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Archives For July 2014

Important Distinctions Between Company Names, DBAs, & Trademarks

July 29, 2014 — Leave a comment

Many new business owners will create a LLC or Corporation by filing incorporation documents with their Secretary of State or will simply file for a DBA or Fictitious Name and operate as a sole proprietor.

Unfortunately, many of those new entrepreneurs also assume his or her “official state filing” means he or she owns that company name. While sometimes these filings will help establish first use, they don’t necessarily mean that you “own” your company name. Here’s why.

DBAs & Fictitious Names

When an individual hangs her shingle out to do business on her own, she will be required by most states to register her business name with the Secretary of State. Some states call these DBAs, others Fictitious Names, and some actually don’t require such filings at all.

In most states, if someone else has already registered a particular DBA or a company name that is identical to your intended name, then your filing will be rejected and you will have to file for a different name.

This gives off the false impression that such filings create ownership in a name in the state’s registry. Unfortunately, having a registered DBA or Fictitious Name with your state may give you the right to be the only company using that name with the state’s official records, but it doesn’t mean other people can’t also use that name in your state or in other states. You might have some common law or federal trademark rights, but those rights will stem from your use, not your state filing.

Company Names

In a similar situation, you might consider creating a LLC or a Corporation within your state. When you do so, you must create a company name and file articles of organization or articles of incorporation with your Secretary of State.

However, just like above, you can’t create a company using a name that someone else has already registered in your state because the state will only allow one company to use a specific name.

Again, just like above, once you register your unique company name, you might think you can stop others from using it. However, the only thing you can stop is other people from registering the same name in the same state. But other people can still use it in commerce (unless you have common law or federal trademark rights).

Trademarks

The two above examples are registrations you can obtain from your state to use that particular name within a state. However, they don’t create trademark rights in your business name because trademark rights (both common law rights and federal rights) stem from use in commerce.

Unlike the two examples above, you cannot obtain trademark rights simply by filing a document. You actually have to use the mark in commerce. But the benefit of obtaining trademark rights is that you can then, and only then, stop other businesses from using your trademark with respect to your goods or services.

While it is a good idea to obtain state registrations for company names and DBAs, remember your best protection will come from a federal registration with the USPTO. If you need a registration, consider Mighty Marks®, a flat rate online tool to file your trademark application.

Image: Thinkstock/-1001-

*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.

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How to Find a Good Trademark Specimen

July 22, 2014 — 2 Comments

When you file for federal trademark protection with the U.S. Patent and Trademark Office, you must file a Specimen of Use. This is because you may only protect marks that you actually use in commerce (or in some cases marks that you intend to use in the near future). However, the issue of what constitutes an acceptable specimen of use is sometimes confusing. In this post we will help to clarify what you should, and should not, file.

Specimen Defined

The USPTO states that a specimen is “a sample of how you actually use your mark with the goods and/or services identified in your application.” Typically that means the USPTO wants to see how you use the mark in commerce and how a consumer is likely to see your mark on the goods or associated with the services. As you might have picked up, there are different requirements for usage on goods versus usage for services.

Specimens for Goods

When applying for a mark associated with the sale of a particular good, the USPTO will require a specimen attached to the actual goods itself. That means a shirt tag, on the packaging, or sometimes on a promotional stand or window display. Copies of invoices and other marketing materials are usually not sufficient.

The USPTO maintains a large list of acceptable specimens for goods and they include in that list product labels, product packaging, product display signage, and screenshots of websites where the goods may be purchased.

Specimens for Services

Since services are often intangible, the specimen requirements for service mark applications are a little easier to satisfy. Typically the USPTO will require a specimen that shows how the mark is used in the “sale, rendering, or advertising of the services.” The key is to use the mark in close proximity to the services performed.

The USPTO’s list of acceptable specimens for services include advertising materials, brochures, restaurant menus, business cards, and business signs.

Specimen Refusal

If you submit an application with an improper specimen, the USPTO will likely send you an Office Action requiring you to submit a proper specimen. If your application is denied for this basis, it is important that you respond quickly so you don’t lose your application. If you have questions about your specimen you can also call the examiner that denied your application (their phone number will be on the Office Action).

You will then be required to submit a proper specimen that was in actual use on or before the date of your application. If you cannot do this, then your application will not get passed the examiner.

And remember, if you are confused about what constitutes a good trademark specimen, the attorneys at Mighty Marks® are ready to help you through the process.

Image: Thinkstock/darkovujic

*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.

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What You Should Do If Your Trademark Application Is Denied

July 15, 2014 — 4 Comments

Unfortunately the U.S. Patent and Trademark Office denies a lot of applications. Sometimes the denial is a simple formality, other times it is more challenging. When the office denies an application it will issue an “Office Action” which is simply a rejection letter explaining the office’s reasoning for the denial. In this post we will cover some common reasons for a denial and what you can do to fix them.

Don’t Ignore the Office Action

The first thing to consider is the timing of the rejection. As soon as you receive an Office Action, you should place multiple notes on your calendar. The office will require a response within six months so you should place that date, as well as a couple reminder dates, on your calendar. If you fail to respond on time, you will lose your application.

Deficiencies; Disclaimers; Specimens

Many applications are denied for simple administrative type issues. Luckily, these are usually easy to fix, but not always. One example is a rejection due to confusion over who the applicant is. You should make sure it is clear whether you, or a registered business entity, is the owner/applicant.

Another example is when you’ve included a word that you may not protect. For example, in our example about Evan’s Coffee Shop, the USPTO would likely require the application to disclaim “Coffee Shop” because you can’t protect a descriptive term. However, you could still claim ownership of “Evan.”

