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Archives For February 28, 2015

Trademark Roundup: Trademark Basics by Mighty Marks

March 31, 2015 — 1 Comment

We’ve been writing about trademark law for a full year now and we’ve covered a lot. To help you better understand the ins and outs of trademark law we want to roundup some of our most practical posts to help you find the information you need to know about how trademarks impact you and your business.

In this post, we’ll cover trademark basics.

Trademark 101

In our post What Everybody Ought to Know About Trademark Law we covered the three things you need to understand first.

First, the purpose of trademark law is to protect consumers. That is, trademarks serve as source identifiers for goods and services and help consumers find the specific goods or services they are seeking.

Second, that trademark rights stem from use in commerce. Technically, a registration is not even required, but a registration does have a number of significant benefits.

And third, a trademark protects names, slogans, and the like. Copyrights and Patents are different. Copyrights usually protect creative works, while Patents usually protect inventions.

Protecting your mark

In our post 5 Keys to Protect Your Trademark we discussed topics you need to learn to fully understand how you can protect your mark. Specifically: (a) that registration is not required, (b) common law protection only extends to the area in which you are using your mark and to your natural zone of expansion, (c) that rights are limited to the goods and services you sell, (d) that you cannot protect a descriptive mark, and (e) registration is strongly encouraged for maximum protection.

Trademark Applications

Speaking of registrations, we’ve covered a lot about how to obtain a registration.

To begin, we’ve covered Why Your Startup Should Apply for a Federal Trademark, and What To Do First: Company Name or Trademark. The benefits to registration include nationwide notice of your claim and ownership of your mark, and also a stronger ability to force infringers to cease their infringement. In the second post mentioned just above we provided guidance on how to reserve your business name with both your state and the USPTO.

What’s the USPTO? Glad you asked. We wrote all about the United States Patent and Trademark Office in this post: What is the USPTO and How Does it Affect My Business?

Trademark Infringement

And lastly, we’ve covered trademark infringement many times on this blog. The starting point to understanding infringement is this post, Justice Explained: Trademark Infringement & Defenses. In that post, we discussed how infringement is judged based on likelihood of consumer confusion. If consumers are confused, then infringement is likely to have occurred.

As we move into our second year of blogging about trademark law and trademark applications, we hope you continue to find our blog useful for your business.

If you have any topics you’d like covered, feel free to contact us to tell us what you’d like us to talk about!

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*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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Can a Fashion Designer Trademark its Apparel?

March 17, 2015 — 2 Comments

Fashion and apparel designers are always creating new looks. And many look to trademark laws to protect their designs, but they often fall short of being able to use trademark laws to protect those designs.

In this week’s post we want to explore options for designers to use trademark laws to protect their creative works.

Protection only extends to source identifiers

As we have covered here before, the Trademark Act primarily serves to protect names, logos, and other source identifiers (read more about that here). However, there is also “Trade Dress” protection, which extends to designs, packaging, and the specific appearance of fashion apparel. Of course, as with a trademark, the trade dress must serve as a source identifier in order to receive protection.

A great way to think about these two elements is that tags and brand names are likely protectable as trademarks, while unique aspects of a piece of clothing might be protectable under trade dress.

Fashion apparel must obtain secondary meaning

The important thing to remember here is that under the Trademark Act, trade dress can never be inherently distinctive. Therefore, it can’t serve as a source identifier on its own.

However, a doctrine called “secondary meaning” can still allow designers to gain protection under the Trademark Act. Secondary meaning means that, after some time period of actual use consumers begin to recognize your as a source identifier, your design may be protected under the Trademark Act. The down side is that such consumer recognition can take decades to achieve.

Case in point, the famous shoe designer Christian Louboutin began using bright red soles on the bottom of his shoe designs to identify his company as the designer of the shoes. It wasn’t until 2008, however, that they were able to prove secondary meaning and thus obtain trademark protection. The ability to protect his trade dress was even affirmed by a Federal Court of Appeals.

What to do in the time between use and acquiring secondary meaning

Designers might be left wondering how to protect their trade dress before acquiring secondary meaning. The good news is that other intellectual property protection can help. Most specifically, design patents and work well to secure your rights for certain time periods (usually 14 year) and copyrights may be able to assist with protection of any original works you create.

What to do next

The end result is that designers should consider all options when trying to protect their designs: trademark, trade dress, copyright, and patent rights.

When it comes to the trademark elements, be sure to check out MightyMarks®, a leading online digital trademarking firm with low fixed fees for applications and appeals.

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Image: Thinkstock/VvoeVale
*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 To Do First: Company Name or Trademark

March 3, 2015 — 1 Comment

New businesses, whether  local mom and pop stores or high growth tech startups, have a lot on their plate. One early question is what to call the company and how to go about registering and protecting the business name.

In this post, we will walk through considerations for when and how to pick your business name.

First, do some research.

Your first step is always to do your research. You should search your Secretary of State’s database of registered companies to see if your company name is available in your state. This is because most states will not allow two companies to have the exact same name in their databases.

You should also search whether your domain and social media names are available. This can be a hard one. And further, you should search the USPTO database (more on that here) to see if there are any confusingly similar marks already registered

Second, reserve the name or form your company.

Once you have settled on your business name, it is a good idea to reserve it with your state’s Secretary of State (if they allow reservations). This will give you some time to secure the rights to that name with the USPTO (see below). If you can’t reserve the name, then you might go ahead and form the company if the formation fees are not too high. You can always dissolve it later.

Third, file an Intent to Use Trademark Application.

Assuming you have not started using your business name in commerce, you can file an Intent to Use Application with the USPTO to get approval on your name. You just have to have a bona fide intent to use the name within six months. After three to four months, you should get a response from the USPTO on the availability of your business name. If it is approved, then form your company if you haven’t already done so. Then you can really start turning your idea into a real business!

Wait, I don’t have time to do all of that!

We get it; the above process isn’t always practical. Or maybe you just don’t want to wait.

In that case, you should talk to an attorney to help you in selecting the right business name. Then, with the right guidance, you might proceed with all of those steps at the same time. And if you are already using the name in commerce, you can file a Use Based Trademark Application rather than an ITU as described above.

And if you hit a snag, you can always change your name later, there will just be administrative headaches involved with the changing your name.

This is why it is a good idea to get a knowledgeable trademark attorney to help you in your early days. When looking for a good attorney, be sure to check out how MightyMarks.com can help you!

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Image: Thinkstock/nobiggie
*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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