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Grokking Cyberlaw & How The Trademark Process Works
Monday, January 21 2008 @ 02:52 PM EST

I saw a lot of you got incensed when you read EFF article about the lawyer applying for a trademark on Cyberlaw, so I thought you might like to know a few more details and a bit about how the trademark process works. First, so you can breathe normally again, this is still just an application. It's not approved and registered yet. and there are a number of steps yet to go, including where anyone who feels it would be harmed by such a mark issuing can object. Also, the applicant has now issued a statement, claiming that EFF got it all wrong.

If anyone didn't see the EFF article, the essence of it is this:
Menhart is the author of a blog about cyberlaw issues called, logically if not innovatively, "Cyberlawg." (As he says in the top right corner, “Cyberlawg = Cyberlaw + blog.”) And he is "principal attorney" in a firm called "CyberLaw P.C." OK, OK, we get it, he practices technology law. Based on this, he’s applied for a trademark on the use of the term “cyberlaw” in connection with the practice of, um, cyberlaw. That's like a soda company claiming a trademark in the use of the word soda in connection with the sale of soda. Or an apple farmer claiming a trademark in the use of the term apple in connection with the sale of apples. Or ... well, you get the picture.

What is worse, he's threatening other lawyers with legal action based on this silly "mark." Menhart has demanded that attorney Michael Grossman change the title of his blog about technology law, "CyberBlawg." Presumably Stanford's Center for Internet and Society, with its Cyberlaw Clinic, as well as the Berkman's Center for Internet and Society, and Elliot Zimmerman's blog, CyberLaw.info, are in Menhart’s sights as well.

A blawg is a legal blog, by the way. Here's part of the statement the applicant has issued:

Ms. McSherry claims the firm is "threatening other lawyers with legal action based on this silly 'mark.'" First, no legal "threats" have ever been made, to anyone. The firm issued one informal notice to one attorney, Michael Grossman, about a potential dilution of the name of the firm’s blog, CyberLawg™. Mr. Grossman thereafter hired Mr. Martin Schwimmer to represent him....

Ms. McSherry goes on to state: "an IP lawyer should know that courts (and trademark examiners . . .) don't look kindly on efforts to abuse trademark law to control everyday language.”

This statement is misleading for a myriad of reasons. First, the suggestion that the application is an "attempt to control everyday language," is overbroad and inaccurate. As in most trademark applications, the firm’s application is for only one "class" of protection. In this case the class is #45, defined by the USPTO as "services rendered by lawyers to individuals, groups of individuals, organizations and enterprises." Services that fall outside that class would be wholly unaffected.

And there is, he writes, "no factual ground" for any statement that the firm has any other firms in its "sights". But what's bothering people, I think, is not so much what the firm plans but what it would be empowered to do, should it have a mind to someday, if it gets the mark, something the statement doesn't address.

But Cyberlaw Is a Generic Word In The Dictionary

The first thing we notice is that cyberlaw is a word, a generic. Cyberlaw isn't a word this applicant invented, however. It's found all over the place, 346,000 entries on Google alone, describing a category of law. Encarta gives it this definition:

law governing information systems: the body of laws relating to computers, information systems, and networks

It doesn't define it like this:

A law firm in Washington, DC, that practices in the area of laws relating to computers, information systems, and networks

That's a big difference. If I were a lawyer and named my firm 'RealEstateLaw' and set up a blog called RealEstateLawOnline, can I trademark it? I don't think so. Imagine if I could. Then only one lawyer in the world -- me, me, me -- could practice real estate law, or at least the only one allowed to let the marketplace know that is what my firm did, and that would be silly, don't you think? Not to mention damaging. After all, you might need a real estate lawyer in California. Someone else might need one in New York or Madrid. So, how can there be just one lawyer in the world to do it? I've yet to meet a lawyer licensed to practice in all states in the US, let alone the world.

Cyberlaw is indeed in the dictionary, a word designating this category of law. Like apple or book or overreaching. It has a meaning, and anyone can use it to convey that meaning. So how can anyone trademark it?

That is the right question. Let's look at Bitlaw's very nice explanation of the various kinds of words someone might want to trademark, noting which can and which can't be trademarked:

From most distinctive to least distinctive, these categories are
fanciful,
arbitrary,
suggestive,
descriptive (including surnames), and
generic.
Devices that are fanciful, arbitrary, or suggestive are considered distinctive enough to function as trademarks. On the other hand, if a device is descriptive, the device can function as a trademark or service mark only if it has obtained secondary meaning. Generic devices can never be a trademark.

