Unlike other forms of intellectual property (e.g., patents and copyrights) trademarks can, in theory, be maintained forever. To do so, however, the U.S. Patent and Trademark Office (“USPTO”) maintains strict and unwavering requirements concerning the maintenance of U.S. Trademark Registrations. As such, once a Trademark Registration is received, you must calendar these important deadlines or use a service to do so to make sure that your Trademark Registration is not permitted to lapse.
Of note, many trademark owners do not realize that once a trademark is registered it can still be canceled through a Cancellation Proceeding initiated by any party who feels that it may be injured by the continued registration of the trademark. Typical grounds for cancellation proceedings include, but are not limited to: (1) a likelihood of confusion with another trademark wherein the other trademark claims priority of use; (2) that the registered trademark is merely descriptive and, as such, is incapable of functioning as a trademark; (3) fraud perpetrated in the filing or maintenance of the registration; and (3) abandonment or non-use of the mark without an intent to resume use thereof.
If a trademark owner receives notice of a cancellation proceeding typically through a document known as a Petition to Cancel they should seek the advice of counsel immediately as there are strict deadlines to respond thereto. If a cancellation proceeding is not defended in a timely manner the Trademark Registration will be canceled.
Putting the threat of cancellation aside, here are the standard renewal deadlines of which all trademark owners should be aware:
5th - 6th Year Affidavit of Continuous Use and Declaration of Incontestability
Between the 5th and 6th year anniversary of the registration a trademark owner is required to file a Section 8 Affidavit of Continuous Use to Renew the Registration. This is an affidavit verifying that the trademark is still in use and requiring the trademark owner to supply evidence of that use to the USPTO. If the Section 8 Affidavit is not filed between the 5th and 6th year anniversary of the registration there is a 6-month “grace period” after the 6th year anniversary during which the affidavit can still be filed although additional fees will apply. If no Section 8 Affidavit of Continuous Use is filed during this 18 month time frame the Trademark Registration is canceled.
During this same time, namely between the 5th and 6th year anniversary of the registration, a trademark owner may file a Section 15 Declaration of Incontestability. In short, this document certifies that a registration has been registered in excess of 5 years and, as such, can now only be canceled for (1) fraud perpetrated in the filing or maintenance of the registration; or (2) abandonment or non-use of the mark without an intent to resume use thereof. There is no mandatory requirement that a Section 15 Declaration of Incontestability be filed although it is recommended.
9th - 10th Year Application for Renewal and Affidavit of Continuous Use
On or about every 10-year anniversary of the registration of a mark a trademark owner is required to file a Section 8 Affidavit of Continuous Use and a Section 9 Application for Renewal of the Trademark. The filings are required to be completed within one year of each 10-year anniversary (e.g., between the 9th and 10th year anniversary of the registration of the mark, between the 19th and 20th year anniversary of the registration of the mark, etc.) or within a 6-month grace period following each 10-year anniversary. As always if the filing is made during the “grace period” additional fees will apply.
Provided that trademark owners comply with these deadlines and their Trademark Registration(s) is/are not otherwise canceled via a cancellation proceeding they will be able to maintain their trademarks for a long long time.
TheTrademarkCompany.com
Wednesday, March 31, 2010
Tuesday, March 30, 2010
Tips from the Trademark Insider: How to Protect Your US Trademark Internationally
First, it is critical to understand that there is no one trademark system which you can use to protect your mark in every country around the world. Although certain treaties have been enacted in recent years which ease the ability of trademark owners to extend protection of their marks into other countries, the world trademark systems have simply yet to evolve to the point where there is a one-stop-shop for global trademark protection.
In regard to the current cooperative treaties, the most significant for U.S. Trademark owners is the Madrid Protocol, which allows the extension of protection of U.S. applications and registrations into roughly 75 other countries and economic unions including the Australia, China, Cuba, Korea, the European Union and its member nations , Japan, the Russian Federation, Singapore, as well as a host of other nations.
Second, do you have a pending U.S. Trademark Application or an existing Trademark Registration? If the answer is yes you can use the same to Apply for an International Registration through the U.S. Patent and Trademark Office into any or all of the countries who have signed the Madrid Protocol treaty.
Of note, given the non-refundable nature of the filing fees it is often advisable to have a Trademark Attorney assist you in the process. Additionally, if you mark is refused registration in the foreign country for any reason local counsel may need to be retained in that country to respond to the refusal.
Third, if you do not have a pending U.S. Trademark Application or an existing Trademark Registration you can still register your mark in the Madrid Protocol countries and beyond, you will merely need to have original applications filed for in each of the countries you seek protection. Of note, due to the complexities involved many applicants choose to retain one coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.
Fourth, whether or not you retain a pending U.S. Trademark Application or an existing Trademark Registration the same is moot should you attempt to seek international protection in non-Madrid Protocol countries. For instance, most countries in Africa, South America, the Middle East are not members of the Madrid Protocol. As such you will need to file directly in these countries via local counsel. In this instance it is highly recommended that you consult a coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.
TheTrademarkCompany.com
In regard to the current cooperative treaties, the most significant for U.S. Trademark owners is the Madrid Protocol, which allows the extension of protection of U.S. applications and registrations into roughly 75 other countries and economic unions including the Australia, China, Cuba, Korea, the European Union and its member nations , Japan, the Russian Federation, Singapore, as well as a host of other nations.
Second, do you have a pending U.S. Trademark Application or an existing Trademark Registration? If the answer is yes you can use the same to Apply for an International Registration through the U.S. Patent and Trademark Office into any or all of the countries who have signed the Madrid Protocol treaty.
Of note, given the non-refundable nature of the filing fees it is often advisable to have a Trademark Attorney assist you in the process. Additionally, if you mark is refused registration in the foreign country for any reason local counsel may need to be retained in that country to respond to the refusal.
Third, if you do not have a pending U.S. Trademark Application or an existing Trademark Registration you can still register your mark in the Madrid Protocol countries and beyond, you will merely need to have original applications filed for in each of the countries you seek protection. Of note, due to the complexities involved many applicants choose to retain one coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.
Fourth, whether or not you retain a pending U.S. Trademark Application or an existing Trademark Registration the same is moot should you attempt to seek international protection in non-Madrid Protocol countries. For instance, most countries in Africa, South America, the Middle East are not members of the Madrid Protocol. As such you will need to file directly in these countries via local counsel. In this instance it is highly recommended that you consult a coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.
TheTrademarkCompany.com
Monday, March 29, 2010
Tips from the Trademark Insider: New .CO Domain Name Extensions to Be Released - What Trademark Owners Need to Know
With the .COM inventory nearly exhausted, .CO domains will be a perfectly positioned alternative domain extension. Recognized universally as the abbreviation for "company", .CO is the ideal domain to extend a company’s brand's reach and expand its web presence.
However, there is a downside to the upcoming release of the .CO domains, a potential for typo-squaters – those who register domain names that are one letter off of famous or registered trademarks – to divert Internet traffic away from the trademark holders.
Here’s what you need to know about the release and registration process should you wish to extend your domain name holdings and preclude a typo-squater from diverting traffic away from your Internet presence.
April 1st - Local Sunrise Period for Colombian Trademarks Opens
The Local Sunrise gives holders of Colombian trademarks first priority before the Global Sunrise Period opens to all other trademark holders. Only those that hold a Colombian trademark may apply for registrations during the Local Sunrise Period. All applications will be validated, and in the event there are multiple valid applications for the same string, an auction will be conducted to determine which applicant is awarded the domain.
To apply under the Local Sunrise Period Colombian Trademarks must be registered on or before July 30, 2008.
April 26th – Global Sunrise Period Opens
The Global Sunrise Period allows all trademark holders to submit applications for the .CO domain names corresponding with their trademarks before the registration of .CO domain names are open to the public. In the event there are multiple valid applications for the same string, an auction will be conducted to determine which applicant is awarded the domain.
To apply under the Global Sunrise Period Trademarks must be registered in any country on or before July 30, 2008.
June 21st - Back Ordering Period Opens
The Back Ordering Period allows anyone to back order the .CO domain they want before the .CO Registry opens to the general public. All matching applications will be resolved at auction.
July 20th – General Availability
General Availability will open to everyone on a first-come, first-serve basis.
TheTrademarkCompany.com
However, there is a downside to the upcoming release of the .CO domains, a potential for typo-squaters – those who register domain names that are one letter off of famous or registered trademarks – to divert Internet traffic away from the trademark holders.
Here’s what you need to know about the release and registration process should you wish to extend your domain name holdings and preclude a typo-squater from diverting traffic away from your Internet presence.
