Archives For Trademark Law

How do I trademark my clothing brand?

November 18, 2021 — Leave a comment

We work with lots of different types of clients but probably the most popular category of clients are those folks interested in registering their apparel brands.  It makes a lot of sense too.  Apparel is big business and with today’s technology you can have a website with your custom style/sized clothes where another vendor manufactures and ships the clothing to the purchaser.  Easy peasy.  

But registering a trademark for apparel is another thing altogether. There are some serious pitfalls for the inexperience applicants.  In this post we will cover applying for an apparel trademark and the specific issues clients regularly face.

  1. Word Mark or Design Mark?
  2. Searching the USPTO for Apparel Brands
  3. You Are Also a Service Provider
  4. The USPTO Rejected My Apparel Specimen!
  5. Enforcement

1. Word Mark or Design Mark?

Word marks protect the letters, numbers, or characters of a trademark without any claim to color, font, design, or style.  Generally they are what we recommend client file if feasible.  They’re  Plain Jane.  They are also the most bang for your buck since so long as you continue to use the name, you’re protected for the life of the registration, despite changing logos.  But with apparel, the story is a little different.

Apparel clients are all about style.  Design sense is incredibly important for these clients and the logo on the apparel is generally of the utmost importance.  That’s why we often opt to protect the logo in addition to the word mark.  Design marks protect the logo, which may include the words in that logo.  We generally file the trademarks as black and white with no color claim.  That way the owner can use the logo in different colors on a variety of backgrounds.  So what’s our trademark recommendation for apparel clients?  File a design mark and possibly a word mark.

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2. Searching the USPTO for Apparel Brands

All applications at the USPTO fall into one of 45 classes of goods and services.  Apparel is class 25 and it protects everything from shirts to shoes to formalwear.  It’s a huge category.  So when we search the USPTO we are keyed in on 25 but that’s not the only place we need to look.  The USPTO treats apparel and jewelry as highly related.  Jewelry is class 14.  If an apparel brand applies in 25 but there’s a similar brand registered for jewelry in 14 there’s a good chance of a likelihood of confusion office action.  And nobody likes that!  Beyond 25 and 14 you need to also consider class 35. 

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3. You Are Also A Service Provider

If you have an apparel brand you are likely not just a manufacturer, you’re also a service provider and likely to file another application in class 35.  35 includes services like retail and online retail store services.  Many clients who sell apparel also choose to protect their online stores.  Similar to jewelry, if an apparel applicant applies to protect the apparel in 25 but there’s an online store registered for apparel in 35 there’s going to be trouble.  A registration strategy we often employ to save clients money is to file a design mark in 25 for the apparel and a word mark to protect their website in 35.  Best of both worlds while saving legal and government fees.

4. The USPTO Rejected My Apparel Specimen!

We see office actions all the time from clients who incorrectly filed a specimen for their apparel brand.  A specimen is proof that you’re using the trademark.  It’s a bit technical but for most clients a specimen is a picture of the trademark on the product or used in conjunction with the service (usually a website screengrab).  Apparel is a bit trick because the USPTO is very strict about the applied for trademark being used as a “source identifier” as opposed to mere decoration.  Routinely our firm will get a call from a client who received an office action because the USPTO didn’t like their apparel specimen.  The specimen they submitted was a picture of the brand in big font across the front of the shirt.  That’s usually called decoration or ornamentation.  What the USPTO really wants to see is a picture of the trademark placed on the upper left breast pocket area of the shirt just like you’d see on a Ralph Lauren Polo shirt.  Call the USPTO old fashioned!  Or you could snap a picture of the apparel with a hang tag displaying the trademark.  Either way it can be frustrating for clients.  In reality it’s an easy fix for a trademark attorney.

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5. Enforcement

Congrats, you received a trademark registration for apparel. Now what?  Your trademark rights are limited only by how strong or weak the trademark is.  For a really unique trademark the sky is the limit.  If there’s multiple people using similar brand names tread carefully before you send a take down notice Amazon or social media.  You don’t want to run the risk of challenging the use of someone else’s unregistered rights.  They may decide to try and cancel your trademark.  Our advice is to always speak with a trademark attorney to ensure your rights are senior and superior to the junior infringer.

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That’s A Lot! But Mighty Marks® Can Help

Our online trademarking service helps startups and small businesses obtain federal trademark registrations.

Learn more at www.mightymarks.com.

