Tuesday, April 24, 2012

3 Reasons to Perform a Trademark Clearance Report

We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.

1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable

First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.

A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.

2. Don’t Develop a Brand You May Be Forced to Give Up

Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.

Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.

So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”

You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.

Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.

After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.

3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark

Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.

Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.

But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.

Conclusion

So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.

The Trademark Company

Wednesday, April 18, 2012

Get a Google Pay-Per-Click Monopoly for Your Brand

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

Monday, April 16, 2012

Trademarks and Priority: What You Need to Know

We are often asked by our customers whether they can register a trademark and then use that registered trademark to force someone else to stop using the same. The answer, it depends.

Many fail to understand how trademark rights are acquired. In general you can acquire trademark rights in one of two ways: (1) use; and/or (2) filing.

First, simply by using a trademark in commerce an entity acquires rights in that trademark in connection with the goods or services with which it is used.

Second, whether or not a trademark is in use you may also acquire rights in the trademark by filing and subsequently registering the same with the U.S. Patent and Trademark Office.

As such, merely registering a trademark with the U.S. Patent and Trademark Office will not give you superior rights to a trademark over another if that other used the trademark in commerce prior to your use or filing of the same with the U.S. Patent and Trademark Office.

So the determination of who retains priority of use in a trademark dispute is often a complex factual analysis. You cannot merely assume that if you were the first to register a trademark you actually have superior rights to all others in that trademark. Due diligence must still be conducted to make sure your use date or filing date predates the other party sufficient to secure your priority of use and, accordingly, superior rights in a mark.

The Trademark Company

Friday, April 13, 2012

3 Things You Must Do to Protect Your Trademark(s)

When thinking about launching a new business, brand, or product line here are some tips to make sure you secure the rights to your trademark before you spend your time and effort building your brand.

1. Clearance Report: Once you have selected the trademark you would like to use always have a research report performed to make sure that the trademark you want to use is available. A properly performed research report will clear use of your trademark or let you know if someone else already has rights in the same thus requiring you to select a different trademark. The time to find out if your trademark is available is before you begin use of the same, not after you have already spent money and effort in developing the brand only to learn you must now cease use of the trademark due to another’s earlier use of a similar mark.

2. Register Your Trademark: Once your trademark has been cleared apply to register the same with the U.S. Patent and Trademark Office. A registered trademark enjoys many statutory benefits that help its owner in the enforcement of the same.

3. Enforce Against Infringement: Once you own your trademark it is your most important nosiness asset. Protect it. Think about it, if someone tried to steal your work computer wouldn’t you try to stop them? Why should it be any different when someone tries to steal the good will your brand has developed? That is your trademark, your good will. Don’t let others wrongfully trade on your goods and service’s good name. Once you own your trademark you must be prepared to enforce it against those who would infringe upon you.

The Trademark Company

Thursday, April 12, 2012

In Case You Missed It: 4 Traits of Great Leaders

As Featured on Inc.com.

It is often said that hindsight is 20/20. By looking to the past we can learn how better to adapt and achieve in the future. By learning from lessons of old we can accomplish great things if we only listen to what we have been taught.

Throughout my life I have been fortunate to have been mentored by leaders great and those individually successful yet lacking the ability to lead others. Some individuals can achieve a great level of success but lack the ability to drive a great organization forward. As such, they are always limited to their individual accomplishments. Great leaders, however, can lead many to accomplishments above what they themselves thought possible and, in turn, to levels of success above and beyond what the individualists will ever accomplish.

Here are the traits that these leaders exhibit that give them the ability to achieve these lofty ideals.

Aspire

Great leaders aspire to reach beyond that which convention says is possible. They know that greatness is not achieved by reaching for mediocrity. They reach for figuratively, and in one instance literally, the moon.

President John F. Kennedy stepped to the podium on a warm September day in 1962 and delivered the memorable lines “…We choose to go to the moon. We choose to go to the moon in this decade and do the other things, not because they are easy, but because they are hard, because that goal will serve to organize and measure the best of our energies and skills…”

In this moment he set an aspiration we had never believed possible. He aspired for greatness for an entire nation. To break free of our earthly limits and land a man safely upon another terrestrial body. As a result of those public aspirations within the decade Neil Armstrong and Buzz Aldrin would take mankind’s first steps on the moon.

