We recently have come across an issue where, in the enforcement of one of our client’s marks in a Domain Name Dispute the bad guy (i.e., registrant of the confusingly similar domain name to our client’s mark)(hereinafter “Bad Guy”) responded, “Well, I am not using the domain name – I only registered it – so there is no bad faith here.”
“Survey Says – XXX” (Sorry for the Family Feud Reference). Simply put, the Bad Guy registered, we’ll say, WidgetOnline.com. Our client’s Federally Registered U.S. Mark is Widget. Our client sells furniture under the mark Widget. Bad Guy, although not posting a site at WidgetOnline.com, has allowed his domain host to monetize the site (e.g., show ads on the site and Bad Guy gets a cut of all click through traffic through WidgetOnline.com’s ads). And guess what, the ads on WidgetOnline.com are for competitors to our client’s furniture business.
So does the Bad Guy’s defense hold water? Like a sieve.
In short, to prevail in a domain name dispute the trademark holder must show:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the trademark holder has rights and had said rights at or before the registration of the disputed domain name; and
2. The Bad Guy has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
There are many examples of bad faith out there, but for the purposes of this discussion guess what – Monetization of a Web Site for Pecuniary Gain is Evidence of Bad Faith! Game. Set. Match.
So what have we learned? If someone registers a domain name similar to your trademarks even if they do not post a site to the domain name but do monetize the same – especially if those ads are for your competitors – the Bad Guys loose. Win one for the Good Guys.
As always, if you have any questions regarding this or any other issue Blog on it or just send us an Email.
The Trademark Company
Wednesday, December 29, 2010
Tuesday, December 28, 2010
How to Trademark a Person's Name
One issue that we have been seeing more and more of lately is whether a trademark registration can be secured for an individual's name. The short answer is yes it can be provided that you have the authorization to do so.
As a general rule the U.S. Patent and Trademark Office does not permit the registration of merely a surname (i.e., a last name). So registration of JONES in connection with shoes would not be permitted. This rule is found under section 2(e)(4) of The Trademark Act. There are, of course, exceptions to this rule such as longstanding use, etc. But as a general rule they will not let you protect just a last name.
However, a full name can be easily registered as a trademark. But note, you must have the permission of the person - if they are a living individual - to register the same. For instance, Bob Jones could not register MICHAEL JORDAN NISSAN unless he has Michael Jordan's, the famous basketball player's, permission to do so. Bob Jones can however, register BOB JONES' NISSAN provided that he himself provides an additional letter of consent to the U.S. Patent and Trademark Office stating he is allowing himself to register his own name and assuming there are no other bars to the registration of the mark.
So to review, the general answer is yes you can register a name. If you merely want to register a last name you will need to show it has been in use for a long time before it can be registered. In the alternative, you can register a full name IF you have the consent of the person whose name it is.
The Trademark Company
As a general rule the U.S. Patent and Trademark Office does not permit the registration of merely a surname (i.e., a last name). So registration of JONES in connection with shoes would not be permitted. This rule is found under section 2(e)(4) of The Trademark Act. There are, of course, exceptions to this rule such as longstanding use, etc. But as a general rule they will not let you protect just a last name.
However, a full name can be easily registered as a trademark. But note, you must have the permission of the person - if they are a living individual - to register the same. For instance, Bob Jones could not register MICHAEL JORDAN NISSAN unless he has Michael Jordan's, the famous basketball player's, permission to do so. Bob Jones can however, register BOB JONES' NISSAN provided that he himself provides an additional letter of consent to the U.S. Patent and Trademark Office stating he is allowing himself to register his own name and assuming there are no other bars to the registration of the mark.
So to review, the general answer is yes you can register a name. If you merely want to register a last name you will need to show it has been in use for a long time before it can be registered. In the alternative, you can register a full name IF you have the consent of the person whose name it is.
The Trademark Company
Monday, December 27, 2010
5 Reasons Why You Should Register Your Trademarks
We are often asked by our customers why should I register my trademark? Isn’t it true that I can begin use of my trademark without a registration?
The answer may come as a surprise to some but this is, in fact, true. You do not need to register your trademark to use the same to identify your goods or services.
However, before dismissing registering your trademark consider the value and protection afforded by a Federal Trademark Registration for a relatively modest price.
A Federal Trademark Registration provides:
1. Constructive notice nationwide of the trademark owner's claim.
Notice is one of the biggest issues in trademark law. When a lawsuit arises or a claim of infringement one of the issues which must always be addressed is whether the alleged infringing party was on notice of the trademark owner’s rights. By statute, a Federal Trademark Registration provides that everyone in the United States is on notice of rights retained by owners of Federal Trademark Registrations.