Fanciful would be like Exxon. Someone just made it up. It means nothing.

Arbitrary would be like Apple for a computer company.

Suggestive would be like Silicon Graphics.

Descriptive would be like calling a line of computer monitors that are tubeless Tubeless. Or International Business Machines. The latter, however has secondary meaning, because by now we know that IBM means that particular company, not just any old international business machines company.

Generic would be like calling your email services company Email. You can call it that, but you can't trademark email. You may be hoping if you call it International Business Email and hope that over time it will take on secondary meaning and that the whole world knows that phrase means your company, and that's possible, but you can't trademark the word email and prevent others from using it unless that secondary meaning occurs first and even then you could probably only trademark the phrase, not the word email.

Or another example of a generic word would be ... um... cyberlaw, I'm thinking. Sounds generic to me.

Does that mean this application is probably doomed? I'd guess yes. But I'm not a lawyer, so your guess is as good as mine, and we can just keep an eye out to what happens next, and then we'll know for sure.

The Cyberlaw Application

Let me show you first where this application is in the process. If you go to the USPTO web site, the trademarks section and then click on 'Trademark Electronic Business Center', then 'Search', and then choose 'New User Form Search (Basic)', type in the term Cyberlaw in the blank for 'Search Term'. The USPTO doesn't let you retain permanent urls, so that's why I walked you through that. But if you do all that, you will find his application, #77341910, the only Live one on the list. Someone actually applied for that trademark in 1996, based on use since 1992, but abandoned it in 2000. And someone applied for the mark Cyberlaw Advisor in early 2000, but it was abandoned before it every got through the approval process. For a short interval, if you click on the new application, here's what you find Word Mark CYBERLAW

Goods and Services IC 045. US 100 101. Goods and Services IC 045. US 100 101. G & S: Legal document preparation and research services for attorneys; Legal research; Legal services; Legal services, namely, preparation of applications for trademark registration; Consulting and legal services in the field of privacy and security laws, regulations, and requirements; Expert witness services in legal matters in the field of intellectual property and information technology; Providing a website that features information on the development of international law, regulations, legal policies, and legal practices in a manner that promotes global governance by all types of organizations; Reviewing standards and practices to assure compliance with intellectual property and information technology laws and regulations; Attorney services; Litigation services; Legal services, namely, trademark maintenance services; Copyright management; Copyright management consultation; Registration of domain names for identification of users on a global computer network; Arbitration; Arbitration services; Consultation in the field of data theft and identity theft; Intellectual property consultation; Intellectual property watch services; Licensing of advertising slogans and cartoon characters; Licensing of computer software; Licensing of intellectual property; Litigation consultancy; Mediation; Patent licensing; Preparing and filing incorporation papers; Providing information relating to legal affairs. FIRST USE: 20070222. FIRST USE IN COMMERCE: 20070222

Standard Characters
Claimed

Mark
Drawing - (4) STANDARD CHARACTER MARK
Code

Serial Number - 77341910

Filing Date - December 1, 2007

Current Filing Basis - 1A

Original Filing Basis - 1A

Owner -(APPLICANT) CyberLaw PC CORPORATION MARYLAND [redacted address] Washington D.C. 20005

(APPLICANT) Menhart, Eric INDIVIDUAL UNITED STATES [redacted] Washington D.C. 20037

Attorney of Record - Eric Menhart

Type of Mark - SERVICE MARK

Register - PRINCIPAL

Live/Dead Indicator - LIVE

The long paragraph, Goods & Services, is telling you all the areas the applicant wants his trademark to cover, all the areas he wants the exclusive right to use the word cyberlaw with:

