Category: Trademarks

Questions & Answers About Trademarks

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Q&A Trademarks

What Is Failure to Function?

photo of frozen waterfall at Nerstrand Big Woods park

Trademark applications are sometimes refused for a failure to function. What is failure to function, and what does a failure to function as a trademark refusal mean? This article addresses the relevant requirements for U.S. federal trademark registrations, how to respond to such a refusal, and introduces a few related concepts.

The Function of Trademarks

Trademarks (and service marks) are used to identify the source of goods and services. Put another way, the basic purpose of trademarks is allow consumers to tell apart goods (or services) originating from different sources. Take any commodity—like a car, pen, or frying pan. Branding these with a trademark allows consumers to understand which ones original from company A rather than company B. This allows consumers to rely on branding as an indication of quality, and to avoid counterfeits or fakes that may be of unreliable quality.

The U.S. federal trademark laws, often referred to as the Lanham Act, actually include explicit definitions of trademarks (and service marks). These definitions emphasize that trademarks are indicators of source that distinguish goods from those made or sold by others.

“The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) [constructively used by filing an intent-to-use application], to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

15 U.S.C. § 1127

Context and Form of Use Matter

In order for something to actually function as an indicator of source (that is, as a trademark), it has to actually be used in that sort of way. That means context and the form of use matter. And these are things are considered from the standpoint of consumer perception.

For instance, the prominence and precise location of a mark on goods or their packaging is important. A phrase buried in the “fine print” on an insert inside a package, but not visible to consumers when considering buying it does not function as a trademark. But a unique and distinctive logo that consistently appears on the front of the same package is likely to be recognized by consumers as a trademark that indicates the source of the goods.

graphic of example trademark specimens of shirts, with one on left showing a branded tag inside the collar and the one one the right shoing an ornamental graphic on the center front of the shirt
On the left, a tag inside the shirt collar is branded with the trademark EXAMPLE. On the right, the stylized wording “EXAMPLE!” appears in an ornamental way across the center front of the shirt.

A common issue is use of things on clothing. In some locations, these thing would be perceived as indicating the source. This includes distinctive branding on the tag inside shirt or attached label. Or sometimes there are conventions like having polo or tennis shirts branded with a logo that appears on a pocket or other location that is recognized by consumers as indicating the source of the shirt. But something on clothing that is merely ornamentation would generally not be perceived as an indication of source and thus fail to function as a trademark. This can arise, for instance, for merely background designs and shapes. These considerations are not limited to clothing either.

Content Matters

The nature of the content of an alleged trademark matters a lot too. Not every word, name, phrase, symbol or design, or combination of such things that appears on a product functions as a trademark. And mere intent that it function as a trademark is not enough in and of itself to make it a trademark. Merely informational matter fails to function as a mark to indicate source and thus is not registrable. That is because consumers would perceive such information matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others.

Common examples of things that fail to function as trademarks include: (a) general information about the goods or services that does no more than inform the public with reasonable accuracy what is being offered, and including highly laudatory claims of superiority (“best”, “greatest”, etc.); (b) a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources; or (c) something that primarily is or identifies the product itself rather than something that identifies the source of the product.

General Information

What does or does not constitute mere “general information” about goods/services is highly contextual. So it also relates to prominence and location of use, as discussed above; to function as a trademark such usage should stand out from merely information text in some way. Common examples of things that fail to function as trademarks are mere ornamentation, the title of a single work (as opposed to a series), or the name of an artist or author.

Mere model numbers, grade designations, and the like can also be merely information in nature. These depend on context too, including placement and prominence. For instance, the USPTO considers some model numbers and grade designations to be dual-purpose, serving as both a model or grade designation and a trademark. Similar considerations apply to so-called universal symbols, like the recycling symbol with arrows forming a triangle.

For instance, if a product package said “this end up”, most consumers would understand that as merely being an instruction for how to handle the package without damaging the goods inside, and not a trademark indicating the source of the goods. That phrase does not describe any quality or characteristic of the goods inside. Even so, consumers would still not see it as branding. The same could be said for many types of warning labels, address indications, prices, and all sorts of other information that accompanies the sale of goods and services.

In a notable case, two designations for crabmeat (shown below), each containing both stylized wording and graphical design elements, were each refused registration for failure to function. While sometimes the addition of stylization and/or graphical elements can provide sufficient distinctiveness to otherwise non-distinctive wording, those non-textual elements were insufficient here.

Image of applied-for designation (alleged mark) in Ser. No. 87/405,211: ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED, and design (including realistic image of a crab)
Image of applied-for designation (alleged mark) in Ser. No. 87/405,233: ALL NATURAL 100% REAL CALLINECTES CRAB FROM NORTH AMERICA GOURMET CRABMEAT PASTEURIZED and design (including realistic image of a crab)
Application Ser. Nos. 87/405,211 (left) and 87/405,233 (right)

The wording was found to be merely informational terminology commonly used in the relevant trade/industry to denote the purity, quality, ingredients, and, for one of them, also the geographic origin. The minimally stylized font created no distinct commercial impression, nor did a simple geometric (circle) shape, which consumers would perceive as a background design or carrier to enclosed wording rather than as a separable design element with trademark significance. The image of a crab was also insufficiently distinctive because it was similar to, or reinforcement of, the meaning of the accompanying wording, and simply informed prospective consumers that the associated product is crabmeat.

Sometimes this relates to descriptiveness too. In one example case, THE BEST BEER IN AMERICA was found to be so highly laudatory and descriptive of the qualities of its product—beer—that the slogan did not and could not function as a trademark. Situations like this involve self-lauditory terms that are normally considered descriptive, and typically involve slogans. But to give one user exclusive rights would be ridiculous. In this sense, general information is incapable of acquiring secondary meaning and thus incapable of functioning as a trademark. This makes sense because all competitors want and deserve the ability to use common lauditory terms and slogans and consumers are unlikely to see them as source-indicators.

But this goes beyond self-lauditory terms. In another case, LITE was incapable of functioning as a trademark for vegetable oil foods and margarine because it merely indicated that the product contains less than the usual amount of some element as with so many other products (in yet another case, both LIGHT and LITE were found generic for beer).

There are therefore two categories of general information. The first pertains to things slightly more removed from the qualities or characteristics of the goods or services, like instructions. The other relates to merely descriptive terms incapable of attaining secondary meaning.

Common Phrases or Messages

Common phrases or messages are interesting, because there are a large number of examples of people and companies seeking to improperly claim a monopoly over them through misuse of trademark law. The following are just a few examples common phrases and messages that failed to function as trademarks:

  • I ♥ DC for use on apparel and souvenirs
  • I LOVE YOU for bracelets
  • EVERBODY VS RACISM for tote bags; t-shirts, hoodies as clothing, tops as clothing, bottoms as clothing, and head wear; and promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence
  • WHITE LIVES MATTER for jogging suits; shirts; sweatpants; sweatshirts; tee-shirts
  • NO MORE RINOS! (meaning “No More Republicans In Name Only”) for a variety of paper items, shirts, and novelty buttons
  • PROUDLY MADE IN THE USA for electric shavers
  • INVESTING IN AMERICAN JOBS for retail store services or promoting public awareness of goods made or assembled by American workers
  • FARM TO TABLE for wine
  • WHY PAY MORE! for supermarket services
  • LEGAL LANDMINES for business coaching services and education services in the field of business
  • 40-0 for T-shirts and other sports-related apparel
  • AOP (an acronym for “appellation d’origine protégée,” which translates from French as “protected designation of origin”) for wine (note: this was not an application for a certification mark)

Although not (yet) the subject of a definitive court ruling, the sports-related message “threepeat” is currently the subject of at least one trademark registration for clothing. But that registration is highly dubious as being directed a widely-used message related to three-in-a-row sports championship victories. There are actually many examples of questionable assertions of trademark rights related to sports, politics, and other things that have not yet seen definitive court rulings, such as LET’S GET READY TO RUMBLE, MAKE AMERICA GREAT AGAIN, and TRUMP TOO SMALL. And both TACO TUESDAY and TACO TUESDAY were voluntarily surrendered without final court rulings.

