Stemer Law's Sarah Stemer Quoted In Law360 Article, In Response to IP Trolls

The article entitled ‘We’re Not Trolls,’ Bong Co. That Filed 850 IP Suits Tells Judge” can be accessed here.

Indeed, a Bong Company filed about 850 federal trademark infringement and counterfeiting cases in various districts around the country, including 45 in the District of Colorado. Unfortunately for Plaintiffs, both Stemer PA and the District of Colorado caught wind of the mass of filings. In response, Federal Magistrate Judge Neureiter issued an Order to Show Cause admonishing that problems seen in other similar filings “will not be tolerated in the District of Colorado.” The Order also set a hearing requiring Plaintiff’s counsel and a corporate representative of Plaintiff to appear in person, which took place last Tuesday.

Stemer, PA represents two of the Defendants in two different cases, so I appeared in person at the Federal Courthouse in downtown Denver. First, the Plaintiff’s attorney took the podium to explain their position. Notably, he claimed he had never heard of what an IP troll is, then proceeded to call the owners of the mom-and-pop smoke shop Defendants, who maybe sold a handful of counterfeit products on accident, “scofflaws” and “ne-er do wells” who are part of a “criminal enterprise.”

In response, I took the podium and explained that, among other things, “filing a complaint with copy-paste complaint allegations and then robo-filing them is pretty much the definition of what a troll does," which was reported in the Law360 article.

I meant every word.

I agree that it was, as another Defense attorney said as he left the courtroom, “one of the funnest days in court I have ever had.” Joking aside, these are serious matters for defendants and it is my hope is that we are back on track to litigate toward a justifiable result. While it is our fundamental belief that everyone should have equal access to the legal system, no one should be allowed to abuse it.

Well, Adidas Filed an Opposition against Black Lives Matter: A Quick Note about Choosing Your Battles

It’s not everyday that we see such newsworthy activity in the Intellectual Property world.

Last week, adidas, AG, adidas International Marketing BV (“Adidas”) filed an Opposition in the Trademark Trial and Appeal Board (“TTAB”) against registration of an application filed by Black Lives Matter Global Network Foundation, Inc. (“BLM”).

The BLM logo that Adidas objected to is quite literally BLM’s logo. Here it is, in case you need a refresher:

According to Adidas, that logo is so similar to the Adidas “Three Stripe” logos, that it will likely cause consumer confusion as applied to certain goods and services listed in BLM’s application. The alleged offending goods include apparel and bags, which, given the magnitude of trademark protection that Adidas has over that type of product, might be a loosely plausible argument. Unfortunately, Adidas did not stop there. They also said that BLM should not be able to register their logo for “Promoting public interest in and awareness of topics of interest to those in the fields of activism and community organizing in the Black community…”

Not a good look.

Whether you are an international corporation, mom-and-pop shop, non-profit, or individual person, you should have the right to enforce your trademarks. However, corporations and their attorneys need to be increasingly more careful about the message they are sending.

Social media is changing the game - court filings and threatening correspondence can be shared at the speed of light, by nearly anyone with internet. Gone are the days when you can simply copy and paste a cobbled-together argument and send it out without second thought.

Public outcry can sink generations of goodwill in one 24-hour news cycle. Even if you set aside personal morals and remain pragmatic, that goodwill is something to keep in mind.

As for the Adidas debacle, not surprisingly, they dismissed the Opposition two days later. Two days too late in this law blogger’s opinion.

18 Reasons You Should Register Your Trademark

Consulting with business owners and clients over the years, I have noticed that a lot of people delay filing an application for registration of their trademark. Some even actively avoid it. After all, there is no requirement to register a company or brand name, and the process can seem intimidating and costly. Regardless, there are several reasons to file an application for registration of a trademark in the US Patent and Trademark Office (USPTO).

1. It will act as a deterrent. Registration of a trademark will act as a deterrent against someone else developing or using the same or a similar trademark. Details regarding a registered trademark are easy to find on the USPTO database, so most anyone developing a brand can find your registration, prompting them to choose another name. Seeing a brand or company on the registry will let someone know that you are serious about your brand and intend to protect it.

2. It is easier to stop an infringement. While brand owners, both registered and unregistered, have recourse against infringement of their trademark, approaching an infringer with a registration in-hand makes stopping them a lot easier. Generally, the first step in stopping an infringer to send them a Demand Letter or Cease and Desist Letter. The stronger the letter, the more effective the letter is. It goes without saying that having a registration makes the letter stronger.

