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
Tuesday, March 27, 2012
Friday, March 23, 2012
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
Thursday, March 22, 2012
How Do You Acquire Rights in a Trademark. Here’s What You Need to Know.
One of the most popular questions we receive here at The Trademark Company is when do you acquire rights in a trademark?
In the United States there are two ways that you can acquire federal trademark rights. First, you can acquire rights by using the trademark in interstate commerce. Second, you can acquire rights by filing to protect the trademark with the U.S. Patent and Trademark Office.
In regard to use-based acquisition, a person or entity acquires rights in any trademark they begin use of in interstate commerce for the purpose of identifying their goods or services. In short, when McDonald's first started selling hamburgers way back when they did not have to file to protect their trademark with the U.S. Patent and Trademark Office. They acquired rights as soon as their restaurant services began affecting interstate commerce.
On the other end of the spectrum, once you file for protection of your trademark with the U.S. Patent and Trademark Office and provided that the application matures into a registration your trademark rights will revert back to the date of the filing of your trademark application.
So we truly have a two-way acquisition system here in the U.S. for trademark rights: use and filing.
Many will then ask why then should we register our trademarks? Well, for a relatively modest fee the registration of your trademarks in large part quiets title for you in the trademark, makes it far easier to enforce the same, and provides the holder thereof with a host of additional remedies in the event the trademark is ever infringed upon.
So if you are using a trademark get it registered. It will deter others from infringing upon the same and provide you with a host of additional remedies should enforcement ever be required. If you are yet to begin use of a new trademark but know what you want to use therefor file an intent-to-use application with the U.S. Patent and Trademark Office as soon as possible. You will be glad that you did.
The Trademark Company
In the United States there are two ways that you can acquire federal trademark rights. First, you can acquire rights by using the trademark in interstate commerce. Second, you can acquire rights by filing to protect the trademark with the U.S. Patent and Trademark Office.
In regard to use-based acquisition, a person or entity acquires rights in any trademark they begin use of in interstate commerce for the purpose of identifying their goods or services. In short, when McDonald's first started selling hamburgers way back when they did not have to file to protect their trademark with the U.S. Patent and Trademark Office. They acquired rights as soon as their restaurant services began affecting interstate commerce.
On the other end of the spectrum, once you file for protection of your trademark with the U.S. Patent and Trademark Office and provided that the application matures into a registration your trademark rights will revert back to the date of the filing of your trademark application.
So we truly have a two-way acquisition system here in the U.S. for trademark rights: use and filing.
Many will then ask why then should we register our trademarks? Well, for a relatively modest fee the registration of your trademarks in large part quiets title for you in the trademark, makes it far easier to enforce the same, and provides the holder thereof with a host of additional remedies in the event the trademark is ever infringed upon.
So if you are using a trademark get it registered. It will deter others from infringing upon the same and provide you with a host of additional remedies should enforcement ever be required. If you are yet to begin use of a new trademark but know what you want to use therefor file an intent-to-use application with the U.S. Patent and Trademark Office as soon as possible. You will be glad that you did.
The Trademark Company
Wednesday, March 21, 2012
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 begin 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 begin 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
Monday, March 19, 2012
When Do You Acquire Rights in a Trademark? Here’s What You Need to Know.
One of the most popular questions we receive here at The Trademark Company is when do you acquire rights in a trademark?
In the United States there are two ways that you can acquire federal trademark rights. First, you can acquire rights by using the trademark in interstate commerce. Second, you can acquire rights by filing to protect the trademark with the U.S. Patent and Trademark Office.
In regard to use-based acquisition, a person or entity acquires rights in any trademark they begin use of in interstate commerce for the purpose of identifying their goods or services. In short, when McDonald's first started selling hamburgers way back when they did not have to file to protect their trademark with the U.S. Patent and Trademark Office. They acquired rights as soon as their restaurant services began affecting interstate commerce.
On the other end of the spectrum, once you file for protection of your trademark with the U.S. Patent and Trademark Office, and provided that the application matures into a registration, your trademark rights will revert back to the date of the filing of your trademark application.
So we truly have a two-way acquisition system here in the U.S. for trademark rights: use and filing.
Many will then ask why then should we register our trademarks? Well, for a relatively modest fee the registration of your trademarks in large part quiets title for you in the trademark, makes it far easier to enforce the same, and provides the holder thereof with a host of additional remedies in the event the trademark is ever infringed upon.
So if you are using a trademark get it registered. It will deter others from infringing upon the same and provide you with a host of additional remedies should enforcement ever be required. If you are yet to begin use of a new trademark but know what you want to use it in connection with file an intent-to-use application with the U.S. Patent and Trademark Office as soon as possible. You will be glad that you did.
The Trademark Company
In the United States there are two ways that you can acquire federal trademark rights. First, you can acquire rights by using the trademark in interstate commerce. Second, you can acquire rights by filing to protect the trademark with the U.S. Patent and Trademark Office.
