More than 150 years since the Battle of Gettysburg, a new battle may be brewing over ownership of the Gettysburg Area School District’s (GASD) logo.

The current iteration of the logo – an upper case “G” inside of an arrowhead to represent the district’s Warriors nickname – was created ten years ago by a school district employee but was never registered as a trademark.

No one gave it a second thought until Kierstan (Demps) Belle, a candidate for Gettysburg city council and a 2010 graduate of the district, announced that she paid $50 and filed an application with the Pennsylvania Bureau of Corporations and Charitable Organizations to acquire the rights to the logo, which she says was approved in September. Belle says that for GASD to continue to use the logo it will need to pay her royalties and agree to special conditions. She says that she wants to use the royalties to fund student activities that have been cut or underfunded, and the special conditions she wants the district to comply with are values that support “the Warrior Way.”

Local public reaction has been decidedly against Belle, with some of the more civil comments labeling her attempt to receive royalties “extortion.”  Attorneys for GASD confirmed they sent Belle a “cease and desist” letter but haven’t made any further comment about the situation.

For her part, Belle has made comments to local media that indicate she might be wishing for a do-over with the way her idea has been unveiled, and that she will say more in the near future.

Whether Belle’s intentions were good or not, legal experts concur that this is a common mistake made by people who don’t understand trademark law and expect registering a trademark that they have never used can generate money for themselves or their organization. 

In an effort to crack down on fraudulent trademark filings, the United States Patent and Trademark Office (USPTO) will be collecting and verifying domicile addresses for all applicants.

This comes as a result of the USPTO’s trademark enforcement team finding thousands of foreign applicants using fake U.S. addresses or fraudulently using the address of a U.S. attorney without the attorney’s knowledge or permission.  In the course of this investigation, more than 18,000 trademarks have been terminated for invalid applications, and more than 3,200 registrations have been sanctioned.

To make it clear to all applicants what is an acceptable address and what is not, the USPTO has published an examination guide that identifies the steps that examining attorneys and post-registration examiners will follow to determine if an address is valid for use in a trademark application.

The examination guide makes it clear that red flags will be attached to applications that do not identify an actual street address, but instead use a P.O. box, “care of” (c/o) addresses, commercial mail receiving agency (CMRA) addresses, registered agent (RA) addresses, private mailboxes (PMB), Army Post Office, Fleet Post Office, diplomatic post offices and highway contract route addresses. The USPTO claims these addresses “generally may not serve as domicile addresses because they do not identify the location of the place the person resides and that is intended to be the person’s principal home (for a natural person) or the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.”

Foreign entities that apply for a trademark must have a qualified U.S.-licensed attorney to represent them or the USPTO will issue an office action requiring the foreign entity to hire a qualified U.S. attorney and provide supporting documentation that the US street address is valid.

The USPTO recognizes that trademark counsel can change multiple times over the life of a trademark, and states that the domicile address can help the examiners determine if a new US-licensed trademark attorney is required.  The Exam Guide can be found here:  https://tinyurl.com/4j2wb7t2

If you have any questions or concerns about protecting your intellectual property under copyright law, an attorney at Ference and Associates, LLC, will be happy to help. Please contact us by phone at (412) 741-8400, or email at contact@ferencelaw.com.

In its ongoing efforts to modernize operations, the United States Patent and Trademark Office (USPTO) implemented eGrants for patents beginning in April of 2023.

In switching to eGrants, patent grants will no longer be issued on paper, but in a PDF format. It should be noted that applicants wishing to obtain a paper version of a granted patent can still do so, for a fee.

The new format will look just like the paper version of the documents and will use encrypted certification/validation technology to eliminate, or at least greatly reduce, the risk of fraud. The electronic patent grant will be the official statutory patent grant.

This has a number of benefits to both the USPTO and the patent applicants, but may also have some disadvantages, or at least some major changes for some patentees.

For example, with paper patent grants, there would be a delay of as much as four to six weeks once the patent was issued in the applicant receiving their patents. Under the new system, patent grants are available on the day of issuance. This reduces the amount of time applicants have to wait for the documents, as well as reducing paper usage and mailing costs for the USPTO. On the other hand, paper or ribbon copies will no longer be provided to the applicant, without a fee.

Under both the old paper system and the new eGrant system, there is a period of time between when the issue fees are paid and when the patent actually issues. This is a critical period of time because the patent is still considered to be in a pending status, meaning that follow-on applications, such as continuation, divisional, or continuation-in-part applications, can still be filed with the ability to still claim priority to the parent case. With the old paper system, this period of time was generally about four to six weeks that allowed the processing office format and otherwise prepare the patent for paper printing. However, with the new eGrant system this time period may not always be nearly as long. Currently, the time period between the payment of the Issue fee and the eGrant issuance appears to be about four weeks, but as the new eGrant system is in use for a while, this period may shorten, thereby shortening the length of time the patent is considered pending for the filing of follow-on applications claiming priority to the parent.

