The Trademark Company

How to Protect Your Trademark

2012-01-27T13:44:00.001-05:00

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

4 Essential Steps to Managing Growth

2012-01-26T13:26:00.003-05:00

As featured on Inc.com.

A funny little thing happens on the road to success. Often the prosperity of the business can outpace the ability of the business to maintain that success. At this point most of you are probably wondering what am I talking about. Rapid success can lead to failure? Get real. But it can. And I have seen it repeatedly in all scales of businesses over the past few years.

How does it happen? Let’s say you bring a product to market. It is received well by the public. They begin to buy. You begin to make money. All is good. You begin to advertise the product more and to different segments. Maybe you even diversify and offer variants of the original goods or services to capture a greater market share. You make more money. You are happier than ever. You spend more on advertising. More money flows in. The cycle continues.

One day you get a disturbing memo from accounting. It seems the business is losing money. Not drastically. Not in leaps and bounds but slowly over time. Even though you are bringing in more money than you ever imagined possible there is a slow bleed causing your expenses to exceed, if ever so slightly, your revenues each month.

Your first reaction is typically one of disbelief and anger. Obviously, accounting has made an error. You explain to them your grand vision, how next month you are rolling out more products and services. How revenue has tripled in one year and will double again next year. The accountant looks at you with that blank stare and says the immutable truth of business and accounting: "Numbers don’t lie."

Often as entrepreneurs we become so focused on bringing the product to market, advertising the product, and selling the same that we fail to grow all aspects of the business in unison. As a result, while the business attains its ever-increasing benchmarks in sales it is growing upon an infrastructure that is not keeping pace with the growth of the business. Flaws in management systems slowly begin to be revealed. Quality control is not in sync with the growth. Eventually a tipping point is reached in which these flaws, caused by the failure of the business to grow its infrastructure at the same rate as sales and advertising, cause the system to collapse.

Don’t think this can really happen? It does, and to some of the biggest companies in the world. Over the past few years we have had dealings with one of the largest hand-held device manufacturers in the world. Since 2000 they rocketed to success riding a wave of innovative technology and cutting edge marketing. They went from being a scrappy start-up to one of the world’s leading hand-held device manufacturers with annual sales tipping the charts in the billions.

However, over the past two years this modern titan has experienced a dramatic fall. Sales have plummeted. Once the industry’s leading innovator, today they are, in large part, viewed as a one-trick pony whose time has come and gone. Their latest products come to market with little fanfare and even less consumer interest. Last year their devices, in large part, stopped working due to some technical glitch which took days, and in some cases, weeks to remedy. They have fallen so far from their lofty perch it is now rumored among the major financial papers that the company may be forced to sell off assets to avoid bankruptcy or face the inevitable later this year. Oh, how they mighty have fallen.

How could this happen to such a juggernaut of technology? Notably, within the course of our dealings with them we noticed a few flaws in their structure that inhibited our ability to effectively communicate with the company. In hindsight, these were symptoms of fatal flaws in an organizational structure that had simply failed to keep pace with the growth of the company.

For instance, for months we attempted to reach their online marketing department through various channels only to have our efforts constantly thwarted. Discussions at certain levels had to go through a bureaucracy which was maddening. Ultimately a deal fell apart that, in our opinion, would have been extremely lucrative for all parties. Why?

The answer did not reveal itself until months later when I was having lunch with the company’s general counsel. In short, he revealed that because their company had grown so large so quickly he did not even know who to call within his own organization to get us to the right people to close our deal. In short, he had no idea who to get on the phone to complete our negotiations. Every time he tried to find out he got passed around from department to department within his own company ultimately with no one offering to take responsibility to speak with us. In short, their structure had failed to keep pace with the growth of their company to the extent that even people within the company could not determine who was in charge of various aspects of the company.

Accordingly, despite a meteoric rise to the top of one of the world’s most competitive industries, the afore referenced company is now in a financial free-fall approaching its eventual demise. What can you learn from all of this? You must grow your organizational structure in proportion to your business. Here’s how:

1. Create a Scalable Management Model.

As your business grows you must develop scalable management and quality control systems. In the beginning management and quality control is easy. Perhaps your business begins only as a solo entrepreneurial endeavor or one among just a few people. Everyone has a defined role and everyone knows what everyone else’s role in the company is. Nonetheless, as your business grows and duties become more segmented among new employees, a management structure must be put in place to ensure accountability against established benchmarks as well as to make sure quality control of your goods and services remains constant.

In this regard, each position’s duties and responsibilities should be defined in writing. An organizational chart should be constructed and maintained which clearly defines who is responsible for what, who reports to whom, on what subjects, and how often. If properly segmented over time you will see your organizational structure begin to resemble a pyramid with the CEO on top and increasingly widening rows of persons with specific defined roles thereunder.

2. Define a Quality Control System.

As your company grows you must make sure that the quality of your goods or services is maintained despite its increasing size. As such, you must determine what elements should exist in a quality control system and then assign the responsibility of maintaining that quality to someone within your management model.

For instance, let’s say that you run a call center that, in the early days, existed with only a handful of people. At the beginning it was easy to make sure that everyone used the same scripts and delivered the same quality of customer service for your inbound clients. Yet as you grew it became less clear who was in charge of maintaining that level of customer service on the phones and, as a result, a systemic problem has now developed within your organization. Not all of your sales team are using the same scripts. There is inconsistency in call backs of inbound customers. As a result, your sales and margins begin to slip.

To combat this you must create a quality control system to make sure your systems are being performed on a daily basis and assign a manager in your organization to oversee the same. For every business quality control will differ. If you operate a call center those benchmarks may be overall sales as measured against knowledge of the product, responsiveness, etc. For example, a factory may need to make sure that the work being performed by assembly workers is consistent so that each product leaving their station is assembled perfectly, or within measured perfection, every time. But without a quality control system unique to your business the quality of your product will flounder over time.

Once established, a manager or management team must be specifically assigned to oversee the execution of the system. You need to be able to point to one person, or a team if you are large enough, and say that they are responsible and/or accountable for the quality of your company’s goods or services. This structure, like your sales force, advertising, and other segments of your business, should grow at the same rate as the rest of your business.

For instance, let’s say your business originally consists of an assembly factory with 20 workers assembling various parts of your products. Your initial quality control systems can be managed by one full-time manager. If you grow to 40 workers assembling more and more of your products it is reasonable to assume you will now need two quality control supervisors. If you grow to 60 workers you will need three.

Now the actual number will vary for every company. It suffices to say you must know that it has to grow as well alongside your workforce. And within that growth even those added quality control team must have its own division of responsibility with well-defined roles for quality control of the company.

3. Execute the Systems 100 Percent of the Time.

Now that you have created a scalable management model with a defined quality control system it’s time to make sure it is executed to perfection.

Each person within the management and quality control team by now should know their respective duties and responsibilities. Even so, you must ensure that those systems and assignments are executed without deviation 100 percent of the time. To this end, especially for small and mid-sized businesses, we have found that it is very effective to use daily and weekly checklists to make sure individuals are performing their assigned tasks in a consistent manner.

For instance, a front-line quality control manager may have a daily checklist of five quality control matters to be reviewed on Monday, seven on Tuesday, three on Wednesday, etc. They are responsible on each of those days for performing those tasks and then recording that they have been completed. The manager above them has his or her own checklist of matters to do which includes checking with the subordinate manager on a daily basis to make sure that they performed all of their assigned tasks. It is a simple system but vital to making sure the systems that are created are executed and executed 100 percent of the time.

The person responsible for executing the front-line systems reports to their manager that they have been completed. That manager then reports to their supervisor that all tasks have, or have not been done as required. If all works properly, we are only speaking about a few minutes out of the top level manager’s day to deal with the reporting of the underlying systems. But it makes sure that all of those systems are running and running to perfection.

4. Listen to the Numbers. Numbers Do Not Lie.

Lastly, even when you set up the systems and grow management and quality control systems in pace with your organization’s growth you must still always be mindful of the numbers. Numbers don’t lie. If used properly, they will tell you where additional oversight or changes are needed within your organization to increase efficiency, sales, and quality.

Returning to our opening discussion, let’s say sales are great. They are growing at an unbelievable pace. Yet your accounting department tells you something is amiss. Something is wrong. Your expenses are outpacing your revenue growth. The numbers don’t lie and they will tell you more about the health of your business than anything else.

So what do you do when the numbers tell a story you don’t like? Use them. Use them to determine what the problem is. Create a system to fix the problem and then assign it to someone to manage and create the internal systems to ensure those systems are run to perfection 100 percent of the time.

The Trademark Companyhttp://www.blogger.com/img/blank.gif

Want a Discount? Just Ask.

2012-01-24T12:17:00.006-05:00

As Featured on Inc.com.

Awhile back I was having lunch with a few friends. After the bill came she looked at it, called the waiter over to the table, and explained that she wanted 10 percent off of the bill. Looking somewhat puzzled the waiter asked if there was something wrong with her food? “No,” she replied. “The service,” he inquired. “No,” again was her reply. “Why?” then he finally asked. Her reply stunned all of us at the table. She simply felt that the cost was too much and wanted a discount. We all chuckled as the waiter left to speak with his manager about the request. However, to our surprise, he returned a few minutes later and said his manager agreed to give her 10 percent off of the bill.

We were amazed. How did she do it? How did she literally get them to knock 10 percent off of the bill? We asked her what the secret was? Her reply was brief and amazingly simply: “I asked.”

It seems that our friend had learned long ago to always ask for a discount. Why? Why not? Over the years she had made a practice of simply asking for discounts. This practice was not merely limited to restaurants. Every time she would buy something she would always ask. Most times she gets a discount. Just for asking. From the purchase of clothing at department stores to groceries, she always asks.

A few weeks later we were at a neighborhood party and the subject came up among some of the attendees. One of our neighbors is the CEO of relatively large company. He stated that one of the most fascinating courses he took while getting his MBA was one in which on a given day the professor challenged each member of the class to bring in a gallon of milk the next day and see, through negotiation, how little they could pay for the same. Amazingly, the next day the class arrived with their stories concerning their various negotiation tactics. Of note, roughly 80 percent of the class had received the milk completely for free with the remaining 20 percent having purchased it at a severe discount. What was the common element of all of the stories? Quite simply, they asked for a discount.

So how does all of this apply to your business? Simple. Ask for discounts.

On the heels of my lunch and neighborhood party we began looking at our various ways to save our company money. As a business heavily reliant upon accepting credit cards, one of our major overhead costs is merchant account fees. So what did we do? We called our merchant provider and requested that they reduce the rate they charge for our processing our credit card transactions. How did they respond? They agreed to reduce our rates! In one phone call—about ten minutes of time—we received a reduction in our merchant processing rate which equates to thousands of dollars in savings every month. Just for asking.

