Launching A Website Or Commencing Advertising By Itself Is Not Sufficient Use In Commerce Of A Service Mark
Trademark owners often mistakenly assume that they merely have to put up a website or commence advertising to gain trademark rights in a service mark used on the website or in the advertising. By its March 2015 decision in Couture v. Playdom, Inc., the Federal Circuit Court of Appeals confirmed that such activity, without actually providing the services offering on the website or in the advertising, does not constitute sufficient trademark use.
In Couture, the Federal Circuit tackled the question of “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act§ 45, 15 U.S.C. § 1127.” Section 45 provides that a service mark is used in commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State” (emphasis added). Citing decisions in the Second, Fourth and Eighth Circuits, the Federal Circuit held that Section 45 requires the actual rendering of services for there to be use in commerce.
The Couture decision highlights what can happen when a trademark owner does not do sufficient strategic planning. The trademark owner in Couture filed its application in May 2008 and registration was granted in January 2009. The trademark owner’s application was under Section 1(a) of the Trademark Act (i.e. based on actual use) even though the trademark owner had only placed the service mark at issue on a website that was “under construction” at the time of the application and registration. The trademark owner did not actually begin rendering services until March 2010. Under such circumstances, the trademark owner could have better protected his trademark rights by filing an application under Section 1(b) of the Trademark Act based on an “intent to use.”
Trademark Office To Begin Issuing Courtesy Email Reminders Of Registration Maintenance Filing Deadlines
The United States Patent and Trademark Office (PTO) has announced that it will begin issuing courtesy email reminders of post-registration maintenance filing deadlines starting in January 2015. The PTO will send such email reminders to registration owners who have (1) “live” registrations on the date of sending; (2) provided a valid email address to the USPTO; and (3) authorized email communication. No reminders will be sent by regular mail, and no follow-up emails will be attempted for undeliverable emails.
The courtesy email reminders will identify the registered mark, corresponding serial and registration numbers, the date of registration, and the owner(s) of record in the PTO’s trademark database. The reminders will also identify the maintenance filing currently due (e.g., Section 8 declaration, Section 71 declaration, or Section 8 declaration and Section 9 renewal application), along with the anniversary filing deadline, the grace period deadline, and the filing fee per class.
The courtesy email reminders will be sent on the first day of the statutory filing period for the maintenance filing (e.g., 5th year anniversary date, 9th year anniversary date, 19th year anniversary date, etc.) to all email addresses of record. The reminders will be sent to both primary and secondary email addresses.
Registration owners and their attorneys of record should use the PTO’s Trademark Electronic Application System (“TEAS”) to verify, update, add, or delete email address information, as necessary, to ensure receipt of the reminders by the registration owner(s) and any legal representative that elect to receive them.
Clients who have developed trademarks comprised of words in a particular design often ask us if they should seek registration of the design in black & white or in color. The answer is that it depends on whether color is a critical feature of the design mark. If the color used in the design in and of itself can serve as an indicator of the source of the goods or services to be marketed and sold under the design mark, then registration should be sought for the colors featured in the design. (Think brown and the UPS logo, pink and the T-Mobile logo, red and the Target logo, etc.) In fact, one seeking a federal trademark registration must specify whether color is a feature of the mark sought to be registered.
The problem with seeking registration of a particular color is that the protection that results from the registration could be limited to the colors used in the design. This is not automatically the case, and the analysis depends in large part on how distinctive the underlying design may be – the more distinctive the design, the less important a particular color may be.
Because claiming color as a feature of a mark sought to be registered may act to limit the protection that results from the registration, we generally advise against claiming color as a protected element unless the color acts as a source indicator. If the trademark owner can afford to file 3 separate applications for its design mark, we recommend seeking registration: (i) for the word aspect of the mark standing alone; (ii) design mark in black & white or grayscale; and (iii) the design mark in color. In determining which of these three approaches should be employed, it is critical to consider what registration(s) the specimens of use will support.
Before a trademark owner proceeds to seek registration of a design mark, it is imperative that the owner seek the advice of trademark counsel to determine the best strategy for registration because registration of a design mark can present a number of thorny issues.
The question posed by the title of this post is a little facetious, since the federal Patent and Trademark Office (PTO) has an excellent online filing system that has simplified the mechanics of filing trademark applications via the Internet. So theoretically, anyone can file a trademark application with the PTO. But just because any person or business can file a trademark application online does not mean they should file their own trademark application.
On the contrary, the legal issues that underlie an application for a federal trademark registration can be quite complicated and can require a detailed knowledge of trademark law and procedure. So, before you decide that filing a trademark application simply is a matter of filling in a few blanks in the PTO’s online system, see if you understand and can address the following issues:
1. The PTO’s online trademark application process provides for the filing of a TEAS application or a TEAS-Plus application (which is $50 cheaper than the regular TEAS application). Do you know what these forms mean and what you need to do to qualify for use of the TEAS-Plus form? Do you know what rights you may give up if you use the TEAS-Plus form instead of the TEAS form?
2. You have to specify what kind of mark you are applying for – a standard character mark or a special form mark? Do you know which type of trademark you have? Do you know why it might be preferable to file for one form of mark or another?
3. The design or logo you are using as a trademark is in color. Do you know whether you must file for registration of a color mark and, if yes, how to do it. Do you know when and why it might be preferable to seek registration for a black & white mark instead of a color mark?
4. The trademark laws allow for registration on an “actual use” basis or an “intent to use” basis? Do you know the difference between the two? Do you know what kind of use is required to file an “actual use” application? Do you know what the date of first use means/is?
5. You must provide a specimen of use in connection with filing an actual use application. Do you know what kind of specimen you must submit? Do you know what to do if the PTO rejects your specimen?
6. Trademarks are registered according to “International Class.” Do you know what this means? Do you know how to figure out what International Class covers your trademark. Do you know what to do if the goods or services sold using your trademark fall into different classes? What if you started using the trademark with different goods or services on different dates?
The foregoing is just a short list of some of the issues that have to be addressed in filing a federal trademark application – and this list doesn’t even touch on what happens when the PTO sends a written communication (called an “office action”) that identifies possible problems with your applications.
To paraphrase a well-known saying, if you think filing a trademark application is easy and is something you can do yourself, then you don’t know what you don’t know. The bottom line is that trademarks are too valuable for a person or business to screw up the application in order to save a few hundred dollars by trying to do it themselves. We accordingly highly recommend you consult with an experienced trademark professional if you have a trademark for which you want to pursue registration.