USPTO Audits

USPTO apparently audits registrations! The screenshot is hard to read, so here’s what it says:

The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. See 37 C.F.R. §§2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods identified in the registration.

To comply with the audit, you must submit proof of use of the registered mark for two additional goods per class. Id. If proof of use for the goods identified is not available, the identified goods and any other goods not currently in use should be deleted from the registration.

Therefore, the owner must submit the following:
(1) Proof of current use of the registered mark in commerce for the following goods:
“Canvas shoes” and “children’s headwear” in International Class 25; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.” 37 C.F.R. §§2.161(h), 7.37(h).

Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale. A tag or label that is not shown affixed to the goods is not acceptable proof of use. Similarly, a package that does not show or identify the goods therein is not acceptable proof of use.

Here, for your viewing pleasure, is the screenshot:

Screenshot of USPTO Post Registration Audit
USPTO’s Post Registration Office Action requests proof of use in their audit.

In this case, the owner failed to provide proof, and the trademark is now canceled.

Takeaways (when filing for a trademark):

  • only list the goods you are selling (or in 1B cases, intend to sell);
  • get some products listed in each class (category) quickly; and,
  • get dated proof of your earliest sales so you’ll have it if you are audited.

PS I avoided the serial number in the screenshot on purpose. Trade secrets, ya know!

LOP Examples: Bible Verse

When filing a Letter of Protest against an application to register a Bible verse or other religious quotation as a trademark, here’s what you need to know:

  1. Legal Basis: Failure to Function – Religious Text See TMEP 1202.04(c)
  2. Evidence: It’s not enough to tell USPTO the verse reference. They need to SEE proof that the verse is in the Bible, Koran, or whatever. For WITH GOD ALL THINGS ARE POSSIBLE, I submitted the Google Search results (because the first one listed put the phrase in bold print as part of the first result, and showed the verse reference), and a page from BibleGateway showing the entire verse in context. (NOTE: I printed these PDFs using Fireshot, in incognito mode. If you forget to use incognito, you should edit the file before uploading to remove any personally identifying information. Also, be sure the PDF includes the URL & date of capture. Fireshot adds this automagically.)
  3. More Evidence: Just for good measure, I included the Google Shopping results (splitting them into part 1 and part 2 to keep the file size under 30 MB per USPTO’s requirements). (NOTE: If the Legal Basis was “Widely Used Message, TMEP 1202.04(b)” as in Dave Cadoff’s excellent example here, this evidence would be inadequate for a post-publication Letter of Protest. Dave’s method works well early in the process, which is where anyone fighting frivolous trademarks should concentrate their efforts. But sometimes, as in this one, things get farther along before the application is discovered.
  4. Description of Evidence I Used: “1) Google search results, showing the term is an excerpt from Matthew 19:26, NIV Bible; 2) BibleGateway results, showing full text of verse; 3) Google Shopping results, showing the phrase used on a wide variety of goods (signs, jewelry, pillows, journal, pocket tokens, wall art, decal) from a wide variety of platforms (including Amazon, Etsy, Christian Book Distributors, Kohls, Poshmark (Nordstrom bracelet), Gifts Catholic, and more).”
  5. To see a redacted USPTO receipt for filing (to double-check how to complete the form), click here.

Will It Work?

Sadly, this one may fail, as the deadline for opposing was yesterday (30 days after the application is published for opposition). I filed this anyway because I only checked on it this morning, and since it is a simple, CLEAR ERROR on USPTO’s part, I’m hoping they’ll accept it past the deadline. (It took longer to write this blog post than it did to prepare and file the LOP.) We’ll see.

LOP Examples: Class 035

[UPDATE 4/9/19: each of the applications mentioned below was refused before my Letter of Protests were reviewed, so these will all be moot. Sigh. Another challenge with discovering what evidence is admissible in these cases. I did, however, learn that evidence of premature use is not appropriate for a Letter of Protest.]

I’ve filed four Letters of Protest against frivolous trademark applications in Class 035 (online retail sales) in the past week. This is uncharted territory for me, as my past LOP successes have all been in typical Print-on-Demand categories like T-shirts. After a Crazy Cat Lady LOP (filed by a friend) was rejected, I asked Joe why. He explained the evidence must match the category of goods or services. Since T-shirts aren’t the same as online retail stores, that evidence of widespread use is moot (legalese for “irrelevant” — at least as far as he’s concerned).

It’s important to note (and Joe emphasized this), every attorney advisor is entitled to their opinion, and it’s sort of a gray area as the courts and TTAB have not specifically addressed the issue of evidence of widespread use in a related industry. Even though Merch by Amazon or Etsy sellers are providing online retail services (by making products available to consumers that are created after the purchase), the acceptable evidence should “look like” an online store or marketing materials for it.

(Side note: Basically, we are blessed that the examining attorney chose to refuse the “Crazy Cat Lady” IC 035 application due to its failure to function as a trademark. They based their decision on widespread use of the term on clothing and other goods, which is why the evidence attached to the refusal letter looked nearly identical to the Letter of Protest which had been denied.)

As the Lord would have it, within a day or so of my conversation with Joe, my friend Rhonda shared with me FOUR new frivolous applications in IC 035 (online retail services) I could use to test out my understanding of Joe’s explanations. This is one of those four.

Download or view the PDFs I submitted below. Check out the incredibly boring videos on my YouTube channel for the reasoning behind each piece. In a perfect world I would create an engaging script to make it less painful. Listen to them at faster speed to survive. (The first of five videos is embedded below. I’ll have to add the rest later. Click here to go directly to the playlist.)

Click to view or download:

The Index of Evidence

The Legal Basis and Evidence Description

Google Search Results

Google AdWords Report

Mama Bear Online Stores

Mama Bear Amazon Brands (first half)

Mama Bear Amazon Brands (second half)

Mama Bear Etsy Shops (first page of search results)

Mama Bear Facebook Shops

Mama Bear Novelty Products (the application lists online retail store selling wood signs, stickers/decals, hoodies, leggings, so those are the types of goods I tried to provide)

Mama Bear Definitions

Mama Bear Similar Applications (showing the owner’s apparent goal to monopolize similarly popular keywords to market online retail stores)

Mama Bear evidence of Premature Use