Lastly, your specimens might be insufficient. You must submit specimens of use that clearly show the mark as it is connected to you, the source of the good or service. Specimen submissions can be tricky and we will cover that in a later post.

Descriptiveness

Another common reason applications are denied involve the inability to register a mark that is descriptive. When an application is rejected for this reason it can be very difficult to overcome the rejection. You will have to submit a document similar to a legal brief, hopefully including citations to case law, that explains your argument as to why the mark is not descriptive. This can be complex and you should seek legal counsel for these types of rejections.

Likelihood of Confusion

Another complicated rejection is likelihood of confusion with a prior registration. When an examiner reviews your application, he or she will search for prior registrations. If your mark is likely to cause consumer confusion with a prior application, you will get an Office Action.

Again, you will likely need to submit a brief arguing why you believe consumer confusion is not likely. Perhaps the goods and services are sufficiently different, or perhaps the examiner’s conclusion is unreasonable. Regardless, this brief can be complex and this is another type of rejection for which an attorney’s assistance can prove important.

Be Proactive

The good news is many of these issues can be avoided or at least mitigated to some degree with proper due diligence before submitting an application. You should always perform a trademark search before submitting your application and it is often a best practice to seek legal counsel to assist with your application.

That’s where we come in. We’ve filed a lot of applications and would be happy to assist you. Contact us today to learn about your trademark rights!

Image: Thinkstock/Aquir

*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.

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Don’t Lose Your Trademark to Genericide

July 8, 2014 — Leave a comment

Once upon a time if you sold Escalators or Aspirin you had to call your product something else, perhaps a moving staircase or pain reliever. Today, however, anyone in the U.S. can use those words to describe their products because the prior owners lost their rights due to Genericide.

What is Genericide

We’ve discussed the topic of descriptiveness previously and mentioned that descriptive terms are hard to protect (you have to prove a secondary meaning, which can be hard to do). We also mentioned that you can’t protect a generic term because a generic term cannot serve as a source identifier. In a similar way, when a trademark becomes so well known and associated with a type of product or service rather than a specific product or service, the mark owner loses the ability to protect their mark. We call that Genericide.

Escalator and Other Examples

For example, the Otis Elevator Company created the word “Escalator” to describe their moving staircase. The term eventually became so associated with moving staircases that the company lost their ability to protect the term. This has happened with other brands as well such as Aspirin, Murphy Bed, and even Dry Ice (a list of other marks can be found here).

A Current Example – “Google”

A great example for our modern era is Google. Of course “Google” is the name of Google, Inc., the search engine company. But you’ve also probably heard people say “oh, just google it.” What they really mean is “search the Internet” but it is easier to say “google it.” As a result, some people argue that “Google” is now a generic word that means to search the Internet. Of course Goolge, Inc. would say otherwise and it is unlikely a court will rule that “Google” is generic quite yet, but it may happen some day.

How to Prevent Genericide of Your Mark

This might leave you wondering what you should do to protect your mark. Here are a few tips.

First, don’t use your mark as a verb. For example, if you were Google, Inc., you would always say, “use Google® to search the Internet.”

Second, try to use the TM symbol for unregistered marks or the ® symbol for registered marks whenever possible. You don’t have to use them in every single circumstance, but you should use them common enough that readers will realize that your mark is a trademark and not a verb.

Third, you should police your mark. If you find someone infringing your mark or using it in a generic way, be sure to request that person stop the infringement or change the way they are using the mark.

Lastly, be sure to register your mark with the U.S. Patent and Trademark Office. And if you want a trademark attorney to help you without breaking the bank, check out our online trademark service at www.MightyMarks.com!

Image: Thinkstock/shansekala

*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.

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Why the Washington Redskins Still Have Trademark Rights

July 1, 2014 — 1 Comment

The Washington Redskins’ loss of its federal trademark registration was widely reported recently in major news outlets. Unfortunately, many headlines and reporters blurred some legal technicalities and it is interesting to note that the Redskins still have trademark rights. Those rights are just a bit limited now.

Trademark Rights Stem From Use

As we have said many times here, a business acquires trademark rights through actual use of a mark in commerce. A federal registration, while immensely beneficial, is not required to secure such rights.

In fact, once you begin using your mark in commerce you can claim common law trademark rights in that mark and you can use state courts to enforce your rights. Practically, it can be difficult to bring lawsuits in multiple states all at once, but it is possible.

Federal Registration

The purpose of federal registration is to secure your rights nationwide and to obtain a few extra rights (listed in this post). What happened recently is the USPTO decided that the team’s registration (not its trademark) was not eligible for registration because it disparaged Native Americans. Thus, the USPTO did not say the team doesn’t own the trademark, it just said it can’t obtain a federal registration.

You Can’t Register Certain Marks

The Redskins registration was canceled because it disparaged Native Americans. Marks that disparage a significant population or which are otherwise scandalous may not be registered. But that’s not the only limitations.

The USPTO is also not allowed to register any marks that (a) are deceptive and might mislead consumers, (b) consist mostly of the US flag, (c) make use of a living individual’s name without his or her consent, (d) would likely cause consumer confusion, (e) use a geographic description that is false or misleading, or (f) make use of a surname.

What the Redskins Can Do Now

The Redskins are going to appeal the cancelation and may be able to reverse the cancelation. Regardless, even if they ultimately lose, they will likely continuing fighting and seeking individual court victories in which they can stop infringers. They can do this state by state by enforcing their common law trademark rights.

In the long run, however, those difficulties and the litigation expenses may prove too expensive and the team may end up changing its name if it can’t protect it using a federal registration.

If you have questions about whether your mark qualifies for federal trademark protection, be sure to contact Mighty Marks®!

Image: Thinkstock/neilkendall

*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.

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