Great leaders do not aim for the easily achievable. They aspire for loftier goals. Why, you may ask? Because if you plan for mediocrity all that you and those around you will ever achieve is just that, mediocrity. But if you aspire for greatness, even if you come up short, more likely than not you will still achieve a level greater than that which you knew you could reach. Great leaders always aim for goals higher than others think can be achieved.

Aspire to greatness.

Plan

But to achieve greatness you must also have a plan. Aspiration without a plan is simply a dream. What materializes the aspiration into reality is the plan. On June 6, 1944 the Allies did not wake up and say, “Time to take back Europe from the Axis – Let’s Go.” There was a plan. In reality, a plan that took months to develop and one of the most carefully and detailed in military history.

By 1944 the Germans occupied all of continental Europe. To win the war the Allies had to reclaim France and other occupied territory. Planning for the invasion began months in advance. The Axis feared an invasion on the Western Front. It created what became known as Fortress Europe building the Atlantic Wall, a defensive barrier of concrete, steel, imbedded troops and weapons more than 1200 miles long stretching from Denmark to the Spanish border.

The shortest shipping distance from England to France was to the Pas de Calais region. It was here the Axis expected the Allies to invade. It was here Fortress Europe was strengthened with mines, barbed wire, other obstructions and powerful artillery.

But the Allies had a better idea – a better plan. The British and Americans selected, instead, a landing place further south, on the coast of Normandy. It was nearly 75 miles from England but was much less defended than Pas de Calais. Every detail of the invasion was scripted. Nothing left to chance. And as we now know, the details of that plan, and the countless sacrifices made in executing the same, turned the tides of the war in Europe and the fate of the world as we know it.

Have a plan.

Inspire

But before you can execute the plan you must inspire those around you that they can achieve by following the plan. You must inspire them to achieve the aspiration through the plan.

We need not look to world leaders or now iconic military figures to demonstrate this point. We need only look as far as our local heroes and those who mentor us on a day-to-day basis.

Many years ago I was fortunate enough to play football for the legendary Florida high school football coach Sam Budnyk. For 47 years he coached the Cardinal Newman Crusaders of West Palm Beach, Florida, to countless wins including victories over teams that, on paper, were superior to Coach Budnyk’s teams in every way. But as the old expression goes, that’s why they play the games.

Coach Budnyk believed in his teams and the young men who played for him. For nearly five decades every fall Friday night he challenged young men to rise to the occasion and be the best that they could be. To accept any challenge and turn them into opportunities. In short, he inspired generations of young men to accomplish more than they thought they could achieve. And we did.

To this day Coach Budnyk is the all-time winningest football coach in Palm Beach County, a region of the country which arguably can claim the largest percentage of active and retired professional football players from the NFL as well as countless athletes that played on NCAA championship football teams. Coach Budnyk’s teams included some of these athletes, but played against more, and won against most. Why? Because he inspired us to do so, to be better, to achieve greatness.

Inspire those who will act on the plan.

Execute

But as Coach Budnyk would always tell his young men, potential in the absence of achievement doesn’t mean anything. You must aspire to greatness. You must plan the path to get there. You must inspire to achieve the aspiration. But ultimately you have to execute the plan to reach your goal. There is no better example of how these four factors come together to achieve great things than the events which began to unfold on April 14, 1970 173,790 miles from Earth.

On April 11, 1970, Apollo 13 launched from Cape Kennedy. Apollo 13 was the seventh manned Apollo mission and third intended to land on the Moon. Three days into the mission an oxygen tank exploded crippling the spacecraft. In a millisecond NASA’s planned third landing on the moon shifted into a rescue and recovery mode.

Could they fix the craft remotely? Could they get it back to Earth? Could they save the lives of the three astronauts still hurdling through space towards the moon?

NASA Flight Director Gene Kranz famously stepped to the plate and with the oft uttered creed “Failure is not an option” led a team that would ultimately bring home James A. Lovell, John L. "Jack" Swigert, and Fred W. Haise.

Presented with a near impossible evolving series of challenges Kranz and his team aspired to bring the crippled ship home. They planned, tested, and re-planned every aspect of what would be needed to accomplish the goal. The team was inspired by the setting forth of all options and that failure was never considered as an option. And finally, and most critically, the team executed the plan accomplishing arguably NASA’s greatest feat: on April 17, 1970 Apollo 13 came home.

Aspire. Plan. Inspire. Execute. Achieve your greatness.

The Trademark Company

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