So how can you use this to save money in your business?

1. List Your Expenses: Create a list of your recurring monthly expenses. Make sure to include credit card processing fees, advertising expenses, other service providers.

2. Call and Ask for Discounts: Call your service providers and, quite simply, ask for discounts. You’ll be surprised how readily you will receive the same. And don’t be shy about mentioning how their competition would love to have your business. That will often be the spark they need to offer that discount.

3. Train Yourself to Keep Asking: Finally train yourself to keep asking for discounts, personally and professionally.

You may not receive a discount every time you ask. But you will definitely get some. Just for doing one, simple task. Just ask.

The Trademark Company

3 Tips for Posting Your Legal Questions in Open Internet Forums

2012-01-23T13:15:00.003-05:00

As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.

The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.

Recently we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement, which he unknowingly had, and stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later that week. Wow.

Our advice to all that read this is simple: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. If, after reading our admonition, you still feel compelled to use this type of medium here are a few tips we suggest that you implement:

1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.

2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGET for dog food. Is this a problem?”)

3. Never Identify the Other Party. As you should not use your own name you also should not use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts or otherwise, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.

So keep posting if you must. Just please be careful.

The Trademark Company

Trademarks and Priority: What You Need to Know

2012-01-20T14:44:00.001-05:00

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

Trademarks and Priority: What You Need to Know

2012-01-20T14:44:00.000-05:00

4 Traits of Great Leaders

2012-01-19T14:34:00.003-05:00

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

When Do You Acquire Rights in a Trademark? Here’s What You Need to Know.

2012-01-17T14:00:00.003-05:00

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

5 Things I Look for in a Great Job Interview

2012-01-16T10:22:00.003-05:00

As featured on Inc.com.

In my career I have reviewed thousands of resumes and conducted hundreds of employment interviews for both The Trademark Company and other businesses for which I have worked. In doing so, I got to see the good, the bad, and the downright ugly in terms of resumes, interviewing skills, and the like. Here are my tips, for other CEOs looking to hire, that make a great resume stand out from the good ones.

1. Attention to detail

How many times have you heard this one, right? Pay attention to detail. Let me say it again, PAY ATTENTION TO DETAIL!

There’s a great story at the end of the movie Coming to America with Eddie Murphy. It goes something like this:

A man goes into a restaurant. He's having a bowl of soup and he says to the waiter, “Waiter come taste the soup.” The waiter says, “Is something wrong with the soup?” He says “Taste the soup.” The waiter says again, “Is there something wrong with the soup? Is the soup too hot?” The man says again, “Will you taste the soup?“ “What's wrong, is the soup too cold?" Replies the waiter. “Will you just taste the soup?!” “All right, I'll taste the soup,” says the waiter, “where's the spoon??” “Aha. Aha! ...”

At this point you may be asking yourself, “Okay, so what does this have to do with identifying a great candidate?”

Not less than two months ago I received a wonderful e-mail from an applicant seeking to work for The Trademark Company. Their e-mail was personally crafted. Their note struck a wonderful tone emphasizing capability and a willingness to learn more about what we do here. Most importantly, they emphasized their attention to detail. I was sold. I was ready to open up their resume and see what they had to offer. And then, “Aha. Aha! ...”

The applicant had failed to attach their resume. In the blink of an eye all of the time they had spent preparing for this submission, researching me, the company, and the job’s requirements, vanished into thin air. Poof!

Some CEOs may have overlooked this and just asked for the resume. But you can’t say you have an eye for detail and then fail to deliver on the point. Everything the candidate does, from their cover letter to their resume and beyond must prove that point. Otherwise they are just wasting your time. I passed on that candidate.

2. Proofread

My contracts professor in law school told this one to the class one day. Although he was an otherwise socially-challenged individual this story has always stayed with me.

It seems that at some juncture he was involved in delivering a speech on some topic way back when that involved a “public option.” He had written and prepared the speech but had left the PowerPoint slide presentation to one of his assistants.

Well, as he began delivering his speech–a seemingly dry speech–he could not understand why a wave of chuckles and murmurs would, from time to time, arise from the audience. It was not until he neared the end of his presentation that he glanced up at the screen projecting the bullet points of his speech behind him. And right there, right in that moment, he understood with perfect clarity why his speech had evoked the unexpected reaction from the crowd.

You see, if you omit the letter “L” from the word “public” it won’t be picked up by spell check. It will, however, be picked up by anyone else reading the slides as you deliver your speech on the “pubic option.”

This could very well be you at your next sales presentation...pissed and embarrassed because you overlooked your employee's failure to proofread his resume during the hiring process. So, check the candidates resume and cover letter for misspellings that spell check might have missed. In so doing you will make sure that you hire someone that's thorough and doesn't rely on spell check to do their job.

3. Preparedness

Personally, one of the first things I always do after an interviewee leaves is to ask every single person who came into contact with them what they thought. Why you might ask? You never know what little windows into your prospective employee this may provide.

For instance, once I asked one of our receptionists what they thought of a particular interviewee. I was very surprised to hear what she had to say. She said she thought the interviewee was pleasant but they did have some trouble with her when she first arrived. Of course I inquired as to why. It seems that upon arriving the prospective employee had no idea who she was interviewing with so the receptionist had to call around the office for ten minutes until she could figure out who to notify that their appointment had arrived. I have to say, I thought this displayed a lack of preparedness on the interviewee’s part, especially in consideration she was interviewing for a job that had primary scheduling responsibilities for me and would require her to know and keep track of all of our most important customers.

In another case, after a 45-minute interview the interviewee stood and said, “Mark, thanks for the second interview.” Big problem, my name is Matt. Nevertheless, I shrugged it off as perhaps I had misheard the applicant or maybe he had simply had a momentary lapse of reason. However, when I walked him to the door he proudly reiterated my name, “Mark, again thanks. I look forward to hearing from you.” Every fiber in my being yearned to reply, “Well, if I meet this Mark fellow I’ll be sure to have him call you.” I did not. I also did not call him back.

A candidate should know everything about you that they can find out and engage you on a level that you will enjoy and that moves you one step closer to offering them the job.

4. Phone and e-mail correspondence

Another thing that also gets overlooked is professionalism in e-mail and phone communications. I pay attention to the candidate's e-mail address and how they answer their personal phone.

Sure we all have private lives, but we all have to be professional in dealing with employers and, most importantly, prospective employers. As such, if their e-mail address is "bigsexy@gmail.com" or “hunkaburninlove@yahoo.com” think twice about hiring them. Gmail, Yahoo!, as well as other like companies have a great price point for new e-mail addresses: free! There's no excuse for not having a professional-looking e-mail address.

For me, an interview starts when I call you to set up the interview. Recently I called an applicant, they picked up the phone, and they must have been at a the reunion tour of Van Halen because all I could hear was “Ain’t Talkin’ Bout’ Love” blasting through my phone. I mean, it was so loud I could actually see people in my office starting to bob their heads to the tunes. After a few attempts shouting into the phone “Is [Name Omitted] there?” finally the music parted and I was able to hear once again. The heads stopped bobbing in my office and the person on the other end said “Speaking.” Ahhhh. Well, I know they love music...and that they lack judgement.

5. Honesty is over rated

Yes, you want your potential employee to answer questions truthfully, but answering too truthfully may also show a lack of judgement. For instance, I often ask the hypothetical question, "If you were hired and six months after you were hired another opportunity presents itself would you go on an interview for that opportunity?" You would be surprised at how many people say they would. Wrong answer!!

Let’s take one of my more infamous examples. Once I was asking a prospective employee to explain an 18-month gap in his employment history. To this day I remember his response verbatim. It went like this: "Man, the whole work thing ... ya' know... like, wow." I was left both mouth agape and speechless by the answer. Needless to say... He did not get the job.

The Trademark Company

4 Steps to Creating a Great Place to Work

2012-01-12T13:09:00.001-05:00

Some time ago we set out to create one of the greatest places to work in America. We borrowed workspace ideas from Google. The concept that everyone gets benefits from Starbucks. An open, collaborative environment from multiple software and computer gaming companies. And, above all, a zealous cultural dedication from the likes of Zappos. But along the way in creating our ideal place to work something would occasionally get in the way: us.

You see, when you strive to create a great place to work you can influence it and shape it so far. But ultimately there will come a time that you must step aside and let it grow on its own from the seeds you have sown.

For instance, early on we would shut down the main office at 4 p.m. on Fridays and break out some adult beverages to kick off the weekend. Everyone seemed to really enjoy it and it became something that the whole office looked forward to at the end of the week. Initially, it was just our employees—bonding outside of the nine to five routine.

Soon, however, spouses, friends, and even entire families began showing up. Our initial reaction was that this metamorphosis would defeat the original purpose of the gatherings. Here we were shutting down early so that our people could bond and build relationships with one another and they were bringing in outsiders, people not employed by the company. Should we limit participation to only employees? Would this alienate those who attend? Or should we just let it naturally evolve and see what happens?

Ultimately we stepped back and let it evolve. What a great decision. Everyone loves our Friday happy hours that often stretch well into the evenings. Our people have bonded during these times not only with each other but with each other’s families and friends. In short, we created the concept but left it to our people to develop the culture that they wanted within that concept. We let go.

As a result, our culture, and by extension our company, is better than ever.

So how do you create a great place to work while letting go? Here are four essential steps to do so:

1. Figure out the type of workplace you want to create. What is important to you as you build your business? Dedication from employees? An enjoyable place to work? A collaborative atmosphere? Whatever the case, create your blueprint of what you want always allowing for tweaks along the way as the business grows.

2. Hire the right people that have a similar vision for the workplace. Sure, competency is a given. But hiring people who are great at what they do but do not fit within your vision for your growing business will not serve your ultimate goal. Spend a little more time in the hiring process and bring on only those who are not only great at what they do but who also share your vision for the future of the business.

3. Plant the seeds of your vision within your workforce. If you are trying to create and fun atmosphere set up happy hours, friendly competitions, celebrations of accomplishments, whatever. Allow for others to bring forth similar ideas and act on those ideas. In short, enable the workplace to become the place you envisioned it to be.

4. Most importantly, let go and get out of the way. A culture is organic and once in place it should be permitted to grow. If you have hired the right people you do not to control every aspect of the evolution of your workplace. Sure from time to time you should be there to help guide it along in a general sense. But if the office wants to dress up for Halloween and you typically do not, buy a costume. If the office wants to dress like your favorite royal for the wedding of William and Kate be ready to do so.

