3 Reasons Why to Perform a Trademark Clearance Report for Your Trademarks

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

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

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

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

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

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

1. USPTO.gov

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

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

2. Search Engines & Google Alerts

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

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

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

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

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

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

3. RSS Feeds & Twitter

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

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

4. State Trademark and Corporate Databases

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

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

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

The Trademark Company

Beware of Domain Name Monetization – It Can Cost You

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

When to Enforce Your Trademark. What You Should Know.

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

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

What You Need to Know if You Receive a Cease & 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

Want to Trademark Your Name? Here's What You Need to Know.

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

Keep Your Trademarks Forever: An Overview of Trademark Renewal

Unlike other forms of intellectual property (e.g., patents and copyrights) trademarks can, in theory, be maintained forever. To do so, however, the U.S. Patent and Trademark Office (“USPTO”) maintains strict and unwavering requirements concerning the maintenance of U.S. Trademark Registrations. As such, once a Trademark Registration is received, you must calendar these important deadlines or use a service to do so to make sure that your Trademark Registration is not permitted to lapse.

Of note, many trademark owners do not realize that once a trademark is registered it can still be canceled through a Cancellation Proceeding initiated by any party who feels that it may be injured by the continued registration of the trademark. Typical grounds for cancellation proceedings include, but are not limited to: (1) a likelihood of confusion with another trademark wherein the other trademark claims priority of use; (2) that the registered trademark is merely descriptive and, as such, is incapable of functioning as a trademark; (3) fraud perpetrated in the filing or maintenance of the registration; and (3) abandonment or non-use of the mark without an intent to resume use thereof.

If a trademark owner receives notice of a cancellation proceeding typically through a document known as a Petition to Cancel they should seek the advice of counsel immediately as there are strict deadlines to respond thereto. If a cancellation proceeding is not defended in a timely manner the Trademark Registration will be canceled.

Putting the threat of cancellation aside, here are the standard renewal deadlines of which all trademark owners should be aware:

5th - 6th Year Affidavit of Continuous Use and Declaration of Incontestability

Between the 5th and 6th year anniversary of the registration a trademark owner is required to file a Section 8 Affidavit of Continuous Use to Renew the Registration. This is an affidavit verifying that the trademark is still in use and requiring the trademark owner to supply evidence of that use to the USPTO. If the Section 8 Affidavit is not filed between the 5th and 6th year anniversary of the registration there is a 6-month “grace period” after the 6th year anniversary during which the affidavit can still be filed although additional fees will apply. If no Section 8 Affidavit of Continuous Use is filed during this 18 month time frame the Trademark Registration is canceled.

During this same time, namely between the 5th and 6th year anniversary of the registration, a trademark owner may file a Section 15 Declaration of Incontestability. In short, this document certifies that a registration has been registered in excess of 5 years and, as such, can now only be canceled for (1) fraud perpetrated in the filing or maintenance of the registration; or (2) abandonment or non-use of the mark without an intent to resume use thereof. There is no mandatory requirement that a Section 15 Declaration of Incontestability be filed although it is recommended.

9th - 10th Year Application for Renewal and Affidavit of Continuous Use

On or about every 10-year anniversary of the registration of a mark a trademark owner is required to file a Section 8 Affidavit of Continuous Use and a Section 9 Application for Renewal of the Trademark. The filings are required to be completed within one year of each 10-year anniversary (e.g., between the 9th and 10th year anniversary of the registration of the mark, between the 19th and 20th year anniversary of the registration of the mark, etc.) or within a 6-month grace period following each 10-year anniversary. As always if the filing is made during the “grace period” additional fees will apply.

Provided that trademark owners comply with these deadlines and their Trademark Registration(s) is/are not otherwise canceled via a cancellation proceeding they will be able to maintain their trademarks for a long long time.

TheTrademarkCompany.com

The Top 5 Irish Trademarks

Feeling Irish today? Did you remember to wear green? Well, just for fun we thought we would send out a list of the Top 5 Irish Trademarks as recognized globally.

No. 1 Baileys Irish Cream

Baileys Irish Cream is an Irish whiskey and cream based liqueur, made by Gilbeys of Ireland. The trademark is currently owned by Diageo. It has a declared alcohol content of 17% alcohol by volume.

Baileys Irish Cream was created by Gilbeys of Ireland as it searched for something to introduce to the international market. The process of finding a product began in 1971 and it was introduced in 1974 as the first Irish Cream on the market. Despite attributions to Andrew Bailey of the R.A. Bailey Company, no such person existed. The choice of the name Bailey was based on branding. It can be compared to other cream liqueurs such as Amarula, Carolans and Sangster's.