Aesthetic Ornamentation

Although not specifically called out as a separate category by the USPTO, some alleged trademarks may also have purely aesthetic ornamental value that fails to function as a trademark. This is to say marks without any words may not convey “information” or a “common phrase or message” but still be ornamental. This most often arises with things like clothing designs and alleged trade dress rights, and to some extent overlaps with the concept of aesthetic functionality. But this can include dubious alleged trademark rights in the color red on shoes (reversed on appeal) and three stripes on clothing, for example.

Potential Exceptions

If something acquires distinctiveness through secondary meaning, an otherwise unprotectable mark can become protectable under trademark law. This possibility first arose with the expansion of trademark law in the mid-Twentieth Century (but such things were not widely considered protectable before then).

There is also a controversial possible exception to failure to function problems for so-called “affinity” marks or “secondary source” usage. The U.S. Patent & Trademark Office (USPTO) currently accepts evidence of these things to potentially overcome failure to function refusals. However, this USPTO policy is not supported by any significant court decisions. Indeed, in a case challenging the legal foundation of that policy, a judge commented that even though a multibillion-dollar industry has grown up around these practices, “that a house is large is of little matter if it’s been built on sand.”

The weirdest exception is for the olympics. There is a separate U.S. law (35 U.S.C. § 220506) that gives the olympic committee exclusive rights broader than normal trademark law in the emblem consisting of five (5) interlocking rings and the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “Parapan American”, “America Espirito Sport Fraternite”, or any combination of those words. This law was challenged but upheld by a divided Supreme Court, with the dissent pointing out how this law eliminates defenses from regular trademark law that are significant to the constitutionality of federal trademark law. While normally trademark law does not provide rights in gross, that is not the case for the olympics.

How to Overcome a Failure-to-Function Refusal

Overcoming a failure-to-function refusal of a trademark application often requires providing evidence of consumer perception that the applied-for mark actually does function as a trademark, or establishing secondary meaning. Of course, these will only be realistic possibilities if the mark actually does function as a trademark. While occasionally it might be possible to respond to a refusal with mere argument, without submitting evidence, most of the time arguments will require corroborating evidence to be successful. Such evidence might be a substitute specimen of use or evidence of the impression the matter makes on the relevant public (such as survey results, internet evidence, etc.).

In the broader sense, having trademark rights in something requires actually using the mark as a trademark. This means making efforts to engage in proper usage and avoid improper use. If that is done, then it should be possible to gather evidence to support an argument that there is trademark usage involved. But it will not be possible to generate evidence of trademark use when something does not function as a trademark and is not or would not be considered a trademark by consumers. For example, mere use of the “TM” or “SM” symbol cannot transform an unregistrable designation into a registrable mark. And, importantly, evidence of function as a trademark must outweigh evidence of widespread non-trademark usage.

Another approach is to amend an application to add limitations regarding the relevant consumers, or delete certain goods/services. If the identification of goods/services is limited to only particular consumers, then the perception of those specific consumers needs to be considered. The perception of other consumers might be irrelevant. This might exclude or diminish the weight of unfavorable evidence of a failure to function.

Limits

When alleged trademark rights are asserted against another party, there may be defenses that arise related to a failure of the asserted designation to function as a trademark, or simply other defenses that protect the ability to make use of that designation under certain circumstances.

Descriptive or nominative fair use can apply to permit usage by others, even when there might be secondary meaning. Fair use is a limit on trademark rights even when there is a registration, and even when that registration is incontestable (see 15 U.S.C. §§ 1115(b)(4); see also § 1125(c)(3)(A)). This is a potential defense against the assertion of a dubious trademark registration that does not appear to function as a trademark, or against infringement allegations that relate to non-trademark usage by another party.

Genericness might also be a defense and a ground for cancellation of a registration. For instance, there are cases where courts have held that even adjectives can be generic, like the LITE beer case cited above. Or, in another case, BRICK OVEN was found to be generic for frozen pizzas. In these situations, a distinction is sometimes made between terms that were widely used before adoption and those that were coined but later became generic. But this does not make allegedly coined terms invulnerable to genericness—or preclude questioning as to whether they were truly coined/fanciful terms to begin with.

In district court litigation or TTAB proceedings, other defenses or challenges to an asserted registration or unregistered mark might also be available, like abandonment, unclean hands (or other equitable doctrines), etc. However, most cases involving failure to function are treated as evidentiary ones involving the sufficiency of specimens of use and there have not yet been definitive court rulings on failure to function arguments and defenses after a registration has been granted.

Other Related Concepts

In general, unless a patent or copyright protects an item, it will be subject to copying. Trademark law cannot be used to exclude competitors from the market. Accordingly, for alleged trade dress rights in product configuration, there is never inherent distinctiveness, and secondary meaning and acquired distinctiveness must be established. But there may be situations in which secondary meaning can never be acquired because the product configuration is incapable of functioning as a trademark to identify source. So, although these other limits are often discussed in public policy terms, they can also been seen as concern about failure to function.

In one case, involving the assertion of (unregistered) trademark false designation of origin rights in a documentary television series for which copyright had expired, the television series materials could be copied without liability. This was a clear case of improperly attempting to use trademark law to undermine fundamental aspects of copyright law. However, the court did not address how secondary meaning might arise, if at all, in this situation.

The U.S. trademark laws also explicitly prohibit trademark rights in things that are functional rather than source identifying. That places purely functional aspects of products outside the scope of trademark law. For example, in one case the configuration of partly chocolate-covered cookie sticks was found to be purely functional and unprotectable under trademark law as trade dress.

But this gets more difficult to evaluate when dealing with something aesthetic like copyrightable material, including aspects of entertainment performances that the public would see as the service/thing itself. For instance, one court has said in a different case that trademark law does not protect the content of a creative work of artistic expression as a trademark for itself. The court declined to accept an argument that was tantamount to saying that a product itself—in that case, a song—can serve as its own trademark. The different, source-identifying function of trademarks requires that a trademark in a musical composition not be coextensive with the (copyrightable) music itself. The court’s reasoning very much reflects failure-to-function concerns. Although, curiously, the court noted the defendant’s concession that the song title had acquired secondary meaning, a position that is rejected by the USPTO for single-work titles, due to a failure to function.

So-called aesthetic functionality limits trademark rights. However, that limit has, at times, been set out somewhat circularly as depending on whether the recognition of trademark rights would significantly hinder competition. But these assertions of trade dress or other trademark rights in things/works themselves are usually attempts to hinder competition rather than protect consumers from deception. This has led to rather arbitrary and subjective court decisions in this area, with variable and inconsistent outcomes.

