Archives For Trademark Law

It’s no surprise that many business owners want to obtain trademark protection for their name or logo without paying large fees for an attorney to handle the matter. However, as with many areas of the law, a properly qualified attorney can make a world of difference to the business owner if they are trying to protect their brand. In this post we will discuss the pros and cons of engaging a trademark lawyer and show you what you should expect if you do hire a trademark attorney.

Please note that, at least with trademark law, we always advise that you use the services of an attorney. But since we know many people try to go it alone, we want to provide some basic information to help you make decisions. However, you shouldn’t rely on this post as a replacement for an attorney!

Understanding Trademark Law

The first thing to consider is whether you understand how trademark law works. Knowing the difference between common law and federally registered marks, the geographic scope of protection, the first use doctrine, arbitrary v. descriptive marks, and what a court might consider “confusingly similar,” are all important when seeking to protect your mark.

Before paying an application fee, you should consider the strength of your mark, potential infringers, and whether you are infringing the rights of others. Without understanding the above elements, it is hard to really understand your rights.

A trademark attorney’s knowledge and experience is probably the number one reason you should hire an attorney to help with your application.

Trademark Search

Assuming you are past the first consideration above, you should conduct a trademark search. You should start by searching public records such as the USPTO principal registry, Secretary of State records, news papers, magazines, and the internet. However, that process takes a lot of time and knowing where and what to search can be complicated.

An attorney can help you perform a search but there are also third party services that can provide these services for you. Of course, you’d still have to interpret the results, but you can perform and/or order one of these searches without an attorney.

Federal Trademark Application

The online USPTO trademark application is, for the most part, easy to fill out and you can complete most of it on your own. However, there are some questions to which your answers are really important and, while the form might “accept” your answer, when it gets in front of the examiner you may run into some issues.

For example, making sure you choose the proper class and goods/services description and including proper specimens causes hang-ups for a lot of applicants. Further, understanding what prior marks might cause you problems and knowing how and what to disclaim can be confusing.

So, while you can do it on your own, if you make a mistake you won’t learn about it for over three months and even then, it might be too late to correct the mistake.

Federal Trademark Denial & Appeal

The USPTO denies a lot of applications (you can read about how to respond to a denial here). Sometimes you can easily overcome an objection for small things like submitting a better specimen, but sometimes it is more complicated than that. In many cases, an attorney will be almost necessary to draft a proper response.

What You Should Do

If you are trying to skip hiring an attorney due to high fees, you should investigate new, alternative, options. For example, our trademark service is fast and efficient and it won’t break your bank. Most importantly, when you use Mighty Marks® you get the services of an actual attorney, not just a website app.

And if you have any questions about hiring us to help you with your mark, please contact us!


*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 pay attention to labels and product packaging you might begin noticing lots of little icons. Each icon has a legal significance and understanding the differences among them is really important for entrepreneurs and business owners. In this post we will cover the five most common icons found on labels and packaging and explain what they mean and how and when you can use them.

Service Mark (SM) and Trademark (TM)

As we have mentioned multiple times on this blog, once you begin using a name, logo, or slogan in interstate commerce, you can claim common law protection of that brand. Common law protection simply means you can petition a court to enforce your trademark rights, however, it doesn’t mean you have a federally protected trademark.

In connection with these common law trademarks are the SM and TM symbols. TM stands for trademark and SM stands for service mark. This is usually (but not always) an indication that the brand is not yet federally registered. But the owner is still claiming the rights to the name.

® – The “Circle R”

If a mark owner takes the next step and seeks federal registration of a trademark or service mark, they can then begin using the “Circle R” icon, but only after the USPTO actually registers the mark.

If you see a mark using the ® and you want to use a similar mark, you should definitely research the mark in the USPTO database to see if your use would conflict with that prior registration.

© – The “Circle C”

The Circle C (sometimes written out as “Copyright 2014”) is an indication that the creator or owner of that work is claiming copyright protection. Unlike trademark law, the owner of a creative work can use the Circle C icon as soon as they have made an original work of authorship, regardless if they have a copyright registration for the work at question. In fact, the vast majority of works subject to copyright protection are not registered simply because registration is not required to claim copyright (although registration is strongly encouraged).