Thus, applicants need to be aware that there may, in the future, only be days instead of weeks from the time the Issue fee is paid until the patent is issued. Accordingly, patent practitioners or applicants should try to file follow-on applications at the time of or before payment of the Issue fee, if at all possible. If not, you may run the risk of being unable to file a follow-on application while the parent is still considered pending, thereby losing the ability to claim priority to the parent application.

The “Bad Spaniels” dog toys, in a unanimous 9-0 decision, the United States Supreme Court found that a dog toy company had infringed on the Jack Daniels’ trademark whiskey bottle and label design.

The whiskey distiller sued the dog toy company, VIP Products, for trademark infringement over their “Bad Spaniels Silly Squeaker” toy.  The toy is shaped like the Jack Daniels “Old No. 7 Brand Tennessee Sour Mash Whiskey” bottle and label. VIP Products’ label reads “Bad Spaniels, the Old No. 2 on your Tennessee Carpet.”  Both the label design and the shape of the bottle are trademarked by Jack Daniels.

In trademark infringement cases, the issue is whether consumers are likely to be confused about the source of the product.  In many such disputes, the company infringing on the trademark is also producing a product similar to the product produced by the legitimate trademark owner. Not in this case, however, as a dog toy and a bottle of whiskey are about as far apart as can be.

Attorneys for VIP Products claimed that their product is a parody of the Jack Daniels’ bottle, and, as such, is protected under the First Amendment.  The dog toy label, which uses the same color label as Jack Daniels, also uses other scatological humor to change the alcohol content and volume of the whiskey bottle to “43% Poo By Vol.” and “100% Smelly.”

While a federal district court ruled in favor of Jack Daniels, an appeals court overruled the lower court’s decision by invoking the Rogers Test, named after the actress and dancer, Ginger Rogers, who brought a 1989 case against the producers of the movie, “Ginger and Fred,” because she felt the public would be misled into believing she was involved in the production.  In that case, the court ruled for the movie’s producers, finding that the film was an “artistic expression” and not a commercial product that would have been subject to the Lanham Act, which is the main federal trademark statute that regulars trademark infringement, trademark dilution and false advertising.

The Supreme Court didn’t accept the appeals court’s ruling that the dog toy was non-commercial, and ruled in favor of Jack Daniels, which allows the distiller to pursue its lawsuit against VIP Products in lower courts. It stopped short of overruling the Rogers Test as a valid method of determining trademark infringement, however, which was what the Jack Daniels’ attorneys were arguing for.

Writing for the Court’s unanimous opinion, Justice Elena Kagan wrote, “Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes. The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products. 

“We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods – in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection,” she wrote.

If the Court had thrown out the Rogers Test, it would have given trademark holders greater ability to sue companies that parody their trademarks.  As it stands, not much has changed by this ruling, other than for this particular case.

This is the second intellectual property case to be decided by the Supreme Court in this term.  In late May, the Court ruled against the Andy Warhol, saying the artist had infringed on a photographer’s copyright when he used her photo to make silk screens of the musician, Prince.

A seller on the online shopping site, Wish.com, listed a sightseeing bus for sale at $15,000 but it was the $12 shipping price that raised suspicions at the United States Patent and Trademark Office (USPTO).

In an action, dated May 4, to cancel the trademark registration of QSEEL, Inc., the USPTO claims that the sightseeing bus listing was one of several listings on Wish.com that indicated that it was not a legitimate sale offer but was “digitally altered” and “was instead created to submit as a specimen in support of a trademark application.”

The sightseeing bus was not the only activity that the USPTAO deemed suspicious. There was also the following:

• The seller, which was tagged Red1985, had a large variety of unrelated items for sale – exercise equipment, blenders, portable propane water heaters to name just a few – which the USPTO stated was atypical of most online sellers, and the seller used the same photos with different trademarks on the items, also deemed atypical.
• The items bore trademarks that had been digitally altered.
• Some listings included placeholder language, also known as “Greeking” in the graphic design community because it uses a lot of words and letters from the Greek alphabet (although not exclusively from the Greek alphabet), which has no meaning in itself, but is used to show where the actual written copy will be placed in the final design.
• For some listings there was no price in U.S. dollars listed.
• Some of the photos in these listings were previously used with different logos attached.

The USPTO claims these actions indicate that these items were never intended for legitimate sales but were created for the purpose of fraudulently securing a U.S. trademark.

It’s important to note that this action is not a final judgment, and QSEEL, Inc., has a period of time to respond and rebut the claims in the USPTO’s filing and defend their trademark application. They may be able to do so successfully, however, other companies – many foreign companies looking to do business in the United States – have had their trademark applications cancelled for engaging in similar practices. There is a huge foreign market for U.S. trademarks. The number of applications for trademarks has increased exponentially in the past five years, but particularly since the pandemic, most of these coming from China, Russia, and Pakistan.  The USPTO is taking this seriously, as they should, because such a burden on the application and registration system stalls the approval process for legitimate businesses.

