Now is the Time to Trademark: Your Business Depends On It

A recent article entitled We’re Running Out of Brands by Jack Trout highlights the importance of branding, and more specifically, a trademark for that brand.  If you don’t believe Jack Trout, you may want to look at the quotes he includes (internal hyperlinks removed):

A booklet from Johnson & Johnson says: "Our company's name and trademarks are by far our most valuable assets."

The former chairman of Quaker Oats says: "If this business were to be split up, I would be glad to take the brands, trademarks and goodwill, and you could have all the bricks and mortar--and I would fare better than you."

A former commissioner of the Patent and Trademark Office said that a trademark is "frequently a more valuable asset of a business than all other assets combined."

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What is a Trademark Worth?

Adidas, registered trademark owner of the three stripes design, has won a trademark infringement lawsuit against Collective Brands Inc., the operator of Payless and Stride Rite shoe stores.  The verdict: $305 million dollars.  While years of marketing, brand protection, and consumer advertising undoubtedly contributed to the strength of the trademark, it all started with the trademark being registered with the USPTO (and in other countries).  You can see an example of the three stripes here.  By investing in its trademarks and other intellectual property, Adidas positioned itself to protect against the unauthorized use of its trademarks, and more importantly pursue those infringers.  The result is monetary damages and a strengthened trademark.  This verdict confirms that a trademark has tremendous value to an organization.  The proper investment should be made in order to ensure you have performed a proper trademark availability search when selecting a trademark, registered your trademark upon selecting it, continuously used the trademark in a proper manner, and taken efforts to protect it by preventing unauthorized use of the trademark.  Contact us today for all matters relating to your trademark.

U.S. Court Orders Online Advertiser to Use “Negative Keywords” Related to Trademark.

In what we believe is one of the first cases of its kind, the U.S. Court has not only found that the use of trademarks in a Google Adword advertising campaign (and other advertising systems), but also required the Defendant to utilize the “negative keyword” system built into Google, as well as “excluded words” in the Yahoo! equivalent.  The issue of whether use of third party trademarks as keywords in online advertising campaigns has been an issue U.S. Courts have struggled with over the last few years.  Some decisions have concluded that the use of trademarks in keywords is appropriate, in that it allows consumers to find alternative goods and services.  Other courts have held that use of trademarks in Google Adword campaigns, for instance, constitute trademark infringement.  These are typically fact specific disputes with varying outcomes.

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Filing an Intent to Use Trademark Application with the USPTO

All too often clients seek to have trademark filed with the USPTO even though they have yet to meet the requirements needed to legally file a trademark application, let alone achieve trademark registration.  More often than not, the applicant has not established a use in commerce for its trademark quite yet and simply hopes to file an Intent to Use trademark application in order to buy time (six months until an Amendment to Allege Use must be filed) during which the applicant can begin to produce the goods, offer the services, or simply prepare the mark.  With priority being so important, it is not out of the realm of possibility that applicants become overly aggressive in their filings.

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IP, Domain Name, and Trademark Protection Starts with Naming Your Company

The Wall Street Journal published an article called, “Name That Firm: What should you call your business?  It’s more important than you think.”  The article stressed how “[t]here’s so much riding on a company’s name,” but noted that companies fail to adhere to basic guidelines for choosing a company name, such as it being unique, easy to remember, and simple to look up.  The article even noted that the inability to register the domain name corresponding to the company name is not detrimental.

While the article is informative, it fails to recognize a few other important considerations when choosing a company name.

1. Trademark searches for the company name are critical.  Your selection of a company name, and subsequent use of it as a brand or trademark, can subject you to liability for trademark infringement should there be a preexisting use of the same or similar mark.  In addition, should there be a preexisting trademark registered with the USPTO, you could face $100,000 damages and be forced to rebrand.  Why not spend the money up front to determine trademark availability?
2. There is a difference between a trademark and a trade name.  While some trade names can also be trademarks (e.g. Nike), a trade name is the company name.  Trademarks, on the other hand, identify origin of and distinguish goods or services from one another.  A trademark is essentially a brand.  A trademark availability search should be coupled with a trade name search (which would include LLC and corporate filings in a state) to determine whether or not the company name is truly available.
3. A domain name corresponding to the company name is ideal.  Type-in navigation continues to be one of the primary, if not the primary, way Internet users access a company online.  A domain name availability search is just as important as a trademark and trade name availability search.  In addition, searching through available domain names is yet another way to name a company.