Pat. Pend. or U.S. Patent No. ###

If an inventor begins selling an invention prior to receiving a patent on the invention he or she will likely list in tiny text Patent Pending (or just Pat. Pend.) on the product to give notice to the world that a patent application is pending with the USPTO. If granted, the inventor can then list “U.S. Patent No.” and then the patent number on the product to provide notice of an actual registration. In fact, the law requires this notice if the inventor wants to seek full damages in a patent infringement lawsuit.

If you are confused as to what icon to use on your labels and packaging, or if you need help securing your trademark rights, then visit MightyMarks.com to learn more!

Image: Thinkstock/Mario Salis

*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.

Many new business owners will create a LLC or Corporation by filing incorporation documents with their Secretary of State or will simply file for a DBA or Fictitious Name and operate as a sole proprietor.

Unfortunately, many of those new entrepreneurs also assume his or her “official state filing” means he or she owns that company name. While sometimes these filings will help establish first use, they don’t necessarily mean that you “own” your company name. Here’s why.

DBAs & Fictitious Names

When an individual hangs her shingle out to do business on her own, she will be required by most states to register her business name with the Secretary of State. Some states call these DBAs, others Fictitious Names, and some actually don’t require such filings at all.

In most states, if someone else has already registered a particular DBA or a company name that is identical to your intended name, then your filing will be rejected and you will have to file for a different name.

This gives off the false impression that such filings create ownership in a name in the state’s registry. Unfortunately, having a registered DBA or Fictitious Name with your state may give you the right to be the only company using that name with the state’s official records, but it doesn’t mean other people can’t also use that name in your state or in other states. You might have some common law or federal trademark rights, but those rights will stem from your use, not your state filing.

Company Names

In a similar situation, you might consider creating a LLC or a Corporation within your state. When you do so, you must create a company name and file articles of organization or articles of incorporation with your Secretary of State.

However, just like above, you can’t create a company using a name that someone else has already registered in your state because the state will only allow one company to use a specific name.

Again, just like above, once you register your unique company name, you might think you can stop others from using it. However, the only thing you can stop is other people from registering the same name in the same state. But other people can still use it in commerce (unless you have common law or federal trademark rights).

Trademarks

The two above examples are registrations you can obtain from your state to use that particular name within a state. However, they don’t create trademark rights in your business name because trademark rights (both common law rights and federal rights) stem from use in commerce.

Unlike the two examples above, you cannot obtain trademark rights simply by filing a document. You actually have to use the mark in commerce. But the benefit of obtaining trademark rights is that you can then, and only then, stop other businesses from using your trademark with respect to your goods or services.

While it is a good idea to obtain state registrations for company names and DBAs, remember your best protection will come from a federal registration with the USPTO. If you need a registration, consider Mighty Marks®, a flat rate online tool to file your trademark application.

Image: Thinkstock/-1001-

*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 file for federal trademark protection with the U.S. Patent and Trademark Office, you must file a Specimen of Use. This is because you may only protect marks that you actually use in commerce (or in some cases marks that you intend to use in the near future). However, the issue of what constitutes an acceptable specimen of use is sometimes confusing. In this post we will help to clarify what you should, and should not, file.

Specimen Defined

The USPTO states that a specimen is “a sample of how you actually use your mark with the goods and/or services identified in your application.” Typically that means the USPTO wants to see how you use the mark in commerce and how a consumer is likely to see your mark on the goods or associated with the services. As you might have picked up, there are different requirements for usage on goods versus usage for services.

Specimens for Goods

When applying for a mark associated with the sale of a particular good, the USPTO will require a specimen attached to the actual goods itself. That means a shirt tag, on the packaging, or sometimes on a promotional stand or window display. Copies of invoices and other marketing materials are usually not sufficient.

The USPTO maintains a large list of acceptable specimens for goods and they include in that list product labels, product packaging, product display signage, and screenshots of websites where the goods may be purchased.

Specimens for Services

Since services are often intangible, the specimen requirements for service mark applications are a little easier to satisfy. Typically the USPTO will require a specimen that shows how the mark is used in the “sale, rendering, or advertising of the services.” The key is to use the mark in close proximity to the services performed.

The USPTO’s list of acceptable specimens for services include advertising materials, brochures, restaurant menus, business cards, and business signs.

Specimen Refusal

If you submit an application with an improper specimen, the USPTO will likely send you an Office Action requiring you to submit a proper specimen. If your application is denied for this basis, it is important that you respond quickly so you don’t lose your application. If you have questions about your specimen you can also call the examiner that denied your application (their phone number will be on the Office Action).

