How much does it cost to receive a U.S. Trademark Registration? Here is what you need to know about the costs involved in registering a trademark in the U.S.
The ETEAS and ETEAS PLUS Systems
The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration. Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.
The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered. For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25. If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.
We’ll explain below what “per class” means.
As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system. The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process. In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.
Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.
U.S. Filing Fees Are Per Class
Next, applicants should understand that the USPTO’s filing fees are per class. U.S. Trademark Registrations are goods or services specific. This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.
For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.
There are currently 45 classes of goods and services recognized by the USPTO. Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.
As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:
Class 9: Pre-recorded music CDs.
Class 41: Live performances by a music band.
If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class). In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).
As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.
The Distinction Between Use and Intent-to-Use Applications
Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a). However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use application under Section 1(b). If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.
In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.
The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use. This subsequent filing, however, requires an additional charge of $100 per class of goods and services.
Accordingly, if you have a 2-class intent-to-use application filed under the TEAS system the fees to register the mark would look something like this:
Application Fee = $650 (2 x $325);
Statement of Use Fee = $200 (2 x $100);
Total Fees to Register a 2-Class Intent-to-Use Application = $850.
But it does not end here. We mentioned above that to file the Statement of Use costs $100 per class. Of note, from the date of the Notice of Allowance an applicant has only 6 months to file their Statement of Use establishing use of the mark. If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use. An extension of time to file the Statement of Use costs $150 per class. An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.
So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance. Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance. Under that scenario the same would look something like this:
Application Fee = $650 (2 x $325);
Extension of Time in Which to File Statement of Use = $300 (2 x $150);
Statement of Use Fee = $200 (2 x $100);
Total Fees to Register a 2-Class Intent-to-Use
Application with One Extension of Time = $1150.
As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.
Law Firms and Filing Services
Lastly, we would be remiss if we did not mention the cost of assistance in the trademark filing process. The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.
The obvious expense to using a law firm or filing service is the additional costs involved in employing the same. The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.
Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.
Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.
Summary
In conclusion, there is much to know about the costs involved in filing for a trademark. Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application. Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.
Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system. However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.
In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process. In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).
TheTrademarkCompany.com
Friday, April 29, 2011
Thursday, April 28, 2011
Police Your Trademarks!
Police your trademarks against infringement. When you have a successful product or service, it is inevitable that others will try to reap the benefit of the associated goodwill that you have developed. For example, competitors may try to imitate your company’s name, the name of the product, or even the colors of packaging and marketing materials. You must do something if you know an infringer is using your mark or a confusingly similar mark. If you allow others to use your mark, over time the mark may lose its ability to indicate origin and become unenforceable
As part of your trademark enforcement program, you should consider having a commercial watch service like those provided by The Trademark Company monitor at least your most valuable trademarks.
The Trademark Company
As part of your trademark enforcement program, you should consider having a commercial watch service like those provided by The Trademark Company monitor at least your most valuable trademarks.
The Trademark Company
Wednesday, April 27, 2011
Top Tips on Proper Use of Trademark Designations
You can use the symbols TM for trademark or SM for service mark to indicate that you are claims rights to the marks without having federal registration.
The Federal Registration Symbol ® can only be used after the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol ®may not be used before the mark has actually become registered.
Also, and we have been seeing more of this of late - major corporations are moving towards not only using the ® designations but also using subscript phrases next to their registered marks stating simply "Registered Trademark" or "Trademark Registered".
So use the symbol or word designation that best fits your mark and model knowing you can use the superscript TM for trademark or SM for service mark at any time but must wait until your mark is registered to use the ® designation.
The Trademark Company
The Federal Registration Symbol ® can only be used after the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol ®may not be used before the mark has actually become registered.
Also, and we have been seeing more of this of late - major corporations are moving towards not only using the ® designations but also using subscript phrases next to their registered marks stating simply "Registered Trademark" or "Trademark Registered".
So use the symbol or word designation that best fits your mark and model knowing you can use the superscript TM for trademark or SM for service mark at any time but must wait until your mark is registered to use the ® designation.
