Archives For Trademark Law

Whether you have an existing trademark or are contemplating seeking protection for a mark you intend to use, you may be wondering why it matters and where is the value in a trademark. Well, as various surveys have shown, the value of a brand (which is not the exact same thing as a trademark but it is very close) can be quite high. For example, Google, Apple, and IBM all have brands valued over $100 Billion. Billon, with a “B”!

So, on a more practical level, we want to cover a few items in this post regarding the potential value of your trademark. Keep in mind that the value of your trademark can be linked directly to your goodwill, that is, what power does your mark have in the market to cause individuals to associate your mark with a specific good or service.

Method One – Value Based on Earnings

You can value your trademark by looking at your earnings power. You can look at your company’s past and expected profits as well as at the royalty rates at which you license your mark to other companies. You might also consider the price which you paid to create the mark and the associated goodwill (which is an expense you likely paid over many years while growing your brand).

Method Two – Based on Market Capitalization

Another method, at least for publicly traded companies, is based on the market capitalization of the company. Simply take the number of issued and outstanding shares, multiply that by the market price, and then subtract the company’s liabilities. The resulting number can be attributed to the company’s trademark because investors see the company as worth more than just it’s physical assets and cash flow. That difference can be attributed to the company’s trademark.

Can You Sell Your Mark?

First, you can license (on an exclusive or non-exclusive basis) your trademark to other companies to use your mark on their goods and services. However, you must also maintain some control over the quality of those goods and services or you may lose your rights in the mark.

Second, you can sell your trademark along with your company’s other assets. Essentially, if you are selling your entire company and its assets, you can transfer the name provided you also transfer the associated goodwill.

A Word of Caution

Keep in mind; if you can’t protect your trademark, the value immediately decreases. If other companies can freely use your mark, then there is no reason for them to license or buy the mark from you, and there is no reason for the public to associate your mark solely with your goods and services.

That’s Why a Federal Registration is So Important

The best way to protect your mark is by obtaining a registration with the United States Patent and Trademark Office, or the USPTO for short. The process can take many months but it isn’t overly expensive, if you know where to find help.

At MightyMarks®, that’s all we do – trademark law. We even have a low flat fee filing process to help you save time and to increase the odds of your application being approved.

To learn more, visit us at http://www.mightymarks.com.


Image: Thinkstock/NikWaller
*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.

Conducting a good trademark search prior to filing an application is a critical first step that many businesspersons overlook. In a previous post (How to Perform a Trademark Search) we walked readers through various sources they may want to search including common law sources, business name databases, and the USPTO records.

While you can do it on your own, there are a number of advantages to seeking the help of a trademark attorney. In this post we will explore some of those benefits.

Common Law Searches Reveal A Lot of Marks

While the USPTO maintains a very large database of registered trademarks, those are not the only ones you should research. This is because trademark rights stem from first use in commerce, not registration. As a result, you should always conduct a common law trademark search to see what marks are being used in commerce already.

A trademark attorney will know where and how to conduct this kind of a search. You should be looking online, in newspapers, magazines, and other sources. Additionally, a trademark lawyer is uniquely qualified to examine each potential mark to see who uses it, where they use it, when they first started using it, and whether their use is in connection to any similar goods or services you seek to provide. They can then weigh in on whether you have good rights or not.

Business Name Records Can Be Misleading

A trademark attorney can also search state business name records. Sometimes a registration for a business name or fictitious name can cause conflict and may prevent you from having strong rights. However, an experienced trademark attorney can look at additional details regarding these files to see if the name is still in use, if it has been terminated, as well as whether the use constitutes use in interstate commerce.

USPTO Records Are Complex

Lastly, a trademark lawyer can perform an exhaustive search of the USPTO database. Most basic searches will reveal many results and an attorney can help to narrow your search to look for marks that might be confusingly similar and in the same international class as your mark. Her or she can also use judgment in deciding what other searches must be ran, such as design code searches and searches for similar or misspelled words.

Then What?