In regard to use-based acquisition, a person or entity acquires rights in any trademark they begin use of in interstate commerce for the purpose of identifying their goods or services. In short, when McDonald's first started selling hamburgers way back when they did not have to file to protect their trademark with the U.S. Patent and Trademark Office. They acquired rights as soon as their restaurant services began affecting interstate commerce.
On the other end of the spectrum, once you file for protection of your trademark with the U.S. Patent and Trademark Office, and provided that the application matures into a registration, your trademark rights will revert back to the date of the filing of your trademark application.
So we truly have a two-way acquisition system here in the U.S. for trademark rights: use and filing.
Many will then ask why then should we register our trademarks? Well, for a relatively modest fee the registration of your trademarks in large part quiets title for you in the trademark, makes it far easier to enforce the same, and provides the holder thereof with a host of additional remedies in the event the trademark is ever infringed upon.
So if you are using a trademark get it registered. It will deter others from infringing upon the same and provide you with a host of additional remedies should enforcement ever be required. If you are yet to begin use of a new trademark but know what you want to use it in connection with file an intent-to-use application with the U.S. Patent and Trademark Office as soon as possible. You will be glad that you did.
The Trademark Company
Friday, March 16, 2012
Get a Google Pay-Per-Click Monopoly for Your Brand
As Published on Inc.com January 5, 2012.
Did you know that Google is every bit as concerned as you are that some other company may infringe upon their company’s trademark? What is infringement and why should I care, you may ask.
Trademark infringement, at its core, is when one party adopts a trademarhttp://www.blogger.com/img/blank.gifk that is confusingly similar to the trademark of another. They do this because, in essence, they want to create confusion in the marketplace among consumers so they can steal customers from the original trademark holder.
Infringement takes many forms. In the good old days it may simply have been opening up a brick and mortar store front with a name for the store that was confusingly similar to an established brand. Who doesn’t recall the restaurant McDougal’s from the movie Coming to America and its shockingly similar appearance to the iconic McDonald’s brand. A perfect example of infringement to its core.
But in today’s increasingly global economy brands face new challenges as infringers have moved online. Most people are familiar with what has become known as cybersquatting, where some unscrupulous person registers a domain name that is similar to another’s established trademark rights. Squatters may sell competing products from a site posted to that domain or merely use the domain as an automatic redirect to the other’s competing web site. But there are far more subtle ways people can infringe upon your brand online that, when spotted, must be handled swiftly.
One such form of infringement is by bidding on your brands or trademarks as keywords in pay-per-click advertising.
As the readers of this article may or may not know, Google and the other search engines derive revenue by and through their pay-per-click advertising programs. When you search for a term your search results will bring up both organic (e.g., results the search engine deems to be the most relevant to your search terms via a secret algorithm each search engine respectively employs) as well as sponsored (e.g., results that are paid advertising typically appearing above and to the left of the organic returns) results.
Sponsored results and the ads that appear therewith are returned because the persons or companies who place the ads bid on specific keywords that, when searched, display those sponsored results as well as the organic as referenced above.
Returning to our discussion on modern-day infringement, today one well-recognized form of infringement occurs against your brand when a competitor of yours bids on your trademark as a pay-per-click keyword such that when consumers search for your goods or services online your competitor’s advertisements will appear in the sponsored results.
For instance, and this is just a hypothetical for the purposes of this article, let’s say Pepsi wants to drive potential customers to its web site every time someone searches for Coca Cola. What they could do is open a pay-per-click account with Google or another search engine and bid on the keywords “Coca Cola.” Then every time a consumer searches on that search engine for “Coca Cola” Pepsi’s ad would appear in the sponsored results.
Well, fortunately for trademark holders, this is against the law insofar as it creates a form of infringement known generally as initial interest confusion. What can you do to stop it and protect your brand online? Simply follow three steps to create a Google pay-per-click monopoly for your brand:
1. Assemble a list of your trademarks
Depending upon the size of your organization, this may be as simple as your company’s name or as complex as the name and multiple trademarks used to identify your company’s various goods, services, and advertising campaigns.
2. Registered and unregistered trademarks
In assembling the list of your trademarks, determine which are registered with the U.S. Patent and Trademark Office and which are not. For those that are registered it is highly recommended that you have their registration number available. For those that are not, it is advisable to get an application on file to protect the same prior to the next step as Google is more likely to respect your trademark rights if you retain an application or registration number from the U.S. Patent and Trademark Office.
3. General complaint
File a general trademark complaint with Google using Google Adwords Trademark Complain Form. Google will then investigate your claimed rights in the trademarks submitted and, if such is able to be verified, will then preclude others from bidding on your trademarks in pay-per-click advertising and diverting your customers away from your web site using your own trademarks against you.
