We recently have come across an issue where, in the enforcement of one of our client’s marks in a Domain Name Dispute the bad guy (i.e., registrant of the confusingly similar domain name to our client’s mark)(hereinafter “Bad Guy”) responded, “Well, I am not using the domain name – I only registered it – so there is no bad faith here.”
“Survey Says – XXX” (Sorry for the Family Feud Reference). Simply put, the Bad Guy registered, we’ll say, WidgetOnline.com. Our client’s Federally Registered U.S. Mark is Widget. Our client sells furniture under the mark Widget. Bad Guy, although not posting a site at WidgetOnline.com, has allowed his domain host to monetize the site (e.g., show ads on the site and Bad Guy gets a cut of all click through traffic through WidgetOnline.com’s ads). And guess what, the ads on WidgetOnline.com are for competitors to our client’s furniture business.
So does the Bad Guy’s defense hold water? Like a sieve.
In short, to prevail in a domain name dispute the trademark holder must show:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the trademark holder has rights and had said rights at or before the registration of the disputed domain name; and
2. The Bad Guy has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
There are many examples of bad faith out there, but for the purposes of this discussion guess what – Monetization of a Web Site for Pecuniary Gain is Evidence of Bad Faith! Game. Set. Match.
So what have we learned? If someone registers a domain name similar to your trademarks even if they do not post a site to the domain name but do monetize the same – especially if those ads are for your competitors – the Bad Guys loose. Win one for the Good Guys.
As always, if you have any questions regarding this or any other issue Blog on it or just send us an Email.
The Trademark Company
Wednesday, December 29, 2010
Tuesday, December 28, 2010
How to Trademark a Person's Name
One issue that we have been seeing more and more of lately is whether a trademark registration can be secured for an individual's name. The short answer is yes it can be provided that you have the authorization to do so.
As a general rule the U.S. Patent and Trademark Office does not permit the registration of merely a surname (i.e., a last name). So registration of JONES in connection with shoes would not be permitted. This rule is found under section 2(e)(4) of The Trademark Act. There are, of course, exceptions to this rule such as longstanding use, etc. But as a general rule they will not let you protect just a last name.
However, a full name can be easily registered as a trademark. But note, you must have the permission of the person - if they are a living individual - to register the same. For instance, Bob Jones could not register MICHAEL JORDAN NISSAN unless he has Michael Jordan's, the famous basketball player's, permission to do so. Bob Jones can however, register BOB JONES' NISSAN provided that he himself provides an additional letter of consent to the U.S. Patent and Trademark Office stating he is allowing himself to register his own name and assuming there are no other bars to the registration of the mark.
So to review, the general answer is yes you can register a name. If you merely want to register a last name you will need to show it has been in use for a long time before it can be registered. In the alternative, you can register a full name IF you have the consent of the person whose name it is.
The Trademark Company
As a general rule the U.S. Patent and Trademark Office does not permit the registration of merely a surname (i.e., a last name). So registration of JONES in connection with shoes would not be permitted. This rule is found under section 2(e)(4) of The Trademark Act. There are, of course, exceptions to this rule such as longstanding use, etc. But as a general rule they will not let you protect just a last name.
However, a full name can be easily registered as a trademark. But note, you must have the permission of the person - if they are a living individual - to register the same. For instance, Bob Jones could not register MICHAEL JORDAN NISSAN unless he has Michael Jordan's, the famous basketball player's, permission to do so. Bob Jones can however, register BOB JONES' NISSAN provided that he himself provides an additional letter of consent to the U.S. Patent and Trademark Office stating he is allowing himself to register his own name and assuming there are no other bars to the registration of the mark.
So to review, the general answer is yes you can register a name. If you merely want to register a last name you will need to show it has been in use for a long time before it can be registered. In the alternative, you can register a full name IF you have the consent of the person whose name it is.
The Trademark Company
Monday, December 27, 2010
5 Reasons Why You Should Register Your Trademarks
We are often asked by our customers why should I register my trademark? Isn’t it true that I can begin use of my trademark without a registration?
The answer may come as a surprise to some but this is, in fact, true. You do not need to register your trademark to use the same to identify your goods or services.
