Alt Legal Connect Session Summary: Filing Trademarks with an Eye Towards Litigation
Alex Sandler | October 30, 2020
Thank you to Alexandra Sandler for participating as a Law Student Reporter at Alt Legal Connect! Alexandra is a 3L at Cardozo School of Law. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.
On Wednesday, October 28, Caroline Fox, of CJ Fox Law, presented the session, “Filing Trademarks with an Eye Towards Litigation.” During this session, Caroline discussed how transactional trademark attorneys can file applications and advise clients to best position marks against potential litigation.
Caroline began her discussion by pointing out that as a trademark attorney, “You’re not serving your clients well if you’re just going for registration.” It’s also important to protect your client from ever having to go to litigation. Accordingly, Caroline provided helpful tips on how trademark attorneys can effectively file trademark applications and advise their clients to best position their trademarks against potential litigation.
Begin with the End in Mind
Caroline explained that when attorneys draft their clients’ trademark applications, they need to begin with the end in mind. This means that they need to think about the possible defenses that a defendant may use in litigation for trademark infringement. Typical defenses include standing, preclusion, functionality, fair use, parody, laches, and so on. Being proactive can help an attorney prepare for the worst-case scenario and be more productive to obtain the best outcome for clients.
Trademark attorneys know that when filing a trademark application, specimens are essential to prove to a USPTO examiner that a trademark is used in commerce. Caroline recommended including as many specimens for as many products as possible to avoid receiving an office action, which hinders the application process. Moreover, by including many specimens in the application, you’re making a strong case for your client that the applied-for mark is actually in use with every good and service listed in the application. This will prevent an opposer from claiming that your client’s mark is not used with a good or service.
Caroline also advised that when determining which specimen to use, it’s important to consider what specimens are going to be useful in the future. In recent years, social media specimens have found a place in many applications, as trademark applicants frequently include screenshots of Facebook, Instagram, and LinkedIn in their application for registration. While these types of specimens will likely be useful years from now, MySpace, for example, might not be. With rapidly evolving technology, practitioners need to keep in mind that some social media platforms could be obsolete in the future, and therefore, some specimens may not be appropriate evidence later on to show actual use of a mark.
Facts within the Application
Getting the facts right as to the first use and first use in commerce date is crucial. For example, in a trademark infringement dispute, a judge who is considering ruling a motion to dismiss under 12(b)(6) can look outside of the pleadings to the trademark document records. Consequently, it’s important to determine exactly when your client first sold his or her product with the mark and when your client first used the mark in commerce.
If your client doesn’t remember when the mark was first in use, do not sweat! There are a couple of different ways you can do your due diligence to determine the date of when the mark was first used in connection with a good or service and in commerce. Caroline recommended first trying Way Back Machine, which is essentially a digital archive of the World Wide Web. It allows a user to go back in time and see how a website looked in the past. This is the best way to get hard evidence of what your client’s website looked like on a certain date and when your client started selling the good or service. In addition, platforms such WooCommerce, Shopify, and Amazon track a user’s sales, so if your client is using these platforms you can look at the sales history to determine the first sale. Moreover, if your client created a Facebook page, you can look to the “About” section on the page to see when it was established. This could be helpful if your client performs services to determine when the mark was first in use.
Utilize Every Avenue
Another great takeaway from this session is that attorneys can utilize other avenues such Amazon and Facebook to limit litigation for their client. For example, if someone is infringing your client’s trademark, but your client doesn’t want to file a complaint and pursue litigation, you can file a takedown on Amazon or Facebook, which is a way to stop the revenue stream for the infringer immediately. Often working with these sites can eliminate the need for litigation and even force an opposing party to the negotiation table.
Signing the Application
All documents filed in connection with a trademark application must be signed by a proper person to verify the facts in the application. While attorneys can sign the application, Caroline cautioned that it’s not generally a wise idea. When you sign an application for a client, you are submitting a sworn statement that you have personal knowledge of all the facts in the application. In the event that your client is brought into court for litigation, the court may rely on these trademark documents because they are facts. Your signature on these documents may backfire and cause you to become a fact-witness in litigation, and you may be conflicted from representing your client. This puts your client in a tough spot. Not only will your client have to fight a lawsuit, but it may also be necessary to find a new attorney.
Caroline ended the session by emphasizing the importance of client counseling. Caroline recommended advising clients during and after the trademark application is submitted to preserve their rights and all available remedies. For example, if a client isn’t using the registration symbol on his or her website, products, or in connection with marketing materials, under 15 USC § 1111, the client will not be able to recover profits and damages in the case of a lawsuit for infringement. It’s also crucial to advise clients on the importance of policing trademarks and how to properly license a trademark in order to prevent trademark abandonment.
Access the Recording and Materials: Click here
Fireshot Pro – Use to capt
ure screenshots and include date/time and URL (Thanks, Robert Pierce!)
“Printing the page in Chrome captures the date and URL, if it look okay. Otherwise, I’ve been using the snipping tool to take a screenshot of the main page to show the URL and the date on my computer screen and then also taking a rolling screenshot of the entire page if needed using a program like SnagIt (which doesn’t capture that info, but normally looks pretty good if there aren’t slideshows embedded).” (Thanks, Becky Summers!)
Internet Wayback: https://archive.org/web (Thanks, James Creedon!)
You can archive an entire site with Adobe DC, but it doesn’t always look so great. File–>Create–>PDF from Web Page. Select “Capture multiple levels.” (Thanks, James Creedon!)
Use Adobe DC to create one big PDF with multiple specimens (Thanks, James, Creedon!)
Check out our article on policing your mark here: https://www.altlegal.com/blog/alt-legal-ip-docketing-blog/policing-your-clients-marks-with-a-2d-watch-service-and-more