Archives For Trademark Law

Best Practices for Choosing a Business Name

July 7, 2015 — Leave a comment

One of the earliest decisions a new business owner must make is what to call the new venture. There are many considerations including marketing, branding, and others but in this post we want to cover some of the legal considerations.

First, check the name availability with your state.

In order to form a LLC or Corporation, you must file formation documents with your state’s Secretary of State. As a result, the Secretary of State maintains records on all active and inactive businesses registered in the state.

This is often the first place you should search for name conflicts because a Secretary of State will not allow two active businesses to have identical legal names.

For example, if you want your legal name to be Hot Spot Technology and someone already registered a business with that name your application will be denied. But you can change your name to Hot Spot Technologies and get it approved (at least as the company’s legal name with the state).

But you have to look further!

Second, check the USPTO records.

While state business registries are concerned with identical names, trademark law is concerned with “confusingly similar” names.

The first trademark database to search is the United States Patent and Trademark Records. You should read our post on how to search the USPTO database, but in short, what you are looking for is any registration that is confusingly similar to your intended name that is also in a similar market. For example, if Hot Spot Technology sold grass seed, and your company with the same name wanted to sell computer chips, you can still probably get it approved.  However, if you also wanted to sell grass seed, you couldn’t get a registration on your favorite name or even the Technologies version mentioned above because the marks would be confusingly similar and in the same goods/services area.

So, while you can have a legal name of Hot Spot Technologies, you’d have to have a different name under which you do business (a DBA or Fictitious Name).

But that’s not all!

Third, check the common law.

As you may have read on this blog before, trademark law is comprised of both statute and common law. As a result, you need to run a common law trademark search. The post mentioned above covers this too, but the short version is you need to run internet searches, look in trade magazines, newspapers, and more, all to make sure there are not any unregistered marks out there that might cause you problems.

Ready to File?

If you are ready to file for a federal trademark, you should check out MightyMarks.com; our online digital trademarking service.

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Image: Thinkstock/olm26250
*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 Assign Ownership of a Trademark Registration

June 25, 2015 — Leave a comment

Trademark rights stem from use of a mark in commerce, meaning you cannot own a trademark registration unless you are actually using the mark in commerce (but be sure to check out our post on intent to use applications).

As a result, you cannot simply assign ownership of a trademark unless you are also assigning the goodwill associated with that mark and the new owner continues selling the same or similar goods and services.

This post will explain how to assign a registration to a new owner and how to change your name with the USPTO if your business name changes.

Timing

The ability to assign your trademark rights depends on where your mark is in the application process.

If you have a registration, or an application based on actual use, you can request an assignment through the USPTO. However, if your application is not yet registered and is based on intent to use, then you cannot request an assignment.

Process

The first step to recording an assignment is to file a Recordation Form Cover Sheet, along with supporting documentation. That supporting documentation is most often some form of trademark assignment contract or certification (more on this below).

You file the form and supporting document through the Electronic Trademark Assignment System (ETAS) along with the corresponding fee, currently $25.

Supporting Documentation

Depending on the circumstances of the assignment, your supporting documentation may take several different forms. The most common is a simple trademark assignment agreement between the two parties. The agreement should state that the assigning party is giving up its rights in and to the mark and that all trademark rights are being assigned to the receiving party. Further, the document should state that the associated goodwill is being assigned in addition to the trademark itself. This is because a trademark cannot be assigned without the corresponding goodwill.

Name Change

You may be wondering what to do if you are not actually assigning your mark, but just changing the name of the owner. In such a case, you actually follow the same procedure as outlined above. However, rather than using supporting documents showing the assignment, you just file documents supporting the name change (such as a filing with your state’s secretary of state).

Your Options

While you can file the Recordation Form Cover Sheet on your own, the supporting document is usually more complicated. To make sure you draft the proper supporting document, it is usually best to involve an attorney with making these changes to your pending application or existing registration.

If you would like help with your assignment or name change, feel free to contact us anytime to learn how we can help.

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Image: Thinkstock/moodboard
*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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Learn About Competitors Using the Trademark Status and Document Retrieval Service

June 10, 2015 — Leave a comment

A little known fact about the USPTO trademark database is that you can use it to dig up information about your competitors.

Here’s how.

First, run a search.

Using the USPTO’s search tool, you can search for trademarks similar to yours, names of applicants/competitors, and other search terms. Then, skim through the results to see if anything looks relevant. However, unlike when you search for potential trademark conflicts, in this case you want to look for “live” and “dead” marks. This is because we are trying to learn about your competitors, not so much about the marks themselves.

Second, enter the TSDR.

Once you have pulled up an application or registration, click on “TSDR” in the upper right corner.

The initial page will give you a summary of the registration or application. This can be helpful, but the next step is better. Click on the “Documents” tab at the top of the page to reveal all of the records relevant to that registration/application.

Third, dig!

The documents in this tab contain all kinds of information that might be useful to you.

