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  • April 30, 2014

Archives For April 30, 2014

How to Perform a Trademark Search

May 28, 2014 — 13 Comments

The best way to perform a trademark search is to use an attorney experienced in trademark law or the services of a search firm. Of course, prior to paying for a professional search, it is advisable to perform a preliminary “knockout” search on your own. Here’s how to get started.

Common Law

First, search “common law” sources such as online search engines, social media, domain names, trade publications, relevant magazines, news websites, phone books, and similar sources. You should search your mark and also similar marks. For example, if your mark is “Two Step Bar and Grill” you should also search for “Too Step/s,” “2 Step/s,” etc. There are thousands of places like this you could search and a professional can provide immense value when searching common law records because they have access to large databases of common law sources.

Business Names

Second, you may want to run state searches. While not nearly as vital as a federal trademark registration, the state trademark databases can be helpful, particularly in the home state of the client. Specifically, each state will have official business name records and many also have their own state level trademark registration databases and also fictitious name registrations. Those sources will usually be found through the Secretary of State’s website. And if you plan to expand to more than one state, then search those additional states also.

The USPTO Database

Lastly, and most importantly, be sure to search the USPTO database. But be forewarned, searching USPTO records can be a daunting task. Many clients think it’s a simple task… it is anything but simple. For example, a basic search for “Delta” reveals almost 2,500 results. But with a few quick tips, we can make it easier to perform this search. Trademark professionals often use sophisticated software to search the USPTO database and compile search reports. For a quick examination on the USPTO database first click on “Trademark Search” on the USPTO Trademark Website.

Once there, you have several options. You can run a “structured” search to find narrow results or a “basic” search to find broader results. To keep things simple, let’s go with a basic search. You can make a few selections on this page. You should usually search for “Plural and Singular” rather than just “Singular” and you might consider searching just “Live” marks. A “Live” mark is a registered mark or a mark currently in the application process. A “Dead” mark is a mark that was refused registration or a mark that was once registered but at some point lost the registration. (extra tip: you shouldn’t ignore dead marks altogether because they can revel interesting facts about prior users, litigation, and sometimes current users that simply lost a registration)

After you’ve run your search you will likely find a list of marks. You should examine the potentially similar marks to see if they are associated with any goods or services similar to your goods and services. If they are, you might have trouble registering your mark. But remember our prior lesson about how similar marks can be registered if they are applied to different goods and services.

You can spend hours in the USPTO database. When you get stuck, contact an expert. And feel free to call on Mighty Marks® if you want assistance with your search.

Image: Thinkstock/triloks

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , ,
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Turn It Up To 11 – A Decades Old Trademark Dispute

May 20, 2014 — Leave a comment

The Misfits (the 1970’s and 80’s heavy metal band) are back in the news; but not for their music.

In an interesting squabble and lawsuit, one former band member is claiming rights to a series of very lucrative licensing deals. Musicians everywhere and businesses of all kinds should pay attention to the lessons coming out of this case!

How We Got Here

Glenn Danzig was a founding member of the band in 1977 but eventually split ways from the group.

In 1994, however, Danzig and the new band leader, Jerry Only, settled their differences in a private agreement. Danzig told the media that he gave up rights to the band’s name and skull logo with respect to performances but that he maintained a one-half ownership interest in the name and logo with respect to merchandise. Only publicly acknowledged this agreement years later.

Danzig’s new lawsuit claims that Only secretly re-registered the band’s marks in 2000 and subsequently obtained very profitable merchandising deals without including Danzig. These deals lead to the current dispute and lawsuit.

The Takeaways

While it will take some time for this case to proceed to either a judicial resolution or a settlement among the parties, mark owners should take note of the issues at hand.

First, if the 1994 agreement is valid and states what the members have publicly stated, then Only might be in a tight spot because his re-registration of the marks would have required him to certify to the USPTO that he (or his band) had the exclusive right to use the marks in commerce. If the prior agreement didn’t grant him such exclusive rights, then Danzig can presumably seek to cancel the validity of the current registrations that excluded him. He can then likely seek his cut from the merchandising deals.

