Patent and Trademark Archives - Page 3 of 6

What type of search should you conduct when considering applying for a patent?

Different Types of Patent Searches

When an individual or business is looking to apply for a patent, they are usually surprised to discover the array of options that need to be analyzed in order to conduct a proper patent search. The reason there are multiple patent search options is because the scope of the search will be determined by the overarching reason for the search.

Generally, there are four types of patent searches that can be conducted:

Novelty (patentability) search
Freedom to Operate (FTO) search
Non-infringement search; and
Validity search

Let’s take a look at each…

Novelty Search

The most common type of patent search is the novelty search. Why? Because this type of search is initiated to help determine the likelihood of successfully getting a patent application through the United States Patent and Trademark Office (USPTO). Most startup companies engage in a novelty search to help assess whether a particular invention is actually patentable and worth the time and money to pursue a patent with the USPTO. Another benefit is that a novelty search routinely provides valuable information to inventors. For example, it can provide context and insight into other businesses competing in the same sector.

To complete a novelty search, you will need to clearly identify the invention and itemize each element and key aspect that you believe makes your invention novel and unique. Once this is done, a comprehensive search can be conducted through the USPTO database for patents and publications, Google, and other databases to assess whether any aspect of your invention has already been patented or would be considered “obvious” to the point where filing a patent application would not be worth the time, money, and energy.

Freedom to Operate Search

A Freedom to Operate (FTO) search (also known as a Clearance search), helps determine whether it would be prudent to commercialize a particular product in light of current products that have enforceable patent rights. The FTO search would determine whether you have the freedom to operate and commercialize an invention without a major risk of getting sued for patent infringement. If, for example, a Freedom to Operate search locates information that indicates a risk of patent litigation, you can assess whether to abandon the commercialization of the proposed invention, engage in a redesign, or possibly reach out to the owner of the patent and negotiate a licensing agreement.

Non-infringement Search

A non-infringement search, much like a Freedom to Operate search, is generally pursued to help determine if a proposed invention could infringe on an already-active patent. However, this search is unique in that it focuses on a specific patent, or set of patents, that have been previously identified as relevant to your invention. Engaging in a non-infringement search is generally recommended when a new product, process, or technology is created but is known to be similar to an existing patented product, process, or technology. This is especially true when there are known and recognized competitors with enforceable patent rights.

Validity Search

The validity search is considered to be the rarest form of patent searches. It is typically only pursued in the context of patent litigation where a defendant, or potential defendant, in a patent infringement lawsuit is seeking information that could be used to invalidate a particular patent thereby nullifying that patent owner’s legal rights.

Need Help with Conducting a Proper Patent Search? Contact an Experienced and Respected Patent Attorney in Los Angeles Today

As noted above, there is an inherent level of complexity associated with even attempting a patent search. To help ensure the search is done correctly and thoroughly, contact the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Proper Preparation is Key Before Taking Legal Action

Filing a lawsuit that alleges patent infringement is a serious matter. The outcome of the legal action can have significant financial ramifications for both the prevailing party and the losing party. This is why proper preparation is absolutely critical. When a party fails to invest the time to properly prepare, there can be significant legal consequences and remedies that can be levied by a court.

Recoverable Attorney Fees in “Exceptional” Cases

According to 35 U.S.C. § 285, attorney fees can be awarded in “exceptional” patent infringement cases. You may be asking yourself, “what exactly is an exceptional infringement case?” Well, an exceptional case is determined by the court and is typically based on the totality of the circumstances. A patent infringement case can be considered exceptional because of a substantive legal position or because one of the party’s utilized unreasonable litigation tactics. In many instances, courts have awarded attorney fees to a prevailing defendant when the plaintiff was not justified in filing the patent infringement lawsuit in the first place.

An example of a court ordering attorney fees as a result of poor preparation can be found in ThermoLife International LLC v. GNC Corp., 922 F.3d 1347 (Fed.Cir. 2019). In this case, the District Court for the Southern District of California awarded attorney fees to the defendant because the plaintiffs did not adequately investigate the issue of the defendant’s alleged infringement prior to filing the infringement lawsuit.

