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If someone thinks you are infringing their trademark, they may send you a cease and desist letter prior to suing you for trademark infringement. Receiving one of these letters can leave you confused and/or mad. However, it is important that you take the letter seriously and carefully consider what to do next because you don’t want to end up in a trademark infringement lawsuit.

Below are four options you have when you receive such a letter.

Option One: Do nothing.

Your first option is the simplest option: do nothing. You can ignore the letter and take the risk of what happens next. Sometimes the other party will just forget about you. More often, they will send you a second or third letter. And if you still don’t respond they may seek more forceful actions against you including filing a lawsuit for trademark infringement against you in federal court.

And even if your actions don’t constitute trademark infringement, the other party can still sue you. Assuming you are not committing infringement, you might be able to win the lawsuit. But being a party to the suit won’t be fun and it can cost you a small fortune.

For that reason, you should always do something when you receive such a letter.

Most often, your best course of action will be to speak to a trademark attorney about whether your actions do or do not constitute trademark infringement. Your trademark attorney can then advise you on possibly taking one of the three routes described below.

Option Two: Negotiate.

If you agree you are committing trademark infringement, then you can try to negotiate your way out. Often times the other party will be friendly with you if you were an innocent infringer. You can ask for time to phase out your use and adopt a new name and you can sign an agreement with the other party to avoid financial damages and subsequent lawsuits.

And in some situations you can negotiate some kind of trademark license agreement or an agreement not to enter the other party’s geographical region.

If you don’t think you are committing trademark infringement, then you can negotiate a settlement or, more likely, respond as outlined below.

Option Three: Respond.

Your attorney can help you draft a proper response. If you are alleging you are not committing trademark infringement, then you need to ensure your response clearly explains why you believe you are not infringing. Citing cases or case law about how your mark is not confusingly similar to the other mark, or showing examples of why the other mark is weak, are ways you can go about arguing your case to the other party. Alternatively, if you have been using your mark longer than the other party, you may allege that as a basis of non-infringement.

And if you are really confident you are right and are concerned the other party will drag the dispute on forever, you can file a lawsuit.

Option Four: File a Lawsuit.

This is an extreme option but it can certainly be beneficial to certain trademark owners. You and your trademark attorney can file a lawsuit to seek a “declaratory judgment” of non-infringement. In short, you are asking a court to compare your mark to the other mark and rule that your use of your mark does not constitute trademark infringement.

What You Should Do

Regardless which route you want to take, you should always seek competent advice from a trademark attorney. He or she can advise you on your rights, your likelihood of success, and more. Without their experience, you may find yourself in more trouble than you need to be in.

If this post is helpful to you, you should check us out on Twitter and Facebook to stay up-to-date on trademark law.


Image: Adobe/Andrey Popov
*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.

Clients often ask how long it takes to get a trademark. Unfortunately, there are a bunch of answers to that question and it is hard to pin down. At a minimum, you will likely spend at least six months going through the USPTO trademark application process, but it is not uncommon to spend more than 12 going through various stages.

In this post, we will look at what the process and timeline looks like for applications based on actual use and also applications based on intent to use.

1(a) – Trademark Application Timeline Based on Actual Use

If you are already using your trademark in commerce, then you can file an application based on actual use.

The first step is to draft the application (most likely online using the USPTO’s online application system). Once the application is filed, the USPTO will take three months checking to make sure all of the basic requirements in the application have been filed and they may take other actions like assigning pseudo marks. The USPTO will then assign the application to an examining attorney who might take up to one month to review your application to see if it should be approved.

If the application is denied, the USPTO will send you an Office Action detailing the reasons for the denial and you will have six months to respond to the Office Action. If you don’t respond, the application is abandoned. If you do respond, then the USPTO will have another couple months to review your objections to its denials. If the USPTO decides not to reverse its original decision, then you have the option to enter into a lengthy formal appeals process that can easily take more than a year.