3. Retail anti-infringement services and Brand Registration. Online retailers such as Amazon.com or Alibaba.com actively monitor for infringement and counterfeiting. They also allow trademark owners to submit notifications if they identify infringing activity. Activation of and participation in these services requires a trademark registration or application. The much sought-after Amazon Brand Registry will look for a national registration or application before including you in their roster.

4. Social Media anti-infringement services. Meta FKA Facebook and Instagram have similar services, where if you send them a registered trademark, they will quickly remove infringing posts or activity.

5. US Customs and Border Patrol (CBP) registry. Trademark owners can place their trademark on the US customs registry. This is a free service by the CBP, where they will monitor shipments into the US, checking for counterfeit goods. The CBP will place only registered trademarks into their registry.

6. Access to ICANN’s UDRP. A valuable resource available to trademark owners, especially as internet marketing and retail becomes more important, is ICANN’s Uniform Domain Name Dispute Resolution (UDRP). If you are, say, a clothing retailer and someone is selling counterfeit goods on a webpage similar to your trademark, ICANN can require the domain registrar to transfer ownership of the infringing domain to you. This service is only available for registered trademarks.

7. It will make your company more valuable. A company with a book of registered intellectual property will include that in their valuation. Whether you keep your company closely held or grow it to IPO, there will likely come a time where a higher company value leads to money in your pocket. This could come up when you selling your company to retire, bring in a partner along the way, or if you are simply growing the company as an investment buyer.

8. It will be a selling point to investors. Having registered trademarks, especially for your brand name, makes your company more legitimate, safer from competitors and, as explained in point 7, creates a higher value. This all in turn attracts investors and makes them feel safer to invest.

9. It may end up costing you less. While filing a trademark application is certainly more expensive than using an unregistered trademark, the cost of protecting an unregistered trademark can prove far more costly. Between USPTO fees and attorney’s fees, the cost of registering a trademark can range anywhere between $1,200 and $3,500. On the other hand, owners of unregistered trademarks can find themselves filing Trademark Trial and Appeal Board proceedings to stop someone else from registering their unregistered trademark. That can cost anywhere between $5,000 to $150,000 or more (more on the TTAB below).

10. Easier Access to the TTAB.  The TTAB is best described as a hybrid between a traditional US court and an arbitration board, where trademark owners can file Opposition and Cancelation proceedings. While access to the TTAB is also available to owners of unregistered trademarks, the presumption of validity that comes with owning a registration is beneficial (which brings me to my next point).

11. Presumption of validity. In any type of legal “fight,” the importance of a presumption of validity cannot be overstated. Not only is it easier and less time consuming to prove something that is assumed true, it will also leave the other party with the hefty burden of proving that your registration is invalid. Without a trademark registration, it will be your burden to prove you have trademark rights.

12. Licensing and contract enforcement. A common way to profit from your brand or intellectual property is to “lease” it to others through a licensing agreement. Having a registration helps define the terms of the agreement, outlines exactly what they are using, and helps to enforce it if anything goes wrong.

13. To help prevent “generi-cide.” Under US law, for a word, phrase, or logo to qualify as a trademark, it must not be generic. Even where a trademark starts off as unique, it can become generic through common use. Popular examples of that include “Kleenex” for tissues and “Escalator” for moving stairs, which were both once registered trademarks. Legally, generi-cide can be prevented if a trademark owner takes steps to protect their trademark (like “Velcro” has, for their brand of hook and loop closures). This type of protection is next to impossible without a registration.

14. Protection for your product once your patent expires. Once a patent expires, a trademark can help a trademark owner retain their customer base through the goodwill and trust that comes with the brand. In fact, it is sometimes the only intellectual property left for an invention-based venture. One of my favorite examples is with the toy brand, Lego. When their building block patent expired, the imitators were so successful that Lego almost went out of business. However, they managed to get past the initial blow and stayed afloat with the help of their trademark.

15. Use of the Circle-R logo. While there is technically no legal value for using the Circle-R logo, it just looks more official. Heads-up, though, using the Circle-R on an unregistered trademark is a big no-no.

16. Priority date. An argument over who owns a trademark ultimately rests on who filed an application first or who started using it first. While US trademark rights are based in use, an individual who has imminent plans to use a trademark can by filing an application on an “intent-to-use” basis. Because application date and use date is on equal footing, applications for registration of a trademark can be a great tool to secure your brand before it is fully developed. This is especially true for foreign companies just breaking into the US market. For applications based on foreign priority, there is an assumption of use at the time priority is established. In fact, owners of trademarks that are subject of applications with a foreign filing basis do not have to show use until 5-6 years after registration.