You can learn about whether your competitors are using an attorney to handle their application by looking at the correspondence information. You can learn whether your competitor was denied in the application process and how they responded to the same. You can also review the specimens and evidence of use which they provided the USPTO to obtain a registration, which may provide useful information to you in terms of what they are selling and how they are marketing their goods/services.

You may also accidentally stumble on another party that objected to your competitor’s application. If you see that, then you can dig further to see what marks they own or claim to own and what arguments they made against your competitor’s application.

Next Steps

Then, after you have dug up all of this useful information, you can use it in several ways. You can use it to better prepare your own application and you can use it to improve your marketing strategies once you learn what your competitors or doing or are planning on doing.

And if you need help reviewing these documents, you can always seek the advice of a trademark attorney.

Sign Up

If you find these tips useful, be sure to subscribe to MightyUpdates, our quarterly email newsletter to stay on top of trademark legal issues

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Image: Thinkstock/moodboard
*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 Keep Your Trademark Registration Alive

May 26, 2015 — 2 Comments

When you search the USPTO database for trademarks you will find a lot of marks classified as “DEAD.” This usually means one of two things: First, the mark was denied registration and the applicant either failed to appeal the denial or they did not win their appeal; or second, that the mark was canceled for failing to file proper maintenance documents with the USPTO.

If you have a trademark registration, don’t let that happen to you! Make sure you file the below forms to keep your registration “ALIVE.”

Section 8 Declaration of Use

The first filing you should make after receiving a registration is a Section 8 Declaration of Use. You must file this between the 5th and 6th year after the registration date.

The purpose of this filing is to show the USPTO that you are still using the mark in commerce. For that reason, you will be required to file specimens of your use (much like when you filed the original application).

If you fail to timely file this declaration, there are grace periods before your mark is cancelled, but you don’t want to wait too long, so file as soon as you can!

Section 15 Declaration of Incontestability

Assuming your mark has been in use for 5 continuous years and is on the Principal Register, you can file a Section 15 Declaration of Incontestability to claim “Incontestability Status.” This creates a legal presumption that your registration is valid and provides for many other benefits to mark owners.

Often this is filed along with the Section 8 filing above. In fact the USPTO maintains a combined 8/15 form that you can use to save time and paperwork.

Section 9 Renewal

Lastly, between the 9th and 10th year after you receive a registration you must renew your registration. Then, it must be renewed every ten years thereafter. At the same time, you must file another Section 8 Declaration of Use showing actual use of the mark in commerce.

Again here, the USPTO maintains a combined 8/9 form to save you time and paperwork. And like above, there are grace periods if you fail to file, but you really should just file on time to save money and headaches.

Find this information helpful?

Be sure to subscribe to MightyUpdates, our quarterly email newsletter to stay on top of trademark legal issues.

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Image: Thinkstock/simo988
*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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International Trademark Protection: WIPO & The Madrid System

May 12, 2015 — Leave a comment

We talk a lot on this blog about U.S. trademark protection and the United States Patent & Trademark Office. But have you ever wondered about how you can protect your trademark abroad? It’s possible, and important too. In this post we will introduce you to the World Intellectual Property Organization (WIPO) and the Madrid System.

WIPO

WIPO is a self-funded agency of the United Nations. It’s objective is to provide global intellectual property services plus assistance with international IP policy discussions and cooperation among member states.

The organization was founded in 1967, currently has 188 member states, and is headquartered in Geneva, Switzerland. You can see all the member states here (most developed countries including the U.S. are members).

WIPO also provides an academy use to teach (in person and through distance learning courses) relevant information about international protection of intellectual property. You can learn more about the WIPO Academy here.

The Madrid System

Obtaining a trademark registration in America can be hard, time consuming, and expensive. Imagine if you had to repeat that process in nations all over the world. It’d be overly burdensome.

Enter the Madrid System.

Named after Madrid, Spain, where diplomatic conferences were held and a treaty ultimately signed, the Madrid System is a process for obtaining international trademark registrations. Applicants file one application, in one language, and pay just one set of fees to protect their trademarks in up to 95 countries (not all WIPO member states are parties to the Madrid System).

WIPO promotes three benefits of using the Madrid System.

First, convenience. The system makes it easier to protect your trademark around the world because there is just one central filing location. Further, you can maintain your protection and make changes using that one central location.

Second, lower costs. Rather than paying attorneys in multiple countries to draft trademark applications in different languages and with different rules and procedures, you just pay one fee to WIPO (which changes based on the countries in which you want protection) and file one application.

And third, broad geographic coverage. There are 95 countries to the Madrid Protocol, and your protection may extend up to 111 total countries. WIPO reports that such members represent up to 80% of world trade.

Process

The Madrid System is divided into three phases.