If the USPTO approves the application, or accepts your appeal to an Office Action, then your mark will be published for opposition. Third parties will be given 30 days to object to your application on various grounds. Assuming there are no objections, you will then receive a registration certificate in the mail about two or three months later.

Click here to view the USPTO’s visual timeline.

1(b) – Trademark Application Timeline Based on Intent to Use

If you are not using your mark in commerce but intend to do so within six months, you can file an Intent to Use Application.

Everything in this process and timeline is identical to the above with one exception. If the application is approved then, prior to publishing the mark for opposition, you must file a Statement of Use. In particular, once the USPTO approves the application, you will receive a Notice of Allowance and be given six months (which may be extended) in which to file your Statement of Use. The USPTO can take up to one month to approve or deny the Statement of Use.

Assuming your Statement of Use meets the USPTO’s requirements, your mark will register and you will receive a registration certificate in the mail about two to three months later.

The USPTO’s visual timeline for this process is similar to the chart referenced above and can be viewed here.

What to do After Registration

If you receive a federal trademark registration from the USPTO, you must file additional documents later. We wrote about those requirements in our post, How to Keep Your Trademark Registration Alive.

Need Help?

OK, so this process and all the various forms and requirements can be confusing.

But we’ve made it easy. For one low fee you can get your application filed and we can even help you with appeals and renewal documents when the time comes. Learn more over at www.mightymarks.com!


Image: Adobe/Silkstock
*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 before on this blog that you can’t protect a descriptive term. In it’s simplest form, that means if you operate a coffee shop called Mighty Coffee Shop, the USPTO might allow you to protect “Mighty” with respect to the sale of coffee, but you couldn’t protect “Coffee Shop” because it is descriptive of the product you sell: coffee.

In this post we will look a bit more at the framework behind descriptive marks and what you can and cannot protect.

In General

The USPTO makes it clear that an examining attorney will “refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” As a result, these phrases shouldn’t even be called a trademark because they are not capable of serving as a source identifier. That is, the consuming public is unlikely to associate the phrase itself with a particular provider of the good or service because the phrase merely describes the good or service. Examples include “Holiday Inn” for a hotel/inn and “Vision Center” for eye and optical services.

Similarly, the USPTO says that “a  mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.”

Secondary Meaning

One exception to the above rule is the doctrine of “secondary meaning.” Under this doctrine, a descriptive term can obtain trademark protection if, after some period of time, consumers begin to recognize your mark as a source identifier. That means that when the public sees that term, they think of your company. That’s fairly hard to achieve.

However, as we described in our post “Can a Fashion Designer Trademark its Apparel?,” it can be done. For example, the famous shoe designer Christian Louboutin obtained protection for his use of bright red soles on the bottom of shoes.

The Supplemental Register

Even though you can’t register a descriptive term on the principal register, you might be able to make use of the supplemental register. Obtaining a registration on the supplemental register simply provides notice to the world that you are using the term in commerce, but it is also an acknowledgement that your mark is weak. We covered this more in this post.

What You Should Do

First, when selecting your business name, don’t use a descriptive term. At a minimum, you should pick a term that is suggestive and, even better, you should pick a name that is arbitrary. Further, you should perform a trademark search to make sure no one else is using your preferred name.

And if you have any questions, feel free to contact us to discuss your ability to protect your name.


Image: Adobe/RTimages
*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.

Medical marijuana is now legal in 20 states and Washington D.C., making it an estimated $1.53 billion industry. In California alone, approximately $105 million is generated a year in sales tax revenue from medical marijuana dispensaries. While this industry has obvious unique characteristics, it shares a common need with almost all others – a need for trademark protection for its products.

Medical Marijuana Trademark Classification

In 2010, the U.S. Patent and Trademark Office created a new trademark classification: “Processed plant matter for medical purposes, namely medical marijuana.”