2. Evidence of ownership of the trademark.
Often challenges can arise as between parties concerning rights in competing trademarks. Those who have had the foresight to have their trademarks registered almost always retain the upper hand in such conflicts as retaining a Federal Trademark Registration is significant evidence that the trademark holder retains rights in the mark it alleges to own.
3. Jurisdiction of federal courts may be invoked.
From time to time Trademark Enforcement and Trademark Defense disputes may arise to the point that litigation is involved. Owners of Federal Trademark Registrations enjoy the benefit of being able to bring their disputes in Federal District Courts throughout the country.
4. Registration can be used as a basis for obtaining registration in foreign countries.
The United States is now a signatory to the Madrid Protocol. The treaty permits the owners of Federal Trademark Registration(s) to easily extend their U.S. rights to receive International Trademark Registration(s) in more than 78 countries around the world.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Lastly, an owner of a Federal Trademark Registration can file the same with the U.S. Customs and Border Protection (“USCBP”) and have the USCBP stop infringing goods from ever entering the country.
Conclusion.
So do you need to register your trademark, no. But given the cost, it is one of the best investments in your brand you will ever make.
The Trademark Company
The answer may come as a surprise to some but this is, in fact, true. You do not need to register your trademark to use the same to identify your goods or services.
However, before dismissing registering your trademark consider the value and protection afforded by a Federal Trademark Registration for a relatively modest price.
A Federal Trademark Registration provides:
1. Constructive notice nationwide of the trademark owner's claim.
Notice is one of the biggest issues in trademark law. When a lawsuit arises or a claim of infringement one of the issues which must always be addressed is whether the alleged infringing party was on notice of the trademark owner’s rights. By statute, a Federal Trademark Registration provides that everyone in the United States is on notice of rights retained by owners of Federal Trademark Registrations.
2. Evidence of ownership of the trademark.
Often challenges can arise as between parties concerning rights in competing trademarks. Those who have had the foresight to have their trademarks registered almost always retain the upper hand in such conflicts as retaining a Federal Trademark Registration is significant evidence that the trademark holder retains rights in the mark it alleges to own.
3. Jurisdiction of federal courts may be invoked.
From time to time Trademark Enforcement and Trademark Defense disputes may arise to the point that litigation is involved. Owners of Federal Trademark Registrations enjoy the benefit of being able to bring their disputes in Federal District Courts throughout the country.
4. Registration can be used as a basis for obtaining registration in foreign countries.
The United States is now a signatory to the Madrid Protocol. The treaty permits the owners of Federal Trademark Registration(s) to easily extend their U.S. rights to receive International Trademark Registration(s) in more than 78 countries around the world.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Lastly, an owner of a Federal Trademark Registration can file the same with the U.S. Customs and Border Protection (“USCBP”) and have the USCBP stop infringing goods from ever entering the country.
Conclusion.
So do you need to register your trademark, no. But given the cost, it is one of the best investments in your brand you will ever make.
The Trademark Company
Monday, December 20, 2010
So You Want to Parody a Famous Trademark? It May Not be a Laughing Matter.
The law of trademarks has evolved to allow the parody of famous marks in some instances. Technically speaking, a parody is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner. It must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.
The second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.
But mark adopters beware, Parody is not automatically a complete defense to a claim of infringement, likelihood of confusion, or dilution. And just because you may be able to do something does not mean that you should.
Owners of the more famous brands are increasingly going after these irreverent versions of their marks on a belief that the Parody marks are still stealing their hard-earned and valuable good will.
Whether or not they should lighten up and allow the Parodies is up to them. But for all considering adopting a Parody of a famous mark beware – legal defense fees, win or lose, are no laughing matter.
The Trademark Company
The second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.
But mark adopters beware, Parody is not automatically a complete defense to a claim of infringement, likelihood of confusion, or dilution. And just because you may be able to do something does not mean that you should.
Owners of the more famous brands are increasingly going after these irreverent versions of their marks on a belief that the Parody marks are still stealing their hard-earned and valuable good will.
Whether or not they should lighten up and allow the Parodies is up to them. But for all considering adopting a Parody of a famous mark beware – legal defense fees, win or lose, are no laughing matter.
The Trademark Company
Tuesday, December 14, 2010
What To Do When You Receive a Cease and Desist Letter.
The mail comes and you notice a letter from a law firm you do not recognize. As you open the letter you hope for the best but you are nervous in anticipation of what the letter says. You read the opening paragraph of the letter:
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
Wednesday, December 8, 2010
When Should You Enforce Your Trademark?
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
Tuesday, December 7, 2010
A Business Owner's Primer on Intellectual Property
We are often asked do I need a trademark for my slogan? Can I patent my idea? How can I protect my website from copying by others? Here’s a quick rundown of the various protections every business should be aware of in protecting their intellectual property.
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Thursday, December 2, 2010
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
Subscribe to:
Posts (Atom)