The Trademark Company
Tuesday, April 26, 2011
Who Owns Your Trademark? What Your Company or Partnership Needs to Know.
Last week we had a new case come in the door which was somewhat rare for us. Most of the cases we see involve two different companies with two marks that may, or may not, be similar to one another. Somebody sues somebody for infringement. Somebody wins. Somebody loses. The end.
But the new case we have involves a question which goes to the very core of trademark rights: Who owns a trademark when it is developed in the course of a business or partnership.
Why is this important? Let’s say you and your partner start a business. As you do not want to be bogged down with legal stuff there is no writing that defines the “partnership.” At the onset you and your partner, old roommates from college, cannot image a day when you will no longer be working together in blissful harmony.
While strategizing over the future brand name and in an amazing act of coincidence you both simultaneously blurt out that “Our product should be called” and state the exact same trademark. Great! There won’t be any problems naming the product. But as sales grow, interests diverge, and you find yourself wanting to take the company in a completely different direction than your old roommate. You amicably part ways with your “partner” and begin preparation for continuing the business under the mark and brand you have both built. The only problem – so does he.
Suddenly it hits you – who owns the mark? We are writing today because this issue has now crossed our proverbial desks 3 times in one week. As such, we wanted to get some information out to the public on how to deal with these issues. So here are a few tips on who owns the mark and how to protect your interests therein.
Rule No. 1: If it is Not in Writing it Does Not Exist
First and foremost, every business should have everything in writing. Corporation, partnership or otherwise make sure there is a writing and one which, in particular, discusses the ownership of the assets of the corporation or partnership and how they are to be treated in the case of the dissolution of the corporation or partnership or otherwise. Memories and oral agreements fade over time. A writing persists. So get it in writing. Otherwise at the end of any relationship you may be left arguing he said / she said over critical business assets.
Some common events that should be addresses are who owns the assets, the intellectual property assets, what happens should the company, principals or partners file for bankruptcy (corporate and individual), what occurs when one but not all principals leave the business, as what happens should one of the principals or shareholders move on to the great beyond.
Rule No. 2: Contributions and Assets
If you contribute it make sure you know what happens to it. Specifically, let’s say your partnership is to be formed with two other individuals. One brings cash. One brings market savvy. One brings an existing trademark. What happens to the ownership of the trademark if the business dissolves. Spell it out at the beginning. Do not wait for litigation over who owns what. If you bring the trademark or come up with it and it is your contribution, consider adding a provision that the trademark is an asset that leaves when you do or that you have a right of first refusal on the same, etc. The important thing is not what exactly you negotiate with your prospective business owners. Rather the important thing is a recognition that you need to address this going into the deal.
Rule No. 3: Work for Hire
Also, who owns the trademarks, etc. that are created by your employees for your business while they are on the job?
As a general rule these works for hire are owned by the employer. However, make sure that their employment agreement specifically states that all intellectual property created for the business or partnership in the course of their employment is the property of the business or partnership. Thus, when they leave and try to take a brand with them they are contractually not permitted to do so.
So hopefully these scenarios are never a concern in your business. However, an ounce of legal prevention can go a long way in making sure that your brand stays just that: YOURS!
As always, if you have any questions or if we may be of service just let us know.
The Trademark Company
But the new case we have involves a question which goes to the very core of trademark rights: Who owns a trademark when it is developed in the course of a business or partnership.
Why is this important? Let’s say you and your partner start a business. As you do not want to be bogged down with legal stuff there is no writing that defines the “partnership.” At the onset you and your partner, old roommates from college, cannot image a day when you will no longer be working together in blissful harmony.
While strategizing over the future brand name and in an amazing act of coincidence you both simultaneously blurt out that “Our product should be called” and state the exact same trademark. Great! There won’t be any problems naming the product. But as sales grow, interests diverge, and you find yourself wanting to take the company in a completely different direction than your old roommate. You amicably part ways with your “partner” and begin preparation for continuing the business under the mark and brand you have both built. The only problem – so does he.