According to the Wall Street Journal, over 250 marijuana associated trademark applications were submitted within three months of the creation of this new class. However, the office later removed the classification and announced that it never actually granted a trademark for anything associated with marijuana. Further, the USPTO continues to deny registration for the sale of medical marijuana for various reasons.

“Lawful Use”

First, applicants are likely to run into problems with applications because their “use in commerce” is not lawful.

Although the Department of Justice (“DOJ”) allows states to enable the distribution of medical marijuana by not enforcing federal law, the White House continues to stress that “it is important to recognize that state marijuana laws do not change the fact that using marijuana continues to be an offense under Federal law.”

As a result, the USPTO has denied some applications by stating that the use in commerce is not a “lawful use” in commerce. Therefore, Federal protection is unavailable.

“Immoral” and “Scandalous”

Further, the US Trademark Act (the Lanham Act) prohibits the USPTO from granting trademark protection to marks that consist of “immoral” or “scandalous” matter. These terms are subject to debate, but illegal goods will fall under these definitions and therefore, a mark used for the sale of medical marijuana will likely be prohibited from registration (for more about limitations on registrations, you can read this post about the Washington Redskins trademark dilemma, which is similar to this situation).

How to Resolve The Conflict

Although Federal trademark protection remains unavailable, companies in the medical marijuana industry do have some options. First, they should always conduct a trademark search before creating and using a mark so they don’t infringe potential rights of others and also so they can create and use a unique mark for their product. Second, they can seek state protection through state registrations and common law protection. And third, they can seek Federal registration for goods that are related to their core product (marijuana) in an attempt to get some minimal protection over their marks.

In any case, you should subscribe to Mighty Updates, the MightyMarks® email newsletter to keep up to date on trademark law.

Image: Thinkstock/Gordon Swanson

*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.

You’ve picked the perfect name for your new business; you even secured a reasonable domain name. And now you are ready to order business cards and start selling.

But have you thought about protecting your new name? If not, you should. And in this week’s post we will explain why.

Avoid Future Conflicts

The first reason is actually a bit reversed. You should go through the process of applying for a federal trademark so you can try to find prior users of the mark you want to use. A normal application process includes a search of the USPTO database and also a common law trademark search.

All too often new businesses fail to perform these searches and later learn of a prior user. Unfortunately, they often learn about that prior user through the receipt of a cease and desist letter. And when you receive such a letter, you will (at least in many cases) have to adopt a new brand at a great cost.

Stop Infringers

We have explained in the past that you don’t technically need a registration to claim trademark rights in a mark. However, if someone infringes your common law trademark rights, your cease and desist letter is a little less convincing and many infringers will ignore the demand.

The benefit of a registration is that you get a certificate from the USPTO that provides a legal presumption that you are the rightful owner of the mark. Once you have such a certificate, you can enclose a copy with your cease and desist letter to get infringers to end their infringement even faster!

National Protection

One of the biggest reasons to seek a federal trademark is national protection of your mark. When you rely on common law protection you can only claim rights in the geographic are in which you actually use the mark (plus a reasonable expansion area).

However, by obtaining a federal registration, you can stop new businesses from using your mark anywhere in the country. That is obviously a big benefit and with more and more businesses being transacted digitally all over the country, that benefit will come in handy.

Access to Federal Courts & Higher Damages

Lastly, without a federal trademark registration, you cannot file a lawsuit in federal court. If you wait until you find an infringer to file your application, waiting on the application will simply slow down your lawsuit and cause delays. And if you wait too long, the long-term damage of not being able to stop an infringer can be devastating.

Additionally, having a federal registration will give you power to seek larger damages and possibly even attorneys fees against an infringer.

How to Do It

Luckily, obtaining a federal registration doesn’t have to break the bank or be too complicated. You just have to find the right help. That’s where Mighty Marks® comes in. If you want help protecting your new business name, contact Mighty Marks® today!


Image: Thinkstock/Robert Churchill

*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.