After conducting these thorough searches your trademark attorney can advise you on the odds of obtaining a registration. While it is often difficult to put odds in writing, a trademark lawyer can offer good guidance on when you should not file an application due to a likely denial.

That can save you a ton of money!

If you want help searching for existing marks or filing a trademark application with the USPTO, be sure to check out MightyMarks.com. Our online platform, coupled with years of trademark experience, make us uniquely qualified to help businesses protect their trademarks.


Image: Thinkstock/Woodkern
*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.

Sneaker manufacturers are slugging it out in court. At issue is whether a company can claim the exclusive right to produce sneakers with distinctive designs. First, Converse Shoes sued 31 companies for creating knockoffs of its All Star sneakers. Then New Balance jumped into the ring and sued Converse, claiming that the trademark was invalid.

Converse Claims Trademark Infringement

In October 2014, Converse sued 31 companies in 22 separate lawsuits, claiming they infringed Converse’s trademarks by copying core elements of the design of its famous Chuck Taylor All Star basketball sneakers. Among the companies sued were giants such as Walmart and Kmart. Converse also filed a complaint with the International Trade Commission, hoping to prevent knockoffs made overseas from entering the country.

The popular footwear, known to generations of teenagers as “Chucks,” has a distinctive shape and black-and-white design with a white rubber toe cap. Although originally designed for playing basketball, they have become fashion statements that convey an aura of coolness and have appeared in iconic movies such as “Grease” and “Rocky.” Chucks have been made since the 1920s, saw an explosion of popularity in the 1950s and 60s, and had a new surge of popularity after Nike bought Converse in 2003 and ramped up efforts to promote and distribute the All Stars.

The more popular the sneakers became, the more their design was imitated. The result was Converse’s vigorous attempt to protect its brand.

New Balance Fights Back

New Balance makes a sneaker under its PF Flyers brand that looks similar to the Converse All Star. Even though New Balance was not one of the 31 companies that Converse had sued, New Balance decided to take proactive action to try to prevent Converse from adding it in the future to the list of companies in its lawsuits or in its Trade Commission claim.

In late December, New Balance sued Converse, claiming that Converse’s trademark should be canceled. New Balance’s rationale was that Converse’s trademark describes features that are common to many shoes, and that the All Stars and the PF Flyers are different enough that consumers wouldn’t be confused.

Walmart and Kmart Fight Back Too

Walmart, Kmart, Sketchers, Ralph Lauren Corp, and many of the other companies that Converse sued have been hiring Intellectual Property lawyers and gearing up for the suit, which is expected to become a major news story when it gets underway later this year.

When Can Fashion Design Elements Be Legally Protected?

These cases raise questions about what trademarks mean in the world of fashion and whether the manufacturers of fashion products can claim exclusive rights to elements of their designs. Converse, according to some experts, may have an uphill battle.

Showing that a design element is popular is not enough to claim infringement. Even showing that the design is different and distinctive is not enough. Instead, in order for similar designs to be infringing, consumers must associate the design element with its original manufacturer. In addition, manufacturers are not allowed to legally protect design elements that are functional.

These two requirements will make it difficult for Converse to prevail, observers say. Many people will be avidly watching the lawsuits to see how they turn out.

Don’t Miss Out

Find this interesting? We do too. Subscribe to Mighty Updates, our quarterly email newsletter to stay up to date on trademark law.


Image: Thinkstock/kosobu
*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.

If you own a small business or are planning on establishing one, you need to pay close attention to protecting your chosen business name and associated brand while at the same time making sure you do not infringe on established trademarks of other businesses. Of course, many small business owners don’t think about trademark law until it is too late.

Thus, in this weeks post we want to provide a brief overview of what you need to know!

The Basics

Trademarks are a form of intellectual property that can consist of one word, a phrase, photos, logos sounds or other identifying marks that distinguish one particular brand from another similar one.

For example, everyone associates big yellow arches with the famous hamburger seller, McDonald’s. A man named Donald could not open a business using yellow arches to sell sandwiches without infringing on McDonald’s trademark, the big yellow arches.