Conclusion

From the examples given above, refusals for failure to function are an important check against overreaching and misuse of trademark law. Many of these examples relate to clothing and merchandising, in which an entity tries to improperly use trademark law to obtain a monopoly over widely used sentiments and slogans/taglines.

Failure to function issues tend to involve so-called “propertization” of trademarks. This moves away from the basis of trademarks in consumer protection. Instead, a failure to function is most typical when someone is trying to appropriate and “monetize” some existing sentiment for their own private benefit or trying to unfairly suppress competition.

In the hilarious TV series “The Office” (American version), there is an episode (season 7, episode 14) where small business entrepreneurs show up for a seminar organized by a paper salesman. One of the attendees explains his business idea as getting point-two cents from every phone call or online shipping order (without providing any benefit, simply taking a cut). One of the show’s regular characters tries not to grimace when hearing this ridiculous idea for a grift. But that scene encapsulates the way numerous entities have analogously tried to use trademark law as a “get rich quick” scheme to monopolize common slogans and general information for their own benefit.

The best approach when branding products and services is to select a strong, distinctive mark in the first place, then consistently use that mark properly. When those things are done, failure-to-function refusals simply will not be an issue.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

Does a Trademark Registration Prevail Over Prior Use?

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In U.S. trademark law, use of a trademark matters a lot. Rights generally go to the “senior” user. That is whoever has earlier or prior use. This can mean that determining who is the senior user generally determines who has rights and who is an infringer. But what if a “junior” user has a federal trademark registration? Does a later trademark registration mean the registrant prevails over a prior user? Can a junior user’s registration be asserted against the senior user? Is the result the same even when the prior user never registered the trademark and only has “common law” rights?

Prior Use Prevails

Courts have said that a prior trademark user prevails over a later registration. However, prior use by one business followed by later federal registration by another sometimes leads to concurrent rights by multiple entities. How that works depends on the geographic scope of the senior user’s pre-registration use. For example, if the most senior user only uses a mark in a limited geographic area, a later user in a remote geographic area might obtain concurrent use rights in that particular area prior to the senior user obtaining a federal registration.

This happened in a famous case involving the mark BURGER KING for restaurant services. A party that began using the same mark in part of Illinois without knowledge of the senior party’s use elsewhere retained concurrent exclusive rights to continue use it in an area around one city, despite the senior party having previously used the mark in numerous other states and later federally registering it. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968).

Another case like this involved the mark OLD DUTCH for packaged pretzels. There, different parties had been using the same mark for the same goods in different parts of the country. One party (Dee Dee) was the first user in six states before the other party (Old Dutch Foods) obtained a federal registration. The later federal registration could not prevent concurrent use by the prior user Dee Dee in those six states. The court determined that each party was entitled to a concurrent use federal registration, each registration limited to particular geographic areas. Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150 (6th Cir. 1973).

There can even be situations in which a prior user’s rights encompass the entire country. In that situation, the later registrant can be prevented (enjoined) from using its registered mark anywhere in the country (even as a corporate trade name) and the later registration cancelled. Cuban Cigar Brands N.V. v. Upmann Int’l, Inc., 457 F. Supp. 1090, 199 USPQ 193 (S.D.N.Y. 1978), aff’d 607 F.2d 995 (2d Cir. 1979).

Incontestability Changes Nothing

Priority of use generally prevails even if the later registration becomes incontestable. Indeed Section 15 of the Lanham Act (15 U.S.C. § 1065) says:

“except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable . . . .”

15 U.S.C. § 1065

As a court summarized the law this way. “The plain meaning of this language is that if a party has acquired common-law trademark rights continuing since before the publication of the federal registration, then to that extent the registration will not be incontestable” and “geographically defined areas of exclusive use are required for each party . . . .” Wrist-Rocket Mfg. Co., Inc. v. Saunders Archery Co., 578 F.2d 727, 731 (8th Cir. 1978).

Conclusion

Under U.S. trademark law, it matters who was first to use a trademark. Trademark rights arise from use. Even when there is a federal trademark registration, the registration must bow to prior use. That is to say that a registration does not trump prior use. Of course, unregistered common law trademark rights are limited only to the geographic markets in which prior use has occurred substantially consistently and continually.

However, the law can be different in other countries. Common law rights are not recognized in the same way in all countries. First-to-file trademark laws in many countries give rights to the first to register, regardless of others’ prior use. Although even in first-to-file regimes there might be limited prior use defenses available. These questions require legal review under the laws of each relevant country or jurisdiction.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

How Can You Know if a Trademark Search is Reliable?

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There are different situations where a trademark search is beneficial. And there are different types of searches with different levels of scope. But how can you know if a given trademark search is reliable? How thorough or extensive does search have to be? Are simple queries in online portals enough to rely on? This article will address those questions about what makes for a good trademark search.

Overview of Best Practices

Trademark searching is perhaps more art than science. There is no single approach suitable for all situations. But there are a number of factors that tend to make trademark searches better and more reliable in general. These include the following:

  • Accounts for applicable trademark laws in the relevant jurisdiction(s)
  • Encompasses variants and similar marks, and not limited to exact or identical matches
  • Looks beyond identical and overlapping goods and services to different but related goods/services
  • Uses reliable tools or databases with relevant content coverage
  • Results are coupled with a competent legal analysis

These factors are discussed further below. Although this article is not meant to be a tutorial on the mechanics of or strategies for performing trademark searches.

The Likelihood of Confusion Standard

Under U.S. trademark law, a likelihood of confusion standard is used. It applies when determining if a proposed mark is federally registrable. This is the standards trademark examiners apply to new trademark applications. Registration will be refused if there is a likelihood of confusion with a prior mark. It also generally applies when assessing potential infringement. Trademark infringement arises when there is a likelihood of consumer confusion, even if actual confusion has not occurred among customers.

This legal standard looks an multiple factors from the point of view of relevant consumers. There is no precise formula for how these factors are applied. But two factors tend to be most important. One is how similar (or dissimilar) two marks are, when considering the overall commercial impressions the proposed create. Another is how similar (or dissimilar) the goods and services are.

Importantly, the trademarks do not have to be identical to be similar enough to create a likelihood of consumer confusion. The goods and services can potentially differ as well. For instance, they might partially overlap or the goods and services might differ but still be considered related. There is no universal, bright-line rule for how close is too close, or what sorts of differences will sufficiently avoid potential confusion.

Legal standards in other countries may different. But most countries take a generally similar approach.

Simply Queries Are Often Not Enough

A reliable trademark search needs to be broad enough to capture different but similar marks. This includes things like alternate spellings, phonetic equivalents, transposition of words, different punctuation—like the difference between one word or two, with or without a hyphen—and even other words with similar meanings. Foreign-language translations or transliterations might also be considered, which can be particular useful when looking at foreign countries where other languages are common. Basically, the search needs to account for the fact that prior trademarks may be relevant to the likelihood of consumer confusion even though they differ in some way.

A few limited keyword searches in an Internet search engine or trademark database may not be sufficient. That is especially true if searching only for marks that are identical. For instance, if a search for a proposed brand name that includes the word “theater” omits prior marks using the alternate spelling “theatre” or intentional misspelling “theatr” it could miss something important. The same goes for portmanteau or compound word terms that incorporate words like “theater”.

Trademark searching also involves the difficult problem of trying to prove a negative. You can never be absolutely certain that nothing relevant is out there. If nothing appears it might mean nothing else exists, or it might simply mean you missed a relevant prior mark. A perfect search is impossible. Even a high quality search might miss a prior mark that someone else considers relevant. After all, there are some judgement calls involved with these fuzzy legal standards. But the goal is to use sufficiently robust and thorough searching methods. Getting “zero hits” or “no results” from a few cursory searches, based only on looking for exact matches in a limited coverage database, is often not adequate or reliable.

