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Archives For October 31, 2015

Spam Following Trademark Application

November 24, 2015 — 1 Comment

You’ve filed your trademark application with the United States Patent & Trademark Office (USPTO) and all of a sudden you start getting emails and physical mail regarding your trademark and you might start to wonder how you are supposed to keep up with all of the filings and fees.

Well, the good news is you don’t have to keep up with all of those mailings. The bad news is, it is mostly spam.

Here’s what you need to know.

Information in Your Application is NOT Confidential

Your application will be publicly available. Anyone can access the USPTO’s database and read your application and mine your application for your information. As a result, many companies in the U.S. and abroad have discovered they can automate the process and collect your contact information as soon as your application is filed. As a result, they know who you are, where you operate, and more importantly, they know information about the trademark you are seeking to register.

Mailings You Might Get

Pretty quickly after submitting an application, you may receive one or more of a number of different types of emails or physical mailings. These mailings will offer a wide range of services from legal services to trademark monitoring services, recording services with other agencies, and recording services with foreign offices. Some of these are valuable services you may want to purchase. But many of them are not valuable and you should not purchase them.

They Are Probably Not Official

Although the mailings may look like official USPTO documents, they are probably not. For instance, many will include names including “United States,” “Registration Office,” “Agency,” or the like and further, many will use formats that look like official USPTO documents. They will probably also have unique information about your application like the mark, the serial number, the application date, and your contact information. But remember, all of that is public so just because that information is on a mailing, it doesn’t make it official.

How To Spot Official Documents

Here’s the good news. Official documents and communications from the USPTO will always come from one of two places. First, if physical, the documents will come from the “United States Patent and Trademark Office” in Alexandria, Virginia. And second, if by email, the documents will come from an official “@uspto.gov” domain.

If the documents arrive from any other source, you can almost certainly conclude they are not official.

What If You Were Duped?

From time to time people make mistakes and send money to one of these third-parties by mistake. If this happens to you, you should seek a refund from the third party and, more importantly, notify the USPTO and also the Federal Trade Commission. You might also consider contacting a state official in your state regarding the misleading business practice.

The Best Course of Action

Without a doubt, we think the smartest thing you can do is seek help from a competent trademark attorney. He or she can help you with your application (which is a big deal itself) and also with determining what communications you should take seriously after you file your application.

And of course, if you want to file a federal trademark application with the USPTO, we recommend you check out MightyMarks.com where we can help you unleash the power of a federal trademark.

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Image: Adobe/d.c.photography
*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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Alleged Trademark Infringement Hanging In Your Car

November 20, 2015 — 1 Comment

Trademarks are everywhere. Even hanging from your car’s rear-view mirror. And business owners everywhere can learn a thing or two in a recent lawsuit filed to protect trademarks associated with little tree car-fresheners.

In One Corner: The Car-Freshener Corporation

You’ve probably never heard of them, but you’ve likely seen and maybe even used their product.

The Car-Freshner Corporation has made little tree car-fresheners for years. The fresheners are shaped like a pine tree, have the company’s name written at an angle in the middle, and are sold in a cellophane package with a yellow card top. The company claims that the public associates its products with “the concepts of freshness, cleanliness, and pleasing scents.”

And they have three federal trademark registrations with the United States Patent and Trademark Office. The first two are word marks (“Car-Freshner” and “Magic Tree”) and the third is a design mark for the tree design with a white box in the middle for their logo. All three are in connection to “absorbent bodies impregnated with perfumed air deodorant” and date back to first use dates in the 50’s and 60’s.

In the Other Corner: Exotica Fresheners Company

If you prefer palm trees and coconuts over pine trees, then maybe you’ve heard of the Exotica Fresheners Company.

This company also makes air fresheners for cars. Their fresheners are shaped like a palm tree and contain coconuts, and like the Car-Freshener’s products have the company’s name written at an angle in the middle and are sold in cellophane packaging with a yellow card top.

Unlike the Car-Freshener Corporation, the Exotica Fresheners Company does not have a federal trademark registration. In fact, they applied for a trademark for “Pine Tree” with the USPTO but were denied registration and failed to appeal.

Round 1

The Car-Freshener Corporation filed a trademark infringement suit against Exotica claiming consumers were likely to be confused and deceived and likely to mistakenly purchase Exotica’s products when they intended to purchase Car-Freshener’s products. Car-Freshener further claimed that Exotica’s products were likely to “falsely mislead consumers into believing” that Exotica’s products were “affiliated or connected with or are approved” by Car-Freshener.

And in opening statements to the jury, Car-Freshener alleged that Exotica knowingly designed its products to look like Car-Freshener’s products. And further, that Exotica’s products were of an inferior quality when compared to Car-Freshener’s products.

Exotica argued that there is no evidence of consumer confusion.

What’s Next

Interestingly, disputes between these two companies is nothing new. In fact, they have been involved in numerous disputes dating back to at least 1995 over trademark matters. And in this current trial, the outcome is not certain.

As we have covered on this blog before (Justice Explained: Trademark Infringement & Defenses & The Nine Factors a Court Considers When Deciding “Likelihood of Confusion”) Car-Fresheners will have to show that Exotica’s products are likely to cause consumer confusion. That is, that the public is likely to purchase the palm tree air freshener mistakenly thinking they are buying a product from Car-Freshener.

While the products are similar, it is not clear if they are so similar as to meet that threshold. The jury will most likely review the nine factors (see the post above) to come to a determination in this case. And the outcome will be interesting.

Hopefully we will get a verdict soon. And when we do, we will tell you what happened and why here on the Mighty Marks® blog.

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Image: Court Case
*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
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