We are often asked by our customers how long does it take to get a trademark registration and, correspondingly, when can I begin use of my trademark? These two questions are often at the at the very heart of beginning a new business or launching a new product line. In response, here is what you need to know about beginning use of your trademark and how long it takes to register the trademark with the U.S. Patent and Trademark Office.
When Can You Begin Use Your Trademark?
The good news is that you may begin use your trademark at any time once you decide to start marketing and/or selling your goods or services under the trademark. There is nothing that requires you to register your trademark with the U.S. Patent and Trademark Office prior to beginning use thereof.
One major note of caution, however, just because you can begin use of your trademark does not mean that you should. Prior to beginning use of your trademark Trademark Research should always be performed to make sure that your trademark is cleared for use and, if adopted, would not be likely to cause confusion with another trademark already in use by another.
A Trademark Research report will identify any and all trademarks which are already in existence so that you may be informed whether or not use of your proposed trademark is cleared (i.e., is not likely to infringe upon another’s trademark already in use) or not.
Additionally, should another entity ever bring an infringement action against you proof that you “cleared” use of your mark through a research report may be used as evidence of your reasonableness in selecting and beginning use of your trademark.
Benefits of Federal Registration
So if a federal registration is not required, why would you ever register your trademarks? Here’s why. For relatively little cost a federal registration avails your trademarks to certain benefits under the Trademark Act of 1946 which are not available to unregistered marks. The benefits include:
*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.
How Long Does it Take to Register My Trademark with the U.S. Patent and Trademark Office?
If you file a use-based application (i.e., you are using the mark at the time you file your Trademark Application) you may receive your Trademark Registration, if there are no refusals or other issues with your application, in 8 – 9 months from the date the trademark application is filed. If there are issues which need to be addressed this process may be slowed. Here’s why:
Approximately three to five months after the application is filed the mark is assigned to one of roughly 350 trademark examining attorneys who work for the U.S. Patent and Trademark Office.
The trademark examining attorney reviews the application and determines whether mark is entitled to registration.
If he or she determines that there are no issues which need to be addressed and that the mark is entitled to registration the examining attorney approves the mark for publication (See Below).
However, if any Procedural Issues (e.g., clarification of the applicant's name or entity type) or Substantive Refusals need to be addressed the examining attorney will issue what is known as an Office Action.
An applicant is given six months to respond to an office action or the mark will be Abandoned.
If an acceptable response to an Office Action is filed the examining attorney will approve the mark for publication.
If a response to an Office Action is not accepted a Final Office Action will be issued.
Once a Final Office Action is issued we have six months to either file a Request to Reconsider the Final Office Action, let the mark abandon, or file an Appeal of a Refusal to the Trademark Trial and Appeal Board ("Board").
If Board decides in our favor the examining attorney's refusal will be removed and the mark approved for publication for opposition. If the refusal is upheld by the Board, we may file a federal district court action to appeal the Board's decision although this is rarely done.
Approximately Four to Six weeks after being approved for publication, the application is actually published for opposition.
The mark is published in a book of all published marks before the U.S. Patent and Trademark Office known as the Official Gazette.
Marks are published for opposition for 30 days. During this opposition period any party wishing to object to the registration of the mark may do so by filing a Notice of Opposition.
Although very rare, if filed our experienced professionals are ready to assist you in responding to and moving your mark passed an opposition proceeding and towards registration.
Provided that no Notice of Opposition is filed against your mark, approximately Four to Six weeks after the opposition period ends, your mark receives its Certificate of Registration if it was a Use-Based Application of Notice of Allowance if it was an Intent-to-Use Application.
When a Notice of Allowance is received all that is required to complete the registration of the mark is the filing of a Statement of Use. Once filed, an Intent-to-Use Application will receive its Certificate of Registration.
When Can I Use the “TM” and “®” Symbols?
Finally, we are also always asked when can I use the “TM” and “®” symbols in connection with my mark.
In regard to the “TM” symbol, you may use this designation at any time to designate that you claim trademark rights in the mark at issue. However, the “®” is only permitted to be used once your mark is registered.
The Trademark Company
Thursday, May 27, 2010
Wednesday, May 26, 2010
The Trademark Company Secures Another Victory in A Domain Name Dispute
VIENNA, VA -- (May 26, 2010) - Today The Trademark Company is pleased to announce another domain name dispute victory on behalf of one of its clients.
