Use Trademark Notices to Let Others Know That Your Mark is Yours!

As a reminder, use trademark notices on all of your or your company's trademarks, service marks, and certification marks (e.g., TM or SM for non-registered marks and ® for registered marks).

While trademark notices are not required by law, their effective use can significantly enhance your intellectual property rights, including eliminating an "innocent infringement" defense by someone who begins use of an infringing trademark similar in appearance to you or your company's trademark(s).

A little effort and care will go a long way in keeping your mark protected.

The Trademark Company

4 Things Every Trademark Owner Should Know About Monitoring Use Of Their Trademark(s)

If you are a trademark owner did you know that to maintain rights in your mark you are required to police the use thereof?

Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.

In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.

Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:

1. USPTO.gov

The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).

For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.

2. Search Engines & Google Alerts

Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.

In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).

Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.

Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.

Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.

Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.

3. RSS Feeds & Twitter

Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.

To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.

4. State Trademark and Corporate Databases

One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.

There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.

As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.

The Trademark Company

Selecting a Great Trademark

Our clients often ask us for suggestions in selecting a Trademark for their products or services. Our response is always the same – it depends...

On one hand, do they want to create a completely coined name (i.e., something no one has ever heard of like eBay or Google) or use an arbitrary mark (i.e., a term we have heard of but that’s use is arbitrary in connection with the goods or services provided such as AMAZON for online retail store services or APPLE for computers).

On the other, do they want a mark that creates instant interest in the product or service because it is suggestive or describes of trait thereof (e.g., ORANGE CRUSH for orange-flavored soft drinks or COPPERTONE for suntan oil).

No matter what they decide a great name should be catchy and memorable, should create interest in the product or service, and most importantly be registerable as a trademark - that is capable of registration on the principal register maintained by the United States Patent and Trademark Office ("USPTO").

A common problem in selecting a trademark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., RED SHOES for shoes that are red).

Unfortunately, descriptive terms are not registerable as trademarks, absent proof of a secondary meaning (i.e., you have been using it for five years or you have spent millions in advertising of the mark).

So what is the best way to select a trademark for your products or services?
Coin or use arbitrary terms if you intend on building the brand from scratch. Note, this will take more effort and resources as consumers will need to be educated via advertising and otherwise as to your product or services provided in connection with that mark.

In the alternative, if you want that instant buzz which comes with suggestive marks, be cautious and avoid generic, descriptive, and non- inherently distinctive marks as they will not be registerable before the USPTO nor protected from infringement by others. Make sure that the terms you use in your trademark do not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of your products or services. Rather, select a trademark that requires some bit of imagination, thought or perception to reach a conclusion as to the nature of your products.

The Trademark Company

Trademark Owners Beware of Scam Monitoring and Related Services

Lately it seems like our old friends have been up to it again. A few weeks after we file for trademarks on behalf of our clients they receive what appear to be official-looking invoices from places like "The U.S. Trademark Office" or similar designations which seem oddly similar to the official designation the United States Patent and Trademark Office ("USPTO").

Clients and all who read this post beware, in our opinion such purported services are, in essence, scams. Of late we have seen them taking two general forms:

Monitoring Services

Our clients receive an official-looking invoice for some amount of money, typically in the nature of hundreds to thousands of U.S. dollars, stating that they must now sign up to have their mark monitored and that payment of the invoice is, in essence, required. As the paper which accompanies these demands are often made to look strikingly similar to correspondence from the official USPTO many can be confused and possibly pay the invoice without thinking about it.

Do not!

They are not required. It is merely a hard form of solicitation which, as we stated above, borders on a scam.


International Protection or World Trademark Register

The second one we have been seeing a lot of lately are offers to protect our clients' marks on the "World Trademark Register" or some like designation. We've been doing this for a long time and we protect our clients' marks in pretty much every country in the world. As such we are confident in saying we have never heard of a "World Trademark Register" or anything like what they are purportedly advertising.

Here's the kicker too - most of these services are from outside of the United States. As such, once you send your credit card information along it would be rather, well, difficult to ever get a refund back on a disputed charge.

Summary

So please be advised that these "services" are out there targeting trademark holders and especially those trademark holders who have recently filed applications with the USPTO.

