Category Archives: Trademarks and Brands

The trademark balancing act: Protecting your rights without enraging your customers

Trademarks symbolize the character and reputation of their owners and the quality of those finished products offered to the consumer. It typically takes years of careful cultivation to build a valuable trademark. This cultivation can include registering the mark with the U.S. Patent and Trademark Office, using the mark in a consistent and continuous manner, and taking action to prevent others from using the mark without permission. However, trademark owners often need to walk a thin line between strong enforcement and overly aggressive enforcement tactics (sometimes called “trademark  bullying”). One mis-step (or overstep) can quickly tarnish a mark’s goodwill and inflame consumers. Within days, the reputation of a strong brand built over decades can be destroyed by one over-zealous demand letter or lawsuit that finds its way from the recipient or courtroom to the Twittersphere.

AnLagunitas IPA example of this is the recent case of Lagunitas Brewing Co. v. Sierra Nevada Brewing Co.  In the case, Lagunitas alleged that Sierra Nevada’s new Hop Hunter IPA used a label that infringed on Lagunitas’ family of registered trademarks that each incorporate a stylized image of the acronym “IPA.” The complaint asserted that Sierra Nevada’s label used similar fonts to those of the Lagunitas mark, with the phrase “IPA” appearing in “prominent all-capital, large, bold, black, centralized” letters. The case included questionable legal grounds and aggressive tactics, including (i) a brewery seeming to claim rights to the acronym IPA (albeit the design only), and (ii) a preemptive lawsuit filed against an intent to use trademark application, and is informative as a guidepost for those in the craft beer industry or any industry with an educated, social media-savvy customer base willing to call out trademark owners for overly aggressive tactics. Lagunitas quickly dropped the suit after a social media firestorm erupted, in which the brewery was accused of trying to claim exclusive rights to the term “IPA” alone. In one day’s time, Lagunitas nearly destroyed two decade’s worth of goodwill by its mis-step. The next day, Lagunitas’ founder Tony Magee announced the company’s retreat on Twitter: “Today was in the hands of the ultimate court; The Court of Public Opinion.”

In some EatMoreKalesituations, aggressive trademark assertion may not alienate core customers, but it can arguably benefit the alleged infringer by bringing more attention to a fledgling brand. This happened when a Vermont company’s applied to register the EAT MORE KALE mark for use on apparel and other products. Chick-fil-A sent the company a letter demanding that it withdraw the application and stop using the mark, asserting that the use conflicted with Chick-fil-A’s EAT MOR CHICKIN mark. After the Vermont company shared the accusations on social media, the story was spread on many news outlets. The Vermont company received its registration in December 2014. While Chick-fil-A was probably not harmed by this action (the organic/vegan customers of an “eat More Kale” t-shirt are not likely to be fast food customers), the action certainly drew more attention to the Vermont company than Chick-fil-A intended.

Aggressive trademark enforcement can result in unexpected “social shaming” in a variety of online and other media, including Facebook, Twitter, and even websites like http://www.chillingeffects.org, which publishes demands to take down infringing content online. Many small businesses have been especially effective in using social media to gain public support for their cause, as well as public disdain for the perceived aggressor (especially when the aggressor is a large corporation).

So when it comes to trademark enforcement, it’s important to choose battles wisely, and pause before acting to consider whether the action will offend your core customer base. Step back, consult your marketing people, talk to your attorney, or ask a friend either inside and outside your industry. Trademarks are important, and their value is in the way that they represent the goodwill of your product and your company. That value can quickly be lost by poor decision making. If aggressive enforcement can cause more harm than good, companies should consider alternative strategies for preserving the value of their marks.

NOTE:  Special thanks to my Fox Rothschild colleague Chris Olszyk, who co-authored this post. Chris handles U.S. and international trademark portfolios, and he counsels a wide variety of corporate clients in risk assessment, trademark adoption and clearance for branding, rebranding, and new product or service launches. 

How long does patent and trademark prosecution take? (2014 edition)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, which is loaded with data about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year  2014. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or trademark registration?”

To answer that question, here are a few highlights from the USPTO’s 2014 report:

Patents:  After several years of steep reductions in patent application pendency, the USPTO’s efforts appeared to plateau in fiscal year (FY) 2014. The average time between filing and first office action was 18.4 months, which was slightly above FY 2013’s average of 18.2 months. The USPTO fared better in reducing average total pendency from 29.1 months in FY 2013 to 27.4 months in FY 2014, but this was still short of the USPTO’s goal of 26.7 months.

The USPTO acknowledged that it faces challenges in continuing to reduce pendency. The challenges include the redirection of resources to other initiatives, such as and initiative to reduce the backlog of unexamined Requests for Continued Examination (RCEs), and the development of guidance relating to the changing law relating to patent-eligibility. The USPTO also received more patent applications and granted more patents in FY 2014 than in any previous year.

The pendency rates vary depending on the technology covered by the patent application. For example:

  • applications relating to biotechnology and organic chemistry (USPTO Technology Center 1600) have an average wait time of 15.0 months to first action, and an average total pendency of 26.2 months;
  • applications relating to chemical and materials engineering (USPTO Technology Center 1700) have an average wait time of 19.5 months to first action, and an average total pendency of 28.8 months;
  • applications relating to networking, multiplexing, cable and security (USPTO Technology Center 2400) generally wait 18.6 months to first action, and have an average total pendency of 30.8 months;
  • applications relating to communications technologies (USPTO Technology Center 2600) have an average wait time of 17.8 months to first action, and an average total pendency of 28.7 months; and
  • applications relating to mechanical engineering products (USPTO Technology Center 3700) have an average wait time of 21.3 months to first action, and an average total pendency of 31.1 months.