Ultimately, naming a company is more difficult than people anticipate.  The proper time, attention, and budget must be allotted.  Not only are the catchy, unique factors important, but the legal ramifications of selecting a company name that infringes upon the trademark of another or registering a domain name that results in cybersquatting can be costly.  Consultation with an experienced trademark and domain name attorney, a trademark availability search, a trade name availability search, and a domain name availability search are all necessary in order to ensure a proper company name is chosen.

Trademark Law: "Initial Interest Confusion" Doctrine Applied

Technology & Marketing Law Blog: Adwords Ad Creates Initial Interest Confusion--Storus v. Aroa

Storus Corp. v. Aroa Marketing Inc., No. C-06-2454 (N.D. Cal. Feb. 15, 2008).

(Sorry for my delay blogging this one).

A federal district court has held that displaying a competitor's trademark in Adwords ad copy constitutes impermissible initial interest confusion, leading to a summary judgment win for the trademark owner. This is one of the first competitor-vs.-competitor search advertising cases where the plaintiff has won the trademark claims. This case also has an interesting and rare discussion about the trademark implications of a retailer’s internal search engine.

On the surface, this case looks problematic for the search
advertising industry. Any time a search advertising practice is deemed
infringing, it should promptly eliminate all similar ads from other
advertisers, taking a chunk of revenues out of search engine pockets.
Further, when advertisers are liable for trademark infringement, it
increases the risk that search engines will be contributorily liable
for those infringing ads.

... Aroa’s practices here (displaying a competitor’s trademark in the ad copy) are already restricted by all of the search engine trademark policies. Therefore, this ruling shouldn’t reduce much ad revenue for search engines.

Technorati Tags: trademark, trademarks, trade mark

Trademark Representation for Appeals in the TTAB

An owner must protect its trademark in order to maintain trademark rights, and trademark appeals are an important piece of that trademark protection.  The Trademark Trial and Appeals Board (TTAB) of the USPTO adjudicates the notice of opposition to, petition for cancellation of, and concurrent use requests for trademarks.  Trademark attorneys should perform the following for trademark owners interested in filing an opposition to trademarks pending registration or a cancellation to a registered trademark:

1. Draft the trademark opposition or cancellation
2. Adhere to the recent TTAB rule changes
3. File the opposition or cancellation online with ESTAA, and include the required proof of service while adhering to critical dates
4. Review the status of the matter and important documents using TTABVUE
5. Ensure the required fees are paid to the USPTO ($300 for Notice of opposition; $300 for Petition for cancellation)
6. Select Accelerated Case Resolution (ACR) so as to save time and money for the trademark owner
7. Participate in TTAB Phone Conferencing to accelerate the process and eliminate irrelevant issues
8. Facilitate possible settlement or resolution prior to the administrative hearing before an administrative law judge that decides the matter
9. Draft necessary agreements (e.g. settlement agreement, trademark sale agreement, trademark licensing agreement)
10. Avoid the common mistakes made by parties handling it pro se, or without representation (e.g. fraud, sanctions, improper evidence)

As trademark attorneys, we can handle trademark appeals on a flat fee basis given our intimate understanding of trademark law, TTAB Rules, and TTAB practice. Contact us today to discuss our trademark monitoring, trademark protection, and trademark appeals services.

Trademark Registration with the USPTO: Know the Rules and Avoid Fraud

The USPTO is requiring additional requirements for an applicant filing a trademark with the United States Patent and Trademark Office.  The most recent change to the PTO Rules requires a description of the mark in all filings that are not for a standard character mark.  This means, for example, that if you are filing for a design mark, you will need to describe what the mark consists of, consistent with the design search codes.  Unsuspecting applicant’s may not recognize this rule change, file a trademark as they normally would have, and unnecessarily delay their trademark registration by having to respond to USPTO office actions and amend their trademark application. 