First, you must obtain a registration in your home country (for Americans, this means the USPTO). You then submit your WIPO/International application through that same office. Second, WIPO will conduct a formal examination of your international application. Once approved, your trademark will be recorded in the International Register and published in the WIPO Gazette of International Marks and sent to those countries which you selected in your application. And lastly, each of those countries will examine your application to approve or deny your protection in their country.

From start to finish the process can easily take more than a year, but your international registration will last for 10 years. You can then renew your registration for ten year renewal periods.

Should You Seek International Protection?

Protecting your mark in the U.S. is really important. Protecting your mark on the international level is also important, but if you don’t ever plan to expand, then it may not be a good use of your resources. It really just depends on your unique situation.

For that reason, we think it is always a good idea to talk with a trademark lawyer about your plans. Along those lines, we’d be happy to help. Please contact us if you have any questions.

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Image: WIPO
*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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Confusingly Similar Trademark Applications

April 28, 2015 — Leave a comment

As we have highlighted on this blog before, you should always perform a trademark search before applying for a trademark. There are many reasons for this, one of which is because you don’t want to waste time and money applying for a mark if someone else already registered your mark or another confusingly similar mark.

If your search reveals that someone else has such a registration, you have several options.

First, check the goods and services associated with the registration.

If the goods and services is for faucets and you want to operate an airline, you are probably ok. That is because consumers won’t be confused into thinking your airline is associated with the faucet manufacturer. Figured it out yet? We’re talking about Delta. Delta airlines is rarely confused with Delta faucets, therefore registrations for both would likely be allowed by the USPTO.

(There are some limits to that for famous marks. For example, you probably can’t use “McDonalds” for any reason, even to sell computers, simply because of how famous their mark is in the eyes of consumers.)

Second, you might be able to keep using your mark, even if the goods and services are the same.

As we’ve said before, trademark rights stem from use in commerce. If you’ve used your mark in your hometown for years and someone else obtains a USPTO registration of your mark because they use it too (on the other side of the country), that doesn’t necessarily mean you have to stop because you used it first.

However, it probably means you can’t expand too far. You might be able to expand to a neighboring city, but your rights to expand nationwide would be much more limited. This is why you should always seek registration when you can!

Third, pick a new mark.

This is sometime easy (for new companies) and sometimes really hard (for old established companies).

If this is an option for you, it is often a simple way to fix the potential confusion that may result from two similar names.

Lastly, get permission!

Although this is not always an option, it might work in your case. We’ve seen it work before.

Look up the owner of the registration in the USPTO database. Do your research. And if you find that confusion is unlikely, you can contact them and ask them to write you a letter (which you might write for them to sign) that says they consent to your registration of your application. You can then submit that electronically along with your application and the USPTO will accept that and allow your mark to be registered (pending other reviews of course).

What Next?

Talk to an attorney!

While an attorney isn’t always necessary in the trademark world, these are tricky issues and you should seek the advice of a trademark attorney before proceeding with these matters. They can help you in many ways.

If you have questions, you can learn more on our website, www.mightymarks.com, and you can contact us if you have specific questions!

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Image: Thinkstock/RomoloTavani
*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 Application Roundup

April 14, 2015 — Leave a comment

Our last post provided a solid recap of trademark law and provided links to various blog posts we’ve written over the last year with respect to trademark law.

This week, we want to do another roundup. This time though we will focus on trademark applications and how to get your mark protected by the United States Patent and Trademark Office!

First, you should always perform a trademark search.

In order to obtain a federal trademark registration you have to certify that you have the right to the mark for which you seek protection. The USPTO will also search its database to see if there are any conflicting marks.

To help, it is always a good idea to perform a trademark search. You can read more about that in this post, How to Perform a Trademark Search, and lean why an attorney can is helpful with searches in this post, The Benefits of Using an Attorney to Conduct a Trademark Search.

Second, sometimes you need a trademark attorney, sometimes you don’t.

Once your search is complete and you are ready to apply, you have a lot of options.

Many times you need an attorney, but other times you don’t. We covered that in our post Do I Need an Attorney to Trademark My Business Name.

If you want to talk with an attorney, we also have tips on How to Find & Hire a Trademark Attorney.

Third, how to file a trademark application.

Now you are ready to file your application.

If you are going it alone, you should check out this post, How to File a Trademark Application Without an Attorney.

You should read that post even if you are using an attorney because it will help you understand the process.

In the process, you’ll have to submit a specimen of use. This provides the USPTO with evidence that you are actually using the mark in commerce. You can learn more about this in our post How to Find a Good Trademark Specimen.

Fourth, what to do if your mark is denied.

Lastly, remember that many applications are denied. You might be denied for failure to submit a good specimen, or perhaps you checked a wrong box. Other common reasons include the descriptive nature of your mark and also possible confusion with other existing registrations.

Regardless, you should read our post What You Should Do if Your Trademark Application is Denied to learn about what to do next.

As we said in our last post, we are excited to continue covering trademark law and offering innovative trademarking services online. If you want to seek trademark protection for your mark, please check out our website, MightyMarks.com to learn more!

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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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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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