Don't be fooled.

As always, if you have any questions about something you have received in the mail or generally any questions regarding trademarks you can give us a call and we'll let you know if it is official or not.

TheTrademarkCompany.com

What Every Trademark Owner Needs to Know About the Relationship Between Trademarks and Domain Names

We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses. Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.

Registration of a Domain name is Not Trademark Use

As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.

Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not.

Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.

Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com alone.

Cybersquatting

Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.

There are two primary statutes / rules trademark holders can use to Enforce their Trademark Rights Against the Subsequent Registration of Like Domain Names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).

Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:

1. The offending domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;

2. The registrant of the offending domain name does not have any rights or legitimate interests in the domain name; and

3. The registrant of the offending domain name registered the domain name and is using it in "bad faith."

In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to, the following:

a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;

c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and/or

d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.


The UDRP and Its Remedies

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.

In short, if you register a domain name with one of these TLDs, you are subject to the policy.

Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.

Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.

There is one significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.

The ACPA and Its Remedies

The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.

Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.

However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.

Summary

So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.

TheTrademarkCompany.com

It's a Great Time to File for a U.S. Trademark - Seriously.

It is a historically great time to protect your trademarks in the U.S. While we understand that this post may seem somewhat self-serving, there is an actual and very real objective reason we are saying this today.

Back when we worked at the United States Patent and Trademark Office ("USPTO") the office's initial review of newly filed applications always hovered around six months. In short, this means that an applicant would file for the a trademark and the office would not even look at their filing until, on average, six months after the filing date.

Then, assuming everything was filed perfectly, the mark would need to be published for opposition, registered, etc. and the whole process would take, on average, just under a year from the date of filing.

Not today.

In speaking with numerous examining attorneys for the USPTO it is apparent that their initial review of newly-filed applications is approaching an all-time low of only about 10 weeks. That means your applications are getting reviewed more quickly and corresponding registrations can issue as quickly as six months after filing!

Wow have things changed.

Coming full circle, that is why we said it is a great time to file for your marks. With the USPTO getting more efficient at the examining process what you envision today can be a Registered Trademark in a historically quick amount of time.

TheTrademarkCompany.com

Trademarks and Taxes: Is the Protection of Your Trademarks a Deductible Expense?

This taxing day always reminds us of the tax ramifications of both protecting and enforcing your intellectual property rights.

The tax law does not specifically mention legal fees or expenses incurred in the protection of your trademarks as deductible items. Therefore, the deductibility of such expenditures depends on the context in which they are incurred. The absence of specific provisions for legal fees and trademark protection in the Code has resulted in many interesting and important developments concerning their deductibility.

Amounts paid for legal and other professional services are generally deductible as a trade or business expense.

Specifically, in order to be deductible as a trade or business expense, legal and professional fees must be: (i) incurred in carrying on a trade or business; (ii) ordinary and necessary; (iii) reasonable in amount; (iv) paid or incurred during the taxable year in which the taxpayer seeks to deduct them; and (v) paid by the person or entity to whom the services are rendered. These requirements are discussed briefly below.

Fees Must Be Incurred in Carrying on a Trade or Business

A taxpayer cannot deduct legal and professional fees paid or incurred in a taxable year (even if they are shown to be ordinary, necessary and reasonable and meet the other requirements herein discussed) unless the taxpayer can show that the expense was paid or incurred in carrying on a trade or business. Whether the taxpayer's activities amount to engaging in a trade or business is a factual question.

The Code does not provide any specific definition of "trade or business." There are, however, literally hundreds of contradictory cases, which interpret the term in different ways. In general, the taxpayer must be engaged in an activity on a continuous and regular basis (rather than intermittently or sporadically) in order to qualify as engaging in a trade or business. One indication that a taxpayer is engaging in a trade or business is that he devotes a substantial portion of time to the business.

In addition to the requirement that the taxpayer be regularly and continuously engaged in business activity, the taxpayer must also be engaged in the activity with the predominant purpose of making a profit in order to be engaged in a trade or business.

