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

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

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

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

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

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

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

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

Third, pick a new mark.

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

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

Lastly, get permission!

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

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

What Next?

Talk to an attorney!

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

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


Image: Thinkstock/RomoloTavani
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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

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

First, you should always perform a trademark search.

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

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

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

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

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

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

Third, how to file a trademark application.

Now you are ready to file your application.

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

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

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

Fourth, what to do if your mark is denied.

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

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

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


*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 been writing about trademark law for a full year now and we’ve covered a lot. To help you better understand the ins and outs of trademark law we want to roundup some of our most practical posts to help you find the information you need to know about how trademarks impact you and your business.

In this post, we’ll cover trademark basics.

Trademark 101

In our post What Everybody Ought to Know About Trademark Law we covered the three things you need to understand first.

First, the purpose of trademark law is to protect consumers. That is, trademarks serve as source identifiers for goods and services and help consumers find the specific goods or services they are seeking.

Second, that trademark rights stem from use in commerce. Technically, a registration is not even required, but a registration does have a number of significant benefits.

And third, a trademark protects names, slogans, and the like. Copyrights and Patents are different. Copyrights usually protect creative works, while Patents usually protect inventions.

Protecting your mark

In our post 5 Keys to Protect Your Trademark we discussed topics you need to learn to fully understand how you can protect your mark. Specifically: (a) that registration is not required, (b) common law protection only extends to the area in which you are using your mark and to your natural zone of expansion, (c) that rights are limited to the goods and services you sell, (d) that you cannot protect a descriptive mark, and (e) registration is strongly encouraged for maximum protection.

Trademark Applications

Speaking of registrations, we’ve covered a lot about how to obtain a registration.

To begin, we’ve covered Why Your Startup Should Apply for a Federal Trademark, and What To Do First: Company Name or Trademark. The benefits to registration include nationwide notice of your claim and ownership of your mark, and also a stronger ability to force infringers to cease their infringement. In the second post mentioned just above we provided guidance on how to reserve your business name with both your state and the USPTO.

What’s the USPTO? Glad you asked. We wrote all about the United States Patent and Trademark Office in this post: What is the USPTO and How Does it Affect My Business?

Trademark Infringement

And lastly, we’ve covered trademark infringement many times on this blog. The starting point to understanding infringement is this post, Justice Explained: Trademark Infringement & Defenses. In that post, we discussed how infringement is judged based on likelihood of consumer confusion. If consumers are confused, then infringement is likely to have occurred.

As we move into our second year of blogging about trademark law and trademark applications, we hope you continue to find our blog useful for your business.

If you have any topics you’d like covered, feel free to contact us to tell us what you’d like us to talk about!


*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.

Fashion and apparel designers are always creating new looks. And many look to trademark laws to protect their designs, but they often fall short of being able to use trademark laws to protect those designs.

In this week’s post we want to explore options for designers to use trademark laws to protect their creative works.

Protection only extends to source identifiers

As we have covered here before, the Trademark Act primarily serves to protect names, logos, and other source identifiers (read more about that here). However, there is also “Trade Dress” protection, which extends to designs, packaging, and the specific appearance of fashion apparel. Of course, as with a trademark, the trade dress must serve as a source identifier in order to receive protection.

A great way to think about these two elements is that tags and brand names are likely protectable as trademarks, while unique aspects of a piece of clothing might be protectable under trade dress.

Fashion apparel must obtain secondary meaning

The important thing to remember here is that under the Trademark Act, trade dress can never be inherently distinctive. Therefore, it can’t serve as a source identifier on its own.

However, a doctrine called “secondary meaning” can still allow designers to gain protection under the Trademark Act. Secondary meaning means that, after some time period of actual use consumers begin to recognize your as a source identifier, your design may be protected under the Trademark Act. The down side is that such consumer recognition can take decades to achieve.

Case in point, the famous shoe designer Christian Louboutin began using bright red soles on the bottom of his shoe designs to identify his company as the designer of the shoes. It wasn’t until 2008, however, that they were able to prove secondary meaning and thus obtain trademark protection. The ability to protect his trade dress was even affirmed by a Federal Court of Appeals.

What to do in the time between use and acquiring secondary meaning

Designers might be left wondering how to protect their trade dress before acquiring secondary meaning. The good news is that other intellectual property protection can help. Most specifically, design patents and work well to secure your rights for certain time periods (usually 14 year) and copyrights may be able to assist with protection of any original works you create.

What to do next

The end result is that designers should consider all options when trying to protect their designs: trademark, trade dress, copyright, and patent rights.

When it comes to the trademark elements, be sure to check out MightyMarks®, a leading online digital trademarking firm with low fixed fees for applications and appeals.


Image: Thinkstock/VvoeVale
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

New businesses, whether  local mom and pop stores or high growth tech startups, have a lot on their plate. One early question is what to call the company and how to go about registering and protecting the business name.

In this post, we will walk through considerations for when and how to pick your business name.

First, do some research.

Your first step is always to do your research. You should search your Secretary of State’s database of registered companies to see if your company name is available in your state. This is because most states will not allow two companies to have the exact same name in their databases.

You should also search whether your domain and social media names are available. This can be a hard one. And further, you should search the USPTO database (more on that here) to see if there are any confusingly similar marks already registered

Second, reserve the name or form your company.

Once you have settled on your business name, it is a good idea to reserve it with your state’s Secretary of State (if they allow reservations). This will give you some time to secure the rights to that name with the USPTO (see below). If you can’t reserve the name, then you might go ahead and form the company if the formation fees are not too high. You can always dissolve it later.

Third, file an Intent to Use Trademark Application.

Assuming you have not started using your business name in commerce, you can file an Intent to Use Application with the USPTO to get approval on your name. You just have to have a bona fide intent to use the name within six months. After three to four months, you should get a response from the USPTO on the availability of your business name. If it is approved, then form your company if you haven’t already done so. Then you can really start turning your idea into a real business!

Wait, I don’t have time to do all of that!

We get it; the above process isn’t always practical. Or maybe you just don’t want to wait.

In that case, you should talk to an attorney to help you in selecting the right business name. Then, with the right guidance, you might proceed with all of those steps at the same time. And if you are already using the name in commerce, you can file a Use Based Trademark Application rather than an ITU as described above.

And if you hit a snag, you can always change your name later, there will just be administrative headaches involved with the changing your name.

This is why it is a good idea to get a knowledgeable trademark attorney to help you in your early days. When looking for a good attorney, be sure to check out how MightyMarks.com can help you!


Image: Thinkstock/nobiggie
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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.