April 1st - Local Sunrise Period for Colombian Trademarks Opens
The Local Sunrise gives holders of Colombian trademarks first priority before the Global Sunrise Period opens to all other trademark holders. Only those that hold a Colombian trademark may apply for registrations during the Local Sunrise Period. All applications will be validated, and in the event there are multiple valid applications for the same string, an auction will be conducted to determine which applicant is awarded the domain.
To apply under the Local Sunrise Period Colombian Trademarks must be registered on or before July 30, 2008.
April 26th – Global Sunrise Period Opens
The Global Sunrise Period allows all trademark holders to submit applications for the .CO domain names corresponding with their trademarks before the registration of .CO domain names are open to the public. In the event there are multiple valid applications for the same string, an auction will be conducted to determine which applicant is awarded the domain.
To apply under the Global Sunrise Period Trademarks must be registered in any country on or before July 30, 2008.
June 21st - Back Ordering Period Opens
The Back Ordering Period allows anyone to back order the .CO domain they want before the .CO Registry opens to the general public. All matching applications will be resolved at auction.
July 20th – General Availability
General Availability will open to everyone on a first-come, first-serve basis.
TheTrademarkCompany.com
Saturday, March 27, 2010
The Trademark Company Named A Top U.S. Trademark Filer by the Trademark Insider
VIENNA, VA --(March 24, 2010) - Attorney Matthew Swyers of The Trademark Company has been recognized as one of the "Top 50 Trademark Attorneys in the United States" by Trademark Insider. Mr. Swyers is a principal of The Trademark Company and lead strategist in the customer-focused trademark services firm.
The Trademark Insider ranked Matthew Swyers in the Top 20 on its list of Top 50 Trademark Attorneys for the third quarter of 2009. The Trademark Insider Top 50 Attorneys are ranked by the number of U.S. Patent and Trademark Office trademark applications submitted during the third quarter of 2009.
“We are pleased that our dedication on behalf of our clients has been recognized by the Trademark Insider,” said Mr. Swyers. “We founded The Trademark Company with one guiding principal in mind – how can we best serve our clients in the protection of their trademarks and brand identities. It is an honor to be recognized for this client-focused approach.”
A former trial lawyer and examining attorney with the U.S. Patent and Trademark Office, Mr. Swyers helped found The Trademark Company to address a significant need then lacking for entrepreneurs and small businesses – affordable Trademark Registration and related legal services for all.
“From preliminary Trademark Research to clear use of our clients’ marks, through the Registration Process, as well as the defense and enforcement of their trademark rights, we are here to help our clients through every stage of the trademark protection process,” said Mr. Swyers. “With services beginning at just $95 it is no wonder our clients are so enthusiastic about the level of representation they receive.”
The Trademark Insider is a quarterly publication of the Corporation Service Company, which tracks the leading trademark attorneys in the United States.
For more information on Mr. Swyers and The Trademark Company, please visit TheTrademarkCompany.com.
The Trademark Insider ranked Matthew Swyers in the Top 20 on its list of Top 50 Trademark Attorneys for the third quarter of 2009. The Trademark Insider Top 50 Attorneys are ranked by the number of U.S. Patent and Trademark Office trademark applications submitted during the third quarter of 2009.
“We are pleased that our dedication on behalf of our clients has been recognized by the Trademark Insider,” said Mr. Swyers. “We founded The Trademark Company with one guiding principal in mind – how can we best serve our clients in the protection of their trademarks and brand identities. It is an honor to be recognized for this client-focused approach.”
A former trial lawyer and examining attorney with the U.S. Patent and Trademark Office, Mr. Swyers helped found The Trademark Company to address a significant need then lacking for entrepreneurs and small businesses – affordable Trademark Registration and related legal services for all.
“From preliminary Trademark Research to clear use of our clients’ marks, through the Registration Process, as well as the defense and enforcement of their trademark rights, we are here to help our clients through every stage of the trademark protection process,” said Mr. Swyers. “With services beginning at just $95 it is no wonder our clients are so enthusiastic about the level of representation they receive.”
The Trademark Insider is a quarterly publication of the Corporation Service Company, which tracks the leading trademark attorneys in the United States.
For more information on Mr. Swyers and The Trademark Company, please visit TheTrademarkCompany.com.
Friday, March 26, 2010
Tips from the Trademark Insider: Know the Difference Between the 4 Types of Trademarks
Everyone uses the term Trademark to identify their brand. But did you know that there are actually four different types of trademarks? Here's an overview of each:
Trademarks.
An actual 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 a brand name used in connection with goods (e.g., Nike for shoes, Ford for automobiles, Microsoft for software).
Although generally used to refer to all four classes of marks, the true nature of the trademark is as a brand identifier for actual goods alone.
Service Marks.
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
So trademarks are for goods. Service marks are for services. In reality, some of the most famous "trademarks" are actually service marks. Marks such as McDonalds for restaurant services, American for airline services, and Google for search engine services are all service marks, not trademarks.
Certification Marks.
A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
Some example of certification marks would be the Energy Star logo for energy efficient items, the Organic mark certifying certain foods to be organically grown, and the certified NSF designation.
Collective Membership Marks.
A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
Marks such as Realtor for real estate services, FTD for floral services, and AARP for advocacy services.
The Trademark Company
Trademarks.
An actual 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 a brand name used in connection with goods (e.g., Nike for shoes, Ford for automobiles, Microsoft for software).
Although generally used to refer to all four classes of marks, the true nature of the trademark is as a brand identifier for actual goods alone.
Service Marks.
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
So trademarks are for goods. Service marks are for services. In reality, some of the most famous "trademarks" are actually service marks. Marks such as McDonalds for restaurant services, American for airline services, and Google for search engine services are all service marks, not trademarks.
Certification Marks.
A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
Some example of certification marks would be the Energy Star logo for energy efficient items, the Organic mark certifying certain foods to be organically grown, and the certified NSF designation.
Collective Membership Marks.
A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
Marks such as Realtor for real estate services, FTD for floral services, and AARP for advocacy services.
The Trademark Company
Tuesday, March 23, 2010
Tips from the Trademark Insider: How Do I Know If I Need a Patent, Trademark, or Copyright?
Step 1: Understand What Patents, Trademarks, and Copyrights Are.
A patent is a a property right granted by the government to an inventor to exclude others from making, using, offering for sale, or selling the invention throughout the country or importing the invention into the country for a limited time in exchange for public disclosure of the invention when the patent is granted.
A trademark protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. In short, trademarks are your brand. Trademarks, unlike patents and copyrights, can be renewed forever as long as they are being used in commerce.
A copyright protects original works of authorship, such as writings, music, software code, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last for the life of the author plus 70 years.
Step 2: Determine What You Need to Protect.
What is it that you are trying to protect? The name of your business? Then you need a Trademark Registration. A new invention that allows cars to run on water and the exhaust is oxygen? You need a patent. A new song you have written and you want to make sure it is protected before pitching it to the music industry. You need a Copyright Registration.
In short, if you are trying to protect your name, business slogan, logo, or other ways consumers identify you or your business you need a trademark and a Trademark Registration. The brands Coca Cola®, Microsoft®, McDonalds® are all examples of registered trademarks.
If you have a new invention that will change the world or even an improvement upon existing technology you need a patent. Historical patents of note: (1) the cotton gin; (2) the electric motor; (3) the ice machine; (4) an improvement upon the existing telegraph machine; (5) the phonograph (aka record player); (6) the light bulb; (7) the calculator; (8) the airplane; and (9) sliced bread!
If you have written a song, code for software, a book, have made a cartoon character, or really anything else that can be deemed "an original work of artistic expression" you need a copyright registration. Examples of matters protected by U.S. Copyright Laws: (1) Microsoft's code for Windows 7; (2) The Da Vinci Code by Dan Brown (Book); (3) The Da Vinci Code (Movie) starring Tom Hanks; (4) all NFL broadcasts.
Step 3: Understand Sometimes You Need to Protect More than One Form of Intellectual Property.
Some things, however, cross-over between the various forms of protection. As such, in some instances you may need more than one form of protection. Some examples are:
Bands
Bands should seek a Trademark Registration for their band's name but also register copyrights for their songs and lyrics.
Books
In authoring a series of books the author should register both the common name of the series as a trademark (e.g., Star Wars, Star Trek) as well as seek copyright protection for the manuscripts of the books themselves.
Clothing
Clothing has some very specific guidelines that manufacturers must be aware of. Generally speaking copyrights and trademarks will be most applicable to clothing, however it is possible that patents could play a role as well.