There a few steps you should take that will both protect your own trademark while at the same time keep you from infringing the trademark of another business.

  1. Choose a business name. But, before opening the doors for business, you should do an extensive trademark search to make sure that the chosen name is not already being used by another similar business. There are companies that provide this service that will search all available state and federal data bases. Read more about trademark searches in our post, How to Perform a Trademark Search.
  2. If a similar business is found using the same or similar chosen name, you might consider choosing another name to avoid a dispute.
  3. If no conflicts are discovered, register the chosen name as a trademark with the USPTO (more on that here). You should also seriously consider hiring a knowledgeable trademark attorney for this process. It will avoid snafus that may be costly and time-consuming.

That is how you can go about choosing and protecting your name. Trademark litigation is a whole other beast!

Trademark Infringement

Always keep in mind that if you use another company’s trademark in commerce in such a way as to cause consumer confusion, you can be sued for trademark infringement. Defending such a suit can be costly and you should always strive to avoid this unfortunate situation by conducting a trademark search as outlined above.

On the other side of the coin, you should make sure to police your trademark whenever possible. This is because if you allow other businesses to use your trademark without objection, you may lose your right to sue. If you come across an infringer, or if you encounter any consumer confusion, you should immediately speak to an attorney to learn more about your rights.

Help on the Internet

Luckily, in today’s connected world, there are many online resources you can use to protect your rights and help you avoid infringing the rights of others.

One resource is MightyMarks®, our virtual trademark application process. If you have questions about protecting your mark, we recommend you reach out to us to discuss how we can help you!


Image: Thinkstock/StudioM1
*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.

Trademark Licenses 101

December 23, 2014 — Leave a comment

Once you have a trademark for your business there are a number of ways to make it work for you. One of these ways is to license your trademark to other people who want to use it in association with your company or your products. These people – the licensees – would then develop, manufacture, and market products with your company’s trademark with your permission. That would make your company the licensor.

In order to grant a trademark license, the following has to be identified:

  • The trademark itself
  • The licensee(s) and the licensor
  • The types of goods or services that may be offered with the trademark
  • What specific rights are licensed, including the territory approved under the license
  • The quality of the goods or services that may be delivered to customers
  • The length of the license term

Why Trademark Licenses Matter

Trademark licenses are vitally important to companies that are trying to defend their trademark products or services. Since the trademark is a representation of the owner’s reputation, it is something on which many consumers rely when they are making their product and service choices. If a company licenses your trademark and then puts out shoddy products, that affects what customers think of your company.

It could cost you sales, and adversely affect your bottom line. Thus, you should take your licenses very seriously.

Why Quality Matters so Much – A Legal Perspective

Some countries are very particular about what the treatment of a trademark means. According to the International Trademark Association (INTA), in the United States a trademark may be deemed abandoned if the licensor (your company) does not maintain enough control over the quality of the products or services being offered by the licensee. That means you could lose your trademark if you let companies license it and then put bad products or services into the marketplace under that trademark. That kind of problem is something from which many companies never recover.

Other Issues Addressed in Trademark Licenses

There are also other items commonly addressed trademark licenses. These include how long the license is good for (the term), the exclusivity, and the royalty.

The term is important and so are the termination rights. For example, you might set up an automatic annual renewal with termination rights in your favor. Whether you grant exclusivity is another important issue because it can restrict your ability to license your mark to other companies. Before you decide how to offer your trademark to the licensee, consider whether you want to license it to others, use it yourself, or both. If you grant a sole license to a licensee, he or she is the only person or company who may use that license. Lastly, you should cover the royalty or license fee and spell out the terms as clearly as possible in the agreement.

More Information

Trademark licenses are best drafted by attorneys. But before you request help with a license you should make sure you fully understand the basics of trademark law. For that reason, we recommend you check out these other trademark law blog posts:


*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.

