Florida Patent Lawyer Blog

I was honored to present today at the 11th International Litigation and Arbitration Conference at the beautiful Biltmore Hotel in Miami, Florida. We discussed various aspects of international law, with my focus being on trademark issues relating to import/export of goods.

A common phone call I receive from clients relates to the halting of goods at a port by Customs and Border Protection due to trademark issues. It usually sounds like this: "Mark, my goods were stopped at the port due to a trademark issue. Help!" Often, the problem relates to missing paperwork regarding permission or authorization to use a registered trademark, such as a certification mark, like HDMI. Without the proper paperwork, Customs and Border Protection will assume you have no permission to use the registered trademark and will stop your goods at the port. Today, along with colleagues Robert Becerra, Lenny Feldman and Santigao Cueto, I discussed preventative steps that one can take before importing or exporting goods bearing a registered trademark, steps that can be taken if goods are halted at the port by Customs and Border Patrol and steps that may be taken by an intellectual property rights holder to help enforce his trademark rights in the U.S. A copy of some of the slides I used today can be found here. And here is a photo at lunch showing Robert Becerra on the left and Santiago Cueto on the right.

Some of the preventative steps that can be taken prior to importation of goods bearing a registered trademark include reviewing the product for potential trademarks, including the packaging, any paper inserts, and the product itself. For computer devices, the device should be turned on and the most accessible screens should be scrolled through.

Subsequently, prepare a list of all potential trademarks found on product and perform a search of the trademarks, such as on the U.S. Patent and Trademark Office trademark database (http://tess2.uspto.gov) Trademark Electronic Search System (TESS), and the World Intellectual Property Office trademark database (http://www.wipo.int/madrid/en/romarin/) ROMARIN (International Trademark Information Database)

If no existing trademark registrations are found, then you are in the clear. If a trademark registration is found, then you determine whether the registered mark matches the trademark on your product you are importing and whether the description of goods in the trademark registration matches the product you are importing. If there is a match, the you should contact the owner of the registered mark for permission.

Often, permission to use a certification mark, such as HDMI or Bluetooth, involves obtaining a certificate of compliance froma third party (such as a laboratory), signing a usage agreement, paying a royalty according the amount and type of use and abiding by the usage policy. Here is a link to the HDMI web page that explains its usage policy and provides information on how to obtain permission to use its certification mark.

Like many other areas of life, when dealing with trademark issues relating to the import and export of goods bearing a registered trademark, an ounce of prevention is worth a pound of cure.

Continue reading "Presenting at the 11th International Litigation and Arbitration Conference" »

There are quite a few differences in the way deadlines are calculated for trademark practice, as opposed to patent practice. One of the main differences is how to calculate the deadline for filing an appeal to the Trademark Trial and Appeal Board (TTAB). And one of the main problems in figuring out the deadline is that you must look beyond the TMEP to find the answer - one important rule is located in the TBMP. Below I list the main rules that dictate how the appeal deadlines are calculated for trademark practice.

• You have 6 months to file a Notice of Appeal and an Appeal Brief in response to a final refusal to register a trademark. TMEP 1501


• Assuming you file a Notice of Appeal more than two months before the 6 month deadline (see above), you have 60 days to file an Appeal Brief after the Notice of Appeal. TMEP 1501.02(a)


• You have 6 months to file a Request for Reconsideration in response to a final refusal to register a trademark. TMEP 715.03. But keep in mind that the Request for Reconsideration does not affect the 6 month deadline above.
• If you timely file a Request for Reconsideration and a Notice of Appeal in response to a final refusal , then the 6 month deadline is halted. If the Examiner subsequently decides to deny your Request for Reconsideration, the TTAB will give you additional time to file your Appeal Brief. TBMP 1204
  

Lesson Learned: You should always file a Notice of Appeal along with the Request for Reconsideration, since there is no penalty for doing so and it will stop the 6 month Appeal Brief deadline. Subsequently, you will either get a Notice of Allowance from the trademark examining attorney (which will render the appeal moot) or you will receive a new refusal and the TTAB will give you additional time to file an Appeal Brief.