  • Legal document preparation and research services for attorneys;
  • Legal research;
  • Legal services;
  • Legal services, namely, preparation of applications for trademark registration;
  • Consulting and legal services in the field of privacy and security laws, regulations, and requirements;
  • Expert witness services in legal matters in the field of intellectual property and information technology;
  • Providing a website that features information on the development of international law, regulations, legal policies, and legal practices in a manner that promotes global governance by all types of organizations;
  • Reviewing standards and practices to assure compliance with intellectual property and information technology laws and regulations;
  • Attorney services;
  • Litigation services;
  • Legal services, namely, trademark maintenance services;
  • Copyright management;
  • Copyright management consultation;
  • Registration of domain names for identification of users on a global computer network;
  • Arbitration;
  • Arbitration services;
  • Consultation in the field of data theft and identity theft;
  • Intellectual property consultation;
  • Intellectual property watch services;
  • Licensing of advertising slogans and cartoon characters;,
  • Licensing of computer software;
  • Licensing of intellectual property;
  • Litigation consultancy;
  • Mediation;
  • Patent licensing;
  • Preparing and filing incorporation papers;
  • Providing information relating to legal affairs.

Now, one has to ask, are intellectual property watch services necesarily legal services? How about providing a website that seeks to provide information about the law? He claims in the statement that because Stanford and Berkman don't provide legal services and thus are not in class 45 in his view, the firm isn't going after them. But if the trademark issues, the firm could, I think, if they use cyberlaw in connection with their websites to provide information on the law, and they do. For that matter, I provide a website that provides information on the law, if you think about it. If I called it GrokCyberlaw, could he set his sights on me? I don't know. And deeper, if a lawyer provides such a website, is the site providing legal services? I bet they have a disclaimer on that website. Why, yes. Yes, they do:

CyberLaw™ provides content on this website for informational purposes only. No information is intended to be individualized legal advice on any matter.

This website does not establish any form of attorney-client relationship with the firm or any firm attorney. Any information sent to CyberLaw™ on an unsolicited basis via the online form, e-mail, postal mail or otherwise will not be treated as confidential.

CyberLaw™ will not undertake representation until a potential client signs a retainer agreement with the firm, countersigned by a CyberLaw™ attorney.

I note the trademark symbol. So, if the website isn't providing legal services, is it still class 45? By the way, it's actually a service mark being applied for, not a trademark, because it's for services, not goods. Of course, there are oodles of lawyers already providing intellectual property legal services, and some do use the word cyberlaw in connection with their practice. Here's just one, a Massachusetts law firm. It's a category for articles on the page even. Kind of interesting, just as a side point, but they have an article on why you might *not* want to incorporate in Delaware, currently my least favorite state. Kidding. It's probably a fine place. I just have this SCO allergy.

You have to list the areas where your business uses or intends to use the mark you want to apply for, because two people can have the same mark as long as they are offering different types of goods or services. Even if Menhart got this trademark, then, I could still sell Cyberlaw toilet paper, and he couldn't prevent it. Toilet paper isn't class 45. That would be a better mark than his, actually, because it's arbitrary for toilet paper.

Next, you can click on the link for the application itself and note the proofs for the claims, because I see a gap between the description and the proof here in one area, regarding the web site:

SPECIMEN DESCRIPTION - Specimen is a screenshot of the firm website which is available throughout the nation and worldwide at www.cyberlawonline.com.

*DESCRIPTION Providing a website that features information on the development of international law, regulations, legal policies, and legal practices in a manner that promotes global governance by all types of organizations

Interestingly, this url is not the same as the two mentioned in the EFF article. I can't believe he wants to be the only person on the Internet who can use the word cyberlaw in connection with a website that features info on "the development of international law, regulations, legal policies, and legal practices in a manner that promotes global governance by all types of organizations", but that's one of his attempted claims. But what strikes me is the proof he provides: a news story about Dell.

So, how stupid, you are asking, is the USPTO? What you may not know or are forgetting is that no one at the USPTO prescreens trademark applications. After they are filed, though, then they start to examine. I see they have noticed one thing already, by sending the applicant a notice of pseudomark:

The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for conflicting marks. They have no legal significance and will not appear on the registration certificate.

A PSEUDO MARK may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings. For example, if the mark comprises the words 'YOU ARE' surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark as 'YOU ARE SQUARE'. A mark filed as 'URGR8' would receive a pseudo mark of 'YOU ARE GREAT'....

PSEUDO MARK: CYBER LAW

So, is law a trademarkable word? How about cyber? So, if you put them together, then can you?