Using Online Portals

There are some free, open-access online portals that allow trademark searching. Some of these are provided by official trademark offices. Others are privately run by various companies. There are also proprietary databases that require paid subscriptions or other fees.

Many free “trademark availability” search engines are unreliable and misleading. For instance, queries in a free trademark availability search engine for the following proposed marks all said they were supposedly “available”:

  • THE CHEVROLET
  • COCA-COLA USA
  • SAMSUNG COMPANY
  • NIKE SHOES

Of course, none of these proposed marks are actually available for use, at least not if they create a likelihood of confusion with the famous brands they incorporate (or cause dilution). Simply adding an additional generic or highly descriptive term without changing the overall commercial impression is not enough to avoid confusion. Those minor differences from an existing mark generally do not mean that a proposed mark is available for use or registration. Any of these example marks would be refused registration. Their use would probably also result in legal problems.

Adequate Coverage

A trademark search also needs to encompass sources likely to contain the kind of trademark information that matters to your legal questions. There are many different trademark databases available. But there is no single comprehensive database of all worldwide trademark information searchable across all possible fields. It would be nice if there were. But every real-word tool or database has limits on its coverage. This even applies to general-purpose Internet search engines. For instance, there can be purely offline trademark uses that cannot be found online.

Reliable searching involves selecting the right resources to consult. This might mean paying for access to certain proprietary tools. Or it might mean searching in multiple databases or tools each having different coverage. Often the specific coverage of a given database can be confusing or not readily apparent.

Considerations for Graphical Logos and Non-Traditional Marks

Searching trademarks with prominent visual design components or stylization, especially logos without any wording, presents some unique challenges. The same applies to non-traditional marks like trade dress, colors, sounds, etc. There are tools that allow what amounts to a reverse image search of a logo. Those tool can be helpful. But they are not always completely reliable on their own. There are also design search codes or other classification systems for categorizing elements of trademarks other than wording. These codes or classifications offer a particularly helpful way to search for similar logos, visual design elements, and elements of non-traditional trademarks.

A Search Alone is Not a Legal Opinion

Simply searching for trademarks—and no more—tells you very little. It will at most give you a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Was your search robust enough to have confidence that there actually are no problematic existing trademarks? To answer those questions you need a legal opinion. That means analyzing trademark search results from a legal perspective. It is recommended to have a knowledgeable attorney analyze search results and provide legal advice about registrability and/or any infringement risk.

Budgeting

There is definitely cost associated with a quality, reliable trademark search and accompanying legal analysis. Costs especially tend to increase when the scope of a search encompasses more geographic regions or jurisdictions. Selecting the cheapest option, or taking a free do-it-yourself approach, often does not result in the reliable results. Cheap searches and $99 fixed-fee “legal” services are not going to give you a reliable legal opinion or provide meaningful strategic guidance.

Small businesses frequently feel they cannot afford these costs. Skipping a search means you are taking you chances. It is like rolling the dice and hoping there are no obstacles or infringement risks lying in wait. Businesses often regret not clearing their branding before adopting it, or regret selecting a weak mark. Doing so might mean later facing large re-branding costs, limits on expansion of your brand, and/or a decreased business valuation. In a worst case scenario it might even destroy everything built-up in a business. So a good search (+ legal opinion) upfront can be a good value in the long run.

Photo of Austen Zuege

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen
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Q&A Trademarks

How Should a Trademark Search Be Conducted?

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What should a trademark search involve? How should a trademark search be conducted? These are questions about the scope and format of a trademark search. There are many different ways of performing trademark searches that vary in scope and thoroughness. Not all searches are equal. The right approach will depend on a number of factors including the purpose of the search and the type of legal questions the search is meant to address. The following is an overview of basic considerations about how to structure a trademark search to meet your needs.

Different Types of Searches

Sometimes trademark searches are grouped into different levels, with different pricing. A basic search is sometimes called a “knockout” search. These are usually the cheapest option. Names like “comprehensive” are applied to other types of searches that are more thorough (and more expensive). There are also special searches for various specific purposes, such as to look for evidence of relatedness of goods and services. But what differs between these different searches in terms of what you get? And which one is the right choice for your circumstances?

Knockout Searches

A knockout or preliminary search is usually the most basic and most limited in scope. It is typically limited to searching only registrations and pending applications in a particular jurisdiction. This means it will not capture unregistered uses of similar trademarks that may exist.

Also, a knockout search may be limited in terms of capturing variations. Trademarks do not need to be identical to create problems under the likelihood of confusion standard. The exact scope of knockout searches can vary. But often they will provide little or no identification of alternate spellings, phonetic equivalents, translations, distinct terms with a similar meaning, or the like. Yet prior trademarks that are not identical can still create a likelihood of confusion in some situations.

If a knockout search is all your budget permits, it may be better than nothing. But often a knockout search is often too limited to provide a lot of value. For example, for a trademark clearance or freedom-to-operate in the United States where unregistered “common law” trademark rights can exist, a knockout search is generally inadequate. And even for merely preliminary purposes some “bargain” searches may fall short. Quite frankly, cheap searches are not always reliable.

More Comprehensive Searches

A more comprehensive or full trademark search is usually just what the name implies. It is a broad search meant to capture as much as is feasible within a reasonable budget. More comprehensive searches will typically assess any unregistered prior uses. These searches also usually devote much more effort toward searching for alternate spellings, phonetic equivalents, and different words with similar meaning. But beyond those typical parameters, the exact scope of these searches can still vary. There is a continuum of effort involved.

For example, sometimes, but not always, they will address registrations in U.S. states, territories, and districts too. For marks used only locally, and not in interstate commerce, such a state or similar registration might be the only type available. Searching all such state-level registrations can add significant extra expense to a search and therefore is frequently omitted.

Also, whether foreign words are searched will also vary considerably. There are many languages and whether wording of a proposed mark would be considered relevant to one with a similar meaning in another langue is very context-dependent. It can matter if the other language is commonly spoken in a relevant area. For these reasons, translations will usually be considered like separate searches and excluded from even fairly comprehensive searches.

Special Searches

There can also be other types of trademark searches meant to address very particular questions. For instance, there can be situations during the examination of a trademark application or in connection with a lawsuit in which certain trademark searches are useful. These can include searches for evidence of relatedness of goods and services, by looking for usage of a single brand with different but “related” goods/services. Also, trademark-related searches might be performed to identify evidence of genericness or of descriptive meaning of the the words of a given mark.

Geographic Scope

Every trademark search should consider the particular jurisdictions of interest. That is because trademark rights are territorial. They exist only in in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. A search for trademarks in one country will tell you little or nothing about trademark rights in other countries.

If new branding will be used in multiple countries or geographic regions, a trademark search (or series of searches) should encompass each and every one of them. Even if a trademark will not be used in other regions immediately, if expansion to them is likely or merely possible in the future it may help to search those countries too. This can allow evaluation of possibilities for later geographic expansion. This avoids being boxed-in and finding later expansion stymied.

