Foursquare Encounters Problems with Trademark Prosecution

Written by: Mark Terry

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.

Lessons Learned: 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.


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