The dispute centered around the domain name HighbrowFurnitureOnline.com The Trademark Company’s client, owners of a federally registered trademark for HIGHBROW FURNITURE, brought the action to force one of their competitors to turn over the disputed domain name which was being used to divert customers away from their own website.
Although the registrant of HighbrowFurnitureOnline.com denied use of the domain name The Trademark Company’s forensic investigation of use of the domain name following its registration revealed a period where the registrant had posted and monetization site which was sufficient to prove bad faith on the part of the registrant and secure victory for The Trademark Company’s client.
“We are thrilled for our client and the fact that we were able to prevail on their behalf” provided Matthew Swyers, founder of The Trademark Company. “We are especially pleased in that this represents a continuation of our strong record of success in domain name disputes as we move these services to a pure flat-fee basis.”
The Trademark Company now provides a Domain Name Dispute service on a flat-fee basis for a fraction of what most law firms charge to prosecute such disputes. This continues The Trademark Company’s philosophy of permitting small to mid-sized businesses can afford big-firm quality litigation with absolute control over their litigation expenses.
Moreover, big companies can finally break-free of the old-school way of legal billing which have seen unprecedented rises in the billable rates over the past decade without sacrificing the quality of legal services received.
“As of right now all domain name dispute work can be performed using this new service. Does it work? Just ask any one of our satisfied customers” Mr. Swyers added.
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.
For more information on Mr. Swyers and The Trademark Company, please visit www.TheTrademarkCompany.com.
The dispute centered around the domain name HighbrowFurnitureOnline.com The Trademark Company’s client, owners of a federally registered trademark for HIGHBROW FURNITURE, brought the action to force one of their competitors to turn over the disputed domain name which was being used to divert customers away from their own website.
Although the registrant of HighbrowFurnitureOnline.com denied use of the domain name The Trademark Company’s forensic investigation of use of the domain name following its registration revealed a period where the registrant had posted and monetization site which was sufficient to prove bad faith on the part of the registrant and secure victory for The Trademark Company’s client.
“We are thrilled for our client and the fact that we were able to prevail on their behalf” provided Matthew Swyers, founder of The Trademark Company. “We are especially pleased in that this represents a continuation of our strong record of success in domain name disputes as we move these services to a pure flat-fee basis.”
The Trademark Company now provides a Domain Name Dispute service on a flat-fee basis for a fraction of what most law firms charge to prosecute such disputes. This continues The Trademark Company’s philosophy of permitting small to mid-sized businesses can afford big-firm quality litigation with absolute control over their litigation expenses.
Moreover, big companies can finally break-free of the old-school way of legal billing which have seen unprecedented rises in the billable rates over the past decade without sacrificing the quality of legal services received.
“As of right now all domain name dispute work can be performed using this new service. Does it work? Just ask any one of our satisfied customers” Mr. Swyers added.
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.
For more information on Mr. Swyers and The Trademark Company, please visit www.TheTrademarkCompany.com.
Wednesday, May 19, 2010
What to Do If You Receive a Cease and Desist Letter
The mail comes and you notice a letter from a law firm you do not recognize. As you open the letter you hope for the best but you are nervous in anticipation of what the letter says. You read the opening paragraph of the letter:
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
Tuesday, May 11, 2010
Spot Check for Infringement of Your Mark
We are always amazed at how often competitors of our clients attempt to use our clients' own marks against them in either pay-per-click advertising or the html code of their sites.
Often this can be somewhat innocent - competitors do not realize that it is against the law to use another's trademark to divert consumers away from their web sites. Often it is not so innocent - they do realize it and think they cannot get caught.
Well, if you ever want to make sure your competitors are not using your trademarks against you visit Google, Yahoo!, or Bing and type your trademark into the search field. Click submit and see what comes up.
If "sponsored" results come up for your competitors' ads they may be bidding on your trademarks as keywords in their pay-per-click advertising. They can be stopped as this is against the law.
If "non-sponsored" or "organic" results for your trademark bring up your competitors you may wish to click on their site and then using the right button on your mouse click "view source code". This will bring up the html source code for the web site you are viewing unless they employ a blocker. Once you are looking at the source code a quick Ctrl F will find your trademark in their code if it is there. If it is, they have to remove it. It is the law.