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Image: Unsplash.com
*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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Trademark Law 101: Everything You Need to Know About Trademark Registrations

January 26, 2016 — Leave a comment

Understanding how to protect your brand and avoid infringing trademarks owned by other businesses can be complicated at times. But, for every startup and small businesses out there, understanding trademark law is critical to building a successful brand.

In this post we will cover a lot of ground and focus on the six topics below.

  1. Trademark Law
  2. Don’t Pick a Generic or Descriptive Mark
  3. Researching Trademarks
  4. Trademark Applications
  5. Post-Application Filings
  6. Post-Registration Filings

1. Trademark Law

A trademark is a name, slogan, or other mark that serves as a source identifier. That means consumers can purchase a good or service and rely on the trademark attached to it as an identification of who is selling that good or service.

To get trademark rights, you first need to use your mark in commerce. Once you use your mark in commerce, you gain a “common law” trademark that you can enforce in court. Of course, it is always a good idea to register your trademark with the United States Patent & Trademark Office for better protection. For example, a federal registration can help you protect your mark throughout the entire country rather than just in the geographical areas in which you are using your mark.

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2. Don’t Pick a Generic or Descriptive Mark

When picking your name, be sure to pick something that is not generic or descriptive. That’s because generic and descriptive marks cannot be protected. As an example, if you want to open a barbecue restaurant, don’t call it BBQ Shack because you will not be allowed to own those words in connection to the sale of barbecue. If you could, other companies would be prohibited from using those words to describe their business.

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3. Researching Trademarks

Before you use a mark in commerce (and certainly before you file a trademark application) you should do some research to see if anyone else is using the mark in association with similar goods or services. That’s because, generally speaking, the first person to use a mark will be deemed the owner of that mark.

You should look for anyone using an identical mark or any mark that is confusingly similar to your mark because trademark protection extends to any mark that might confuse consumers. Further, your search should mostly focus on other marks being used on similar goods and services to your goods and services. That’s because trademark rights are specific to a type of good or service (think Delta Airlines v. Delta Faucets).

Once you have confirmed that no one else is using the mark you want to use, you can move on to an application.

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4. Trademark Applications

When you are ready to file your application with the USPTO, you can do so online. While anyone can file for an application, using an attorney is highly recommend (read more on that here). The application process includes completing the form, identifying the goods or services you will sell under your mark, submitting a specimen showing your use of the mark in commerce, paying the application fee, and submitting your application.

We’ve covered all of those topics a lot on this blog. Read more about them at the links below.

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5. Appealing a Denial

After you file your trademark, you may receive various correspondence from the USPTO (and you’ll probably get some spam too). Some of those communications will be simple requests to disclaim a portion of your mark (meaning you won’t claim protection for that word) or to correct your identification of your goods or services.

Unfortunately, your application may be denied. If that happens, you should read out post What You Should Do If Your Trademark Application Is Denied. Sometimes you can overcome the denial, sometimes you can’t.

If you don’t appeal the denial, or if your denial is not overturned on appeal, your application will be deemed “abandoned.”

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6. Post-Registration Filings

If your application is approved, you will receive a federal trademark registration certificate. But don’t forget to keep up with post-registration filings. The most important filings occur five years after your registration date, ten years after your registration, and every ten years thereafter. We’ve covered this on our blog before and you can read more at the links below.

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That’s A Lot! But Mighty Marks® Can Help

Our online trademarking service helps startups and small businesses obtain federal trademark registrations.

Learn more at www.mightymarks.com.

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Image: Adobe/Rawpixel.com
*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 Much Does a Trademark Application Cost?

January 12, 2016 — 1 Comment

A common question many startups and small business owners ask is how much will it cost them to get a trademark registration with the United States Patent and Trademark Office (the USPTO).

Generally speaking, most applicants will spend several hundred dollars on the application, plus additional fees for lawyers and search companies. In this post we will break that down.

USPTO Application Fee

Depending on which application you file, you will likely pay $250 or $350 The cheapest option, $250, is only available if you use the USPTO’s online application process and agree to use a pre-approved goods/services description. In most situations, you will be able to do that.

Keep in mind, however, that if you file an Intent to Use Application (sometimes called a 1(b) application), then you must pay an additional $100 at a later date when you file your Statement of Use (evidence showing actual use of your mark in commerce).