The ComputerLaw.com Case

As it happens, there was an attempt to trademark ComputerLaw.com. The examiner refused to accept it, and there was an appeal. Here's what happened, the decision [PDF] affirming what the trademark examiner had done:

Applicant asserts that the mark it seeks to register is inherently distinctive but, in the alternative, claims, pursuant to Section 2(f) of the Trademark Act, that the designation COMPUTERLAW.COM has acquired distinctiveness. The Trademark Examining Attorney has refused registration under Section 2(e)(1) of the Act on the ground that the designation sought to be registered is generic and, thus, unregistrable.

In the event that the designation is found to be not generic but, rather, merely descriptive, the Examining Attorney also has refused registration on the Principal Register due to the insufficiency of the evidence supporting the claim of acquired distinctiveness.

When the refusal was made final, applicant appealed. Applicant and the Examining Attorney filed briefs. An oral hearing was not requested. The Examining Attorney maintains that the designation COMPUTERLAW.COM, when used in connection with legal services, is generic because it comprises the generic term “computer law” and an entity designator which lacks trademark significance, namely, the generic top-level domain (“TLD”) “.com.” In support of the refusal, the Examining Attorney submitted excerpts from third-party Internet websites and excerpts from articles retrieved from the NEXIS database, all showing uses of the term “computer law” as a specific area of practice in the legal profession....

Applicant asserts that the designation COMPUTERLAW.COM is a coined term, and that it was first used by applicant in 1995 before the “Internet boom.”...

Generic terms are common names that the relevant purchasing public understands primarily as describing the class of goods or services being sold.... They are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks....

The determination of whether a term is generic involves a two-part inquiry: First, what is the category or class of the goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that category of goods or services?...

With respect to the first part of the genericness inquiry, the class or category of services at issue here is that of legal services, more specifically, legal services pertaining to the area of computer law....

We find that the record establishes that the term “computer law” is the name or type of a particular or specialized area of practice, and one in which applicant clearly is involved. In this connection, we note that applicant recognizes that “the legal industry uses the term ‘computer law’ to define a certain type of law.” (brief, p. 5) The record is replete with generic uses of the term “computer law” as a name for a specialized area of the law, much in the same way that “administrative law” or “domestic relations law” is used....

The second step of the Ginn inquiry is whether the relevant public understands the term COMPUTERLAW.COM to refer to the category of legal services at issue. Here, we find that the term is so understood. As cited above, the evidence clearly establishes that the term “computer law” identifies a particular area of legal practice....

In the present case, the recitation of services is broadly stated as “legal services,” and the services clearly encompass such services in the area of computer law. And, if applicant’s designation COMPUTERLAW.COM is generic as to part of the services applicant offers under its designation, the designation is unregistrable....

We recognize that applicant is seeking to register COMPUTERLAW.COM rather than COMPUTER LAW.COM. However, the genericness of “computer law” is not negated by compressing the two words into the single compound term COMPUTERLAW since there is no change in commercial impression from COMPUTER LAW....Simply put, COMPUTERLAW.COM signifies to the public that the user of the designation is a commercial entity (in this case, a law firm) that specializes in computer law. The fact that applicant’s services may not technically be rendered by way of the Internet, but rather are only offered for sale on the Internet, is of no consequence. Given the commonly understood meaning of “.com,” the involved designation is no different than if applicant were attempting to register COMPUTERLAW FIRM, COMPUTERLAW CO. or COMPUTERLAW LLP. Just as these three designations would be generic for legal services relating to computer law, competitors should be allowed to freely use such designations as JONES COMPUTERLAW FIRM to identify and distinguish their services. In the same manner, a designation such as COMPUTERLAW.COM should be freely available for others to adopt so that designations such as JONESCOMPUTERLAW.COM or SMITHCOMPUTERLAW.COM could be used by competitors to identify and distinguish their legal services from others in the field....

Simply put, a designation such as COMPUTERLAW.COM should be freely available for others to use in connection with their legal services in this specialized area of the law....

The designation COMPUTERLAW.COM is generic and does not function as a service mark to distinguish applicant’s legal services from those of others and serve as an indication of origin. The term sought to be registered should not be subject to exclusive appropriation, but rather should remain free for others in the industry to use in connection with their similar services.

So, doesn't the reasoning here seem to fit cyberlaw as well? If you see a difference, kindly tell me all about it.

Now, the ruling also mentions that such trademarks are sometimes issued in such types of words, that "each case must be decided on its own merits." So we can't rule it out utterly.