Fees Must Be Ordinary and Necessary

In order to be deductible as a trade or business expense, an expenditure must be both (i) ordinary and (ii) necessary. Since there is no fixed rule as to what expenditures will constitute "ordinary and necessary expenses," the question is treated as essentially one of fact, and thus no broad generalizations regarding what expenditures will qualify can be made. The "ordinary and necessary" requirement should be fairly easy to meet for most legal fees, since the taxpayer will generally have good reasons for using such professional services.

Fees Must Be Reasonable in Amount

Legal expenses that otherwise qualify for deduction are deductible only as long as they are also reasonable in amount. The regulations indicate that expenses coming "must be reasonable in amount and must bear a reasonable and proximate relation to the production or collection of taxable income or to the management, conservation, or maintenance of property held for the production of income."

Fees Must Be Paid or Incurred During Taxable Year

The fact that a service provider renders or provides a legal, or other professional service to the taxpayer in a particular tax year does not mean that the fee can be deducted in that year. Deductibility depends on whether the fee is paid or incurred in the taxable year in which the deduction is sought, which, in turn, depends upon the taxpayer's method of tax accounting.

Fees Must Be Paid by Person to Whom Services Are Rendered

Another requirement for deductibility is that the expenses that the taxpayer seeks to deduct must be those of the taxpayer and not of someone else. Thus, generally, a corporation must incur legal and other professional fees for its own benefit and cannot deduct fees incurred only for the benefit of its stockholders.

Summary

So in the end expenses incurred in both the protection and defense of your trademarks are most likely deductible ordinary and necessary business expenses. As always, if you have any specific questions consult your accountant or tax lawyer. But as a general rule they are, depending upon the circumstances most likely deductible.

Happy Tax Season!

TheTrademarkCompany.com

The True Cost of a U.S. Trademark Registration.

How much does it cost to receive a U.S. Trademark Registration? Here is what you need to know about the costs involved in registering a trademark in the U.S.

The ETEAS and ETEAS PLUS Systems

The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration. Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.

The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered. For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25. If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.
We’ll explain below what “per class” means.

As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system. The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process. In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.

Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.

U.S. Filing Fees Are Per Class

Next, applicants should understand that the USPTO’s filing fees are per class. U.S. Trademark Registrations are goods or services specific. This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.

For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.
There are currently 45 classes of goods and services recognized by the USPTO. Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.

As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:

Class 9: Pre-recorded music CDs.

Class 41: Live performances by a music band.

If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class). In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).

As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.

The Distinction Between Use and Intent-to-Use Applications

Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a). However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use application under Section 1(b). If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.

In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.

The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use. This subsequent filing, however, requires an additional charge of $100 per class of goods and services.

Accordingly, if you have a 2-class intent-to-use application filed under the TEAS system the fees to register the mark would look something like this:

Application Fee = $650 (2 x $325);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use Application = $850.

But it does not end here. We mentioned above that to file the Statement of Use costs $100 per class. Of note, from the date of the Notice of Allowance an applicant has only 6 months to file their Statement of Use establishing use of the mark. If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use. An extension of time to file the Statement of Use costs $150 per class. An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.

So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance. Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance. Under that scenario the same would look something like this:

Application Fee = $650 (2 x $325);

Extension of Time in Which to File Statement of Use = $300 (2 x $150);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use
Application with One Extension of Time = $1150.

As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.

Law Firms and Filing Services

Lastly, we would be remiss if we did not mention the cost of assistance in the trademark filing process. The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.

The obvious expense to using a law firm or filing service is the additional costs involved in employing the same. The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.

Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.

Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.

Summary

In conclusion, there is much to know about the costs involved in filing for a trademark. Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application. Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.

Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system. However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.

In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process. In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).

TheTrademarkCompany.com

The Trademark Company Announces New Pay-Per-Service Litigation Services

VIENNA, VA --(April 11, 2010) - Today The Trademark Company announced the initiation of its new Pay-Per-Service Litigation Services.

“In 2003 we founded The Trademark Company to build a better customer-focused firm with affordable trademark representation for all” provided Matthew Swyers, founder of The Trademark Company. “Today’s implementation of our Pay-Per-Service Litigation Services represents our latest re-invention of the traditional law firm model to continue serving the best interests of our clients.”

