Law & Business Video

The Patent and Trademark Office of the United States refused to register a Lizzo trademark application for “100% That Bitch” in apparel.

The reason why is because a phrase/trademark has to function as a trademark.

Taking a T-shirt and puting a phrase on top of it – we call that “ornamental use”. Ornamental use – slogans, phrases – are generally not registerable as a trademark.

There has to be some kind of source identification of that particular mark.

With apparel, usually it’s where the buyer would expect it to be. Maybe on the front pocket of a dress shirt; maybe on the inside of a sportscoat. That’s what consumers are expecting – not the front of a t-shirt, which is what this was.

Generally, the Patent and Trademark Office is going to reject an application for stuff that is ornamental.

Now, in this particular case what bumps it from ornamental to a source identifier for Lizzo? In a precedential decision, the Trademark Trial and Appeal Board stated that the phrase “100% That Bitch” has become associated with her through the song “Truth Hurts” – through awards that it has won – through the recognition it has received.

There are lots of sales about that particular phrase. Let’s also not forget the trick that her lawyers – a great trick, by the way – her lawyers used. The front of the T-shirt says “100 That Bitch” and on the back it says “Lizzo.” Or “100 That Bith” with a picture of Lizzo and then the name Lizzo under it. There’s that phrase and the source identification – they go hand in hand.

That is true with apparel regardless of the phrase. Remember ornamental use for a trademark is just putting a phrase on something. It’s generally not enough. There must be that association of the source of the apparel and that was the key here. That was the key from bumping that from an application to a registration.

Here’s a lightly-edited transcript of the video blog:

Hi, I’m Anthony Verna, managing partner, Verna Law, back for another video blog: We have some thoughts on trademark damages.

If you are going into federal court and you are going to be a plaintiff, here are a couple of thoughts for you.  

Certainly, talking to our clients about getting money – and you’re going to get money, you’re going to get the lost profits and you’re going to be entitled to triple those damages.

You have to temper yourself a little bit about it because first off, number one, most cases don’t go to trial. Most cases settle. So obviously on some kind of settlement, there’s going to be a discount on the damages, but you’re going to take the discount damages. Why? Well, you know, it’s going to be less time in litigation and less time with legal fees. So that discount is generally taken in order to, uh, make the pain go away.

Don’t get me wrong, litigation can be painful. So that’s one particular thought there as to what, why damages might be less than a trademark infringement matter than you were probably hoping it is the potential plaintiff.

Also, many products have multiple trademarks. I’m going to pull this thing right here. It was way back to the old days of podcasting, the Blue Snowball. There it is the snowball, Blue and Snowball: two trademarks on one product.

If one of those products were one of those trademarks, excuse me – were to be infringing? What I would say is, is there’s a house Mark. And then there’s the, the brand Mark. And we do sometimes take into account. Well, how much does one Mark matter from the other? And, and especially in a case like that, you’re going to see again, your particular damages as a plaintiff are going to be discounted because there’s more than one Mark on the product.

A lot of products have more than one trademark as I’m sure you could see a lot of the stuff that’s behind me, probably it has more than one trademark, somewhere on the actual product. That’s going to be true here as well. So make sure that you go in with your eyes wide open into any particular type of litigation, because you need to make sure that you think about the kinds of damages that you may be entitled to

I’m Anthony Verna, managing partner of Verna Law. We are a full-service intellectual property and advertising law firm. You can see us vernalaw.com. Thanks very much. See you soon.

Lightly-edited transcript of the blog entry:

Hi, I’m Anthony Verna, managing partner, Verna Law.

Let’s talk a little bit about the Trademark Modernization Act of 2020. That’s right. Congress passed a COVID spending bill and tucked in some other legislation.

Congress, you need to stop doing that! One bill one thing, but, nope, Congress, isn’t going to do that.

So, the Trademark Modernization Act of 2020 buried in the middle of the COVID spending bill, let’s talk a little bit about that. What it does.