Suddenly it hits you – who owns the mark? We are writing today because this issue has now crossed our proverbial desks 3 times in one week. As such, we wanted to get some information out to the public on how to deal with these issues. So here are a few tips on who owns the mark and how to protect your interests therein.
Rule No. 1: If it is Not in Writing it Does Not Exist
First and foremost, every business should have everything in writing. Corporation, partnership or otherwise make sure there is a writing and one which, in particular, discusses the ownership of the assets of the corporation or partnership and how they are to be treated in the case of the dissolution of the corporation or partnership or otherwise. Memories and oral agreements fade over time. A writing persists. So get it in writing. Otherwise at the end of any relationship you may be left arguing he said / she said over critical business assets.
Some common events that should be addresses are who owns the assets, the intellectual property assets, what happens should the company, principals or partners file for bankruptcy (corporate and individual), what occurs when one but not all principals leave the business, as what happens should one of the principals or shareholders move on to the great beyond.
Rule No. 2: Contributions and Assets
If you contribute it make sure you know what happens to it. Specifically, let’s say your partnership is to be formed with two other individuals. One brings cash. One brings market savvy. One brings an existing trademark. What happens to the ownership of the trademark if the business dissolves. Spell it out at the beginning. Do not wait for litigation over who owns what. If you bring the trademark or come up with it and it is your contribution, consider adding a provision that the trademark is an asset that leaves when you do or that you have a right of first refusal on the same, etc. The important thing is not what exactly you negotiate with your prospective business owners. Rather the important thing is a recognition that you need to address this going into the deal.
Rule No. 3: Work for Hire
Also, who owns the trademarks, etc. that are created by your employees for your business while they are on the job?
As a general rule these works for hire are owned by the employer. However, make sure that their employment agreement specifically states that all intellectual property created for the business or partnership in the course of their employment is the property of the business or partnership. Thus, when they leave and try to take a brand with them they are contractually not permitted to do so.
So hopefully these scenarios are never a concern in your business. However, an ounce of legal prevention can go a long way in making sure that your brand stays just that: YOURS!
As always, if you have any questions or if we may be of service just let us know.
The Trademark Company
Monday, April 25, 2011
Use Your Registered Trademark to Get a Google Monopoly!
Want to know a quick and easy way to get a search monopoly on the world’s most powerful search engine? It’s easier than you think. In short, register your registered trademarks with Google and the other major search engines and they won’t let anyone else bid on your registered trademarks in their pay-per-click advertising services EXCEPT YOU!
Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.
Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.
The Trademark Company
Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.
Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.
The Trademark Company
Friday, April 22, 2011
Trademark Fast Fact: Remember to Keep Your Contact Info Up To Date with the USPTO
From time to time we are presented with issues created when our clients change addresses, phone numbers, or email addresses and then do not update the United States Patent and Trademark Office ("USPTO") with these changes.
As a reminder, if you or your company retains registered trademarks with the USPTO it is your responsibility to keep the USPTO advised of any address changes which may occur. If you do not, official correspondence such as challenges to the continued registration of your mark, notice(s) of abandonment, or otherwise, may never reach you.
So remember, to maintain your registrations make sure to keep the USPTO advised of any change in your contact information. This will make sure you receive all notices regarding your marks and could save significant sums if you fail to timely respond to official notices concerning your marks.
The Trademark Company
As a reminder, if you or your company retains registered trademarks with the USPTO it is your responsibility to keep the USPTO advised of any address changes which may occur. If you do not, official correspondence such as challenges to the continued registration of your mark, notice(s) of abandonment, or otherwise, may never reach you.
So remember, to maintain your registrations make sure to keep the USPTO advised of any change in your contact information. This will make sure you receive all notices regarding your marks and could save significant sums if you fail to timely respond to official notices concerning your marks.