You will then be required to submit a proper specimen that was in actual use on or before the date of your application. If you cannot do this, then your application will not get passed the examiner.

And remember, if you are confused about what constitutes a good trademark specimen, the attorneys at Mighty Marks® are ready to help you through the process.

Image: Thinkstock/darkovujic

*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.

Unfortunately the U.S. Patent and Trademark Office denies a lot of applications. Sometimes the denial is a simple formality, other times it is more challenging. When the office denies an application it will issue an “Office Action” which is simply a rejection letter explaining the office’s reasoning for the denial. In this post we will cover some common reasons for a denial and what you can do to fix them.

Don’t Ignore the Office Action

The first thing to consider is the timing of the rejection. As soon as you receive an Office Action, you should place multiple notes on your calendar. The office will require a response within six months so you should place that date, as well as a couple reminder dates, on your calendar. If you fail to respond on time, you will lose your application.

Deficiencies; Disclaimers; Specimens

Many applications are denied for simple administrative type issues. Luckily, these are usually easy to fix, but not always. One example is a rejection due to confusion over who the applicant is. You should make sure it is clear whether you, or a registered business entity, is the owner/applicant.

Another example is when you’ve included a word that you may not protect. For example, in our example about Evan’s Coffee Shop, the USPTO would likely require the application to disclaim “Coffee Shop” because you can’t protect a descriptive term. However, you could still claim ownership of “Evan.”

Lastly, your specimens might be insufficient. You must submit specimens of use that clearly show the mark as it is connected to you, the source of the good or service. Specimen submissions can be tricky and we will cover that in a later post.

Descriptiveness

Another common reason applications are denied involve the inability to register a mark that is descriptive. When an application is rejected for this reason it can be very difficult to overcome the rejection. You will have to submit a document similar to a legal brief, hopefully including citations to case law, that explains your argument as to why the mark is not descriptive. This can be complex and you should seek legal counsel for these types of rejections.

Likelihood of Confusion

Another complicated rejection is likelihood of confusion with a prior registration. When an examiner reviews your application, he or she will search for prior registrations. If your mark is likely to cause consumer confusion with a prior application, you will get an Office Action.

Again, you will likely need to submit a brief arguing why you believe consumer confusion is not likely. Perhaps the goods and services are sufficiently different, or perhaps the examiner’s conclusion is unreasonable. Regardless, this brief can be complex and this is another type of rejection for which an attorney’s assistance can prove important.

Be Proactive

The good news is many of these issues can be avoided or at least mitigated to some degree with proper due diligence before submitting an application. You should always perform a trademark search before submitting your application and it is often a best practice to seek legal counsel to assist with your application.

That’s where we come in. We’ve filed a lot of applications and would be happy to assist you. Contact us today to learn about your trademark rights!

Image: Thinkstock/Aquir

*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.

Once upon a time if you sold Escalators or Aspirin you had to call your product something else, perhaps a moving staircase or pain reliever. Today, however, anyone in the U.S. can use those words to describe their products because the prior owners lost their rights due to Genericide.

What is Genericide

We’ve discussed the topic of descriptiveness previously and mentioned that descriptive terms are hard to protect (you have to prove a secondary meaning, which can be hard to do). We also mentioned that you can’t protect a generic term because a generic term cannot serve as a source identifier. In a similar way, when a trademark becomes so well known and associated with a type of product or service rather than a specific product or service, the mark owner loses the ability to protect their mark. We call that Genericide.

Escalator and Other Examples

For example, the Otis Elevator Company created the word “Escalator” to describe their moving staircase. The term eventually became so associated with moving staircases that the company lost their ability to protect the term. This has happened with other brands as well such as Aspirin, Murphy Bed, and even Dry Ice (a list of other marks can be found here).

A Current Example – “Google”

A great example for our modern era is Google. Of course “Google” is the name of Google, Inc., the search engine company. But you’ve also probably heard people say “oh, just google it.” What they really mean is “search the Internet” but it is easier to say “google it.” As a result, some people argue that “Google” is now a generic word that means to search the Internet. Of course Goolge, Inc. would say otherwise and it is unlikely a court will rule that “Google” is generic quite yet, but it may happen some day.

How to Prevent Genericide of Your Mark

This might leave you wondering what you should do to protect your mark. Here are a few tips.

First, don’t use your mark as a verb. For example, if you were Google, Inc., you would always say, “use Google® to search the Internet.”