However, before dismissing registering your trademark consider the value and protection afforded by a Federal Trademark Registration for a relatively modest price.
A Federal Trademark Registration provides:
1. Constructive notice nationwide of the trademark owner's claim.
Notice is one of the biggest issues in trademark law. When a lawsuit arises or a claim of infringement one of the issues which must always be addressed is whether the alleged infringing party was on notice of the trademark owner’s rights. By statute, a Federal Trademark Registration provides that everyone in the United States is on notice of rights retained by owners of Federal Trademark Registrations.
2. Evidence of ownership of the trademark.
Often challenges can arise as between parties concerning rights in competing trademarks. Those who have had the foresight to have their trademarks registered almost always retain the upper hand in such conflicts as retaining a Federal Trademark Registration is significant evidence that the trademark holder retains rights in the mark it alleges to own.
3. Jurisdiction of federal courts may be invoked.
From time to time Trademark Enforcement and Trademark Defense disputes may arise to the point that litigation is involved. Owners of Federal Trademark Registrations enjoy the benefit of being able to bring their disputes in Federal District Courts throughout the country.
4. Registration can be used as a basis for obtaining registration in foreign countries.
The United States is now a signatory to the Madrid Protocol. The treaty permits the owners of Federal Trademark Registration(s) to easily extend their U.S. rights to receive International Trademark Registration(s) in more than 78 countries around the world.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Lastly, an owner of a Federal Trademark Registration can file the same with the U.S. Customs and Border Protection (“USCBP”) and have the USCBP stop infringing goods from ever entering the country.
Conclusion.
So do you need to register your trademark, no. But given the cost, it is one of the best investments in your brand you will ever make.
The Trademark Company
The answer may come as a surprise to some but this is, in fact, true. You do not need to register your trademark to use the same to identify your goods or services.
However, before dismissing registering your trademark consider the value and protection afforded by a Federal Trademark Registration for a relatively modest price.
A Federal Trademark Registration provides:
1. Constructive notice nationwide of the trademark owner's claim.
Notice is one of the biggest issues in trademark law. When a lawsuit arises or a claim of infringement one of the issues which must always be addressed is whether the alleged infringing party was on notice of the trademark owner’s rights. By statute, a Federal Trademark Registration provides that everyone in the United States is on notice of rights retained by owners of Federal Trademark Registrations.
2. Evidence of ownership of the trademark.
Often challenges can arise as between parties concerning rights in competing trademarks. Those who have had the foresight to have their trademarks registered almost always retain the upper hand in such conflicts as retaining a Federal Trademark Registration is significant evidence that the trademark holder retains rights in the mark it alleges to own.
3. Jurisdiction of federal courts may be invoked.
From time to time Trademark Enforcement and Trademark Defense disputes may arise to the point that litigation is involved. Owners of Federal Trademark Registrations enjoy the benefit of being able to bring their disputes in Federal District Courts throughout the country.
4. Registration can be used as a basis for obtaining registration in foreign countries.
The United States is now a signatory to the Madrid Protocol. The treaty permits the owners of Federal Trademark Registration(s) to easily extend their U.S. rights to receive International Trademark Registration(s) in more than 78 countries around the world.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Lastly, an owner of a Federal Trademark Registration can file the same with the U.S. Customs and Border Protection (“USCBP”) and have the USCBP stop infringing goods from ever entering the country.
Conclusion.
So do you need to register your trademark, no. But given the cost, it is one of the best investments in your brand you will ever make.
The Trademark Company
Monday, December 20, 2010
So You Want to Parody a Famous Trademark? It May Not be a Laughing Matter.
The law of trademarks has evolved to allow the parody of famous marks in some instances. Technically speaking, a parody is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner. It must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.
The second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.
But mark adopters beware, Parody is not automatically a complete defense to a claim of infringement, likelihood of confusion, or dilution. And just because you may be able to do something does not mean that you should.
Owners of the more famous brands are increasingly going after these irreverent versions of their marks on a belief that the Parody marks are still stealing their hard-earned and valuable good will.
Whether or not they should lighten up and allow the Parodies is up to them. But for all considering adopting a Parody of a famous mark beware – legal defense fees, win or lose, are no laughing matter.
The Trademark Company
The second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.