The Trademark Company
Thursday, April 21, 2011
3 Types of Lesser-Known Trademarks That Can Help You Protect Your Business
We generally recognize that a trademark is any word, slogan, or symbol used to identify the source of goods or services used therewith. McDonalds for restaurant services, the Nike “swoosh” for shoes, and the iconic apple for, what else, computers. But did you know that you also can protect colors as trademarks? Sounds? And even the overall look and feel of a business? You can, and here’s how.
1. Trade Dress
Trade dress is a type of trademark that generally protects characteristics of the visual appearance of a product, its packaging, or even the overall look and feel of a business so long as it signifies the source of the product to consumers.
What can be considered trade dress you may ask? We’ll let’s look at some examples:
A. Product Design
The design of product packaging can be registered as a trademark provided that the packaging identifies the source of the product and is not attempting to be registered to protect some functional element of the packaging (that would be a patent). The best example of this we know of is the shape of a Coca Cola bottle. Everyone recognizes the hour-glass looking design as containing that little slice of heaven from those folks from Atlanta. So when you see the design of the traditional Coca Cola bottle and you recognize it as the bottle in which Coca Cola provides its product, that is the perfect example of packaging which functions as trade dress and, correspondingly may be protected by a Trademark Registration.
B. Color Schemes
Color schemes of restaurants as well as similar features of businesses can also be protected as trade dress under U.S. Trademark Laws. For instance, if you have been operating a uniquely designed or themed restaurant or business for some time and then begin to franchise the same the color scheme and other elements of your business may be protectable as trade dress. For instance, on the East Coast we have a restaurant franchise that is expanding rapidly called Five Guys. Five Guys offers great burgers and fries. For our purposes today, however, it is important to know that no matter how the restaurants appear on the outside they all have one common theme on inside: red and white checkerboard tile walls. So when you walk into the restaurant, even if you did not see the sign on the front of the building telling you that you are in a Five Guys, you know that those red and white checkerboard tiles mean that you are about to have a bacon double cheeseburger with a side of double-fried french fries like no other. You know you are in a Five Guys. And if you know this merely by looking at the color scheme on the walls that is the fundamental point of trade dress protection.
C. Overall Appearance
Additionally, and drawing upon the above, an overall appearance of a trademark used in connection with a product or service can be protected. This is where trade dress gets a little broad and often difficult to digest. But for our purposes we’ve talked about color schemes and package designs. The law has also been used to extend to generally recognized images and manners of presentation as well. We think the ongoing story of the Naked Cowboy best captures this concept.
For any of you who have been to New York City in the past decade or so there is symbol of America right in Times Square that cannot be missed. The ball that drops every year at the stroke of midnight you may ask? No. The giant billboards and flashing neon and LED screens 30 stories high? Nope. We are talking about Robert John Burck, aka - the Naked Cowboy.
Since 1997 the chiseled and tanned Naked Cowboy has strolled through Times Square wearing nothing but a pair of white briefs, white boots, matching cowboy hat, guitar and a smile singing to tourists and posing for photographs. Like the U.S. Postal Services’ age-old motto neither rain nor sleet nor dark of night can stop the Naked Cowboy. You can catch him strolling through Times Square during the dog days of summer through the coldest days of winter – all still in his iconic skimpy manner of dress.
A few years back Mars, Inc., the owners of the M&M brand of candies, opened M&M World in Times Square. As the popularity of the Naked Cowboy grew Mars thought it would be a great marketing ploy to parody the Naked Cowboy with a Times Square billboard of one of their M&M characters dressed in white briefs, white boots, the white cowboy hat and white guitar. Well the Naked Cowboy wasn’t down with that tune. He sued. And guess what? He won (or at least won a settlement). In short, his lawyers argued and convinced Mars that the Naked Cowboy’s overall likeness and image was protectable and, accordingly, by posting the billboard Mars was infringing upon the Naked Cowboy’s trademark – and trade dress - rights.
So as the Naked Cowboy teaches us even the overall appearance of a performer or otherwise can be protected as trade dress if that overall appearance has sufficient recognition value.