As you may recall from other posts on this blog, trademark laws grant a trademark owner the exclusive right to use their registered mark in commerce with respect to specific goods or services. Those rights extend not only to other people or companies using their exact registered mark, but also to uses of marks that are “confusingly similar” to the registered mark. The USPTO uses this rule to deny marks that, although spelled differently, are pronounced the same.

However, due to rulings in the Federal Courts (which are separate from the USPTO), the Supreme Court has decided to weigh in on this issue via the Sealtight Case.

Background

B&B Hardware sells self-sealing, leak-proof screws and bolts for use in high-tech industries such as the aerospace and medical industries, under the name Sealtight. B&B obtained a registration for this mark in 1993.

Hargis Industries, on the other hand, sells construction screws for buildings under the name Sealtite Building Fasteners.

When Hargis applied for a federal trademark for Sealtite in the late 90’s, B&B objected arguing the use of Sealtite would cause consumer confusion between the two companies and their product lines. The USPTO Trademark Trial & Appeal Board (“TTAB”) agreed with B&B and denied the registration by Hargis.

However, Hargis has argued that its’ products are different from those sold by Sealtight and that Hargis’ customers are a different class of customers. Hargis has even won two jury verdicts in U.S. Federal Courts on this point. One judge even found that B&B attempted to manufacture evidence to bolster it’s trademark infringement claims.

With a split between the Federal Courts and the TTAB, the U.S. Supreme Court agreed to hear the case and decide who should have the final say on this matter.

The Supreme Court Hearings

The Justices heard an hour long oral argument last week on the issue.

Justice Sotomayor said that it only makes sense that the USPTO proceedings should be given some weight in Federal Court cases otherwise the agency’s powers would be rendered “almost irrelevant.” And the Obama administration argued in favor of B&B by claiming that the Federal Courts should defer to the USPTO on such matters.

However, Justice Ginsburg (along with some other Justices) showed some signs of agreement with Hagis. For example, Ginsburg made statements that implied that the USPTO proceedings might not have controlling effect in Federal Courts because the stakes in such cases are much higher than the stakes at the TTAB level.

As a result, it is not clear how the court will rule on this matter. The one thing we do know is that a decision is likely to be announced in June.

What This Means for You

The outcome of this case will almost certainly impact future trademark disputes. And the most important thing for you to take away from this current dispute is the importance of using appropriate guidance and assistance when dealing with trademark matters.

If you want to keep up with trademark law and learn how Federal registration can benefit your business, be sure to subscribe to Mighty Updates, the MightyMarks® email newsletter!


Image: Thinkstock/Willard
*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.

When you need a trademark attorney there are plenty of places to look. And whether you find your attorney through the Yellow Pages or word of mouth, there are things you can do to ensure you find a quality person or firm to represent you.

Referrals

To find the right trademark attorney to represent you, a referral is one of the most reliable ways to locate the professional who will represent you and help you achieve a happy result from your trademark application. A referral from a friend or coworker is one of the most reliable ways to find an attorney. It is also possible to call a business owner and find out who they used for their trademark services.

Search Online

You should also search the Internet for potential attorneys and other online trademark tools. For instance, new startups have sprung up in recent years (like us, for example) that provide trademark application services through the Internet.

And, obviously, you can learn a lot about an attorney through his or her website. Be sure that the attorney you hire really does practice trademark law and doesn’t just list it as one of many practices in which they work. If they list it as a practice, but don’t discuss trademarks elsewhere on their site, then they might be a bad choice.

Bar Associations

Another way to get a reliable referral is to call a lawyer referral service which is usually associated with the local State Bar Association. This kind of service can help link potential clients with the attorneys who practice a particular kind of law.

Additional Tips

Before hiring an attorney, it is best to find out all you can about them, and if possible, to meet them in person. When you meet or speak with the lawyer, also find out if they plan to handle your case personally, or if they plan to farm it out to a subordinate. Lastly, be sure to discuss the fees the application will entail, if they will have an hourly fee, a fixed fee, or some other method for handling the case, and find out if there will be other fees associated, such as filing fees and similar expenses.