But mark adopters beware, Parody is not automatically a complete defense to a claim of infringement, likelihood of confusion, or dilution. And just because you may be able to do something does not mean that you should.
Owners of the more famous brands are increasingly going after these irreverent versions of their marks on a belief that the Parody marks are still stealing their hard-earned and valuable good will.
Whether or not they should lighten up and allow the Parodies is up to them. But for all considering adopting a Parody of a famous mark beware – legal defense fees, win or lose, are no laughing matter.
The Trademark Company
Tuesday, December 14, 2010
What To Do When You Receive a Cease and Desist Letter.
The mail comes and you notice a letter from a law firm you do not recognize. As you open the letter you hope for the best but you are nervous in anticipation of what the letter says. You read the opening paragraph of the letter:
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
Wednesday, December 8, 2010
When Should You Enforce Your Trademark?
One of the trickiest questions we get here at The Trademark Company is the question of when should a business enforce its trademark(s) against a likely infringer? The answer, we believe, is a mix of business considerations balanced against legal principals. In short, here’s what you need to know.
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
Tuesday, December 7, 2010
A Business Owner's Primer on Intellectual Property
We are often asked do I need a trademark for my slogan? Can I patent my idea? How can I protect my website from copying by others? Here’s a quick rundown of the various protections every business should be aware of in protecting their intellectual property.
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Thursday, December 2, 2010
3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
Tuesday, November 30, 2010
A Start-Up's Guide to Intellectual Property
We are often asked do I need a trademark for my slogan? Can I patent my idea? How can I protect my website from copying by others? Here’s a quick rundown of the various protections every business should be aware of in protecting their intellectual property.
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Monday, November 29, 2010
3 Tips for Online Retailers to Avoid Holiday Infringement of Their Trademarks
We are all aware that from time to time others may infringe upon your trademarks. When this occurs, whether by accident or on purpose, it is incumbent upon the trademark holder to enforce their trademark rights to stop all such infringement.
If you are an online retailer the holidays is an especially busy time for online infringement.
Why should you care? Because certain types of infringement can lead to the direct loss of sales by consumers being directed to other web sites when they are looking for yours.
Here are a few tips to make sure this seasonal holiday infringement does not ruin your sales this season:
1. Google Yourself. First and foremost search for your business name of trademark-protected goods or services in the major search engines - especially Google.
2. Sponsored Results. Pay close attention to the sponsored results - those results typically on the top, bottom, and in right-hand column of the search results. If any competitor comes up in the sponsored results when searching your company's name or trademark then they may be bidding on your company's name or trademark as a keyword in pay-per-click advertising. Provided you retain rights in your company's name or trademarks such tactics creates something known as initial interest confusion among relevant consumers and may be against the law. If you witness such results such activity you should immediately take action to enforce your rights to eliminate this confusion before it impacts your sales.
3. Organic Results. Don't just stop there, however. Make sure to look for your competitors when you search for your company's name or trademarks in the organic results as well. If you see any pull up their web site and then right click your mouse and select "View Page Source". This will pull up much if not all of the html language behind the web site. After you have done this perform a quick CTRL F search of the html code to see if your competitor has embedded your company name or trademarks in their html code. If they have once again this will create a situation, as above, known as initial interest confusion which is against the law by being a relevant result in organic results when others are searching for your company or trademarks. As always, if you witness such activity you should immediately take action to enforce your rights to eliminate this confusion before it impacts your sales.
What action should you take? Of course that will depend upon the results of the search, whether there is any such illegal or suspected illegal activity, and the actual rights you retain in your company name and trademarks. But if you do unearth the same contact us immediately so that we may be able to stop the same at once before the impact is felt on your holiday sales.
The Trademark Company
If you are an online retailer the holidays is an especially busy time for online infringement.
Why should you care? Because certain types of infringement can lead to the direct loss of sales by consumers being directed to other web sites when they are looking for yours.
Here are a few tips to make sure this seasonal holiday infringement does not ruin your sales this season:
1. Google Yourself. First and foremost search for your business name of trademark-protected goods or services in the major search engines - especially Google.