If you are seeking to register the brand name of the clothing (e.g., Polo, Izod, etc.) these would be protected by a Trademark Registration. The best rule of thumb to think about here is where is the trademark going to appear? If it is the mark that will appear on the tag of the clothing a Trademark Registration is what you need.
However, there is an interesting interplay between copyrights and trademarks in regard to clothing. Recall, trademarks are only designed to let people know who made the shirt (e.g., the little horse for Polo, the crocodile for Izod). But the larger the design or matter sought to be protected, the more likely it would receive what is known as an ornamental refusal from the trademark office and should, instead, be protected by a copyright as an original design. It also depends on where the design appears.
If the design only appears on the label of the clothing, it is a trademark. If it appears on say the front of a shirt, it is a trademark if people will see it and think "Hey, that's a Polo." It is a design and should be copyrighted if people see the design and see it only as a design and have no idea who made the shirt (i.e., a big yellow smiley face on the front of your shirt is the classic example).
Lastly, patents can come into play here. If you event a new and improved zipper or something to that effect patent protection is definitely possible.
Software
Software is tricky. Software often involves all three elements, patents, trademarks, as well as copyrights. For a new software program, a developer or company would seek a Trademark Registration for the brand name of the software (e.g., Windows 7), seek a copyright registration for the code, and possible seek patent protection for the code if the code is an improvement upon the prior art or is otherwise protectable by patent.
Websites
Generally speaking the overall look and feel of a web site as well as the content (i.e., writing and information thereon) can be protected as a copyright. Trademarks used on the web site can be protected by a Trademark Registration. Patents may also play a role if the web site features some new and innovative back ground element.
The Trademark Company
A patent is a a property right granted by the government to an inventor to exclude others from making, using, offering for sale, or selling the invention throughout the country or importing the invention into the country for a limited time in exchange for public disclosure of the invention when the patent is granted.
A trademark protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. In short, trademarks are your brand. Trademarks, unlike patents and copyrights, can be renewed forever as long as they are being used in commerce.
A copyright protects original works of authorship, such as writings, music, software code, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last for the life of the author plus 70 years.
Step 2: Determine What You Need to Protect.
What is it that you are trying to protect? The name of your business? Then you need a Trademark Registration. A new invention that allows cars to run on water and the exhaust is oxygen? You need a patent. A new song you have written and you want to make sure it is protected before pitching it to the music industry. You need a Copyright Registration.
In short, if you are trying to protect your name, business slogan, logo, or other ways consumers identify you or your business you need a trademark and a Trademark Registration. The brands Coca Cola®, Microsoft®, McDonalds® are all examples of registered trademarks.
If you have a new invention that will change the world or even an improvement upon existing technology you need a patent. Historical patents of note: (1) the cotton gin; (2) the electric motor; (3) the ice machine; (4) an improvement upon the existing telegraph machine; (5) the phonograph (aka record player); (6) the light bulb; (7) the calculator; (8) the airplane; and (9) sliced bread!
If you have written a song, code for software, a book, have made a cartoon character, or really anything else that can be deemed "an original work of artistic expression" you need a copyright registration. Examples of matters protected by U.S. Copyright Laws: (1) Microsoft's code for Windows 7; (2) The Da Vinci Code by Dan Brown (Book); (3) The Da Vinci Code (Movie) starring Tom Hanks; (4) all NFL broadcasts.
Step 3: Understand Sometimes You Need to Protect More than One Form of Intellectual Property.
Some things, however, cross-over between the various forms of protection. As such, in some instances you may need more than one form of protection. Some examples are:
Bands
Bands should seek a Trademark Registration for their band's name but also register copyrights for their songs and lyrics.
Books
In authoring a series of books the author should register both the common name of the series as a trademark (e.g., Star Wars, Star Trek) as well as seek copyright protection for the manuscripts of the books themselves.
Clothing
Clothing has some very specific guidelines that manufacturers must be aware of. Generally speaking copyrights and trademarks will be most applicable to clothing, however it is possible that patents could play a role as well.
If you are seeking to register the brand name of the clothing (e.g., Polo, Izod, etc.) these would be protected by a Trademark Registration. The best rule of thumb to think about here is where is the trademark going to appear? If it is the mark that will appear on the tag of the clothing a Trademark Registration is what you need.
However, there is an interesting interplay between copyrights and trademarks in regard to clothing. Recall, trademarks are only designed to let people know who made the shirt (e.g., the little horse for Polo, the crocodile for Izod). But the larger the design or matter sought to be protected, the more likely it would receive what is known as an ornamental refusal from the trademark office and should, instead, be protected by a copyright as an original design. It also depends on where the design appears.
If the design only appears on the label of the clothing, it is a trademark. If it appears on say the front of a shirt, it is a trademark if people will see it and think "Hey, that's a Polo." It is a design and should be copyrighted if people see the design and see it only as a design and have no idea who made the shirt (i.e., a big yellow smiley face on the front of your shirt is the classic example).
Lastly, patents can come into play here. If you event a new and improved zipper or something to that effect patent protection is definitely possible.
Software
Software is tricky. Software often involves all three elements, patents, trademarks, as well as copyrights. For a new software program, a developer or company would seek a Trademark Registration for the brand name of the software (e.g., Windows 7), seek a copyright registration for the code, and possible seek patent protection for the code if the code is an improvement upon the prior art or is otherwise protectable by patent.
Websites
Generally speaking the overall look and feel of a web site as well as the content (i.e., writing and information thereon) can be protected as a copyright. Trademarks used on the web site can be protected by a Trademark Registration. Patents may also play a role if the web site features some new and innovative back ground element.
The Trademark Company
Monday, March 22, 2010
Tips from the Trademark Insider: Who Owns Your Trademarks?
Last week we had a new case come in the door which was somewhat rare for us. Most of the cases we see involve two different companies with two marks that may, or may not, be similar to one another. Somebody sues somebody for infringement. Somebody wins. Somebody looses. The end.
But the new case we have involves a question which goes to the very core of trademark rights: Who owns a trademark when it is developed in the course of a business or partnership.
Why is this important? Let’s say you and your partner start a business. As you do not want to be bogged down with legal stuff there is no writing that defines the “partnership.” At the onset you and your partner, old roommates from college, cannot image a day when you will no longer be working together in blissful harmony.
While strategizing over the future brand name and in an amazing act of coincidence you both simultaneously blurt out that “Our product should be called” and state the exact same trademark. Great! There won’t be any problems naming the product. But as sales grow, interests diverge, and you find yourself wanting to take the company in a completely different direction than your old roommate. You amicably part ways with your “partner” and begin preparation for continuing the business under the mark and brand you have both built. The only problem – so does he.
Suddenly it hits you – who owns the mark? We are writing today because this issue has now crossed our proverbial desks 3 times in one week. As such, we wanted to get some information out to the public on how to deal with these issues. So here are a few tips on who owns the mark and how to protect your interests therein.
Rule No. 1: If it is Not in Writing it Does Not Exist
First and foremost, every business should have everything in writing. Corporation, partnership or otherwise make sure there is a writing and one which, in particular, discusses the ownership of the assets of the corporation or partnership and how they are to be treated in the case of the dissolution of the corporation or partnership or otherwise. Memories and oral agreements fade over time. A writing persists. So get it in writing. Otherwise at the end of any relationship you may be left arguing he said / she said over critical business assets.
Some common events that should be addresses are who owns the assets, the intellectual property assets, what happens should the company, principals or partners file for bankruptcy (corporate and individual), what occurs when one but not all principals leave the business, as what happens should one of the principals or shareholders move on to the great beyond.
Rule No. 2: Contributions and Assets
If you contribute it make sure you know what happens to it. Specifically, let’s say your partnership is to be formed with two other individuals. One brings cash. One brings market savvy. One brings an existing trademark. What happens to the ownership of the trademark if the business dissolves. Spell it out at the beginning. Do not wait for litigation over who owns what. If you bring the trademark or come up with it and it is your contribution, consider adding a provision that the trademark is an asset that leaves when you do or that you have a right of first refusal on the same, etc. The important thing is not what exactly you negotiate with your prospective business owners. Rather the important thing is a recognition that you need to address this going into the deal.
Rule No. 3: Work for Hire
Also, who owns the trademarks, etc. that are created by your employees for your business while they are on the job?
As a general rule these works for hire are owned by the employer. However, make sure that their employment agreement specifically states that all intellectual property created for the business or partnership in the course of their employment is the property of the business or partnership. Thus, when they leave and try to take a brand with them they are contractually not permitted to do so.
