January 2017 – My Brand Mark Blog

Considerations for USPTO Proceedings

USPTO proceedings are complex matters and there are many things you should be aware of before making a decision. As far as motions are concerned the Trademark Trial and Appeal Board (TTAB) generally complies with Federal Rules, however there are exceptions. There are special motions to dismiss due failure to provide testimony or evidence and there are other rules differences regarding response time and what happens when no response is entered. Such proceedings usually use accelerated case resolution (ACR) in order to speed up the process. What this means is the TTAB can resolve genuine issues of fact and issue final rulings. It also means that if agreed, the parties can skip discovery, oral hearing, expert testimony, and trial. If after a USPTO proceeding you are still not satisfied with the outcome and have grounds to appeal, then a petition for consideration can be filed within one month of the decision. Know what you are getting into before the proceeding begins and ensure you are complying with all rules.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Discovery Procedure for USPTO Proceedings

Before getting involved in proceeding before the USPTO make sure to familiarize yourself with the process. As the proceeding begins a number of evidentiary presumptions and rules will be factors. Such presumptions can involve the basis of the application, dates regarding use, and continuous use amongst others. There are other rules that both parties will have to follow. Rules govern nearly every aspect of the process and apply to, but not limited to, amendments to marks, withdrawal of the application or opposition, deposition, discovery, what material is evidence, third-party use, and what evidence is considered admissible. Pleadings must be filed according to such rules. During the discovery phase all prescribed deadlines must be followed. The discovery period, along with disclosures and the trial, will be covered by a standard protective order. Discovery will include a conference, initial disclosures, interrogatories, document requests, and depositions. If a party is failing to comply with an aspect of discovery a motion for sanctions can be filed.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Reasons for Opposition

The reasons behind filing an opposition vary. No matter what the case, the party filing has to be one which believes they will be damaged if the mark is registered. One possibility is likelihood of confusion. Even if the examiner did not raise the issue, another party may during the opposition period. In addition, one could argue they had made prior use of the trademark. Examples of prior use include advertisements or using the trademark publicly. Descriptiveness and genericness may also be argued if the opposing party thinks they will use the trademark selling the goods which are described by the mark. Similarly, misdescriptiveness and deceptiveness can be argued by parties which are competing with the applicant mark. Things that cannot be used to file an opposition include disparagement and unfair competition. Opposition can be a valuable way to protect your trademark or it can pose a major hurdle to registration. In either case be knowledgeable about what is being asserted and consider hiring an attorney.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Publication and Opposition

If your trademark has been published or scheduled to be published for opposition in the Official Gazette, then congratulations! You are one-step closer to registration. However, during this time it is possible for there to be setbacks. Publication means that information regarding your mark such as your full trademark, your name, goods or services, dates of use, date of filing, and distinctiveness claims. During the publication period, which lasts 30 days, other parties will have a chance to review this information and decide if they want to oppose your mark. They may also request extensions of time to oppose your mark. If you are the one that would like to oppose a mark, this is a good time to do so. Many times companies appoint employees or hire attorneys to monitor publications to ensure there are no marks that may infringe on their rights. It is always important to be vigilant and quick to respond.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Inter Partes Proceedings

Disputes can arise during the trademark registration process. If this occurs or if you are opposing the registration of another mark and the dispute is handled by the United State Patent and Trademark Office (USPTO), then it is an inter partes proceeding. Such proceedings are handled by the Trademark Trial and Appeal Board (TTAB). The TTAB adheres to Federal Rules of Civil Procedure. These proceedings include filing opposition to a mark after it has been published in the Official Gazette. Parties have 30 days after publication to file such an opposition, although extension of time to file opposition can be requested. This can allow for negotiations with the other party and attempts to settle the dispute early and quickly. A party filing opposition must be by someone that believes they would be damaged if the mark were registered. Grounds for opposition can include dilution, likelihood of confusion, genericness, descriptiveness, misdiscriptiveness, fraud, deceptiveness, lack of intent to use, and scandalous matter.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Options Following an Adverse Decision