For very substantial brands, with large advertising campaigns planned, it may also be worthwhile to search other jurisdictions to identify potential priority claims. This is because an international treaty may permit an application to be filed in a country of interest that claims priority to an application filed in another country up to six months earlier. In other words, this means searching in countries beyond those you plan to use your mark in. Although this sort of step is often skipped due to the effort and cost and the relative infrequency of such priority claims causing problems.

The type or scope of searching that fits your needs will depend on the nature of the proposed use of a trademark and the particular legal questions you want to address. And your budget. But bear in mind that a search alone tells you little or nothing unless the search results are analyzed by knowledgeable trademark counsel. It is all too easy to misunderstand the significant of bare trademark search results if unfamiliar with trademark law. You need a legal opinion too. Running a few queries yourself in a trademark database and (supposedly) getting “no results” may only provide false confidence.

Another way to think about all this is to ask, “How difficult would it be to later re-brand later?” If the answer is “difficult”, then a broader and more thorough search and analysis is worthwhile. When you are not well positioned to pay legal fees to defend yourself against infringement allegations, or just the thought of having to do this later seems unpleasant, then a search is one way to try to reduce those risks upfront. These things point to doing more than a cursory knockout search. Yet a slogan or tagline might be easily dropped or changed in some situations, unlike a primary brand.

More limited searches are better suited to low-stakes situations. For instance, when you are only concerned with registrability in the short term, such as for a planned intent-to-use (ITU) trademark application, then a knockout search may be minimally adequate. During examination of new U.S. federal trademark applications, the U.S. Patent & Trademark Office (USPTO) only looks at prior federal registrations and pending applications. They do not search for unregistered “known marks”. So a knockout search is similar in scope to searching done by a trademark examiner. But a knockout search will usually not provide a very good picture of all possible oppositions or cancellations sought by others against your desired trademark registration.

Have a Backup or Alternate Mark In Mind

It is quite common for a trademark search to reveal a potential problem with a proposed mark. For that reason, it is often helpful to conduct searching against a list of multiple candidate trademarks. These could be ranked in preferential order. Having a list of multiple marks searched and then legally reviewed in parallel or in preferential sequence increases the chances that at least one of them will be available and registrable. This can be especially beneficial when clearing a mark planned for use in many different countries or regions.

Of course, working from a list of multiple candidate trademarks makes the most sense before you have committed to certain branding. That can be challenging for many businesses. There is a tendency to grow attached to desired branding. But the pain of giving up on a favorite only gets worse if you have to re-brand later because of a problem.

Caution: No Search is Perfect

No matter how thorough, no search can eliminate all risk when selecting and adopting a trademark. Searching is always imperfect and can only serve to minimize risks. Trademark rights in the United States arise primarily from use and not mere registration. So it is possible that someone is using the proposed mark (or a similar one) in connection with the same or similar goods and/or services, but that use may not be detected in the search. That could be because the prior user did not seek registration or a prior mark was not listed in any of the resources or databases that the searcher used.

Also, when it comes to the analysis of search results, there can be differences of opinion. A prior user or registrant noted in this search may object to use or registrations of a proposed mark. Such objections may be questionable or even baseless at times. That is sometimes called trademark bullying. Or there may be facts that influence the ultimate outcome of a dispute that the searcher or attorney was not aware of.

The main takeaway is that just because a search does not identify any problems does not mean that an infringement allegation or refusal of registration is impossible. The right search and a competent legal analysis can still be quite useful and valuable.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

Do I Need a Trademark Search?

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When adopting branding, such as a brand name or logo, people sometimes wonder, “Do I need to conduct a trademark search?” Or, “Is this trademark available?” These questions can arise when considering filing a new trademark application. Or they can come up when adopting branding for new products or services being offered for sale. In either context, this question should be considered at some level. What follows is more detailed information about whether and when a trademark search is worthwhile. Another article covers how to structure a trademark search.

What a Trademark Search Can Tell You

Some brand names and logos are already taken by others. In fact, it is quite common that when you have a “great” branding idea someone else has already had the same idea or a similar one. A trademark search can help address either or both of the following questions:

  • Will proposed branding create a significant risk of infringing someone else’s existing trademark?
  • Will a given proposed trademark be registrable?

The first question is about trademark clearance or freedom-to-operate. It is about assess risk and trying to avoid infringement problems and disputes. The second question is about whether a given jurisdiction is likely to grant you a trademark registration. It is more about how protectable a proposed mark appears to be. Put another way, the second question can inform you about the scope of exclusivity potentially available under the proposed mark. But both questions are about trademark availability.

A single trademark search in a given jurisdiction can generally be used to analyze both of these questions. So one search should permit both legal questions to be addressed. But the scope and thoroughness of a search can vary.

What a Trademark Search Won’t Tell You

In the strict sense, simply searching for trademarks tells you very little. It will only produce a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Also, simply obtaining a list of prior trademarks will not tell you whether a proposed new mark is distinctive enough to serve as a trademark. And a search alone will not address other strategic considerations involved in trying to register a particular trademark.

After obtaining search results, it is necessary to further analyze whatever comes up in a search from a legal perspective. Anyone who does not understand trademark law will struggle to properly interpret what is or is not a problem when it comes to infringement risk and obstacles to registration. Self-serving bias is a common issue too. When you have a great branding idea, you might be biased against the notion that someone else already has a trademark that presents an obstacle to your business plans. This can turn into a matter of unreasonably splitting hairs over illusory differences. Or it can lead to incorrectly disregarding inconvenient or disappointing search results.

It helps to have a knowledgeable and independent expert analyze search results and provide guidance about registrability and/or any infringement risk. This kind of legal analysis goes beyond searching alone.

Which Region or Regions?

Trademark searches should be considered for each relevant region. That is because trademark rights are territorial. They exist only in particular jurisdictions, that is, in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. If new branding will be used in multiple countries, a trademark search (or series of searches) should encompass all of them.

Is a Search Legally Required?

In the United States, it is not required to perform a trademark search before applying to register a mark. So, it is possible to proceed without a search and take your chances. But it is a gamble.

But, on the other hand, investing considerable effort and resources into developing and advertising a brand only to find out later that it cannot be protected may lead to crushing disappointment. And it may result in wasted time and money. Having to rebrand later on after a problem arises is usually far more expensive than the cost of an initial search and analysis. On top of that, legal liability and even merely a cloud of uncertainty can have a terrible impact on a business, from disruption of daily operations to decreased valuation.

An early trademark search encourages adoption of a non-infringing and registrable mark from the start. The cost and burden to switch marks or re-brand generally increases over time. So even if a search is not mandated by law, obtain one along with a legal opinion still offer pragmatic benefits. Those steps can potentially avoid a lot of later headaches.

Didn’t I Already Take Care of This?

You still want a trademark search despite having registered a company or assumed name with a local government. The same goes for having already registered a domain name containing your trademark. The fact is that practically no screening is performed by the government or a domain registrar. They only care about such names having the slightest differences. Corporate filings and domain name registrations are accepted when there are only minor differences in terms of punctuation or a single different letter. That is not enough to avoid trademark problems. Trademark confusion and infringement (and/or cybersquatting) is still possible in those situations.

Small businesses often mistakenly believe that corporate and domain name filings insulate them from legal problems like trademark infringement. But they don’t.

When is a Search Needed?

In terms of timing, a trademark search should be performed before any new brand is adopted and used. In other words, the ideal time for a search is before you commit to a particular trademark and before you start actually using it. But searches can still be worthwhile later on. For instance, as usage changes to encompass different goods or services, or expands geographically, new issues might arise that call for a new or further trademark search. Special types of searches may also be useful during examination of a trademark application or in connection with a contentious proceeding.

