3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark
We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.
1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable
First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.
A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.
2. Don’t Develop a Brand You May Be Forced to Give Up
Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.
Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.
So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”
You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.
Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.
After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.
3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark
Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.
Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.
But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.
Conclusion
So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.
The Trademark Company
Tuesday, May 31, 2011
Thursday, May 26, 2011
4 Things Every Trademark Owner Should Know About Monitoring Their Trademark(s)
If you are a trademark owner did you know that to maintain rights in your mark you are required to police the use thereof?
Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.
In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.
Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:
1. USPTO.gov
The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).
For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.
2. Search Engines & Google Alerts
Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.
In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).
Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.
Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.
Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.
Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.
3. RSS Feeds & Twitter
Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.
To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.
4. State Trademark and Corporate Databases
One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.
There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.
As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.
The Trademark Company
Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.
In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.
Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:
1. USPTO.gov
The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).
For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.
2. Search Engines & Google Alerts
Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.
In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).
Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.
Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.
Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.
Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.
3. RSS Feeds & Twitter
Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.
To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.
4. State Trademark and Corporate Databases
One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.
There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.
As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.
The Trademark Company
Friday, May 20, 2011
The Trademark Company Selected For "Top Trademark Firms"
The Trademark Company of Vienna, VA USA has been honored with a recognition by Intellectual Property Today in its selection of "Top Trademark Firms" for 2011.
The Trademark Company's spokesperson, Matthew Swyers, commented on the recognition:
"This is quite an honor for us. Since Intellectual Property Today chose only a select number of organizations for their Top Trademark Firms list, we are especially proud to have made the grade. Our inclusion signals that our constant effort to deliver excellent work and customer service has paid off. It is gratifying and exciting to be recognized in this way."
For more information on The Trademark Company or any of its services call (800) 906-8626 or visit them online at TheTrademarkCompany.com.
This press release was written by American Registry, LLC on behalf of The Trademark Company and was distributed by PRNewsWire, a subsidiary of United Business Media.
The Trademark Company
The Trademark Company's spokesperson, Matthew Swyers, commented on the recognition:
"This is quite an honor for us. Since Intellectual Property Today chose only a select number of organizations for their Top Trademark Firms list, we are especially proud to have made the grade. Our inclusion signals that our constant effort to deliver excellent work and customer service has paid off. It is gratifying and exciting to be recognized in this way."
For more information on The Trademark Company or any of its services call (800) 906-8626 or visit them online at TheTrademarkCompany.com.
This press release was written by American Registry, LLC on behalf of The Trademark Company and was distributed by PRNewsWire, a subsidiary of United Business Media.
The Trademark Company
Monday, May 16, 2011
When To Enforce Your Trademarks: Think Before you Act.
One of the trickiest questions we get here at The Trademark Company is the question of when should a business enforce its trademark(s) against a likely infringer? The answer, we believe, is a mix of business considerations balanced against legal principals. In short, here’s what you need to know.
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
The law says that if you do not enforce your marks against all infringement thereof you, to some degree, loose the right to do so in the future. The is primarily due to the interplay of two doctrines of law: acquiescence and laches.
Acquiescence occurs when you generally allow others to use marks similar to yours but do not enforce your rights against them. Then, if you subsequently try to enforce your mark against someone else they can claim that you have acquiesced to their use by not enforcing your mark against all. In short, enforce against all or against none.
Laches is an equitable defense that, in short, means you cannot wait to enforce your mark against a specific individual for an unreasonable period of time. Because they will rely on your not enforcing your mark against them as a license to continue using and building their mark the law says it is not fair to do so at a later date. In short, enforce it as soon as you know about the bad guy or your delay will give rise to this defense against your claims.
So the law says enforce it now or you will not be able to later. But what about business considerations? Does this mean you have to spend every last dime defending a brand you are only beginning to build? This is the toughest question of all.
On one hand, the law says you must. On the other, what’s the point of building a business if the lawyers take all the profit in enforcing your trademarks?