Second, businesses must remember that trademarks are related to specific goods or services. In this case, the trademarks for the performance of music were granted to the band. But the trademarks for selling shirts and hats remained split between the band and Danzig. Thus, a business that performs multiple functions (for instance, a restaurant that also sells shirts) would be well advised to obtain rights for all of their various goods and services.

And remember, when seeking rights, a good attorney can be very helpful. Feel free to contact us anytime with trademark questions.

Image Credit: Thinkstock/r_gianluca

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Disputes, Trademark Law , , , ,
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Why You Can’t Trademark a Descriptive Term – The “Hot Yoga” Example

May 13, 2014 — Leave a comment

We’ve mentioned previously that names and slogans may not be protected unless they are distinctive and capable of identifying a particular source of the good or service.

The reasoning behind this section of the Trademark Act is simple: if businesses were able to obtain exclusive rights to descriptive or generic terms, then competitors would be unable to describe their goods and services to the market. For instance, if a restaurateur obtained a trademark for “Restaurant” his competitors (the rest of the restaurant business) would be unable to call their restaurants by that name.

A great example found in the United States Patent and Trademark files is the Hot Yoga application.

The “Hot Yoga” Trademark Application

California based Bikram’s Yoga College of India attempted to register the phrase “Hot Yoga” in connection with education services for yoga. Of course, it is obvious that the phrase simply describes the service itself – that is, yoga in a hot room.

Not surprisingly, the USPTO issued an Office Action (an official document issued by the USPTO to explain problems with a trademark application) denying the application because it was descriptive. In quoting from case law, the trademark examiner said that a mark is merely descriptive “if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.”

The examiner explained the reasoning above in the Office Action and concluded that descriptive marks may not be registered because “businesses and competitors [must] have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.”

Arbitrary is Better

As a result of this limitation, many attorneys advise clients to be as arbitrary as possible when naming products and services. The more arbitrary and unconnected a phrase is from a particular good or service, the more likely the USPTO is to grant protection. One problem with this tactic, however, is that arbitrary marks are sometimes not very marketable because they do not describe the product or service and thus are more difficult to attract customers.

In practice, many business owners simply go somewhere in the middle and use a term that is partially arbitrary, but also partially descriptive. These trademarks suggest the good or service to the customer without being overly descriptive. Businesses then take their chances with a trademark application.

Secondary Meaning

One last tip: in some cases a company can obtain trademark protection for descriptive terms. For example, “Sharp” in connection to the sale of televisions. While that mark is descriptive of televisions, the name has obtained enough recognition in the market (a secondary meaning) to overcome the descriptive limitation. But we’ll cover this more in a future post.

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Image Credit: Thinkstock/Anna Berkut

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , , ,
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Intent to Use: How to Protect a Trademark Before Actual Use

May 6, 2014 — 4 Comments

In an earlier post we mentioned that actual use in commerce is a prerequisite to obtaining federal trademark protection. But when you spend time and money building a brand before you actually open for business, you’d sure like to get protection up front. The good news is you can do just that with an Intent to Use application.

An ITU application essentially holds your place in line. If you have a bona fide intent to use the mark in commerce then you can file the ITU application. The filing fee is the same as a regular application but there are additional fees as you move forward through the process.

The Timeline

In most cases the USPTO will respond to your application in about three months. If the application is approved, it will move through the opposition process and, if unopposed, you will receive a Notice of Allowance. That notice sets in place your next filing deadline.

Within six months of the issuance of that notice, you must file a Statement of Use (the fee is $100).

If you aren’t actually using the mark before that deadline expires, you can extend the deadline an additional 6 months by requesting an extension and paying $150. And if you need, you can make 4 additional extension requests (each one costing $150).

As a result, an ITU application can hold your place in line for quite a while, but the fees add up over time. And you have to be careful not to miss a deadline; otherwise you might lose your priority to another applicant.

Abandonment of an ITU Application

Each deadline is very important because, if you miss any one of the deadlines, the USPTO will send you a Notice of Abandonment. This means you must either revive the application (if you act quickly and pay additional fees) or you must start all over.

Next Steps

If you have questions about which type of application you should file or if you want assistance with your application, reach out to the Mighty Marks team today to discuss your options!

Image Credit: Thinkstock/digitalgenetics

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , ,
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