So hopefully these scenarios are never a concern in your business. However, an ounce of legal prevention can go a long way in making sure that your brand stays just that: YOURS!
As always, if you have any questions or if we may be of service just let us know.
The Trademark Company
But the new case we have involves a question which goes to the very core of trademark rights: Who owns a trademark when it is developed in the course of a business or partnership.
Why is this important? Let’s say you and your partner start a business. As you do not want to be bogged down with legal stuff there is no writing that defines the “partnership.” At the onset you and your partner, old roommates from college, cannot image a day when you will no longer be working together in blissful harmony.
While strategizing over the future brand name and in an amazing act of coincidence you both simultaneously blurt out that “Our product should be called” and state the exact same trademark. Great! There won’t be any problems naming the product. But as sales grow, interests diverge, and you find yourself wanting to take the company in a completely different direction than your old roommate. You amicably part ways with your “partner” and begin preparation for continuing the business under the mark and brand you have both built. The only problem – so does he.
Suddenly it hits you – who owns the mark? We are writing today because this issue has now crossed our proverbial desks 3 times in one week. As such, we wanted to get some information out to the public on how to deal with these issues. So here are a few tips on who owns the mark and how to protect your interests therein.
Rule No. 1: If it is Not in Writing it Does Not Exist
First and foremost, every business should have everything in writing. Corporation, partnership or otherwise make sure there is a writing and one which, in particular, discusses the ownership of the assets of the corporation or partnership and how they are to be treated in the case of the dissolution of the corporation or partnership or otherwise. Memories and oral agreements fade over time. A writing persists. So get it in writing. Otherwise at the end of any relationship you may be left arguing he said / she said over critical business assets.
Some common events that should be addresses are who owns the assets, the intellectual property assets, what happens should the company, principals or partners file for bankruptcy (corporate and individual), what occurs when one but not all principals leave the business, as what happens should one of the principals or shareholders move on to the great beyond.
Rule No. 2: Contributions and Assets
If you contribute it make sure you know what happens to it. Specifically, let’s say your partnership is to be formed with two other individuals. One brings cash. One brings market savvy. One brings an existing trademark. What happens to the ownership of the trademark if the business dissolves. Spell it out at the beginning. Do not wait for litigation over who owns what. If you bring the trademark or come up with it and it is your contribution, consider adding a provision that the trademark is an asset that leaves when you do or that you have a right of first refusal on the same, etc. The important thing is not what exactly you negotiate with your prospective business owners. Rather the important thing is a recognition that you need to address this going into the deal.
Rule No. 3: Work for Hire
Also, who owns the trademarks, etc. that are created by your employees for your business while they are on the job?
As a general rule these works for hire are owned by the employer. However, make sure that their employment agreement specifically states that all intellectual property created for the business or partnership in the course of their employment is the property of the business or partnership. Thus, when they leave and try to take a brand with them they are contractually not permitted to do so.
So hopefully these scenarios are never a concern in your business. However, an ounce of legal prevention can go a long way in making sure that your brand stays just that: YOURS!
As always, if you have any questions or if we may be of service just let us know.
The Trademark Company
Thursday, March 18, 2010
Tips from the Trademark Insider: India to Join World Trademark Treaty
India has just announced that it will join the World Intellectual Property Organization’s (WIPO’s) Madrid System for the International Registration of Marks later this year. This will enable The Trademark Company’s clients, and U.S. trademark owners in general, to extend the reach of their trademarks to more than a billion consumers through a relatively simple filing with the U.S. Patent and Trademark Office.
“There is a big process to join the Madrid System and India would come [on board] in 2010,” WIPO Director General Francis Gurry told reporters today. He said more countries from South America, particularly Colombia, Mexico and Brazil are expected to join the trade mark protection system soon as well.
Though India has been holding consultations with WIPO for several years about joining the Madrid System, the government was unable to take a final call till now, analysts said.
“Obviously we are thrilled with this development” added the General Partner of The Trademark Company. “This will result in tremendous cost savings to our clients while opening up their brands to another 17% of the world’s population.”
The Trademark Company
“There is a big process to join the Madrid System and India would come [on board] in 2010,” WIPO Director General Francis Gurry told reporters today. He said more countries from South America, particularly Colombia, Mexico and Brazil are expected to join the trade mark protection system soon as well.
Though India has been holding consultations with WIPO for several years about joining the Madrid System, the government was unable to take a final call till now, analysts said.
“Obviously we are thrilled with this development” added the General Partner of The Trademark Company. “This will result in tremendous cost savings to our clients while opening up their brands to another 17% of the world’s population.”
The Trademark Company
Wednesday, March 17, 2010
In Honor of St. Patrick’s Day – The Top 5 Irish Brands
Feeling Irish today? Did you remember to wear green? Well, just for fun we thought we would send out a list of the Top 5 Irish Trademarks as recognized globally.
No. 1 Baileys Irish Cream
Baileys Irish Cream is an Irish whiskey and cream based liqueur, made by Gilbeys of Ireland. The trademark is currently owned by Diageo. It has a declared alcohol content of 17% alcohol by volume.
Baileys Irish Cream was created by Gilbeys of Ireland as it searched for something to introduce to the international market. The process of finding a product began in 1971 and it was introduced in 1974 as the first Irish Cream on the market. Despite attributions to Andrew Bailey of the R.A. Bailey Company, no such person existed. The choice of the name Bailey was based on branding. It can be compared to other cream liqueurs such as Amarula, Carolans and Sangster's.
No. 2 Guinness
Guinness is a popular dry stout that originated in the brewery of Arthur Guinness (1725–1803) at St. James's Gate, Dublin. Guinness is based on the porter style that originated in London in the early 18th century and is one of the most successful beer brands worldwide. A distinctive feature is the burnt flavor which is derived from the use of roasted barley. For many years a portion of the drink was aged to give a sharp lactic flavor, although Guinness has refused to confirm whether this still occurs. The thick creamy head is the result of the beer being mixed with nitrogen when being poured. It is popular with Irish people both in Ireland and abroad and, in spite of a decline in consumption over recent years, is the best-selling alcoholic drink of all time in Ireland.
Arthur Guinness started brewing ales from 1759 in Leixlip, then at the St. James's Gate Brewery, Dublin. On December 31st he signed “up to” a 9,000 year lease at £45 per annum for the unused brewery. Ten years later on May 19, 1769 Guinness exported his ale for the first time, when six and a half barrels were shipped to England.
Guinness is sometimes believed to have originated the stout style of beer. However the first use of the word stout in relation to beer was in a letter in the Egerton Manuscript dated 1677, almost 50 years before Arthur Guinness was born. Arthur Guinness started selling the dark beer porter in 1778. The first Guinness beers to use the term were Single Stout and Double Stout in the 1840s.
No. 3 Jameson Irish Whiskey
Jameson is a single-distillery Irish whiskey. The brand is today owned by the French beverage conglomerate Pernod Ricard. Jameson is similar in its adherence to the single distillery principle to the single malt tradition, but Jameson combines malted barley with unmalted or "green" barley. The most famous component within Jameson is the legendary "Pure Pot Still" component unique to Irish whiskey distilling tradition.
When John Jameson, a Scottish-born businessman, acquired the Bow Street Distillery in 1780, it was producing about 30,000 gallons annually. By the turn of the century, it was the second largest producer in Ireland and one of the largest in the world, producing 1,000,000 gallons annually. Dublin at the time was the epicentre of world whiskey production. It was the second most popular spirit in the world after rum, and internationally Jameson had, by 1805, become the world's number one whiskey. Today, Jameson is the third largest Single Distillery Whiskey in the world.
Historical events, for a time, set the company back. The temperance movement in Ireland had an enormous impact domestically but the two key events that affected Jameson internationally were the Irish war of Independence and subsequent trade war with the British which denied Jameson the export markets of the Commonwealth, and shortly thereafter, the introduction of prohibition in the United States. While Scottish brands could easily slip across the Canadian border, Jameson was excluded from its biggest market for many years. It was also a fact that the introduction of basic grain whiskey production using column stills by the Scottish blenders in the mid 1800s enabled them to produce vast amounts of almost neutral flavored components for blending with some malt whiskey. This enabled them to create low cost blends that the Irish, still using the original Pure Pot Still technique could not compete with.
This differing opinion of what a true whiskey consisted of culminated in a legal inquiry in 1908. It was a huge turning point in the history of whiskey. The Scottish blenders won the case and the blend became recognized in law as being whiskey. The Irish in general and Jameson in particular stubbornly continued with the traditional Pure Pot Still production process for many years and, to this day, a large proportion of Jameson is still composed of Pure Pot Still component. Jameson also produces a special limited edition Pure Pot Still Whiskey, Redbreast to celebrate the ancient Irish whiskey making craft.