A post script to this example, as of press time it has been reported that the Naked Cowboy is now enforcing his rights against a performer who has materialized and is calling herself the Naked Cowgirl. Given that he has already enforced his trade dress against one of the world’s largest candy manufacturers, our recommendation to the Naked Cowgirl: get outta Dodge.
2. Colors
Another form of trademark protection can be found in the ability to protect colors. Not color schemes as above. Just colors.
There is perhaps no better example of this in recent times then UPS’s attempts to register the color brown in connection with shipping services. In the early 2000s UPS determined that it wanted to lock up the color brown. The U.S. Patent and Trademark Office initially denied their efforts.
Ultimately it was held that a business can protect a mere color as a trademark, but only if it can show substantial evidence of acquired distinctiveness in the color as a trademark. In other words when consumers see a specific color they think of your goods or services. That’s why, for the past several years, UPS has run the ad campaign “What Can Brown do for you?” They are ingraining in the minds of the consumer that when they see the color brown they think about UPS’s shipping services.
So you can protect merely a color, but it will cost you a lot of green.
3. Sound Marks
Lastly did you know you can protect sounds as trademarks? It’s true. The rumble of a Harley Davidson. The “Bum ….. bum bum bum bum” of Intel. Even the message alert sound of plane that Southwest Airlines uses in its commercials. These can all be protected as trademarks provided, as above, the trademark holder can show that in the minds – and in this case ears – of the consuming public when they hear that specific sound they think of the specific company’s goods or services.
Conclusion
So why do these matter? In protecting your brand identity people are often constrained to thinking about protectable trademarks as being merely a slogan, a logo, or a company’s name. But as we see above, a Trademark Registration can extend to protect a whole host of other things that consumers use to identify the source of a product or service.
So if you are a performer with a unique image and persona, a business that uses a specific pattern of décor or layout, or package your product in a unique package design that your competitors love to imitate remember the U.S. Trademark Laws are here to help you protect these signature trademarks as well.
The Trademark Company
1. Trade Dress
Trade dress is a type of trademark that generally protects characteristics of the visual appearance of a product, its packaging, or even the overall look and feel of a business so long as it signifies the source of the product to consumers.
What can be considered trade dress you may ask? We’ll let’s look at some examples:
A. Product Design
The design of product packaging can be registered as a trademark provided that the packaging identifies the source of the product and is not attempting to be registered to protect some functional element of the packaging (that would be a patent). The best example of this we know of is the shape of a Coca Cola bottle. Everyone recognizes the hour-glass looking design as containing that little slice of heaven from those folks from Atlanta. So when you see the design of the traditional Coca Cola bottle and you recognize it as the bottle in which Coca Cola provides its product, that is the perfect example of packaging which functions as trade dress and, correspondingly may be protected by a Trademark Registration.
B. Color Schemes
Color schemes of restaurants as well as similar features of businesses can also be protected as trade dress under U.S. Trademark Laws. For instance, if you have been operating a uniquely designed or themed restaurant or business for some time and then begin to franchise the same the color scheme and other elements of your business may be protectable as trade dress. For instance, on the East Coast we have a restaurant franchise that is expanding rapidly called Five Guys. Five Guys offers great burgers and fries. For our purposes today, however, it is important to know that no matter how the restaurants appear on the outside they all have one common theme on inside: red and white checkerboard tile walls. So when you walk into the restaurant, even if you did not see the sign on the front of the building telling you that you are in a Five Guys, you know that those red and white checkerboard tiles mean that you are about to have a bacon double cheeseburger with a side of double-fried french fries like no other. You know you are in a Five Guys. And if you know this merely by looking at the color scheme on the walls that is the fundamental point of trade dress protection.
C. Overall Appearance
Additionally, and drawing upon the above, an overall appearance of a trademark used in connection with a product or service can be protected. This is where trade dress gets a little broad and often difficult to digest. But for our purposes we’ve talked about color schemes and package designs. The law has also been used to extend to generally recognized images and manners of presentation as well. We think the ongoing story of the Naked Cowboy best captures this concept.
