Satisfy the “Use in Commerce” Requirement with Your Webpage

That a mark has been “used in commerce” is one of the primary requirements that a mark must fulfill before becoming a registered trademark with the U.S. Patent and Trademark Office (USPTO). While there is a significantly developed body of law regarding traditional “use in commerce” with regards to brick-and-mortar shops and radio and television advertising, the same is not as true with regards to the internet. In any case, some useful guidelines have emerged in recent years from the Trademark Trial and Appeal Board (TTAB).

Regarding the sale of goods (as opposed to services, which have an easier requirement), a mark is considered to be “used in commerce” if “it is placed in any manner on the goods or their containers or the displays associated [with the products, or if this is not possible,] then on documents associated with goods or their sale….”

When submitting evidence to the USPTO to demonstrate “use in commerce” on a website, the specimen must:

(1) include a picture of the products;

(2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and

(3) contain the information necessary to order the products.

Remember that “mere advertising” of one’s product with the mark is typically insufficient, whereas “a display associated with the goods” is sufficient. Not only must the mark connect with the product in the minds of consumers, but the consumers must also be provided with enough information so that they can place an order.

In a 2007 case,  In re Valentine Inc., the TTAB considered the fact that a trademark applicant’s website, in addition to pictures of the goods, provided “an on-line catalog, technical information intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service [to place an order]”.

Taking these things into consideration when designing and building your website can help avoid a problem later down the line when you apply for your trademark, especially if you are strictly an online-based business. Make your trademark obvious on your page, with the goal of leaving an impression upon visitors of your mark as they click “add to shopping cart” or pick up the phone to order.

–   ck

Professional Trademark Search: Should I Pay for This?

The answer is: “It depends.” Like most simplified questions asked to lawyers, the answer to this depends on your individual situation. If simple questions had simple answers, software would be written to replace lawyers, in which case I’d be out of a job but not out of my obligation to pay for law school. Ouch.

Professional trademark searches can be valuable when you need to know whether your proposed trademark will likely be granted trademark registration by the USPTO; and when you need to know quickly and with some degree of certainty. Basically, if you are about to invest a relatively significant amount of resources into a brand without having a trademark registration, I would recommend first investing in a full professional search report.

This situation commonly arises when a company develops an idea for a brand or company name, and is ready to move quickly with branding and marketing. While a trademark registration typically takes 6-9 months to clear, at best, marketing can be ready much sooner than that. The dangers of moving ahead without a finalized trademark registration can be any of the following, plus more:

• possibly infringing upon someone else’s trademark, and being liable in court for the infringement.
• spending significant amounts of time on marketing efforts, and then finding out you infringed on another trademark
• spending significant amounts of money on web development, stationary, and advertisements, and then ultimately failing to secure a trademark registration
• choosing a brand or company name, and not being able to secure key domain names
• investing many resources into the new brand or company name, encountering any of the problems above, and then having to spend more resources on rebranding

Trademark lawyers should be able to offer  you a professional search report from a third party, such as Thomson Compumark, which I personally like to use with my clients if needed. The costs range from approximately $600-$1400 USD, mainly depending on how quickly you need the report done (1-4 days), and you should also factor in 1-2 hours of your lawyer’s time to review the report as well, which can sometimes be hundreds of pages long.

By ordering and having a good trademark lawyer review a professional search report, you can get near a 90% certainty as to whether your proposed mark will succeed at becoming a registered trademark. On the other hand, if you have already been using your brand for some time with no problem, and you are not necessarily expanding your business at lightening speed, then a full search probably is not necessary for your situation, and you should not be “sold” on this extra service by your lawyer.

– ck

How Much Does a Trademark Registration Cost?

Seal of the U.S. Patent and Trademark Office (for example only)

Registering a trademark in the United States can cost as little as $275 (for the most commonly used “TEAS Plus” application)  in fees to the United States Patent and Trademark Office. However, as with many procedures involving the law and lawyers, the costs can always end up to be significantly more than the low estimate.

In addition to the USPTO filing fee, legal fees for registering a trademark typically range from about $1000.00-$5000.00 USD. Pricing models also differ from firm to firm, but I think a good trademark lawyer should be able to state a flat fee, as well as clearly identify what is and is not included with the flat fee. A reasonable trademark lawyer should include in a basic trademark service the following:

1. A preliminary search of the mark, both in the USPTO database and on the internet in general. This step can only serve the purpose of eliminating major potential problems, as no trademark lawyer should represent that they themselves have the ability to conduct an exhaustive search.
2. If the preliminary search returns no major problems, the lawyer should then file the application with the USPTO, which begins the official process.
3. In about 3 months, a USPTO lawyer will review the application. If there are problems with the application, the USPTO will issue an Office Action, which is a formal statement identifying problems with the application, and usually indicates what is needed to fix the problem. I strongly believe that a good trademark lawyer should include in a flat fee, a set number of hours which the lawyer will dedicate to dealing with simple Office Actions. I typically include 2 hours of my time, and this ensures that simple problems will be resolved without my client having to pay more money.
4. About a month after the application is approved by the USPTO, the application is then submitted for “opposition” for 30 days: published on the internet for anyone to see, and to oppose if they believe they may be harmed by a registration of the mark in the application. As with step 3, small problems may be resolved without too much time (again which I believe a good trademark lawyer should include with a flat fee), but larger problems may occur.
5. About a month after the opposition period ends, or after all oppositions are satisfactorily resolved, a trademark registration will be issued.