Trademark Search Fees

Although you can perform your own trademark search, you are usually better off using professional help to make sure you have superior rights in the mark you want to register. Sometimes the attorney helping you file the application has the tools necessary to perform the search. But other times they will recommend a third party perform the search. In either event, it is likely to cost you at least $700 to obtain a professional trademark search and sometimes a lot more depending on what you want to search.

Although it can be expensive, performing a search is a good idea because it can prevent a lot of headaches down the road if you try to protect a mark which someone else is already claiming.

Trademark Attorney Fees

You will also likely want to hire an attorney to assist with your search and your application. There are many benefits to hiring an attorney to help. First, an attorney can help you decide whether you can even protect your mark in the first place (because some marks cannot be registered). Second, they know the ins and outs of the application and can increase your odds of getting the application approved. Third, they understand what to look for in a trademark search and might spot something you might miss. Fourth, if your application is denied, you will absolutely want legal assistance to respond to the denial and having an attorney assist you from the start will be better than bringing in an attorney later. And there are more benefits, but that’s for another post.

So what will they charge? It depends. Some will charge you over $3,000, while many will charge you less depending on the work load involved. For example, at mightymarks.com we charge a $1,495 fixed fee to provide counsel, research, an opinion, and to draft the application.

The Total Cost

In the end, if you obtain a professional search and get legal help, you will likely spend between $1,745 to $1,995 to get your application drafted and filed. But also note that if the application is denied, most attorneys will charge extra for time spent handling an appeal (if you appeal).

Want to Get Started?

If you want to file a federal trademark application, we can help! Just head over to mightymarks.com to learn more.

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Image: Adobe/gustavofrazao
*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 Long Does My Trademark Registration Last

December 22, 2015 — 1 Comment

If you’ve obtained a federal trademark registration with the United States Patent & Trademark Office (or USPTO for short) you may be wondering how long your registration lasts and how long you can protect your trademark.

Well, there is good news here. Unlike copyright law and patent law, which have time limits on protection (usually 75 years after the death of the creator for copyrights and 20 years for patents), trademark protection can extend indefinitely if you stay current on filings. That’s because you can protect your registration for so long as you are using the mark in commerce, provided it doesn’t become generic.

Assuming you are still using the mark in commerce, the key is to stay current on your filings. Here’s what you need to do.

5 years after registration

To keep your registration alive, make sure you file your Section 8 Declaration of Use between the 5th and 6th year after your registration. You’ll have to include a new specimen of use to prove to the USPTO that you are still using the mark in commerce.

You can file a Section 15 Declaration of Incontestability. This filing allows you to claim “Incontestability” status for your mark which gives you a legal presumption that your registration is valid (among other benefits). That can be really helpful if you find yourself in court as a plaintiff or a defendant.

Since these two filings occur at the same time, the USPTO has a combined Sections 8/15 form you can file to save time.

These are critical filings because, if you fail to make them, you can lose your mark. There are some grace periods in which you can file the documents after the deadline, but you really should strive to timely file the documents to avoid headaches.

10 years after registration

Five years later (10 years after the registration) you have to renew your registration. Specifically, you file this between the 9th and 10th years following the registration. Here you use a Section 9 renewal form. Also at this time, you must file another Section 8 Declaration of Use to prove that you are still using the mark in commerce.

Just like the filings above, the USPTO maintains a combined form, the Sections 8/9 form to help you save time.

And also like above, if you fail to timely file these forms, there is a grace period. But you are better off filing it all on time.

20+ years after registration

Ten years later (20 years after the registration) you have to repeat that last process. You file another Section 9 form and another Section 8 form, or just use the combined 8/9 form. You must do this every 10 years to maintain the trademark registration.

Need help with your USPTO filings?

Let us know because we can help!

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Image: Adobe/raywoo
*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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Car-Freshener Corporation Wins Trademark Infringement Lawsuit

December 11, 2015 — Leave a comment

Last month we covered the Car-Freshener Corporation’s trademark infringement lawsuit against Exotica Fresheners Company.

Car-Freshener Corp claimed that Exotica designed their products to look like Car-Freshener’s products, that consumers would be confused and tricked into purchasing Exotica’s products rather than Car-Freshener’s products, and further, that because Exotica’s products were an inferior, additional damage to Car-Freshener was being caused.

This case came down to a debate over “Trade Dress” and ultimately the jury found in favor of the plaintiff, Car-Freshener.