In 1966 John Jameson joined forces with their rivals the Cork Distillers company and John Powers to form the Irish Distillers Group. The new Midleton distillery built by Irish Distillers now produces most of the Irish whiskey sold in Ireland. The new facility adjoins the old one, which is now a tourist attraction.
Interestingly, the bar that sells the most Jameson whiskey annually is located in Minneapolis, Minnesota (USA). In 2008, the Local Irish Pub in Minneapolis sold 671 cases of Jameson, 22 bottles a day.
No. 4 Harp Lager
Harp Lager (Harp Irish Lager since 1997) is a pale lager brand owned by Diageo. Harp Lager was first produced in 1960 by The Great Northern Brewery, Dundalk, as a bottled beer, in response to the trend among drinkers in Britain and Ireland towards continental lager. By 1961, it was brewed under an alliance of the brewing companies, Courage, Barclay & Simonds, Scottish & Newcastle, Bass, Mitchells & Butlers and Guinness. These companies grouped together under the name of the Harp Lager Ltd. consortium. Coming 1964, it was being sold on draught and quickly led in its category for sales. Members of the Harp consortium changed over the years, with Courage and Scottish & Newcastle leaving in 1979, but becoming franchisees.
Dr. Herman Muendar, a distinguished German "Braumeister" was chosen to manage the new venture, being eminently suited to the task, having gained considerable experience supervising and directing the re-building of war damaged breweries in the Ruhr area of Germany. And so Harp Lager was born, with the Brian Boru Harp as its emblem. For many years the memorable slogan "Harp stays sharp" was used in advertisements for the Lager.
In 2005, Harp saw a makeover. Diageo Ireland separated the brand from Guinness and gave it a new look, with new advertisements appearing on TV. Ironically, there is no longer an actual Harp on the design of the new tins and bottles, as that logo belongs to Guinness. US and Canadian sold bottles still bear the Harp logo (2008).
On the 9th May 2008, Diageo Ireland announced that they are to close the Dundalk Brewery along with the Kilkenny Brewery over a five year period. Thus ending a long tradition of Brewing in Dundalk.
No. 5: Waterford Crystal
The beginnings of glass making in Ireland are lost in the mists of time but there is sufficient archaeological evidence to show that, from the early Iron Age, glass was regarded with respect. Indeed, medieval documents can prove glass making existed in Ireland back in the middle 13th century.
However, the Waterford Crystal story started to blossom in 1783 when two brothers, George and William Penrose, founded their crystal manufacturing business in the busy port of Waterford. They were important developers and the city's principal exporters. The development, they told the Irish Parliament, cost £10,000 - a great deal of money in the 18th century.
They employed 50 to 70 people, led by a fellow Quaker, John Hill, from Stourbridge in England, and succeeded in producing crystal with a purity of color unmatched in Ireland or England. Merchant ships sailed regularly from the port of Waterford with cargoes of crystal bound for Spain, the West Indies, New York, New England and Newfoundland.
But less than 100 years later the initial company failed due to lack of capital and excessive taxation. In what seems a remarkably short time, Waterford Crystal acquired an unequaled reputation that has transcended the intervening centuries.
Another century passed before the enterprise was revived. In 1947, while Europe was still in ruins after the second World War, a small glass factory was set up in Waterford just 11/2 miles from the site of the original glass factory.
Waterford Crystal today has very strong links with its illustrious predecessor. There is today the same dedication to the purity of color, to the same design inspiration and to the same pursuit of highest quality levels possible. The traditional cutting patterns made famous by the artisans of Waterford became the design basis for the growing product range of the new company.
Products which have extended the power of the Waterford brand beyond its core crystal products include Waterford China, Waterford Table & Bed Linens, Waterford Stainless Flatware and Silver Gifts, Waterford Writing Instruments, Waterford Holiday Heirlooms and Waterford Crystal Jewelry.
Waterford Crystal is among the leading brands of premium crystal. Its products - superb handcrafted crystal stemware, giftware and lightingware - are designed and manufactured to the highest standards.
The brand's reputation among its target market - upscale men and women - in its major markets is such that it has taken the brand to the heights that it now occupies. The target consumers simply regard Waterford Crystal as the best for self and gift purchase.
Recent research has confirmed the standing of Waterford Crystal in both the US and the UK.
In November 2000, Waterford Crystal was named as the top world class brand in the United States by a survey conducted among 30,000 people by the Princeton, New Jersey, based independent market research company, Total Research Corporation. Total Research said that Waterford Crystal was judged by American consumers as the brand with the highest quality out of 19 world class brands in the US market. Other brands in the league table below Waterford include Rolls-Royce Bentley, Bose stereo and speaker systems, Philadelphia cream cheese, Harley-Davidson motorcycles, Kodak, Heinz ketchup and National Geographic magazine.
In 2002, Waterford celebrated the 50th anniversary of the introduction of the Lismore pattern of crystal. Almost every year since its inception, Lismore has topped the popularity list and has been the biggest selling pattern of crystal in the US and the world. But there are others among the repertoire of Ireland's most famous export that have gained their own following - Alana, Carina, Araglin.
Waterford Crystal has become almost a synonym for the finest quality crystal sought after by collectors and connoisseurs around the world. Each piece of Waterford can be recognized by the signature on the base with the word "Waterford", the name of the finest crystal in the world.
The Trademark Company
No. 1 Baileys Irish Cream
Baileys Irish Cream is an Irish whiskey and cream based liqueur, made by Gilbeys of Ireland. The trademark is currently owned by Diageo. It has a declared alcohol content of 17% alcohol by volume.
Baileys Irish Cream was created by Gilbeys of Ireland as it searched for something to introduce to the international market. The process of finding a product began in 1971 and it was introduced in 1974 as the first Irish Cream on the market. Despite attributions to Andrew Bailey of the R.A. Bailey Company, no such person existed. The choice of the name Bailey was based on branding. It can be compared to other cream liqueurs such as Amarula, Carolans and Sangster's.
No. 2 Guinness
Guinness is a popular dry stout that originated in the brewery of Arthur Guinness (1725–1803) at St. James's Gate, Dublin. Guinness is based on the porter style that originated in London in the early 18th century and is one of the most successful beer brands worldwide. A distinctive feature is the burnt flavor which is derived from the use of roasted barley. For many years a portion of the drink was aged to give a sharp lactic flavor, although Guinness has refused to confirm whether this still occurs. The thick creamy head is the result of the beer being mixed with nitrogen when being poured. It is popular with Irish people both in Ireland and abroad and, in spite of a decline in consumption over recent years, is the best-selling alcoholic drink of all time in Ireland.
Arthur Guinness started brewing ales from 1759 in Leixlip, then at the St. James's Gate Brewery, Dublin. On December 31st he signed “up to” a 9,000 year lease at £45 per annum for the unused brewery. Ten years later on May 19, 1769 Guinness exported his ale for the first time, when six and a half barrels were shipped to England.
Guinness is sometimes believed to have originated the stout style of beer. However the first use of the word stout in relation to beer was in a letter in the Egerton Manuscript dated 1677, almost 50 years before Arthur Guinness was born. Arthur Guinness started selling the dark beer porter in 1778. The first Guinness beers to use the term were Single Stout and Double Stout in the 1840s.
No. 3 Jameson Irish Whiskey
Jameson is a single-distillery Irish whiskey. The brand is today owned by the French beverage conglomerate Pernod Ricard. Jameson is similar in its adherence to the single distillery principle to the single malt tradition, but Jameson combines malted barley with unmalted or "green" barley. The most famous component within Jameson is the legendary "Pure Pot Still" component unique to Irish whiskey distilling tradition.
When John Jameson, a Scottish-born businessman, acquired the Bow Street Distillery in 1780, it was producing about 30,000 gallons annually. By the turn of the century, it was the second largest producer in Ireland and one of the largest in the world, producing 1,000,000 gallons annually. Dublin at the time was the epicentre of world whiskey production. It was the second most popular spirit in the world after rum, and internationally Jameson had, by 1805, become the world's number one whiskey. Today, Jameson is the third largest Single Distillery Whiskey in the world.
