Archives For Trademark Law

The best way to perform a trademark search is to use an attorney experienced in trademark law or the services of a search firm. Of course, prior to paying for a professional search, it is advisable to perform a preliminary “knockout” search on your own. Here’s how to get started.

Common Law

First, search “common law” sources such as online search engines, social media, domain names, trade publications, relevant magazines, news websites, phone books, and similar sources. You should search your mark and also similar marks. For example, if your mark is “Two Step Bar and Grill” you should also search for “Too Step/s,” “2 Step/s,” etc. There are thousands of places like this you could search and a professional can provide immense value when searching common law records because they have access to large databases of common law sources.

Business Names

Second, you may want to run state searches. While not nearly as vital as a federal trademark registration, the state trademark databases can be helpful, particularly in the home state of the client. Specifically, each state will have official business name records and many also have their own state level trademark registration databases and also fictitious name registrations. Those sources will usually be found through the Secretary of State’s website. And if you plan to expand to more than one state, then search those additional states also.

The USPTO Database

Lastly, and most importantly, be sure to search the USPTO database. But be forewarned, searching USPTO records can be a daunting task. Many clients think it’s a simple task… it is anything but simple. For example, a basic search for “Delta” reveals almost 2,500 results. But with a few quick tips, we can make it easier to perform this search. Trademark professionals often use sophisticated software to search the USPTO database and compile search reports. For a quick examination on the USPTO database first click on “Trademark Search” on the USPTO Trademark Website.

Once there, you have several options. You can run a “structured” search to find narrow results or a “basic” search to find broader results. To keep things simple, let’s go with a basic search. You can make a few selections on this page. You should usually search for “Plural and Singular” rather than just “Singular” and you might consider searching just “Live” marks. A “Live” mark is a registered mark or a mark currently in the application process. A “Dead” mark is a mark that was refused registration or a mark that was once registered but at some point lost the registration. (extra tip: you shouldn’t ignore dead marks altogether because they can revel interesting facts about prior users, litigation, and sometimes current users that simply lost a registration)

After you’ve run your search you will likely find a list of marks. You should examine the potentially similar marks to see if they are associated with any goods or services similar to your goods and services. If they are, you might have trouble registering your mark. But remember our prior lesson about how similar marks can be registered if they are applied to different goods and services.

You can spend hours in the USPTO database. When you get stuck, contact an expert. And feel free to call on Mighty Marks® if you want assistance with your search.

Image: Thinkstock/triloks

*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 Misfits (the 1970’s and 80’s heavy metal band) are back in the news; but not for their music.

In an interesting squabble and lawsuit, one former band member is claiming rights to a series of very lucrative licensing deals. Musicians everywhere and businesses of all kinds should pay attention to the lessons coming out of this case!

How We Got Here

Glenn Danzig was a founding member of the band in 1977 but eventually split ways from the group.

In 1994, however, Danzig and the new band leader, Jerry Only, settled their differences in a private agreement. Danzig told the media that he gave up rights to the band’s name and skull logo with respect to performances but that he maintained a one-half ownership interest in the name and logo with respect to merchandise. Only publicly acknowledged this agreement years later.

Danzig’s new lawsuit claims that Only secretly re-registered the band’s marks in 2000 and subsequently obtained very profitable merchandising deals without including Danzig. These deals lead to the current dispute and lawsuit.

The Takeaways

While it will take some time for this case to proceed to either a judicial resolution or a settlement among the parties, mark owners should take note of the issues at hand.

First, if the 1994 agreement is valid and states what the members have publicly stated, then Only might be in a tight spot because his re-registration of the marks would have required him to certify to the USPTO that he (or his band) had the exclusive right to use the marks in commerce. If the prior agreement didn’t grant him such exclusive rights, then Danzig can presumably seek to cancel the validity of the current registrations that excluded him. He can then likely seek his cut from the merchandising deals.

Second, businesses must remember that trademarks are related to specific goods or services. In this case, the trademarks for the performance of music were granted to the band. But the trademarks for selling shirts and hats remained split between the band and Danzig. Thus, a business that performs multiple functions (for instance, a restaurant that also sells shirts) would be well advised to obtain rights for all of their various goods and services.

And remember, when seeking rights, a good attorney can be very helpful. Feel free to contact us anytime with trademark questions.

Image Credit: Thinkstock/r_gianluca

*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’ve mentioned previously that names and slogans may not be protected unless they are distinctive and capable of identifying a particular source of the good or service.

The reasoning behind this section of the Trademark Act is simple: if businesses were able to obtain exclusive rights to descriptive or generic terms, then competitors would be unable to describe their goods and services to the market. For instance, if a restaurateur obtained a trademark for “Restaurant” his competitors (the rest of the restaurant business) would be unable to call their restaurants by that name.