So go online and get that Google pay-per-click monopoly for your brands. It’s just that simple.
The Trademark Company
Did you know that Google is every bit as concerned as you are that some other company may infringe upon their company’s trademark? What is infringement and why should I care, you may ask.
Trademark infringement, at its core, is when one party adopts a trademarhttp://www.blogger.com/img/blank.gifk that is confusingly similar to the trademark of another. They do this because, in essence, they want to create confusion in the marketplace among consumers so they can steal customers from the original trademark holder.
Infringement takes many forms. In the good old days it may simply have been opening up a brick and mortar store front with a name for the store that was confusingly similar to an established brand. Who doesn’t recall the restaurant McDougal’s from the movie Coming to America and its shockingly similar appearance to the iconic McDonald’s brand. A perfect example of infringement to its core.
But in today’s increasingly global economy brands face new challenges as infringers have moved online. Most people are familiar with what has become known as cybersquatting, where some unscrupulous person registers a domain name that is similar to another’s established trademark rights. Squatters may sell competing products from a site posted to that domain or merely use the domain as an automatic redirect to the other’s competing web site. But there are far more subtle ways people can infringe upon your brand online that, when spotted, must be handled swiftly.
One such form of infringement is by bidding on your brands or trademarks as keywords in pay-per-click advertising.
As the readers of this article may or may not know, Google and the other search engines derive revenue by and through their pay-per-click advertising programs. When you search for a term your search results will bring up both organic (e.g., results the search engine deems to be the most relevant to your search terms via a secret algorithm each search engine respectively employs) as well as sponsored (e.g., results that are paid advertising typically appearing above and to the left of the organic returns) results.
Sponsored results and the ads that appear therewith are returned because the persons or companies who place the ads bid on specific keywords that, when searched, display those sponsored results as well as the organic as referenced above.
Returning to our discussion on modern-day infringement, today one well-recognized form of infringement occurs against your brand when a competitor of yours bids on your trademark as a pay-per-click keyword such that when consumers search for your goods or services online your competitor’s advertisements will appear in the sponsored results.
For instance, and this is just a hypothetical for the purposes of this article, let’s say Pepsi wants to drive potential customers to its web site every time someone searches for Coca Cola. What they could do is open a pay-per-click account with Google or another search engine and bid on the keywords “Coca Cola.” Then every time a consumer searches on that search engine for “Coca Cola” Pepsi’s ad would appear in the sponsored results.
Well, fortunately for trademark holders, this is against the law insofar as it creates a form of infringement known generally as initial interest confusion. What can you do to stop it and protect your brand online? Simply follow three steps to create a Google pay-per-click monopoly for your brand:
1. Assemble a list of your trademarks
Depending upon the size of your organization, this may be as simple as your company’s name or as complex as the name and multiple trademarks used to identify your company’s various goods, services, and advertising campaigns.
2. Registered and unregistered trademarks
In assembling the list of your trademarks, determine which are registered with the U.S. Patent and Trademark Office and which are not. For those that are registered it is highly recommended that you have their registration number available. For those that are not, it is advisable to get an application on file to protect the same prior to the next step as Google is more likely to respect your trademark rights if you retain an application or registration number from the U.S. Patent and Trademark Office.
3. General complaint
File a general trademark complaint with Google using Google Adwords Trademark Complain Form. Google will then investigate your claimed rights in the trademarks submitted and, if such is able to be verified, will then preclude others from bidding on your trademarks in pay-per-click advertising and diverting your customers away from your web site using your own trademarks against you.
So go online and get that Google pay-per-click monopoly for your brands. It’s just that simple.
The Trademark Company
Thursday, March 15, 2012
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
Wednesday, March 14, 2012
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
Advisory: United States Trademark Registration Office Solicitation
Recently, many of our customers and the public in general have been reaching out to us at The Trademark Company concerning the receipt of perceived “bills” from the United States Trademark Registration Office.
As we have now received the same solicitation from this service here are our opinions on the same.
The United States Trademark Registration Office should not be confused with the official U.S. Patent and Trademark Office. The United States Trademark Registration Office appears to be a private company which is merely soliciting business by and through a mass mailing campaign.
The correspondence being sent to trademark applicants and/or registrants resembles an invoice stating that a fee of $375 is “NOW DUE.” Provided that the fee is paid the United States Trademark Registration Office will then purportedly file the customer’s trademark registration with the U.S. Customs & Border Protection (CBP).
As such, customers of The Trademark Company should be advised that this is merely a solicitation for business and not a bill or invoice that is required to be paid. If you have any questions about the benefit of filing your trademark registration with the U.S. Customs & Border Protection (CBP) please just give us a call.
The Trademark Company
As we have now received the same solicitation from this service here are our opinions on the same.
The United States Trademark Registration Office should not be confused with the official U.S. Patent and Trademark Office. The United States Trademark Registration Office appears to be a private company which is merely soliciting business by and through a mass mailing campaign.