Last month, the heads of the intellectual property (IP) offices in the G7 nations – United States, Canada, France, Germany, Great Britain, Italy, and Japan – along with the World Intellectual Property Organization (WIPO), pledged to work together to promote innovation and combat piracy, IP infringement and counterfeiting.

The IP leaders issued a joint statement saying in part, “We recognize that an effective international IP system is necessary to incentivize innovation and creativity worldwide. In light of the far-reaching negative social and economic consequences of IP infringements, fostering a positive culture of IP and fighting counterfeiting and piracy are equally important and represent two sides of the same coin.”

While cooperation across the G7 nations is significant and should not be dismissed, it’s only a first step and it will be interesting to see what this cooperation looks like going forward and how it will address the vast majority of fraudulent filings that are coming from non-G7 nations.

The problem is that in less than a decade, trademark applications in the United States alone have increased astronomically from 6,323 trademark applications in 2014 to more than 175,000 filed in 2021. Most of the increase in filings can be tracked to fraudulent filings from entities in foreign nations, like Russia, Pakistan, and particularly China, whose applications have grown by more than 2,700 percent since 2014.

The United States Patent and Trademark Office (USPTO) has issued orders to show cause against the most egregious offenders, which, if carried to their conclusion, will prohibit those entities and the attorneys representing them, from filing trademark or patent applications on behalf of themselves and other clients. Enforcement must start somewhere, but the sheer volume of filings may make it seem like trying to stop the rise and fall of the ocean’s tides.

Nevertheless, the USPTO and others in the world community recognize that efforts must be made to protect IP rights if innovation is to flourish. The nations understand that innovation is the best hope to address some of the major issues facing the world in the coming years.

For innovation to be successful, the innovator must be able to sell, trade or license their patented technologies and prevent others from making, selling, retailing, or importing that technology illegally and/or fraudulently. This begins by respecting IP rights and enforcing the laws against those who refuse to respect those rights.

If you have any questions or concerns about filing a trademark registration, an IP attorney at Ference and Associates, LLC, will be happy to speak with you. Please visit www.ferencelaw.com or call (412) 741-8400.

In an action that should encourage legitimate brand owners to take a closer look at any of their registrations that have been blocked by a third party, the United States Patent and Trademark Office (USPTO) recently ramped up its battle with fraudulent filers. Specifically, the USPTO issued an order to show cause to a group of entities that are alleged to have been particularly egregious in filing multiple applications to obtain or maintain registrations that contain material misrepresentations or contain false attorney information and signatures.

In the show cause order, the USPTO stated that “Respondents violated USPTO Rules by using USPTO.gov accounts that appear to have been improperly created in the names of others to submit thousands of trademark-related documents in a manner that suggests Respondents were routinely, and improperly, practicing before the USPTO in trademark matters.”

Under this show cause order, these entities, identified under names such as “Shenzhen Haiyi Enterprise Management Co., Ltd., Haiyi Enterprise Service (Shenzhen) Co., Ltd., and Haiyi Co., Ltd.,” along with their employees, agents, affiliates, subsidiaries, parent companies, holding companies, and officers, must respond and “show cause” why the USPTO should not immediately sanction them for fraudulently filing thousands of trademark-related documents with the USPTO.

If they cannot satisfactorily justify their actions, the USPTO will sanction these entities, which may include any or all of the following:

• Termination of proceedings or pending applications, which also means the applicant will not be allowed to reinstate the application later;
• Refusing consideration of any submission that was submitted under fraudulent information or signatures;
• Preclusion of any further trademark submissions by the accused entities;
• Deactivation of any USPTO.gov accounts created by that entity.

In addition to the above sanctions, the USPTO may also update electronic records by the accused entities to indicate that the registrations or applications are subject to an order for sanctions, which would immediately cause question about the validity of the registration or application.

This order to show cause is the most recent step by the USPTO to address fraudulent filings, which have swamped the United States Patent and Trademark Office (USPTO) in the past few years and have slowed down the system for legitimate filers. Earlier this year, among other steps, the USPTO began requiring applicants to verify their identity electronically before their application can be processed.

Beginning December 3, 2022, trademark registration applicants will have three months to respond to any office action issued during an examination by the United States Patent and Trademark Office (USPTO). This marks a reduction in time from six months to three months for applicants to respond to the USPTO.

The USPTO states it is undertaking these modified response times to decrease the time it takes to get a registration and to provide flexibility for applicants to request additional time to respond when the situation warrants.