Further, a trademark search is just snapshot at a given moment. Use of similar marks by others is constantly changing. Prior registrations are abandoned or cancelled, commercial usage changes, consumer perceptions evolve, and new brands are adopted by others. This means that trademark search results can go stale and lose relevance as time passes. Ideally, a trademark search should be performed close to when business and marketing decisions are made about the mark being searched. Old search results may not be reliable for a legal review much later in time.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A Trademarks

What Is the Federal Circuit?

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In the field of U.S. intellectual property (IP) law, there are often references to the Federal Circuit. What is the Federal Circuit? This brief article will explain it.

Overview

The United States Court of Appeals for the Federal Circuit, or “Federal Circuit” for short, is a U.S. Federal appeals court. It hears cases appealed from various places including U.S. federal district courts and certain Federal agencies including the U.S. Patent & Trademark Office (USPTO) and the International Trade Commission (ITC). It was created in 1982. It replaced and merged the prior U.S. Court of Customs and Patent Appeals and the appellate division of the U.S. Court of Claims, which no longer exist.

Jurisdiction

What makes the Federal Circuit rather unique is that it has exclusive subject matter jurisdiction for certain types of cases. (28 U.S.C. § 1295). In general, appeals in Federal cases are made to regional circuit courts. That is, federal appeals courts are mostly divided into geographic “circuits”. They hear appeals from lower (district) courts within their respective geographic areas. But, instead, the Federal Circuit hears appeals from any district court in the country relating to patents and certain other matters, as well as appeals from certain executive branch agencies.

Map of geographic boundaries of U.S. courts of appeals (and U.S. district courts)
tree graphic illustrating Federal Circuit jurisdiction

In particular, the Federal Circuit has exclusive appellate jurisdiction over all U.S. federal cases involving patents, plant variety protection, trademark registrations, government contracts, veterans’ benefits, public safety officers’ benefits, federal employees’ benefits, and various other types of cases. Appeals involving Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) decisions and patent and trademark prosecution (that is, cases related to the examination and granting of patents and trademark registrations) all go to the Federal Circuit. There are some exceptions, however. Cases involving assignments of patents may go to a regional circuit court instead. Trademark infringement matters are appealed from district courts to regional circuits, not to the Federal Circuit.

Conclusion

Because of the number of patent and trademark cases it hears, and its exclusive jurisdiction over cases involving U.S. patent laws, the Federal Circuit is important to know about in order to understand IP law in the United States. Federal Circuit opinions and orders (i.e., decisions in individual cases) can be found here, or via proprietary case reporter publications and databases.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A Trademarks

What Is a File Wrapper?

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A file wrapper, synonymously called a file history, is the written record associated with a given patent or trademark application and any resultant granted patent or trademark registration. It is the official record for a given matter. Generally, the file wrapper includes more information than is formally published by a patent or trademark office in patents, published patent applications, or trademark registration certificates.

The sorts of materials maintained in file wrappers, the period of time those materials are retained, and the level and ease of public accessibility to them varies by jurisdiction. For instance, in the USA, patent application information is kept confidential initially and generally only made publicly available for published applications and granted patents, with pending applications normally published 18 months from the earliest filing or priority date (subject to potential non-publication requests). (35 U.S.C. § 122).

How & Where to Obtain a File Wrapper

In the past, file wrappers were only available as hard copies in on-site storage at official offices. Today, many patent and trademark offices make at least some file wrapper contents available online—though whether online versions are the official ones or not and whether the online versions are complete or not are questions that can vary by jurisdiction. File wrapper materials are generally also available as certified copies that must be specially ordered (and may have to be physically mailed). Usually a given file wrapper must be obtained from the relevant patent or trademark office that maintains it, although centralized file wrapper access for a few global patent offices is available.

The U.S. Patent & Trademark Office (USPTO) has “Patent Center” and Trademark Status and Document Retrieval (TSDR) online portals. Very old materials are not always available through these portals. Moreover, some materials are not accessible through Patent Center to the general public, like copies of non-patent literature. The USPTO also has a separate Certified Copy Center that allows officially-certified copies of file wrappers or specific documents from them to be ordered, upon payment of required fees. Certified copies of file wrapper may include materials that are not otherwise publicly available, and include official seals and signatures attesting to their authenticity.

The European Patent Office (EPO) has a European Patent Register with file wrapper information. These materials are also accessible via the Espacenet portal, by clicking the “Register” link within a given record.

There are also separate systems for file wrappers for PCT international patent applications and Madrid Protocol trademark registrations. These are the Patentscope and Madrid Monitor online portals maintained and administered by the World Intellectual Property Organization (WIPO). It is also possible to order certified copies of Madrid international trademark registration materials from WIPO, or for applicants to order certified copies of PCT applications from individual PCT receiving offices.

Additionally, Global Dossier portals provide access to file wrapper contents from a number of the most active patent offices worldwide, together with machines translations. Global Dossier has gone by other names in some jurisdictions, like “One Portal Dossier” in Japan and South Korea. Because of the availability of machine translations, these portals can be highly convenient for gathering information about foreign patent applications in other languages. But some documents may not be immediately available through these portals, either due to technical glitches or database update lags.

Why Might You Need a Wrapper?

There are many reasons a file wrapper might be consulted. For instance, they can provide a record of the prosecution history that may inform the status or interpretation of something related to a given patent or trademark. A record of official actions like rejections/refusals and/or applicant amendments or arguments might be found in the file wrapper. Particular documents within a file wrapper might be relied upon for various purposes, or might be needed for submission in other contexts. For instance, in U.S. patent law, the file wrapper might be relied upon for claim construction, doctrine of equivalents analysis, inequitable conduct inquiries, and more.

File wrapper materials in informal, online formats might be sufficient for many purposes, and may be free and easy to access. Information materials might be used for competitive intelligence purposes or as a reference example for work on an unrelated matter, for example. Certified copies or an entire file wrapper, or one or more selected documents from it, might be required for certain formal uses, such as to make priority claims in foreign applications or to be relied upon in legal proceedings where authentication of the materials is important.

The legal important of a file wrapper often depends on the substantive law of the relevant jurisdiction. Under U.S. patent law, prosecution history estoppel or prosecution disclaimer found in a file wrapper might arise and bind the patentee. But many other jurisdictions do not have any such patent prosecution estoppel doctrines, making file wrappers less formally significant. And, moreover, the USPTO does not accept formal file wrapper estoppel in trademark matters.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen
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Patents Q&A Trademarks

What Is Prosecution History?

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For patents and trademarks, the term “prosecution history” refers to the back and forth between an applicant and the patent or trademark office. It includes submissions by the applicant, starting with an original application and extending though any amendments or arguments the applicant might later make during official examination of the application. It also encompasses official communications, like office actions, and the particular rejections, objections, refusals, and other notifications that may be contained in them. Oral communications like interviews are a part of it too.

But “prosecution history” refers to more than just a set of documents or particular communications. It is a blanket or umbrella term that refers to all the actions and events involving the patent or trademark office from the time a new application is filed to through grant or registration and even beyond that to post-grant or post-registration actions involving corrections, maintenance or renewals, and the like. So, even if a particular document is purged or deleted or never made part of the permanent record, such a document and the events surrounding it are still part of the prosecution history.