The correspondence being sent to trademark applicants and/or registrants resembles an invoice stating that a fee of $375 is “NOW DUE.” Provided that the fee is paid the United States Trademark Registration Office will then purportedly file the customer’s trademark registration with the U.S. Customs & Border Protection (CBP).As such, customers of The Trademark Company should be advised that this is merely a solicitation for business and not a bill or invoice that is required to be paid. If you have any questions about the benefit of filing your trademark registration with the U.S. Customs & Border Protection (CBP) please just give us a call.
The Trademark Company
Tuesday, March 13, 2012
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
Wednesday, March 7, 2012
4-Step Entrepreneur Screening Test
As featured on Inc.com
Over the years I have figured out that I am just wired a little differently from many of my friends, classmates, and fellow attorneys. It almost sounds cliché, but throughout my life I have always held the belief that pretty much any problem can be solved if we have the time. Where most see problems I, like many entrepreneurs, see opportunities. When others panic, I methodically think through a situation which can resolve the issue at hand.
One such infamous instance occurred one evening over a few drinks between some attorney friends of mine. As we meandered through small talk and the drinks continued to flow the topic of conversation turned to interesting legal issues we had recently encountered.
In my case, one of my clients had recently encountered a frivolous lawsuit which, because of the nature of the legal system, threatened to cost him hundreds of thousands of dollars to defend. The kicker, he hadn’t done anything wrong. At this point I know what you are thinking. “Sure, nothing wrong you say.” Seriously. Nothing. Nadda. But being a savvy business person my client decided to settle the matter quickly and pay out about $50,000. The problem? If he had to pay off one frivolous lawsuit when was the next coming? He didn’t want to have to deal with this again. No one should. So when it was all said and done and the settlement check had cleared he came to me and said, “Matt, I never want this to happen again. What do we do?”
So we sat down one afternoon and brainstormed all of the possibilities. How had he gotten to this point. How could it be prevented. After a few hours of bouncing ideas off of one another we kept circling around and coming back to one theme, one possibility: an innovative corporate structure that would preclude the possibility of his being served with a frivolous lawsuit. Could it work? We wrote up the model. Diagrammed out everything that could happen. We tested and re-tested the model and tested it again. By the next day we had done it. We had created a model so simplistic in nature but so soundproof in design that he was, essentially, insulated from the form of frivolous lawsuit that had led us to this innovation. Success and opportunity inspired by need and stoked by the belief that a solution could be achieved. It was that simple.
As I relayed this to our attorney friends (with a tad more detail than shall be printed here) the response I received was, to paraphrase Rip Torn from the movie Men in Black, everything I expected from attorneys trained in the ivory towers of big firms in Washington, D.C.
“You can’t do that!” one yelled. “Why not?” I calmly responded. “Because, you just can’t.” “Why?” I replied starting to wonder he would articulate his reasoning or just sit there with that befuddled look on his face. “Because,” he started, his resolve noticeably turning to frustration, “you just can’t.”
“You say that it cannot be done, yet you cannot say why. Might I suggest to you that it can be done, you have simply never seen this before and, as such, are rejecting the same for that reason alone.” Steam began to shoot from my friend’s ears. His face reddened. His posture became more hostile. “You can’t!” he loudly exclaimed bordering on yelling, his frustration now clearly getting the best of him.
“Again, I’m getting the fact that you do not believe in this. But why? It works. I’m telling you just because it has not been done doesn’t mean it can’t be done.” After a few more rounds of unsupported objections to this new structure I finally dropped the death blow: “Not only can it work, six months ago I set up one of my clients with the structure and, to date, no more frivolous lawsuits.” A deathly silence gripped the room. His steely glare let me know all that I needed to know, that he would never agree with me yet had no response to challenge not only my theory but also my evidence the innovation had worked.
Ultimately, the tension was broken by an empty glass in need of refilling. The battle was over, the lines drawn, but no matter what I brought to the game there was simply no convincing my friend that an innovation had occurred and that simply because it had never been done before did not mean it could not work.
So what’s the take away here? People like my lawyer friend should never be an entrepreneur. They are just not wired for it. They only want to see and live in the what is and cannot see the what can be.
As I have traveled down the road of entrepreneurship I have learned many lessons. Perhaps the one that sticks with me the most, as alluded to above, is that entrepreneurs, on the whole, are simply wired a little differently than others. We prefer structured risks where others seek security. We adapt and are challenged by obstacles where others lament their fate. We look for solutions and strive to achieve them where others are confined to what is readily known and accepted.
So if you are considering becoming an entrepreneur or if you already are and are wondering if you should remain as one here is a simple four-part test you can take to see if you are wired like an entrepreneur:
1. Problem Spotter vs. Problem Solver
Are you a problem spotter or a problem solver? What’s the difference? A problem spotter is someone who can see a problem but offers no constructive solution to address the same. In life the majority of people you will come across can see a problem but cannot or do not solve it.