For context, ThermoLife licensed four patents from Stanford University. The patents covered specific compositions of amino acids. The patents also covered a unique method for using those amino acids that promoted vascular function and improved performance in individuals. Subsequently, ThermoLife alleged that GNC infringed on these patented amino acid compositions and methodology.

Here is the problem – ThermoLife did not conduct the necessary pre-suit investigatory work before taking legal action. In fact, the defendants in the lawsuit went so far as to say that if ThermoLife simply took the time to read the labels on the defendants’ products and performed simple tests, then ThermoLife would have realized that no infringement took place.

A motion for attorney fees was filed pursuant to the aforementioned 35 U.C.S. § 285 and granted by the court. The Federal Circuit determined that ThermoLife failed to conduct an adequate pre-filing investigation which resulted in “objectively unreasonable” allegations of infringement. The court stated that the facts indicated ThermoLife failed to read the defendants’ product labels and or conduct basic testing. The court went further and described the pre-filing investigation of ThermoLife as “severely lacking” which led to the filing “frivolous claims.” ThermoLife appealed the award of attorney fees. However, the Federal Circuit Court of Appeals affirmed the district court’s judgement of attorney fees. Ouch.

Takeaway

The lesson from the ThermoLife case is fairly clear – take the time to conduct a sufficient pre-filing investigation of infringement before deciding to actually move forward with a patent infringement case. If you skimp on the pre-filing investigation, it can come back to haunt you in the form of a large award of attorney fees for opposing counsel.

Need Answers to Questions About Potentially Filing a Patent Lawsuit? Contact the Omni Legal Group Today

If you have questions related to filing a patent lawsuit, whether you have a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, it is in your best interest to obtain the counsel of a highly reputable patent litigation attorney such as the Omni Legal Group.

Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How are patent term adjustments calculated?

If you encounter a delay during a patent prosecution, you have the ability to seek a Patent Term Adjustment (PTA). If your PTA request is approved, you will receive an extension of time on the standard patent term. This type of extension is sought most often with products that have long regulatory approval lifecycles. A common example is a company that holds a patent on a pharmaceutical drug.

The onus for offering PTAs in the United States can be traced back to the adoption of the General Agreement on Tariffs and Trade in 1995. The U.S. adopted GATT in an effort to harmonize the U.S. patent term with other developed countries. This is why the patent term in the U.S. is now limited to 20 years from the earliest effective filing date. However, this also means that any delays during examination would erode a patent’s period of enforceability. This exposes a patent applicant to losing potentially millions of dollars or more. When the U.S. adopted GATT, the burden was placed on the applicant to avoid delays during examination. This meant a delay caused by the USPTO could cost an applicant days or years of patent term without any recourse. Congress created the PTA to remedy this issue.

The objective of a PTA is to modify the patent term in an effort to compensate for a delay caused by the U.S. Patent and Trademark Office (USPTO) during the patent examination process. In basic terms, the calculation used for a PTA is taking the number of days of USPTO delay and subtracting the number of days that the application has been delayed.

Acceptance of Patent Term Adjustment

It is not possible to obtain a PTA randomly. There need to be specific factual scenarios in order to qualify for a PTA. Such scenarios include:

When the USPTO failed to issue a notice within fourteen months after the application filing date
When the USPTO failed to respond to an applicant’s Reply within four months
When the USPTO failed to respond to a decision rendered by the Patent Trial and Appeal Board (PTAB) within four months
When the USPTO failed to issue a patent within four months after the issue fee is paid

Petition for PTA Correction

The amount of time afforded under a PTA is initially determined by the USPTO. However, if you are unhappy with the PTA calculation provided, you have the option to file a petition for reconsideration. Bear in mind that you would need to file this petition no later than two months from the date the patent was issued. However, this deadline can be extended by up to five months if you agree to pay certain extension fees.