The only reason not to file the Notice of Appeal with the Request for Reconsideration, would be to save the $100 (per class) fee that goes with the Notice of Appeal. But that small benefit is outweighed by the halting of the deadline and the ease of which this process fits into a standard patent/trademark docketing program. Further, if you file a Request for Reconsideration without filing a Notice of Appeal, there is a possibility that you will run into the 6 -month deadline, without having received a response to the Request, thereby forcing you to file the Notice of Appeal without having the benefit of reading the examining attorney's last refusal. Thus, it's better to stop the 6-month deadline so you can receive a response to the Request and then have additional time to prepare and file an Appeal Brief.

Continue reading "Deadlines for Responding to Final Refusals to Register a Trademark" »

Did we used to shake the film that came out of the Polaroid camera or did we wave it in the air? Everyone had there own technique to make the picture appear faster, I suppose. Regardless, the concept of Polaroid instant film made it into the pop culture - even making its way into an Outkast song ("... shake it like a Polaroid picture!"). But then Polaroid filed for bankruptcy in 2001 ... and again in 2008! Did that mean the end of the iconic Polaroid brand? Far from it.

Land, the inventor of the Polaroid system (Patent No. 1,956,867) left Harvard just months before graduation in 1932 to establish the Polaroid company. Land is named on 533 Polaroid patents, including one for the first synthetic polarizer, and kept Polaroid innovative for decades with products including 3-D film. He also developed the Polaroid OneStep, which was the world's best-selling camera in the 1970s. The coming of the digital age, however, marked Polaroid Corp.'s doom.

After its first bankruptcy in 2001, however, One Equity Partners LLC, JP Morgan's private equity unit, purchased a 53 percent stake in Polaroid for $56 million, helping it come out bankruptcy. Petters Group then began licensing Polaroid's brand name in 2002 and bought the company in 2005 for $426 million. After it filed for bankruptcy protection (the second time) in December 2008, a group of investors in 2009 paid $88 million in the company for the brand name. So even after two bankruptcies and a multitude of negative press, the Polaroid brand was worth tens of millions of dollars

There are iconic brands that transcend generations and continue to thrive. See my previous blog post about the famous Coca Cola brand. But for those brands that may have lost their ability to keep up with changing technology, like Polaroid, at least their names will live-on in new products. What is the name Polaroid worth? The amount is subjective (though $88 million is a good place to start), but it highlights the fact that whether you are a local business or an international business, it's important to protect your brand. As we learned from Polaroid, sometimes the only thing remaining with any value after bankruptcy is the brand.

Continue reading "Polaroid: A Trademark's Life After Banktupcy(ies)" »

Michael Jackson's unfortunate passing highlighted his international fame and the value of the Michael Jackson brand. What was surprising to many was that Michael Jackson had major financial troubles before his death, which is why he decided to go on his final "This Is It" tour. Michael Jackson's music and products generated large amounts of income before his death, but I was stunned to see the magnitude of his earnings after his death. Since his death, the Michael Jackson brand, as reported by Billboard, has generated over $1 Billion from sales and a record deal.

Much of Michael Jackson's income was, and is, tied to his personal brand. There are 16 live trademarks that protect the Michael Jackson brand which range from a word mark filed in 1993 for "Planet Michael the Ultimate Michael Jackson Online Game," which was filed after his death on January 20, 2011, to a simple word mark for his first and last name.

Being a media legend, Michael Jackson and his business managers took full advantage of creating revenue streams from his personal brand. And as new products bearing his brand are released, the value of his trademarks will increase. But Michael Jackson is not the only dead celebrity to cash in on his brand's fame. Just to highlight a few: Albert Einstein's likeness has been licensed, generating over $75 Million over the past five years ("Baby Einstein" being one of those products using the Einstein name and likeness) and Elvis Presley's estate generates over $55 Million a year!

