Archives For trademark

Pinterest Loses Trademark Battle In Court

October 29, 2015 — Leave a comment

A trademark lawsuit beginning in 2013 may finally be at a conclusion, resulting in Pinterest losing some ability to prevent other businesses from using the word “pin” online to save links, images, and other works.

The lessons stemming from this case are helpful to business owners everywhere. Here’s how it went down.

The Parties.

Pintrips operates a website that allows users to save travel items on other websites for later viewing on the Pintrips website. Users do this using a “pin” button that is imbedded on third party websites.

Pinterest, on the other hand, operates the widely popular website allowing users to “pin” creative items into boards on the Pinterest website. Much the same as Pintrips, users do this with a “pin it” button on third party websites.

Pinterest filed suit against Pintrips in 2013.

Pinterest is the owner of multiple Pinterest trademark registrations and at least one Pin trademark registration. As a result, it brought suit against Pintrips in 2013 seeking to prevent Pintrips from using its blue pin button to save travel information on the Pintrips website.

Complicating Pintrips business further, the USPTO denied the company’s trademark application for “pin” pending resolution of the lawsuit.

Pintrips attorneys argued that the words “pin” and “pinning” are simply part of internet terminology. They claimed that saying “pin” was much like saying “trash” in reference to a computer’s trash folder. Further, they argued it would be unreasonable to allow large corporations to “seize control” of commonly used terms that are a part of “everyday culture.”

The court agreed with Pintrips.

In tossing out Pinterest’s lawsuit, the court stated that “no reasonable weighing of the evidence presented at trial could lead to the conclusion that Pintrips used the term pin as a way to identify, distinguish, or indicate the source of its goods or services…. In fact, any attempt to distinguish Pintrips by use of its pin button would be futile, given that the words pin and pinning have been used to describe the same feature by many of the most popular and well-known software and internet products since well before Pintrips’s creation.”

The court also agreed with Pintrips’ argument that “pin” is just part of internet terminology saying that it was similar to early software designers using “real-world metaphors such as folders, files, desktops and bulletin boards to describe new technological functions.”

The lessons for your business.

This case and the loss for Pinterest is a great example you should keep in mind when creating your branding. Rather than trying to use generic terms to describe your features, try to be more original. Use arbitrary terms whenever possible if you really want to ensure you can protect your branding with trademark law. Descriptive terms may be easier to market, but arbitrary terms are easier to protect.

Want to learn more?

You should subscribe to our quarterly newsletter, Mighty Updates, to stay current with trademark news and legal issues.

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Image: Pinterest Logo
*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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Trademark Roundup: Trademark Basics by Mighty Marks

March 31, 2015 — 1 Comment

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!

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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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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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What’s with all those icons on product labels and packaging?

August 5, 2014 — Leave a comment

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

Service Mark (SM) and Trademark (TM)

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

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

® – The “Circle R”

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

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

© – The “Circle C”

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

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

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

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

Image: Thinkstock/Mario Salis

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

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Important Distinctions Between Company Names, DBAs, & Trademarks

July 29, 2014 — Leave a comment

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

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

DBAs & Fictitious Names

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

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

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

Company Names

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

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

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

Trademarks

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

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

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

Image: Thinkstock/-1001-

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

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Have Your Pi and Trademark it Too

June 10, 2014 — Leave a comment

A Brooklyn artist recently upset geeks and t-shirt merchants with a recently approved federal trademark registration on a 3,000-year-old Greek symbol.

In late 2012 Paul Ingrisano applied for a federal trademark registration for the Pi symbol followed by a period in connection to “athletic apparel, namely shirts, pants, jackets, footwear, hat and caps, [and] athletic uniforms.” After correcting some minor errors with the application he successfully obtained a registration for the mark in early 2014.

Within months of obtaining the registration, Ingrisano began enforcing his newly acquired rights. His first big target was Zazzle.com, a website where users can sell goods like shirts and mugs featuring designs created by the users.

In his cease and desist demand letter Ingrisano’s lawyer makes the case that the sale of apparel on Zazzle.com featuring the Pi symbol is likely to confuse consumers as to the source of the goods being sold (the essential element of proving trademark infringement). The letter then goes on to make multiple demands regarding inventory, evidence of sales, and various accountings.

Zazzle’s initial reaction was to remove all potentially infringing materials for fear it might be indirectly liable as the middleman between the creators of the potentially infringing goods and the end consumers. However after receiving complaints from the creators, a Zazzle representative told cnet.com “After reviewing the takedown request more closely, Zazzle has decided to restore the ‘Pi’ products. Zazzle is a marketplace for a community of artists, and we want to continue to support artists who are creating original artwork.”

Zazzle didn’t elaborate further, but several things in the cease and desist letter seemed a bit off. First, the letter requests Zazzle cease and desist all “copyright infringement” when the matter at hand is a trademark. Remember, copyrights tend to protect creative works while trademarks tend to protect names and slogans.

Second, it is unclear if Ingrisano is seeking to prevent others from using the Pi mark or the Pi mark plus a period. The essential question is whether consumers purchasing goods on Zazzle would be confused as to the source of the goods and believe they were coming from Ingrisano when, in fact, they were not. That raises the question as to the importance of the period in the Pi registration – a question that would likely have to be decided by a jury.

This registration and Ingrisano’s attempt to protect the Pi symbol with a period will undoubtedly raise many eyebrows in the coming months and years and we’ll let you know when new developments arise.

Be sure to follow us on Twitter and like us on Facebook to make sure you don’t miss the updates!

Image Credit: 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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Turn It Up To 11 – A Decades Old Trademark Dispute

May 20, 2014 — Leave a comment

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.

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