Second, try to use the TM symbol for unregistered marks or the ® symbol for registered marks whenever possible. You don’t have to use them in every single circumstance, but you should use them common enough that readers will realize that your mark is a trademark and not a verb.

Third, you should police your mark. If you find someone infringing your mark or using it in a generic way, be sure to request that person stop the infringement or change the way they are using the mark.

Lastly, be sure to register your mark with the U.S. Patent and Trademark Office. And if you want a trademark attorney to help you without breaking the bank, check out our online trademark service at www.MightyMarks.com!

Image: Thinkstock/shansekala

*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.

The Washington Redskins’ loss of its federal trademark registration was widely reported recently in major news outlets. Unfortunately, many headlines and reporters blurred some legal technicalities and it is interesting to note that the Redskins still have trademark rights. Those rights are just a bit limited now.

Trademark Rights Stem From Use

As we have said many times here, a business acquires trademark rights through actual use of a mark in commerce. A federal registration, while immensely beneficial, is not required to secure such rights.

In fact, once you begin using your mark in commerce you can claim common law trademark rights in that mark and you can use state courts to enforce your rights. Practically, it can be difficult to bring lawsuits in multiple states all at once, but it is possible.

Federal Registration

The purpose of federal registration is to secure your rights nationwide and to obtain a few extra rights (listed in this post). What happened recently is the USPTO decided that the team’s registration (not its trademark) was not eligible for registration because it disparaged Native Americans. Thus, the USPTO did not say the team doesn’t own the trademark, it just said it can’t obtain a federal registration.

You Can’t Register Certain Marks

The Redskins registration was canceled because it disparaged Native Americans. Marks that disparage a significant population or which are otherwise scandalous may not be registered. But that’s not the only limitations.

The USPTO is also not allowed to register any marks that (a) are deceptive and might mislead consumers, (b) consist mostly of the US flag, (c) make use of a living individual’s name without his or her consent, (d) would likely cause consumer confusion, (e) use a geographic description that is false or misleading, or (f) make use of a surname.

What the Redskins Can Do Now

The Redskins are going to appeal the cancelation and may be able to reverse the cancelation. Regardless, even if they ultimately lose, they will likely continuing fighting and seeking individual court victories in which they can stop infringers. They can do this state by state by enforcing their common law trademark rights.

In the long run, however, those difficulties and the litigation expenses may prove too expensive and the team may end up changing its name if it can’t protect it using a federal registration.

If you have questions about whether your mark qualifies for federal trademark protection, be sure to contact Mighty Marks®!

Image: Thinkstock/neilkendall

*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’ve explored the trademark database maintained by the U.S. Patent and Trademark Office you might have seen some marks filed on the “Supplemental Register” rather than the “Principal Register.” While the differences may not seem too great on their face, the rights associated with each registry are quite different.

The Principal Registry

The Principal Registry is a registry of federally protected trademarks. Once registered, a mark owner may:

  1. Begin using (R) on the registered mark;
  2. Obtain greater damages in an infringement action;
  3. Use the registration to seek protection in foreign countries;
  4. Use the registration to prove constructive notice of ownership; and
  5. File for incontestable status after five years.

The Supplemental Registry, on the other hand, doesn’t offer all of those benefits.

The Supplemental Registry

The most common reason a mark ends up on the Supplemental Registry is because it was rejected for the Principal Registry due to a number of reasons such as descriptiveness or use of a surname or geographical term.

Unfortunately, the owners of marks on the Supplemental Registry only receive benefits 1, 2, and 3. Those owners can’t use the registration to show constructive notice and they can’t seek incontestable status. Further, their acceptance of the Supplement Registry implies they know their mark is week due to descriptiveness or another registration hurdle. Thus, the registration might scare away some potential infringers, but it won’t help too much in any infringement litigation.

The key requirements to obtain a Supplemental Registry registration are quite simple: the owner must be using the mark in commerce and it cannot be generic because generic terms don’t have the effect of serving as a source identifier.

What You Should Consider

If your mark isn’t suitable for the Principal Registry, you should consider seeking protection on the Supplemental Registry because even a Supplemental Registry registration can be used to scare off potential infringers. However, it should be remembered that if you are trying to build a brand based on your mark, the Supplemental Registry isn’t a good long-term tool to achieve that goal. Rather, you should begin using a brand/mark that is protectable on the Principal Registry to better protect your rights and the real value of your brand.