For any of you who have been to New York City in the past decade or so there is symbol of America right in Times Square that cannot be missed. The ball that drops every year at the stroke of midnight you may ask? No. The giant billboards and flashing neon and LED screens 30 stories high? Nope. We are talking about Robert John Burck, aka - the Naked Cowboy.
Since 1997 the chiseled and tanned Naked Cowboy has strolled through Times Square wearing nothing but a pair of white briefs, white boots, matching cowboy hat, guitar and a smile singing to tourists and posing for photographs. Like the U.S. Postal Services’ age-old motto neither rain nor sleet nor dark of night can stop the Naked Cowboy. You can catch him strolling through Times Square during the dog days of summer through the coldest days of winter – all still in his iconic skimpy manner of dress.
A few years back Mars, Inc., the owners of the M&M brand of candies, opened M&M World in Times Square. As the popularity of the Naked Cowboy grew Mars thought it would be a great marketing ploy to parody the Naked Cowboy with a Times Square billboard of one of their M&M characters dressed in white briefs, white boots, the white cowboy hat and white guitar. Well the Naked Cowboy wasn’t down with that tune. He sued. And guess what? He won (or at least won a settlement). In short, his lawyers argued and convinced Mars that the Naked Cowboy’s overall likeness and image was protectable and, accordingly, by posting the billboard Mars was infringing upon the Naked Cowboy’s trademark – and trade dress - rights.
So as the Naked Cowboy teaches us even the overall appearance of a performer or otherwise can be protected as trade dress if that overall appearance has sufficient recognition value.
A post script to this example, as of press time it has been reported that the Naked Cowboy is now enforcing his rights against a performer who has materialized and is calling herself the Naked Cowgirl. Given that he has already enforced his trade dress against one of the world’s largest candy manufacturers, our recommendation to the Naked Cowgirl: get outta Dodge.
2. Colors
Another form of trademark protection can be found in the ability to protect colors. Not color schemes as above. Just colors.
There is perhaps no better example of this in recent times then UPS’s attempts to register the color brown in connection with shipping services. In the early 2000s UPS determined that it wanted to lock up the color brown. The U.S. Patent and Trademark Office initially denied their efforts.
Ultimately it was held that a business can protect a mere color as a trademark, but only if it can show substantial evidence of acquired distinctiveness in the color as a trademark. In other words when consumers see a specific color they think of your goods or services. That’s why, for the past several years, UPS has run the ad campaign “What Can Brown do for you?” They are ingraining in the minds of the consumer that when they see the color brown they think about UPS’s shipping services.
So you can protect merely a color, but it will cost you a lot of green.
3. Sound Marks
Lastly did you know you can protect sounds as trademarks? It’s true. The rumble of a Harley Davidson. The “Bum ….. bum bum bum bum” of Intel. Even the message alert sound of plane that Southwest Airlines uses in its commercials. These can all be protected as trademarks provided, as above, the trademark holder can show that in the minds – and in this case ears – of the consuming public when they hear that specific sound they think of the specific company’s goods or services.
Conclusion
So why do these matter? In protecting your brand identity people are often constrained to thinking about protectable trademarks as being merely a slogan, a logo, or a company’s name. But as we see above, a Trademark Registration can extend to protect a whole host of other things that consumers use to identify the source of a product or service.
So if you are a performer with a unique image and persona, a business that uses a specific pattern of décor or layout, or package your product in a unique package design that your competitors love to imitate remember the U.S. Trademark Laws are here to help you protect these signature trademarks as well.
The Trademark Company
Wednesday, April 20, 2011
How to Keep Your Trade Secrets Secret.
Today as we welcome several new employees to our company we are reminded of the need to keep confidential trade secret materials confidential and secret. It may sound simple, but it is often overlooked in the protection of one’s intellectual property assets.