I’ve been involved in many start-ups over the years. Some that got off the ground. Some that did not. For those that failed to get off the ground the vast majority did so because they got bogged down with too many problem spotters and did not have enough problem solvers.
Back in the late 1990s, at the height of the dot com era, I was involved in two failed ventures that died specifically because of problem spotters. We would start almost every meeting with a discussion of what had been achieved since the last meeting via-à-vis product development and then, inevitably, the Debbie Downers would start rattling off lists of “issues” they had problem spotted that were going to interfere with bringing the product to market. Mind you, the Debbies never proposed solutions. They just loved standing up and telling us how this would not work or that would be an issue. “Thank you so much concerned citizen. Now sit down unless you have a solution!”
On the other hand, a problem solver is someone with true value. They can not only spot a problem but can also craft a solution to the same. Most importantly, they bring to the table a view that even if spotted we will get past the problem so let’s figure out a way to do so. Obviously everyone will vary in the quality of their resolutions. But the distinction between the two is the key.
Problem spotters only spot the problems. Entrepreneurs spot them and offer a solution therefore. So are you a problem spotter or a problem solver?
2. Handling Stress
Another key factor for entrepreneurs is how they handle stress. Every job has stress. But entrepreneurs have to recognize that each day will often create new challenges, new stresses, and they must be able to cope with the same and work through the issues causing the stress to achieve their objectives.
On one of my office walls is painted the iconic slogan “Remain Calm, Carry On.” To be an entrepreneur you must be able to function in the stress of the moment and be able to recognize that you may not know what tomorrow’s will bring, but stress will come, and you will have to get through it and carry on. I have this slogan painted on my wall as a constant reminder of this fact.
Case in point. We recently brought on someone here at The Trademark Company who I knew was use to big corporate life. Following training he was put into full service in the division he was to be serving in. I had had some reservations as to whether he would fit in to the company and our culture here but looked past them given our personal relationship and nevertheless brought him on board.
Within days of him going into full service I could notice the stress building upon his brow. Every day grew slightly more tense as I could tell he was bottling things up inside. Finally, after a couple of weeks dodging the issues we finally had a sit down to see how he was handling his new position.
Following a prefatory sigh, he launched into his concerns over a certain aspect of our business which he felt contained significant structural flaws. I mean he brought it down like fire and brimstone and end-of-days type of stuff. He was so stressed out about this issue I thought I was going to have to open the bottle of Jack Daniels I keep in my office with the sign over it that reads “In Case of Emergency Fill Glass.”
To his surprise, after he had finished voicing his concern I simply looked up at him, smiled, and said “Thank you. I am aware of that issue. But, candidly, it is really not that big of a deal. Don’t stress over it. In the grand scheme of things of matters I worry about at night I would place it about 37th on the list.” “Thirty-seventh?” he said incredulously. “Yeah, that’s about right.” I replied. “Like what would be above this on the list?” he inquired. Over the next few minutes I rattled off just a few which would appear in the 20s. I didn’t really want to have to open my emergency bottle after all. In the end I think it made him feel better that I was aware of the issue but that my concern was much less about the same. The situation did reveal, however, something very important about my friend: he does not handle stress well and, in particular, the stress of dealing with an entrepreneurial-type of venture.
Ultimately, he left the company amicably. I often wonder if he sits up at night pondering what the top 10 were. In the end, I believe that to be a successful entrepreneur you must be able to handle stress and function despite the existence of the same. Remain Calm, Carry On.
How do you handle stress?
3. Challenge vs. Opportunity
How do you view a challenge? Do you look at it as an obstacle that simply must be dealt with or do you see it as an opportunity to achieve and possibly even bring a new product or service to market?
Within the course of our business we deal with the U.S. Patent and Trademark Office (“USPTO”) on a daily basis. One of our principal missions is the prosecution and registration of our customers’ trademarks with this organization.
We have now been in business long enough that we have seen pretty much everything the USPTO can do to refuse a trademark application or otherwise. As such, we have developed tried-and-true systems to get our customers’ trademarks registered through these refusals when issued where possible.
For those of you who are not familiar with the USPTO, it is one of the best-run and most efficient government organizations in the United States. Occasionally, however, the USPTO will change or clarify the manner in which it examines specific types of trademark applications or will simply issue what is known as an Examination Guide instructing its examining attorneys on how to deal with a specific issue they are seeing in trademark applications. Often these examining guides have no effect on our customers’ trademarks. Sometimes, however, they can lead to a whole new wave of refusals for a reason we have yet to see or saw less frequently prior to the issuance of the new Examination Guide.
