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.”
Make Sure There Is Evidence Of A Bona Fide Intent To Use Before Filing That Intent-To-Use Application!
In the recent case of MZ Berger & Co. v. Swatch AG, the US Court of Appeals for the Federal Circuit affirmed a decision by Trademark Trial and Appeal Board (TTAB) to sustain an opposition to MZ Berger’s intent-to-use application for the trademark “iWatch.” By way of background, an intent-to-use application allows an applicant to essentially reserve a trademark so long as it has a “bona fide intent to use” the trademark in the future. The issue that has arisen in numerous cases over the years is what exactly is required to establish the requisite bona fide intent to use.
In the MZ Berger case, the evidence showed that MZ Berger only had an “aspiration” to reserve trademark rights in the iWatch name in case in decided to develop an associated watch. MZ Berger had never sold watches before, and there was no evidence that MZ Berger had ever taken any steps towards developing a watch product. The Federal Circuit therefore concluded that there was no evidence of a bona fide intent-to-use the iWatch mark.
The take-away from the MZ Berger case is that a mere subjective intent to use a trademark in the future is not a sufficient basis to establish a bona fide intent to use. Instead, if an intent-to-use application is challenged, the applicant must be able to produce objective evidence showing that concrete steps had been taken as of the date the application was filed to start commercializing the product or service to be marketed and sold using the proposed mark.
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.
Trademark Owners Must Always Consider Protecting Rights Outside the United States (Subtitled Anheuser-Busch Does Not Own the Rights to “Budweiser” in Portugal)
Any business owner that has spent the time and money to develop a trademark MUST consider protecting its trademark rights in countries other than the United States if there will be foreign sales.
The need to do so was highlighted once again by recent litigation proceedings in Portugal over ownership of the rights to the Budweiser trademark for beer. Given the immense fame and popularity of the Budweiser brand of beer throughout the world, most people would think it would be a no-brainer that Anheuser-Busch would own rights to the Budweiser mark everywhere. Not so.
Portugal’s Court of Appeal recently ruled that Anheuser-Busch cannot secure registrations for the Budweiser mark in Portugal because a company named Budejovicky Budvar NP already registered the mark there. (As a side note, these brewers have been battling over the “Budweiser” name for decades. Both companies began brewing beers named after the Czech town of Ceske Budejovice in the 19th century.) By its ruling, the court ruled that Anheuser-Busch had failed to demonstrate that its use of Budweiser was well-known in Portugal.
As another side note, Anheuser-Busch’s experience in Portugal parallels our firm’s personal experience litigating trademark rights in Portugal. Several years ago, we represented a very well-known skateboard shoe company in its trademark matters, including foreign distribution agreements and foreign trademark protection. While we were in the process of obtaining foreign registrations, one of our client’s distributors registered our client’s trademark in Portugal and then used its registration to have tens of thousands of pairs of valuable shoes impounded at the port of entry into Portugal. Even though our client’s trademark was very famous throughout the world, we were not able to overcome the distributor’s registration so our client had the abandon the entire country of Portugal as a potential market.
What many trademark owners do not realize is that there is a big difference between how trademark rights are acquired in the United States and how they are acquired in many foreign countries. In the United States, priority of rights arises from priority of use, not priority of registration in most cases. In contrast, in many foreign countries, the first to file a registration application can acquire priority of rights even though it may be the junior user.
Any trademark owner contemplating foreign sales should consult with trademark counsel about possible foreign protection of trademark rights. The good news is that it currently is significantly easier to obtain foreign protection that it used to be. In the “old days,” a trademark owner often had to file individual applications in the countries where it wanted protection. Now, various international treaties have significantly streamlined the process.