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:

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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.

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Sealtight vs. Sealtite: A Trademark Battle in the Supreme Court

December 9, 2014 — Leave a comment

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

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

Background

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

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

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

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

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

The Supreme Court Hearings

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

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

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

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

What This Means for You

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

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

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

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How to Find & Hire a Trademark Attorney

November 25, 2014 — 2 Comments

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

Referrals

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

Search Online

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

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

Bar Associations

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

Additional Tips

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

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

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

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What is the USPTO and How Does it Affect My Business?

November 11, 2014 — 1 Comment

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

What is the USPTO and What Does it Do?

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

What it Doesn’t Do

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

How It Affects Businesses

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

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

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

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

Working With the USPTO

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

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

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

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How to File a Trademark Application Without an Attorney

October 28, 2014 — 1 Comment

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

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

Prep Work

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

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

How to File

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

TEAS or TEAS Plus

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

Mark Owner

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

The Mark & Goods/Services

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

Filing Basis & Specimens

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

Signature & Submission

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

The Waiting Game

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

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

Need Help?

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

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

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The Lanham Act and What it Means to Your Business

October 14, 2014 — Leave a comment

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

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

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

How it affects your business

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

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

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

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

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

The Lanham Act Continues to Evolve

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

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

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

 

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Up In Smoke – Why Medical Marijuana Names May Not Receive Federal Trademark Protection

October 1, 2014 — Leave a comment

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.

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How to Stop Someone From Infringing Your Trademark

September 16, 2014 — Leave a comment

Protecting your trademark is an important matter and, in many cases protecting your trademark is equally or sometimes more important than protecting other business assets. And, if an individual or organization uses a mark in a manner that is likely to cause confusion with your trademark, then trademark infringement may have occurred.

So, what are your options if an individual or organization has illegally used your trademark?

Start with a letter expressing your concern.

For some, the first course of action is to send a cease and desist letter. This is a good tactic, but it immediately sets an aggressive tone from which it may be difficult to recover. If you start with a letter with an agreeable tone (perhaps even suggesting a trademark license), you may avoid a bumpy road ahead. As a genuine mistake may explain the actions of a party committing a trademark infringement, a simple letter may be all that you need.

Next, make a stronger case with a cease and desist letter.

One common remedy for trademark infringement is an injunction. A cease and desist letter notifies the infringer of the infringement, demands that they end their infringement, and threatens legal action to obtain an injunction and damages. This method is usually preferred over filing a lawsuit immediately because you will expend considerable money and other resources fighting a lawsuit. Hopefully this letter can help you avoid such costs and legal fees.

If still no success: file a lawsuit.

If neither of these remedies worked, you can file a lawsuit in a federal court (assuming you have a federal registration). If you are successful, the court is likely to enforce an injunction on the infringer to prevent them from using the trademark. Further, you can pursue the following damages: (1) any profits made from illegally using a trademark; (2) any financial damages you have suffered as a direct result; and (3) legal fees. The court will assess how much these damages are and whether or not you are entitled to them or other damages.

A trademark infringement can affect not only a company’s product, but also its brand. And while you can protect your mark even if it is not federally registered, your odds of success are greater if you have a registration.

Towards that end, you should call Mighty Marks® to protect your trademark. You can call us anytime at 855-MYT-MARKS.

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Image: Thinkstock/adolf34

*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.

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Why Your Startup Should Apply for a Federal Trademark

September 3, 2014 — 3 Comments

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!

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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.

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Do I Need an Attorney to Trademark my Business Name?

August 19, 2014 — 3 Comments

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!

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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.

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