2. Sponsored Results. Pay close attention to the sponsored results - those results typically on the top, bottom, and in right-hand column of the search results. If any competitor comes up in the sponsored results when searching your company's name or trademark then they may be bidding on your company's name or trademark as a keyword in pay-per-click advertising. Provided you retain rights in your company's name or trademarks such tactics creates something known as initial interest confusion among relevant consumers and may be against the law. If you witness such results such activity you should immediately take action to enforce your rights to eliminate this confusion before it impacts your sales.
3. Organic Results. Don't just stop there, however. Make sure to look for your competitors when you search for your company's name or trademarks in the organic results as well. If you see any pull up their web site and then right click your mouse and select "View Page Source". This will pull up much if not all of the html language behind the web site. After you have done this perform a quick CTRL F search of the html code to see if your competitor has embedded your company name or trademarks in their html code. If they have once again this will create a situation, as above, known as initial interest confusion which is against the law by being a relevant result in organic results when others are searching for your company or trademarks. As always, if you witness such activity you should immediately take action to enforce your rights to eliminate this confusion before it impacts your sales.
What action should you take? Of course that will depend upon the results of the search, whether there is any such illegal or suspected illegal activity, and the actual rights you retain in your company name and trademarks. But if you do unearth the same contact us immediately so that we may be able to stop the same at once before the impact is felt on your holiday sales.
The Trademark Company
Wednesday, November 24, 2010
How to Select a Great Trademark
Our clients often ask us for suggestions in selecting a Trademark for their products or services. Our response to the question "How do I select a great trademark?" is always the same – "It Depends."
On one hand, do they want to create a completely coined name (i.e., something no one has ever heard of like eBay or Google) or use an arbitrary mark (i.e., a term we have heard of but that’s use is arbitrary in connection with the goods or services provided such as AMAZON for online retail store services or APPLE for computers).
On the other, do they want a mark that creates instant interest in the product or service because it is suggestive or describes of trait thereof (e.g., ORANGE CRUSH for orange-flavored soft drinks or COPPERTONE for suntan oil).
No matter what they decide a great name should be catchy and memorable, should create interest in the product or service, and most importantly be registerable as a trademark - that is capable of registration on the principal register maintained by the United States Patent and Trademark Office ("USPTO").
A common problem in selecting a trademark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., RED SHOES for shoes that are red).
Unfortunately, descriptive terms are not registerable as trademarks, absent proof of a secondary meaning (i.e., you have been using it for five years or you have spent millions in advertising of the mark).
So what is the best way to select a trademark for your products or services?
Coin or use arbitrary terms if you intend on building the brand from scratch. Note, this will take more effort and resources as consumers will need to be educated via advertising and otherwise as to your product or services provided in connection with that mark.
In the alternative, if you want that instant buzz which comes with suggestive marks, be cautious and avoid generic, descriptive, and non- inherently distinctive marks as they will not be registerable before the USPTO nor protected from infringement by others. Make sure that the terms you use in your trademark do not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of your products or services. Rather, select a trademark that requires some bit of imagination, thought or perception to reach a conclusion as to the nature of your products.
The Trademark Company
On one hand, do they want to create a completely coined name (i.e., something no one has ever heard of like eBay or Google) or use an arbitrary mark (i.e., a term we have heard of but that’s use is arbitrary in connection with the goods or services provided such as AMAZON for online retail store services or APPLE for computers).
On the other, do they want a mark that creates instant interest in the product or service because it is suggestive or describes of trait thereof (e.g., ORANGE CRUSH for orange-flavored soft drinks or COPPERTONE for suntan oil).
No matter what they decide a great name should be catchy and memorable, should create interest in the product or service, and most importantly be registerable as a trademark - that is capable of registration on the principal register maintained by the United States Patent and Trademark Office ("USPTO").
A common problem in selecting a trademark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., RED SHOES for shoes that are red).
Unfortunately, descriptive terms are not registerable as trademarks, absent proof of a secondary meaning (i.e., you have been using it for five years or you have spent millions in advertising of the mark).
So what is the best way to select a trademark for your products or services?
Coin or use arbitrary terms if you intend on building the brand from scratch. Note, this will take more effort and resources as consumers will need to be educated via advertising and otherwise as to your product or services provided in connection with that mark.