Years in the making, this new service reduces the average cost of trademark litigation by 50 to 75%.

“Having litigated thousands of cases and tried hundreds to verdict we knew this could be done, it would just take the implementation of rigid systems to make sure that the program functions every bit as well as traditional retained litigation services” Mr. Swyers stated. “As to whether or not it works - well, we already know that it does. Over the past few months we had several test cases use the system with favorable results for our clients. The opposing counsels never even knew the difference.”

So how does it work? Obviously that is a trade secret. “We can reveal that the service was years in the making, involved the systemization of everything we have collectively learned about litigation, and combines it into a decision-tree-like mechanism which reduces the time involved in litigating a case significantly while maintaining greater consistency and quality of results for our clients. And that is what leads to the significant cost savings.”

For the first time small to mid-sized businesses can afford big-firm quality litigation with absolute control over their litigation expenses.

Likewise, 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 work before the Trademark Trial and Appeal Board can be performed using this new service. Soon we also expect to be able to add all federal district court litigation to the program as well” 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 TheTrademarkCompany.com

Beware of the Perils of Self-Enforcement of Your Trademarks

Today we were speaking to a prospective client about a potential trademark dispute and were reminded of the perils of self-enforcement of one’s trademark. Fortunately for our prospective client they were the beneficiary of another’s misguided enforcement efforts. However, it could just as easily went the other way. So here is a little primer on the dangers of self-enforcement.

Even if well-intentioned, direct communications to a purported infringer can often be damaging to a trademark holder’s rights. Let’s assume you discover another using a very similar mark to yours. Perhaps one of your client’s calls you and says they were confused by the other party’s existence. Who knows? No matter how you find out you decide to fire off a letter to the bad guy demanding the stop using your mark. Feeling empowered you send the letter.
The letter demands that the bad guy stop using his mark because you have been using your since, let’s say 2007. You receive a very short response to your letter saying “Thanks for your concern. But we’ve been using our mark since 2002. Stop using yours or pay us big $$$$$$.” As you sit back in your chair you get that sick feeling in your stomach when you know something bad has just happened – and it is only the tip of the iceberg.

And so illustrates the perils of self-enforcement. What could or should have been done better?

No. 1: Due Diligence. You can do it yourself or a lawyer can do it for you. Anytime you think about enforcing your mark, you MUST make sure you have priority of use. NEVER ASSUME.

No. 2: Your Statements are Admissions. Properly crafted, an attorney’s statements are not. As such, anything you say – assume it will be blown up and Exhibit 1 at the trademark infringement case against you. A skilled lawyer, not a chance.

No. 3: FRE 408. Federal Rule of Evidence 408 precludes the admission of evidence in the course and scope of settlement discussions. Placing the term “FRE 408 Applies” at the top of any letter to the infringer may preclude the letter’s admission in a subsequent enforcement action.

So if you can avoid it, don’t self-enforce. If you must, conduct your due diligence first and make sure you ad “FRE 408 Applies” at the top of any letter to the infringer.

TheTrademarkCompany.com

The Trademark Company Announces South East Asia Alliances

FOR IMMEDIATE RELEASE April 6, 2010 – The Trademark Company announced today the formation of additional global strategic alliances which will enable its clients to Register Trademarks in Vietnam, Cambodia and Laos.

“As many of our clients expand their brands throughout Asia we must be prepared to meet our clients’ world-wide protection needs,” provided Matthew Swyers of The Trademark Company. “With today’s strategic alliance we have further expanded our clients’ reach in the global protection of their trademarks.”

Since its founding The Trademark Company has expanded rapidly as its customer-focused approach to often complex legal matters has resonated with its clients. The Trademark Company has now expanded to represent thousands of clients on 6 of 7 continents.

Today, in addition to registering its clients’ trademarks in virtually every country in the world, The Trademark Company is also uniquely positioned to provide a wide swath of corollary trademark services including Trademark Research, Trademark Enforcement, and Domain Name Disputes.

“In short, if it involves the protection of clients’ brands, we do it.” Mr. Swyers added. “And with today’s alliance, we now can continue or services into

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