“Trade Dress”

Trade dress, a subset of trademark law, contemplates the design of a product including its packaging. And much like other forms of trademarks, it can be protected under federal law. However, it must still serve as a source identifier. That is, it must allow the consuming public to see the trade dress (the packaging) and identify what company is producing and selling that good. Therefore, it must be either inherently distinctive or it must acquire secondary meaning (see this post for more).

One exception to protecting trade dress, however, is that you cannot protect functional aspects of packaging using trade dress. Functionality can only be protected under other forms of intellectual property, namely patent law.

The Arguments

While Car-Freshener Corp. made the arguments outlined above, the defendant, Exotica, claimed that its palm tree was sufficiently different from the pine tree used by Car-Freshener Corp. and that they used similar colors for the same scents because they were the industry standard. Exotica also claimed that they have used yellow packaging off and on for years without complaint from Car-Freshener Corp. In the end, Exotica claimed that it was just a coincidence that the products looked similar.

The Jury Verdict

The jury, weighing whether Exotica’s products were so similar to Car-Freshener Corp’s as to cause consumer confusion, found in favor of the plaintiff, Car-Freshener Corp. They also awarded over $50,000 in damages to Car-Freshener Corp.

This is not overly surprising given the numerous similarities between the two products. They were both trees of about the same size. They used similar colors for the different fragrancies. And they were sold in clear packaging with a yellow cardboard top containing red and green elements.

What’s Next

Unless they appeal, Exotica will be required to change their packaging to avoid future infringement. Of course, you likely won’t see much of a change on your local store shelf because Exotica is actually a fairly small company. In fact, while Car-Freshener’s sales exceed $100 Million per year, Exotica’s sales are only about $100,000 per year.

Of course, that doesn’t mean Exotica wasn’t worth suing. To the contrary, Car-Freshener can use this case to protect their brand and also to scare off other infringers and would-be infringers.

Questions about your trademark rights?

If you want to protect your trademark, contact us! We help startups and small business file trademark applications with the USPTO all the time.

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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, Trademark Law
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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.

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Understanding the USPTO’s Trademark Application Options

October 1, 2015 — 1 Comment

When applying for a use-based federal trademark online with the United States Patent and Trademark Office, or USPTO for short, you basically have three options: the TEAS Regular application, the TEAS Reduced Fee application, and the TEAS Plus application. (TEAS stands for Trademark Electronic Application System.) Understanding which to file is an important decision.

TEAS Regular

A TEAS Regular application is the standard application. The filing fee is $325. Generally speaking, this is just a paper application process that starts online. When applying under this application, you don’t have to agree to use the internet for subsequent filings, you don’t have to supply an email address, and you can use custom information. For example, you can create your own unique goods/services description when applying.

TEAS Reduced Fee

As the name suggests, the TEAS Reduced Fee application is cheaper. It is only $275. Sometimes referred to as the TEAS RF, this application has additional requirements. Specifically, you must include an email address and you must agree to receive official application notices from the USPTO via email. Further, you must agree to file follow up filings using the TEAS platform also. However, like the TEAS Regular application, you don’t have to use a pre-approved goods/services description when submitting your application.

TEAS Plus

The TEAS Plus application is the cheapest option. It costs just $225. However, you must comply with additional requirements. Much like the TEAS RF application described above, you have to include an email address, agree to receive communications via email, and agree to use the TEAS system for subsequent filings. Additionally, you must use one of the USPTO’s pre-approved goods/services description when applying.

Of note, this application is somewhat new, appearing for the first time in early 2015.

$50 Processing Fee

You should note that if you elect to apply under one of the cheaper applications described above, you need to make sure you comply with that application’s rules. For example, if you apply under TEAS Plus but try to use a non-pre-approved goods/services description, or if you try to use a paper form, then you may be assessed additional fees. In particular, the USPTO will charge you $50 per class of goods/services for such a violation.

How do you pick?

If you are trying to decide how to apply for a federal trademark registration with the USPTO, your best bet is to speak to an attorney that has experience filing trademark applications. He or she can advise you on your ability to register your mark and if you decide to move forward, your trademark attorney can advise you on the best application to use.

In most situations the new TEAS Plus application is a great option to help you save money and to speed up the process. But sometimes you are better off using one of the other options.

Need help?

If you want help, Mighty Marks® can help you. We apply for trademarks all the time. Learn more at www.mightymarks.com.

