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
Friday, October 29, 2010
Wednesday, October 27, 2010
4 Things to Consider When Your Trademark Application is Refused based upon A Likelihood of Confusion with Another Mark
You applied for your Trademark Registration months ago. You then started to build your brand or business around this mark. You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark. Angry and confused you cannot understand why the refusal was issued. Your mark is not identical to the one blocking the registration thereof. How could this be? Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Friday, October 22, 2010
Beware of Invoices from the World Intellectual Property Database
As a reminder our old friends are up to it again. Just this morning one of our customers received the attached "invoice" concerning registration of their trademark on the "World Intellectual Property Database". The only problem with the bill, our customer did not order the registration and based upon information and belief there is no World Intellectual Property Database.
We advise our clients to ignore such blatant solicitation attempts. For more information on this subject please visit the World Intellectual Property's official site at WIPO Warnings.
The Trademark Company
3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
Monday, October 11, 2010
Spot Check for Infringement of Your Trademark
We are always amazed at how often competitors of our clients attempt to use our clients' own marks against them in either pay-per-click advertising or the html code of their sites.
Often this can be somewhat innocent - competitors do not realize that it is against the law to use another's trademark to divert consumers away from their web sites. Often it is not so innocent - they do realize it and think they cannot get caught.
Well, if you ever want to make sure your competitors are not using your trademarks against you visit Google, Yahoo!, or Bing and type your trademark into the search field. Click submit and see what comes up.
If "sponsored" results come up for your competitors' ads they may be bidding on your trademarks as keywords in their pay-per-click advertising. They can be stopped as this is against the law.
If "non-sponsored" or "organic" results for your trademark bring up your competitors you may wish to click on their site and then using the right button on your mouse click "view source code". This will bring up the html source code for the web site you are viewing unless they employ a blocker. Once you are looking at the source code a quick Ctrl F will find your trademark in their code if it is there. If it is, they have to remove it. It is the law.
As always, if you find improper use of your marks and have questions as to how to Enforce Your Marks just give us a call or shoot us an email. We're glad to help.
The Trademark Company
Often this can be somewhat innocent - competitors do not realize that it is against the law to use another's trademark to divert consumers away from their web sites. Often it is not so innocent - they do realize it and think they cannot get caught.
Well, if you ever want to make sure your competitors are not using your trademarks against you visit Google, Yahoo!, or Bing and type your trademark into the search field. Click submit and see what comes up.
If "sponsored" results come up for your competitors' ads they may be bidding on your trademarks as keywords in their pay-per-click advertising. They can be stopped as this is against the law.
If "non-sponsored" or "organic" results for your trademark bring up your competitors you may wish to click on their site and then using the right button on your mouse click "view source code". This will bring up the html source code for the web site you are viewing unless they employ a blocker. Once you are looking at the source code a quick Ctrl F will find your trademark in their code if it is there. If it is, they have to remove it. It is the law.
As always, if you find improper use of your marks and have questions as to how to Enforce Your Marks just give us a call or shoot us an email. We're glad to help.
The Trademark Company
Tuesday, October 5, 2010
3 Tips for Posting Your Law-Related Questions in Open Internet Forums
As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.
The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.
Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.
Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:
1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.
2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)
3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.
So keep posting if you must. Just please be careful.
The Trademark Company
The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.
Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.
Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:
1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.
2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)
3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.
So keep posting if you must. Just please be careful.
The Trademark Company
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