Well, hopefully we can provide some guidance. Although the law say enforce now we often advise our clients to take that with a grain of salt. Enforce them where it makes business sense to do so but not where it does not.
For example, one of our California clients experienced significant diminished sales (roughly 50% loss of sales per month) of its product sold exclusively online when one of their competitors started knocking off their brand. In that regard, they were loosing, let’s say $50 per month. Enforcement would cost them $40. But then in one month’s time they would be gaining back their full sales easily making enough to cover the cost of litigation and enforcement. That was a clear case for a need to enforce a mark.
In the alternative, one of our clients discovered a small mom and pop store using their name in a local community which in no way affected the sales of our larger client. Should they enforce? With no lost sales and a very tenuous argument as to whether actual confusion would really result we were hard-pressed to say that they should.
So against the legal context from above we always ask our clients one simple question: Does it Make Good Business Sense to Enforce the Mark? In time is the cost of enforcement going to be covered by the benefits of enforcement, both tangible (e.g., recoupment of lost sales) and intangible (e.g., the continued ability to enforce one’s trademark without fear of the defenses of acquiescence and laches)?
If yes, enforce it! If no, simply consider keeping an eye on the purported infringer to make sure that loss from their use never materializes.
Above all, however, make a good business decision even if tempered by an understanding of the law in play in doing so.
The Trademark Company
Tuesday, May 10, 2011
The Trademark Company Named One of the Top 3 Trademark Filers in the World
Normally we blog about various aspects of trademark law and business that our customers and trademark holders alike will deem useful and informative. Today, however, we are sharing a bit of good news about our business we are very proud to announce.
Today during an interview with The World Trademark Review we were informed that The Trademark Company will be listed as one of the top three trademark filers in the World for 2010 when the June 2011 issue of the magazine is released.
It is an honor and a pleasure to see that our commitment to our customers as well as the systems we have developed are now gaining international acclaim.
Thank you to all who have worked so hard to get us here and we look forward to an even bigger 2011 as new products and services are being developed and rolled out to assist our present and future customers in the enforcement of their valuable intellectual property.
The Trademark Company
Today during an interview with The World Trademark Review we were informed that The Trademark Company will be listed as one of the top three trademark filers in the World for 2010 when the June 2011 issue of the magazine is released.
It is an honor and a pleasure to see that our commitment to our customers as well as the systems we have developed are now gaining international acclaim.
Thank you to all who have worked so hard to get us here and we look forward to an even bigger 2011 as new products and services are being developed and rolled out to assist our present and future customers in the enforcement of their valuable intellectual property.
The Trademark Company
Wednesday, May 4, 2011
What to Do If You Receive a Cease and Desist Letter
The mail comes and you notice a letter from a law firm you do not recognize. As you open the letter you hope for the best but you are nervous in anticipation of what the letter says. You read the opening paragraph of the letter:
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”
You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.
Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.
You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.
Does this sound familiar?
Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.
Trademark Law 101
First a primer on the basics.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.
Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.
Priority of Use
With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.
Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.
In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).
Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.
With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?
Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.
But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.
As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.
Infringement Analysis
The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.
To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.
In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.
Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.
The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.
The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.
Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.
Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.
In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.
Other Defenses
There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.
First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.
Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).
If either of these two defenses is available both may strongly support a defense of any claimed infringement.
Everything You Say May Be Used Against You
Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”
While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.
You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.
For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”
In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?
So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.
Summary
In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.
Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.
Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.
Next review the infringement factors listed above. Who do they favor?
Are any other defenses available?
Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.
The Trademark Company
Tuesday, May 3, 2011
Allowing Others to Use Your Trademarks? Get it in Writing!
Whenever you or your company allows others - such as members, chapters, affiliated entities, or endorsed vendors – to use you or your company’s trademark(s), name, logos, copyrighted works, or other intellectual property, put the terms and conditions of the license in writing.
While oral or implied non-exclusive licenses can exist, they can be difficult to interpret, difficult to enforce, limiting in nature, and otherwise problematic for you or your company.