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Image: Adobe/alexskopje
*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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The Nine Factors a Court Considers When Deciding “Likelihood of Confusion”

August 18, 2015 — 1 Comment

Trademark infringement occurs when one party uses another party’s trademark in commerce in such a way that consumers are likely to be confused as to the first party’s goods or services. Whether consumers are likely to be confused is a question of fact that must be decided during a trial (or by the parties in settlement negotiations, when possible).

The nine factors below are helpful in making this decision and are used by courts and lawyers in most trademark litigation lawsuits. As a result, they are good factors for you to think about if you find yourself being accused of infringement or if you think someone is infringing on your mark.

1. Strength of the Plaintiff’s Mark

Assuming the plaintiff has a valid trademark, they will look to the strength of the mark to decide how much protection it deserves. As you can learn in this post, arbitrary/fanciful marks receive the most protection, suggestive marks the second most, and descriptive marks the least. (And generic marks never receive protection.)

2. Similarity of the Marks

Courts will look at three items when comparing the two marks. First is sight, do the marks look alike when written next to each other. Second, do the marks sound the same when spoken. And third, do they have the same or similar meanings when looked up in a dictionary. The more similar the marks are from those viewpoints, the more likely trademark infringement is to be found.

3. Similarity of the Goods or Services

Related to the last point, the court will review how similar the goods or services are to one another. If one mark is used to sell enterprise computer software and the other used to sell iPhone games, those might be considered similar enough as to cause confusion. On the other hand, if the other were used to sell grass seed, then they would probably be sufficiently different to avoid a finding of trademark infringement.

4. The Likelihood the Plaintiff will Expand into the Defendant’s Market

For common law trademarks (which only receive protection in their geographical areas and natural zones of expansion) courts will look to whether the plaintiff is likely to enter the defendant’s market. For example, a food truck operator in Miami might be able to prevent a similarly named food truck from operating in Orlando, but probably not in Portland (which is why the Miami operator should get a federal registration – for nationwide rights).

5. Actual Confusion

A court can find trademark infringement even if actual consumer confusion is not present – all that is needed is likely confusion. Of course, if you have evidence of actual confusion such as your customers going to a competitor’s location due to their infringement that goes a long way towards proving an infringement case.

6. Sophistication of Buyers

Courts will also consider how much effort a consumer is likely to put into the purchasing decision. The more effort (such as buying a plane) the less likely they are to be confused because they should learn of the different source during their research. The less likely (such as buying clothes), the more likely they are to be confused as to the source because they likely will not do a ton of research into the source.

7. The Defendant’s Intent

While not a technical requirement, courts often look at this consideration because if bad faith can be shown, it is clear evidence of infringement.

8. Quality of Defendant’s Goods

When determining damages, a court is likely to look to whether the defendant’s goods were shotty. If so, that could harm the goodwill of the plaintiff and entitle the plaintiff to greater damages.

9. Consent Agreements

If the plaintiffs have an agreement under which the defendant was granted permission to use the mark, then that will obviously lessen the likelihood that confusion exists and therefore negate an infringement claim.

Stay Current

We hope our blog is helpful to you in terms of teaching you what you need to know about trademark law. To stay up to date, be sure to connect with us on Twitter & Facebook!

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Image: Thinkstock/adolf34
*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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Domain Law 101: The Anticybersquatting Consumer Protection Act

August 4, 2015 — Leave a comment

Startups and businesses of all sizes often struggle to obtain the right domain name for their companies. Many third parties own domain names you may want to use and they often have a legal right to do so. However, when they don’t have such a legal right, and when you have a valid trademark claim to the domain, the Anticybersquatting Consumer Protection Act (ACPA) may allow you to force them to transfer the domain to you.

Let’s take a look at the law and what it means to you and your business.

What is Cybersquatting

The ACPA can be used to resolve a lot of different types of abuses. For example, if someone registers a domain using your trademark and offers to sell the domain to you for a large sum of money, that may be a violation of the ACPA. It can also be used to prohibit someone from improperly profiting from the commercial use of your trademark. Further, you can use the ACPA to prevent someone from tarnishing your mark, for example using your trademark in a phonographic website name.

How to Win a ACPA Claim

To win such an argument, you must show certain things, some of which can be hard. Below is a summary of things to consider when deciding if you have a good claim.

1. Valid trademark rights

You must show that you have valid trademark rights. But not just any trademark rights – rather, you must have a trademark that is distinctive or famous. This can sometimes be hard to prove.