In short, once the blueprint is constructed and the right people brought on board you’ve got everything you need to create a great place to work. Now it’s time to let go.

The Trademark Company

4 Steps to Knock Out Work-Place Stress

2012-01-10T13:39:00.003-05:00

by Matthew H. Swyers as Posted on Inc.com

I am always amazed at how many people stress out over seemingly manageable deadlines at work. Back in the day when I was an attorney with a law firm in Washington, D.C. associates would come in my office riddled with concern over some legal brief to which they had to respond.

Without hesitation I would always smile and ask them how long they thought it would take to write the response. Almost without exception they would respond it would take four to five hours to complete.

I would then ask when the brief was due. Typically the answer was in about five days.

“So”, I would reply, “You need to find four to five hours in the next 120 hours to complete this assignment.” Their brow line would begin to soften. “Huh?” was often the response I would get from some of our finest legal eagles. I would repeat myself this time slightly raising my eyebrows to connote an “Are you getting this?” look.

“You need to find five hours in the next 120 hours to complete this assignment.” The response would begin: “Well, when you put it that way…” I would reply: “What other way would the time-space continuum have me put it?” The tension would ease. The air would soften. And you could actually watch them physically begin to relax.

We are often faced with matters which induce the reaction known as stress, especially in the workplace. Perhaps the single largest cause of stress in the workplace is the imposition of significant work obligations coupled with perceived unrealistic deadlines. But irrespective of the burdens imposed upon you, stress, in and of itself, can impose an even greater burden upon your productivity and actually adversely affect your ability to accomplish your assigned tasks.

To be effective you must teach yourself to live with stress. You must teach yourself to embrace the situation, move beyond your trepidations, and get the job done. Here are four steps you can take today to knock out work-place stress:

1. Remember, the Glass is Half Full: If there is anything that the last few years has taught us it is not to take employment for granted. That is not to say that you should be happy to be in an abusive atmosphere. But for every project you get you can either look at it as yet another thing heaped upon your plate or a blessing that there is work to be had. Think about it, would you rather things be so slow you are sitting at your desk twiddling your thumbs waiting for your business to fail or would you prefer that business is thriving and everyone is getting lots of work. In this economy try looking at assignments as a good thing, as the glass being half full. So the next time an assignment is handed to you do not stress out because of the increased amount of work, be thankful there is work to be had in your company and get on with it.

2. Compartmentalize: Learn to compartmentalize your assignments. Looking at everything you have on your plate can induce stress, diminish focus, lead to lower productivity, and ultimately – in, a vicious circle, induce greater stress. Focusing on what you have to do right now can reduce those levels of concern. Set realistic daily goals for that which you need to do and then only focus on getting those goals accomplished. By focusing on a smaller subset of the larger picture you will derive a sense of accomplishment from your those goals being met that, in turn, will allow you to focus more on those daily tasks reducing the overall tasks on your plate which will lead to reduced overall stress levels.

3. Compute and Communicate: Stress is also caused by concerns imposed by an unrealistic goal. Like my example above, however, such stress is often misplaced. When you are assigned a new task that induces stress because of a perceived unrealistic deadline stop and take a minute to really think it through. How much time do you estimate it will take to complete the task? How much time is there before the deadline? Is there enough time before the deadline to complete the task and those other items on your desk? You would be surprised at how often this simple exercise can lead to a direct reduction in your stress level. Rather than assuming it is going to be impossible to achieve this goal actually determine if it will be. If it is attainable congratulations, you have just reduced your stress level.

But what if after conducting this analysis you are convinced it cannot be accomplished? In a word, communicate. Stress can also be caused by bottling up your fears of failing at a task in which failure is assured. When that occurs, communicate to the person assigning the task that it likely cannot be accomplished in the parameters given and offer a candid, non-confrontational or judgmental explanation as to why. Once out in the open a solution may be presented.

4. Accept the Inevitable: Understand that whatever is going to happen is going to happen. The project is going to get done, it may not. The assignment will be completed within the given parameters, or it will not. But whatever the outcome, there is an end in sight. There is a light at the end of the tunnel. And no matter what that light is, at some point the stress you are experiencing, the task you have been assigned, the project you are working on, will be done. And all that will remain of the same is the recognition that you either did, or did not, get it done. But it will be over. And knowing that the matter causing your stress is finite is powerful medicine to fight the stress, to sooth your nerves. You will get through this, one way or another, and that realization in and of itself will help you soldier on and fight back whatever nerves still remain.

3 Reasons Why You Should Perform a Trademark Clearance Search for Your Trademarks

2012-01-09T15:29:00.001-05:00

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

IP Law 101: What a Start-Up Needs to Know About the 3 Types of IP Rights

2012-01-06T14:30:00.000-05:00

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

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

2012-01-05T14:42:00.002-05:00

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

When To Enforce Your Trademarks: Think Before you Act.

2012-01-04T13:33:00.001-05:00

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

Lesson from the U.S. Postal Service

2012-01-03T13:10:00.000-05:00

The United States Postal Service (USPS) can trace its roots back to 1775 when Benjamin Franklin was appointed the first postmaster general. The mission of the USPS was then, and in large part remains, to provide the American public with trusted universal postal service at affordable prices.

But a few things have changed since 1775 here in the U.S. In 1775 the primary means of communication was by and through writings on paper. The country needed a reliable service to get messages from one point to another to serve the greater good. But with the invention of the telephone circa 1876 and, more recently, the Internet and related electronic mail service our need to physically write things down on a piece of paper and to have it delivered to another to communicate has been greatly diminished if not virtually eradicated. Add in competitive forces from private parcel services such as UPS and FedEx and, in the absence of an evolving mission, the USPS has effectively rendered itself moot.

As proof of the point in recent years the USPS has fallen upon hard times. On December 5, 2011 the USPS announced it would close more than half of its mail processing centers, eliminate 28,000 jobs and end overnight delivery of first-class mail. Now, some of these cut backs have been scaled back or put on hold, but in the absence of an evolving mission and recognition of those competitive forces the USPS will not be able to right the ship and will soon become a relic of our country’s past.

So what can you learn from the USPS’s struggles? Here is the lesson I have taken away that is applicable to every business.

The Marketplace is Evolving Around You: Your Business Must Evolve With It

In 1775, aside from face-to-face meetings, the primary means of communicating with one another was to send a letter. Thus the original mission of the USPS fit nicely within this market: to provide the American public with trusted universal postal service at affordable prices. By the late 1800s the landscape of communications was changing with the increasing popularity of the telephone. Our ability to communicate with one another was evolving and moving away from the written word. Still, the USPS’s mission remained unchanged.

By the 1970s the modern pre-cursors to today’s facsimile machines were being perfected such that by the 1980s almost all businesses and many homes began relying on the same to transmit papers and documents outside of traditional mail. Still, the USPS’s mission remained unchanged.

Finally, the 1990s ushered in the technological wave that may ultimately prove to be the last straw on the USPS’s already strained back: the Internet. Now with electronic mail moving through cyberspace at the blink of an eye and texting becoming an ever-increasing component of our society today’s younger generations cannot even comprehend waiting for the proverbial mail to arrive. Still, the USPS’s mission has remained unchanged.

Why is this so important? In understanding and evaluating the struggles of one business we can use these lessons learned to avoid similar consequences in our own.

So where could the USPS have changed course to avoid its current path? Perhaps the USPS would have invested in secure transmission of facsimiles offering better facsimile services than others through the 1980s. When the 1990s rolled around instead of mailboxes on every corner combined e-mail kiosks / mailboxes could have been rolled out leveraging the power of communication all the while being true to the original intent of their mission. Almost everyone has a gmail.com or yahoo.com email account. Why did they not provide the most secure free e-mail accounts available to the general public maintaining a living and breathing version of that original mission?

Why? They did not evolve as communication technology evolved around them. So what is the take away from this brief study? How does it apply to your business?

Your business must evolve. Keep your finger on the pulse of your marketplace to know where it is headed and how your business must adapt to meet the ever changing needs of your customers. If you can, your business will continue to flourish. If you cannot, well, that message has already been delivered by the USPS.

The Trademark Company

What to Do If You Receive a Cease and Desist Letter

2011-12-30T13:04:00.000-05:00

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

Allowing Others to Use Your Trademarks? Get it in Writing!

2011-12-29T13:13:00.000-05:00

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

How Much Does it Cost to Register a Trademark? Here's What You Need to Know.

2011-12-28T13:09:00.001-05:00

How much does it cost to receive a U.S. Trademark Registration? Here is what you need to know about the costs involved in registering a trademark in the U.S.

The ETEAS and ETEAS PLUS Systems

The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration. Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.

The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered. For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25. If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.
We’ll explain below what “per class” means.

As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system. The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process. In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.

Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.

U.S. Filing Fees Are Per Class

Next, applicants should understand that the USPTO’s filing fees are per class. U.S. Trademark Registrations are goods or services specific. This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.

For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.

There are currently 45 classes of goods and services recognized by the USPTO. Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.

As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:

Class 9: Pre-recorded music CDs.

Class 41: Live performances by a music band.

If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class). In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).

As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.

The Distinction Between Use and Intent-to-Use Applications

Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a). However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use application under Section 1(b). If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.

In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.

The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use. This subsequent filing, however, requires an additional charge of $100 per class of goods and services.

Accordingly, if you have a 2-class intent-to-use application filed under the TEAS system the fees to register the mark would look something like this:

Application Fee = $650 (2 x $325);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use Application = $850.

But it does not end here. We mentioned above that to file the Statement of Use costs $100 per class. Of note, from the date of the Notice of Allowance an applicant has only 6 months to file their Statement of Use establishing use of the mark. If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use. An extension of time to file the Statement of Use costs $150 per class. An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.

So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance. Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance. Under that scenario the same would look something like this:

Application Fee = $650 (2 x $325);

Extension of Time in Which to File Statement of Use = $300 (2 x $150);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use
Application with One Extension of Time = $1150.

As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.

Law Firms and Filing Services

Lastly, we would be remiss if we did not mention the cost of assistance in the trademark filing process. The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.

The obvious expense to using a law firm or filing service is the additional costs involved in employing the same. The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.

Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.

Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.

Summary

In conclusion, there is much to know about the costs involved in filing for a trademark. Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application. Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.

Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system. However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.

In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process. In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).

TheTrademarkCompany.com

Why You Should Work Smarter, And Harder

2011-12-27T13:03:00.000-05:00

I was recently speaking to Dan Hanlon, CEO of Excelsior-Henderson motorcycle company, one of the greatest U.S. motorcycle companies of all time. He told me that for over twenty years he kept a small box on his desk and on its lid it read "The Secret to Success." Upon opening the box there was a single-word engraved–"Work." While we chatted he asked me what had contributed to The Trademark Company’s success. I replied "Ask me at 6 a.m. on any given Saturday." He loved my response.

