Parry IP logo

Tag: trademarks

  • How Fake Websites and Invoices Are Being Used to Game the U.S. Trademark System

    How Fake Websites and Invoices Are Being Used to Game the U.S. Trademark System

    Last week, the USPTO issued an order for sanctions against a Chinese company in connection with tens of thousands of trademark applications. The company was accused of exhibiting a “longstanding and widespread pattern and practice of filing submissions with false or misleading information and improperly entered signatures.” Thousands of these trademark applications included falsified evidence including mockups or digitally altered specimens (meant to show use of the trademarks in commerce).

    I found this order especially interesting because I’ve had my own run-in with this kind of fraudulent trademark filing. Specifically, I want to talk about a trademark registration for the word TODENG, a name you’ve probably never seen on a product in any store, online or off. That’s exactly the problem.

    Last year, I wrote and filed a petition with the USPTO asking them to reexamine the registration for TODENG, a trademark which was granted to a Chinese company called Shenzhen Tuming Juchuang Technology Co., Ltd. Our reason? There’s strong evidence that the trademark was never actually used in U.S. commerce, despite claims to the contrary.

    A Trademark with No Real Products

    The original application claimed TODENG was used on a wide range of household goods such as furniture, curtain rails, baby pillows, pet kennels, and more. But when we looked for any trace of these products being sold under the TODENG name, we came up empty. No listings on Amazon, Walmart, Target, eBay, Temu, or even Alibaba. No Google results. No real-world presence.

    The only “proof” submitted with the application were screenshots of a website (now defunct) and a single invoice. But here’s the kicker: the website domain wasn’t even registered until after the supposed sale took place. That’s not just suspicious, it’s impossible.

    The Bigger Picture: Specimen Farms and Copy-Paste Invoices

    Digging deeper, we found that this wasn’t an isolated case. The same attorney who filed the TODENG application had submitted dozens of other trademarks using nearly identical invoices and similarly sketchy websites. Many of these sites followed the same URL structure and were hosted on domains that vanished shortly after the applications were filed (if they even existed at all).

    For example, here’s two invoices, one filed by the TODENG trademark applicant, the other filed by a supposedly different individual:

    Side by side comparison of two suspiciously similar invoices from different sellers
    Notice anything in common?

    This pattern suggests a coordinated effort to flood the U.S. trademark system with registrations based on fabricated evidence in what we call specimen farms. These fake websites exist just long enough to fool the USPTO into granting a registration, then disappear.

    Why It Matters

    Trademarks are supposed to protect real brands used in real commerce. When foreign entities abuse the system with fake filings, it clogs the registry, blocks legitimate businesses from using marks they actually intend to use, and undermines trust in the system.

    The TODENG case is just one example, but it highlights a growing problem. Fortunately, in our case, the petition was granted and the TODENG registration is now dead (check out the petition, linked below, to see what sort of arguments can successfully bring down one of these fraudulent trademark registrations). And as shown in the recent order for sanctions, the USPTO is cracking down on many other fraudulent cases.

    Links:

  • Most Valuable Trademarks 2013

    Consultancy firm Interbrand released its Best Global Brands 2013 list yesterday, announcing that Apple is the most valuable brand in the world. Tech companies make up four of the top five spots on the list. For the first time in the list’s 14-year history, Coca-Cola was not listed at the top, falling instead to third after Apple and Google.

    All members of the top 100 list have at least this in common: careful and protective cultivation of their brand names and logos–and a good understanding of how trademark laws help them to do so.

  • Will Trademark Fees Be Lower in the Future?

    The U.S. Patent and Trademark Office has published an invitation for comments regarding the possibility of lower trademark application fees. According to the notice published in the Federal Register, the lower fees would be only for applications filed electronically. The purpose of the lower fees is to incentivize applicants to use the electronic filing system (which reduces the USPTO’s costs relative to paper applications).

    The notice poses questions about what fee levels would be fair and appropriate.

    If you want to submit a comment regarding the possibility of lower fees, send it to TMFRNotices@uspto.gov or this mailing address:

    Commissioner for Trademarks
    attention Cynthia C. Lynch
    P.O. Box 1451,
    Alexandria, VA 22313-1451

    After the USPTO considers submitted comments, they plan to use the procedures set forth in the Leahy-Smith America Invents Act regarding fee-setting. It appears that the USPTO will raise the fees for paper application by a substantial measure, while it may lower fees for electronically-filed applications.