On the second point, the USPTO says that it understands that there may be more complexity with certain application issues, and in that case more time might be required to gather the necessary information to provide a thorough response. To accommodate a response on these types of application issues, applicants may apply for a three-month extension for appeals, which includes an additional $125 fee. Take note that this extension request must be applied for before the initial three-month deadline expires and cannot be requested if a response has already been filed.

There will also be a shortening of response periods for post-registration office actions, but that will not take effect until next year. The same three-month window for an initial response time for post-registration issues will begin on October 7, 2023.

It is important to remember that any failure to meet a deadline will result in the USPTO abandoning your application, which means an applicant must either restart the application process (and repay all applicable fees) or file a petition to revive the application, which also comes with an additional fee.

Much like how the orange construction barrels on the highway can reduce the travel lanes and create a long wait for drivers, the United States Patent and Trademark Office (USPTO) has been slowed down by a dramatic increase in fraudulent trademark filings over the past six years.

Fraudulent applications have caused legitimate applicants to wait approximately double the usual time to have their applications approved by the USPTO, and that approval comes only if a fraudulent application hasn’t secured the desired trademark first. In that case, it is incumbent on the legitimate filer to do the necessary audits and gather the evidence to bring legal action against the fraudulent filer, which takes additional time and money.

Almost all of these fraudulent filings can be tracked to Russia, China, Pakistan and other foreign countries, where fraudsters file the registration using a small business’ name, but then use fraudulent information in the rest of the application, essentially stealing the identity and trademark of the small business. In some cases, applicants have downloaded photos of products stolen from legitimate websites with the photos doctored to substitute the fraudulent brand name for the legitimate name.

How big is this problem? Consider that in 2014 there were only 6,323 trademark applications filed, but that has grown exponentially over the past seven years to reach more than 175,000 applications filed last year. Just since 2019, there has been a 262 percent increase in filings, with a 385 percent increase in filers from China from 2020 to 2021. Overall, Chinese applications for a U.S. trademark have grown by 2,700 percent since 2014.

Most of these applications are bogus and may even be incentivized by a foreign government. Some reports indicate that Chinese filers receive incentive payments and/or other types of favorable treatment from Chinese government officials if they can secure a U.S. trademark.

To combat the growing problem of clutter in the registry, the USPTO has introduced the Trademark Modernization Act (TMA), which was passed by Congress in December 2020 as part of year-end COVID legislation. Last year, the USPTO began implementing rules to deal with this fraud. This year, on August 6, the USPTO began requiring all trademark filers to verify their identities when filing electronic trademark forms. This initiative, which has been in place on a voluntary basis since January 2022, includes options for both paper and electronic identity verification.

As part of this new protocol, applicants who file electronically can match an uploaded selfie with a valid government-issued ID card or undertake a brief video interview with a USPTO representative. Both the selfie and the video will be deleted after a specified time period (24 hours for the selfie and 30 days for the video) to reduce the risk of a hacker gaining access to legitimate identification information. The USPTO still accepts paper applications, and anyone who already has a verified ID can use their existing accounts for future filings.

The old adage, “If it sounds too good to be true, it probably is,” is especially valid for trademark registration.

Unscrupulous foreign-based companies, even though they claim to be headquartered here, have been taking advantage of small businesses hoping to register trademarks. In response, the US Patent and Trademark Office (USPTO) will begin requiring identity verification when filing for a trademark to protect businesses from fraudulent filers.

In the past few years, companies – with names like Trademark Terminal, Trademark Regal, and Trademark Falcon, to name just a few – have surfaced promising to register your trademark with USPTO in under 10 minutes for $99. Not surprisingly, they have had quite a few small business customers eager to register a new trademark at a bargain rate. It turns out not to be a bargain!

These companies, that can be tracked to Russia, China, Pakistan, and other foreign countries, file the registration using the small business’ name, but then use fraudulent information in the rest of the application, essentially stealing the identity and trademark of the small business. According to the USPTO, which has flagged nearly 20,000 invalidly filed application in the past seven months alone, “these scammers fraudulently file improper submissions that include false signatures, false addresses, false claims of use required to obtain and maintain a registration, and false or hijacked U.S. attorney credentials.”

To combat this fraud, the USPTO will begin requiring all trademark filers to verify their identities when filing electronic trademark forms. This initiative, which has been in place on a voluntary basis since January of this year, will be in effect starting August 6, and will include options for both paper and electronic identity verification.

Part of the new protocol for filing electronically either can be matching an uploaded selfie with a valid government-issued ID card or undertaking a brief video interview with a USPTO representative. Both the selfie and the video will be deleted after a specified time period (24 hours for the selfie, and 30 days for the video). Of course, paper verifications are still being accepted. Filers who already have a verified ID can use their existing accounts for future filings.

If you have any questions or concerns about filing a trademark registration, an IP attorney at Ference and Associates, LLC, will be happy to speak with you.