If you have a business, then you know that filing for a trademark is pretty easy in the USA. You just go to the USPTO web site (www.uspto.gov) and start filling out the form. The cost is significantly less now, nearly a third of what it was a couple of years ago. That's great news.
What you don't know about your mark, though, is that there is a plethora of common law that dictates whether or not you can file with your specimens. The specimens are documents that clearly show your mark being used in commerce. Well, my last mark registration came back to me with the examiner asking for a better specimen that places the mark in closer proximity to evidence of commerce. Closer proximity. Yeah. Right.
Apparently Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.06(a) and (b), establish some common law that determines an acceptable proximity of your mark to evidence of commerce.
I don't have a problem with common law judgements in the case of trademark protection. Really, it's a good thing. What I do have a problem with is the apparent lack of disclosure on the USPTO web site. If we are governed by common law,then someone needs to review those cases and establish clear guidelines about proximity and fair-use. Otherwise, filing a trademark is akin to running in the dark. We all know what happens when you run in the dark...
Without publishing proper guidelines, the USPTO is endorsing the legal industry. Apparently they don't want you to file your own trademark, but rather pay a trademark attorney $2500 to file it for you. That $2500 is 10 times what it costs to file it yourself. I'd rather spend my money on building the business that I am trademarking.
So in my case, the trademark was for a web site. My specimens were of the home page that clearly shows the mark near links to purchase service. Because of this proximity ruling, though, the specimen I used is not valid. I needed to show the mark physically closer to the act of commerce, such as a link or button to purchase items. So I suppose some judge out there pulls out his ruler and literally measures how close your mark is to commerce. If it's over 1 millimeter, then your specimen is invalid. On the Web, though, the spatial proximity of your mark to commerce is governed by the size of the font and its leading. If your customers use enlarged fonts for page viewing, then you're screwed. When you submit your specimen for examination, though, I encourage you to do so in the smallest, most scaled-down, font possible. That way this phantom proximity ruling would not apply to you.
What you don't know about your mark, though, is that there is a plethora of common law that dictates whether or not you can file with your specimens. The specimens are documents that clearly show your mark being used in commerce. Well, my last mark registration came back to me with the examiner asking for a better specimen that places the mark in closer proximity to evidence of commerce. Closer proximity. Yeah. Right.
Apparently Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.06(a) and (b), establish some common law that determines an acceptable proximity of your mark to evidence of commerce.
I don't have a problem with common law judgements in the case of trademark protection. Really, it's a good thing. What I do have a problem with is the apparent lack of disclosure on the USPTO web site. If we are governed by common law,then someone needs to review those cases and establish clear guidelines about proximity and fair-use. Otherwise, filing a trademark is akin to running in the dark. We all know what happens when you run in the dark...
Without publishing proper guidelines, the USPTO is endorsing the legal industry. Apparently they don't want you to file your own trademark, but rather pay a trademark attorney $2500 to file it for you. That $2500 is 10 times what it costs to file it yourself. I'd rather spend my money on building the business that I am trademarking.
So in my case, the trademark was for a web site. My specimens were of the home page that clearly shows the mark near links to purchase service. Because of this proximity ruling, though, the specimen I used is not valid. I needed to show the mark physically closer to the act of commerce, such as a link or button to purchase items. So I suppose some judge out there pulls out his ruler and literally measures how close your mark is to commerce. If it's over 1 millimeter, then your specimen is invalid. On the Web, though, the spatial proximity of your mark to commerce is governed by the size of the font and its leading. If your customers use enlarged fonts for page viewing, then you're screwed. When you submit your specimen for examination, though, I encourage you to do so in the smallest, most scaled-down, font possible. That way this phantom proximity ruling would not apply to you.