**Have Questions? Contact an Experienced Patent Attorney in Los Angeles Today**

If you have questions about the laws and regulations governing patents, take action by contacting the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How Effective is a Provisional Patent?

The process of filing the necessary paperwork and materials for a patent application is time-consuming and potentially labor intensive. When a company does not have the luxury of time on their side, they may consider filing a provisional application that enables the company to legally use the phrase “patent pending” for their intellectual property.

A provisional patent enables you to establish an early filing date for your patent by supplying only basic information about your invention. For example, unlike non provisional patents, which require claims, when you file a provisional patent application, you only have to provide specifications on the invention. This information can be provided in virtually any format. Those specifications will not undergo any type of review by a U.S. Patent and Trademark Office (USPTO) examiner.

When a provisional patent is secured, it provides you with a full year to file the standard, non provisional patent application. Although a provisional patent is only preliminary (i.e., not a full patent) it still offers the same intellectual property protections as a full patent in that it effectively reserves your invention’s space in line. As a result, you are provided some time to complete other necessary tasks without having to worry that other individuals or companies will infringe on your invention in the interim.

Provisional Patents vs. Non-Provisional Patents

A provisional patent is not actually a patent. It simply allows you to start using the term “patent pending” to refer to your invention and to preserve your intellectual property rights while you decipher when to file the full patent application.

When you pursue a non provisional patent, all documents and materials must be formalized and ready for review, including formal patent claims and other disclosure documents.

Advantages

There are generally two advantages associated with securing a provisional patent. The first advantage is that it allows you to establish an early filing date for your intellectual property. This provides you time to secure funding for your invention and otherwise develop the technology before you finalize your invention. The second advantage is that a provisional patent is far less expensive and time-consuming to file, as opposed to a non provisional patent application.

When it comes to patents, time is extremely important. This is because the United States is a “first to file” country. This means that whoever files for the patent first receives the intellectual property protections, regardless of who had the idea first. Hence, it is extremely important to begin filing for a patent – or a provisional patent – as soon as possible.

Potential Problems

One of the potential problems with pursuing a provisional patent is that you need to get it right the first time. As mentioned, when someone is pursuing a provisional patent, time is usually not on their side so the paperwork for the provisional patent needs to be filed correctly. While you only need to specify the technical specs and drawings related to your invention, any inaccuracies or issues could potentially undo the protections that the provisional patent application would otherwise provide.

One of the best ways to avoid these potential problems is to retain the services of an experienced patent lawyer such as the highly reputable Omni Legal Group.

Is a Design Patent a Viable Option?

Should you pursue a design patent or a utility patent? Or should you pursue both? Which is the best choice to protect your intellectual property? These are important questions that needs to be answered early on in the process. Many professionals believe a utility patent is the better option, but there are actually a number of advantages associated with holding a design patent.

What Exactly is a Design Patent?

Many professionals and companies opt for utility patents since they generally protect the technical aspects and use of specific forms of intellectual property. In contrast, design patents focus on protecting the “ornamental elements” and appearance of a functional item. Basically, a design patent will protect your product’s aesthetic appeal.

It is important to understand what you are getting into when pursuing a design patent. They are technically complex which means they are routinely difficult to properly file. Hence, it is in your best interest to retain the services of a respected patent lawyer.

Protections Afforded by a Design Patent

When you secure a design patent for your product, no other business can make, use, or sell a product that looks similar enough to your patented product that an “ordinary observer” might think it is your product. The “ordinary observer” standard is considered to be your average consumer, as opposed to an expert. This is important because it provides your intellectual property with strong legal protection. If you have a valid design patent and another product is infringing on your design, you have the ability to pursue damages and to have a court halt the sales of the knockoff.

If you want to see design patents being put into action, consider recent litigation filed by Oakley, Inc., Fitness Anywhere LLC, and other companies. According to Bloomberg Law, these U.S. companies are enforcing their design patent rights to take on knockoff products that are being sold online through Amazon, eBay, etc. They filed patent infringement lawsuits against a myriad of overseas importers alleging they are selling fake goods from China and other foreign countries.