If the above teaches us anything, it's that trademarks are not only important as business brand names (see my previous posting about the famous Coca Cola trademark) but also tremendously important as personal brands for celebrities before and after their lifetime.

On a side note, Michael Jackson also obtained a U.S. Patent for his famous shoe illusion (click here to see Michael Jackson's Patent)

Continue reading "The Value of Trademarks as Personal Brands" »

Under the Federal Trademark Dilution Act, a famous trademark is one that has established a strong connection, in the minds of the consumers, between a specific good or service and the source of that good or service. For example, the Coca Cola brand has been determined to be a strong and famous mark. And with a valuation of over $67 billion, the Coca Cola brand is one of the most valuable and long lasting trademarks in the U.S.

Have you ever wondered what the original Coca Cola trademark registration looks like? Well, I looked it up at the U.S. Patent and Trademark Office and it's over one hundred years old.

Click here to see the first Coca Cola registration. There are a couple of interesting things to note about this trademark registration dating back to 1893. First, it is classified under "nutrient or tonic beverages." Clearly, people had a different idea of what constituted a nutritious food back then. Second, you can see that the stylized words are slightly different from the way they are used today on soda cans. Lastly, you can see the signatures of the original filers on the registration - a practice you don't see anymore at the Trademark Office.

As a trademark owner, we can only aspire to have a trademark with a value anywhere close to the value of Coca Cola's trademark. But it is telling that even in 1893, the owners of the Coca Cola Company knew the importance of registering their mark. Thus, my recommendation to any brand owner is to give serious thought to registering their trademark with the U.S. Patent and Trademark Office.

Continue reading "The Famous Coca Cola Trademark" »

What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow.

You are well aware that last year's Bose decision - In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) - has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: "in order to prove fraud, [the charging party] must show that [1] a statement was false, [2] the falsity was intentional, and that [3] the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven [4] to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch "Polmos" SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).

The Bose holding was so revolutionary, it spawned the following exemplary titles for law review and legal articles: "Bose changes everything," "Is there any reason to still be concerned about fraud?" "Has Bose blown away the trademark fraud cancellation crusade?," "Curtain falls on fraud on the Trademark Office." Legal pundits have opined that Bose may have raised the bar for committing fraud on the Trademark Office to a nearly unattainable level. Indeed, in light of the facts of the Bose case, a reasonable argument can be made that fraud has been virtually eliminated.

In light of the above, it is no surprise that since the Bose decision, there is not one reported District Court or Federal Circuit case regarding fraud on the Trademark Office (as of early Dec. 2010). Further, since Bose, there have been 43 cases involving fraud at the TTAB (as of early Dec. 2010), and of those 43, none have resulted in a finding of fraud. This illustrates how difficult it has become post-Bose to succeed in cancelling a registration based on fraud. As a result, a finding of fraud in any District Court or TTAB case could be negative legal history for Bose, would almost certainly be a reported decision and would surely be written about and scrutinized by the legal journals. But don't hold your breath, I suspect it will be a very long time before we see any forum find fraud after Bose.

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I'm often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an "exceptional case." See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys' fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case "exceptional").

As an example of an exceptional case, in Nutrivida, Inc. v. Inmuno Vital, Inc., 46 F.Supp.2d 1310 (S.D. Fla., 1998), the Defendant continued to utilize the trademark at issue long after receiving a cease and desist letter. The Court found that under the foregoing authorities, such deliberate, knowing and intentional infringement warranted a determination that the case was "exceptional" for purposes of determining the trademark holder's entitlement to an attorneys' fee award under the Lanham Act.

The lesson here is that your case must be exceptional to get attorney's fee and there must be a showing of deliberate intent to make the case exceptional. This is difficult to prove in cases involving likelihood of confusion where the Defendants did not know beforehand that their mark was similar to the Plaintiff's mark. But in counterfeiting cases, or cases where the Defendant was contacted beforehand and he continued infringing, intent is easier to prove. In those cases, attorney's fees are in play.