In recent years there has been a host of books out about how to work smarter, not harder. These books lead the reader to believe that by simply working smarter and not harder you may be able to break free of the chains of full-time work with a fraction of the weekly effort.

But while the temptation to work less and make more will always be present, ask yourself will that truly get you and your business to where you want it to be?

There is an old saying that most overnight success stories were twenty years in the making. Richard Branson is known for rarely taking a day off and even when he was vacationing at his luxurious Necker Island estate (prior to the recent fire) was known to hold early-morning board meetings remotely for his various companies during his stays.

Gene Simmons of the iconic rock band Kiss insists upon working seven days a week. To paraphrase his rationale, if you work four hours on Saturday and another four on Sunday that’s eight extra hours per week or 416 hours more per year. It’s like finding an extra 10 weeks of work by merely putting in a little work on the weekends.

This is not to discount the theory of working smarter, not harder. You should still work smarter, just continue to work hard while doing so.

So how do you build your business? How do you beat out your competitor? Work harder. You have to dedicate yourself to putting in the time if you want to achieve the goals you set.

Does this mean you have to ignore your family or friends to do so? No. It just means you need to find those times in the day or week when you can put down the remote, turn off the TV, and enjoy putting in a little extra effort in building your business and love doing so.

The Trademark Company

The 2:00 A.M. Test for Hiring

2011-12-22T13:06:00.002-05:00

For anyone who has known me for any period of time you will, from time-to-time, hear me extoll the virtues of the 2:00 a.m. test. No, it’s not the SATs, ACTs or any other number of our immeasurable acronym-driven societal placements we use to measure our station in the world. It is a simple axiom which I have held for as long as I can remember: the people you want in your life are the ones that are there for you at 2:00 a.m.

What am I talking about? It’s really quite simple.

Think about all of the people in your life. Your friends, your co-workers and, of course, family. Who are the ones who are really there for you? Who are the ones that truly have your back? The measuring stick I have always used is this. If I call someone at 2:00 a.m. and say "I blew a tire and need some help" the people of value are the ones who immediately respond "Where are you, I’ll be right there." If the response is anything but this, for instance "Do you know what time it is?" you know that although they may be your buddy, in the end they don’t really care. And by the way, the response to "Do you know what time it is?" in that context is "Yup, time to get a new friend."

But the test is not just limited to your personal life. It is equally applicable to business.

Who do you want to hire? A person that could care less about your company but for the fact they know their pay check is going to cash every two weeks? How about the person that when you call them at 2:00 a.m. and say "A water line broke in the building. Can you get in and help us get the computers off the floor" they say "On the way." (By the way, this actually happened to us years ago in our first space before we built our own building. Bonus tip: Never lease space with an adjoining wall to the building’s water pump room).

So when hiring come up with your own set of 2:00 a.m. questions unique to your business. In this economy there is, fortunately but also unfortunately, too many qualified people to choose from to fill your ranks. So when deciding, why not go ahead and add this additional level of selectivity? After all, at the end of the day wouldn’t you like them to pass the 2:00 a.m. test?

The Trademark Company

3 Types of Lesser-Known Trademarks That Can Help You Protect Your Business

2011-12-21T15:31:00.001-05:00

We generally recognize that a trademark is any word, slogan, or symbol used to identify the source of goods or services used therewith. McDonalds for restaurant services, the Nike “swoosh” for shoes, and the iconic apple for, what else, computers. But did you know that you also can protect colors as trademarks? Sounds? And even the overall look and feel of a business? You can, and here’s how.

1. Trade Dress

Trade dress is a type of trademark that generally protects characteristics of the visual appearance of a product, its packaging, or even the overall look and feel of a business so long as it signifies the source of the product to consumers.

What can be considered trade dress you may ask? We’ll let’s look at some examples:

A. Product Design

The design of product packaging can be registered as a trademark provided that the packaging identifies the source of the product and is not attempting to be registered to protect some functional element of the packaging (that would be a patent). The best example of this we know of is the shape of a Coca Cola bottle. Everyone recognizes the hour-glass looking design as containing that little slice of heaven from those folks from Atlanta. So when you see the design of the traditional Coca Cola bottle and you recognize it as the bottle in which Coca Cola provides its product, that is the perfect example of packaging which functions as trade dress and, correspondingly may be protected by a Trademark Registration.

B. Color Schemes

Color schemes of restaurants as well as similar features of businesses can also be protected as trade dress under U.S. Trademark Laws. For instance, if you have been operating a uniquely designed or themed restaurant or business for some time and then begin to franchise the same the color scheme and other elements of your business may be protectable as trade dress. For instance, on the East Coast we have a restaurant franchise that is expanding rapidly called Five Guys. Five Guys offers great burgers and fries. For our purposes today, however, it is important to know that no matter how the restaurants appear on the outside they all have one common theme on inside: red and white checkerboard tile walls. So when you walk into the restaurant, even if you did not see the sign on the front of the building telling you that you are in a Five Guys, you know that those red and white checkerboard tiles mean that you are about to have a bacon double cheeseburger with a side of double-fried french fries like no other. You know you are in a Five Guys. And if you know this merely by looking at the color scheme on the walls that is the fundamental point of trade dress protection.

C. Overall Appearance

Additionally, and drawing upon the above, an overall appearance of a trademark used in connection with a product or service can be protected. This is where trade dress gets a little broad and often difficult to digest. But for our purposes we’ve talked about color schemes and package designs. The law has also been used to extend to generally recognized images and manners of presentation as well. We think the ongoing story of the Naked Cowboy best captures this concept.

For any of you who have been to New York City in the past decade or so there is symbol of America right in Times Square that cannot be missed. The ball that drops every year at the stroke of midnight you may ask? No. The giant billboards and flashing neon and LED screens 30 stories high? Nope. We are talking about Robert John Burck, aka - the Naked Cowboy.

Since 1997 the chiseled and tanned Naked Cowboy has strolled through Times Square wearing nothing but a pair of white briefs, white boots, matching cowboy hat, guitar and a smile singing to tourists and posing for photographs. Like the U.S. Postal Services’ age-old motto neither rain nor sleet nor dark of night can stop the Naked Cowboy. You can catch him strolling through Times Square during the dog days of summer through the coldest days of winter – all still in his iconic skimpy manner of dress.

A few years back Mars, Inc., the owners of the M&M brand of candies, opened M&M World in Times Square. As the popularity of the Naked Cowboy grew Mars thought it would be a great marketing ploy to parody the Naked Cowboy with a Times Square billboard of one of their M&M characters dressed in white briefs, white boots, the white cowboy hat and white guitar. Well the Naked Cowboy wasn’t down with that tune. He sued. And guess what? He won (or at least won a settlement). In short, his lawyers argued and convinced Mars that the Naked Cowboy’s overall likeness and image was protectable and, accordingly, by posting the billboard Mars was infringing upon the Naked Cowboy’s trademark – and trade dress - rights.

So as the Naked Cowboy teaches us even the overall appearance of a performer or otherwise can be protected as trade dress if that overall appearance has sufficient recognition value.

A post script to this example, as of press time it has been reported that the Naked Cowboy is now enforcing his rights against a performer who has materialized and is calling herself the Naked Cowgirl. Given that he has already enforced his trade dress against one of the world’s largest candy manufacturers, our recommendation to the Naked Cowgirl: get outta Dodge.

2. Colors

Another form of trademark protection can be found in the ability to protect colors. Not color schemes as above. Just colors.

There is perhaps no better example of this in recent times then UPS’s attempts to register the color brown in connection with shipping services. In the early 2000s UPS determined that it wanted to lock up the color brown. The U.S. Patent and Trademark Office initially denied their efforts.

Ultimately it was held that a business can protect a mere color as a trademark, but only if it can show substantial evidence of acquired distinctiveness in the color as a trademark. In other words when consumers see a specific color they think of your goods or services. That’s why, for the past several years, UPS has run the ad campaign “What Can Brown do for you?” They are ingraining in the minds of the consumer that when they see the color brown they think about UPS’s shipping services.

So you can protect merely a color, but it will cost you a lot of green.

3. Sound Marks

Lastly did you know you can protect sounds as trademarks? It’s true. The rumble of a Harley Davidson. The “Bum ….. bum bum bum bum” of Intel. Even the message alert sound of plane that Southwest Airlines uses in its commercials. These can all be protected as trademarks provided, as above, the trademark holder can show that in the minds – and in this case ears – of the consuming public when they hear that specific sound they think of the specific company’s goods or services.

Conclusion

So why do these matter? In protecting your brand identity people are often constrained to thinking about protectable trademarks as being merely a slogan, a logo, or a company’s name. But as we see above, a Trademark Registration can extend to protect a whole host of other things that consumers use to identify the source of a product or service.

So if you are a performer with a unique image and persona, a business that uses a specific pattern of décor or layout, or package your product in a unique package design that your competitors love to imitate remember the U.S. Trademark Laws are here to help you protect these signature trademarks as well.

The Trademark Company

3 Things to Consider Before Filing a Domain Name Dispute

2011-12-20T14:55:00.000-05:00

We are often asked what our customers can do when someone else begins use of a domain name that is similar to their trademark(s) and, as a result, web site traffic – and business along with it – is being stolen by a new, competing new web site. In many instances the answer is clear: Initiate a Domain Name Dispute against the owner of the new site.

How is this done? The answer is simpler than you may believe.

Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.

The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:

(1) the domain name is identical or confusingly similar to your trademark;

(2) the domain name owner has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:

(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.

(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.

(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.

As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.

The Trademark Company

The Trademark Dilemma

2011-12-19T10:13:00.000-05:00

As a former trademark examining attorney for the U.S. Patent and Trademark Office and founder of The Trademark Company I am often asked for suggestions on how to select a great trademark by our start-up business customers. The response is always the same, "It depends on what you want out of your trademark."

There are two schools of thought in selecting a great trademark that every new business must consider. On one hand do you want to use a completely coined name? Something that no one has ever heard of such as Google or eBay.

On the other, do you want a trademark that creates instant interest in the product or service because it tells your prospective customers what you provide and what they’ll get (e.g., FROSTED MINI WHEATS for breakfast cereals, VISION CENTER for retail store services featuring eyewear).

Both schools of thought have their benefits. Both also have their detriments.