Number one, third parties may file petitions for expungement or reexamination. That’s right. The biggest change to the current USPTO procedure is that there’s a new provision. There are ex parte expungement petitions against registrations for trademarks that have never been used. Ex parte means it’s not really going to be a two-party procedure. It’s a one-party procedure. So you, as one party who you filed to show that this trademark has never been used before, that’s how we get going on, on this expungement.

The third party, can petition for expungement in connection with some of the goods and services or all of the goods and services. The act specially notes that the registrant’s evidence of use is not subject to the stringent rules, applied to the submissions of use specimens in the application process. Marks registered from outside the U S who obtained the registration based on a home country registration or via the international registration process may present evidence of excusable non-use to avoid that expungement. Now, why can third parties do this? We’ve seen a jump – a jump! – in the number of registrations that have happened internationally, mainly from China. They really aren’t real, and frankly,  have never been used in commerce. So the USPTO has been asking Congress for a way to simplify the process, to get rid of registrations that actually haven’t been used in the United States.

A third party can also seek reexamination of a registration. If a party submits evidence that a reasonable investigation shows that a trademark was not actually in use at the time of filing based on actual use or at the time that the applicant claimed use the difference between an expungement and reexamination are a expungement, is for cases in which a Mark has never been used. Whereas re-examination is for cases in which the Mark was not in use at the time that the use was claimed and be a petition for reexamination must be filed within five years of the issuance of a registry.

Number two, third-party evidence is now allowed in trademark applications. That’s right, the Trademark Modernization Act of 2020 authorizes the USPTO to permit third parties to submit evidence supporting a refusal to register a trademark and to collect a fee from that third party, making the filing.

Let’s remember our previous  video, where we talked about the amount of money that is going to be raised for the PTO in 2021, because fees are going up!  Well, here’s a creation of a totally new fee, which basically does enhance the letter of protest that third parties have been able to file for many, many years. However, now, a third-party can really throw in that evidence and filed yet another fee, but it does expand the letter of protest. And it does help a third-party to submit evidence of non-use of the applied-for trademark.

Number three, time periods for responses to office actions may be shorter, but extendable, right? Currently the USPTO issues an office action and reviews and registration are requiring further information or action. On behalf of the applicant, the applicant has six months to respond  The new act permits the USPTO to set a shorter response period, if it wishes.  It doesn’t necessarily have to, but you can still be extendable to a total of six months. And then the USPTO is authorized to do what you guessed: It can charge a fee for the extension. So I have no doubt that change is going to be coming sometime soon.

Fourth, the plaintiff in a trademark infringement lawsuit is presumed to have suffered irreparable harm due to the infringement.  This resolves a split among federal circuit courts. Some had decided that trademark infringement cases seeking injunctions against the use of a trademark is not irreparable harm and some stated that that is irreparable harm. Basically the act States that the courts have to take – and it is a rebuttable presumption – but the courts have to presume that a plaintiff, if comes in with irreparable harm, if it can show a trademark.

Those are some changes for you. They are big changes coming along sometime in 2021. Once the regulatory process is complete, but that’s the Trademark Modernization Act of 2020  for you in a nutshell.

Again, my name is Anthony Verna. I am the managing partner of Verna Law. You can see us right here, Verna Law, visit us vernalaw.com for more information. Hopefully if you have any questions, don’t hesitate to contact me, [email protected]. Thank you.

Hi, I’m Anthony Verna, managing partner, Verna Law. You can see us on the web at vernalaw.com. So 2021 is coming up – Happy New Year! That’s why we’re dressed casually: It’s the holiday season.!

However, the patent and trademark office has said big changes come in 2021. Those big changes? New fees! Thanks, federal government, for raising our fees in the middle of a pandemic, in a bad economy.

However, not much we can do with that. The patent and trademark office is raising rates. Come January 1st, a standard patent and trademark office trademark application is going up to $350 per class.

