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What is Use in Commerce for Trademarks

Daniel Mills, Trademark Attorney

Posted Wednesday, May 4, 2016 by Daniel Mills

Anyone who has been through the trademark process or is considering it will eventually be faced with providing proof of Use in Commerce? But what exactly is Use in Commerce in trademark law. This post is meant to offer a guide to help sort it out.

First, what is commerce within the context of the law? The Lanham Act (which is the basis of trademark law in the US) defines commerce as “all commerce which may lawfully be regulated by Congress.” Although that does not include all commerce, in today’s Internet centered marketplace, suffice to say that if you have a website that sells your goods or services, then you are engaged in commerce that Congress regulates. If you engage interstate commerce, you qualify. If your goods are transported across state lines, you qualify.

But the more important question is Use in Commerce, so again, let’s turn to the Lanham Act:

The bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—(1) on goods when—(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services 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 or in the United States and a foreign country and the person rendering the services is engaged in commerce with the services.

Let me break this down and translate.The Use has to be bona fide, in other words, it can’t be just a token offering to get through the registration process. Such token use has been used many times to get a registration, only to be the basis of a later cancellation. It is never worth it to build a structure on quicksand, so too it is never worth it to get a trademark registration based on false use. Eventually you will be sunk.

When it comes to determining what is use, it is helpful to separate goods from services, as in the definition from the Act. Showing use in commerce on goods is relatively straight forward. First, the mark has to be associated with the goods, the easiest way to do that is to:

  • Put the mark right on the goods

  • Put it on the packaging of the goods

  • Put it on point of sale displays, labels, or tags

  • If none of that is practical, then on documents that always accompany the goods

The second step is, and this is the important part, is then you have to sell or transport the goods in commerce. Without this second step, you have merely advertised the goods and that is never enough to satisfy the requirement.

When it comes to services, advertising is OK, but the service must actually be performed in commerce, or in interstate or foreign transactions. For example, if you are a dentist and you have a trademark for your service, then merely advertising the service is not enough, you actually have to perform the service that you are advertising. That may sound obvious or even silly, but a search through trademark cancellation proceedings will show that many trademark applicants have gotten this wrong.

This is one of the most common issues I get hired to sort out by the do-it-yourselfer. The sad fact of the matter is that is costs as much, and in some cases more, to fix the problem than it would have been to hire me to file the entire application it in the first place. So when thinking of doing it yourself, think of the time and expense associated with a mistake for which you will have no recourse. We offer simple, reasonable, flat fees for trademark applications and most other trademark work.

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Supreme Court Oral Arguments Cuozzo

Jim Ruttler, Patent Attorney

Posted Wednesday, April 27, 2016 by Jim Ruttler

On Monday, the U.S. Supreme Court heard oral arguments in Cuozzo. The issues being litigated include the standard for claim interpretation at IPR proceedings and whether decisions to institute IPR proceedings are appealable. These are important issues with respect to patent rights in the United States.

IPR proceedings (Inter Partes Review) are newly created proceedings for the Patent Office to review issued patents. The Patent Office tends to view these proceedings as an extension of examination whereas patent owners tend to view them as mini-court proceedings evaluating issued patents. This tension has resulted in differences with how patent claims should be interpreted. The Patent Office wants to use the standards used during examination, but patent owners want the standards used by the courts. The Patent Office standard is less favorable and results in patents being invalidated more easily whereas the court standard is more favorable and results in patents being more likely to be upheld.

The Supreme Court took the case at their discretion and so based just on this, it is likely that they will reverse in some respect the lower court’s decision to uphold the Patent Office’s interpretation. The Chief Justice John Roberts also seemed to be leaning heavily in the patent owner’s favor based on the fact that the IPR proceedings are supposed to streamline litigation - NOT make it more complicated.

The appeal of the Patent Office’s decision to institute or not is the second issue and one that is difficult to predict an outcome. The statute says no appeal, but that is contrary to administration law principles.