Which should you choose? Like I said above, it depends upon what you are looking for out of your trademark. Coined trademarks, those that are completely made up, are the strongest form of trademarks and, in theory, the easiest to protect (e.g., Google, eBay, Hulu, etc.). But beware, although easier to protect, such trademarks do not tell the consumer what you do or what goods or services you provide. As such, if you intend to coin your own trademark be ready to spend more to promote your brand name as there will not be instant recognition by consumers of what you do or provide.

Descriptive trademarks, on the other hand, provide the owner with instant recognition for what their brand does (e.g., NEW YORK PIZZERIA). This comes at a cost, however. Descriptive trademarks are very hard to enforce and, as a result, may not provide the owner the ability to enforce their trademarks (e.g., the owner of NEW YORK PIZZERIA, more likely than not, cannot stop someone else from using NEW YORK CITY PIZZERIA even though the trademarks are very similar). As such, if you are looking to adopt a trademark that instantly drums up interest in your goods or services and will cost less to brand adopting a descriptive trademark may be best for you. You simply need to know that the rights you will acquire in any such trademark may never entitle you to exclude others from the use of similar trademarks.

So in the end how do you select a great trademark? It depends. What are you looking for?

The Trademark Company

How Do You Acquire Rights in a Trademark. Here’s What You Need to Know.

2011-12-15T15:03:00.001-05:00

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

How to Protect Your Trademark

2011-12-14T13:07:00.001-05:00

How to Select a Great Trademark

2011-12-13T14:03:00.001-05:00

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

What You Can Learn from The Ritz-Carlton

2011-12-12T13:34:00.000-05:00

A few months ago we were reminded of what great customer service can do for a business. My wife and I had arranged to get away for a weekend to Charlotte, North Carolina to see one of Cirque du Solei’s latest shows. Having purchased the tickets months in advance we could not have known then that both the Duke and University of North Carolina’s basketball teams would be in town for the opening of the NCAA men’s basketball tournament.

As the masses of fans descended upon this little big town hotel rooms became scarce. Given our limited choices of hotels we decided to splurge and stay at The Ritz-Carlton, Charlotte. In doing so, we received a first-hand reminder of what a great customer service organization looks like and what great customer service can do for your business.

On Saturday morning we wanted to go out exploring. I realized I had forgotten my sunglasses in our car which had been parked with the valet the night before. Rather than have them pull the car around for my sunglasses I called the front desk and asked if they could run to the parking deck and get my glasses. The answer, “Yes sir, is there anything else I can help you with today?” By the time I reached the lobby the valet was there with my glasses.

Later as we were rushing to get ready for the show we realized my wife forgot to pack her hair brush. Again we called down to the front desk. Within minutes a Ritz-Carlton employee was at our door with a selection of brushes from the downstairs gift shop.

Does the Ritz-Carlton have systems in place for misplaced sunglasses or forgotten hairbrushes? Probably not. Rather, they simply create an environment that the customer is always right and that they will do what it takes to satisfy their guests’ needs.

On our last day we decided to get a work out in. In the exercise room every cardio machine has a fresh towel and bottle of water ready to go for guests. How? About every ten minutes a hotel employee sweeps through the gym, wipes down any equipment that has been used, rolls up a fresh towel for all such equipment and places a fresh bottle of water thereon for the next rider.

In short, from top to bottom every moment of the experience at The Ritz-Carlton reminded us of why they are a leader in customer service and why they enjoy the reputation of being one of the finest hotels to stay in the world.
So why is this relevant to your business? What can we learn from The Ritz-Carlton?

The value of becoming a great customer-service organization cannot be understated. It allows you to:

1. Charge a Premium for Your Goods or Services. Where your competitors may compete in a race to the bottom by lowering their prices, a great customer service organization can actually charge a premium for their goods or services. People are willing to pay more for the quality and the level of service they provide. Where would you and your organization rather be?

2. Better Equipped to Handle Customer Issues. Even the best of the best experience customer service issues once in awhile. Obviously we strive to eliminate all such issues prospectively by systemizing everything and training our employees on providing amazing customer service. But despite our best efforts customer service challenges will arise. When they do, if your employees are trained well, they and your organization as a whole will be better equipped to deal with these issues to keep your clientele ecstatically satisfied with the services you provide.

3. Create a Marketing Buzz About Your Business. When is the last time you heard someone recommend something that was just okay? Great customer service creates a buzz about your business which is worth its marketing weight in gold. In essence, great customer service organizations know that as word spreads through their emphatically satisfied customers about the level of service they provide, it will be broadcasted to the relevant consuming public. Before long your business becomes synonymous with a level of service customers want. It creates its own marketing buzz for your goods or services which, in turn, helps you distinguish your business from your competitors.

Does all of this work? Well, as we left The Ritz Carlton that weekend sure we paid a few dollars more for our room but we were happy to have done so. They took care of issues which arose during our stay that we did not even anticipate and did it with a smile. As for a creating a marketing buzz, this customer was so impressed he wrote about it on Inc.com.

So is it worth it to create a great customer service organization? You bet.

The Trademark Company

My Crisis of Conscience

2011-12-05T15:25:00.000-05:00

There’s a scene in the movie Pretty Woman where the corporate raider played by Richard Gere, Edward Lewis, has an epiphany about his life. He quips, to the effect, we never build anything anymore. In this moment Edward realizes that his life has been about tearing things apart, not building things up.

Although my epiphany was not as well defined, it was very similar to Edward’s in the blockbuster movie. I began my career as a trial attorney in the greater Washington, D.C. area. For years I was a lawyer paid to fight on behalf of clients, paid to figure out ways to beat the other side at all costs. I wasn’t part of a team tasked with creating great things. Rather, I was a mercenary for hire fighting for whatever side paid the bills. Well, something had to change. I had to change.

Initially I took a job with the U.S. Patent and Trademark Office (USPTO) to transition away from trial work and gain experience in trademark law. While at the USPTO I witnessed an interesting phenomena, a need if you will that had to be filled. On one hand there were small and medium-sized businesses out there that needed help. Not only in understanding the often complex process of receiving a trademark registration, but also in defending oftentimes frivolous lawsuits and actions from existing trademark holders. On the other hand, there were the experienced law firms that, for the most part, were simply too costly for the average small to medium-sized business to afford. Who could help these small businesses?

So we asked two simple questions: Can we create a company that provides the same quality of legal services as major law firms at a fraction of the price? Can we infuse a customer-serviced focus boarding on fanaticism into an industry longing for customer service?

In 2003 we began constructing the models and systems which would allow us to answer these questions in the affirmative. Years in the making the systems are now in place and the dream is being realized.

Today we represent thousands of customers on six of seven continents (No clients from Antarctica yet, go figure). For two consecutive years we have been recognized by the Inc. 500 as one of the fastest growing private companies in America, are the number three trademark filer in the world and recognized as one of the Top Trademark Firms by Intellectual Property Today, all while maintaining an A+ rating with the Better business Bureau.

Most importantly we are true to our original vision, a vision which has guided us along our journey. As Edward in Pretty Woman realized it’s about building businesses. And that is what we do, our passion: protecting our clients' trademarks so they can build their dreams.

The Trademark Company

Trademarks and Priority: What You Need to Know

2011-11-29T13:05:00.001-05:00

Your Trademark is Your Business’s Most Important Asset – Protect It!

2011-11-28T16:43:00.001-05:00

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

You Can’t Register Generic Terms as Trademarks So Stop Trying

2011-11-16T15:17:00.001-05:00

Many of our customers come to us trying to register trademarks that are generic terms for some good or service. Often the feeling is that if they register the term they will then be able to force others to license back the rights to use their “trademark”.

But among other issues with this business model is the U.S. Patent and Trademark Office’s prohibition against the registration of generic terms. In short, the U.S. Patent and Trademark Office will not register a trademark that so describes the class of goods or services for which it is used as to be considered one in the same (e.g., SHOES for shoes, RESTAURANT for a restaurant).

This issue was recently brought to the forefront of the national media by Apple’s attempt to register APP STORE. Their competitor, and long-time rival Microsoft, effectively blocked the registration of the trademark by arguing that it was generic for online retail store services that sell mobile applications for hand-held devices. Had they been unsuccessful Apple may have been able to claim exclusive rights to the term APP STORE forcing others to license the rights to use the same and, even worse, precluding others from using the terms altogether.

What does this teach us? You can’t register generic trademarks.
If the “trademark” you are attempting to register is the commonly known name for the good or service than it is generic and cannot be registered with the U.S. Patent and Trademark Office.

You are better of selecting a mark that does not immediately convey the purpose, a characteristic, or something otherwise descriptive of your goods – in other words an inherently distinctive trademark – and then spend your efforts building your brand. You’ll be glad that you did.

The Trademark Company

3 Tips for Posting Your Legal Questions in Open Internet Forums

2011-11-08T15:15:00.000-05:00

As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.

The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.

Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.

Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:

1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.

2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGET for dog food. Is this a problem?”)

3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.

So keep posting if you must. Just please be careful.

The Trademark Company

3 Reasons Why You Should Perform a Trademark Clearance Search for Your Trademarks

2011-11-07T13:51:00.001-05:00

IP Law 101: What a Start-Up Needs to Know About the 3 Types of IP Rights

2011-11-03T14:23:00.001-04:00

4 Things Every Trademark Owner Should Know About Monitoring Their Trademark(s)

2011-10-31T14:57:00.000-04:00

If you are a trademark owner did you know that to maintain rights in your mark you are required to police the use thereof?

Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.

In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.

Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:

1. USPTO.gov

The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).

For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.

2. Search Engines & Google Alerts

Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.

In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).

Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.

Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.

Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.

Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.

3. RSS Feeds & Twitter

Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.

To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.

4. State Trademark and Corporate Databases

One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.

There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.

As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.

The Trademark Company

When To Enforce Your Trademarks: Think Before you Act.

2011-10-26T17:00:00.001-04:00

What to Do If You Receive a Cease and Desist Letter

2011-10-24T13:41:00.002-04:00

Allowing Others to Use Your Trademarks? Get it in Writing!

2011-10-21T16:13:00.001-04:00

How Much Does it Cost to Register a Trademark? Here's What You Need to Know.

2011-10-19T13:20:00.001-04:00

How Do You Acquire Rights in a Trademark. Here’s What You Need to Know.

2011-10-18T13:26:00.000-04:00

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 McDonalds 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

Top Tips on Proper Use of Trademark Designations

2011-10-17T12:41:00.001-04:00

You can use the symbols TM for trademark or SM for service mark to indicate that you are claims rights to the marks without having federal registration.

The Federal Registration Symbol ® can only be used after the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol ®may not be used before the mark has actually become registered.