Going to trial is usually not preferable because there is always a chance the judge or jury does not agree with you. If this happens you do still have several options. You can still attempt to negotiate a better settlement with the other party. Odds are both sides are weary and eager to arrive at a resolution, so this may be worth an attempt. Another option may be to file a motion for reconsideration or reargument. This may be allowed if certain important things were non considered, overlooked, or there was an obvious misunderstanding. Attempts can also be made to alter the scope of the relief that was granted. If all else fails, then it might be possible to appeal the decision. Things to consider on appeal include whether the law was applied correctly and whether factual error were present. Appealing will not be easy, but given the subjective nature of trademark law it may be worth considering. After an adverse decision review all your options carefully.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

The International Trade Commission

The International Trade Commission (ITC) is an organization that protects trademark owners from unfair competition abroad. The goal of the commission is to prevent such goods from being imported into and ultimately sold in the United States. ITC provides valuable assistance to the owners of registered marks, but it is possible to seek remedy even if your trademark is not yet registered. ITC remedies do not include monetary relief. The ITC process, including investigations, is usually expedited and can move to trial quickly. The ITC has the authority to issue both temporary and permanent orders of exclusion to prevent infringing goods to be imported, and thus shielding the public from being confused. If the outcome of the ITC proceeding is not what is desired, it is unlikely to have this changed by filing an action again in a district court. It is possible to push for criminal penalties for counterfeiters. The ITC is an organization available to help trademark owners and applicants protect their rights.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What are gray-market goods?

If you are using your trademark abroad or authorized someone else to use it abroad, then you may encounter issues with goods authorized in those countries being sold in the United States. If this happens and the trademark owner did not authorize it, then the good would be considered gray-market, or parallel imports. Such goods will not be considered counterfeit as they are technically legitimate goods. US Customs Service can assist with enforcing your rights if such infringement occurs. To do this, make sure the trademark is registered with Customs. Private action can be sought if this is not enough. To obtain relief there are many factors such as whether the goods are genuine, contain material difference, if material differences are allowed on goods sold in the US, variance in quality control, and others. Material differences are not only physical may include things like different ingredients, labels, quality, language, etc. Your trademark or trademark application bestows valuable rights regarding what and where goods are sold. Understand your rights and be proactive with enforcing them.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Dealing with Infringement from Overseas

It is possible that infringement of your trademark rights comes in the form of importation of goods from abroad. To assist with preventing this sort of infringement it may be a good idea to register your trademark with the US Customs Service. By recording your trademark with customs you can seek to bar good from being imported which would have a mark that constitute infringement. Recordation can be done online. After this is done you can take proactive steps to assist with enforcement such as providing Customs and port personnel with information regarding suspected infringement and details about your trademark. You can also obtain Custom information and even publicize enforcement and seizures related to your trademark. If the goods are counterfeit, then Customs will either seize or destroy the goods. If it is not necessarily counterfeit, but infringement then Customs may send back goods to where they came from or allow entry if the infringing mark is removed. Customs will help protect you from infringement, but being proactive and knowing your rights will strengthen this protection.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Cancelling a Registered Trademark

The cancellation of registered trademark can occur one of two ways, by a court from the result of a civil action or by the United States Patent and Trademark Office (USPTO) following a cancellation proceeding. During the first five years of registration, trademarks may still be subject to arguments including likelihood of confusion with a prior filed mark, generic, and descriptive arguments. Such seniority and descriptive arguments may not be made after five years. To take the matter of cancellation before a court there must be a basis other than just cancellation, such as infringement or other issues. In addition, all other administrative remedies must be exhausted first. This usually means one had to go before the Trademark Trial and Appeal Board (TTAB) first and possibly other administrative steps. Courts may still defer to the TTAB’s decision. Cancelling a registered trademark is not an easy process and make sure you develop a strategy and understand all the steps involved.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Damages and Monetary Relief

One possible remedy to a case of trademark infringement is monetary relief. This means awarding profits, costs, and damages to the party that was infringed. This is not a common form of relief as injunctions are generally found to be sufficient. The sum that is awarded can be based on damages, profits, attorney fees, costs, punitive damages, and compensation for corrective advertising. The profits of the defendant are generally only awarded if the infringement was found to be intentional. Damages are also generally awarded if there was intent to deceive or actual confusion. If the infringement case involved counterfeiting, then there will be statutory damages as well. Parties found to have contributed to such counterfeiting infringement may also face statutory damages. Punitive damages are recoverable through state laws and vary depending on the state. Attorney fees are generally only awarded if the infringement was exceptional such as willful or deliberate infringement. As you consider entering trademark litigation it is important to know what you are fighting for other than your trademark rights.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Injunctive Relief