Besides the required attention to the ever-changing rules, applicants who choose not to consult with an attorney or have an attorney file their trademark may be subject to fraud charges. Fraud charges may lead to, among other things, a successful trademark registration being cancelled if challenged by an opposer.  While an applicant can undoubtedly complete the online form for a trademark application, the average applicant may not understand the intricacies of trademark law, let alone understand that she is submitting sworn documents that, once submitted, can not be remedied.  Innocence is no defense, and “I’m sorry” will not cut it.  Trademark attorneys can help an applicant avoid the common pitfalls that may subject the trademark to refusal, opposition, or even cancellation.  While the actual filing a trademark through the TEAS may appear rather simple, the research required to determine the availability of a trademark, the international class within which to file the trademark, and the accompanying rules that determine likelihood of registration of that trademark require the knowledge, education, and expertise of a trademark attorney.  There is no reason to go after what may become your, or your business’s, greatest attest – its intellectual property.  Contact a trademark attorney today.

Trademark Infringement or Harrassment?

The Hershey Co., maker of KISSES and owner of a federally registered trademark for the same with the USPTO, sued another candy manufacturer, Cerreta Candy Co., for trademark infringement.  Hershey claims that Cerreta’s use of “The Sweetest Place in Arizona” infringes upon its “The Sweetest Place on Earth” slogan, also a federally registered trademark with the USPTO.  In addition, Hershey claims Cerreta’s mints have a shape nearly identical to its KISSES.

Hershey’s actions have apparently left a bad taste in Cerreta’s mouth, according to their response:

In a response filed Friday, Cerreta claims Hershey "had no good faith intention of resolving the issues amicably and that it proceeded with this litigation for the purpose of harassment, intimidation and restraint of trade."

While trademark infringement defenses will undoubtedly be offered by Cerreta, this represents an example of a company’s efforts to strike back at what it deems to be an overzealous trademark owner.  A claim for harassment allows Cerreta to go on the offensive and to immediately communicate to the judge, and media, that it believes Hershey’s claims are not only meritless, but also an unnecessary nuisance.  Trademark owners, like Hershey, bringing trademark infringement claims and litigation may be subjected to counterclaims like this more often depending upon the outcome of this case.  Regardless, given a trademark owner’s affirmative duty to protect its trademark or possibly lose its rights, risks of counterclaims may be a necessary ingredient to arrive at the perfectly, sweet result for trademark owners like Hershey – a finding of trademark infringement.

Use of Trademarks in Metatags and Keyword

Technology & Marketing Law Blog: McKenna on Trademark Use in Commerce

As you know, a big issue in online trademark law is the meaning and import of a "trademark use in commerce" requirement. To win its case, a trademark plaintiff must show that the defendant made a use in commerce of the plaintiff's trademark. This sounds simple in theory but, due to bad statutory drafting and deep-seated conflicting policy norms, in practice this element has proven baffling to judges. As a result, courts have deeply split on whether keyword triggering or metatag inclusion qualifies as a trademark use in commerce. This has also sparked a robust academic debate; see, e.g., my previous blog post.

Technorati Tags: keyword, metatag, trademark, commerce

Attorney Threat Letters, Cease & Desist and Notice Letters Alleging Trademark Infringement: Understand Your Options & Risks

Traverse Legal Attorney Brian Hall discusses what you should do when you receive a trademark threat letter.  Listen as he reviews what a trademark threat letter is, why you would get a cease and desist threat letter, why trademark owners send threat letters, and what you should do when you receive a trademark threat letter.  Mr. Hall highlights trademark defenses, such as fair use, and other options you have when you receive a trademark threat letter.

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Trademark a Catchphrase

A catchphrase is an expression usually popularized by continued use by individuals or fictional characters.  A catchphrase, like a word or design, can be  trademarked and entitled to the same protection as such popular trademarks as NIKE and their SWOOSH.  Catchphrases have become yet another valuable trademark for companies and individuals alike.  Here is a list of some well-known catch phrases as reported on by Caroline Donnelly here.

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Protect Your Brand & On-Line Business: Survey says U.S. small businesses are rushing their choice of web address

Most businesses spend too little time analyzing and protecting their on-line presence. Many hastily chose a domain name without a trademark availability search.  When a prior trademark use or registration results in a cease and desist or threat letter, the company is already too invested in the domain and web traffic to simply walk away. Even worse, companies fail to protect their domain names/URLs as valuable property be securing the registrant information as company property from hackers, employees and business partners or registering variations and typos of the domain as a defensive domain registration strategy. Companies need to appreciate the revenue and business being transacted through their web sites and protect their domain, traffic and web presence as the valuable assets they represent.