If you are seeking help with your trademark application, you should check out our innovative and flat fee services at MightyMarks.com!


Image: Thinkstock/wowomnom
*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.

We refer to the USPTO a lot on this blog. Technically it is known as the United Stated Patent and Trademark Office but it is often shortened to the Trademark Office or just USPTO. In this week’s post we want to provide more information on the office, what it does (and doesn’t do), and how it plays an important part for your business.

What is the USPTO and What Does it Do?

The USPTO is a federal agency under the U.S. Department of Commerce with more than 10,000 employees. Unlike most federal agencies, the USPTO is self-funded, paying for its expenses through the fees it collects on applications. Although the agency serves many functions including advising the President and other departments on intellectual property matters, its two primary functions are the registration of patents and trademarks.

What it Doesn’t Do

The USPTO will not give you legal advice on the ability to trademark your business name or logo and it also does not have any involvement with obtaining copyright protection for your creative works (the Copyright Office is tasked with managing our country’s copyright database and it is a part of the Library of Congress).

How It Affects Businesses

If you are an inventor or have some other patentable technology or business methods then the office may grant you the exclusive right to make use of and license those items for a limited time (normally 20 years). But as this is a trademark blog, we will focus on the trademark division of the USPTO.

The USPTO maintains a searchable database that contains trademark applications and registered marks (including denied applications and expired registrations). This database can be immensely valuable to your business because it can shed light on other businesses that might be using a name prior to your use. It can also offer information on what marks have been denied protection (for example, because they were descriptive) which can help you in picking the right, protectable, name for your business.

The USPTO also provides registration certificates for approved applications. If your application is approved and makes its way through the opposition process, you will obtain a certificate of registration that you can use to prevent trademark infringement. Although it doesn’t always work, providing proof of your registration with the USPTO will often help you reach a settlement with infringers prior to filing a lawsuit.

The USPTO also handles certain disputes such as opposition proceedings to oppose the registration of a mark. Once an application is approved, it is published for opposition for any individual or company to oppose registration. If you object to the registration, a trial-like proceeding is started during which you can submit your arguments.

Working With the USPTO

With respect to trademarks, anyone (including non-lawyers) can work directly with the USPTO to apply for a trademark and file various renewal documents. However, trademark law itself is often confusing, even to many lawyers!

For that reason, it is often a best practice to use the services of a trademark lawyer to assist you with your application. If you want to learn more about how we help clients obtain trademark registrations, read more about Mighty Marks® here.


Image: uspto.gov
*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.

We recently wrote about whether you need an attorney to file a trademark application and we said that, while there are many reasons to use an attorney, some businesses decide to go it alone. This week we want to offer a streamlined walkthrough of how to file your own application. We will cover the most important parts of an application here, but note that there are many more options that you might consider when filing out the application.

*And like in our other post, we want to emphasize that is is almost always a good practice to use an attorney to file your trademark application. You shouldn’t rely on this post as a replacement for an attorney!

Prep Work

Before even starting the application, you should conduct a trademark search to make sure you have the proper rights to obtain a registration in the first place. For this, we recommend our post “How to Perform a Trademark Search.”

You will also need to find in which International Class your goods or services will belong and also one or more suitable descriptions of your goods or services. The IC list is available here and the previously approved descriptions are available here. While you are not required to use a previously approved description, doing so can reduce the cost of your application and also increase the likelihood of an approval in the first attempt.

How to File

When you arrive at uspto.gov, navigate to the application labeled “Trademark/Servicemark Application, Principal Register.”

TEAS or TEAS Plus

If you are ok with digital communications, paying the fee up front, and using a pre-approved description, then you can save $50 by using the TEAS Plus application. If not, you must select the regular TEAS application. We will assume you choose the Plus application since that is most commonly used.

Mark Owner

The next substantial information you will enter is information on the owner of the mark. Note that if you have a business entity, odds are the entity should be the listed owner, not you as an individual. Also keep in mind that this information will be publicly available after you submit the application, which may impact the information you provide.