In the alternative, if you want that instant buzz which comes with suggestive marks, be cautious and avoid generic, descriptive, and non- inherently distinctive marks as they will not be registerable before the USPTO nor protected from infringement by others. Make sure that the terms you use in your trademark do not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of your products or services. Rather, select a trademark that requires some bit of imagination, thought or perception to reach a conclusion as to the nature of your products.
The Trademark Company
Tuesday, November 23, 2010
4 Things Every Trademark Owner Should Know About Monitoring Use Of Their Trademark(s)
If you are a trademark owner did you know that to maintain rights in your mark you are required to police the use thereof?
Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.
In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.
Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:
1. USPTO.gov
The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).
For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.
2. Search Engines & Google Alerts
Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.
In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).
Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.
Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.
Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.
Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.
3. RSS Feeds & Twitter
Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.
To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.
4. State Trademark and Corporate Databases
One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.
There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.
As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.
The Trademark Company
Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.
In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.
Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:
1. USPTO.gov
The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).
For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.
2. Search Engines & Google Alerts
Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.
In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).
Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.
Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.
Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.
Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.
3. RSS Feeds & Twitter
Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.
To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.
4. State Trademark and Corporate Databases
One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.
There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.
As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.
The Trademark Company
Friday, November 5, 2010
The Relationship Between Trademarks and Domain Names
We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses. Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.
Registration of a Domain name is Not Trademark Use
As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.
Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not. Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.
Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.
Cybersquatting
Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.
There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).
Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;
2. The registrant does not have any rights or legitimate interests in the domain name; and
3. The registrant registered the domain name and is using it in "bad faith."
In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:
a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and
d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.
The UDRP and Its Remedies
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.
In short, if you register a domain name with one of these TLDs, you are subject to the policy.
Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.
Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.
One significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.
The ACPA and Its Remedies
The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.
Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.
However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.
Summary
So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.
The Trademark Company
Registration of a Domain name is Not Trademark Use
As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.
Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not. Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.
Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.
Cybersquatting
Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.
There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).
Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;
2. The registrant does not have any rights or legitimate interests in the domain name; and
3. The registrant registered the domain name and is using it in "bad faith."
In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:
a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and
d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.
The UDRP and Its Remedies
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.
In short, if you register a domain name with one of these TLDs, you are subject to the policy.
Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.
Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.
One significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.
The ACPA and Its Remedies
The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.
Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.
However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.
Summary
So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.
The Trademark Company
Friday, October 29, 2010
When to Enforce Your Trademark Rights
One of the trickiest questions we get here at The Trademark Company is the question of when should a business enforce its trademark(s) against a likely infringer? The answer, we believe, is a mix of business considerations balanced against legal principals. In short, here’s what you need to know.
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
Wednesday, October 27, 2010
4 Things to Consider When Your Trademark Application is Refused based upon A Likelihood of Confusion with Another Mark
You applied for your Trademark Registration months ago. You then started to build your brand or business around this mark. You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark. Angry and confused you cannot understand why the refusal was issued. Your mark is not identical to the one blocking the registration thereof. How could this be? Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Friday, October 22, 2010
Beware of Invoices from the World Intellectual Property Database
As a reminder our old friends are up to it again. Just this morning one of our customers received the attached "invoice" concerning registration of their trademark on the "World Intellectual Property Database". The only problem with the bill, our customer did not order the registration and based upon information and belief there is no World Intellectual Property Database.
We advise our clients to ignore such blatant solicitation attempts. For more information on this subject please visit the World Intellectual Property's official site at WIPO Warnings.
The Trademark Company
3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
Monday, October 11, 2010
Spot Check for Infringement of Your Trademark
We are always amazed at how often competitors of our clients attempt to use our clients' own marks against them in either pay-per-click advertising or the html code of their sites.
Often this can be somewhat innocent - competitors do not realize that it is against the law to use another's trademark to divert consumers away from their web sites. Often it is not so innocent - they do realize it and think they cannot get caught.
Well, if you ever want to make sure your competitors are not using your trademarks against you visit Google, Yahoo!, or Bing and type your trademark into the search field. Click submit and see what comes up.
If "sponsored" results come up for your competitors' ads they may be bidding on your trademarks as keywords in their pay-per-click advertising. They can be stopped as this is against the law.