As always, if you find improper use of your marks and have questions as to how to Enforce Your Marks just give us a call or shoot us an email. We're glad to help.
The Trademark Company
Often this can be somewhat innocent - competitors do not realize that it is against the law to use another's trademark to divert consumers away from their web sites. Often it is not so innocent - they do realize it and think they cannot get caught.
Well, if you ever want to make sure your competitors are not using your trademarks against you visit Google, Yahoo!, or Bing and type your trademark into the search field. Click submit and see what comes up.
If "sponsored" results come up for your competitors' ads they may be bidding on your trademarks as keywords in their pay-per-click advertising. They can be stopped as this is against the law.
If "non-sponsored" or "organic" results for your trademark bring up your competitors you may wish to click on their site and then using the right button on your mouse click "view source code". This will bring up the html source code for the web site you are viewing unless they employ a blocker. Once you are looking at the source code a quick Ctrl F will find your trademark in their code if it is there. If it is, they have to remove it. It is the law.
As always, if you find improper use of your marks and have questions as to how to Enforce Your Marks just give us a call or shoot us an email. We're glad to help.
The Trademark Company
Monday, May 10, 2010
Trademark Protection in China - What You Need to Know
In recent years China has begun to open their doors to Western commerce like never before. Some companies gained early footholds such as YUM! Brands (KFC, Pizza Hut, etc.) entering into the market years ago. Other companies, such as McDonald's, are more recent entries but are working hard to impact a new consumer market of over one billion people.
So how does this affect your business? Well, if you sell a product or service and would like to expand your potential market by a billion people you may wish to move towards selling your goods and services in China. Think about it, if you are a U.S.-based company selling to roughly 300 million or so consumers you would instantly more than quadruple your potential consumer base.
One aspect of selling your goods or services in China which must be addressed is the issue of protection of your trademarks before entering the Chinese market.
Unlike the U.S., the key to understanding Chinese trademark law is to understand that the first to file for the trademark virtually always gets it.
U.S. trademark law is largely based on first use with one or two limited exceptions. This means that the first person or entity to use a trademark for a particular category of product or service gets it.
However, other countries, including China, grant their trademark rights based on who files for protection of their mark first. This roughly means that even if I am using a trademark in China for years and someone else registers that same trademark for themselves, they will almost certainly get it and, once they get it, can stop me from using mine.
U.S. based manufacturers tend not to think in trademarks because to a large extent they have never had to do so. U.S. based consumer product companies are more focused on brand names and so even though they too can generally (please note the use of the word generally here because there definitely are advantages to filing your trademarks in the United States) able to get away with not filing trademarks in the United States, they do tend to be knowledgeable on the benefits of doing so.
China does have a well known trademark exception to its first to file rule, but since the odds of anyone prevailing on that are so slim and the legal costs so high to even try, it is never a good idea to forsake a filing in reliance on that.
Earlier this year, China's Supreme Court issued an explanation of the issues arising in disputes relating to well known or famous marks. In its explanation, the Court defined the term “well known mark” to mean a mark generally known by the public within China. This means the mark must be known to the general public, not to a restricted group of experts, and it also must be well known within China. United States, Europe and elsewhere simply do not count.
When discussing with our clients the issue of Trademark Registration in China they respond critically by stating China does not protect intellectual property rights. This is not entirely true, however. The protection of copyrighted material (movies, software, etc.) in China is notoriously bad. However, China's protection of patents is not too bad and its protection of trademarks is actually very good and getting better as it opens itself to the global marketplace.
So if you are preparing to move your goods and services into China or are already doing so get your trademarks registered. If you are not planning to offer goods and services in China, why not?
The Trademark Company
So how does this affect your business? Well, if you sell a product or service and would like to expand your potential market by a billion people you may wish to move towards selling your goods and services in China. Think about it, if you are a U.S.-based company selling to roughly 300 million or so consumers you would instantly more than quadruple your potential consumer base.
One aspect of selling your goods or services in China which must be addressed is the issue of protection of your trademarks before entering the Chinese market.
Unlike the U.S., the key to understanding Chinese trademark law is to understand that the first to file for the trademark virtually always gets it.