If you want to learn more about trademark law, be sure to sign up for Mighty Updates, our monthly email newsletter!

Image: Thinkstock/Vladimirs

*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 search for something on Google you commonly receive a small number of ads in your search results. But, when you search for “World Cup” you will tend to get actual results without ads, plus the famous Google OneBox (the little box at the top of your search results with relevant information). It’s an interesting twist that we will explore below. But first, we’ll explain how keyword advertising and trademark infringement create a new frontier for trademark lawyers.

Keyword Advertising

When you run a search, say for McDonald’s, you’ll get your standard results but also some ads. Those ads are from companies that paid the search engine to display their ads anytime a user searches for a specific keyword. Anyone can buy a keyword, even if that keyword is the name of a competitor.

That raises an interesting legal issue: whether using a keyword protected by a trademark registration constitutes trademark infringement.

Keyword Advertising & Trademark Infringement

While the issue is not fully resolved, most courts have held that keyword advertisers may use protected trademarks in their campaigns, provided they don’t use the protected trademarks in the ad’s copy.

Thus, Burger King could purchase the McDonald’s keyword so that anytime a user searched for McDonald’s, Burger King’s ads would have a chance to appear. According to most courts, that doesn’t constitute trademark infringement. However, if Burger King then used the McDonald’s name in the actual copy, that would be considered infringement.

You might then suspect that a Google search for “World Cup” would result in many ads because that term is so popular. But Google has made some unique decisions with respect to that search.

“World Cup” Search Results

The few court cases that ended in the legal conclusions discussed above are simply the common law. But, Google has its own rules and policies regarding keyword advertising.

It looks like Google is controlling searches for “World Cup” because if you search that term you usually won’t receive ads in return. Rather, you’ll see the Google OneBox (below) with information about the World Cup.

Search Results

You might also notice the official FIFA World Cup trademark in the box, indicating Google is likely receiving payments from FIFA for this. Other Google users are even indicating they have received some ads, but they have been ads for official World Cup sponsors such as Degree deodorant.

It would be interesting to know if FIFA is controlling Google’s keyword searches and offering exclusive Google advertising to its sponsors, but even if such deals exist, we will likely never learn about them.

The Takeaways

First, it is kind of nice to be able to search “World Cup” and not get a bunch of ads.

But second, and more important to you, this is a good lesson in keyword advertising. You may not be able to stop someone from bidding on your protected trademarks as keywords, but if you find ad copy using your marks, you should take action to stop the infringement.

If you are still confused about your rights, be sure to check out MightyMarks.com to learn how we can protect your trademark rights.

Image Credit: Thinkstock/Ig0rZh

*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.

At Mighty Marks®, we like to break down the complexities of trademark law to help you protect your brand. Luckily, sometimes pop culture helps us out and, as illustrated in HBO’s hit series Silicon Valley, trademark law can even provide entertainment.

Richard, the primary founder of the startup featured in the show, spends most of Episode 3 worried about his company’s name: Pied Piper, Inc.

After receiving a check for $200,000 from an investor, Richard learns of the many problems ahead. Specifically, he didn’t own the company name and an irrigation company had federal trademark protection for the name. These are two issues that could have been easily avoided with a little due diligence. Let’s walk through each.

Business Names

First, he should have checked with his state’s Secretary of State to see if the company name was available. Each state maintains records of businesses formed in the state and two entities cannot have the exact same business name on file in the same state. Note this is not a trademark matter, this is a business law matter. Had he searched his state’s records, he would have found Pied Piper, Inc., the irrigation company. He then could have changed the name (even if just slightly) so he could have formed a business entity.

However, poor Richard now has a $200K check payable to “Pied Piper, Inc.” that he can’t cash because he doesn’t have a business entity under that name!

USPTO Registrations

Second, he should have checked the USPTO databases. Just last week we explained how to perform a preliminary “knockout” search including how to search the USPTO database. Had he searched the database, he would have found the irrigation company. He then could have picked a different name or sought federal protection for the name since his use (computer code) is different from the real Pied Piper’s use (irrigation).

But again, poor Richard is in a bind because he is now spending time and money dealing with something he could have prevented with a simple USPTO search.

Remember, when starting a business, just a little due diligence can go a long way. If you enjoy these posts, be sure to subscribe to our monthly newsletter to get more updates in your inbox!