Rather than lament these new guidelines as merely another challenge to our customers’ ability to register their trademarks, we seize the opportunity and craft systems designed to circumvent or satisfy the new requirements issued by the USPTO to ensure our customers’ trademarks maintain the same high rate of registration they have always enjoyed under our stewardship. Sometimes these systems can be included in our current service pricing structure. Sometimes they lead to the development of an entirely new service line for our customers.
The critical thing, however, is how we view the new Examination Guides: not merely as challenges to our existing services but rather as opportunities to create a better line of services for our customers.
How do you see the world? Filled with challenges or opportunities?
4. Dreamer vs. Finisher
We all dream of a better tomorrow. Whether it is the oft-uttered “I’m going to quit my job and write the classic American novel” or “I’m going to open up my own business.” Dreams are a great break from reality and let our minds take us to places that provide freedom from the day-to-day challenges of our lives. But be careful, entrepreneurship does not treat dreamers kindly. That is not to say that being an entrepreneur and being a dreamer are mutual co-exclusive. Dreamers are often some of the best entrepreneurs. But, unlike many of us, entrepreneurs must not only be dreamers but finishers as well.
What’s the distinction? A dreamer comes up with great ideas. Inspiration can come from anywhere. From envisioning a revolutionary product because of everyday experiences in one’s life to tackling the larger ills of society. But what separates a dreamer who lays out vague cocktail-party plans for a business and a truly successful entrepreneur is the ability to finish.
Dreaming involves seeing a very narrow scope of the big picture and what the good or service could do and how it will be received by the consuming public. Finishing involves rolling up the proverbial sleeves and conquering all of the tasks that will be required to actually bring that product to market.
For instance, a dreamer may be great at articulating the grand vision “Wouldn’t it be cool to create a product that mimics the sensation of consuming food by and through electro-stimulation of the portion of your brain that deals with the pleasure of eating?” At a party, a dreamer may bring this thought to life exposing the virtues of a new weight loss system that replaces food consumption with cerebral stimulation of the portion of our brain in lieu of actual consumption (Can you tell I attend a lot of exciting cocktail parties?). But for the dreamer, this is where it ends. There is no plan. There is no focusing on all of the steps to bring the product to market. There is only “Wouldn’t it be cool if…”
The Finisher, the entrepreneur, on the other hand, has the ability to take the idea, move it along all phases of development while maintaining interest in the product, and ultimately bring the product to market. In short, an entrepreneur finishes. Under our example, the dreamer, once sober, gives little thought to this innovative weight-loss system. The Finisher maps out a plan for everything that will be needed to bring the product to market dealing with all of the minutia on a path to get the job done.
So are you a dreamer or a finisher?
In the end, if you are a problem solver, handle stress well, see opportunities where others see barriers, and finish the life of an entrepreneur may be for you. Beware, however, if you exhibit the other traits referenced above. If so, you may wish to stay on a more defined path.
The Trademark Company
Over the years I have figured out that I am just wired a little differently from many of my friends, classmates, and fellow attorneys. It almost sounds cliché, but throughout my life I have always held the belief that pretty much any problem can be solved if we have the time. Where most see problems I, like many entrepreneurs, see opportunities. When others panic, I methodically think through a situation which can resolve the issue at hand.
One such infamous instance occurred one evening over a few drinks between some attorney friends of mine. As we meandered through small talk and the drinks continued to flow the topic of conversation turned to interesting legal issues we had recently encountered.
In my case, one of my clients had recently encountered a frivolous lawsuit which, because of the nature of the legal system, threatened to cost him hundreds of thousands of dollars to defend. The kicker, he hadn’t done anything wrong. At this point I know what you are thinking. “Sure, nothing wrong you say.” Seriously. Nothing. Nadda. But being a savvy business person my client decided to settle the matter quickly and pay out about $50,000. The problem? If he had to pay off one frivolous lawsuit when was the next coming? He didn’t want to have to deal with this again. No one should. So when it was all said and done and the settlement check had cleared he came to me and said, “Matt, I never want this to happen again. What do we do?”
So we sat down one afternoon and brainstormed all of the possibilities. How had he gotten to this point. How could it be prevented. After a few hours of bouncing ideas off of one another we kept circling around and coming back to one theme, one possibility: an innovative corporate structure that would preclude the possibility of his being served with a frivolous lawsuit. Could it work? We wrote up the model. Diagrammed out everything that could happen. We tested and re-tested the model and tested it again. By the next day we had done it. We had created a model so simplistic in nature but so soundproof in design that he was, essentially, insulated from the form of frivolous lawsuit that had led us to this innovation. Success and opportunity inspired by need and stoked by the belief that a solution could be achieved. It was that simple.
As I relayed this to our attorney friends (with a tad more detail than shall be printed here) the response I received was, to paraphrase Rip Torn from the movie Men in Black, everything I expected from attorneys trained in the ivory towers of big firms in Washington, D.C.