Now, a standard application is when an applicant actually types in his or her or its own goods and services description. A plus application is when a set of goods and services are selected from already written phrases. And usually this is only good for, you know, apparel, uh, uh, home where things where you can really list the goods and services as a list.

That’s going up to $250 per class, which is up from $225 per class. So again, standard application is up to $350 from 275, and a plus application is up to $250 from $225. And, if you are looking to oppose an application or cancel a registration, well, that’s going up from $400 for class to $600 per class.

So to file a case in the Trademark Trial and Appeal Board is now going to cost more than filing in federal district court, when you’re asking for monetary damages.

Yeah, I have to say, I think there’s something about that that stinks a little bit, but the, again, that’s what we’ve been handed.

There’s also going to be fees that didn’t exist before in the Trademark Trial and Appeal Board. So for example, if you’re filing a 90 day extension, that’s going to be $200.

If you’re going to be filing a 60 day extension requests, that’s going to be $400 an application. And if you’re going to be filing an extension of time to file an appeal brief, it’s going to be a hundred dollars per application and a new fee for, uh, filing a, uh, an oral argument hearing. That’s right. The middle of your case, you would like an oral argument hearing. It’s 500, hundred dollars per proceeding if you want the oral argument.

So we have new fees from the patent and trademark office.

What I would say is budget accordingly to your needs. Thanks very much.

Again, my name is Anthony Verna, managing partner, Verna Law. You can see it right there. Visit us at vernalaw.com. I look forward to answering all your questions again.

Hi, I’m Anthony Verna, managing partner of Verna Law. We focus on intellectual property and advertising law, but I think you knew that already.

Why should I seek patent protection?

This is the Motherload question.

Simply put, if you have a new and novel idea or invention, and it provides value to the marketplace – without patent protection, and you’re leaving the door open for others to copy and sell your idea. You’ll want the patent protection to obtain exclusivity.

A patent is a monopoly for the invention that is claimed in the patent for 15 to 20 years, depending on the type of patent that is filed.  You have negotiating power. Again, of course, monopoly gives you negotiating power, but it’s a signal to the market that you are serious about your technological assets, thereby opening the door to business negotiations regarding licensing of your invention.

As for valuation, patents are assets, whether that asset is personal or to your company, that hopefully you’re taking your patent, then you are assigning it to your company that you are creating, but it provides a basis for seeking investment into your company.

It provides a basis for saying here is why this particular invention has value. This product has value. This company has value.

It’s also a way for your com you or your company to have additional revenue.

In some cases, all of all of your revenue might be taken through licensing of that particular patent. But if you want to create the product that’s described in the patent and then license it to somebody else, that’s perfectly acceptable as well.

So there are ways to have additional revenue streams because of one patent registration. And again, you get to stop competitors because your patent is filed.

Establishing patent boundaries before competitors enter the market challenges them to avoid stepping on your granted or applied-for claims. It requires an expenditure of time, effort, and money on their part.

And if they’re infringing, you, of course can take them to federal court and get damages for lost profits. Get damages for attorney fees sometimes.

It’s really a way to stop those competitors. And it’s a big gigantic hammer that the federal system gives you as a patent owner.

And that’s why that’s why you should get the patent in your invention.

I’m Anthony Verna, managing partner at Verna Law, where we focus on intellectual property and we’ll see you next time.

Trademarks are meant to signify the source and quality of goods or services. Therefore, trademarks that are descriptive are relatively disfavored. How can someone register a descriptive trademark? I discuss in this video blog!

Here is a lightly edited version of the transcript:

Hi, I’m Anthony Verna, managing partner at Verna Law, where we focus on intellectual property and advertising law. How can someone register a descriptive trademark?

Now, as you may recall, a trademark that is descriptive, in other words, a trademark that completely describes some aspect of the goods or services that the trademark owner is selling. That trademark generally cannot be registered. But how can somebody register that trademark?