Historical events, for a time, set the company back. The temperance movement in Ireland had an enormous impact domestically but the two key events that affected Jameson internationally were the Irish war of Independence and subsequent trade war with the British which denied Jameson the export markets of the Commonwealth, and shortly thereafter, the introduction of prohibition in the United States. While Scottish brands could easily slip across the Canadian border, Jameson was excluded from its biggest market for many years. It was also a fact that the introduction of basic grain whiskey production using column stills by the Scottish blenders in the mid 1800s enabled them to produce vast amounts of almost neutral flavored components for blending with some malt whiskey. This enabled them to create low cost blends that the Irish, still using the original Pure Pot Still technique could not compete with.
This differing opinion of what a true whiskey consisted of culminated in a legal inquiry in 1908. It was a huge turning point in the history of whiskey. The Scottish blenders won the case and the blend became recognized in law as being whiskey. The Irish in general and Jameson in particular stubbornly continued with the traditional Pure Pot Still production process for many years and, to this day, a large proportion of Jameson is still composed of Pure Pot Still component. Jameson also produces a special limited edition Pure Pot Still Whiskey, Redbreast to celebrate the ancient Irish whiskey making craft.
In 1966 John Jameson joined forces with their rivals the Cork Distillers company and John Powers to form the Irish Distillers Group. The new Midleton distillery built by Irish Distillers now produces most of the Irish whiskey sold in Ireland. The new facility adjoins the old one, which is now a tourist attraction.
Interestingly, the bar that sells the most Jameson whiskey annually is located in Minneapolis, Minnesota (USA). In 2008, the Local Irish Pub in Minneapolis sold 671 cases of Jameson, 22 bottles a day.
No. 4 Harp Lager
Harp Lager (Harp Irish Lager since 1997) is a pale lager brand owned by Diageo. Harp Lager was first produced in 1960 by The Great Northern Brewery, Dundalk, as a bottled beer, in response to the trend among drinkers in Britain and Ireland towards continental lager. By 1961, it was brewed under an alliance of the brewing companies, Courage, Barclay & Simonds, Scottish & Newcastle, Bass, Mitchells & Butlers and Guinness. These companies grouped together under the name of the Harp Lager Ltd. consortium. Coming 1964, it was being sold on draught and quickly led in its category for sales. Members of the Harp consortium changed over the years, with Courage and Scottish & Newcastle leaving in 1979, but becoming franchisees.
Dr. Herman Muendar, a distinguished German "Braumeister" was chosen to manage the new venture, being eminently suited to the task, having gained considerable experience supervising and directing the re-building of war damaged breweries in the Ruhr area of Germany. And so Harp Lager was born, with the Brian Boru Harp as its emblem. For many years the memorable slogan "Harp stays sharp" was used in advertisements for the Lager.
In 2005, Harp saw a makeover. Diageo Ireland separated the brand from Guinness and gave it a new look, with new advertisements appearing on TV. Ironically, there is no longer an actual Harp on the design of the new tins and bottles, as that logo belongs to Guinness. US and Canadian sold bottles still bear the Harp logo (2008).
On the 9th May 2008, Diageo Ireland announced that they are to close the Dundalk Brewery along with the Kilkenny Brewery over a five year period. Thus ending a long tradition of Brewing in Dundalk.
No. 5: Waterford Crystal
The beginnings of glass making in Ireland are lost in the mists of time but there is sufficient archaeological evidence to show that, from the early Iron Age, glass was regarded with respect. Indeed, medieval documents can prove glass making existed in Ireland back in the middle 13th century.
However, the Waterford Crystal story started to blossom in 1783 when two brothers, George and William Penrose, founded their crystal manufacturing business in the busy port of Waterford. They were important developers and the city's principal exporters. The development, they told the Irish Parliament, cost £10,000 - a great deal of money in the 18th century.
They employed 50 to 70 people, led by a fellow Quaker, John Hill, from Stourbridge in England, and succeeded in producing crystal with a purity of color unmatched in Ireland or England. Merchant ships sailed regularly from the port of Waterford with cargoes of crystal bound for Spain, the West Indies, New York, New England and Newfoundland.
But less than 100 years later the initial company failed due to lack of capital and excessive taxation. In what seems a remarkably short time, Waterford Crystal acquired an unequaled reputation that has transcended the intervening centuries.
Another century passed before the enterprise was revived. In 1947, while Europe was still in ruins after the second World War, a small glass factory was set up in Waterford just 11/2 miles from the site of the original glass factory.
Waterford Crystal today has very strong links with its illustrious predecessor. There is today the same dedication to the purity of color, to the same design inspiration and to the same pursuit of highest quality levels possible. The traditional cutting patterns made famous by the artisans of Waterford became the design basis for the growing product range of the new company.
Products which have extended the power of the Waterford brand beyond its core crystal products include Waterford China, Waterford Table & Bed Linens, Waterford Stainless Flatware and Silver Gifts, Waterford Writing Instruments, Waterford Holiday Heirlooms and Waterford Crystal Jewelry.
Waterford Crystal is among the leading brands of premium crystal. Its products - superb handcrafted crystal stemware, giftware and lightingware - are designed and manufactured to the highest standards.
The brand's reputation among its target market - upscale men and women - in its major markets is such that it has taken the brand to the heights that it now occupies. The target consumers simply regard Waterford Crystal as the best for self and gift purchase.
Recent research has confirmed the standing of Waterford Crystal in both the US and the UK.
In November 2000, Waterford Crystal was named as the top world class brand in the United States by a survey conducted among 30,000 people by the Princeton, New Jersey, based independent market research company, Total Research Corporation. Total Research said that Waterford Crystal was judged by American consumers as the brand with the highest quality out of 19 world class brands in the US market. Other brands in the league table below Waterford include Rolls-Royce Bentley, Bose stereo and speaker systems, Philadelphia cream cheese, Harley-Davidson motorcycles, Kodak, Heinz ketchup and National Geographic magazine.
In 2002, Waterford celebrated the 50th anniversary of the introduction of the Lismore pattern of crystal. Almost every year since its inception, Lismore has topped the popularity list and has been the biggest selling pattern of crystal in the US and the world. But there are others among the repertoire of Ireland's most famous export that have gained their own following - Alana, Carina, Araglin.
Waterford Crystal has become almost a synonym for the finest quality crystal sought after by collectors and connoisseurs around the world. Each piece of Waterford can be recognized by the signature on the base with the word "Waterford", the name of the finest crystal in the world.
The Trademark Company
Tuesday, March 16, 2010
5 Things Businesses Should Know About the Enforcement of Their Trademarks
1. You Do Not Need a Trademark Registration to Enforce Your Mark
As you are probably aware, 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.
What you may not be aware of is that you do not have to own a Federal Trademark Registration to enforce your rights in a trademark (i.e., stop someone else from infringing or knocking off your mark with a similar or identical mark).
Trademarks can be federally registered and the federal registrations are well worth the time and effort to acquire. But trademarks also exist at what is known as common law. In short, if you are using a trademark to identify your goods or services, even if you have never registered the same, you have acquired rights in that mark back to the date that you first used the mark selling the goods or services.
2. You Need to Have Used Your Trademark First.
Probably the most important issue in Trademark Enforcement is to figure out who used their respective trademark first. The general rule is that whoever used their mark first has what is known as Priority of Use. The person who used it second has Inferior Use. Accordingly, the party with the Priority of Use can enforce their mark against the party with Inferior Use (e.g., make them stop using the infringing mark). With every rule there are exceptions. But this general rule is a good guiding point if you are thinking about enforcing your mark.
3. The Trademarks Need to Be Similar.
When you look at your mark and the other mark do you feel that they are very similar? The general rule is that if the marks are similar in appearance, spelling, phonetic pronunciation, or simply present a similar overall commercial impression enforcement may be had. So unless the marks are identical, this is generally a subjective sliding scale.
4. The Goods and/or Services Need to be Similar or Related.
Also, to enforce your mark against another the goods and/or services need to generally be similar enough that the average consumer encountering the respective trademarks would think that they originate from the same source. To put it another way, few would argue that if we started seeing frozen hamburger patties in our grocery store with the brand “McDonalds” on them we would think those nice people from Illinois are now making frozen food as well. Although they have never delved into the frozen food market, there is a strong enough association between the two that the assumption would be logical.
In the alternative, let’s say you are in your local car parts store and see head gaskets with the brand name GATORADE on them. Few of us would think that the drink manufacturer has expanded into the machine parts arena. Why? It’s just not a typical expansion you see in the marketplace. So like the subjective rule of reason we talked about with the similarity of the marks, this is also a subjective exercise.