Also, and we have been seeing more of this of late - major corporations are moving towards not only using the ® designations but also using subscript phrases next to their registered marks stating simply "Registered Trademark" or "Trademark Registered".

So use the symbol or word designation that best fits your mark and model knowing you can use the superscript TM for trademark or SM for service mark at any time but must wait until your mark is registered to use the ® designation.

The Trademark Company

The Trademark Company's Matthew Swyers to Be a Featured Blogger / Guest Columnist for Inc. Magazine

2011-10-14T14:20:00.004-04:00

October 14, 2011

The Trademark Company is pleased to announce that Matthew Swyers has agreed to author a guest column / blog spot for Inc. Magazine. In the coming months his business insight both in and beyond the field of trademarks will be featured on the magazine's web site and from time to time in the pages of the magazine.

Look for Matt's new column and blog spot on Inc.com coming in November!

The Trademark Company

Trademark Fast Fact: Remember to Keep Your Contact Info Up To Date with the USPTO

2011-10-14T14:03:00.001-04:00

From time to time we are presented with issues created when our clients change addresses, phone numbers, or email addresses and then do not update the United States Patent and Trademark Office ("USPTO") with these changes.

As a reminder, if you or your company retains registered trademarks with the USPTO it is your responsibility to keep the USPTO advised of any address changes which may occur. If you do not, official correspondence such as challenges to the continued registration of your mark, notice(s) of abandonment, or otherwise, may never reach you.

So remember, to maintain your registrations make sure to keep the USPTO advised of any change in your contact information. This will make sure you receive all notices regarding your marks and could save significant sums if you fail to timely respond to official notices concerning your marks.

The Trademark Company

3 Types of Lesser-Known Trademarks That Can Help You Protect Your Business

2011-10-11T12:58:00.000-04:00

The Cost of Self-Enforcement of Your Trademark Rights: Self-Enforcers Beware

2011-10-10T13:31:00.000-04:00

Unfortunately we have had yet another reminder of why trademark holders should seek assistance when seeking to enforce or defend their trademark rights.

Of course we have changed the facts and circumstances slightly to avoid any ethical issues. In one such case we recently handled our client initially attempted to enforce their mark against another they thought was infringing upon their trademark. They sent letters explaining that the other’s mark was confusingly similar to their mark because of the various reasons they listed. They had voluminous correspondence with the other party showing how many instances of actual confusion there was among actual consumers of their respective goods and services.

Everything looked great. But for some reason the other side refused to give in.

The case came into our office and within a few minutes we realized why. Although our client had all of this evidence and had prepared their arguments beautifully they had overlooked one critical fact: the other party had started using their trademark before our client had begun use or acquired rights in theirs. As such, our client had, in essence, been doing a brilliant job of proving the other party’s case for them all the while thinking that they had superior rights and not understanding why the other side would not give in.

Now our client is busy preparing to select and adopt a new trademark all the while hoping that the other side does not decide to sue them for infringement.

Sometimes even our best intentions can be misplaced. No matter if you are just starting out or are a world-class entrepreneur if you are not an expert in trademark law do not make the same mistake our client did. Get someone on board early on who knows what they are doing.

If the other side is infringing on your trademark proper counsel can streamline the process. If after conducting due diligence in the matter it turns out the other party may have superior rights trademark counsel can craft a defensive plan and even an exit strategy, if needed, so as to minimize any losses you may incur from either continuing to use your trademark or moving away from the same.

The Trademark Company

How to Learn to Think Outside the Box

2011-09-29T14:55:00.002-04:00

A few years back our litigation team was faced with a seemingly insurmountable task: how to defend our client’s trademark rights against a Fortune 100 Company with a massive litigation budget. They had the facts on their side. They had money. And worst of all, they had a gaggle of lawyers that just made the case down right unpleasant. But as luck would have it they were missing one thing they had never learned in law school. Something big firm life had failed to teach them. Quite simply they were limited in their thinking as to that which was and not that which could be.

Looking beyond conventional defense methods we deconstructed every element of the case until we discovered a plan to turn the tables. In trademark law priority of use is everything. Whoever is the first to use a specific trademark typically wins an infringement case, especially were the trademarks and the goods and services of the parties involved are very similar if not identical. Well, the other side had priority of use. The trademarks were very similar. The services almost identical. Might as well just throw in the towel, right? Wrong!

In thinking beyond traditional defenses, we questioned what if we could find someone else who had priority of use over them over their own trademark? What if we could find this mythical entity and purchase their rights to their trademark acquiring their earlier priority rights to those of our opponent? Could it work?

Well, not only could it, it did. After a brief search we found a small company in a Midwestern state that miraculously had been using the same trademark as our opponent for more than 50 years. They were considering closing their business already when we arrived and bought them out for a fraction of what it would have cost to defend the case in court. Acquiring their trademark rights with priority of use before our opponent that gaggle of lawyers quickly moved from shooting at we fish in the barrel to being the fish in the barrel. The case settled within days.

How did we do it? How can you? When you are faced with losing a game you have to change your perspective. You have to change the game itself.

People often speak about thinking outside the box but how do you really do it? What does it mean to be limited to inside the box as opposed to being outside? The key is to define the box in any given situation and then to seek alternative, unconventional solutions that would be considered beyond the norm.

When you are faced with a seemingly insurmountable obstacle train yourself not merely to focus on the specific issue at hand but to think more expansively about all of the reasons and the paths that lead to the issue. Consider every possibility and hypothetical alteration of that reality along the path never being dismissive of anything and a new solution often arises. Here are a few tips we have learned along that have aided us in getting outside the box:

1. Identify the issue.

2. Determine whether a regular or typical solution to the problem exists.

3. If one does, you’re done. If no, map out everything that went into creating the
issue. In this aspect, be expansive. Include everything possible.

4. Once you start mapping out the issue more completely start looking for ways to
address the situation in one of the more outlying areas that was not considered
previously.

5. Never dismiss a possible solution on the basis “It just cannot be done.” Go
through it repeatedly until you know for a fact it can or cannot be done.

This is exactly the way we won the case referenced above. If we thought inside the box our thinking would have been:

1. Can we defend on the grounds the trademarks are not similar? No.

2. Can we defend on the grounds the trademarks are used on different services? No.

3. Do we have priority of use? No.

But in thinking outside the box we began looking at how did the opponent acquire their trademark rights they are asserting against us now? Could we acquire trademark rights that are superior to theirs? We could if there was another company out there using the same trademark as opponent before they did that would sell it to our client for a reasonable price. Well, let’s see if we can find one. And we did.

Teach yourself to look at problems more expansively. Never be dismissive of a potential solution before you have thought it through. Think outside the proverbial box.

The Trademark Company

3 Things to Consider Before Filing a Domain Name Dispute

2011-09-08T15:33:00.001-04:00

How to Keep Your Trade Secrets Secret.

2011-08-30T13:02:00.001-04:00

As our next round of new hires are set to be welcomed to our company we are reminded of the need to keep confidential trade secret materials confidential and secret. It may sound simple, but it is often overlooked in the protection of one’s intellectual property assets.

Beyond trademarks, your proprietary business systems, manuals, and other plans that make your business uniquely yours should be kept just that – as a trade secret divulged to new employees only once they acknowledge and promise to keep the same exclusively your business’s. Make sure you have policies in place that ensure that all employees, new and old, acknowledge and understand that your proprietary business systems are just that – proprietary.

Failure to do so may leave your company with little or no recourse to prevent unrestricted use of this most valuable information by those who obtain a copy of it.

The Trademark Company

How to Protect Your Trademark

2011-08-25T13:51:00.001-04:00

How to Select a Great Trademark

2011-08-24T14:02:00.001-04:00

Trademarks and Priority: What You Need to Know

2011-08-23T15:52:00.000-04:00

The Trademark Company Climbs to No. 138 on the Inc. 500 List

2011-08-22T13:28:00.001-04:00

The Trademark Company is pleased to announce that it has climbed to position 138 on the 2011 Inc. 500, Inc.’s annual ranking of the fastest-growing private companies in America.

For more than 30 years, Inc.’s list has served as evidence of the significant accomplishments of enterprises like The Trademark Company. And, more than ever, this year’s list is a testament to the creativity, resilience, and tenacity of our company.

As a two-time Inc. 500 honoree, The Trademark Company shares a prestigious pedigree with such notable alumni as Intuit, Zappos, Under Armour, Microsoft, Jamba Juice, Timberland, Clif Bar, Pandora, Patagonia, Oracle, and scores of other powerhouses.

We are pleased to once again have been honored with this recognition and accept it as a testament to the hard work of all of our dedicated employees.

The Trademark Company

Your Trademark is Your Business’s Most Important Asset – Protect It!

2011-08-19T13:42:00.000-04:00

You Can’t Register Generic Terms as Trademarks So Stop Trying

2011-08-18T16:50:00.001-04:00

3 Tips for Posting Your Legal Questions in Open Internet Forums

2011-08-17T16:49:00.000-04:00

As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.

The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.

Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.

Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:

1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.

2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGET for dog food. Is this a problem?”)

3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.

So keep posting if you must. Just please be careful.

The Trademark Company

3 Reasons Why You Should Perform a Trademark Clearance Search for Your Trademarks

2011-08-10T14:44:00.004-04:00

IP Law 101: What a Start-Up Needs to Know About the 3 Types of IP Rights

2011-08-02T14:57:00.001-04:00

4 Things Every Trademark Owner Should Know About Monitoring Their Trademark(s)

2011-08-01T13:11:00.001-04:00

Planning for the .XXX Domain Names

2011-07-20T13:27:00.002-04:00

In April 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) authorized the creation of a new .xxx sponsored top-level domain (sTLD) for the adult entertainment industry. Initially adult entertainment companies seeking to register their trademarks using the new .xxx sTLDs will need to show some prior rights in a trademark before they can do so.

Later, however, such limitations will fall away and any available term may be registered as a .xxx domain name.

Specifically, beginning on September 7, 2011, owners of trademark registrations can prevent their marks from being registered as .xxx domain names through a mechanism referred to as “Sunrise B.” Under the Sunrise B process, parties who own a valid trademark registration in a jurisdiction where the party has engaged in substantial bona fide commercial activities may block the registration of a domain name of that trademark’s same name with a .xxx domain name. The cost to do so will be approximately US$200 to US$300. Once blocked, the .xxx domain name in question will not be available for registration for a period of 10 years.

The blocked .xxx domain name will be “reserved” from registration and will take readers to a standard page that indicates that the domain name has been blocked from use. In addition, the WHOIS report for this domain name will only identify the ICM Registry, the authorized registry for .xxx, as the registrant.