17. Incontestibility. After 5 years of registration, a trademark owner can file a Declaration of Incontestability under §15. Once this filing is accepted, the trademark will defeat even someone who started using the same or similar trademark well before them.

18. In rare cases, you could lose it. Albeit rare, a nightmare scenario would be if you end up on the other side of the scenario in point 17. Say you use your trademark for many years without filing an application, and in the meantime, unbeknownst to you, someone with a similar brand is about to file for incontestability. You will no longer have superior rights to them and they could force you to stop using your trademark.  

As you can see, the reasons for registering a trademark are compelling. For a growing or stable company, prioritizing the protection of your intellectual property rights is paramount. For more insight into the process, contact our firm for a free consultation.

USPTO Trademark Applications: How to Determine First Date of Use & Select the Right Specimen OF USE

To successfully register a trademark with the United States Patent and Trademark Office (USPTO), the trademark must be actively used in commerce. The USPTO requires that a brand name is being used to sell a product or service before it can qualify for registration. As part of the application process, a trademark Application must include the first date of use of the trademark and submit a Specimen of Use. For 1(a) applications, this information is provided along with the application. For 1(b) applications, this is provided along with the Declaration of Use, after a Notice of Allowance is issued. In this guide, we will discuss how to successfully show the USPTO that your trademark is in use in US commerce, by using the correct first date of use, and selecting a sufficient Specimen of Use.

To Clarify this process, we have compiled a list of acceptable specimens of Use

Acceptable Specimens for Goods

For goods, an acceptable Specimen of Use is typically a photograph or digital image showing the trademark as it appears in commerce. Examples include:

• A label, tag, or decal affixed to the product.

• A label or tag hanging from the product.

• Product packaging, boxes, or shipping containers displaying the trademark.

• A point-of-sale display featuring the mark alongside the product.

• A packing slip or packaging materials that include the trademark.

• A catalog order sheet with an image of the product, the trademark, pricing, and purchasing instructions.

• A screenshot of a webpage displaying the product, the trademark, pricing, and a "cart" icon.

• A photograph of a frame from a movie or video that prominently displays the trademark.

• If the product is downloadable software, a screenshot showing the trademark alongside purchase instructions and a download link.

• A truck featuring the mark that ships the goods.

• An instruction manual with the trademark included in product packaging.

Acceptable Specimens for Services

For services, an acceptable Specimen of Use typically consists of advertising or marketing materials that clearly reference the services being offered. Examples include:

• Website pages advertising the services.

• Print advertisements in magazines, newspapers, journals, or phone directories.

• Marketing brochures, direct mail ads, flyers, and posters.

• Business signage on storefronts or vehicles.

• Invoices or proposal letters bearing the trademark.

• Menus (for restaurant services).

• Business letterhead, stationery, or business cards.

• Trade show demonstration materials.

• Showroom displays.

• Billboard advertising.

• Radio and television advertisements.

• Branded promotional items such as T-shirts, hats, coffee mugs, calendars, pens, and buttons.

Before submitting a Specimen of Use, double-check this list—if your specimen isn’t listed, it may not be accepted by the USPTO.

While selecting, preparing, and submitting a Declaration of Use and Specimen of Use can require effort, working with an experienced trademark attorney can streamline the process and help avoid application rejections.

Understanding the First Date of Use in a USPTO Trademark Application

The First Date of Use in a USPTO trademark application refers to the date the trademark was first used in connection with the goods or services listed in the application. This includes the date it was first used in advertising, packaging, sales, or other commercial activities.

To qualify for federal trademark registration, applicants must also provide the First Date of Use in Commerce, which refers to the first time the trademark was used in interstate or international commerce—that is, commerce regulated by the U.S. Congress. According to the Commerce Clause of the U.S. Constitution (Article 1, Section 8, Clause 3), Congress has the authority to regulate interstate commerce, international trade, and commerce with Native American Tribes.

With today's digital economy, proving "Use in U.S. Commerce" is easier than ever. Many goods are now sold online, and services are offered virtually, making interstate commerce easier to establish.

Accurately reporting the First Date of Use is critical, as submitting false information can lead to trademark rejection or cancellation. To ensure compliance, trademark owners should keep detailed records of first use, including dated advertisements, invoices, and product packaging that displays the mark.

Final Thoughts

Navigating the USPTO trademark application process requires careful specimen selection and accurate date of first use reporting. Missteps can lead to delays, refusals, or even cancellation of the mark. Working with an experienced trademark attorney can provide guidance and ensure compliance with USPTO regulations.

Need help securing your trademark? Contact a trademark professional today to protect your brand and streamline your USPTO application process.