U.S. trademark law is largely based on first use with one or two limited exceptions. This means that the first person or entity to use a trademark for a particular category of product or service gets it.
However, other countries, including China, grant their trademark rights based on who files for protection of their mark first. This roughly means that even if I am using a trademark in China for years and someone else registers that same trademark for themselves, they will almost certainly get it and, once they get it, can stop me from using mine.
U.S. based manufacturers tend not to think in trademarks because to a large extent they have never had to do so. U.S. based consumer product companies are more focused on brand names and so even though they too can generally (please note the use of the word generally here because there definitely are advantages to filing your trademarks in the United States) able to get away with not filing trademarks in the United States, they do tend to be knowledgeable on the benefits of doing so.
China does have a well known trademark exception to its first to file rule, but since the odds of anyone prevailing on that are so slim and the legal costs so high to even try, it is never a good idea to forsake a filing in reliance on that.
Earlier this year, China's Supreme Court issued an explanation of the issues arising in disputes relating to well known or famous marks. In its explanation, the Court defined the term “well known mark” to mean a mark generally known by the public within China. This means the mark must be known to the general public, not to a restricted group of experts, and it also must be well known within China. United States, Europe and elsewhere simply do not count.
When discussing with our clients the issue of Trademark Registration in China they respond critically by stating China does not protect intellectual property rights. This is not entirely true, however. The protection of copyrighted material (movies, software, etc.) in China is notoriously bad. However, China's protection of patents is not too bad and its protection of trademarks is actually very good and getting better as it opens itself to the global marketplace.
So if you are preparing to move your goods and services into China or are already doing so get your trademarks registered. If you are not planning to offer goods and services in China, why not?
The Trademark Company
Wednesday, May 5, 2010
Keep Relevant Information Regarding Your Trademarks.
Keep records of relevant information relating to your trademarks. If your mark is ever challenged, it will be helpful to have evidence of use and records relating to the first use date for each of the associated goods/services. “First use” has a legal definition.
With respect to goods, “first use” means the date when the goods bearing the mark are actually sold or transported in commerce. “First use” with respect to services means the date the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce.
Other documents that should be kept include a copy of all Trademark Registrations, documents filed to secure such registrations, and other materials related to the application files.
The Trademark Company
With respect to goods, “first use” means the date when the goods bearing the mark are actually sold or transported in commerce. “First use” with respect to services means the date the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce.
Other documents that should be kept include a copy of all Trademark Registrations, documents filed to secure such registrations, and other materials related to the application files.
The Trademark Company
Tuesday, May 4, 2010
Domain Name Disputes Made Easier? The Wave of Change is Coming.
Traditionally we have told clients that in order to maintain a successful Domain Name Dispute against another entity you need to establish:
(1) That you retain trademark rights in the trademark at issue;
(2) That your rights were acquired before the registration of the disputed domain name that resembles your mark; and that you be able to prove that
(3) The disputed domain name was registered in bad faith.
Borrowing from a 2003 case there has been a recent shift in domain name disputes which may indicate the second requirement is not necessarily needed.
In 2003 the WIPO Arbitration and Mediation Center announced its decision in MADRID 2012, S.A. v. Scott Martin-MadridMan Websites. The case involved the registration of domain names which were related or similar to terms associated with the Madrid 2012 Olympic Games.
What was unique about the case was that in regard to at least one of the domain name registrations the domain name registrant actually registered the domain name prior to MADRID 2012, S.A.'s acquisition of trademark rights in the term Madrid 2012 and like marks.
Notwithstanding this fact, the panel reminded the parties that priority of use is not an absolute requirement of the original rules concerning domain name disputes but rather only a relevant consideration. The actual requirements for a domain name dispute are:
(1) the domain names are identical or confusingly similar to the trademarks in which the Complainant has rights;
(2) the Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by the Respondent in bad faith.
Previously it had been largely held that the second requirement presumed that the trademark owner's rights pre-dated the registration of the domain name.
This case, which was not widely reported upon originally but has recently been gaining greater significance, clarifies that priority of trademark rights is not, in fact, needed to maintain a domain name dispute. However it should be noted that where the trademark holder does not have priority of use over the domain name registration it is recognized that the burden to establish bad faith on the part of the domain name registrant is significantly increased.