ICM Registry has stated that it is only offering trademark owners this one opportunity to block the registration of .xxx domain names that correspond with their registered trademarks. After that, trademark owners would need to bring an infringement, dilution, cybersquatting, or similar claim to try to stop use of a .xxx domain name that incorporates their marks.

Sunrise B is scheduled to begin on September 7, 2011, and will run for 30 days, closing on October 7, 2011.

For those in the adult entertainment industry there will also be a mechanism known as “Sunrise A” during the same time period where members of their sponsored community may register .xxx domain names that directly correspond with their registered trademarks or with their preexisting second-level domain names in an existing top-level domain (e.g., .com, .net), as long as the latter existing top-level domain was registered prior to February 2010. Sunrise A, like Sunrise B, will close on October 7, 2011.

Thereafter, beginning on December 6, 2011 .xxx domain names will become generally available to any party on a first-come, first-served basis. Accordingly, starting on that date, anyone can register a .xxx domain name.

The Trademark Company

When To Enforce Your Trademarks: Think Before you Act.

2011-07-19T14:59:00.000-04:00

The Trademark Company Again Named to the Inc. 500|5000

2011-07-15T13:38:00.003-04:00

We were pleased to learn today that for the 2nd time The Trademark Company has made the Inc. 500|5000 list of the fastest–growing private companies in America.

With this accomplishment The Trademark Company joins the rarified company of enterprises that have appeared on the Inc. Magazine annual list multiple times, many of which have grown to become national icons.

We here at The Trademark Company would like to extend our heart-felt thanks to all of those who have worked so hard to achieve this distinction and to our customers for being our driving force to work even harder on their behalf.

The Trademark Company

What to Do If You Receive a Cease and Desist Letter

2011-07-14T16:41:00.001-04:00

The mail comes and you notice a letter from a law firm you do not recognize. As you open the letter you hope for the best but you are nervous in anticipation of what the letter says. You read the opening paragraph of the letter:

“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”

You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.

Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.

You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.

Does this sound familiar?

Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.

Trademark Law 101

First a primer on the basics.

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.

Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.

Priority of Use

With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.

Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.

In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).

Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.

With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?

Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.

But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.

As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.

Infringement Analysis

The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.

To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.

In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.

Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.

The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.

The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.

Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.

Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.

In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.

Other Defenses

There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.

First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.

Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).

If either of these two defenses is available both may strongly support a defense of any claimed infringement.

Everything You Say May Be Used Against You

Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”

While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.

You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.

For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”

In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?

So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.

Summary

In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.

Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.

Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.

Next review the infringement factors listed above. Who do they favor?

Are any other defenses available?

Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.

The Trademark Company

Allowing Others to Use Your Trademarks? Get it in Writing!

2011-07-13T14:07:00.001-04:00

How Much Does it Cost to Register a Trademark? Here's What You Need to Know.

2011-07-12T13:07:00.001-04:00

How Do You Acquire Rights in a Trademark. Here’s What You Need to Know.

2011-07-11T14:09:00.001-04:00

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 McDonalds 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

Top Tips on Proper Use of Trademark Designations

2011-07-08T14:10:00.001-04:00

Trademark Fast Fact: Remember to Keep Your Contact Info Up To Date with the USPTO

2011-07-06T13:50:00.000-04:00

3 Types of Lesser-Known Trademarks That Can Help You Protect Your Business

2011-07-05T14:44:00.001-04:00

The Cost of Self-Enforcement of Your Trademark Rights: Self-Enforcers Beware

2011-06-29T16:12:00.002-04:00

3 Things to Consider Before Filing a Domain Name Dispute

2011-06-28T13:26:00.001-04:00

How to Keep Your Trade Secrets Secret.

2011-06-27T14:57:00.002-04:00

Use Your Registered Trademark to Get a Google Monopoly!

2011-06-24T14:27:00.001-04:00

Want to know a quick and easy way to get a search monopoly on the world’s most powerful search engine? It’s easier than you think. In short, register your registered trademarks with Google and the other major search engines and they won’t let anyone else bid on your registered trademarks in their pay-per-click advertising services EXCEPT YOU!

Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.

Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.

The Trademark Company

The Relationship Between Trademarks and Domain Names

2011-06-07T14:50:00.000-04:00

We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses. Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.

Registration of a Domain name is Not Trademark Use

As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.

Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not. Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.

Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.

Cybersquatting

Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.

There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).

Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;

2. The registrant does not have any rights or legitimate interests in the domain name; and

3. The registrant registered the domain name and is using it in "bad faith."

In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:

a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;

c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and

d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.

The UDRP and Its Remedies

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.

In short, if you register a domain name with one of these TLDs, you are subject to the policy.

Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.

Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.

One significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.

The ACPA and Its Remedies

The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.

Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.

However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.

Summary

So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.

The Trademark Company

4 Things to Consider When Your Trademark Application is Blocked by Another Trademark

2011-06-02T14:06:00.000-04:00

You applied for your Trademark Registration months ago. You then started to build your brand or business around this mark. You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark. Angry and confused you cannot understand why the refusal was issued. Your mark is not identical to the one blocking the registration thereof. How could this be? Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.

Before you do so, however, take heart – you may yet get your trademark registered. To do so, however, you must understand how the system works and what can be done to get your original trademark registered.

First it is important to understand how the USPTO works in regard to registering trademarks. The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year. One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark. What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point. In considering whether you can still get the mark registered here are four factors which we suggest being examined in accessing whether you will be able to get your trademark through to registration:

1. The DuPont Factors

Every refusal to register a trademark based upon a likelihood of confusion is based upon the examining attorney’s belief that the trademark applied for would be likely to cause confusion with a prior pending or registered trademark. This determination is made by and through the examining attorney’s application of the DuPont factors as between the two trademarks at issue. In short, to determine whether there is a likelihood of confusion the examining attorney considers the following factors:

a. The Similarity of the Appearance of the Trademarks;

b. The Similarity of the Goods or Services with which the Trademarks are used;

c. The Similarity of the Manner in Which the Goods or Services under the Respective Trademarks are Marketed;

d. The Similarity of the Trade Channels or the Manner in Which the Goods or Services Under the Respective Trademarks Reach the Ultimate Consumer;

e. Whether there is Proof of Actual Confusion among Relevant Consumers as to the Source of the Goods or Services provided under the Respective Trademarks; and

f. The Length of Time of Co-existence in the Marketplace of the Respective Trademarks without any Actual Confusion.

As such, the first step in determining whether an Office Action Response can be crafted to convince the examining attorney to withdraw the refusal and allow your mark to register is whether, under these factors, your trademark truly is likely to cause confusion with another’s prior pending or registered trademark.

Use the list above and go through each methodically in regard to your and the cited trademark(s). For each factor listed, determine whether that respective factor favors the examining attorney’s position that confusion would be likely or your position that it would not. If it favors the examining attorney’s position, place an “EA” next to the factor. If it favors your position that the other trademark should not block the registration of your mark place an “R” next to the factor.
After you have completed this exercise count up how many “EA”s and “R”s you have. If you have been objective about it and the number of “R”s outnumber the number of “EA”s then you have a good chance of getting the mark past the refusal with a well-written Office Action Response. If, however, the “EA”s outnumber your “R”s then the odds are not good that you will be able to convince the examining attorney to withdraw his or her refusal to register the mark.

Of note, in either event consulting an experienced Trademark Attorney will assist you in evaluating the refusal and in preparing a response thereto as they retain significant experience in applying the standards above and crafting Office Action Responses designed to get your trademark registered.

2. Priority of Use

In addition to the above, whether or not the DuPont factors favor the registration of your trademark there is an additional consideration one should always consider when examining whether a successful argument can be made for registration: Priority of Use.

In short, if the blocking trademark has been registered for less than five (5) years or has yet to register and you began actual use of your trademark in interstate commerce prior to the use of the registered trademark or prior pending mark or date the blocking trademark was filed for with the USPTO you may retain further options in getting your mark registered and past the refusal issued by the examining attorney.

If you do retain priority of use over the blocking mark you may move to cancel a registered mark for up to its first five (5) years of registration or may file a notice of opposition if the mark has yet to register. Note, both a Cancellation Proceeding and an Opposition Proceeding are often long, complicated tasks. An experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.

Ultimately the goal of the litigation proceedings is to either cancel the blocking registered trademark (Cancellation Proceeding) or to stop the registration of the same (Opposition Proceeding) so as to clear the path for the registration of your mark. As such, anyone considering taking such action should also be aware that the USPTO routinely accepts consent agreements between parties to support the registration of a mark blocked by another. Accordingly, even if you do not have the resources to prosecute a Cancellation Proceeding or Opposition Proceeding to its end you may be able to use the same to negotiate a Consent Agreement from the blocking trademark’s owner which, upon submission to the examining attorney, would permit your trademark to register over the refusal.

Of note, to garner the consent to register your mark from the owner of the blocking mark is not required to be done by and through litigation. Often a consent to register a mark may merely be secured by submitting a Cease and Desist Letter to the blocking mark’s owner with an ultimate goal to secure the same’s consent to your registration. Again as before, an experienced Trademark Attorney should be employed to evaluate and prosecute the same should you consider this option.

3. Fraud

But what happens when you have received a refusal, conducted your due diligence, and believe that neither the DuPont factors nor Priority of Use favor the registration of your mark? What then? There are two other factors we suggest that you consider before giving up on your trademark. The first is whether the blocking mark’s owner committed fraud in the registration or application for their trademark.

In this context, it is important to note that fraud has a legal definition which shifts with each case decided on the point. Generally speaking, however, if you can discover what appears to be willful mistruths in the application for a blocking trademark you may be able to use those to inspire the owner thereof to enter into a consent agreement or even cancel their own mark under a threat of a Cancellation Proceeding or Opposition Proceeding.

What, might you ask, should you look for? Some examples are as follows:

a. Use in Interstate Commerce. Is the blocking trademark holder using its mark in commerce in more than one state or is their use relegated to one state alone? Why is this important? You may only register a trademark with the USPTO that is in use in “interstate commerce.” “Interstate commerce” is loosely defined as commerce between states or between the U.S. and a foreign country. So if the blocking trademark owner has a web site and sells their goods throughout the country, they have interstate use. But if the blocking trademark owner is a one location restaurant in the middle of a state hundreds of miles away from any border, they may not have legitimate use in interstate commerce.

b. An Overly Expansive List of Goods or Services. If the blocking trademark’s listing of goods and services reads like a laundry list of every product known to man this may also be grounds to cancel or limit their application or registration. As such, it may inspire them to provide you with consent to register your trademark rather than to go through the cost of defending a Cancellation Proceeding or Opposition Proceeding they will ultimately loose.