A great example found in the United States Patent and Trademark files is the Hot Yoga application.

The “Hot Yoga” Trademark Application

California based Bikram’s Yoga College of India attempted to register the phrase “Hot Yoga” in connection with education services for yoga. Of course, it is obvious that the phrase simply describes the service itself – that is, yoga in a hot room.

Not surprisingly, the USPTO issued an Office Action (an official document issued by the USPTO to explain problems with a trademark application) denying the application because it was descriptive. In quoting from case law, the trademark examiner said that a mark is merely descriptive “if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.”

The examiner explained the reasoning above in the Office Action and concluded that descriptive marks may not be registered because “businesses and competitors [must] have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.”

Arbitrary is Better

As a result of this limitation, many attorneys advise clients to be as arbitrary as possible when naming products and services. The more arbitrary and unconnected a phrase is from a particular good or service, the more likely the USPTO is to grant protection. One problem with this tactic, however, is that arbitrary marks are sometimes not very marketable because they do not describe the product or service and thus are more difficult to attract customers.

In practice, many business owners simply go somewhere in the middle and use a term that is partially arbitrary, but also partially descriptive. These trademarks suggest the good or service to the customer without being overly descriptive. Businesses then take their chances with a trademark application.

Secondary Meaning

One last tip: in some cases a company can obtain trademark protection for descriptive terms. For example, “Sharp” in connection to the sale of televisions. While that mark is descriptive of televisions, the name has obtained enough recognition in the market (a secondary meaning) to overcome the descriptive limitation. But we’ll cover this more in a future post.

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Image Credit: Thinkstock/Anna Berkut

*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 an earlier post we mentioned that actual use in commerce is a prerequisite to obtaining federal trademark protection. But when you spend time and money building a brand before you actually open for business, you’d sure like to get protection up front. The good news is you can do just that with an Intent to Use application.

An ITU application essentially holds your place in line. If you have a bona fide intent to use the mark in commerce then you can file the ITU application. The filing fee is the same as a regular application but there are additional fees as you move forward through the process.

The Timeline

In most cases the USPTO will respond to your application in about three months. If the application is approved, it will move through the opposition process and, if unopposed, you will receive a Notice of Allowance. That notice sets in place your next filing deadline.

Within six months of the issuance of that notice, you must file a Statement of Use (the fee is $100).

If you aren’t actually using the mark before that deadline expires, you can extend the deadline an additional 6 months by requesting an extension and paying $150. And if you need, you can make 4 additional extension requests (each one costing $150).

As a result, an ITU application can hold your place in line for quite a while, but the fees add up over time. And you have to be careful not to miss a deadline; otherwise you might lose your priority to another applicant.

Abandonment of an ITU Application

Each deadline is very important because, if you miss any one of the deadlines, the USPTO will send you a Notice of Abandonment. This means you must either revive the application (if you act quickly and pay additional fees) or you must start all over.

Next Steps

If you have questions about which type of application you should file or if you want assistance with your application, reach out to the Mighty Marks team today to discuss your options!

Image Credit: Thinkstock/digitalgenetics

*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’ve previously explained how trademark rights stem from actual use in commerce. Well, for one small Iowa based company, their early use of the word “Tweet” was enough to beat out tech giant Twitter! The history of this case is a great example of why it is important to seek federal protection as soon as possible.

First Use

Iowa based Twittad, LLC, began using the mark “Let Your Ad Meet Tweets” back in 2008. It quickly filed for federal protection and obtained a registration a year later without any objection from Twitter (or from any other company for that matter).

As a result, Twittad obtained exclusive rights to use that mark as well as any other mark that would be confusingly similar in connection to online advertising. Not surprisingly, Twitter, Inc. became upset about this when it learned about the registration!

The Lawsuit

Unfortunately for Twitter, in order for it to obtain rights to use the word “Tweet”, the corporation had to file a petition seeking to cancel Twittad’s trademark registration.

It filed suit and argued that the word “Tweet” was already a famous Twitter term prior to Twittad’s filing of its trademark application and, further, that Twittad’s registration and use of the word “Tweet” was an unfair attempt “to exploit the popularity and fame of Twitter’s TWEET brand.”

Twitter used this reasoning to claim that Twittad’s registration should be canceled and that Twitter should be deemed the owner of the “Tweet” mark.

First Use Principle

However, Twittad’s registration created a legal presumption that said Twittad was the rightful owner of the mark. As a practical matter, that meant Twitter was forced to either deal with Twittad and settle on terms that might be favorable to Twittad or spend a lot of money and time fighting Twittad in court. Not surprisingly, the parties settled.