    Link:

  • Are You Intellectual Property-Aware?

    Many small and medium business owners don’t know the difference between trademark and copyright, patent and trademark, or design patent and trademark–much less which of these types of IP they actually own. As a result, many business owners miss out on the competitive advantages that come hand-in-hand with their IP rights. They miss out on potentially lucrative opportunities because they don’t know how to leverage their IP assets. The United State Patent and Trademark Office has recognized this common ailment and come to the rescue with the Intellectual Property Awareness Assessment Tool.

    The IP Awareness Tool assesses one’s IP knowledge, identifies holes in that knowledge, and then directs the participant to resources to help shore up those deficiencies. The tool is a great way for people to learn what they don’t know. As I took the assessment, I could see how each category of IP was assessed with simple, non-legalese questions. I would recommend to any business owner who is not sure of what IP she may own to take the assessment.

    The assessment includes the following categories:

    • IP Strategies & Best Practices
    • Trademarks
    • Copyrights
    • Design Patents
    • Trade Secrets
    • Utility Patents
    • Using Technology of Others
    • Licensing Technology to Others
    • International IP Rights
    • IP Asset Tracking

    After you have taken the assessment, please let me know through the Contact Page what areas you lack knowledge in (responses will be kept confidential), and I will write blog posts in the future to help you out!

    Links:

  • How Strong is Your Brand? (Fanciful Marks)

    This is my final blog post in a series discussing the spectrum of distinctiveness and how the spectrum can be used to analyze the relative strength of a trademark. This post is about marks that are fanciful. I discussed the relatively weaker types of trademarks, generic marks, merely descriptive marks, suggestive marks, and arbitrary marks in previous posts.

    Fanciful marks on the spectrum of distinctiveness

    A fanciful mark is one consisting of a coined or invented name. A few examples of fanciful marks are Kodak, Xerox, Pepsi, and Exxon.

    Fanciful marks make strong brands. Like a suggestive or arbitrary mark, a fanciful mark can be registered directly to the Principal Register.

    Conclusion

    The position of your mark along the distinctiveness spectrum has a strong determining effect on whether you will be able to register it. It is highly recommended that you discuss potential trademark ideas before you put them in use. Involving competent legal counsel in the selection process of a business name, brand name, logo, slogan, or the like can affect how well you will be able to enforce it in the future–and can have a real effect on the value of your mark.

    Related Posts:

  • How Strong is Your Brand? (Arbitrary Marks)

    This is my fifth blog entry in my series detailing the spectrum of distinctiveness and how the spectrum can be used to analyze the relative strength of a trademark. This post is about marks that are arbitrary. I discussed the relatively weaker types of trademarks, generic marks, merely descriptive marks, and suggestive marks, in previous posts.

    Arbitrary marks on the spectrum of distinctiveness

    An arbitrary mark is one that has no relation to the goods/services it represents. The Federal Circuit has defined an arbitrary mark as “a known word used in an unexpected or uncommon way.” For example, a computer seller can trademark the word “Apple” to sell computer products, because there is no relation between apples and computer products. Other examples of arbitrary marks include “Old Crow” for whiskey and “Windows” for computer operating systems.

    Arbitrary marks are considered strong brands (assuming no one else was using your mark for similar goods/services before you started). Like a suggestive mark, an arbitrary mark can be registered directly to the Principal Register.

    Related Posts:

  • How Strong is Your Brand? (Suggestive Marks)

    In a series of posts, I am discussing the spectrum of distinctiveness, which can be used to evaluate the potential strength of a mark. This post is about marks that are suggestive. I discussed the relatively weaker types of trademarks, generic marks and merely descriptive marks, in previous posts.

    Suggestive marks on the spectrum of distinctiveness

    A suggestive mark is one that requires imagination, thought, or perception to arrive at an understanding of what is represented by the mark. An incongruous word combination or coinage of previously unused terms indicate a suggestive mark. For example: the mark “Dri-Foot” is suggestive of antiperspirant deodorant for feet, “Tint Tone” is suggestive for hair coloring, and “Tennis in the Round” is suggestive for providing tennis facilities.

    I am personally a fan of the suggestive trademark category because of the possibility for clever wordplay, which I believe could enhance the visibility of a mark and make it memorable. Also, consumers may be more likely to remember what type of product a suggestive mark represents once they make the connection the first time.