If your trademark has or been the subject of infringement, then the outcome of the case may involve injunctive relief. Injunctive relief is a form of remedy that can be granted before or after the trial. If granted before the trial, this preliminary injunction must be for cases likely to prevail and to prevent irreparable harm that outweighs harm to the defendant. An injunction after the trial is permanent and is again granted to prevent damage to the owner of the trademark and to prevent members of the public from being confused. Specifics of the injunction can vary. Sometimes the infringer is allowed to use up any existing stock, other times they may be ordered to destroy items found to be infringement. The injunction will clearly detail what actions it will apply to and will not be any broader than is necessary to prevent such infringement in the future. Injunctions can be modified if there have been changes in law or circumstance, are found to be too extreme, or no longer serve their purpose. Injunctions can also involve recalls, disclaimers, and corrective advertising.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Trademark Litigation and Expert Testimony

As you attempt to argue and present the case for your trademark to a judge or jury, the use of expert testimony can be an effective way to explain complexities. Opinion-based expert testimony is even permissible so long as it assists with determining facts or understanding evidence regarding specialized knowledge. Expert testimony must be relevant and reliable, although it is ultimately up to the court as to whether specific testimony is admissible or not. It is recommended that experts be hired as soon as possible to ensure you are getting the best and to provide guidance and assistance with preparation. Experts providing testimony must also submit a report with all their complete statements and list of materials. The opposing parties must exchange these reports prior to the trial. Experts can also provide depositions. Expert testimony is very useful, but remember it can increase the costs of litigation just like other options such as survey evidence. Defending your trademark is not easy, but obtaining an attorney, experts to provide testimony, and other forms of evidence then you can strengthen your case.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Trademarks and Survey Evidence

If you are trying to prove a case of infringement either for or against your trademark, then one type of evidence that could be considered is survey evidence. Survey evidence was not always admissible and even today it is only admissible if it meets very high standards. Survey evidence is not required, but is considered significant evidence. Conducting such surveys can greatly increase the cost of litigation. Before deciding to proceed make sure you think you need it and be aware of how much it will cost. Such surveys must be performed by an independent party. This should be a qualified and credible expert who knows how to design such surveys with common criticisms in mind. The survey should be given to relevant consumers which were chosen through an unbiased process. Those chose to conduct the interview must be independent and have no knowledge of the litigation. The questions have to be clear, precise, and most importantly must not be leading. All data must be reportedly accurately and analyzed through accepted principles. Proper control must be used. This means that errors and other influencing factors are minimized. It is possible for surveys to demonstrate evidence of secondary meaning, likelihood of confusion, tarnishment, and/or dilution. Surveys can bolster your argument, but only if they are conducted properly and strictly conform with all requirements.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Evidence of Confusion

If your registered trademark or trademark application ends up going in to litigation against another trademark, then a major issue is usually whether or not there is actual confusion with the other trademark. If this is the case, then here are a few things which could be considered evidence of actual confusion: testimony from consumers that experienced confusion and testimony or documents demonstrating mistaken or misdirected mail, orders, or phone calls. Other things may also be evidence such as a boon in sales after infringement or even investigations by secret shoppers. There are also many things that will likely not be considered evidence and may be considered inadmissible hearsay. Statements repeating statements by others, employee conversations which cannot be verified, documents unavailable for cross-examination, infrequent examples of confusion, and evidence with lacks a guarantee of trustworthiness. Survey evidence may be admissible if it meets certain high standards. Such surveys must be created by an independent expert, the survey must be given to relevant consumers, such consumers must be chosen in an unbiased manner, and be given by trained and independent interviewers. The questions must be clear, precise, and not lead the consumer. All data has to be reported and analyzed accurately and by accepted standard. The right evidence can help bolster your case.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.