The Settlement

Although the specific terms were not disclosed, it is clear that Twitter obtained the rights to the mark and Twittad was granted the right to keep using “Let Your Ad Meet Tweets.” The parties did not disclose whether Twitter paid Twittad, but based on the strength of Twittad’s case, it is likely that some chunk of cash changed hands.

In short, Twittad lost exclusive rights to the word, but it was allowed to keep using the mark and likely pocketed some nice spare change.

The Lesson

Twittad’s registration gave it the upper hand and is a great example of the power of a federal trademark registration. If you have a brand, you should check out MightyMarks.com to learn how you can protect your rights!

Image Credit: Thinkstock/Kristina Heiner

*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.

Business owners should understand what constitutes trademark infringement before they encounter it, regardless if they are the enforcer or alleged infringer. You should also understand common defenses from both sides as well. In this post we will cover the basic elements of an infringement claim and common defenses that might hold up.

Trademark Infringement – Likelihood of Confusion

The most common infringement claim is likelihood of confusion. An infringer commits trademark infringement if they use another party’s trademark to sell goods or provide a service if their use is likely to cause consumer confusion as to the source of the goods or services.

Let’s revisit Evan’s Coffee House, an example we discussed earlier this week. Assuming Evan holds a federal registration for “Evan’s” in connection to the sale of coffee, he will be able to use that registration to prevent others from opening an “Evan’s Coffee House;” but that’s not all.

Evan can likely prevent someone from using “Evan’s” in connection to an eat-in-bakery if the services provided are similar and he may even be able to prevent someone from selling “Evan’s” coffee grounds in a grocery store. Additionally, Evan can prevent alternate spellings such as Even’s, Evan, Even, Evens, and maybe even Heavens coffee from being used to sell coffee if he can show that consumers are likely to be confused as to the source of the goods.

Notice that actual confusion is not required. All that is required is a likelihood of confusion to prove trademark infringement.

So, what happens when Evan sends a cease and desist letter to Evens Coffee House? Several things can happen, most likely of which is the alleged infringer will claim there is no likelihood of confusion or he might raise some other defense.

Trademark Defenses

Alleged infringers will often raise the issue of confusion and claim there is no confusion or likely confusion. When that happens the parties will usually negotiate their various positions and hopefully avoid litigation. Of course, some alleged infringers have affirmative defenses they can raise, specifically descriptive use and nominative use. When these affirmative defenses exist, an alleged infringer might be allowed to use the mark, even without permission.

Descriptive fair use occurs when the alleged infringer uses a trademark in a way that is solely for descriptive purposes and is unlikely to cause consumer confusion. In the case of Evan’s Coffee Shop, another Evan could open up a coffee shop and include in it’s marketing materials the fact that Even Doe is the owner and manager of the shop, provided the materials don’t create the impression that the new shop is related to Evan’s Coffee Shop.

Nominative fair use occurs when the alleged infringer uses a mark and there is no other way to refer to the good or service. For example, a car repair shop may say they repair BMWs, provided they don’t use the mark in a way to indicate they are an official BMW repair shop. This is because there is no other efficient way to alert consumers that they repair BMWs.

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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.

Last week we wrote about What Everybody Ought to Know About Trademark Law and this week we will dive deeper to explain how to obtain and protect your rights. We’ll cover how trademark rights stem from use, why common law rights have geographical limitations, how marks are associated with specific goods or services, why only distinctive marks may be protected, and why trademark registrations are encouraged.

1. Common Law Rights Stem From Use

Generally speaking, you must use your mark in commerce before you may seek protection. As an example, say Evan begins marketing his new coffee shop, Evan’s Coffee Shop, in May and opens for business on July 1. His date of first use is July 1 and he can then begin using the ™ symbol.

2. Geographical Limitations

Common law trademark rights are limited to geographical areas. For example, if Evan’s Coffee Shop is in Chicago, he can prevent other coffee shops in Chicago from using the name “Evan’s” with respect to coffee shops. However, his rights don’t extend to San Francisco because his rights are limited to Chicago and nearby areas where he is likely to expand.

3. Goods or Services Limitations

Trademark rights only extend to specific goods and services. In Evan’s case, the operation of a coffee shop is his service. Thus, if another Evan opens Evan’s Auto Shop in Chicago, our friend Evan couldn’t prevent the auto shop from using the name Evan. But, Evan can stop others from using the name “Evan’s” in connection to other coffee shops and perhaps also in connection to similar businesses like bakeries. A good example is Delta, which could mean faucets or an airline. That dual use is allowed because it is unlikely consumers will think their Delta pilot is actually a faucet salesman.