Prosecution histories are important for many reasons. As reflected in “file wrappers,” they are often consulted to understanding the status of a pending application or of a granted patent or issued trademark registration. They can provide insight into why a patent or trademark registration was issued in a particular form, or why a application was abandoned. Sometimes events or materials from the prosecution history of a given patent or trademark registration can even impact the scope or validity of enforceable legal rights.

The prosecution history tends to matter most where prosecution history estoppel or prosecution disclaimer might arise and legally bind the applicant later on. In the U.S., it tends to be more important for patents than for trademarks. Many other countries have different laws that make prosecution history less consequential.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

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Copyrights Q&A Trademarks

How Should Advertising Legal Review Occur?

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It is beneficial to have advertising undergo legal review prior to release. Such review should generally cover a number of different concerns, including false advertising, trademark infringement, right of publicity/privacy, copyright infringement, special considerations for regulated industries (i.e., industry-specific laws and regulations requiring certain disclosures, etc.), medium-specific requirements (for commercial email, phone marketing, TV/radio broadcasting, etc.), and more. The following addresses legal treatment in the USA. Laws may differ in other countries. Legal review of particular advertisements should be directed to a knowledgeable attorney in the relevant jurisdiction(s).

Establish Advertising Review Procedures

In general, have a procedure for advertising review before that advertising is released. Be clear about how such protocols apply to business-related social media or other online accounts, which are usually just another form of advertising. Also be clear how these procedures apply to vendors, consultants, and spokespersons operating on your behalf. You very well may be responsible and liable for their actions, and you should not assume they will automatically comply with the law or your own requirements. Periodically check to see that these protocols are actually being followed.

Make sure that appropriate documentation is created and maintained. For instance, require sufficient record-keeping to preserve any licenses, authorizations, releases, objective evidence supporting ad claims, and the like. Retain those records for a sufficient time and in a place where they can be located (by others) if and when needed. Online advertisements may be active for many years, and various portions of ads might be reused for later ones, so such records should ideally be kept as least as long as as the advertising material is in use.

The scope and thoroughness of advertising reviews should take into account the prominence and scope of the advertising. Major mass media ad campaigns deserve extra attention. Also, anything that “feels” questionable, or seems to push boundaries of legal or ethical acceptability, should also receive appropriate review. Lastly, focus should be drawn to things that are most material to prospective consumers.

Many laws regulating advertising exist because businesses often have incentives to be less than truthful or accurate. The point of marketing is to create demand, which can easily turn into a matter of lying or dubiously creating meaning out of nothing. Moreover, marketing and sales people, as individual employees or vendors, may feel pressured to put out legally prohibited or at least questionable content to satisfy management or others. People may also argue for a race to the bottom, pointing to questionable if not clearly illegal conduct by others as justification for doing the same—or worse. On top of that, some illegal advertisements go unpunished simply due to lack of resources by enforcement agencies and there may be arguments to try to get away with something on that basis. Advertising reviews should allow an opportunity to put a halt to efforts that run afoul of the law or that simply put a business in an undesired light (even if legal).

Trademarks

Trademarks should be legally cleared as part of initial selection. That is, make sure you select a mark that will not create a likelihood of confusion with one already in use by another entity. Trademark infringement can arise even if the marks are not identical and even if the goods and services are not the same. This is the best way to avoid infringement allegations. Of course, this is less about use of a mark in a specific advertisement than about overall branding strategies.

Another issue to consider in any given ad is proper usage of your own trademark(s). This is about maintaining rights in your own mark(s). Use your mark(s) consistently, as a source-identifying trademark (as an adjective rather than a noun or verb), and use appropriate symbols (®, ™, SM) or comparable trademark identifications (like “Reg. U.S. Pat. & Tm. Off.”). Even if marketing folks think it is appealing to misuse trademarks in an ad, doing so can damage trademark rights or even result in loss of trademark rights—sometimes called genericide.

The next issue to consider is any usage of someone else’s trademark(s). While comparative advertising is permissible, and nominative or descriptive fair use may apply, intentionally using someone else’s trademark or something confusingly similar to someone else’s mark should receive extra scrutiny. Use of comparative advertising has marketing benefits but also tends to heighten the risk of a legal dispute under trademark and/or advertising law.

To help reduce risks associated with comparative advertising, you should at a minimum make sure statements are not false or misleading (including both express statements and any implied meanings even if not the only possible interpretation), material information is not omitted, comparisons are fair (and not “apples to oranges”), and material support for claims is documented before making them. Consider also the context, and avoid anything that makes a competitor’s trademark more prominent than your own or that otherwise may confuse consumers about the source of the goods or services.

Also think about what you would think if the situation was reversed. That is, what if your competitor was using your trademark in the way you plan to use your competitor’s mark? Would you have concerns?

“Dilution” is another area of law that gives special additional rights to famous brands. Tarnishing or blurring the rights of a famous brand can give rise to liability. Advertising that looks like it rides on or nips at the coattails of a famous brand could give rise to dilution issues, potentially, even if it would not raise trademark concerns for an ordinary, non-famous brand.

False Advertising and Truth in Advertising

The Federal Trade Commission (FTC) has national authority to prevent unfair methods of competition and unfair or deceptive acts or practices in or affecting interstate and foreign commerce. Federal trademark law also allows private businesses to sue on certain false advertising claims. Additionally, states have various advertising, unfair competition, and deceptive trade practices laws. Most of these laws are somewhat open-ended. But, in general, they can apply to advertising and generally require that ads not be unfair or deceptive/misleading.

The standards for truthful advertising can be a little fuzzy. These matters are prone to judgment calls. But some of the most basic considerations and requirements are as follows (see also FAQs from the FTC).

Advertising claims must be substantiated by evidence in advance. It is not sufficient to make a statement based on a hunch that you can (try to) justify it later if needed. This is because advertisers imply that there is a reasonable basis for such a claim. Even statements in ads that later turn out to be true are legally prohibited if there is not a “reasonable basis” for the claims, meaning there is objective evidence that supports the claim. Tests or studies used to support advertising claims must be conducted using methods that experts in the field accept as accurate. They also must be commensurate with the advertising claims actually being made.

Mere “puffery” that reflects a purely subjective claim that consumers would not take seriously/literally is generally permissible without substantiation. For instance, a claim to offering “the best cup of coffee in the world” or that “our widgets are excellent” is often acceptable because consumers will recognize it as a purely subjective statement of opinion. But a claim with an objective (factual) component like “rated the best by most doctors” or “more consumers prefer our widgets to any other” or “our widgets last longer than the most popular brands” would not be seen as mere puffery by consumers. These latter types of objective advertising claims must be both true and substantiated. Context can also matter in these distinctions.

The FTC especially scrutinizes health & fitness and safety claims, for instance, and advertising directed at children (especially those under age 13) is also regulated more. Claims and implications that products are made in the USA, and “green” or environmental-friendliness claims also tend to be areas of frequent concern. Competitors may also take issue with false or misleading comparative advertising claims, which are discussed above with respect to trademarks. Certain types of claims may also implicate other agencies or laws, such as the Food & Drug Administration (FDA), which has other requirements for certain drugs and cosmetics and associated advertising.

Warranties and guarantees are subject to special legal requirements. Some of these pertain to how they are advertised. Others pertain to disclosure requirements for stating the terms and conditions as well as making those available pre-sale.

Endorsements and testimonials, including those by “influencers”, can raise many questions about whether their use is truthful and not misleading. The FTC provides an endorsement guide that is worth consulting. Some common concerns involve failing to disclose that someone is a paid endorser/influencer or misleading consumers about an endorser’s use or familiarity with the product or service in question (or lack thereof).