How to determine attorney's fees is another matter altogether. The Court normally applies the "lodestar" approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party's attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that "a party should be entitled to retain the most competent counsel available" because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).

Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages.

Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of punitive damages is not to compensate the plaintiff. The plaintiff in a trademark infringement case, however, will in fact receive the punitive damage award. Often, punitive damages are awarded where compensatory damages are deemed an inadequate remedy. The public policy behind punitive damages is that the court may impose them to prevent under-compensation of plaintiffs, to allow redress for undetectable torts.

Punitive damages are available and may be pursued under the Florida common law for trademark infringement. Victoria's Secret v. V. Secrete Catalogue, Inc., 161 F. Supp. 2d 1339, 1356 (S.D. Fla. 2001); Fla. Statute 495.161. Therefore, in especially egregious cases of trademark infringement, such as cases that involve willful infringement, the Plaintiff should consider requesting punitive damages in addition to the other available remedies, e.g., Defendant's profits, attorney's fees and costs. The Florida statutes, however, should be consulted regarding the potential caps on punitive damages. Fla. Stat. 768.73.

HAPPY THANKSGIVING!!

How do you calculate damages in a Trademark Infringement case? Is the financial data of the Plaintiff relevant when calculating damages in a trademark infringement case? This is an issue that often comes up during the discovery phase of a trademark infringement case. As a Miami Trademark Attorney currently involved in multiple trademark infringement cases in the Southern District of Florida, the subject of calculating damages is always in the forefront of my mind.

With regard to a federal trademark infringement claim under the Lanham Act, a Plaintiff can elect to recover actual or statutory damages pursuant to 15 U.S.C. § 1117. Section 1117(a) allows a registrant to recover Defendants' profits, Plaintiff's damages and the costs of the action. Plaintiff's damages, however, may be calculated as Defendant's profits and therefore does not involve an inquiry into Plaintiff's financial situation. Nutrivida, Inc. v. Inmuno Vital, Inc., 46 F. Supp. 2d 1310 (S.D. Fla. 1998) ("An award of an infringer's profits has traditionally been viewed under the Lanham Act and the common law of unfair competition as a way of compensating the plaintiff for sales lost to the infringer.") Therefore, a calculation of damages under 15 U.S.C. § 1117 does not necessitate an exploration of Plaintiff's financial data in any way.

With regard to Florida common law trademark infringement, Florida common law mirrors the damages available under 15 U.S.C. § 1117. Again, under Florida common law, Plaintiff's damages may be calculated as Defendant's profits and therefore does not involve an inquiry into Plaintiff's financial data. Nutrivida, Inc., 46 F. Supp. 2d at 1315.

Consequently, a Plaintiff in a trademark infringement suit (federal or Florida state) may elect damages under 15 U.S.C. § 1117 and Florida common law, wherein Plaintiff's financial information is irrelevant. Therefore, the financial data of the Plaintiff may not be discoverable by the Defendant in a trademark infringement suit and such attempts by the Defendant should be resisted in compliance with the Federal Rules of Civil Procedure. This is especially concerning in cases where the financial information being sought can be used by the Defendant to gain a competitive edge over the Plaintiff.

Does the type of advertising employed by a Defendant in a trademark infringement case matter? Yes it does. In fact, it is one of several key factors that are central to a trademark infringement case. As a Miami Trademark Attorney currently representing litigants in multiple trademark infringement cases in the Southern District of Florida, advertising and its relation to the trademark infringement analysis are subjects that have come up more than once in a dispute.

It is standard in a trademark infringement case to discover information about advertising employed by the Defendant, since similarity in advertising media is one of the seven factors used in assessing whether likelihood of consumer confusion - the touchstone of trademark infringement - has occurred. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.1997).In determining the likelihood of confusion between two marks, the 11th Circuit requires a district court to analyze the following seven factors:
(1) type of mark,
(2) similarity of mark,
(3) similarity of the products the marks represent,
(4) similarity of the parties' retail outlets and customers,
(5) similarity of advertising media used,
(6) defendant's intent and
(7) actual confusion.

As such, the type of advertising (element 5 in the seven factor test above) employed by the infringing party is probative of whether there was similarity between the advertising used by the infringer, as compared to that of the Plaintiff. Frehling Enterprises v. Int'l Group Select, 192 F.3d 1330, 1339 (11th Cir., 1999). Consequently, it is important that all information pertaining to the advertising used by the Defendant in a trademark infringement case is requested and produced during the discovery period of a lawsuit, since similarity in advertising media is crucial to the trademark infringement inquiry

Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew exactly what to present to a group of patent practitioners and he has really changed my outlook regarding the Patent Office. Just some of the good news he presented:
.
.

.
.
.
.
.
.
.
.
.
.
.
.
.
.
.
.
.

• a program to decrease pendency to first action to 10 months


• a program to decrease TOTAL pendency to 20 months


• a First Action Interview program to encourage Examiner's to initiate an interview after the first search but before the first action is entered


• hiring 1,000 Examiners this fiscal year and another 1,000 next fiscal year (yes, that's three zeros)

Of course, as a full-time patent practitioner I was ecstatic to hear that one day I may get a first office action 10 months after filing a utility patent application. In my ten years practicing, I've seen that only once. And to think that I could get a call from an Examiner BEFORE the first office action! That would greatly facilitate getting cases to final resolution quickly. Theoretically, if these programs were fully implemented, you could file a patent application on Jan. 1 and you could have an issued patent in the same year. If I could tell my clients they could potentially have an issued patent within one year, I think they'd want to file many more patent applications. Thus, if these programs stay on course, the USPTO can expect increased filings.

In short, Commissioner Stoll's programs are aiming to reduce unnecessary back-and-forth between practitioners and the USPTO and to expedite the process of getting to final resolution. For that reason, his programs are immensely popular, especially among us patent attorneys.

As a side note, Commissioner Stoll came off as a supremely cool spokesperson for the Office, deftly handling complaints about the USPTO from attendees while focusing on his agenda to improve the USPTO. From a practitioner standpoint, we should support Bob Stoll's programs, as they will make patent prosecution easier for us and surely increase business.

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO)issued another decision evidencing how enormously difficult it is to invalidate a trademark registration on the basis of fraud on the USPTO. In the decision of MCI Foods v. Brady Bunte (TTAB 92046056), the TTAB found that a knowingly overly-expansive description of goods and services did not constitute fraud on the USPTO. As a Miami Trademark Lawyer with a full docket of trademark disputes, this case is instructive in its exposition of the law surrounding fraud on the USPTO.

The registrant owned a federal trademark registration for CABO PRIMO in association with a plethora of Mexican foods, such as burritos, tortillas, tacos, etc. The problem is that the registrant had ONLY used the mark in association with burritos. And the registrant testified to this in his deposition. That is, he admitted that he had not used the mark with any other products other than burritos. You'd think this would constitute fraud on the USPTO, wouldn't you? No.

The TTAB held: "While MCI sought to obtain a registration covering as broad a description of goods as possible despite the fact that it was not using the mark on all the goods listed in the description of goods, there is no evidence or testimony indicating that MCI was advised that it could not or should not apply for Mexican food products not identified by its ... mark." Consequently, the TTAB allowed the registration to stand and merely restricted the registration to burritos only. That is, the TTAB deleted all other goods, except for burritos, from the registration, which remained valid.

The educational moment here is how Courts respond when there is a misrepresentation during trademark prosecution that does not rise to the level of fraud on the USPTO. The answer is restriction of the registration - not invalidation of the registration. This and recent decisions of the TTAB seem to indicate that it's practically impossible today to invalidate a registration based on fraud on the USPTO. Restriction of the registration is more likely.