So be safe rather than sorry. There are many terms that should be included in such an agreement and competent representation can assist you in the drafting of the same. At a minimum, however, an agreement should spell out what can be used, how it is to be used, who owns the trademarks at issue and how long the same can be used or the conditions under which use must cease.
The Trademark Company
While oral or implied non-exclusive licenses can exist, they can be difficult to interpret, difficult to enforce, limiting in nature, and otherwise problematic for you or your company.
So be safe rather than sorry. There are many terms that should be included in such an agreement and competent representation can assist you in the drafting of the same. At a minimum, however, an agreement should spell out what can be used, how it is to be used, who owns the trademarks at issue and how long the same can be used or the conditions under which use must cease.
The Trademark Company
Monday, May 2, 2011
The Trademark Company Enters Phase II of Expansion Plans
We are pleased to announce that as we approach the Summer of 2011 The Trademark Company has expanded its operations to a second building in Phase II of the anticipated three-phase expansion.
We anticipate occupying the new facility by July of this year which will afford us an even greater opportunity to expand our global presence in the protection of our customers' brand identities.
The new facility will largely be dedicated to litigation services as well as housing our new server farm which will power a whole suite of innovative and proprietary software-based trademark services later this year. The expansion will then allow our rapidly-expanding Research and Applications division to occupy all of our newly acquired facility from 2010.
The Trademark Company
We anticipate occupying the new facility by July of this year which will afford us an even greater opportunity to expand our global presence in the protection of our customers' brand identities.
The new facility will largely be dedicated to litigation services as well as housing our new server farm which will power a whole suite of innovative and proprietary software-based trademark services later this year. The expansion will then allow our rapidly-expanding Research and Applications division to occupy all of our newly acquired facility from 2010.
The Trademark Company
Can You Register a Trademark Using the President's Name?
In the wake of the news last evening a wave of trademark applications will be filed by applicants seeking to register such phrases as "Obama killed Osama" and "Obama is the Greatest." Whenever newsworthy events occur surrounding the President of the United States - from an election to the direction of a military campaign - we see a swell of applications filed for by opportunistic people trying to lock up rights in a phrase or otherwise so that they may then sell t-shirts and other paraphernalia for profit.
So what's the problem with this concept? Typically their trademark applications will be refused under Section 2(c) of the Trademark Act of 1946. Section 2(c) bars the registration of a trademark that consists of or comprises (whether consisting solely of, or having incorporated in the mark) a name, portrait, or signature that identifies a particular living individual, or a deceased United States president during the life of his widow, except by the written consent of the individual or the president’s widow.
That is not to say these individuals will not be able to use their "catchy" slogan for profit. This blog entry makes no comment on the legality of such endeavor. It is merely to pass along that unless those trademark applicants have the express written consent of the President to register the trademark incorporating the President's name they may as well be throwing their trademark application money out the window. By the way - it is non-refundable.
So remember, unless you have the consent of the President to use his, and someday her, name in your trademark the U.S. Patent and Trademark Office will refuse to register your trademark no matter what the intent was behind the filing.
TheTrademarkCompany.com
So what's the problem with this concept? Typically their trademark applications will be refused under Section 2(c) of the Trademark Act of 1946. Section 2(c) bars the registration of a trademark that consists of or comprises (whether consisting solely of, or having incorporated in the mark) a name, portrait, or signature that identifies a particular living individual, or a deceased United States president during the life of his widow, except by the written consent of the individual or the president’s widow.
That is not to say these individuals will not be able to use their "catchy" slogan for profit. This blog entry makes no comment on the legality of such endeavor. It is merely to pass along that unless those trademark applicants have the express written consent of the President to register the trademark incorporating the President's name they may as well be throwing their trademark application money out the window. By the way - it is non-refundable.
So remember, unless you have the consent of the President to use his, and someday her, name in your trademark the U.S. Patent and Trademark Office will refuse to register your trademark no matter what the intent was behind the filing.
TheTrademarkCompany.com
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