5. Is Enforcement a Good Business Decision?
This is one that attorneys don’t often speak about with their clients but we like to bring up – Does enforcement of the mark make good business sense? Yes you are angry someone is knocking off your mark. Sure it is nearly identical to yours. But does a single mom and pop store opening in California affect your bottom line in the New York / New Jersey area where you distribute your products?
We look at it like this. At the end of the day when you are deciding to enforce your mark you need to make a BUSINESS DECISION as to whether enforcement makes sense. If it is going to cost you a gazillion dollars to stop a mom-n-pop store in California that is not affecting your sales whatsoever is that a good business decision? On the flip side, if you are an Internet retailer and your competitor is stealing from you every day by using a copy of your trademark you need to act immediately.
For every situation there is a different answer. It is a factual analysis the business owner must make.
So the answer depends upon you and your business. There are, of course, other considerations to include such as the dilution of your mark which occurs when you do not enforce the same or setting up a defense of acquiescence (i.e., if you let people use similar marks others can later claim this as a defense that they too should now be permitted to use a similar mark to yours).
But at the end of the day we like to remind those that we advise that this is business, nothing personal. And if it does not make business sense to enforce your mark do not. If it does, do. But always keep an eye on the bottom line.
The Trademark Company
As you are probably aware, 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.
What you may not be aware of is that you do not have to own a Federal Trademark Registration to enforce your rights in a trademark (i.e., stop someone else from infringing or knocking off your mark with a similar or identical mark).
Trademarks can be federally registered and the federal registrations are well worth the time and effort to acquire. But trademarks also exist at what is known as common law. In short, if you are using a trademark to identify your goods or services, even if you have never registered the same, you have acquired rights in that mark back to the date that you first used the mark selling the goods or services.
2. You Need to Have Used Your Trademark First.
Probably the most important issue in Trademark Enforcement is to figure out who used their respective trademark first. The general rule is that whoever used their mark first has what is known as Priority of Use. The person who used it second has Inferior Use. Accordingly, the party with the Priority of Use can enforce their mark against the party with Inferior Use (e.g., make them stop using the infringing mark). With every rule there are exceptions. But this general rule is a good guiding point if you are thinking about enforcing your mark.
3. The Trademarks Need to Be Similar.
When you look at your mark and the other mark do you feel that they are very similar? The general rule is that if the marks are similar in appearance, spelling, phonetic pronunciation, or simply present a similar overall commercial impression enforcement may be had. So unless the marks are identical, this is generally a subjective sliding scale.
4. The Goods and/or Services Need to be Similar or Related.
Also, to enforce your mark against another the goods and/or services need to generally be similar enough that the average consumer encountering the respective trademarks would think that they originate from the same source. To put it another way, few would argue that if we started seeing frozen hamburger patties in our grocery store with the brand “McDonalds” on them we would think those nice people from Illinois are now making frozen food as well. Although they have never delved into the frozen food market, there is a strong enough association between the two that the assumption would be logical.
In the alternative, let’s say you are in your local car parts store and see head gaskets with the brand name GATORADE on them. Few of us would think that the drink manufacturer has expanded into the machine parts arena. Why? It’s just not a typical expansion you see in the marketplace. So like the subjective rule of reason we talked about with the similarity of the marks, this is also a subjective exercise.
5. Is Enforcement a Good Business Decision?
This is one that attorneys don’t often speak about with their clients but we like to bring up – Does enforcement of the mark make good business sense? Yes you are angry someone is knocking off your mark. Sure it is nearly identical to yours. But does a single mom and pop store opening in California affect your bottom line in the New York / New Jersey area where you distribute your products?
We look at it like this. At the end of the day when you are deciding to enforce your mark you need to make a BUSINESS DECISION as to whether enforcement makes sense. If it is going to cost you a gazillion dollars to stop a mom-n-pop store in California that is not affecting your sales whatsoever is that a good business decision? On the flip side, if you are an Internet retailer and your competitor is stealing from you every day by using a copy of your trademark you need to act immediately.
For every situation there is a different answer. It is a factual analysis the business owner must make.
So the answer depends upon you and your business. There are, of course, other considerations to include such as the dilution of your mark which occurs when you do not enforce the same or setting up a defense of acquiescence (i.e., if you let people use similar marks others can later claim this as a defense that they too should now be permitted to use a similar mark to yours).
But at the end of the day we like to remind those that we advise that this is business, nothing personal. And if it does not make business sense to enforce your mark do not. If it does, do. But always keep an eye on the bottom line.
The Trademark Company
Friday, March 12, 2010
Tips from The Trademark Insider: 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
Thursday, March 11, 2010
Tips from the Trademark Insider: 5 Tips to Avoid Fraud in Your Trademark Applications
In the past year the Trademark Trial and Appeal Board has been cracking down on suspected fraud by canceling, in whole or in part, registrations that were acquired with inaccurate or information. Whether intentionally or unintentionally done, here are 5 tips to help you avoid fraud in the preparation of your U.S. Trademark applications:
1. Dates of Use: When preparing an application do some research to make sure the dates of claimed first use of your mark are accurate. Many of us cannot recall the exact date we first rolled out a new mark or marketing campaign. We just recall it was, for instance, in the Summer of 99’. If you cannot recall do you best to re-create when it was by looking through old emails, etc. Hopefully you’ll be able to come up with at least an approximate month and year. If so, you should be good to go. But don’t guess and put down February 1999 when it just as easily could have been November of 1999. If challenged this bit of carefree carelessness could cost you your registration down the road.
2. Intent to Use: If you have yet to use your mark do not file a use-based application. Rather, be honest and file the intent-to-use version. Sure it will cost you a few extra dollars down the road to amend it to a use-based application. But this is far less than the cost of fighting through a cancellation proceeding which claims that you were not using the mark when filed just to save a few bucks. As a general rule if it is not in use – file an intent-to-use application. If it is – file a use-based application. Do not file a use-based where an intent-to-use is required. Down the road you may be sorry that you did.
3. Proper Identification of Services: This one that we see all the time. When identifying your services in an application think about it from a “what do I do for others” perspective. This one area we see a lot of – from a “can you help me fix this perspective.” Sometimes we can. Sometimes we cannot. In short, the recitation of services should be the services you provide FOR OTHERS under the mark. You may market your retail store services, but you are not a marketer nor is your mark used in connection with marketing. Your services are retail store services. That is what you do FOR OTHERS. The marketing is just how you inform people of your retail store services. Likewise, McDonald’s makes our favorite hamburgers. But they do not have a mark for hamburgers. Why? Because their marks are for restaurant services. So a good rule of thumb when writing your services down from a trademark perspective – always think of someone else. What do we do for others? You should be just fine.
4. Scope of Identification of Goods or Services: This is the hottest issue in fraud right now. For years lawyers and applicants have been defining the scope of their goods and services way too broadly. In short, let’s say a company, we’ll call them Zike, makes a line of shoes. Shoes are in International Class 25. Let’s say they know that they make shoes today but someday they’ll expand to socks, shorts, and other clothing. Should they identify all of these goods in Class 25? The answer – No! Even if I make the shoes today and am really really sure I am going to make the socks next year? NO! If you register a mark and do not use it in connection with ALL of the goods or services listed therein the mark is then subject to cancellation, in whole or in part, due to listing goods or services with which you are not using the mark. Thus a better plan is to register the mark now for what you are using it with. If you are concerned about future expansion file an intent to use mark with those goods you believe will be expended into in the coming years.
5. Interstate Use: Finally, if you are not using the mark in interstate commerce – commerce that is either between at least two states, between the U.S. and a foreign country, or otherwise – do not bother with a federal trademark. If you have a web site you are probably ok. But if you are sitting in the middle of Nebraska, no web site, and have a single store that sells fishing lures – more likely than not you did not have use in interstate use – save your money – don’t apply for a registered mark. Why? The registration fees are not refundable and if you don’t have use in interstate commerce it will be canceled.
The Trademark Company
1. Dates of Use: When preparing an application do some research to make sure the dates of claimed first use of your mark are accurate. Many of us cannot recall the exact date we first rolled out a new mark or marketing campaign. We just recall it was, for instance, in the Summer of 99’. If you cannot recall do you best to re-create when it was by looking through old emails, etc. Hopefully you’ll be able to come up with at least an approximate month and year. If so, you should be good to go. But don’t guess and put down February 1999 when it just as easily could have been November of 1999. If challenged this bit of carefree carelessness could cost you your registration down the road.
