We are often asked by our customers whether they can register a trademark and then use that registered trademark to force someone else to stop using the same. The answer, it depends.
Many fail to understand how trademark rights are acquired. In general you can acquire trademark rights in one of two ways: (1) use; and/or (2) filing.
First, simply by using a trademark in commerce an entity acquires rights in that trademark in connection with the goods or services with which it is used.
Second, whether or not a trademark is in use you may also acquire rights in the trademark by filing and subsequently registering the same with the U.S. Patent and Trademark Office.
As such, merely registering a trademark with the U.S. Patent and Trademark Office will not give you superior rights to a trademark over another if that other used the trademark in commerce prior to your use or filing of the same with the U.S. Patent and Trademark Office.
So the determination of who retains priority of use in a trademark dispute is often a complex factual analysis. You cannot merely assume that if you were the first to register a trademark you actually have superior rights to all others in that trademark. Due diligence must still be conducted to make sure your use date or filing date predates the other party sufficient to secure your priority of use and, accordingly, superior rights in a mark.
The Trademark Company
Tuesday, November 29, 2011
Monday, November 28, 2011
Your Trademark is Your Business’s Most Important Asset – Protect It!
What’s in a name? Everything.
We know that when we pop open a can of Coca Cola no matter if you are in Los Angeles or New York you know that you are moments away from that sugary sweet refreshment. Why? Because the trademark on the can tells us so.
When we walk into a McDonalds in Dallas we know they are going to serve us the same delicious Big Mac that we would get in Chicago. Why? Because the trademark on the sign – those famous golden arches – tells us so.
These companies have built their brands, and their products’ identities, on their trademarks. The entirety of your efforts in building your business and a consumer following can be taken away in an instant if consumers can no longer find your brand, your trademark. How can this happen?
Well for one thing if you do not clear use of your trademark before beginning use of the same you could be sued for infringement by another. If they win, they can force you to stop use of your brand altogether – even after years of brand development.
So whether or not you have the greatest product or service in the world it is nothing if consumers can’t find you, if you are forced to change your name after years of effort building your trademark’s brand recognition.
What should you do? You should always protect your trademarks. Conduct clearance reports before using new trademarks. Always register your brand names, slogans, and other matter which can be protected.
If not one day they could be taken away from you and your company’s biggest asset – its recognition among consumers – could become a thing of the past.
The Trademark Company
We know that when we pop open a can of Coca Cola no matter if you are in Los Angeles or New York you know that you are moments away from that sugary sweet refreshment. Why? Because the trademark on the can tells us so.
When we walk into a McDonalds in Dallas we know they are going to serve us the same delicious Big Mac that we would get in Chicago. Why? Because the trademark on the sign – those famous golden arches – tells us so.
These companies have built their brands, and their products’ identities, on their trademarks. The entirety of your efforts in building your business and a consumer following can be taken away in an instant if consumers can no longer find your brand, your trademark. How can this happen?
Well for one thing if you do not clear use of your trademark before beginning use of the same you could be sued for infringement by another. If they win, they can force you to stop use of your brand altogether – even after years of brand development.
So whether or not you have the greatest product or service in the world it is nothing if consumers can’t find you, if you are forced to change your name after years of effort building your trademark’s brand recognition.
What should you do? You should always protect your trademarks. Conduct clearance reports before using new trademarks. Always register your brand names, slogans, and other matter which can be protected.
If not one day they could be taken away from you and your company’s biggest asset – its recognition among consumers – could become a thing of the past.
The Trademark Company
Wednesday, November 16, 2011
You Can’t Register Generic Terms as Trademarks So Stop Trying
Many of our customers come to us trying to register trademarks that are generic terms for some good or service. Often the feeling is that if they register the term they will then be able to force others to license back the rights to use their “trademark”.
But among other issues with this business model is the U.S. Patent and Trademark Office’s prohibition against the registration of generic terms. In short, the U.S. Patent and Trademark Office will not register a trademark that so describes the class of goods or services for which it is used as to be considered one in the same (e.g., SHOES for shoes, RESTAURANT for a restaurant).
This issue was recently brought to the forefront of the national media by Apple’s attempt to register APP STORE. Their competitor, and long-time rival Microsoft, effectively blocked the registration of the trademark by arguing that it was generic for online retail store services that sell mobile applications for hand-held devices. Had they been unsuccessful Apple may have been able to claim exclusive rights to the term APP STORE forcing others to license the rights to use the same and, even worse, precluding others from using the terms altogether.
What does this teach us? You can’t register generic trademarks.
If the “trademark” you are attempting to register is the commonly known name for the good or service than it is generic and cannot be registered with the U.S. Patent and Trademark Office.
You are better of selecting a mark that does not immediately convey the purpose, a characteristic, or something otherwise descriptive of your goods – in other words an inherently distinctive trademark – and then spend your efforts building your brand. You’ll be glad that you did.
The Trademark Company
But among other issues with this business model is the U.S. Patent and Trademark Office’s prohibition against the registration of generic terms. In short, the U.S. Patent and Trademark Office will not register a trademark that so describes the class of goods or services for which it is used as to be considered one in the same (e.g., SHOES for shoes, RESTAURANT for a restaurant).
This issue was recently brought to the forefront of the national media by Apple’s attempt to register APP STORE. Their competitor, and long-time rival Microsoft, effectively blocked the registration of the trademark by arguing that it was generic for online retail store services that sell mobile applications for hand-held devices. Had they been unsuccessful Apple may have been able to claim exclusive rights to the term APP STORE forcing others to license the rights to use the same and, even worse, precluding others from using the terms altogether.
What does this teach us? You can’t register generic trademarks.
If the “trademark” you are attempting to register is the commonly known name for the good or service than it is generic and cannot be registered with the U.S. Patent and Trademark Office.
You are better of selecting a mark that does not immediately convey the purpose, a characteristic, or something otherwise descriptive of your goods – in other words an inherently distinctive trademark – and then spend your efforts building your brand. You’ll be glad that you did.
The Trademark Company
Tuesday, November 8, 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 WIDGET 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 WIDGET 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
Monday, November 7, 2011
3 Reasons Why You Should Perform a Trademark Clearance Search for Your Trademarks
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
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
Thursday, November 3, 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
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