A Little Thanksgiving IP

By Debby Winters

Does your Thanksgiving Day routine involving watching the MACY’S THANKSGIVING DAY PARADE? Ever wondered if Macy’s has trademarked that name? Well, wonder no more. They received trademark protection from the USPTO on December 1, 1998 for entertainment services, namely, organizing and conducting a parade. They claimed first use in 1924. That means there is one and only one MACY’S THANKSGIVING DAY PARADE. And since that is true Macy’s generates millions of dollars for that one day parade. They charge approximately $20,000 per float, and their additional revenue for balloons and exclusive broadcasting rights to the parade and the performances that are given right in front of the store.

This year, however, Macy’s is in decline. The original R.H. Macy & Co. was a dry goods emporium that opened in downtown Manhattan not long before the Civil War. What’s now known as Macy’s was once Federated Department Stores Inc., which had acquired many of the department stores that might sound familiar to people born before 1970 or so: Burdines, Bullock’s, I. Magnin & Co., and Lazarus, to name a few. The company bought Macy’s in 1994 and a decade later took its name and rebranded its other department stores with the Macy’s name, too.

In the middle of last year, Macy’s decided to close 100 of its 730 stores, eliminating 3,900 jobs. (After a disappointing 2016 holiday season, Macy’s said it would cut 6,200 more jobs.) About half of the 70 stores it’s shut down this year are within 10 miles of another Macy’s.

There have been struggles with large department stores, but Macy’s is trying to make a comeback and is dedicated to keeping its MACY’S THANKSGIVING DAY PARADE going and going. If they stop having the parade they will be in danger of losing the trademark, because as we all know, with the Trademark Office it is Use It or Lose It!

Happy Thanksgiving!

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USPTO launches website for customers affected by the Hurricanes

The USPTO has a new webpage for customers affected by the Hurricanes. It includes contact information for those who may have questions or problems regarding applications or other proceedings related to patents, trademarks, or other business before the agency. The webpage will be updated to include links to forthcoming guidance and instructions for customers impacted by Harvey, and for those impacted by Hurricane Irma should it become necessary.

DON’T BE FOOLED-The USPTO does NOT issue Invoices to trademark owners/applicants

By Debby Winters

Many trademark owners and applicants have fallen victim to the ever-growing problem of paying a fake or misleading invoice, which looks convincingly authentic and from the USPTO.  Not only do they look like they come from official government offices, they reference the particular trademark registration number and mark, hoping to cause further confusion. The companies sending these fake invoices use names like U.S. Trademark Compliance Office or the Patent and Trademark Bureau.  To help consumers, the USPTO keeps a list of fake invoice senders and welcomes reports of ones they don’t know about.

These fakes invoices claim to be for things like renewal fees, monitoring, customs recordation, or to place your mark in a database that turns out to be a fake database.  The invoices may contain tiny, fine print that explains what they are actually doing and that they are not part of the USPTO, but this is often overlooked.  More often, the fees are paid by unsuspecting folks who want to protect their trademarks.

The USPTO is making strides to educate people about these misleading invoices. If you use a trademark attorney to do your filings, all necessary filings and fees due to the USPTO will go through your attorney. If you do not use an attorney, check with one before you pay and get fooled.

 

The Slants fought the law and The Slants won!

By Debby Winters

Should an all Asian-American rock band have the right to call themselves by what the U.S. Patent and Trademark Office termed a disparaging name? The US Supreme Court says yes. The Slants fought the law and The Slants won!

The recent Supreme Court ruling could have broad impact on how the First Amendment is applied in other trademark cases.  The USPTO initially kept the band from registering its name, The Slants, and then rejected its appeal, citing the Lanham Act, which prohibits any trademark that could “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”  A Federal Court sided with the band and the USPTO sued to avoid being compelled to register the name as a trademark. The Supreme Court has now weighted in and has sided with The Slants.

You may be asking why the band wanted the name in the first place. “We grew up and the notion of having slanted eyes was always considered a negative thing,” Simon Tam, the band leader, said.  “Kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.” This attitude is in contrast to the Native Americans, who in 2014, asked the USPTO to cancel the registrations for the Washington Redskins because the Native Americans considered the name offensive.

This decision may lead to more marks the USPTO terms “scandalous” to ruling that allow the marks based on First Amendment grounds.  And if so, will this mean a short-term run on the Trademark Office to register offensive trademarks while you may be able to get them through?  Applications that have been rejected on the basis of Section 2(a) may have a new life for those who use or intend to use the marks in commerce. Only time will tell. Stay tuned!