The Mark & Goods/Services

Next up is information about the mark itself and the goods/services you provide. You can insert an image if you are applying for a design mark, or you can just type in the mark if you are applying for a word mark. You can search for a pre-approved description at this step and once found, insert it into the application. If you choose a description with a fill-in-the-blank option, you need to complete the description at this step also.

Filing Basis & Specimens

If you are already using the mark in commerce, then you can now select Section 1(a) as your filing basis. If not, you can choose Section 1(b) to indicate that you intend to use the mark within 6 months of the application’s approval. Assuming you selected 1(a), you must now submit a specimen of use. If you need help finding the right specimen of use, see our post “How to Find a Good Trademark Specimen.” You will also need to describe the specimen and provide information on when the mark was first used “anywhere” and when it was first used “in commerce.”

Signature & Submission

After assigning the filing basis and clicking continue, you can then pay the fee and sign your application. Follow the signature instructions exactly, or it won’t let you proceed.

The Waiting Game

Next up is the waiting game. You will likely have to wait about three months before getting a response from the USPTO. In the meantime, you may receive some official communications from the USPTO further describing your mark or asking for clarifications. You will also likely receive unofficial communications from third parties seeking to help you along in the process. Remember to pay attention to the sender of these communications. If they are from the USPTO, then they are official. Anyone else, and they are likely advertisements from third parties.

If your application is denied, be sure to check out our post “What You Should Do If Your Trademark Application Is Denied.”

Need Help?

While some people prefer to file on their own, many more seek the advice and assistance of a licensed attorney to help them through the process. If you would like assistance, check out our application package which only costs $495 at mightymarks.com.


Image: Thinkstock/LiudmylaSupynska
*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 1946, Congress passed a trademark act called the Lanham Act (it was sponsored by representative Fritz G. Lanham). Initially it was put into place to simply eliminate a business’s intent to deceive under false pretenses. Today, however, it has grown further to not only cover false advertising and trademarks, but also “words, terms, names, symbols, or devices, and any false designation of origin, false or misleading description of fact, or false or misleading representation of fact.”

Once a business protects their mark using a federal registration (learn more about federal registration here), it can then seek to prohibit others from infringing on its rights and may even be able to seek financial remedies for financial losses. Generally, such rights and remedies will follow a third party’s use of the company’s trademark if such use causes consumer confusion or if the company attempts to establish a false affiliation with the business.

Since its original passing, it has been amended several times, especially in 1984 by the Trademark Counterfeiting Act. This act made the punishment of false advertising and trademark infringements even stronger, adding treble damages which would triple the amount of monies received if a court awarded an injured party the profits made by the party who deceived consumers or businesses.

How it affects your business

The two biggest affects of the Lanham Act on your business are (a) that it provides protection for your trademarks, and (b) that it prohibits your business from using the trademark of another.

As you may recall, you can register for federal trademark protection for your trademarks under the Lanham Act. Your mark cannot be descriptive of the goods or services that you provide and you must be the first person using the mark in interstate commerce to be eligible to receive a registration.

Once registered, you can then use the provisions of the Lanham Act to prohibit infringers from causing consumer confusion by using a similar mark.

On the other side, before creating the branding and name for your business, it would be wise to consider the Lanham Act, specifically what marks already exist.

First, you should search the trademark database at uspto.gov. Second, you may consider hiring a professional search firm to scour common law resources such as newspapers, the Internet, and other places where you might discover a prior user of a name you desire. You can learn more about trademark searches and how to perform one here.

The Lanham Act Continues to Evolve

The courts continue to balance the application of the Lanham Act with new technologies. For example, cybersquatting, or the act of using a domain name with the intent of selling it to a third party to thwart sales, is now a legal issue and considered to be false advertising.

Nearly seventy years later, the Lanham Act continues to protect businesses and their unique assets. Be sure to stay informed on how this important legislation continues to evolve by subscribing to Mighty Updates, the MightyMarks® email newsletter to keep up to date on trademark law.


Image: Thinkstock/sborisov
*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.