Category — procedure

The esteemed John Welch of The TTABlog has a great post about letters of protest. Apparently, an attorney in Washington, DC filed an application to register the word CYBERLAW. In response, Mr. Welch appeals to everyone to file a letter of protest with the PTO. From the Trademark Manual of Examining Procedure:

The purpose of a letter of protest is to permit third parties to bring facts relevant to the registrability of the mark to the attention of the USPTO. The procedure is intended to achieve this objective without causing undue delay in the examination process and without compromising the objectivity or the ex parte character of the examination process.

Business owners, beware! Even if your competitors are not harmed by the registration of your mark and thus unable to oppose your application, they may file a letter of protest to sink your application. As such, you should make sure that the information in your application is correct before filing.

Following on from the last post, let’s assume that you’ve chosen an arbitrary and fanciful mark for your goods or services and that you want to register your mark at the United States Patent and Trademark Office (PTO). What is the process? This post will provide a cursory view of what you, as a business owner, should expect from the trademark application process. We’ll assume for this post that you are filing for a standard character mark in one class of goods for a product that you are already using in commerce.

First, you need to file an application that includes your contact information and dates of first use of your mark in commerce and anywhere. You’ll also need to file a specimen showing your mark as used in commerce in connection with your goods and services. And, of course, you’ll need to pay a filing fee to the government. Filing fees range from $275.00–$325.00 per class of goods or services.

After submitting your application, the PTO will assign a trademark examiner to review your application. This usually occurs 6–9 months after you submit your application. The examiner looks for technical errors in your application such as failure to include a specimen or date of first use and also looks for substantive reasons to refuse your application. We’ll look at substantive reasons for refusal in later posts, as you should be aware of the many reasons for refusal to help you choose your mark.

Assuming that the examiner accepts your application, they will publish your mark for opposition in the Official Gazette. Under the Lanham Act—the federal trademark law—any person who believes that they will be damages by the registration of your mark can oppose your application for registration. The person must give a reason for opposition and must do so in 30 days.

Assuming that no one opposes your application for registration, the PTO will register your mark and send you a registration certificate complete with a little blue ribbon and a registration number.

As I noted in this post, this process is the simplest, most straightforward route to registration, but the process is rarely this easy. As a business owner, you should be prepared for some bumps along the way even if you’ve cleared your mark prior to submitting your application. I’ll discuss trademark clearance in a future post.

Martin Schwimmer points to a case filed by BlueAir, Inc. versus Apple, Inc. asking the United States District Court for the Northern District of Illinois for a declaratory judgment that BlueAir’s AIRPOD trademark does not infringe Apple’s iPOD trademarks. Putting the merits of the case aside for a moment, I’m interested in the procedural aspect of filing a declaratory judgment action.

What is a “declaratory judgment”? A declaratory judgment is a judgment from a court that declares the rights of the parties in a dispute.

When would someone file an action for a declaratory judgment? Typically, a person files a declaratory judgment action when another person threatens them with litigation. In the trademark context, if Apple, for example, threatened to sue BlueAir for trademark infringement and BlueAir does not think that they are infringing Apple’s mark, then BlueAir can file a “dec action” in federal court to have the court determine who’s right as they did in this case.

What are the advantages of filing a dec action? One advantage is that the accused can bring the issue to a head rather than wait around for the accuser to file a lawsuit. Congress, in passing the Declaratory Judgment Act way back in 1930, realized that a person or business might be held up by the continuing threat of litigation. Instead of waiting for the accuser to file a lawsuit, the accused can file its own action first. In the BlueAir case, BlueAir decided to file the dec action rather than wait around for Apple to file a trademark infringement lawsuit.

Another advantage of filing a dec action is that the accused gets to pick the venue, which can be very important. In the BlueAir case, BlueAir sued in its home state of Illinois, in the Northern District. Had BlueAir waited for Apple to sue, Apple almost certainly would have filed its case in northern California, far from BlueAir’s place of business and attorneys. Filing closer to home reduces the cost of litigation to BlueAir. In addition, sometimes the law in one venue is more favorable to your side than another venue.

OK, then, what are the disadvantages? One disadvantage of filing a dec action is that doing so may make the other side really mad. If the accuser has a strong case and threatens litigation, but really just wants a quick settlement, and you have a meager defense, but you file a dec action to pick your venue, the accuser might decide to go all out trying to bury you.

Another disadvantage is that the jurisdiction of the court in a dec action is discretionary. That means that the court does not have to hear the case if it doesn’t want to hear it. So, you hire an attorney to draft a complaint, pay a filing fee, pay to serve the complaint on the other side, then the other side files a motion to dismiss, to which you pay your attorney to respond, and then the judge decides that he doesn’t want to hear your case. Now you’re out several thousand dollars in attorneys’ fees and the filing fees. Oh, and be sure that the other side is going to file a new lawsuit in their chosen venue.

Declaratory judgment action can be a great tool in the right circumstance. Just be careful what you ask for.