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

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

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

4 Things to Consider When Your Trademark Application is Refused based upon A Likelihood of Confusion with Another Mark

You applied for your Trademark Registration months ago. You then started to build your brand or business around this mark. You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark. Angry and confused you cannot understand why the refusal was issued. Your mark is not identical to the one blocking the registration thereof. How could this be? Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.

Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.

First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:

1. The DuPont Factors

Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:

a. The Similarity of the Appearance of the Trademarks;

b. The Similarity of the Goods or Services with which the Trademarks are used;

c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;

d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;

e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and

f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.

As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.

Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.

Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.

2. Priority of Use

In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.

In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.

If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.

Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.

Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.

3. Fraud

But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.

In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.

What, might you ask, should you look for? Some examples are as follows:

a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.

b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.

In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.

c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.

As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.

4. Abandonment / Discontinued Use

One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.

From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.

Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.

The Trademark Company

5 Things Every Business Should Know About Trademarks

We are often asked what is a trademark, do I have to register it before I use it, and other rather straightforward questions about mark usage in the U.S. and abroad. In our experience here are five (5) simple facts every business owner should know about trademarks:

1. What is a Trademark?

A trademark includes any word, name, symbol, or device used in commerce to identify 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 a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.

2. Can I Reserve a Trademark Before I Use It?

Yes. A trademark can be "reserved" with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.

3. Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?

Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.

4. Do I Have To Register a Trademark to Use a Trademark?

No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:

* Constructive notice nationwide of your claim of ownership of a trademark;
* Evidence of ownership of the trademark;
* Jurisdiction of federal courts to Enforce a Trademark may be invoked;
* Registration can be used as a basis for obtaining Registration in Foreign
Countries;
* Registration may be filed with U.S. Customs Service to prevent importation of
infringing foreign goods.

5. Is a U.S. Federal Registration Valid Outside the U.S.?

A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.

The Trademark Company