2. Intent to Use: If you have yet to use your mark do not file a use-based application. Rather, be honest and file the intent-to-use version. Sure it will cost you a few extra dollars down the road to amend it to a use-based application. But this is far less than the cost of fighting through a cancellation proceeding which claims that you were not using the mark when filed just to save a few bucks. As a general rule if it is not in use – file an intent-to-use application. If it is – file a use-based application. Do not file a use-based where an intent-to-use is required. Down the road you may be sorry that you did.
3. Proper Identification of Services: This one that we see all the time. When identifying your services in an application think about it from a “what do I do for others” perspective. This one area we see a lot of – from a “can you help me fix this perspective.” Sometimes we can. Sometimes we cannot. In short, the recitation of services should be the services you provide FOR OTHERS under the mark. You may market your retail store services, but you are not a marketer nor is your mark used in connection with marketing. Your services are retail store services. That is what you do FOR OTHERS. The marketing is just how you inform people of your retail store services. Likewise, McDonald’s makes our favorite hamburgers. But they do not have a mark for hamburgers. Why? Because their marks are for restaurant services. So a good rule of thumb when writing your services down from a trademark perspective – always think of someone else. What do we do for others? You should be just fine.
4. Scope of Identification of Goods or Services: This is the hottest issue in fraud right now. For years lawyers and applicants have been defining the scope of their goods and services way too broadly. In short, let’s say a company, we’ll call them Zike, makes a line of shoes. Shoes are in International Class 25. Let’s say they know that they make shoes today but someday they’ll expand to socks, shorts, and other clothing. Should they identify all of these goods in Class 25? The answer – No! Even if I make the shoes today and am really really sure I am going to make the socks next year? NO! If you register a mark and do not use it in connection with ALL of the goods or services listed therein the mark is then subject to cancellation, in whole or in part, due to listing goods or services with which you are not using the mark. Thus a better plan is to register the mark now for what you are using it with. If you are concerned about future expansion file an intent to use mark with those goods you believe will be expended into in the coming years.
5. Interstate Use: Finally, if you are not using the mark in interstate commerce – commerce that is either between at least two states, between the U.S. and a foreign country, or otherwise – do not bother with a federal trademark. If you have a web site you are probably ok. But if you are sitting in the middle of Nebraska, no web site, and have a single store that sells fishing lures – more likely than not you did not have use in interstate use – save your money – don’t apply for a registered mark. Why? The registration fees are not refundable and if you don’t have use in interstate commerce it will be canceled.
The Trademark Company
Wednesday, March 10, 2010
Tips from the Trademark Insider: Domain Name Monetization and Bad Faith
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
“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
Tuesday, March 9, 2010
Reminder: Win a Kindle.The Trademark Company's Referral Contest Ends March 15th!
Our Referral Contest Ends March 15th! You Can Win a Kindle if you refer the most new applications by then. Trust us, it's still a wide open competition. Just make sure your referrals mention that you referred them!
The Trademark Company
Tips from the Trademark Insider: Can You Parody a Famous Mark?
One topic that is coming up more and more of late is whether you can adopt and use a mark which parodies an established famous mark? We have seen it recently in the case of Jimmy Winkelmann, a Missouri teenager who grew up infatuation with The North Face products and decided to come up with his own competing apparel line to mock the ubiquitous North Face fleece calling his line The South Butt. The North Face is not amused and has filed suit to stop Jimmy’s use of the parody mark.
Haute Diggity Dog, LLC tried to parody several famous marks in making their line of doggy products such as Chewnel No. 5, Jimmy Chew, Dog Perignonn, Sniffany & Co., and Dogior. Again, the more famous mark owners were not amused. They sued poor Haute Diggity Dog.
Others are out there as well, every day, coming up with new humorous twists on existing brands. Why they choose to do so – who knows? Can they do it, probably. Should they? Well, that’s a function of how much you want to spend in legal defense fees.
he 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
Haute Diggity Dog, LLC tried to parody several famous marks in making their line of doggy products such as Chewnel No. 5, Jimmy Chew, Dog Perignonn, Sniffany & Co., and Dogior. Again, the more famous mark owners were not amused. They sued poor Haute Diggity Dog.
Others are out there as well, every day, coming up with new humorous twists on existing brands. Why they choose to do so – who knows? Can they do it, probably. Should they? Well, that’s a function of how much you want to spend in legal defense fees.
he 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
Saturday, March 6, 2010
Tips from the Trademark Insider: Important Legislative Changes to Trademark Law Coming!
WASHINGTON – Legislation authored by Senator Patrick Leahy (D-Vt.) to help assist trademark owners in maintaining the protection of their brands was passed by the House of Representatives today, and will now head to the President’s desk to be signed into law.
The Trademark Law Technical and Conforming Amendments Act will make technical amendments to the nation’s trademark laws, and will harmonize the system for submitting maintenance filings to the U. S. Patent and Trademark Office (USPTO). Maintenance filings are required for continuing the protection of a trademark. The legislation will also authorize the Director of the USPTO to permit applicants to correct good faith and harmless errors and will make several technical amendments within our trademark laws.
Of major significance the bill also includes a requirement for the Department of Commerce to study whether large corporations are misusing the trademark laws to harass small businesses by exaggerating the scope of their trademark protection. Last year, Vermont’s Rock Art Brewery, a small micro-brewery in Morrisville, Vermont, was the subject of such a threat.
We'll keep you updated.
The Trademark Company
The Trademark Law Technical and Conforming Amendments Act will make technical amendments to the nation’s trademark laws, and will harmonize the system for submitting maintenance filings to the U. S. Patent and Trademark Office (USPTO). Maintenance filings are required for continuing the protection of a trademark. The legislation will also authorize the Director of the USPTO to permit applicants to correct good faith and harmless errors and will make several technical amendments within our trademark laws.
Of major significance the bill also includes a requirement for the Department of Commerce to study whether large corporations are misusing the trademark laws to harass small businesses by exaggerating the scope of their trademark protection. Last year, Vermont’s Rock Art Brewery, a small micro-brewery in Morrisville, Vermont, was the subject of such a threat.
We'll keep you updated.
The Trademark Company
Friday, March 5, 2010
Tips from the Trademark Insider: Can You Trademark a Person's Name?
This just came up on one of our discussion boards and we thought we'd post our response here as well.
The short answer is yes, 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, 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.
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
The short answer is yes, 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, 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.
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
Thursday, March 4, 2010
Tips from the Trademark Insider: The Proper Use of Trademark Symbols
You can use the symbols TM for trademark or SM for service mark to indicate that you are claims rights to the marks without having federal registration.
The Federal Registration Symbol ® can only be used after the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol ®may not be used before the mark has actually become registered.
Also, and we have been seeing more of this of late - major corporations are moving towards not only using the ® designations but also using subscript phrases next to their registered marks stating simply "Registered Trademark" or "Trademark Registered".
So use the symbol or word designation that best fits your mark and model knowing you can use the superscript TM for trademark or SM for service mark at any time but must wait until your mark is registered to use the ® designation.
The Trademark Company
The Federal Registration Symbol ® can only be used after the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol ®may not be used before the mark has actually become registered.
Also, and we have been seeing more of this of late - major corporations are moving towards not only using the ® designations but also using subscript phrases next to their registered marks stating simply "Registered Trademark" or "Trademark Registered".
So use the symbol or word designation that best fits your mark and model knowing you can use the superscript TM for trademark or SM for service mark at any time but must wait until your mark is registered to use the ® designation.
The Trademark Company
Wednesday, March 3, 2010
Tips from the Trademark Insider: Beware of Domain Name Fraud by Asian Registrars
We have not posted on this in awhile and thought we would remind everyone of a scam which has been going on for quite some time.
Purportedly reputable domain name registrars from Honk Kong and other Far East countries have been using a new scheme for about the last 12 months to drum up domain name registrations among U.S. Trademark holders.
Here's how it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they, the domain name registrar, has received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.
The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.
The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.
In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.
The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.
We, in conjunction with some of our friends in Washington, D.C. mega-law firms, coordinated to spot this fraud and now are trying to get the word out. Having now witnessed this scam hundreds of times all should be advised that this routine is just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.
The Trademark Company
Purportedly reputable domain name registrars from Honk Kong and other Far East countries have been using a new scheme for about the last 12 months to drum up domain name registrations among U.S. Trademark holders.
Here's how it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they, the domain name registrar, has received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.
The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.
The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.
In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.
The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.
We, in conjunction with some of our friends in Washington, D.C. mega-law firms, coordinated to spot this fraud and now are trying to get the word out. Having now witnessed this scam hundreds of times all should be advised that this routine is just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.
The Trademark Company
Monday, March 1, 2010
Tips from the Trademark Insider: When Do You Enforce Your Trademarks?
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
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