From time to time we are presented with issues created when our clients change addresses, phone numbers, or email addresses and then do not update the United States Patent and Trademark Office ("USPTO") with these changes.
As a reminder, if you or your company retains registered trademarks with the USPTO it is your responsibility to keep the USPTO advised of any address changes which may occur. If you do not, official correspondence such as challenges to the continued registration of your mark, notice(s) of abandonment, or otherwise, may never reach you.
So remember, to maintain your registrations make sure to keep the USPTO advised of any change in your contact information. This will make sure you receive all notices regarding your marks and could save significant sums if you fail to timely respond to official notices concerning your marks.
The Trademark Company
Tuesday, June 29, 2010
Tuesday, June 22, 2010
4 Things to Consider When Your Trademark Application is Refused based upon A Likelihood of Confusion with Another Mark
You applied for your Trademark Registration months ago. You then started to build your brand or business around this mark. You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark. Angry and confused you cannot understand why the refusal was issued. Your mark is not identical to the one blocking the registration thereof. How could this be? Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Thursday, June 10, 2010
Use Your Trademark to Get a Google Monopoly!
Want to know a quick and easy way to get a search monopoly on the world’s most powerful search engine? It’s easier than you think. In short, register your registered trademarks with Google and the other major search engines and they won’t let anyone else bid on your registered trademarks in their pay-per-click advertising services EXCEPT YOU!
Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.
Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.
The Trademark Company
Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.
Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.
The Trademark Company
Tuesday, June 8, 2010
5 Tips to Avoid Fraud in Applying to Register a Trademark
In the past year the Trademark Trial and Appeal Board has been cracking down on suspected fraud by canceling, in whole or in part, registrations that were acquired with inaccurate or information. Whether intentionally or unintentionally done, here are 5 tips to help you avoid fraud in the preparation of your U.S. Trademark applications:
1. Dates of Use: When preparing an application do some research to make sure the dates of claimed first use of your mark are accurate. Many of us cannot recall the exact date we first rolled out a new mark or marketing campaign. We just recall it was, for instance, in the Summer of 99’. If you cannot recall do you best to re-create when it was by looking through old emails, etc. Hopefully you’ll be able to come up with at least an approximate month and year. If so, you should be good to go. But don’t guess and put down February 1999 when it just as easily could have been November of 1999. If challenged this bit of carefree carelessness could cost you your registration down the road.
2. Intent to Use: If you have yet to use your mark do not file a use-based application. Rather, be honest and file the intent-to-use version. Sure it will cost you a few extra dollars down the road to amend it to a use-based application. But this is far less than the cost of fighting through a cancellation proceeding which claims that you were not using the mark when filed just to save a few bucks. As a general rule if it is not in use – file an intent-to-use application. If it is – file a use-based application. Do not file a use-based where an intent-to-use is required. Down the road you may be sorry that you did.
3. Proper Identification of Services: This one that we see all the time. When identifying your services in an application think about it from a “what do I do for others” perspective. This one area we see a lot of – from a “can you help me fix this perspective.” Sometimes we can. Sometimes we cannot. In short, the recitation of services should be the services you provide FOR OTHERS under the mark. You may market your retail store services, but you are not a marketer nor is your mark used in connection with marketing. Your services are retail store services. That is what you do FOR OTHERS. The marketing is just how you inform people of your retail store services. Likewise, McDonald’s makes our favorite hamburgers. But they do not have a mark for hamburgers. Why? Because their marks are for restaurant services. So a good rule of thumb when writing your services down from a trademark perspective – always think of someone else. What do we do for others? You should be just fine.
4. Scope of Identification of Goods or Services: This is the hottest issue in fraud right now. For years lawyers and applicants have been defining the scope of their goods and services way too broadly. In short, let’s say a company, we’ll call them Zike, makes a line of shoes. Shoes are in International Class 25. Let’s say they know that they make shoes today but someday they’ll expand to socks, shorts, and other clothing. Should they identify all of these goods in Class 25? The answer – No! Even if I make the shoes today and am really really sure I am going to make the socks next year? NO! If you register a mark and do not use it in connection with ALL of the goods or services listed therein the mark is then subject to cancellation, in whole or in part, due to listing goods or services with which you are not using the mark. Thus a better plan is to register the mark now for what you are using it with. If you are concerned about future expansion file an intent to use mark with those goods you believe will be expended into in the coming years.