Beyond trademarks, your proprietary business systems, manuals, and other plans that make your business uniquely yours should be kept just that – as a trade secret divulged to new employees only once they acknowledge and promise to keep the same exclusively your business’s. Make sure you have policies in place that ensure that all employees, new and old, acknowledge and understand that your proprietary business systems are just that – proprietary.
Failure to do so may leave your company with little or no recourse to prevent unrestricted use of this most valuable information by those who obtain a copy of it.
The Trademark Company
Beyond trademarks, your proprietary business systems, manuals, and other plans that make your business uniquely yours should be kept just that – as a trade secret divulged to new employees only once they acknowledge and promise to keep the same exclusively your business’s. Make sure you have policies in place that ensure that all employees, new and old, acknowledge and understand that your proprietary business systems are just that – proprietary.
Failure to do so may leave your company with little or no recourse to prevent unrestricted use of this most valuable information by those who obtain a copy of it.
The Trademark Company
Tuesday, April 19, 2011
3 Things to Consider Before Filing a Domain Name Dispute
We are often asked what our customers can do when someone else begins use of a domain name that is similar to their trademark(s) and, as a result, web site traffic – and business along with it – is being stolen by a new, competing new web site. In many instances the answer is clear: Initiate a Domain Name Dispute against the owner of the new site.
How is this done? The answer is simpler than you may believe.
Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.
The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:
(1) the domain name is identical or confusingly similar to your trademark;
(2) the domain name owner 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.
Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:
(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.
(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.
(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.
As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.
The Trademark Company
How is this done? The answer is simpler than you may believe.
Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.
The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:
(1) the domain name is identical or confusingly similar to your trademark;
(2) the domain name owner 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.
Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:
(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.
(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.
(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.
As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.
The Trademark Company
Monday, April 18, 2011
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
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
Wednesday, April 13, 2011
IP Law 101: What a Start-Up Needs to Know About the 3 Types of IP Rights
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
Tuesday, April 12, 2011
The Relationship Between Trademarks and Domain Names
We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses. Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.
Registration of a Domain name is Not Trademark Use
As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.
Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not. Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.
Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.
Cybersquatting
Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.
There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).
Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;
2. The registrant does not have any rights or legitimate interests in the domain name; and
3. The registrant registered the domain name and is using it in "bad faith."
In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:
a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and
d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.
The UDRP and Its Remedies
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.
In short, if you register a domain name with one of these TLDs, you are subject to the policy.
Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.
Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.
One significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.
The ACPA and Its Remedies
The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.
Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.
However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.
Summary
So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.
The Trademark Company
Registration of a Domain name is Not Trademark Use
As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.
Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not. Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.
Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.
Cybersquatting
Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.
There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).
Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;
2. The registrant does not have any rights or legitimate interests in the domain name; and
3. The registrant registered the domain name and is using it in "bad faith."
In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:
a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and
d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.
The UDRP and Its Remedies
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.
In short, if you register a domain name with one of these TLDs, you are subject to the policy.
Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.
Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.
One significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.
The ACPA and Its Remedies
The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.
Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.
However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.
Summary
So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.
The Trademark Company
Monday, April 11, 2011
4 Things to Consider When Your Trademark Application is Blocked by Another Trademark
You applied for your Trademark Registration months ago. You then started to build your brand or business around this mark. You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark. Angry and confused you cannot understand why the refusal was issued. Your mark is not identical to the one blocking the registration thereof. How could this be? Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.
First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:
1. The DuPont Factors
Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:
a. The Similarity of the Appearance of the Trademarks;
b. The Similarity of the Goods or Services with which the Trademarks are used;
c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;
d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;
e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and
f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.
As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.
Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.
Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.
2. Priority of Use
In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.
In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.
If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.
Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.
3. Fraud
But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.
In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.
What, might you ask, should you look for? Some examples are as follows:
a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.
b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.
In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.
c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.
As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.
4. Abandonment / Discontinued Use
One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.
From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.
Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.
The Trademark Company
Monday, April 4, 2011
3 Tips for Posting Your Legal Questions in Open Internet Forums
As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.
The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.
Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.
Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:
1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.