I believe clients are generally happy with flat fees, as it helps to maintain some predictability in the process.  However, clients should understand that whether the services offered under a flat fee arrangement are sufficient for their mark to be registered does depend on what is being sought to be registered.

For the mark “App Store”, Apple has been fighting the USPTO and many other companies, including Amazon.com, for years. Of course, legal fees for this mark are definitely in the five-figure range, and likely in the six-figure range. I do not mention this to frighten anyone, but one must consider that Apple has done a cost-benefit analysis of this venture, and has decided to pursue this. Also consider that Apple’s brand alone is worth $153 billion, so they understand the value of investing in their brand.

To conclude, the stronger a mark is, and the more unique it is, the more likely the mark will smoothly travel through the registration process, meaning less money spent on lawyers. The combination of a strong mark and having a lawyer with a flat fee will help you keep your legal expenses in check through this brand-building process.

– ck

Trademark Registration: The “Use in Commerce” Requirement for Internet-Based Companies

For all marks sought to be federally registered in the United States, the requirement that the mark first be “used in commerce” must be satisfied, as registered trademarks must designate the origin and source of a product. At least one qualifying “specimen” of the mark being used in commerce must be submitted in each trademark application. Typically, submitting a picture of a mark attached to a good, a picture of a product with the mark in a trade catalog, or a picture of the mark on a trade show sign will suffice. This is requirement is relatively easy to satisfy in goods-based industries, and slightly more difficult for service-based industries which offer most or all of their services on the Internet.

While screenshots of a trademark applicant’s webpage can be a satisfactory specimen to satisfy the “use in commerce” requirement, a slightly different and more specific set of rules applies when the goods or services are offered exclusively on the internet.

Goods-Based Companies Existing Exclusively on the Internet

For a goods-based company on the internet, the USPTO follows case precedent on this issue, which consists of three factors to determine the eligibility of a screenshot as a specimen showing “use in commerce”:

1. The webpage must include a picture of the goods
2. The mark seeking registration must be shown sufficiently near the picture of the goods so that the website viewer is likely to associate the mark with those goods
3. The webpage contains the information needed by a website viewer to purchase and order the goods.

I would also stress that the mark should prominently displayed in the screen, as well as in all the pages of your website. If your mark is buried amongst a sea of text on your webpage and in your screenshot, it will not be seen as a sufficient use.

If your application for a trademark will submit a screenshot of your webpage as a specimen, and that screenshot satisfies the above three requirements, then it should satisfactorily demonstrate “use in commerce” to the USPTO Examining Attorney on your case.

Service-Based Companies Existing Exclusively on the Internet

Service-based companies possess a unique twist on the issue of proving “use in commerce” in a trademark application. This is because there is no part of the service upon which one could attach the mark. For specimens used to show “use in commerce” of service marks in general, it is only necessary to show the mark actually used in the advertising of the services, with an emphasis on an association between the mark and the services. A screenshot which shows only the mark, without a reference to the relevant services, would not demonstrate sufficient usage of the mark.

Consider adding a tagline to your mark, briefly explaining the services associated with the mark. For example, I am currently rebranding my law practice under the mark SOMA, with a tagline beneath stating “Trademark and Branding Law for the Internet Era”. If placed several mentions of the mark SOMA all over my webpage, and thus all over my screenshot specimen, it may not be obvious to a website visitor what it is that SOMA as a company provides. If this is unclear, than there is insufficient usage of the mark in commerce.

Examples of Specimens Failing to Demonstrate Sufficient “Use in Commerce” for Services

• A professional Christmas tree decorator/designer company submitting a specimen of a picture showing tags with their mark fixed to Christmas trees (mark makes no explicit reference to services)
• A custom parts manufacturer submitting a specimen of a picture showing labels fixed to packaging of custom manufactured parts (insufficient to show “custom manufacturing” as the service connected to the mark)
• An anti-drunk-driving organization submitting a specimen of a bumper sticker containing only the mark (the mark itself was insufficient to demonstrate what service was being provided)

Number 1 Mistake Made When Filing a Trademark Application Without a Lawyer

The number one problem I see the most with businesses filing their own
trademark applications is the failure to “disclose” parts of their
mark which are not protectable. Fortunately, this is an easy problem
to avoid, and even if the problem is not avoided, it only causes a
delay in the trademark application and time to fix the problem. But
let’s avoid that.

U.S. trademark law protects “inherently distinctive” marks. If you
have a distinctive mark with non-distinctive components, only the
distinctive part is protectable. The non-distinctive parts must be
“disclaimed”.

For example, Zynga is a very distinctive name, derived from one of the
founding partner’s dog’s name. If they were to apply for trademark
protection for “Zynga Online Games,” the application must disclaim
“Online Games” because it is a generic term. The USPTO will not grant
trademark protection to generic or descriptive terms because those
terms are reserved for other companies in the business of online
gaming. Thus, the end result is that while the mark is “Zynga Online
Games”, only the “Zynga” part of the mark is granted protection.

The Fix: After the initial part of the online trademark application asking for all your contact information, you will be asked to enter the words of the mark you are seeking trademark protection. You will then have a chance to “Preview USPTO-Generate Image” (Slide 1). Immediately after this section, check the small box next to “Check here to display the full listing of additional statements from which you may make your selection.” This will display a whole list of options, but the only one relevant to this article is the first item “Disclaimer” (Slide 2). There is a box you can enter the words you wish to disclaim, and here is where you enter the generic and descriptive terms of your mark. It will ultimately read “No claim is made to the exclusive right to use [ONLINE GAMES] apart from the mark as shown”.

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– ck