The Process -- What's Next?

Remember, now that you don't have to register for a trademark to have one. If you have a business using the mark, and people recognize your mark as meaning you, you have a mark anyhow.

So, did anybody use the word cyberlaw before this lawyer? Well, what is the url for Harvard's Berkman Center? -- "cyber.law.harvard.edu" and they have been in existence since 1998. So, if they wanted to claim they did it first, would they win? Yes. In the statement, Menhart states that there is no intention to go after Berkman or Stanford, because they are not in the class, legal services, class 45. He is going after an individual attorney, one who didn't start his blog until November of 2007, after Menhart, so the "informal notice" was based not on an issued trademark but a common law mark, presumably. Maybe that is what inspired Menhart to file for a registered trademark, seeing the new blog using cyberlaw. He probably wasn't planning on getting famous for it. Or infamous. Why register at all, then? Here is the USPTO's Trademark Manual of Examining Procedure and it has a section on trademark validity:

1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark

A certificate of registration of a mark on the Principal Register is prima facie evidence of the validity of the registration. 15 U.S.C. §1057(b). Public policy demands that every employee of the United States Patent and Trademark Office (“USPTO”) refuse to express to any person any opinion as to the validity of any registered mark, except to the extent necessary to carry out inter partes proceedings at the Trademark Trial and Appeal Board in cancellation and similar proceedings authorized by law.

The question of the validity of a registered mark is otherwise exclusively a matter to be determined by a court. Members of the Trademark Examining Operation are cautioned to be especially wary of any inquiry from any person outside the USPTO, including an employee of another Government agency, the answer to which might indicate that a particular registration should not have been published or issued.

An employee of the USPTO, particularly a trademark examining attorney who examined an application, should not discuss or answer inquiries from any person outside the USPTO as to whether a certain registration or other particular evidence was considered during the examination of the application, or whether a mark would have been published or registered if the registration or other evidence had been considered during the examination. Likewise, employees should not answer any inquiry concerning any entry in a registration file, including the extent of the field of search. The record of the file of a registration or inter partes proceeding before the Trademark Trial and Appeal Board must speak for itself.

Employees should refuse to discuss these matters with members of the public, and this refusal should not be considered discourteous. Practitioners should not make improper inquiries of members of the Trademark Examining Operation.

A trademark or service mark is prima facie evidence of the validity of a mark. So, while they won't discuss it with us, what exactly *will* the examiner do about this application now that it's been filed?

They tell us on their website here:

LEGAL AND PROCEDURAL REVIEW OF APPLICATION

After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees. Federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §1051 et seq., and the Trademark Rules of Practice, 37 C.F.R. Part 2.

A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.

If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO....

Does the examining attorney search for conflicting marks?

Yes. After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

* the similarity of the marks; and
* the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related....

Are there other reasons the examining attorney might refuse my mark?

Yes. In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:

  • primarily merely descriptive or deceptively misdescriptive of the goods/services;
  • primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
  • primarily merely a surname; or
  • ornamental.

This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at http://tess2.uspto.gov/tmdb/tmep/, for a complete discussion of the grounds for refusal of registration of a mark.

So, they look at what's already been registered first. In this case, there's nothing currently registered for cyberlaw, because people willing to try for such a trademark don't grow on every bush in the garden. But next, if there are no conflicts, they look at the mark again, and like you did, they are very likely to notice that it is a generic word, or at best descriptive. I doubt any secondary meaning, considering the date of first use is so recent.

But what if they approve it anyway? It's possible. Someone trademarked it earlier in time, as the applicant points out in his statement. I think though that a word that might seem inventive and new in 1996 might be just a generic word in 2008.

If the examiner approves a trademark application, is that the end? No. Publication provides an opportunity to object:

PUBLICATION FOR OPPOSITION

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.

The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.

CERTIFICATE OF REGISTRATION OR NOTICE OF ALLOWANCE

If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.

