Skip to main content

Trademarks In The Dark

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.

Popular posts from this blog

Clustered Foolishness

I had morning coffee with a well respected friend of mine recently. Aside from chatting about the usual wifery and family, we touched on the subject of clustered indices and SQL Server performance. A common misconception in the software industry is that a clustered index will make your database queries faster. In fact, most cases will demonstrate the polar opposite of this assumption. The reason for this misconception is a misunderstanding of how the clustered index works in any database server. A clustered index is a node clustering of records that share a common index value. When you decide on an index strategy for your data, you must consider the range of data to be indexed. Remember back to your data structures classes and what you were taught about hashtable optimizations. A hashtable, which is another way of saying a database index, is just a table of N values that organizes a set of M records in quickly accessible lists that are of order L, where L is significantly less than M. ...
Read more

Deadly Information

Remember back to 2006 when a young girl killed herself [1] , [4] after being tricked and harassed by a faux boy she found on the Web using MySpace. The trial against the faux boy, an adult woman (Lori Drew), did not result in prosecution for the death of Megan, much to the dismay of many.  Yet, today we read about another trial where someone is being accused of second degree murder because they may have mentioned something slanderous about another person who was later killed by a hit man [2] . In this case, though, the person on trial is a former FBI agent who was working deep cover to infiltrate organized crime. In both cases, someone released information to third parties that resulted in the death of another person.  Neither defendant in either of these cases actually committed the act of murder, though. In the case of the FBI agent, though, the murder charge is being taken seriously. Yet, in the MySpace slander case, the murder charge was not taken seriously. How are t...
Read more

Faster Climate Change

CNN reports that a WWF study has found that global climate change is happening faster than predicted in 2007 and that there will not be any arctic ice by 2013, or 2040. [1] Then it goes on to say that global sea level will increase by 1.08 meters by the end of the century, which is 2100, 92 years from now. Quite honestly, nobody really cares what is going to happen to the planet in 98 years. Why? Because in 98 years we (as humans) will either: (1) Obliterate ourselves because God told us to do it. (2) Eat eachother because there will no longer be any land available to grow crops and sustain living quarters for our 50 billion people. (3) Suffocate because our planet will no longer smell nice thanks to 50 billion people producing lots of solid waste in our oceans. (4) Leave the planet because there will no longer be enough fresh water to sustain our lives. Wait a minute. Consider (4) for a moment. Where can we get an abundance of fresh water TODAY? Anyone? Yeah, the arctic! It's goin...
Read more