No. 2 Guinness

Guinness is a popular dry stout that originated in the brewery of Arthur Guinness (1725–1803) at St. James's Gate, Dublin. Guinness is based on the porter style that originated in London in the early 18th century and is one of the most successful beer brands worldwide. A distinctive feature is the burnt flavor which is derived from the use of roasted barley. For many years a portion of the drink was aged to give a sharp lactic flavor, although Guinness has refused to confirm whether this still occurs. The thick creamy head is the result of the beer being mixed with nitrogen when being poured. It is popular with Irish people both in Ireland and abroad and, in spite of a decline in consumption over recent years, is the best-selling alcoholic drink of all time in Ireland.

Arthur Guinness started brewing ales from 1759 in Leixlip, then at the St. James's Gate Brewery, Dublin. On December 31st he signed “up to” a 9,000 year lease at £45 per annum for the unused brewery. Ten years later on May 19, 1769 Guinness exported his ale for the first time, when six and a half barrels were shipped to England.
Guinness is sometimes believed to have originated the stout style of beer. However the first use of the word stout in relation to beer was in a letter in the Egerton Manuscript dated 1677, almost 50 years before Arthur Guinness was born. Arthur Guinness started selling the dark beer porter in 1778. The first Guinness beers to use the term were Single Stout and Double Stout in the 1840s.

No. 3 Jameson Irish Whiskey

Jameson is a single-distillery Irish whiskey. The brand is today owned by the French beverage conglomerate Pernod Ricard. Jameson is similar in its adherence to the single distillery principle to the single malt tradition, but Jameson combines malted barley with unmalted or "green" barley. The most famous component within Jameson is the legendary "Pure Pot Still" component unique to Irish whiskey distilling tradition.

When John Jameson, a Scottish-born businessman, acquired the Bow Street Distillery in 1780, it was producing about 30,000 gallons annually. By the turn of the century, it was the second largest producer in Ireland and one of the largest in the world, producing 1,000,000 gallons annually. Dublin at the time was the epicentre of world whiskey production. It was the second most popular spirit in the world after rum, and internationally Jameson had, by 1805, become the world's number one whiskey. Today, Jameson is the third largest Single Distillery Whiskey in the world.

Historical events, for a time, set the company back. The temperance movement in Ireland had an enormous impact domestically but the two key events that affected Jameson internationally were the Irish war of Independence and subsequent trade war with the British which denied Jameson the export markets of the Commonwealth, and shortly thereafter, the introduction of prohibition in the United States. While Scottish brands could easily slip across the Canadian border, Jameson was excluded from its biggest market for many years. It was also a fact that the introduction of basic grain whiskey production using column stills by the Scottish blenders in the mid 1800s enabled them to produce vast amounts of almost neutral flavored components for blending with some malt whiskey. This enabled them to create low cost blends that the Irish, still using the original Pure Pot Still technique could not compete with.

This differing opinion of what a true whiskey consisted of culminated in a legal inquiry in 1908. It was a huge turning point in the history of whiskey. The Scottish blenders won the case and the blend became recognized in law as being whiskey. The Irish in general and Jameson in particular stubbornly continued with the traditional Pure Pot Still production process for many years and, to this day, a large proportion of Jameson is still composed of Pure Pot Still component. Jameson also produces a special limited edition Pure Pot Still Whiskey, Redbreast to celebrate the ancient Irish whiskey making craft.

In 1966 John Jameson joined forces with their rivals the Cork Distillers company and John Powers to form the Irish Distillers Group. The new Midleton distillery built by Irish Distillers now produces most of the Irish whiskey sold in Ireland. The new facility adjoins the old one, which is now a tourist attraction.

Interestingly, the bar that sells the most Jameson whiskey annually is located in Minneapolis, Minnesota (USA). In 2008, the Local Irish Pub in Minneapolis sold 671 cases of Jameson, 22 bottles a day.

No. 4 Harp Lager

Harp Lager (Harp Irish Lager since 1997) is a pale lager brand owned by Diageo. Harp Lager was first produced in 1960 by The Great Northern Brewery, Dundalk, as a bottled beer, in response to the trend among drinkers in Britain and Ireland towards continental lager. By 1961, it was brewed under an alliance of the brewing companies, Courage, Barclay & Simonds, Scottish & Newcastle, Bass, Mitchells & Butlers and Guinness. These companies grouped together under the name of the Harp Lager Ltd. consortium. Coming 1964, it was being sold on draught and quickly led in its category for sales. Members of the Harp consortium changed over the years, with Courage and Scottish & Newcastle leaving in 1979, but becoming franchisees.
Dr. Herman Muendar, a distinguished German "Braumeister" was chosen to manage the new venture, being eminently suited to the task, having gained considerable experience supervising and directing the re-building of war damaged breweries in the Ruhr area of Germany. And so Harp Lager was born, with the Brian Boru Harp as its emblem. For many years the memorable slogan "Harp stays sharp" was used in advertisements for the Lager.