In short, you may only register a trademark in connection with goods or services with which you use the mark. Many trademark holders make the mistake of being overly broad when they apply for their trademarks seeking to maximize the scope of their goods or services. The issue is, however, is that you are only permitted to maintain a registration for goods with which you actually use the trademark. A good example for this is marks used in connection with clothing. If the blocking registration lists 150 separate items of clothing yet you can only identify 2 or 3 of those goods being provided by the trademark owner in commerce, they may have been overly broad in their identification of goods and, correspondingly, their registration may be subject to cancellation or limitation to those goods with which they are actually using their trademark in a Cancellation Proceeding.

c. Dates of Use. Lastly, if you can determine that they were not using their trademark as early as they claim in their registration or application this may also be grounds for a Cancellation Proceeding or Opposition Proceeding. If this is uncovered, you may also wish to revisit your analysis under the Priority of Use section above.

As always, as the prosecution of such matters is rife with peril. As such, an experienced Trademark Attorney should be employed to evaluate and prosecute these matters on your behalf.

4. Abandonment / Discontinued Use

One last consideration in determining whether you can have your trademark registered past a refusal based upon a prior registered trademark is whether that trademark is, in fact, still in use. Trademarks, once registered, can exist for up to ten (10) years on the USPTO’s Principal Register without anything further being required to be filed to maintain the registration by the registrant. But what happens if the registrant goes out of business or stops using the trademark in that time frame? It still exists on the Principal Register to block the registration of your trademark but is no longer being used.

From time to time we come across such situations and, when they occur, we typically file a simple Cancellation Proceeding to which no answer is received. You may then win by default within weeks of the case being filed thus clearing the path for the registration of your mark.

Once again, as before, use and abandonment have statutory definitions and especially in consideration that if you choose this option the other party may have priority of use over the use of your mark you should employ an experienced Trademark Attorney to evaluate and prosecute these matters on your behalf.

The Trademark Company

3 Tips for Posting Your Legal Questions in Open Internet Forums

2011-06-01T15:53:00.001-04:00

As we are all aware, once something is posted on the Internet it is generally available for public viewing by all. A recent trend that we have seen with potentially damaging consequences is posting one’s legal questions in an open forum or chat room and inviting advice from others on the subject.

The solicitation of the advice is not the issue. Rather, it is the posting of information concerning a specific case or fact scenario which may then, potentially, be used against you in court should the matter ever escalate into a dispute or litigation. As you may not be aware, admissions against your interests, even if made unknowingly, can be used against you in a court of law.

Just this morning we reviewed a very fact-specific question from an individual posted in an open legal forum online. The post detailed the facts and circumstances of the individual’s use of a new trademark, his receipt of a cease and desist letter regarding that trademark, and his reaction to and solicitation of advice surrounding a potential response to the letter. As we scrolled through the replies a very ominous posting was listed about 4 messages down from the actual party who had sent the cease and desist letter to the individual initiating the discussion. In short, it thanked the man for admitting online to the infringement – which he unknowingly had, stated that the post had been copied and was being forwarded to an attorney for inclusion in the lawsuit that would be filed later this week. Wow.

Our advice to all that read this: Don’t find out how small the world really is by posting your legal questions online only to find out the subject of your posting is also a member of the same forum. However, if you feel compelled to use this type of medium here are a few tips we have picked up along the way we suggest you implement:

1. Use a Pen Name. Never use your real name in posts or, if possible, to register an account for posting in a forum. This way you can post your legal questions in anonymity with less fear that the same will be attributed to you down the road.

2. Use Hypothetical Examples. Never use the real facts involved. Always phrase your question or questions in terms of hypotheticals (i.e., “Company A uses the trademark WIDGET for cat food. Company B starts using the trademark WIDGGGET for dog food. Is this a problem?”)

3. Never Identify the Other Party. As you should not use your own name nor should you use the name of the other party. In addition to potentially alerting them of your posts if they use services such as Google Alerts, you may run afoul of libel laws if your posts are derogatory or otherwise negative in nature towards the other party.

So keep posting if you must. Just please be careful.

The Trademark Company

3 Reasons Why to Perform a Trademark Clearance Report for Your Trademarks

2011-05-31T13:56:00.000-04:00

3 Reasons to Perform a Trademark Clearance Report Before You Begin Use of a New Trademark

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Conclusion

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

The Trademark Company

4 Things Every Trademark Owner Should Know About Monitoring Their Trademark(s)

2011-05-26T15:43:00.001-04:00

The Trademark Company Selected For "Top Trademark Firms"

2011-05-20T15:31:00.002-04:00

The Trademark Company of Vienna, VA USA has been honored with a recognition by Intellectual Property Today in its selection of "Top Trademark Firms" for 2011.

The Trademark Company's spokesperson, Matthew Swyers, commented on the recognition:

"This is quite an honor for us. Since Intellectual Property Today chose only a select number of organizations for their Top Trademark Firms list, we are especially proud to have made the grade. Our inclusion signals that our constant effort to deliver excellent work and customer service has paid off. It is gratifying and exciting to be recognized in this way."

For more information on The Trademark Company or any of its services call (800) 906-8626 or visit them online at TheTrademarkCompany.com.

This press release was written by American Registry, LLC on behalf of The Trademark Company and was distributed by PRNewsWire, a subsidiary of United Business Media.

The Trademark Company

When To Enforce Your Trademarks: Think Before you Act.

2011-05-16T14:26:00.001-04:00

The Trademark Company Named One of the Top 3 Trademark Filers in the World

2011-05-10T14:38:00.004-04:00

Normally we blog about various aspects of trademark law and business that our customers and trademark holders alike will deem useful and informative. Today, however, we are sharing a bit of good news about our business we are very proud to announce.

Today during an interview with The World Trademark Review we were informed that The Trademark Company will be listed as one of the top three trademark filers in the World for 2010 when the June 2011 issue of the magazine is released.

It is an honor and a pleasure to see that our commitment to our customers as well as the systems we have developed are now gaining international acclaim.

Thank you to all who have worked so hard to get us here and we look forward to an even bigger 2011 as new products and services are being developed and rolled out to assist our present and future customers in the enforcement of their valuable intellectual property.

The Trademark Company

What to Do If You Receive a Cease and Desist Letter

2011-05-04T15:41:00.001-04:00

The mail comes and you notice a letter from a law firm you do not recognize. As you open the letter you hope for the best but you are nervous in anticipation of what the letter says. You read the opening paragraph of the letter:

“We represent the ABC Company in the protection of their intellectual property rights. It has recently come to our client’s attention that you are using the trademark…”

You continue reading your heart now racing. A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.

Anger, frustration, and denial set in. Everything in the letter is wrong. Your trademark is spelled differently from the other trademark. Moreover your goods or services are not identical to those provided by the law firm’s client. You quickly formulating your planned response before you even reach the end of the letter.

You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here. Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.

Does this sound familiar?

Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call. Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.

Trademark Law 101

First a primer on the basics.

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.

Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.

Priority of Use

With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks. This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.

Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter. Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.

In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark. This key bit of information is usually phrased to the effect “Our client has been continuing using their trademark since as early as ….” In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).

Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters. Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.

With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark. In other words can you beat their date of first use?

Often the answer to this question is simple. If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority. On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark. The other party sends you a cease and desist letter alleging a date of first use in 2008. Who has priority? You do, more likely than not.

But beware, the issue of priority is often a far more complex question. Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark. You are a California-based business but have never taken the time to register your trademark. You have also been using your trademark for four years in Southern California and for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico. In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant. In this scenario you may actually have priority of use. You may not. More complex legal analysis would need to be performed.

As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter. If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.

Infringement Analysis

The next part of the analysis must focus on the traditional elements of infringement. While the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether the marks are similar in appearance, connotation, or otherwise; (2) whether the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether the goods and services of the parties travel in similar channels of trade; (4) whether the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.

To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.

In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement. In this regard, the less similar the marks are the less likely infringement will be found. In most instances the marks are not identical. As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element. If both marks are WIDGET they are definitely similar, in fact they are identical. But what if your mark is WIDGET and theirs is WIDGET MAX? Are they similar? Similar enough to create confusion? Perhaps. But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.

Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit. But what about if you make shoes and the other party has a shoe store? Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services? Possibly. So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two? Would I think that the same people who make the shoes run the store that sells shoes? Again, as above, the less similar the goods and/or services are the less likely infringement will be found.

The next consideration is whether the goods and/or services of the parties travel in similar channels of trade. In other words, how do the goods or services reach the end consumer. If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade. If the channels of trade are diverse, this favors you. If they overlap, this favors the accuser.

The fourth element is how the respective marks are marketed. If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case. In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you. So if the marketing channels are similar, that favors infringement. If they are not, that favors your position of non-infringement.

Next, are the consumers for the respective goods or services sophisticated? The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions. For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00. In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase. In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.

Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser? If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement. Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other. It could also be in the form of complaints received by one party concerning the quality of products of the other.

In conclusion concerning these elements, the more that favor you the less likely that infringement will be found.

Other Defenses

There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances. Two of these are discussed below.

First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner. For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes. If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.

Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so. This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).

If either of these two defenses is available both may strongly support a defense of any claimed infringement.

Everything You Say May Be Used Against You

Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent. Anything you say may be used against you in a court of law.”

While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.

You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.

For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks. You call the lawyer for the accuser convinced you will be able to make this just go away. During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”

In this conversation you have just made two critical admissions. First, that the marks are similar. Second, that the goods are both clothing and, by nature, similar. How damaging is this? You have just proved 2 of the 6 elements of infringement above for your accuser. Congratulations. Do you think you should continue the conversation now?

So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel. Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.

Summary

In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.

Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.

Next, try and determine who has priority of use. If you do, fantastic. If not, there is still hope.

Next review the infringement factors listed above. Who do they favor?

Are any other defenses available?

Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter. You’ll be glad you did.

The Trademark Company

Allowing Others to Use Your Trademarks? Get it in Writing!

2011-05-03T13:35:00.002-04:00

The Trademark Company Enters Phase II of Expansion Plans

2011-05-02T16:57:00.002-04:00

We are pleased to announce that as we approach the Summer of 2011 The Trademark Company has expanded its operations to a second building in Phase II of the anticipated three-phase expansion.

We anticipate occupying the new facility by July of this year which will afford us an even greater opportunity to expand our global presence in the protection of our customers' brand identities.

The new facility will largely be dedicated to litigation services as well as housing our new server farm which will power a whole suite of innovative and proprietary software-based trademark services later this year. The expansion will then allow our rapidly-expanding Research and Applications division to occupy all of our newly acquired facility from 2010.

The Trademark Company