4. Distinctive Requirement

Marks may not be protected unless they are distinctive and capable of identifying a particular source of the good or service. A mark which is arbitrary or suggestive is likely distinctive and can usually receive protection. However, if a mark is descriptive or generic, protection is harder to obtain.

In Evan’s case, his name in relation to the sale of coffee is arbitrary and, assuming there are no other barriers, he can likely protect “Evan’s” in relation to the sale of coffee. However, “coffee shop” is descriptive and generic and, therefore, he cannot protect that portion of his mark.

5. Registration is Encouraged

We mentioned above that common law rights are limited to specific geographic areas. Luckily for Evan, he can obtain nationwide rights with a federal registration with the United States Patent & Trademark Office (he also has the option to register at the state level). Once registered he can use the ® symbol and he will have nationwide protection and also a legal presumption that he owns the mark.

Register Your Mark!

If you want to register your mark be sure to visit MightyMarks.com to learn how we can help you obtain your registration!

Image: Thinkstock/Silvia Antunes

*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 its core, trademark laws are intended to accomplish two things: (1) prevent consumer confusion; and (2) protect a mark owners’ investment into their goodwill. That sounds simple enough, but there are many nuisances of trademark law that we will cover on this blog in the months to come. But before we get there, we’ll explain more about the purpose behind trademark law, the protection trademark law provides to mark owners, and how it is different from other types of intellectual property.

Purpose of Trademark law

Protecting a name, slogan, or logo can provide immense value to a business, but the real intent of trademark law is actually to protect consumers. Essentially, trademark laws exist to prevent consumers from being duped into buying a product or engaging a service provider that might be trying to profit off the goodwill of other businesses.

For example, when someone buys a BMW they believe they are buying “the ultimate driving machine.” If other car companies were allowed to name their cars BMW, then consumers would be confused as to which car is really the ultimate machine and which car is simply a nice looking car with an old engine under the hood.

To prevent such confusion, trademark laws allow BMW to protect their mark and slogan and prevent other companies from using the BMW name and slogan without BMW’s permission. Of course the scope of that protection is worth discussion as well.

Scope of Protection

The first person or company to use a mark in commerce may claim rights to the mark. If the mark is only used in one state, state protection is available. If the mark is used across state lines, then federal protection is available. In either case, mark owners can rely on both common law (judge made law) and statutory law (laws enacted by legislatures) if the mark owner registers the mark.

Once a mark owner owns the rights to the mark, the owner may then prevent other individuals and companies (including nonprofits) from using the mark in any way that is likely to cause consumer confusion. Note that actual confusion is not required. A finding of likely confusion is sufficient to prevent another from using your protected mark. But, trademark law is unique in that your protection only applies to those goods and services that you sell or provide using your mark. Now that you know trademark basics, don’t make the mistake of claiming *patent* protection of your company name!

Trademark v. Copyright v. Patent

Lastly, everything we’ve discussed above relates to trademark law, which is distinctive of patent and copyright law and, unfortunately, many people (and many lawyers) use these terms interchangeably.

Trademark law protects names, slogans, and other items that serve as a source identifier of a particular good or service. Trademark protection lasts for as long as a mark owner continues to use a mark in commerce. Trademark infringement occurs when someone uses a protected trademark without permission.

Copyright law protects creative works including music, dance choreography, computer code, and other types of works. Copyright protection only lasts for the life of the author plus some additional time period, usually 70 years. Copyright infringement occurs when someone reproduces, distributes, or displays, an identical work or a work that is substantially similar to the protected work.

Patent law protects mainly inventions and processes (but not discoveries). Patent protection usually lasts only 20 years. Patent infringement occurs when someone makes or sells a patented subject matter without authorization.

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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.

Trademark law is confusing, even for lawyers.

But the Mighty Marks® team is kind of obsessive about trademarks; so much so that it is the only legal field in which we practice. And that means we can provide clients and other lawyers and law firms with a unique, attorney-backed, trademark service.

One thing we’ve learned about trademark law and our industry is that this field is confusing to many but interesting to nearly everyone. So to help you we’ve launched the Mighty Marks® Blog!

What to Expect

Each week we will bring you lessons from the world of trademarks including information on filing and protecting marks and also lessons to spot and prevent trademark infringement. Of course, there is a lot of fun in the trademark world so we will also bring you news and trends including why Walmart’s attempt to own the yellow smiley face was denied and how Jay Z and Beyonce are seeking (so far successfully) to protect their daughter’s name, Blue Ivy Carter, using trademark law.

Our goal is to provide helpful and entertaining guidance. In the meantime, we invite you to visit our website at www.mightymarks.com.

Connect With Us!

And be sure to visit our social media channels to stay up to date on the latest news in the trademark industry! 

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