Companies are turning to design patents to protect their brands and products largely because the sellers of fake goods have become more sophisticated and are shipping knockoffs without logos, which thereby increases the odds they avoid seizure at the border and make it more difficult for a legitimate company to file a trademark lawsuit.

**Have Questions? Speak to an Experienced Patent Lawyer Today**

If you are interested in pursuing a design patent, it is extremely important to submit the necessary paperwork and application materials to the U.S. Patent and Trademark Office in a timely manner. Hence, the services of a highly reputable patent attorney, such as the Omni Legal Group, is essential for a successful outcome. Our legal team works tirelessly to find the right intellectual property type to protect your invention. Whether you need a design patent, utility patent, or plant patent application, we will do what it takes to get the patent application approved as efficiently and effectively as possible. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How do you report trademark infringement?

Steps to Report Trademark Infringement

It is an all-too-common scenario – you are surfing the Internet searching your company and your products when you stumble upon another business using a name or logo that is very similar to yours and reaping financial benefits from that very similar name or logo. If you find yourself in this situation, your mind may be flooded with questions and concerns, including: who should I report this apparent trademark infringement to?

Take Time to Assess the Situation

You may be surprised to learn that the first rule of handling a potential trademark infringement is to do nothing. For example, you should NOT contact the company. Also, you should NOT send an angry or agitated message through any social media platforms. Instead, you should immediately contact an experienced and knowledgeable trademark attorney. Why? Because a trademark lawyer can assist you in evaluating your legal rights and the best path forward.

What Constitutes Trademark Infringement?

Trademark infringement occurs when someone who is not the established owner of a trademark uses your mark, or one very similar to your mark, in connection with goods and services similar or related to those offered by you in an unauthorized manner. It is also important to understand that infringement occurs when the other party utilizes the trademark in a manner that would cause the following:

Consumer confusion;
Marketplace deception; or
An error regarding the source of the goods and/or services.

Intent Does Not Matter

The intention behind the infringement is irrelevant. Whether or not the imposition occurred on purpose, a trademark owner still retains the right to defend their trademark from potential confusion in commerce from its continued misuse. That being said, if the infringement is willful, the trademark owner may be entitled to additional remedies.

How To Report Trademark Infringement

You can report an allegation of trademark infringement by sending a cease and desist letter to the infringing party. The objective of sending such a letter is to potentially try and reach an amicable settlement with the infringing party prior to escalating the matter to filing a lawsuit in federal or state court.

In addition to sending a cease and desist letter, you could seek assistance through the platform where the infringement is taking place. For example, if the infringement is occurring on a third-party platform such as Amazon, Shopify or Facebook, you have the option to utilize the resources facilitated by those platforms.

Filing a lawsuit is another option of dealing with trademark infringement. It is important to understand that the primary purpose of trademarks is to limit the risk that consumers will be unnecessarily confused in commerce. As a result, the key to victory in trademark lawsuits often focuses on demonstrating marketplace deception, regardless of whether the infringement was intentional or not.

If you can successfully establish that willful infringement took place, you would likely be eligible to receive compensatory damages and reimbursement for attorney fees.

In an instance where you have become aware of infringement via a trademark application, you can also file a Notice of Opposition with the United States Patent and Trademark Office (USPTO). In such instances, your objective is to block the registration of an infringing mark.

Benefits of Retaining a Trademark Attorney

If you are looking to take action to protect your mark, then you should consider retaining the services of an experienced trademark attorney. An attorney can help you in navigating the complex trademark application process and most importantly assist in protecting your trademark from potential infringement and damage.

The reputable Omni Legal Group, is comprised of a highly respected legal team that can help you by conducting the necessary research and steps to protect your respected trademark. For further information or to schedule a consultation please contact Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.

How does a business protect its brand from infringement by a third-party domain name?