“You can’t do that!” one yelled. “Why not?” I calmly responded. “Because, you just can’t.” “Why?” I replied starting to wonder he would articulate his reasoning or just sit there with that befuddled look on his face. “Because,” he started, his resolve noticeably turning to frustration, “you just can’t.”
“You say that it cannot be done, yet you cannot say why. Might I suggest to you that it can be done, you have simply never seen this before and, as such, are rejecting the same for that reason alone.” Steam began to shoot from my friend’s ears. His face reddened. His posture became more hostile. “You can’t!” he loudly exclaimed bordering on yelling, his frustration now clearly getting the best of him.
“Again, I’m getting the fact that you do not believe in this. But why? It works. I’m telling you just because it has not been done doesn’t mean it can’t be done.” After a few more rounds of unsupported objections to this new structure I finally dropped the death blow: “Not only can it work, six months ago I set up one of my clients with the structure and, to date, no more frivolous lawsuits.” A deathly silence gripped the room. His steely glare let me know all that I needed to know, that he would never agree with me yet had no response to challenge not only my theory but also my evidence the innovation had worked.
Ultimately, the tension was broken by an empty glass in need of refilling. The battle was over, the lines drawn, but no matter what I brought to the game there was simply no convincing my friend that an innovation had occurred and that simply because it had never been done before did not mean it could not work.
So what’s the take away here? People like my lawyer friend should never be an entrepreneur. They are just not wired for it. They only want to see and live in the what is and cannot see the what can be.
As I have traveled down the road of entrepreneurship I have learned many lessons. Perhaps the one that sticks with me the most, as alluded to above, is that entrepreneurs, on the whole, are simply wired a little differently than others. We prefer structured risks where others seek security. We adapt and are challenged by obstacles where others lament their fate. We look for solutions and strive to achieve them where others are confined to what is readily known and accepted.
So if you are considering becoming an entrepreneur or if you already are and are wondering if you should remain as one here is a simple four-part test you can take to see if you are wired like an entrepreneur:
1. Problem Spotter vs. Problem Solver
Are you a problem spotter or a problem solver? What’s the difference? A problem spotter is someone who can see a problem but offers no constructive solution to address the same. In life the majority of people you will come across can see a problem but cannot or do not solve it.
I’ve been involved in many start-ups over the years. Some that got off the ground. Some that did not. For those that failed to get off the ground the vast majority did so because they got bogged down with too many problem spotters and did not have enough problem solvers.
Back in the late 1990s, at the height of the dot com era, I was involved in two failed ventures that died specifically because of problem spotters. We would start almost every meeting with a discussion of what had been achieved since the last meeting via-à-vis product development and then, inevitably, the Debbie Downers would start rattling off lists of “issues” they had problem spotted that were going to interfere with bringing the product to market. Mind you, the Debbies never proposed solutions. They just loved standing up and telling us how this would not work or that would be an issue. “Thank you so much concerned citizen. Now sit down unless you have a solution!”
On the other hand, a problem solver is someone with true value. They can not only spot a problem but can also craft a solution to the same. Most importantly, they bring to the table a view that even if spotted we will get past the problem so let’s figure out a way to do so. Obviously everyone will vary in the quality of their resolutions. But the distinction between the two is the key.
Problem spotters only spot the problems. Entrepreneurs spot them and offer a solution therefore. So are you a problem spotter or a problem solver?
2. Handling Stress
Another key factor for entrepreneurs is how they handle stress. Every job has stress. But entrepreneurs have to recognize that each day will often create new challenges, new stresses, and they must be able to cope with the same and work through the issues causing the stress to achieve their objectives.
On one of my office walls is painted the iconic slogan “Remain Calm, Carry On.” To be an entrepreneur you must be able to function in the stress of the moment and be able to recognize that you may not know what tomorrow’s will bring, but stress will come, and you will have to get through it and carry on. I have this slogan painted on my wall as a constant reminder of this fact.
Case in point. We recently brought on someone here at The Trademark Company who I knew was use to big corporate life. Following training he was put into full service in the division he was to be serving in. I had had some reservations as to whether he would fit in to the company and our culture here but looked past them given our personal relationship and nevertheless brought him on board.
Within days of him going into full service I could notice the stress building upon his brow. Every day grew slightly more tense as I could tell he was bottling things up inside. Finally, after a couple of weeks dodging the issues we finally had a sit down to see how he was handling his new position.
Following a prefatory sigh, he launched into his concerns over a certain aspect of our business which he felt contained significant structural flaws. I mean he brought it down like fire and brimstone and end-of-days type of stuff. He was so stressed out about this issue I thought I was going to have to open the bottle of Jack Daniels I keep in my office with the sign over it that reads “In Case of Emergency Fill Glass.”