So what does all of this mean?
In short, if you have a trademark you may be able to maintain a domain name dispute against the owner of a similar registered domain name even if they registered the domain name before you acquired rights in your trademark.
It will be harder to prove bad faith on their part. However, the absence of priority of use is no longer an end-game analysis for a potential dispute.
As always if you have any questions on the subject or otherwise just send them along. We are always willing to lend a hand and answer any questions you may have.
The Trademark Company
(1) That you retain trademark rights in the trademark at issue;
(2) That your rights were acquired before the registration of the disputed domain name that resembles your mark; and that you be able to prove that
(3) The disputed domain name was registered in bad faith.
Borrowing from a 2003 case there has been a recent shift in domain name disputes which may indicate the second requirement is not necessarily needed.
In 2003 the WIPO Arbitration and Mediation Center announced its decision in MADRID 2012, S.A. v. Scott Martin-MadridMan Websites. The case involved the registration of domain names which were related or similar to terms associated with the Madrid 2012 Olympic Games.
What was unique about the case was that in regard to at least one of the domain name registrations the domain name registrant actually registered the domain name prior to MADRID 2012, S.A.'s acquisition of trademark rights in the term Madrid 2012 and like marks.
Notwithstanding this fact, the panel reminded the parties that priority of use is not an absolute requirement of the original rules concerning domain name disputes but rather only a relevant consideration. The actual requirements for a domain name dispute are:
(1) the domain names are identical or confusingly similar to the trademarks in which the Complainant has rights;
(2) the Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by the Respondent in bad faith.
Previously it had been largely held that the second requirement presumed that the trademark owner's rights pre-dated the registration of the domain name.
This case, which was not widely reported upon originally but has recently been gaining greater significance, clarifies that priority of trademark rights is not, in fact, needed to maintain a domain name dispute. However it should be noted that where the trademark holder does not have priority of use over the domain name registration it is recognized that the burden to establish bad faith on the part of the domain name registrant is significantly increased.
So what does all of this mean?
In short, if you have a trademark you may be able to maintain a domain name dispute against the owner of a similar registered domain name even if they registered the domain name before you acquired rights in your trademark.
It will be harder to prove bad faith on their part. However, the absence of priority of use is no longer an end-game analysis for a potential dispute.
As always if you have any questions on the subject or otherwise just send them along. We are always willing to lend a hand and answer any questions you may have.
The Trademark Company
Monday, May 3, 2010
Reminder: Use Your Trademarks Properly
Are you aware that you can actually dilute the value of your company’s trademarks by using them improperly? If a mark is not federally registered, use the “TM” or “SM” designation with the mark until it achieves registration. Once it’s registered, always use the "®" designation.
If you use the mark in a textual sentence, place it in all caps, surround it with quotations, and use the proper designation to the right of it. By doing this, everyone who sees it will know that you claim trademark rights and others should choose a different mark.
Never use your trademark as a product descriptor. In so doing, you will give an infringer an argument that you have admitted that your mark is descriptive and of limited scope.
If the mark has a propensity to be used as a product descriptor, it is a good idea to follow the mark with the generic name of the product. For example, instead of saying, “Our Widgets are awesome,” say, “Our ‘WIDGETS®’ brand kitty treats bites are awesome.” For instance, to prevent its mark from becoming generic, Kimberly-Clark refers to its products as “KLEENEX® tissues” or even “KLEENEX® brand tissues.”
The Trademark Company
If you use the mark in a textual sentence, place it in all caps, surround it with quotations, and use the proper designation to the right of it. By doing this, everyone who sees it will know that you claim trademark rights and others should choose a different mark.
Never use your trademark as a product descriptor. In so doing, you will give an infringer an argument that you have admitted that your mark is descriptive and of limited scope.
If the mark has a propensity to be used as a product descriptor, it is a good idea to follow the mark with the generic name of the product. For example, instead of saying, “Our Widgets are awesome,” say, “Our ‘WIDGETS®’ brand kitty treats bites are awesome.” For instance, to prevent its mark from becoming generic, Kimberly-Clark refers to its products as “KLEENEX® tissues” or even “KLEENEX® brand tissues.”
The Trademark Company
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