In 2005, Harp saw a makeover. Diageo Ireland separated the brand from Guinness and gave it a new look, with new advertisements appearing on TV. Ironically, there is no longer an actual Harp on the design of the new tins and bottles, as that logo belongs to Guinness. US and Canadian sold bottles still bear the Harp logo (2008).
On the 9th May 2008, Diageo Ireland announced that they are to close the Dundalk Brewery along with the Kilkenny Brewery over a five year period. Thus ending a long tradition of Brewing in Dundalk.

No. 5: Waterford Crystal

The beginnings of glass making in Ireland are lost in the mists of time but there is sufficient archaeological evidence to show that, from the early Iron Age, glass was regarded with respect. Indeed, medieval documents can prove glass making existed in Ireland back in the middle 13th century.

However, the Waterford Crystal story started to blossom in 1783 when two brothers, George and William Penrose, founded their crystal manufacturing business in the busy port of Waterford. They were important developers and the city's principal exporters. The development, they told the Irish Parliament, cost £10,000 - a great deal of money in the 18th century.

They employed 50 to 70 people, led by a fellow Quaker, John Hill, from Stourbridge in England, and succeeded in producing crystal with a purity of color unmatched in Ireland or England. Merchant ships sailed regularly from the port of Waterford with cargoes of crystal bound for Spain, the West Indies, New York, New England and Newfoundland.

But less than 100 years later the initial company failed due to lack of capital and excessive taxation. In what seems a remarkably short time, Waterford Crystal acquired an unequaled reputation that has transcended the intervening centuries.

Another century passed before the enterprise was revived. In 1947, while Europe was still in ruins after the second World War, a small glass factory was set up in Waterford just 11/2 miles from the site of the original glass factory.

Waterford Crystal today has very strong links with its illustrious predecessor. There is today the same dedication to the purity of color, to the same design inspiration and to the same pursuit of highest quality levels possible. The traditional cutting patterns made famous by the artisans of Waterford became the design basis for the growing product range of the new company.

Products which have extended the power of the Waterford brand beyond its core crystal products include Waterford China, Waterford Table & Bed Linens, Waterford Stainless Flatware and Silver Gifts, Waterford Writing Instruments, Waterford Holiday Heirlooms and Waterford Crystal Jewelry.

Waterford Crystal is among the leading brands of premium crystal. Its products - superb handcrafted crystal stemware, giftware and lightingware - are designed and manufactured to the highest standards.

The brand's reputation among its target market - upscale men and women - in its major markets is such that it has taken the brand to the heights that it now occupies. The target consumers simply regard Waterford Crystal as the best for self and gift purchase.

Recent research has confirmed the standing of Waterford Crystal in both the US and the UK.

In November 2000, Waterford Crystal was named as the top world class brand in the United States by a survey conducted among 30,000 people by the Princeton, New Jersey, based independent market research company, Total Research Corporation. Total Research said that Waterford Crystal was judged by American consumers as the brand with the highest quality out of 19 world class brands in the US market. Other brands in the league table below Waterford include Rolls-Royce Bentley, Bose stereo and speaker systems, Philadelphia cream cheese, Harley-Davidson motorcycles, Kodak, Heinz ketchup and National Geographic magazine.

In 2002, Waterford celebrated the 50th anniversary of the introduction of the Lismore pattern of crystal. Almost every year since its inception, Lismore has topped the popularity list and has been the biggest selling pattern of crystal in the US and the world. But there are others among the repertoire of Ireland's most famous export that have gained their own following - Alana, Carina, Araglin.

Waterford Crystal has become almost a synonym for the finest quality crystal sought after by collectors and connoisseurs around the world. Each piece of Waterford can be recognized by the signature on the base with the word "Waterford", the name of the finest crystal in the world.

The Trademark Company

How to Conduct a 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 in 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

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

How to Select a Great Trademark

Our clients often ask us for suggestions in selecting a Trademark for their products or services. Our response to the question "How do I select a great trademark?" is always the same – "It Depends."

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

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

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

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

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

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

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

The Trademark Company

IP Law 101: A Start-Up's Guide to 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