Notice the opportunity to oppose? Anyone "who believes it may be damaged" by letting cyberlaw be trademarked can object. That would be anyone using the mark already before he did who is also in class 45. He says he started in February of 2007 on his claim. The CyberBlawg lawyer listed in the EFF article, Mr. Grossman, started his legal blog in November, so he can't claim prior use on that. He can object on other grounds, of course. The other lawyer using it listed in the article, Mr. Zimmerman, could claim prior use, though. His site has been in existence since 2003. Stanford has used cyberlaw, even in their url, since 2001. And all of them using the word can be used by others to demonstrate that it's generic, as you saw in the Computerlaw.com decision. If you've been using cyberlaw in your business or on your blog prior to February of 2007, you can object also. Probably you could if you had the intention to do so in the near future.

Here is the explanation about that:

1503 Opposition

1503.01 Filing a Notice of Opposition

Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board, and paying the required fee within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition. See 15 U.S.C. §1063; 37 C.F.R. §§2.101 through 2.107; TBMP §§303 et seq.

The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition. 37 C.F.R. §2.104(a); TBMP §§309.01 et seq.

A notice of opposition to an application based on §1 or §44 of the Trademark Act may be filed either on paper or through ESTTA at http://estta.uspto.gov/. 37 C.F.R. §2.101(b)(1). A notice of opposition to an application based on §66(a) of the Act must be filed through ESTTA. 37 C.F.R. §2.101(b)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

A notice of opposition does not have to be verified, and it may be signed by either the opposer or the opposer’s attorney. 37 C.F.R. §2.101(b); TBMP §309.02(b).

1503.02 Joining Persons in an Opposition

Two or more persons may join in an opposition. TBMP §303.06. Related companies are separate persons for the purpose of filing an opposition.

1503.03 Time for Opposing

An opposition must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. 15 U.S.C. §1063; 37 C.F.R. §2.101(c); TBMP §§306 et seq. The time within which to file an opposition is set by statute and may not be extended or waived. In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980).

When a registration is issued, inadvertently, from an application that was the subject of a timely filed notice of opposition, the Board is without authority to cancel the registration and restore it to application status. In this situation, the Board will refer the registration file to the Office of the Commissioner for Trademarks for appropriate action. See TBMP §216.

1503.04 Extension of Time to Oppose

Requests for extensions of time to oppose are handled by the Trademark Trial and Appeal Board. See TBMP Chapter 200.

A request for an extension of time must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. 15 U.S.C. §1063; 37 C.F.R. §2.102(c); TBMP §§202 et seq. The time within which to file a request for extension of time to oppose is set by statute and may not be extended or waived. In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980).

A request for extension of time to oppose an application based on §1 or §44 of the Trademark Act may be filed either on paper or through ESTTA, at http://estta.uspto.gov/. 37 C.F.R. §2.102(a)(1). A request for extension of time to oppose a §66(a) application must be filed through ESTTA. 37 C.F.R. §2.102(a)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

For additional information regarding filing a request for an extension of time to oppose, see TBMP Chapters 200 and 300.

When a registration is issued, inadvertently, from an application that was the subject of an unexpired extension of time to oppose on the date of registration, the Board is without authority to cancel the registration and restore it to application status. See TBMP §216. In this situation, a request to have the registration cancelled as inadvertently issued should be directed to the Office of the Commissioner for Trademarks. See TMEP §1609.10(a).

Did you notice two or more can do it together? The advantage of that is you can share the expense of the lawyer. You can do it without a lawyer also, but you know I never recommend it. If you do it anyway, note you can't amend your opposition later:

1503.05 Opposition to §66(a) Applications

Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act. The United States Patent and Trademark Office (“USPTO”) must notify the International Bureau of the World Intellectual Property Organization (“IB”) within 18 months of the date the IB sends the request for extension of protection to the USPTO of: (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period. See TMEP §§1904.03 et seq. and 1904.04.

An opposition to a §66(a) application, or a request for extension of time to oppose a §66(a) application, must be filed through ESTTA. 37 C.F.R. §§2.101(b)(2) and §2.102(a)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

Once filed, an opposition to a §66(a) application may not be amended to add to the grounds for opposition or to add to the goods or services opposed. 37 C.F.R. §2.107(b).

Here's where you find the form. And Trademark Trial and Appeal Board Manual of Procedure (TBMP), their manual on appeals and trials before the USPTO.

So keep checking this application. As things happen, the USPTO will add to the list of happenings, so you can follow along.

Incidentally, you might like to know that there's a recent update on patent examiner guidelines on obviousness: Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc. [PDF] (10Oct2007) Little by little.


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