To his surprise, after he had finished voicing his concern I simply looked up at him, smiled, and said “Thank you. I am aware of that issue. But, candidly, it is really not that big of a deal. Don’t stress over it. In the grand scheme of things of matters I worry about at night I would place it about 37th on the list.” “Thirty-seventh?” he said incredulously. “Yeah, that’s about right.” I replied. “Like what would be above this on the list?” he inquired. Over the next few minutes I rattled off just a few which would appear in the 20s. I didn’t really want to have to open my emergency bottle after all. In the end I think it made him feel better that I was aware of the issue but that my concern was much less about the same. The situation did reveal, however, something very important about my friend: he does not handle stress well and, in particular, the stress of dealing with an entrepreneurial-type of venture.
Ultimately, he left the company amicably. I often wonder if he sits up at night pondering what the top 10 were. In the end, I believe that to be a successful entrepreneur you must be able to handle stress and function despite the existence of the same. Remain Calm, Carry On.
How do you handle stress?
3. Challenge vs. Opportunity
How do you view a challenge? Do you look at it as an obstacle that simply must be dealt with or do you see it as an opportunity to achieve and possibly even bring a new product or service to market?
Within the course of our business we deal with the U.S. Patent and Trademark Office (“USPTO”) on a daily basis. One of our principal missions is the prosecution and registration of our customers’ trademarks with this organization.
We have now been in business long enough that we have seen pretty much everything the USPTO can do to refuse a trademark application or otherwise. As such, we have developed tried-and-true systems to get our customers’ trademarks registered through these refusals when issued where possible.
For those of you who are not familiar with the USPTO, it is one of the best-run and most efficient government organizations in the United States. Occasionally, however, the USPTO will change or clarify the manner in which it examines specific types of trademark applications or will simply issue what is known as an Examination Guide instructing its examining attorneys on how to deal with a specific issue they are seeing in trademark applications. Often these examining guides have no effect on our customers’ trademarks. Sometimes, however, they can lead to a whole new wave of refusals for a reason we have yet to see or saw less frequently prior to the issuance of the new Examination Guide.
Rather than lament these new guidelines as merely another challenge to our customers’ ability to register their trademarks, we seize the opportunity and craft systems designed to circumvent or satisfy the new requirements issued by the USPTO to ensure our customers’ trademarks maintain the same high rate of registration they have always enjoyed under our stewardship. Sometimes these systems can be included in our current service pricing structure. Sometimes they lead to the development of an entirely new service line for our customers.
The critical thing, however, is how we view the new Examination Guides: not merely as challenges to our existing services but rather as opportunities to create a better line of services for our customers.
How do you see the world? Filled with challenges or opportunities?
4. Dreamer vs. Finisher
We all dream of a better tomorrow. Whether it is the oft-uttered “I’m going to quit my job and write the classic American novel” or “I’m going to open up my own business.” Dreams are a great break from reality and let our minds take us to places that provide freedom from the day-to-day challenges of our lives. But be careful, entrepreneurship does not treat dreamers kindly. That is not to say that being an entrepreneur and being a dreamer are mutual co-exclusive. Dreamers are often some of the best entrepreneurs. But, unlike many of us, entrepreneurs must not only be dreamers but finishers as well.
What’s the distinction? A dreamer comes up with great ideas. Inspiration can come from anywhere. From envisioning a revolutionary product because of everyday experiences in one’s life to tackling the larger ills of society. But what separates a dreamer who lays out vague cocktail-party plans for a business and a truly successful entrepreneur is the ability to finish.
Dreaming involves seeing a very narrow scope of the big picture and what the good or service could do and how it will be received by the consuming public. Finishing involves rolling up the proverbial sleeves and conquering all of the tasks that will be required to actually bring that product to market.
For instance, a dreamer may be great at articulating the grand vision “Wouldn’t it be cool to create a product that mimics the sensation of consuming food by and through electro-stimulation of the portion of your brain that deals with the pleasure of eating?” At a party, a dreamer may bring this thought to life exposing the virtues of a new weight loss system that replaces food consumption with cerebral stimulation of the portion of our brain in lieu of actual consumption (Can you tell I attend a lot of exciting cocktail parties?). But for the dreamer, this is where it ends. There is no plan. There is no focusing on all of the steps to bring the product to market. There is only “Wouldn’t it be cool if…”
The Finisher, the entrepreneur, on the other hand, has the ability to take the idea, move it along all phases of development while maintaining interest in the product, and ultimately bring the product to market. In short, an entrepreneur finishes. Under our example, the dreamer, once sober, gives little thought to this innovative weight-loss system. The Finisher maps out a plan for everything that will be needed to bring the product to market dealing with all of the minutia on a path to get the job done.
So are you a dreamer or a finisher?
In the end, if you are a problem solver, handle stress well, see opportunities where others see barriers, and finish the life of an entrepreneur may be for you. Beware, however, if you exhibit the other traits referenced above. If so, you may wish to stay on a more defined path.
The Trademark Company
Subscribe to:
Posts (Atom)