2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)
3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.
So keep posting if you must. Just please be careful.
The Trademark Company
The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.
Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.
Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:
1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.
2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)
3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.
So keep posting if you must. Just please be careful.
The Trademark Company
Friday, April 1, 2011
Breaking News - U.S. Government Looses Trademark Battle Over Name – U.S. to be Renamed by 2011
GENEVA, SWITZERLAND - Today the World Intellectual Property Organization announced a decision holding that the United States of America has lost a long standing battle over its naming rights to a contingency of South American countries who have, for years, claimed they owned rights to the country's valuable albeit tarnished global brand.
“We are thrilled with the decision of the international body,” said Venezuelan President Hugo Chavez. “No longer will the world be fooled by the pretender that was the old United States! They will be fooled by an entirely new United States!” he added.
The dispute centers around a 1597 Treaty between what are today known as Venezuela, Peru, and Columbia and the Spanish Empire. Following years of occupation Spain entered into the treaty known as Tonto Abril whereby the Spanish troops were pulled from these territories under the condition that they remain under the rule of a centralized governor who titled the territory Los Estados Unidos or The United States.
Due to a pre-scheduled afternoon siesta the President of Spain, Rodriguez Zapatero, was not immediately available for comment.
Speaking to the Press President Obama expressed cautioned remorse about the World Court’s decision.
“We are disheartened with today’s decision” said President Obama. “But with every end, brings a new beginning. We have hope. Hope for change.” He added, “And besides, with the way we’ve been running this place the past few years renaming the country may not be such a bad idea.”
The next step in the process will be a massive renaming campaign to figure out what our nation will be called. Constitutional scholars are already working feverishly to determine how the renaming of the country will occur. Some have already set forth theories that a Constitutional Amendment is needed to rename the country named in the original Declaration of Independence. Others have suggested a special election during the November mid-terms to see what can be done.
Early names that have surfaced as potential successors are Middle Earth, The Real America, and America 2 – Electric Bugaloo.
“I am simply not sure what the future holds for us now” said Speaker of the House John Boehner. “I mean we had always wanted to remake America … but this is not exactly what we had in mind.” “In conclusion” he added “We just want everyone to enjoy this last April Fools Day as the United States of America.”
Happy April Fools Day to All.
The Trademark Company
“We are thrilled with the decision of the international body,” said Venezuelan President Hugo Chavez. “No longer will the world be fooled by the pretender that was the old United States! They will be fooled by an entirely new United States!” he added.
The dispute centers around a 1597 Treaty between what are today known as Venezuela, Peru, and Columbia and the Spanish Empire. Following years of occupation Spain entered into the treaty known as Tonto Abril whereby the Spanish troops were pulled from these territories under the condition that they remain under the rule of a centralized governor who titled the territory Los Estados Unidos or The United States.
Due to a pre-scheduled afternoon siesta the President of Spain, Rodriguez Zapatero, was not immediately available for comment.
Speaking to the Press President Obama expressed cautioned remorse about the World Court’s decision.
“We are disheartened with today’s decision” said President Obama. “But with every end, brings a new beginning. We have hope. Hope for change.” He added, “And besides, with the way we’ve been running this place the past few years renaming the country may not be such a bad idea.”
The next step in the process will be a massive renaming campaign to figure out what our nation will be called. Constitutional scholars are already working feverishly to determine how the renaming of the country will occur. Some have already set forth theories that a Constitutional Amendment is needed to rename the country named in the original Declaration of Independence. Others have suggested a special election during the November mid-terms to see what can be done.
Early names that have surfaced as potential successors are Middle Earth, The Real America, and America 2 – Electric Bugaloo.
“I am simply not sure what the future holds for us now” said Speaker of the House John Boehner. “I mean we had always wanted to remake America … but this is not exactly what we had in mind.” “In conclusion” he added “We just want everyone to enjoy this last April Fools Day as the United States of America.”
Happy April Fools Day to All.
The Trademark Company
Subscribe to:
Posts (Atom)