The total average pendency is highest for applications involving computer architecture, software & information security (USPTO Technology Center 2100), where total pendency averages 31.7 months.

The overall patent allowance rate was 54.4% in FY 2014– a slight decrease from FY 2013’s 55.2%.

Other interesting statistics include:

  • The number of appeals filed against final rejections declined by over 10% in FY 2014.
  • The USPTO’s efforts to reduce the backlog of RCEs appear to be paying off. The number of unexamined RCEs dropped by over 40% in the past year.

Trademarks:  In FY 2014 the average time from filing to first Office Action in a trademark application was 3.0 months, and the average total pendency was 9.8 months.  These numbers are similar to the statistics for the past three years, and better than the USPTO’s goals of 3.5 months to first action and 12.0 months of overall pendency.

Patent and trademark applicants: Beware the hidden costs of an appeal from the PTAB/TTAB

A recent case involving an appeal of a rejected trademark application highlights a hidden cost that may occur if a patent or trademark applicant asks a District Court to overturn the USPTO’s action.

When the USPTO rejects a patent or trademark application, the applicant may appeal the rejection to the Patent Trial and Appeal Board (PTAB) or Trademark Trial and Appeal Board (TTAB), as the case may be.  If the applicant doesn’t like the PTAB/TTAB result, it may then appeal to a federal court.  As to which court, the applicant will have two options:  (1) appeal to the Eastern District of Virginia, or (2) appeal to the Federal Circuit.  The benefit of option (1) is that it allows the applicant to bring in new evidence in an attempt to improve its chances for a good result.  However, the downside of option (1) is that the applicant must pay the expenses of the proceeding under 35 U.S.C. 145 (if a patent appeal) or 15 U.S.C. 1071(b)(1) (if a trademark appeal).

In the recentdecision, Shammas v. Focarino, E.D. Va. No. 1:12-cv-1462 (Jan. 3 2014), the court held that “expenses” in the context of a trademark appeal includes attorneys’ fees, and that the appellant must pay those fees regardless of the outcome.  This included a pro rata portion of the actual salaries of the government attorneys who handled the case for the USPTO, based on the time that they devoted to the case.

Previous cases, such as the Supreme Court’s decision in Hyatt v Kappos, reached similar rulings in the patent context.  However, this is the first time that a court specifically held that the expenses included USPTO attorney salaries.

So, before appealing a PTAB or TTAB decision to District Court rather than the Federal Circuit, patent and trademark applicants should weigh the costs of the proceeding (including USPTO expenses) against the potential benefits of introducing additional evidence.

[NOTE:  Special thanks to my colleagues Jeff Schwartz and Lindette Hassan of Fox Rothschild LLP for co-authoring this post.]

How long does patent and trademark prosecution take? (2013 edition)

Each year, the USPTO releases a Performance and Accountability Report with useful statistics about allowance rates, average pendency, and other details in patent and trademark prosecution matters.  Last week, the USPTO released its Performance and Accountability Report for Fiscal Year 2013. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or registered trademark?”

To answer that question, here are a few highlights from the USPTO report:

Patents:  The USPTO continued to reduce patent application pendency in FY 2013. The average time between filing and first office action was Continue reading

No shutdown planned at the USPTO

If a U.S. government shutdown takes effect on October 1, 2013 the U.S. Patent and Trademark Office will continue most of its usual operations.  According to the USPTO:

In the event of a general government shutdown on October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we will be able to operate in this capacity during a general government shutdown.

If the shutdown extends beyond the time for which the USPTO holds reserve funds, it may suspend most operations at that time.

UPDATE 10/2/13:  Although the official word from the USPTO is “business as usual” the Office isn’t completely untouched by the shutdown. For example, the USPTO cannot respond to requests for paper copies of archived files during the shutdown, because the USPTO’s archive is located at a General Services Administration (GSA) warehouse that is temporarily closed. In addition, the USPTO has cancelled its 18th annual Independent Inventors Conference, which was originally scheduled for October 11 and 12.

Petzilla vs. the trademark registration: beware the improper assignment trap

Intent-to-use (ITU) trademark applications can give companies the Banzai Godzillaopportunity to reserve valuable trademark rights before actually using the mark in commerce. However, ITU applications do have certain limitations – including restrictions on assignment.

In many cases, U.S. trademark law imposes few conditions on assignment of trademark registrations and applications. However, in the case of ITU applications, Section 10(a)(1) of the Lanham Act states that ITU applications may not be assigned before the applicant files a statement of use, unless the assignment is “to a successor to the business of the applicant, or portion thereof, to which the mark pertains.” This means that ITU applications can be assigned only in those situations that also involve a “successor,” and not merely to any buyer.

A recent Trademark Trial and Appeals Board opinion in Central Garden & Pet Co. v. Doskocil Mfg. Co. illustrates the perils of improperly assigning ITU applications.  Continue reading

How Long Does Patent and Trademark Prosecution Take? (2012 update)

The USPTO recently issued its Performance and Accountability Report for Fiscal Year 2012.   This means that it’s time for IP Spotlight’s annual analysis of the question:  “how long does it take to obtain a patent or trademark registration?”

To answer that question, here are a few highlights from the USPTO report:

Patents:  The USPTO improved wait times in nearly all areas for patent applications in FY 2012.  The average time between filing and first office action was 21.9 months this year, representing Continue reading