Trademark Violation – Challenging a Domain Name

The protections afforded to a trademark owner are not limited to the owner’s business and brand. Those protections extend to the domain name for the website of your business. As a result, if you become aware of another business attempting to use your domain, or strikingly similar, domain, you may be able to file a formal dispute.

Domain Disputes on the Rise

It is becoming increasingly common for businesses to discover domains that are using their company information. In certain circumstances, a third party may have intentionally registered a domain using your business information in an attempt to simply profit from the domain. Basically, they register the domain in the hopes that you will find it and offer compensation in exchange for the third party selling you the domain rights. When this situation arises, trademark owners possess the right to take these domains from third parties engaging in “cybersquatting” (i.e. retaining a domain name in an effort to profit from it).

Domain Name Dispute Resolution Policy

When a domain name is registered, the Uniform Domain Name Dispute Resolution Policy (UDRP) is a mandatory arbitration process that must be utilized by the domain owner. The UDRP enables trademark registration owners to file complaints against domains that are improperly using their trademark. If the dispute is successfully resolved, the domain can then be transferred to the rightful trademark owner.

If you have reason to believe that someone is cybersquatting on a domain name that infringes on your registered trademark, you may be able to initiate legal action to obtain the rights to that domain. Here are some of the steps to file a domain dispute:

You need to choose the service through which you will file a formal domain complaint (e.g., the World Intellectual Property Organization).
Once selected, you will need to decide the number of panelists that will review the complaint.
Pay the necessary filing fees. Please note that the fees for a UDRP complaint fluctuate depending on the resolution service selected and the number of panelists appointed.

Filing a Domain Complaint

A domain complaint typically features three key elements that you must prove in order to be successful:

The trademark and domain are confusingly similar,
Why the current domain holder has no rights in the domain, and
The domain registration was done in bad faith.

Without these key points, the chances of the complainant’s success are slim.

When your complaint is filed with the arbitration service, an initial review will be conducted. The domain holder then has 20 days to file a response to your complaint. If they fail to respond, the panel will proceed with an evaluation of your complaint. If the domain holder does respond, the panel reviews the response and forwards its final decision regarding the matter to the arbitration service within 14 days. Overall, this process will take between 4-5 months to be resolved.

If your complaint prevails, the domain holder will be ordered to modify or release the domain name to you. If your complaint is not successful, the domain remains in the custody of the original registration owner.

Need Help with a Trademark, Copyright or Patent? Contact the Reputable Omni Legal Group Today

If you are concerned about a domain holder cybersquatting, it is imperative that you consult with an experienced and knowledgeable trademark lawyer as soon as possible. Omni Legal Group, is comprised of a highly respected legal team that can help you by conducting the necessary research and steps to protect your intellectual property. For further information or to schedule a consultation please contact Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.

How to Enforce and Protect Your Trademark Effectively

Trademark owners often mistakenly believe that once their trademark is successfully registered, they are good to go and do not need to take any other action. It is an error made with surprising regularity by new trademark owners. Unfortunately, this is not accurate.

Here is the reality – when you register a trademark with the U.S. Patent and Trademark Office (USPTO), the maintenance responsibilities fall on you. This means that you need to take steps to protect your trademark from infringement. As a result, trademark owners need to be proactive and ensure they have an effective enforcement program in place that is ready to be deployed.

Here is another reality – the scope of your rights is largely dependent on lengths to which you are able to enforce your trademark determines the scope of their rights within that registration.

To protect your trademark effectively, you need to have a program in place that involves consistent monitoring of your mark and regular policing and enforcement within your chosen sector of the economy.

When it comes to monitoring your trademark, you should invest in setting up a service devoted to monitoring incoming applications to the USPTO database. These services notify you if any new applications are extremely similar to your mark and enable you to take action against any that may infringe upon your trademark rights.

In addition to effective monitoring, you also need to establish an enforcement regimen that can be deployed quickly and will ultimately protect your trademark rights. In order to police and protect your trademark, you need to develop a strong understanding of the potential types of infringement that could occur. For example, there are different forms of infringement – incidental infringement and nefarious infringement.

