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!

Failure to Function Example

Love it! Here’s a great example of a term’s failure to function without widespread use on goods.

This is a big deal, because in the Merch By Amazon fight against frivolous trademarks, USPTO has typically denied Letters of Protest that did not include evidence of many competing products. But widespread use in the marketplace is not always required.

Regarding #MAGICNUMBER108, the USPTO Examining Attorney explained,

Slogans or terms that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)).  The more commonly a term or slogan is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or slogan will be recognized by purchasers as a trademark or service mark.  See In re Hulting, 107 USPQ2d at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.

USPTO

Girlboss Update

GIRLBOSS’s attorney raises some interesting points to overcome USPTO’s initial “failure to function” refusal:

  • the owner, Sophia Amaruso, already owns several trademarks for the term; and
  • she coined the phrase (unlike “I’m kind of a big deal” which was already in widespread use before the movie).

Still, I saw GIRLBOSS all over the marketplace before I’d ever heard of the applicant, and doubt consumers seeing it on a shirt or wall poster think they are buying from her.

From a “freedom in the marketplace” standpoint, it seems like it should be available for those who just want to identify themselves as a “girlboss” whether or not they endorse her per se.

Besides, having it spread wider in the novelty marketplace can make her other businesses stronger through increasing brand name recognition (see Malcolm Gladwell’s The Tipping Point: How Little Things Can Make a Big Difference).

Makers can learn a lesson from this saga: beware of building a brand on an inspiring message alone. Suppose the mark was instead “Girlboss by Sophia Amaruso”? Buyers who want to be part of what she’s doing would gladly pay to do so. And others who simply identify with the feminist rally cry that “girlboss” embodies could still find a gazillion novelty products to express their enthusiasm for the message.

What do you think? (I don’t use it on any of my products, BTW. Just an interested bystander.) 

I’m curious how USPTO will rule on this.