disadvantaged by an audit, and the Principal Register should more accurately reflect marks that qualify for the expanded protection that registration provides.

Proving up trademark use to the USPTO’s satisfaction can be tricky.

It needn’t be, but it’s not always intuitive, which can lead to mistakes.

The first thing to remember is that the proof of use — called the “specimen” — needs to reflect the exact trademark the applicant applied to register. If the “drawing,” or form of mark the applicant applied to register, is in color, has a box around it, or contains other words, then the specimen needs to have all of those things. The only exception is for very minor — hardly noticeable — differences. This means the applicant needs to be careful to apply to register the precise form it is using or plans to use. Any legally significant difference between the drawing and the specimen will cause the examining attorney to deny the application.

The other main thing to consider is that the proof needs to show the mark being used in the context of the goods or services listed on the application. This means if the application is for a restaurant, the proof needs to show the mark being prominently used to promote the restaurant. This could be on a restaurant sign or menu, for example — as long as the photograph showing such use makes it clear the mark is being used to promote the restaurant. Since a restaurant is considered to be a service, a website screen shot would also work — again, as long as the page prominently showed the mark being used to promote the restaurant.

Goods are different story. The USPTO usually will accept proofs of use of a trademark for goods only if the mark is affixed to the good or is displayed on product packaging. Website screen shots don’t cut it.

Apparel presents its own pitfalls. The government will object to specimens that only show the mark being used for “decorative” purposes. This means that a mark on the chest of a t-shirt, for example, won’t support trademark use. The USPTO deems such use to be just a decoration, rather than an indicator of who made the shirt. To prove up use for clothing, the trademark needs to be on a tag or hang-tag attached to the garment. The same is true for coffee mugs, prints, magnets, and other promotional-type items, though marks can also be displayed on the back or bottom of the item, or on a box or container.

At first, these principles can be hard to learn. However, they need to be mastered because they’re essential to getting a trademark registered.

Plaintiff Dereck Seltzer is an artist. In 2003, he created “Scream Icon,” a drawing of a screaming, contorted face. Since then, he moved on to other projects, but at times used his drawing to identify himself and his work’s presence by placing it on advertisements for his gallery appearances, and once licensed it for use in a music video.

Mr. Seltzer sued the rock band Green Day, which had used a modified version of the “Scream Icon” in a video it showed at concerts as a backdrop when it played the song, “East Jesus Nowhere.”

Mr. Seltzer mostly asserted copyright claims, but he also alleged that “Scream Icon” functioned as his trademark — the claim of interest here.

The Central District of California rejected his claim, and threw it out on summary judgment.

On Aug. 7, the Ninth Circuit affirmed, finding Mr. Seltzer had not used his work as a trademark, i.e., as a means to identify him as the source of artwork.

It’s a reminder that a cool logo or even a work of art can’t be protected as a trademark if it isn’t adequately used as a brand.

The Ninth Circuit found: “The district court concluded that Seltzer failed to present evidence showing that he used the image as a mark in the sale of goods or services—that is, that he failed to establish trademark rights at all. In order to acquire trademark rights, the mark must be used in the ‘ordinary course of trade’ on goods or containers, or, if the nature of the goods makes that impractical, on documents associated with the goods or their sale.

“Seltzer argues that Scream Icon’s placement on certain advertisements for his appearance at an art gallery show was sufficient to establish trademark rights. But Seltzer has not presented any evidence that the use of the mark was ‘sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind.’ Seltzer has failed to explain how these advertisements were distributed, who might have seen them, when they were distributed, to what shows they were connected and what was sold at those shows, or any other facts which might be necessary to evaluate whether Scream Icon is deserving of trademark protection.

“Therefore the district court correctly granted summary judgment to Green Day on Seltzer’s Lanham Act claims.”

The District of Oregon took time out during the busy holidays to clarify what it means to have a bona fide intent to use.

That’s the statutory language an applicant swears to when filing a Section 1(b) application for federal registration — better known as an intent-to-use-based (ITU) application. It’s the alternative to a Section 1(a) use-based application and is a way to “reserve” a trademark registration for a mark that hasn’t yet been put to use.

But the applicant does need to have that bona fide intent to put the mark to future use.

In Bobosky v. Adidas AG, the District of Oregon found the applicant — an attorney — lacked that intent when he filed ITU applications to register WE NOT ME in connection with a wide variety of clothing products. Applicant W. Brand Bobosky’s applications matured to registrations when his attorney filed statements of use swearing that the marks had been put to actual use in commerce in connection with each item of apparel listed in the application.

When Mr. Bobosky contacted Adidas in connection with its use of the phrase in a basketball marketing campaign, Adidas pushed back, finding in its investigation that Mr. Bobosky had made no such use except on baseball caps. In response, Mr. Bobosky deleted all apparel items from his registration except for baseball caps. However, he filed a second ITU application that included shirts and footwear, which likewise was registered when he filed a statement of use.

Mr. Bobosky then sued Adidas for trademark infringement arising out of its use of the WE NOT ME phrase in a basketball marketing campaign.

Adidas moved for summary judgment on the ground Mr. Bobosky’s registrations were void ab initio (from inception) because he lacked a bona fide intent to use WE NOT ME on all the goods listed in his initial ITU applications.

The court noted that “[a]n applicant’s subjective testimony about his state of mind cannot demonstrate that he possessed a bona fide intent to use the mark. Typically, an applicant demonstrates his bona fide intent to use by producing ‘a written plan of action’ for a new product or service. If there is an absence of documentary evidence showing the applicant’s intent to use the mark, the burden shifts to the applicant to adequately explain that lack of documentary evidence. By itself, the absence of contemporaneous documents indicating an intent to use is sufficient to prove an applicant’s lack of bona fide intent.”

The court found Mr. Bobosky failed to meet these standards. With respect to his first registration, Mr. Bobosky admitted in depositions that he did not create the list of goods that appeared in his application, which the court found amounted to an admission that he lacked the bona fide intent to use the mark on each of the items, including hats.

Similar evidence led to a similar conclusion with respect to Mr. Bobosky’s second registration. Mr. Bobosky testified that in the same month he filed the application, he had “[n]o plans” to create WE NOT ME clothing or footwear because he had “[n]o need to,” since he had not yet acquired a trademark. Yet, he also testified that before filing that application, he had called two companies about producing WE NOT ME clothing and footwear, but did not receive written price quotes or proposals from them. The court found this testimony was contradictory and concluded that Mr. Bobosky did not have a bona fide intent to use his mark on shirts and footwear.

As a result, the court found his registrations were void and, therefore, could not support Mr. Bobosky’s infringement claim.

The case cite is Bobosky v. Adidas AG, No. 10-630-PK, 2011 WL 6888688 (D. Or. Dec. 29, 2011).

Not much time to blog, as I’m preparing for my keyword panel discussion.

That said, the Ninth Circuit released a pretty juicy keyword decision Tuesday: Network Automation, Inc. v. Advanced Systems Concepts, Inc.

It holds the purchase of a competitor’s trademark constituted a “use” in commerce but didn’t infringe the trademark owner’s rights. The decision is filtered through the prism of the plaintiff’s motion for preliminary injunction, and the defendant is in a different position than Google in the recent Rosetta Stone case, but it seems to bode well for Google and other search engine providers.

The case cite is Network Automation, Inc. v. Advanced Systems Concepts, Inc., No. 10-55840 (9th Cir. March 8, 2011).