It requires what we call secondary meaning. Secondary meaning is some evidence that audiences associate this particular trademark with these sets of goods or services. We need some evidence to build that and generally it is circumstantial evidence. For example, we can have advertising revenues as a part of that evidence. Maybe the number of customers and the amount of sales; maybe the manner, the length and exclusivity of the trademark; use as much evidence as can be built about that particular relationship between the trademark and the consumers of the goods or services.

That is what we need in order to get that registration in the Patent and Trademark Office.

An example that we have on our website is a trademark called FOOD PSYCH. Its goods and services are podcasts and obviously those podcasts are related to food and the psychology of food. Therefore, FOOD PSYCH is descriptive of the goods and services.

However, evidence of over 500,000 downloads of the podcast took that trademark application and bumped it up to a registration.

That’s the kind of evidence that we’re looking for, if the trademark is descriptive.

Again, I’m Anthony Verna, managing partner of Verna Law – IP and advertising law is our focus.

Visit vernalaw.com. I look forward to seeing you next time. Thank you.

This is another video blog to go with our Patent Law FAQ – we hope you continue to enjoy our video blogs.

Here is a lighted-edited transcript of the blog:

Can I get a patent on my software?

I’m Anthony Verna, managing partner of Verna Law, P.C, where we focus on intellectual property and advertising law.

The short answer is “Maybe.” “It depends.” Lawyer answers, of course.

Let’s talk a little bit about what a patent for a software invention would require.

Number one: the algorithm, because that’s really what we’re patenting, has to be new. Our algorithm – or your algorithm – has to be novel. Your algorithm also has to be non-obvious.

This is the typical standard for any utility patent.

However, we had a case about, let’s call it six years ago, in which the Supreme Court said that an algorithmic patent must include an inventive step. What does that mean, six years later? We’re all still a little confused about that, but what I would say is: What does your software, what does your algorithm do that is truly different from an algorithmic standpoint?

Is it more efficient? And how is that efficiency defined? Some algorithms are defined by processing time, especially with software. Some algorithms are defined by user interface and how the user changes the interface. That’s going to be considered an inventive step.

All of that is something to consider while we ask the question, “Can I get a patent on my software invention?”

Just remember, it’s a very high bar. And as a matter of fact, the, Patent and Trademark Office, after the Supreme Court’s decision a few years ago, took all software and algorithmic patent applications and put them to the side before they were considered, before an inventive step could truly be defined.

The USPTO has their definition. We don’t really know what that particular definition is, but we really see that those software patents that do something truly different from an efficiency standpoint are the ones that are granted. That’s what’s really hitting that bar.

Again, I’m Anthony Verna, managing partner Verna Law. See us at vernalaw.com for all IP questions. Thank you.

At Verna Law, P.C., we are doing a series of video blogs that coincide with our FAQs. This video answers the question “What is a patent?”

Hi, I’m Anthony Verna, managing partner of Verna Law, P.C. where our team focuses on intellectual property and advertising law. We’re starting at the beginning of patent law for this series that matches up with the FAQ on our website.

Let’s start at the beginning because it’s a very good place to start.

What is a patent?

A patent is a grant of protection for an invention. I want you to think about a patent as a contract. The government gives you a grant to protect your invention. You have to tell the government, and effectively, the public, what your invention is. That grant by the US Patent and Trademark Office, depending on the type of patent that’s granted, could last between 15 and 20 years.

Understand that this doesn’t allow you to sell your product. You’re always allowed to sell your product, even if you don’t want to get a patent on it, you can sell it.

What the patent grants you is the ability to stop others from copying your invention in your patent from selling the invention in your patent. That’s the key. With patent law, it’s a 15 to 20 year monopoly on what’s described in the patent.

We have three types of patents here in the United States.

That’s the basic overview of what a patent is.

Again, I’m Anthony Verna, managing partner of law. You can find us vernalaw.com and I’ll see you for the next part of our FAQ. Thank you.

The full transcript of this video blog can be seen on our Copyright vs. Trademark page: https://vernalaw.com/copyright-vs-trademark-law/