 

Patents and right to privacy

By Debby Winters

As July 4th approaches and we think about our rights, like the right to privacy, we should think about how technology has changed that right. Let’s look at some recent patent applications that may limit your right to privacy just by using your smartphone.  The patent application entitled titled “Augmenting Text Messages With Emotion Information” that Facebook submitted in 2015 seems not only creepy, but also extremely invasive.

facebook patents

Photo Credit: ©USPTO.GOV

The patent application claims that by identifying one or more words in the text of the message along with the speed and pressure of typing on the keyboard that the emotion of the use can be predicted.  Do you want Facebook to know your emotions based on how hard and fast your press your phone keys? Or is this just a little too invasive into your private conversations?

What about the camera fingerprinting patent application filed recently? Heard about that one? This patent application covers a method for creating “fingerprints” that attach to particular cameras and photographs and then match those photographs with particular social media users.  Essentially, Facebook can analyze images uploaded by users and determine the unique signifiers of the cameras used to capture the images. The patent application even discusses looking at things like the user’s style of naming image files, and using that information to create “inferred” connections between the original user and other users.

A third patent application submitted by Facebook combines the camera aspect with the emotion aspect of the two just discussed. It is the emotion-detecting smartphone camera.

facebook patents

Photo Credit: ©USPTO.GOV

This technology actually spies on users through their smartphone cameras and reads the emotions on their faces as they scroll through their Facebook feeds and allows Facebook to keep a storage file of your emotional responses to serve you “better-targeted” ads, content, and other media.

 

A fourth of Facebook’s attempts to track a user’s behavior is a system for detecting boredom in users by tracking their movements as they scroll through Facebook’s app.  The technology would present users with an initial set of content items in their Newsfeed, and then track whether or not the user pauses on any of the content items for an amount of time that meets a prescribed threshold.  If a user paused on an item for five seconds as opposed to pausing for a shorter time period, Facebook can determine that you’re more interested in that content item.  Is it boredom or is the user just busier than usual?  Add this to the method for receiving information on a user’s eye placement as they scroll on the your phone and maybe that question will be answered.

Many of these patents haven’t received approval just yet, but Facebook is certainly leading the charge in innovations that put user reaction at the center of its products’ performance. For users who desire a more optimal Facebook experience, personal privacy might be a small price to pay.

Happy July 4th!

Stats on Patents

There’s a great blog called Patently-O where the author Dennis Crouch keeps up with stats on patents, including things like pendency and allowance rates. He recently published three informative articles that might be worth a read, if you like to keep up with things like allowance rate of patent and the number of applications pending. You can check out them out at these links:

1- USPTO Allowance Rate

2- Steady-State Patent Allowance Rate

3- Pendency of US Patent Applications

 

Enjoy!

Can A Trademark Registration Be Cancelled For De Minimis Use?

By Debby Winters

The United States Patent and Trademark Office (USPTO) requires that there be use of the mark in commerce, both in registering the mark and continued use to maintain the mark. There have always been questions about what constitutes use in commerce, as there are no hard and fast rules.  Now there’s a question about how much use must there be before it is considered de minimis use.   The reason this has come up is that the USPTO’s Trademark Trial and Appeal Board (TTAB) issued a non-precedential opinion in the cancellation case of Adidas AG v Christian Fellowship Church that could have potentially instructive influence on the future of the definition of use in commerce.  The case analyzed whether sales of only a small number of goods by Christian Fellowship Church constituted “use in commerce” under the Trademark Act.

Adidas had filed a trademark application for the mark Adizero, which was refused based upon a likelihood of confusion with two trademark registrations owned by the respondent, Christian Fellowship Church, for the mark Add A Zero (one stylized and one in standard letters). Adidas subsequently filed a petition for cancellation, claiming, among other things, that the registrations were void ab initio because the subject marks were not in use in interstate commerce as of the filing date of the underlying use-based applications.

The TTAB set out to explore the extent to which Christian Fellowship Church had used its Add A Zero marks. The evidence in this case showed that Christian Fellowship Church operated a church that had a bookstore in the basement where it sold roughly 150 shirts and caps embroidered with the Add A Zero mark.  This “modest quantity” was sold at the retail store.  Adidas alleged non-use based on these facts and Christian Fellowship Church pointed to sales of one shirt and one cap made on one date and two caps made on a subsequent date to customers who may have been out-of-state purchasers.  However, Adidas pointed out that the sales were still within the state, even if purchased by an out-of-state purchaser.

The question was whether this was in fact “use in commerce.”  The TTAB found that these sales did not constitute interstate commerce. Although the decision in Adidas AG is not precedential, it may serve as an indicator as to how the TTAB will decide future cases where a registrant has only sold a relatively small number of goods and where those sales are local, regardless of whether they are to residents of another state. Caution is warranted for trademark owners when basing a use-based trademark application on the sale of only a few of the products to be identified in their applications. Similarly, parties seeking to cancel a trademark registration based on non-use would be wise to explore the amount of products that a registrant had sold under the mark at issue.