5. Interstate Use: Finally, if you are not using the mark in interstate commerce – commerce that is either between at least two states, between the U.S. and a foreign country, or otherwise – do not bother with a federal trademark. If you have a web site you are probably ok. But if you are sitting in the middle of Nebraska, no web site, and have a single store that sells fishing lures – more likely than not you did not have use in interstate use – save your money – don’t apply for a registered mark. Why? The registration fees are not refundable and if you don’t have use in interstate commerce it will be canceled.
The Trademark Company
1. Dates of Use: When preparing an application do some research to make sure the dates of claimed first use of your mark are accurate. Many of us cannot recall the exact date we first rolled out a new mark or marketing campaign. We just recall it was, for instance, in the Summer of 99’. If you cannot recall do you best to re-create when it was by looking through old emails, etc. Hopefully you’ll be able to come up with at least an approximate month and year. If so, you should be good to go. But don’t guess and put down February 1999 when it just as easily could have been November of 1999. If challenged this bit of carefree carelessness could cost you your registration down the road.
2. Intent to Use: If you have yet to use your mark do not file a use-based application. Rather, be honest and file the intent-to-use version. Sure it will cost you a few extra dollars down the road to amend it to a use-based application. But this is far less than the cost of fighting through a cancellation proceeding which claims that you were not using the mark when filed just to save a few bucks. As a general rule if it is not in use – file an intent-to-use application. If it is – file a use-based application. Do not file a use-based where an intent-to-use is required. Down the road you may be sorry that you did.
3. Proper Identification of Services: This one that we see all the time. When identifying your services in an application think about it from a “what do I do for others” perspective. This one area we see a lot of – from a “can you help me fix this perspective.” Sometimes we can. Sometimes we cannot. In short, the recitation of services should be the services you provide FOR OTHERS under the mark. You may market your retail store services, but you are not a marketer nor is your mark used in connection with marketing. Your services are retail store services. That is what you do FOR OTHERS. The marketing is just how you inform people of your retail store services. Likewise, McDonald’s makes our favorite hamburgers. But they do not have a mark for hamburgers. Why? Because their marks are for restaurant services. So a good rule of thumb when writing your services down from a trademark perspective – always think of someone else. What do we do for others? You should be just fine.
4. Scope of Identification of Goods or Services: This is the hottest issue in fraud right now. For years lawyers and applicants have been defining the scope of their goods and services way too broadly. In short, let’s say a company, we’ll call them Zike, makes a line of shoes. Shoes are in International Class 25. Let’s say they know that they make shoes today but someday they’ll expand to socks, shorts, and other clothing. Should they identify all of these goods in Class 25? The answer – No! Even if I make the shoes today and am really really sure I am going to make the socks next year? NO! If you register a mark and do not use it in connection with ALL of the goods or services listed therein the mark is then subject to cancellation, in whole or in part, due to listing goods or services with which you are not using the mark. Thus a better plan is to register the mark now for what you are using it with. If you are concerned about future expansion file an intent to use mark with those goods you believe will be expended into in the coming years.
5. Interstate Use: Finally, if you are not using the mark in interstate commerce – commerce that is either between at least two states, between the U.S. and a foreign country, or otherwise – do not bother with a federal trademark. If you have a web site you are probably ok. But if you are sitting in the middle of Nebraska, no web site, and have a single store that sells fishing lures – more likely than not you did not have use in interstate use – save your money – don’t apply for a registered mark. Why? The registration fees are not refundable and if you don’t have use in interstate commerce it will be canceled.
The Trademark Company
Thursday, June 3, 2010
Beware of Latest Trademark / Patent Scam
Good afternoon to all. One of clients just received the attached letter (our client's information has been removed) purportedly from an official office (notice the picture of the U.S. flag in the upper left-hand corner).
For all of our clients and followers of our posts please note that this is not an official notice from any country's patent office and the fees listed herein and demand for payment are, in short, a scam.
As always if you have any question on this or any other matter just let us know.
The Trademark Company
Tuesday, June 1, 2010
When Should You Enforce Your Trademarks?
One of the trickiest questions we get here at The Trademark Company is the question of when should a business enforce its trademark(s) against a likely infringer? The answer, we believe, is a mix of business considerations balanced against legal principals. In short, here’s what you need to know.
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
When Should You Enfoce Your Trademarks?
One of the trickiest questions we get here at The Trademark Company is the question of when should a business enforce its trademark(s) against a likely infringer? The answer, we believe, is a mix of business considerations balanced against legal principals. In short, here’s what you need to know.
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
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