“We are changing fees to better serve you.”

htsmThe USPTO has announced a number of fee increases to “better serve” its trademark constituency.  The majority of the fee increases punish those Luddites among us who still make paper filings.  The fees for paper filings are increasing between 60% and 200%.  However the fee increases also impact e-filers, with increases ranging from 23% and 100%, and the introduction of new fees for requesting an extension of time to file a Notice of Opposition.

On the positive side, in addition to 37 fee increases and four new fees to better serve us, the USPTO is lowering the fee to electronically file a request for extension of time to file a Statement of Use from $150 to $125.  Why it costs $125 to get an extension, and still only $100 to examine an actual Statement of Use filing, seems less “to better align fees with full costs, ” and more like charging what the market will bear.

As you pay higher fees for your trademark filings, take comfort in the fact that you are being better served.


qech wej QaD trademark nIH (Trademarks Don’t Protect Ideas)

Lucas Film Limited has sued Michael Brown and his Light Saber Academy for trademark infringement, unfair competition, dilution, cybersquatting, state unfair competition, and dilution, arising from Mr. Brown’s running an academy promoting, producing, offering for sale and selling unauthorized “Lightsaber” classes, which purport to teach students how to use “Lightsabers” and/or perform as “Jedi.”


The Academy appears to claim trademark rights in LIGHTSABER ACADEMY, tagging it with a TM, and has adopted a logo that is similar to the Jedi logo created by Lucas Film:


But what should Mr. Brown call his school for teaching the use of lightsabers? Doesn’t he have a right to truthfully describe his services to potential customers? Of course he does.  Trademarks only protect against confusion of source.  Mr. Brown has the right to describe his activities, and even use the trademark of others in doing so, as long as he does not cause confusion, mistake or deception. Whether crossed that line, Mr. Brown has, is now for the Northern District of California to decide.

Lucas Films v. Brown raises an interesting question of what rights creators retain when their works become part of the cultural commons?  There are many instances where an idea introduced by a popular book or movie is developed by third parties, and as long as copyrights are not infringed, and the public is not likely to be confused, those ideas become part of our cultural commons free for all to use.  For example, there is a Klingon Language Institute (http://www.kli.org/) to learn Klingon, the language of the fictional Klingon race in Star Trek.

It will be interesting to see what happens, but it’s important to remember the old Klingon proverb: qech wej QaD trademark nIH! (Trademarks don’t protect ideas).


New TTAB Rules Coming in January 2017

The USPTO has amended the rules for TTAB proceedings.  A Notice of Final Rulemaking was published in the Federal Register on October 7, 2016. The effective date of the amended rules is January 14, 2017. The amended rules are applicable to all cases pending on January 14, 2017 as well as those cases commenced on or after January 14, 2017. The USPTO published a table summarizing the amendments is posted.  The impact of the new rules on Oppositions is summarized on this chart:



In D.C. One Wholesaler, Inc. v. Chien, [Opposition No. 91199035/Cancellation No. 92053919](TTAB October 4, 2016), the TTAB was called upon to resolve a dispute over the ownership of the trademark I ♥ DC.  The TTAB held in a non-precedential opinion, that I ♥ DC was not a trademark — not for being deceptively misdescriptive, as one might expect, but simply because it did not function as a mark.

The TTAB reminded us that the Trademark Act is not an act to register mere words, but rather to register trademarks. The Board said that before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify.  The Board found that the record before it indicated that I ♥ DC has been widely used, over a long period of time and by a large number of merchandisers, as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.  The Board further found that the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term.

The Board concluded:

We find that the phrase I ♥ DC on apparel and other souvenirs, whether displayed in the stacked format shown in the Registration or in the horizontal format shown in the Application, would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC. Under such circumstances, customers would not perceive I ♥ DC as an indicator of the source of the goods on which it appears.

Thus, the Board held that I ♥ DC fails to function as a trademark.  The Board sustained the opposition, and cancelled Opposer’s registration.

The Board’s decision is non-precedential, perhaps because the Board did not want to to encourage a close look into the many registered trademarks that function like I ♥ DC.  When someone buys a shirt or other trinket with a short sentiment (or even a sports team name) do they really think about, or even care about, the source? In the vast majority of cases they couldn’t care less about the source, they are buying the message.  Ever since Dallas Cap & Emblem, the dirty little secret of trademark law is that we routinely bend trademark protection to protect the message and not the source.  However, when you bend trademark law too far, it occasionally snaps.