If "non-sponsored" or "organic" results for your trademark bring up your competitors you may wish to click on their site and then using the right button on your mouse click "view source code". This will bring up the html source code for the web site you are viewing unless they employ a blocker. Once you are looking at the source code a quick Ctrl F will find your trademark in their code if it is there. If it is, they have to remove it. It is the law.
As always, if you find improper use of your marks and have questions as to how to Enforce Your Marks just give us a call or shoot us an email. We're glad to help.
The Trademark Company
Often this can be somewhat innocent - competitors do not realize that it is against the law to use another's trademark to divert consumers away from their web sites. Often it is not so innocent - they do realize it and think they cannot get caught.
Well, if you ever want to make sure your competitors are not using your trademarks against you visit Google, Yahoo!, or Bing and type your trademark into the search field. Click submit and see what comes up.
If "sponsored" results come up for your competitors' ads they may be bidding on your trademarks as keywords in their pay-per-click advertising. They can be stopped as this is against the law.
If "non-sponsored" or "organic" results for your trademark bring up your competitors you may wish to click on their site and then using the right button on your mouse click "view source code". This will bring up the html source code for the web site you are viewing unless they employ a blocker. Once you are looking at the source code a quick Ctrl F will find your trademark in their code if it is there. If it is, they have to remove it. It is the law.
As always, if you find improper use of your marks and have questions as to how to Enforce Your Marks just give us a call or shoot us an email. We're glad to help.
The Trademark Company
Tuesday, October 5, 2010
3 Tips for Posting Your Law-Related Questions in Open Internet Forums
As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.
The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.
Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.
Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:
1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.
2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)
3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.
So keep posting if you must. Just please be careful.
The Trademark Company
The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.
Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.
Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:
1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.
2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)
3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.
So keep posting if you must. Just please be careful.
The Trademark Company
Thursday, September 30, 2010
5 Reasons Why You Should Register Your Trademarks with the U.S. Patent and Trademark Office
We are often asked by our customers why should I register my trademark? Isn’t it true that I can begin use of my trademark without a registration?
The answer may come as a surprise to some but this is, in fact, true. You do not need to register your trademark to use the same to identify your goods or services.
However, before dismissing registering your trademark consider the value and protection afforded by a Federal Trademark Registration for a relatively modest price.
A Federal Trademark Registration provides:
1. Constructive notice nationwide of the trademark owner's claim.
Notice is one of the biggest issues in trademark law. When a lawsuit arises or a claim of infringement one of the issues which must always be addressed is whether the alleged infringing party was on notice of the trademark owner’s rights. By statute, a Federal Trademark Registration provides that everyone in the United States is on notice of rights retained by owners of Federal Trademark Registrations.
2. Evidence of ownership of the trademark.
Often challenges can arise as between parties concerning rights in competing trademarks. Those who have had the foresight to have their trademarks registered almost always retain the upper hand in such conflicts as retaining a Federal Trademark Registration is significant evidence that the trademark holder retains rights in the mark it alleges to own.
3. Jurisdiction of federal courts may be invoked.
From time to time Trademark Enforcement and Trademark Defense disputes may arise to the point that litigation is involved. Owners of Federal Trademark Registrations enjoy the benefit of being able to bring their disputes in Federal District Courts throughout the country.
4. Registration can be used as a basis for obtaining registration in foreign countries.
The United States is now a signatory to the Madrid Protocol. The treaty permits the owners of Federal Trademark Registration(s) to easily extend their U.S. rights to receive International Trademark Registration(s) in more than 78 countries around the world.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Lastly, an owner of a Federal Trademark Registration can file the same with the U.S. Customs and Border Protection (“USCBP”) and have the USCBP stop infringing goods from ever entering the country.
Conclusion.
So do you need to register your trademark, no. But given the cost, it is one of the best investments in your brand you will ever make.
The Trademark Company
The answer may come as a surprise to some but this is, in fact, true. You do not need to register your trademark to use the same to identify your goods or services.
However, before dismissing registering your trademark consider the value and protection afforded by a Federal Trademark Registration for a relatively modest price.