We should have a result in the next couple of months. Stay tuned.

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EPO vs. USPTO Examination

Jim Ruttler, Patent Attorney

Posted Sunday, April 24, 2016 by Jim Ruttler

The EPO has a number of important differences as compared to the US for patent examination.

The first is that examination is relatively compact. You get search results and then examination with limited opportunity to amend. Upon final rejection, there is no opportunity to request further examination. This is quite different from the U.S. where search and examination can continue virtually indefinitely until agreement is reached as to the scope of allowable subject matter.

The second is that search and examination is separate at the EPO. One examiner does the searching and then this body of art is handed over to the examiner group. No additional searching is conducted during examination. In the U.S., the same examiner does the searching and examination and the examiner continues to update the search throughout the process. This makes the EPO search results much more important than the initial USPTO search results.

The third major difference is that amendments are constrained at the EPO. You may amend after receiving the search results back, but once examination has begun the EPO can deny further amendments. In the US, of course, amendments can be liberally made throughout examination. Thus, the EPO rewards you for putting your best foot forward whereas the USPTO permits you to participate in ongoing negotiations and amendments.

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Euro-PCT Applications

Jim Ruttler, Patent Attorney

Posted Thursday, April 21, 2016 by Jim Ruttler

A patent application filed in the United States with the USPTO can serve as the basis for a later European patent application. That is, a later European patent application can be treated as if were filed on the earlier U.S. filing date if certain steps are taken.

The first is to file at least a provisional patent application in the United States fully disclosing your invention and including at least one claim, prior to any disclosures, offers for sale, or publications of your invention. Upon filing, it is possible to wait up to one year to file a PCT application with the World Intellectual Property Organization.

This PCT application undergoes a search, and optional non-binding examination, but it does not issue into a patent anywhere. Instead, within 30 months from the first filed application (e.g., the provisional in this case), the PCT application can be used to enter national stage with the European Patent Office. The EPO will examine the national stage application and determine whether to grant a patent on the invention. Importantly, the EPO will treat the national stage application as if it were filed on the U.S. provisional filing date (in this example).

Hence, disclosures and offers for sale and other inventions that occurred after the filing date of the provisional (again in this example) would not impact the patentability determination of the national stage application in Europe, even those the national stage application was not filed for years after the provisional application.

This procedure can be effective to obtain a Unitary European Patent, which will be enforceable across most of the EU via the new unified court system.

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Patent Gold Rush in Europe

Jim Ruttler, Patent Attorney

Posted Friday, March 4, 2016 by Jim Ruttler

Europe has historically been a difficult place to register and protect inventions. Any European patent granted had to be registered in each separate country and then enforced in a country by country basis.

That is all about to change with the new unitary patent and unified patent court. The unitary patent is an EU wide (with the exception of only Spain for now) patent that can be enforced across the EU countries in one court. This new patent regime will cover about 400 million people, which is larger than the total population of the United States. Expectations are that the unitary patent and unified patent court will be fully operational in 2017, but it is possible to convert existing European patents obtained now.

Furthermore, Europe has maintained more favorable treatment toward patent owners than the United States has. In the United States, Alice and the inter partes review proceedings and the difficulty obtaining injunctions has made it difficult for innovators to protect inventions, particularly software and scientific discoveries. In contrast, Europe has a more predictable test for eligibility and courts there are awarding injunctions. Many have come to believe that Europe is a preferred destination for protecting intellectual property.

It is no surprise then that the European Patent Office has reported yet another record year for filings (5% increase in 2015 over the previous record in 2014). For U.S. inventors, this means that consideration of Europe as a patent destination can no longer be ignored.

There are tools for filing here in the United States and transitioning applications to European unitary patent applications and patents. This means that inventions that are difficult to protect here can utilize the U.S. patent office to reach Europe thereby providing the benefit of a more favorable patent regime and a larger population base.

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