Copyrights

Copyright clearance is an important part of advertising review. Materials used in ads like photos, graphics, text, etc. that are not completely original creations require permission to be used. Unauthorized use may constitute copyright infringement. Copyright clearance should involve obtaining and documenting—in writing—authorization for use of any copyrighted materials that are used, including legally reasonable verification that the materials are uncopyrighted or have fallen into the public domain.

There are many nuances about who owns copyright and what is permissible to do with someone else’s copyrighted work. When vendors or consultants are involved, and they often are when it comes to ad copy, you do not automatically own the copyright just because you paid for it. There can be implied licenses. But new, unexpected, or gradually expanded use might exceed an implied license. Also, there are many myths about what is legally permitted. For instance, there is no bright-line legal rule that says changing 10% of a copyrighted work or four things in a work—or some other percentage or number—avoids infringement liability.

When you get a license, make sure the scope covers your intended use. It is fairly easy to slip up and get the wrong license, or misunderstand the scope of the license you paid for. Also, consider getting an indemnity from the party licensing materials to you.

Fair use may apply, sometimes. But that is a context-specific, multi-factor analysis without any bright lines. And in the advertising context, the commercial nature of the use is a factor explicitly counted against a finding of fair use by statute. It is true that parody and criticism can occur even in a commercial advertisement as a fair use. Yet such things may only support fair use if they parody or criticize the particular work in question as opposed to merely using it without authorization to parody or criticize something else. There is a tendency for claims of “fair use” to be overused and unjustified in the context of commercial advertisements. Many times, you simply need authorization, such as a paid license.

And, no, just because something was available on the Internet does not mean that is can be freely used in an advertisement.

Rights of Publicity and Privacy

The rights of publicity/privacy are potentially implicated any time advertising materials contain a person’s name or likeness without their consent or authorization. These issues most often arise in the context of the unauthorized commercial use of photos or videos that depict famous people or celebrities or that thrust a private person into the public spotlight.

Review of advertising should include verification that their is an appropriate release from any persons whose name or likeness is used. A release of this sort is sometimes called a “model release”. Although in other industries this might go by other names or be included within another agreement, such as a “materials release” in film or TV productions.

Bear in mind, however, that having a copyright license to a photo, video, or the like is not enough, alone, to clear any right of publicity/privacy issues. These releases and copyright licenses often need to come from different people. For instance, a copyright license or assignment for a photograph would often come from the photographer while the publicity/privacy release would come from the person(s) appearing in that photograph (or a parent/guardian).

Some states have laws limited rights of publicity for deceased people. There can also be exceptions for references to public figures, although those exceptions probably will not apply to commercial advertisements that give the impression of an endorsement or approval.

If obtaining stock images, consult the terms of a license to see if a model release is included. If not, use of the stock photo may still give rise to issues. For example, sometimes a minor celebrity’s likeness might appear in a stock photo unintentionally. Or, as another example, if your intended use would tend to portray the person depicted in a false light, such as implying that the person has a disease, committed wrongdoing, or would embarrass them, there may be a claim for invasion of privacy or a similar “false light” claim.

Disclaimers

A disclaimer may be helpful but is not a “get-out-of-jail-free” card. Use of a disclaimer will not undo otherwise false, misleading, or confusing ad content. That is to say a disclaimer is only helpful to the extent it is actually effective on the viewing audience. This is something you can generally only speculate about in advance. Accordingly, while a disclaimer may be worthwhile, it may be a helpful exercise to ignore any such disclaimer as part of an initial legal review and consider the other content of the advertisement as if the declaimer was not present at all.

Email Advertisements and Anti-SPAM Law

The CAN-SPAM Act governs commercial advertising emails. Those are emails whose primary purpose is commercial. Emails whose primary purpose is to provide transactional or relationship content (which facilitates an already agreed-upon transaction or updates a customer about an ongoing transaction) or other content (which is neither commercial nor transactional or relationship, such as political campaign information) is not covered by the federal CAN-SPAM laws. States also have various email marketing laws but those are mostly preempted by federal law and therefore inapplicable to commercial emails (except for fraud and deception issues).

General requirements for compliant email advertising, as explained in an FTC guide, include:

  1. Accurately identify the person or business who initiated the message and do not use false header information
  2. Don’t use deceptive subject lines
  3. Clearly and conspicuously disclose that your message is an advertisement (not required if the recipient has previously expressly opted-in to such emails)
  4. Include your valid physical postal address
  5. Include a clear and conspicuous explanation of how the recipient can unsubscribe (opt out) from future messages, such as a reasonably prominent, working “unsubscribe” link
  6. Honor unsubscribe (opt out) requests promptly
  7. Make sure vendors and employees are following the law

Some additional guidance is available in the FTC’s “Candid answers to CAN-SPAM questions.”

One area that can give rise to issues involves use of purchased email lists. Despite the fact that vendors sell them does not mean that it is legal for you to use them in any and every possible way for mass email marketing purposes. It still matters how you send email messages and the specific content of those messages. For instance, use of a purchased list should not override a prior opt-out request. But, on the other hand, use of purchased email lists is not expressly prohibited under CAN-SPAM and prior consent (that is, an opt-in) is not required, so long as the sender (initiator) of the message clearly and conspicuously identifies a commercial email as an advertisement.

In practical terms, mass email service providers may have their own policies that are more restrictive that any applicable laws. Such providers are sensitive to spam reports and may take action to block you or terminate your account if too many complaints are received. That could happen even if complaints fail to allege anything illegal or are baseless (such as a spam report by someone who expressly opted in). For instance, some providers prohibit the use of their services or platform to send emails to purchased email lists—even if laws do not specifically prohibit doing so.

Phone and Broadcast Advertisements

The Federal Communications Commission (FCC) has authority over phone and TV/radio broadcasts. There are additional rules and regulations that apply to advertisements and commercial messages in those formats. For instance, randomly dialed robocalls are generally prohibited. In addition, the FTC maintains a “do not call” registry for telemarketing that must be honored.

Consumer Privacy and Handicap Accessibility

There is also a growing body of laws regulating collection and retention of consumer data, particularly at the state level (e.g., California’s CCPA) and in foreign countries—like GDPR in Europe and PIPEDA in Canada. But some federal laws may apply too. These laws can be implicated by online advertising, for instance. Collection and use of personally identifying consumer information should be scrutinized. In some cases, even laws involving biometric information privacy could be implicated. The sale, purchase, and/or exchange of consumer personal information to or from brokers, business partners, or other third parties and the collection of online ad or web page tracking data are of particular significance here.

Additionally, consider whether online advertisements implicate laws requiring accessibility for persons with disabilities. These can arise from state or federal law, potentially. General online accessibility standards and best practices are useful here, and might be worthwhile to implement even if not strictly required by law for certain commercial advertisements. Bear in mind, however, that “accessibility” is something of a moving target and is not defined by bright lines.

When working with vendors and contractors, be aware that they may try to push compliance burdens onto you via contractual terms. This might even extend to situations where vendors are selling services or tools that cannot conceivably be used in a legally compliant manner, or at least not in ways with any practical value to the advertiser.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

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Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

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Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document.

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b)) and the U.S. Copyright Office (in Compendium 2308.1) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

  1. Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
  2. Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
  3. Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

Scanned excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials
Excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed (nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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