A Federal Trademark Registration provides:
1. Constructive notice nationwide of the trademark owner's claim.
Notice is one of the biggest issues in trademark law. When a lawsuit arises or a claim of infringement one of the issues which must always be addressed is whether the alleged infringing party was on notice of the trademark owner’s rights. By statute, a Federal Trademark Registration provides that everyone in the United States is on notice of rights retained by owners of Federal Trademark Registrations.
2. Evidence of ownership of the trademark.
Often challenges can arise as between parties concerning rights in competing trademarks. Those who have had the foresight to have their trademarks registered almost always retain the upper hand in such conflicts as retaining a Federal Trademark Registration is significant evidence that the trademark holder retains rights in the mark it alleges to own.
3. Jurisdiction of federal courts may be invoked.
From time to time Trademark Enforcement and Trademark Defense disputes may arise to the point that litigation is involved. Owners of Federal Trademark Registrations enjoy the benefit of being able to bring their disputes in Federal District Courts throughout the country.
4. Registration can be used as a basis for obtaining registration in foreign countries.
The United States is now a signatory to the Madrid Protocol. The treaty permits the owners of Federal Trademark Registration(s) to easily extend their U.S. rights to receive International Trademark Registration(s) in more than 78 countries around the world.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Lastly, an owner of a Federal Trademark Registration can file the same with the U.S. Customs and Border Protection (“USCBP”) and have the USCBP stop infringing goods from ever entering the country.
Conclusion.
So do you need to register your trademark, no. But given the cost, it is one of the best investments in your brand you will ever make.
The Trademark Company
Wednesday, September 29, 2010
IP Law 101: A Start-Up's Guide to Intellectual Property
We are often asked do I need a trademark for my slogan? Can I patent my idea? How can I protect my website from copying by others? Here’s a quick rundown of the various protections every business should be aware of in protecting their intellectual property.
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Tuesday, September 28, 2010
3 Things to Consider Before Filing a Domain Name Dispute
We are often asked what our customers can do when someone else begins use of a domain name that is similar to their trademark(s) and, as a result, web site traffic – and business along with it – is being stolen by a new, competing new web site. In many instances the answer is clear: Initiate a Domain Name Dispute against the owner of the new site.
How is this done? The answer is simpler than you may believe.
Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.
The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:
(1) the domain name is identical or confusingly similar to your trademark;
(2) the domain name owner has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:
(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.
(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.
(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.
As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.
The Trademark Company
How is this done? The answer is simpler than you may believe.
Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.
The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:
(1) the domain name is identical or confusingly similar to your trademark;
(2) the domain name owner has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:
(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.
(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.
(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.
As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.
The Trademark Company
Monday, September 27, 2010
5 Things Every Business Should Know About Trademarks
We are often asked what is a trademark, do I have to register it before I use it, and other rather straightforward questions about mark usage in the U.S. and abroad. In our experience here are five (5) simple facts every business owner should know about trademarks:
1. What is a Trademark?
A trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.
2. Can I Reserve a Trademark Before I Use It?
Yes. A trademark can be "reserved" with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.
3. Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?
Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.
4. Do I Have To Register a Trademark to Use a Trademark?
No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:
* Constructive notice nationwide of your claim of ownership of a trademark;
* Evidence of ownership of the trademark;
* Jurisdiction of federal courts to Enforce a Trademark may be invoked;
* Registration can be used as a basis for obtaining Registration in Foreign
Countries;
* Registration may be filed with U.S. Customs Service to prevent importation of
infringing foreign goods.
5. Is a U.S. Federal Registration Valid Outside the U.S.?
A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.
The Trademark Company
1. What is a Trademark?
A trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.
2. Can I Reserve a Trademark Before I Use It?
Yes. A trademark can be "reserved" with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.
3. Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?
Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.
4. Do I Have To Register a Trademark to Use a Trademark?
No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:
* Constructive notice nationwide of your claim of ownership of a trademark;
* Evidence of ownership of the trademark;
* Jurisdiction of federal courts to Enforce a Trademark may be invoked;
* Registration can be used as a basis for obtaining Registration in Foreign
Countries;
* Registration may be filed with U.S. Customs Service to prevent importation of
infringing foreign goods.
5. Is a U.S. Federal Registration Valid Outside the U.S.?
A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.
The Trademark Company
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