2. Where and how your mark is used

To win a ACPA claim you will have to show that the other party registered or trafficked in or otherwise used a domain name that improperly uses your trademark.

Further, you often cannot win a ACPA claim if your mark is used after the top level domain. For example, if someone used “MightyMarks” in a path (like domain.com/mightymarks) it would be hard for us to win a claim. But if they used it in the second level domain (like WeAreMightyMarks.com) we would have a good chance of winning our claim.

3. Time of registration

To prevail under an ACPA claim, you must also be able to show that the registration of the domain in question was made after your trademark became distinctive or famous. This obviously makes it hard for new companies to win under a ACPA claim.

4. Typo domains are also covered

Often times you will find misspelling and typo domains that create problems. For example, if someone created MightyMarksBl0g.com (note the zero in place of the “o”), that would be considered a typo domain. In such a circumstance, even though the domain is not identical to our domain, a court would still likely find in our favor because it would still be confusingly similar to our domain.

5. Bad faith

You must also prove that the other party acted in mad faith. This is probably the hardest element of winning an ACPA claim. Specifically, you must show that the other party acted with “a bad faith intent to profit from” your trademark.

As a result, if another party is using your trademark in a different geographic region, or for a different type of goods or services, even if the use is only minimal, you may have an uphill battle in front of you. Another example is when someone registers their name or nickname. In those situations, even if they are similar to your trademark, they may have a legitimate use and therefore it may be hard to win a claim against that person.

On the other hand, if someone registers a domain incorporating your trademark and immediately tries to sell you the domain for a high price, that is usually pretty good evidence of a bad faith intent. In these situations, you can often win a claim against that person.

What should you do?

If you find yourself with a possible ACPA claim, you should definitely speak to an attorney about your case. he or she can advise you of your rights and talk about what damages and equitable remedies are available to you (we will cover those in a future post).

Find this helpful?

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Image: Thinkstock/TheaDesign
*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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From Arbitrary to Generic – The Trademark Protection Spectrum

July 21, 2015 — 3 Comments

The ability to protect a trademark depends greatly on the ability of the mark to serve as a source identifier. Courts will usually classify a mark in one of four categories in order to determine if protection should be allowed: (1) Arbitrary; (2) Suggestive; (3) Descriptive; (4) Generic. Marks falling in the arbitrary and sometimes in the suggestive categories can usually obtain protection. Marks falling in the descriptive category can obtain protection only in limited situations. And marks falling in the generic category can never receive protection.

Let’d dive deeper into each.

Arbitrary

The best marks from a trademark perspective are arbitrary marks. These marks, sometimes called fanciful marks, bear no logical relationship to the good or service being sold. Good examples of arbitrary marks are Apple for computers and Kodak for cameras. Design marks can also serve as good examples of an arbitrary mark, such as the Nike swoosh.

Arbitrary and fanciful marks are inherently distinctive and can almost always be protected, assuming there are no conflicting marks already registered.

Suggestive

A mark is “suggestive” if is suggests a characteristic of the good or service being sold. A good example of a suggestive mark is Coppertone, for sun tan lotion because it doesn’t describe the product but it does suggest a benefit of the product (a copper toned skin color). Suggestive marks differ from descriptive marks (below) in that consumers need to use some imagination to associate the mark with the good or service, yet the mark is somehow related to the good or service itself.

Suggestive marks are usually distinctive and can also almost always be protected, assuming there are no conflicting marks already registered.

Descriptive

Descriptive marks are just that; they describe the good or service being sold. Good examples are Holiday Inn for a hotel/inn and Vision Center for eye and optical services. Descriptive marks do not deserve immediate protection because if someone can own a descriptive term, it makes it nearly impossible for other companies to sell goods or services because they cannot use the descriptive term to sell their good or services.

However, descriptive marks can receive trademark protection if they acquire a “secondary meaning.” This means that the consuming public has come to associate the descriptive mark with a particular source selling that good or service rather than the good or service itself.

Descriptive marks can only be distinctive, and thus receive protection, if they acquire a secondary meaning as stated above, again assuming there are no conflicting marks already registered.

Generic

Lastly, generic marks are marks that are simply that: generic.

Good examples of generic marks would be BBQ or Computer. You will never be able to trademark those words because it would then make it impossible for other companies to sell those goods or services using those words.

Need Help?

MightyMarks.com is ready to help businesses across the country with their trademark needs. Visit us online to learn more about how we can help your company.

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Image: Thinkstock/vlastas
*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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