Thus, rigorous and consistent enforcement is key, and as you have probably noticed that an effective enforcement regimen cannot be done by a single person. You need to invest in the resources that will allow you to effectively monitor and police your mark while affording you the time to focus on growing your business.

If you have questions about the scope of your trademark rights or need to discuss a potential infringement matter, contact the reputable Omni Legal Group to schedule a confidential case review at 855.433.2226. We are one of the preeminent trademark law firms in Los Angeles and have earned a reputation for providing effective legal advice for trademark applicants, trademark owners, inventors, and other innovators. You can be rest assured that the skilled attorneys with Omni Legal Group will give you the time and attention you deserve. For further information please visit www.OmniLegalGroup.com.

Why should trademark registrants prepare for a heightened level of scrutiny upon renewal of their marks?

Overview of the Trademark Renewal Audit Program

If you registered a trademark and are looking to renew the registration, it is important to be prepared for a heightened level of scrutiny. Why? Because the United States Patent and Trademark Office (USPTO) established a program requiring certain trademark registrants to do more than simply renew their trademark and substantiate their continued use of the items listed in their trademark application, or applications. The new program is an audit whereby the USPTO is requiring trademark registrants to ensure that every item listed is being actively sold in connection with the registered trademark.

New Audit Program Revealing Inaccurate Trademark Applications

The USPTO launched the audit program in November of 2017. Since its launch, the USPTO discovered that around 50 percent of registrants needed to delete at least a portion of their listed goods and services. However, it is worth noting that the registrations flagged as needing to be amended were created prior to the launch of this audit program. As a result, there is a good chance that the trademark owners did not review their registrations carefully to ensure that every item listed is being sold actively in connection with the registered trademarks.

What to Expect If You are Selected for a Trademark Audit

Not every trademark owner is going to be subjected to an audit. According to the USPTO, the audits are conducted randomly. In addition, the audit program is currently limited to registrations for which a registrant submitted a renewal filing.

If your mark winds up being selected for an audit, you will receive a “Post-Registration Office Action” notice from a specialist or staff attorney with the USPTO. This notice will then be recorded in the registration’s file in the Trademark Status & Document Retrieval database.

How to Effectively Respond to an Audit

If your mark is selected for an audit, your response needs to have two key components:

Evidence that your trademark is currently used in commerce. All of your goods and service utilizing the trademark need to be accounted for in your response.
A formal statement that is accompanied by a signed declaration or affidavit. Here is a sample statement:

“The owner/holder was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”

What Happens If the Audit Raises Red Flags

If the USPTO determines that your response failed to meet the requirements of the audit and your goods and/or services remain in the registration without acceptable proof of use, expect to receive a second Office Action requesting you provide sufficient proof of use for all remaining goods and/or services.

The response time for an audit is currently six months from the issuance of the Office Action.

Key to Prevailing an Audit – Detailing Active “Commercial Use” of All Goods and Services Claimed in Your Registration Prior to Filing Your Renewal

The best advice to ensure you prevail in a USPTO audit is to work with your Los Angeles trademark attorney and come up with a strategy for thoroughly vetting each and every item listed in your registration before filing.

If you need assistance with a trademark renewal audit, contact the reputable Omni Legal Group at 855.433.2226 to schedule a confidential case review. We are a premier Los Angeles trademark law firm with offices in LA, Santa Monica, and Beverly Hills. Our team of experienced Los Angeles trademark attorneys specialize in protecting your intellectual property and work tirelessly to secure your patents, trademarks, and copyrights. www.OmniLegalGroup.com.

Can the United States Space Force lose its trademark to the Netflix series by the same name?

While President Trump officially unveiled the flag of the country’s newest military unit, Space Force, Netflix has been working to secure trademark rights to the same name for its comedy series across the globe. Prior to the series’ launch in late May, the popular streaming company secured rights to the show’s logo in certain countries in Europe, as well as, Australia and Mexico. The Department of the Air Force has since filed its own United States trademark applications for registration of “SPACE FORCE,” both of which remain pending. Currently, the Trademark Electronic Search System indicates Netflix has not yet attempted to secure trademark rights to “SPACE FORCE” in this country.