    A suggestive mark may be registered directly to the Primary Register and gain the benefits of trademark registration (after the USPTO examining trademark attorney has determined there are no confusingly similar marks already in use by others, of course). Suggestive marks receive a higher level of protection than merely descriptive and generic marks.

    Related Posts:

  • How Strong is Your Brand? (Descriptive Marks)

    In a series of posts, I am discussing the spectrum of distinctiveness, which can be used to evaluate the potential strength of a mark. This post is about marks that are merely descriptive. Recently, I discussed the weakest type of trademark, the generic mark.

    Descriptive marks on the spectrum of distinctiveness

    A mark is descriptive if it describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (from the USPTO Trademark Manual of Examining Procedure, 8th Ed.). For example, “The Children’s Outlet” was found to be descriptive of an applicant’s “retail children’s clothing store services” and “Bed & Breakfast Registry” was descriptive of “lodging reservations services.”

    A mark that is merely descriptive can be registered on the Supplemental Register (which means that it is not actually a registered trademark/service mark–yet). After the applicant can assert that a mark has attained special, distinctive meaning (which, in Trademark parlance, is called secondary meaning) in connection with his products/services, the mark can be registered on the Primary Register–in other words, it becomes a registered mark.

    An assertion of secondary meaning can be made by submitting an affidavit or declaration to the USPTO along with a showing that the mark has gained distinctiveness through:

    • Use of the mark over an extended length of time;
    • Large scale advertising expenditures;
    • Widespread recognition of the mark as a source indicator; and/or
    • Survey evidence and market research results.

    Regarding an “extended length of time,” the USPTO will accept a declaration that the mark has been in continuous use for at least five years as prima facie evidence that the mark has acquired secondary meaning.

    Watch for future posts, where I will discuss marks that are inherently stronger than generic or descriptive trademarks: suggestive, arbitrary, and fanciful marks.

    Related Posts:

  • The Use of Shame in a Trademark Dispute

    One thing that legal counsel should consider when drafting a cease-and-desist letter: be careful with what you write; it could make you famous.

    An interesting recent Wall Street Journal article discusses a tactic that accused trademark infringers are turning to when they don’t have the resources or desire to hire legal counsel: attempting to publicly shame the accuser. The approach often involves the use of social networking sites, such as Twitter or Facebook, to publicize legal threats from trademark holders. Other accused infringers post copies of cease-and-desist letters on websites such as www.Chillingeffects.org.

    Sometimes, simply posting such information is potentially embarrassing enough that the trademark holder will be forced to back off–especially if the initial threat appears to be excessive or an overreach. In many cases, the publicity brings out sympathetic supporters, who donate to the accused infringer to defray legal costs.

    Either of these potential results is bad for the trademark holder. This is why whenever you are writing a cease-and-desist letter, you should consider how it would reflect back on your client if it were plastered on thousands of Facebook and Twitter feeds.

  • How Strong is Your Brand? (Generic Marks)

    Previously, I introduced the concept of the spectrum of distinctiveness, which is a simple sliding scale we use to determine the potential strength of a mark. In this post, I will discuss generic marks, which fall on the left side of the scale:

    Generic marks on the spectrum of distinctiveness

    A generic mark is one that is a common name of the product or service, as understood by the purchasing public. A generic mark cannot receive protection as a trademark. For example, an apple seller cannot trademark the word “apple” to describe his fruit products–such use of “apple” would fall on the generic end of the spectrum.

    Additional examples of marks that courts found to be generic include “Lawyers.com” for websites containing legal information and “Screenwipe” for wipes for cleaning computer and television screens.

    The US Patent and Trademark Office conducts a two-part test to determine if a mark is generic:

    1. What is the category of goods/services represented by the mark?
    2. Does the relevant public understand that mark to primarily refer to that category?

    If the answer to question 2 is “yes,” then the mark is generic.

    It is possible that a mark that was once nongeneric may become generic because the public’s understanding of its meaning has shifted. Some classic examples of words that were protectable trademarks, but were found to be “genericized” (at least in the U.S.) are: aspirin, escalator, thermos, and cellophane.

    In a future blog post, I will describe some precautions a trademark holder can take to prevent its marks from reaching generic status.

    Related Posts: