Category - "Branding"

From Concept to Commerce: The Art of Trademark Specimens of Use

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In the world of trademarks, specimens of use (or proof of use) play a crucial role in obtaining and maintaining a trademark registration with the United States Patent and Trademark Office (“USPTO”). In this blog post, we’ll delve into the types of specimens that are accepted by the USPTO (hint: they’re not alien artifacts!), the specific requirements for each type of specimen, and some practical tips to help you navigate the selection process. So, grab your magnifying glass (figuratively, of course) and let’s examine the basics of specimens of use!

What is a Specimen of Use, and When Do I Need One?

Before the USPTO grants registration of your trademark, it wants to see tangible evidence that your mark is actually being used in U.S. commerce. That’s where specimens of use come in. A “specimen of use” simply means evidence of how a trademark is used. To meet the USPTO requirements, the evidence must show actual commercial use of the mark in the U.S. in connection with the goods and/or services claimed in the application or registration. There are three circumstances under which trademark owners are required to submit specimens proving use of their marks: (1) to obtain registration; (2) to maintain registration; and (3) to respond to a post-registration audit from the USPTO. Let’s investigate these scenarios further.

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Connecting with Digital Natives through Brand Protection

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With the constant rise of counterfeiting, protecting one’s brand is now more important than ever. Many brand owners already take protective steps to protect their brands such as registering brands through trademark and copyright registrations and monitoring fraudulent use of said brands. However, with our current social media-driven world, connecting with the digitally native generations is a critical measure brand owners should consider in protecting their reputation and their consumers.

The term “digital native” describes a person who grew up in the information age with computers and an understanding of the Internet. Digital natives make up the largest share of the consumer base and workforce: Millennials (born between 1980-1994), Gen Z (born between 1995-2012), and Gen Alpha (born between 2013-2025) are digital natives because they were exposed to the Internet, social media, and mobile systems from an early age. Digital native generations are important for any brand’s future because they have significant buying power and influence.

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New Frontier: Ten Tips for Navigating Brand Protection in the Metaverse

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Advances in technology have taken the world by storm in recent years and brand owners must adapt to new forms of expression and brand awareness. Enter the metaverse: an online virtual world where users can interact with each other and digital objects including Non-Fungible Tokens (NFTs). NFTs are unique digital assets depicting works of art, photographs, text, and/or other digital content, minted using blockchain to identify an interest in a certain asset. Many companies are using NFTs to leverage their brands, which in turn create new revenue channels.

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Avoiding Warhol: How Celebrity Tattoo Artist Kat Von D Turned Defeat Into Victory in the Central District of California

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When celebrity tattoo artist Katherine Von Drachenberg (better known as Kat Von D) tattooed a portrait of Miles Davis on her friend Blake Farmer’s arm as a gift, she used a reference photo created by professional photographer Jeffrey Sedlik to guide her work.  This tattoo—which Von D did not charge for—would set off a two-year legal battle that culminated in a jury trial in the Central District of California in early 2024.  Sedlik claimed that Von D’s tattoo infringed his copyright in the photo and pointed to shared elements such as hand placement, overall pose, similar furrowed brows, similar lighting, and the direction of Miles Davis’s gaze.  Von D, for her part, spent the majority of the litigation arguing that the tattoo was transformative and protected by the doctrine of fair use.

And it seemed that Von D was well on her way to being able to plead her case to a jury.  The district court found that Von D had sufficiently shown that the tattoo could have a purpose or meaning distinct from that of the photo “by virtue of the way [Von D] changed its appearance to create what she characterizes as adding movement and a more melancholy aesthetic.”  Thus, it denied Sedlik’s motion for summary judgment on the transformative nature of the tattoo and Von D was poised to argue the issue to a California jury.

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Not So Punny After All? Parody After the Supreme Court’s Jack Daniel’s Decision

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Earlier this year, one of my colleagues posted a guide to parody under U.S. trademark law for those brands hoping to navigate trademark parody without crossing into trademark infringement or dilution. But as we all know, the legal landscape can change in just a few months, especially when the Supreme Court gets involved. In this post, we explore the Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC and discuss what, if anything, it changes for brands navigating that parody tightrope. (Spoiler Alert: Not that Much.)

For those unfamiliar, VIP Products makes a “Bad Spaniels” poop-themed dog toy designed to look like a bottle of . . . you guessed it . . . Jack Daniel’s whiskey. Unamused, Jack Daniel’s demanded VIP Products stop selling the toys, and the parties became embroiled in years-long litigation with Jack Daniel’s claiming infringement and dilution of its trademarks and VIP Products crying parody. While Jack Daniel’s was victorious in the district court, the joke seemed to have landed on more humorous ears in the Ninth Circuit, and the Court held that the “Bad Spaniels” toy was an expressive work warranting heighted First Amendment protection from trademark infringement claims. On the dilution issue, the Court found that the humorous nature of the product rendered the toys “non-commercial” and thus exempt from the dilution claim.

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Protecting Your Certification Marks with Certainty

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A certification mark is an important business tool.  Displaying a certification mark on a product or on marketing materials indicates that a company’s offerings meet certain standards.  Consumers often look for items that have been tested and found to meet their desired standards, so use of a certification mark can provide businesses with a competitive advantage.

A certification mark doesn’t serve the same function as a source-indicating brand.  Instead of helping companies distinguish their offerings from others, certification marks show consumers that products or services have been “certified” as to a particular quality or characteristic.  For example, a certification mark may appear on food that originated in a specific geographic region or on a household product that contains certain materials.  A certification mark may also be used in connection with services that are provided by members of a union or other organization.

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Singapore – Where Global IP Professionals Came Together

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I just recently left Singapore, where the lush gardens and iconic city skyline served as the backdrop for The International Trademark Association’s (INTA) 145th Annual Meeting. This was the second time that INTA’s Annual Meeting was hosted in Asia and the first time in Southeast Asia. While the location was originally planned for the 2020 Meeting, as with most things in life, the pandemic put that on hold. Despite the immense humidity, 8,000 influential brand and IP professionals from around the world came to the Lion City to share their thoughts regarding future considerations for brand owners and the business of innovation.

One consistent theme throughout the conference was that new challenges are facing brand owners today. Several factors appear to be changing the landscape for brands across various industries including, without limitation, the facts that: (1) counterfeiting is on the rise; (2) the value of intangible business assets is increasing; (3) new countries are becoming IP powerhouses due to global trade; and (4) emerging technologies, such as artificial intelligence (AI), NFTs and the metaverse, are changing the way in which consumers interact with the world around them.

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College T-shirts and Trademarks – Ornamental or Protectable?

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As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen; it also touches on an important concept in trademark law: ornamental use of trademarks on T-shirts.

What is ornamental use?

Under sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (“PTO”) can refuse registration of a trademark on the ground that the applied-for matter is decorative and therefore does not function as a mark because it is merely ornamentation. In re Peace Love World Live, LLC, 127 U.S.P.Q.2d 1400 (TTAB 2018). Ornamental matter can include words, designs, slogans, or trade dress.

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Branding Success: How to Select a Strong Trademark

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We all know a picture is worth a thousand words, but did you know a trademark can be worth BILLIONS of dollars? In fact, some of the top trademarks in the world are worth hundreds of billions. What’s the secret to this branding success? A strong trademark!

A trademark serves many purposes. Two of the more important purposes are: (1) identifying the source of a company’s or individual’s goods or services; and (2) indicating to consumers the quality or type of goods or services identified by the mark. Consumers rely on trademarks to make informed decisions about the goods and services they purchase or use.

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