In May of this year, President Trump signed the 2020 Armed Forces Day Proclamation, officially creating the United States Space Force. In so doing, President Trump indicated that the branch would be aimed at protecting strategic American space infrastructure, including communications, navigation, and spy satellites from adversaries. In signing this proclamation, the President also unveiled the official flag of the new military branch, which included the Space Force logo. According to the White House, the colors used on the logo are meant to symbolize the “vast recesses of outer space.” Moreover, the logo includes an elliptical orbit with three large stars, each of which are meant to represent the branches’ three-pronged purpose: organizing, training and equipping Space Force troopers.

Netflix first filed to register its “SPACE FORCE” trademark in January of 2019 for the Netflix series starring Steve Carell. Since then, the entertainment giant has succeeded in securing rights in Australia, Canada, Mexico, and the European Union for entertainment services in the nature of a comedic drama television series. Netflix has also secured registration of the mark as applied to calendars, greeting cards, clothing, Christmas tree decorations, dolls, exercise equipment, and other goods in Canada. Moreover, Netflix holds other applications for the mark as applied to additional goods and services in Australia, Europe, and Canada, all of which remain pending. Most recently, Netflix sought registration of the mark in Mexico for a wide range of goods, such as calendars, posters, books, clothing, Christmas tree decorations, toy figures, and numerous others. Despite these multiple international filings under “Netflix Studios,” no U.S. applications to “Netflix Studios” have been filed.

Beginning in March 2019, the Air Force filed two intent-to-use applications for the standard character mark for “SPACE FORCE.” Standard character marks are those which allow the applicant to register the words of the mark in any design, capitalization, or font. To date, the Air Force has not filed any trademark applications for the Space Force logo. However, standard character marks not only provide broader protection than design trademarks, they also constitute the broadest type of trademark protection permitted in the United States. These applications provide a large range of goods and services, including space vehicles, promoting public awareness of the need for the United States Space Force, educational services, clothing, metal and non-metal name plates, backpacks, belt buckles, beer mugs, and cigarette lighters.

Intent-to-use applications are filed when the applicant may or may not have already been using the mark in commerce prior to filing their application. Such applicants must file based on a good faith or bona fide intent to use the mark in commerce. Along these lines, the United States Patent and Trademark Office relies on the “first-to-use” concept in trademark registrations. Under this concept, the entity which first uses a given trademark in commerce then secures the rights to it. Oppositely, most other countries follow the “first-to-file” rule, essentially creating a race to the trademark office in order to secure rights. Thus, in the event a dispute arises between the Department of the Air Force and Netflix, the entity which first used the mark in commerce is likely to prevail.

Ironically, some have commented that the logo for the military’s newest branch appears confusingly similar to Star Trek’s Starfleet logo. Others have rebutted that imagery such as arrowheads, orbits, stars, planets, and swooshes have been used in space emblems long before either the Starfleet or the space force logo. However, interestingly, there exist more than twenty applications and/or registrations which include the phrase “space force.” For instance, one application was filed in August 2019 for computer software in the field of parking lot services. As another example, another “SPACE FORCE” intent-to-use application was filed in May of this year for dietary supplement drink mixes, clothing, and energy drinks. Others exist for various goods and services, including video games, toys/action figures, community service organizations, and writing instruments.

Two identical trademarks can coexist if they are used in wholly unrelated industries. In particular, trademark infringement exists when there is a likelihood that consumers will be confused, mistaken, or deceived as to the source of particular goods or services. In this manner, if consumers are likely to believe the United States military’s newest branch is connected to the Netflix series, trademark infringement exists. For infringement to exist in this case, consumers would have to be likely to believe that Netflix is sponsoring the military’s training of fighting astronauts or that the federal government produced a television series about it.

Patent and Trademark

Category: Patent and Trademark