Monday, January 14, 2019

Trademark Use -- Some Websites Just Won't Do

In this age of web-based product marketing and sales, the Federal Circuit provides a reminder that a web page may not suffice as an acceptable specimen to establish use of a trademark with a product.

In order to constitute a valid trademark, and to register the trademark, the mark must be used on or with a product. U.S. trademark law provides for three primary ways in which a trademark can be used with a product so as to permit registration: it can be placed directly onto the product (including applied to tags or labels affixed to product), it can be placed on a container of the product, or it can be placed on a display (for example, a point of sale display) associated with the product.

At times it may be difficult to place a trademark on a product, particularly when the product is sold in bulk, or when the mark primarily appears with the product on a web page. But care must be taken when a web page becomes the primary or sole method by which a mark is displayed with a product. The question becomes whether the web page is a true point of sale display or whether it represents mere advertising.

Today's opinion from the Federal Circuit re-emphasizes the rule that a web page that constitutes mere advertising is not an acceptable use of a trademark so as to permit registration. The opinion explains that the particular trademark applicant manufactured fabric in bulk for use in the manufacture of apparel. The applicant's mark was not affixed to the bulk fabric but, rather, appeared on its web page along with a description of the fabric's features. In addition, the applicant added the following language to its web page: the text “For sales information:” followed by a phone number and email address.

Nowhere on the web page was there information concerning pricing, minimum quantities, payment options, shipping information, or any other information permitting purchase of the bulk fabric.

The appellate court determined that a web page that merely provides a phone number or e-mail address for sales information, and with no other information permitting a buyer to purchase the goods, is not an acceptable display for trademark registration purposes. Rather, it is merely an advertisement. The court reasoned that if a prospective buyer was required to obtain necessary purchasing information via a phone call or e-mail contact, then the purchasing information would be acquired off of the display rather than within the display. The court explained:
“if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”
And if the web page is not a point of sale, then use of the mark with the product description on the web page does not constitute an acceptable specimen, and is not an acceptable use allowing registration of the trademark.

So the lesson is this: if a trademark user wants to rely on its website to prove use of its mark, then the website needs more than a mere phone number or e-mail address to allow detailed sales information. The website needs to provide some basic purchasing information, such as price, minimum order quantities, payment options or shipping information.


Wednesday, January 9, 2019

Monday, January 7, 2019

Is There A Southern Border Crisis?

It seems to me that if there is a true national crisis, then we don't need to think about it, we don't need to debate it, we don't need to schedule a TV announcement in the future, and we don't need to pontificate. If there is a true national crisis, such as the attack on Pearl Harbor or the attack on September 11th, then we know it, it is plain and obvious, and we act on it immediately. The longer it takes to debate whether something is or is not a national crisis strongly suggests that it is not.


U.S. Government Shutdown Is Not Helping U.S. IP-Based Business

The shut down, or slow down, of various U.S. government offices caused by the budget impasse is doing more than merely inconveniencing visitors to the national parks. The lack of a budget is hampering business and consumers as to their branding, knowledge and creative endeavors. Here are some examples:

  • Federal law requires that all labels for alcoholic beverages must be approved by the Treasury's Office of Alcohol and Tobacco Tax and Trade Bureau (the TTB). When the TTB operates smoothly, it is easy for a brewery or winery to submit label applications, submit payments, and submit other required reports to the TTB. Labeling approval by the TTB, in turn, allows the distribution of alcohol products in U.S. commerce. But the TTB is now non-functional. It is not presently approving label applications and required reports. "Submissions will not be reviewed or approved until appropriations are enacted." So, if you are a brewery, winery, distiller or alcohol importer, don't bother bottling new offerings. You cannot distribute new offerings in U.S. commerce at this time without label approval.
  • The National Archives is closed due to the budget issues. "Due to the shutdown of the Federal Government, National Archives facilities are closed, websites and social media are not being updated or monitored, and activities are canceled." The National Archives provides access to a treasure trove of invaluable research, including historical military and veterans' service records, primary educational resources including educational and historical documents, records and photographs, and U.S. founding documents including the Declaration of Independence, the U.S. Constitution and the Bill of Rights.
  • The federal patent and trademark office is presently open for business due to its budget surplus from prior year fee collections. But once these funds are exhausted, "the agency would have to shut down at that time." So, in that event, no more patents will be processed or issued, and the same goes for trademark registrations and renewals.
  • U.S. Customs (CBP -- Customs and Border Protection, an arm of the Department of Homeland Security) is charged with preventing counterfeit goods from coming into the U.S. through U.S. ports of entry. But the stopfakes.gov website and the CBP website are nonoperational due to the lapse in funding.
  • Similarly, the CBP allows businesses to obtain confidential status for their U.S. imports and exports in order to protect confidential shipping information and trade secrets. This service is presently nonfunctional.
  • Federal courts run out of money this coming Friday, January 11, 2019. And since patent and copyright claims can only be filed in federal court, owners of these rights may be hampered in protection of their IP.
  • The Federal Drug Administration, an agency that regulates and approves new life-saving advances in medications, can no longer accept new fee-based filings during 2019 because of the budget impasse.
There are many more examples of how the present budget impasse is harming U.S. creative and inventive business -- and the public. But this is enough.

Friday, January 4, 2019

1923 Copyrights Have Now Expired -- Long Live 1923

Copyrights last a long time, but they do eventually expire. This is now the case with works first published in the U.S. in 1923, and previous.

The term of copyright can be confounding since there have been so many modifications to the term over the years. For this purpose, it is useful to consult a term chart. But while different works published or created at different dates may have different terms, the drop dead termination year for any work published or created by 1923, has now terminated as of New Year's Day 2019.

In 1998, the Sonny Bono Copyright Term Extension Act extended the copyright term of all works not then in the public domain by twenty years from 75 years to 95 years. Thus, works in the public domain by 1998 consisted of works first published in 1922 and earlier (1922 + 75 = 1997). But works first published in 1923 received an extra 20 years of life -- to 95 years -- since their term had not yet expired as of 1998. Thus, these works have now termed out as of the close of the last day of 2018 (1923 + 95 = 2018).

Examples of top pop music hits from 1923 include:

  • Yes! We Have No Bananas
  • Parade of the Wooden Soldiers
  • Carolina in the Morning
  • That Old Gang of Mine
  • Who's Sorry Now
  • St. Louis Blues
  • Baby Won't You Please Come Home?
  • T'aint Nobody's Business if I Do
  • Way Down Yonder in New Orleans
  • Barney Google
Examples of best selling novels and stories from 1923 are:
  • The Murder on the Links (Christie) (Agatha Christie published several stories in 1923)
  • Bambi (Salten)
  • The Ego and the Id (Freud)
  • Saint Joan (Shaw)
  • A Lost Lady (Cather)
  • The Watsons (Austen)
  • Tarzan and the Golden Lion (Burroughs)
  • Tulips and Chimneys (E.E. Cummings)
  • Men Like Gods (Wells)
  • The Rustlers of Pecos County (Grey)
  • The Rover (Conrad) (this was Joseph Conrad's last full novel)
  • Sherlock Holmes: Adventure of the Creeping Man (Doyle)(Doyle published several Sherlock Holmes stories in 1923)
  • The World Crisis, Volume II: 1915 (Churchill)

Next year at this time, all of the works created or published in 1924 will fall to the public domain.