Earlier this week, the famed coupon startup, Groupon, filed a trademark infringement complaint against an Australian web site named Scoopon, which does the same thing. As a Florida Trademark Attorney with several active trademark infringement cases, I keep up to date on the latest happenings in trademark enforcement.

This case involves Groupon's U.S. trademark registration number 3685954 for the word GROUPON associated with a web site that promotes the goods and services of others. The infringer, Scoopon, is an Australian copycat web site. See the Complaint here.

At the heart of this matter is whether there's a likelihood of confusion between the two marks - Groupon and Scoopon. In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court held the factors relevant to a determination of likelihood of confusion pertain to the similarity or dissimilarity of the marks and the relatedness of the goods or services.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In light of the above, it seems to me that since Groupon and Scoopon are so phonetically similar (I mean, they rhyme) and both web sites offer the same service, the likelihood of confusion factors clearly lean toward a finding of infringement. Scoopon would be wise to work out a settlement with Groupon before it gets hit with some large damages.

It's an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer's trademark registration. As a Florida Trademark Lawyer, this is a situation I've seen more than once and I'm constantly looking for the courts' and the Trademark Trial and Appeal Board's (TTAB's) take on this issue. The TTAB's recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it's usually the registrant that wins.

As originally reported in the Property Intangible blog, strike one against the manufacturer was that it brought the cancellation action almost 11 years after the mark was registered, well after incontestablity is established. Incontestability means, of course, that there are limited bases for cancelling a registration, and incorrect ownership isn't one of them. The manufacturer therefore had to rely on fraud as its basis for cancellation, i.e., the manufacturer. The court stated:

"claims that respondent fraudulently obtained the registration by asserting that it was the owner of the mark when, in point of fact, petitioner owned the mark. Because petitioner has alleged and attempted to establish a willful withholding of ownership information by respondent when it prosecuted the underlying application that matured into the involved registration, the ownership question may be addressed, but only in the context of fraud."

(italics in original.) Fraud has to be "proven to the hilt," showing that a statement was false, the falsity was intentional, and that the false statement was material to obtaining or maintaining a registration.

There's more than one lesson to be learned here. First, ownership of the mark is not a premise for cancelling an incontestable mark. Second, fraud on the USPTO is really hard to prove, since the Bose case.

As a Florida Patent Lawyer, I keep up with recent happenings at the U.S. Patent and Trademark Office (USPTO) to stay abreast on the latest in trademark law. Recently, the difficulties encountered at the USPTO by NYC-based Foursquare, which offers a location-based social networking website, has come to light.

First off, the trademark application for the company's main mark - FOURSQUARE - has been rejected because an improper specimen was submitted (see trademark application number 77956808). Apparently the attorney for Foursquare submitted an advertisement for the web site and not an actual web page where the applied-for services are rendered. This is a rookie mistake. Serious practitioners don't screw up the specimen requirement. The real question is why didn't Foursquare, which is valuated at $50 million and has 3 million unique users, employ a heavy weight trademark attorney to handle its main mark?

Second, the company's trademark application for CHECK IN (see trademark application no. 7956822) has been refused multiple times on the grounds that it's informational and/or descriptive. In the technology world, there is no hotter term than "check in" right now, especially in light of the fact that Facebook is entering into the location space with Places.While it seems likely that they weren't the first to use it, Foursquare made it ubiquitous among the location-based services. Still, it's a rather descriptive term and it was another rookie mistake to submit a 1(a) use-based application. They should have gone the 2(f) acquired distinctiveness route - they'd probably have a trademark registration by now. Instead, they took the 1(a) route and now there's a Letter of Protest on the record, which will only hurt their case moving forward. Who is this attorney, anyway?

Third, the company's trademark application for FOURSQUARE CHECK IN (see trademark application no. 77956817 ) has been refused for the same reasons as above - it's informational and/or descriptive.

The moral of the story here is that trademark prosecution can be complicated and subtle. Companies with highly-valued trademark assets should hire a specialist that knows his way around trademark law to handle their company jewels, such as an attorney that is Board Certified in Intellectual Property Law.