» U.S. Businesses rush their Choice of Domain Name Domain Name News, The Domain Industry News, ICANN News, Registry News, Domainer News, Domain

U.S. small businesses are rushing their choice of web address, with 42 percent
investing under 1 hour of thought in the decision, according to a
survey released today by 1&1 Internet Inc., the world’s largest web
host by known servers. A survey of 1074 American businesses revealed
that the average business spends less than 12 hours choosing their main
domain name. Some 60 percent of business owners sought no second
opinion before making a selection and over half (57 percent) did not
consider options such as .biz or .net at all.

Andreas Gauger, Chairman of the Board, 1&1 Internet Inc., commented, “The selection of a business’ web address is a crucial decision, businesses should consider all available options before purchasing their primary domain name. As the number of registered domains increases, it’s often the case that the best available domains belong to less obvious suffixes, and it is always advisable to seek external opinion on what a domain could suggest about your business.”

While most U.S. small businesses now recognize the benefits of having a website, the research would suggest few are optimizing their web presence. Some 7 percent of business owners surveyed admit to having forgotten their own domain name.

Gauger added, “Although purchasing a web address should be one of the first steps in launching a business, it is often bought in haste. Every American business must recognize the lasting impact that a domain name can have on sales and image, and business owners shouldn’t delay making necessary changes.”

Technorati Tags: trade mark, brand, marketing, web site

Trademark Classifications: Every Trademark Lawyer Should Advise Against Generic Marks

As if choosing a trademark or service mark is not hard enough, businesses and individuals need to understand that there really is no such thing as a generic trademark. If your mark is generic, you do not have a trademark under law. A trademark attorney should urge his or her clients to select a fanciful, arbitrary, or suggestive trademark, in that order, because these types of trademarks are inherently distinctive and protectable as long as the trademark owner has actually used the trademark. Merely descriptive trademarks are not inherently distinctive, but nonetheless are entitled to protection if they have acquired distinctiveness, or secondary meaning. Generic marks get no trademark protection. See Tumblebus Inc. v. Cranmer, 399 F.3d 754 (6th Cir. 2005).

Below is a guide in order to help you better understand the fine line distinctions between these trademark classifications.

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Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations

Owning a trademark, be it common law rights or a trademark registration, does not necessarily entitle a business or individual to the corresponding domain name.  A domain name registration of another's trademark or incorporating that trademark into a domain name does not always mean a trademark holder can successfully sue a domain name registrant for cybersquatting.  Domain name registration is still on a first come, first served basis.  A domain name registration that is first in time confers rights upon that domain name registrant if you are not a cybersquatter whereby a trademark holder can establish rights that predate the domain name registration. 

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A Trademark Availability Legal Opinion Before Selecting a Brand Name Can Save You Six Figures Later

A simple trademark assessment by a competent lawyer can cost anywhere from $350 to $2,000 depending on the breadth of the search.  That price is pretty cheap compared to the cost of having an injunction issued against you for trademark infringement.  All told, being named as a defendant in a trademark infringement or cybersquatting lawsuit can cost hundreds of thousands of dollars. 

In the case discussed below, Palantir Technologies branded its company in 2005 with a name that easily could have been identified in a trademark availability search.  A good trademark attorney would have discovered both a prior US trademark registration and a Panantir.net's web site.  The common use in a service category which includes databases would have resulted in an attorney opinion that the Palantir name was too high risk.

A Google Search reveals this result for Palantir Technologies.  Palantir Technologies : The future of analysis.  It turns out Palanir forgot to analyze trademark availability or failed to understand the risks associated with brand name selection of a prior use.

Palantir.net began providing Web design, development, and database services nationally under the Palantir name in 1996. It acquired the palantir.net domain name in 1997. Palantir.net incorporated in 2000 and obtained a federal registration for PALANTIR in 2006. It sells to educational and cultural institutions, as well as financial, corporate, and governmental clients.

Palantir Technologies designs database software for the Central Intelligence Agency and a financial services company. It started offering products under PALANTIR in 2005. It is a small company but it purchases the word “palantir” from Google’s AdWords service and outranks Palantir.net in Google search engine results.

Palantir.net moved for a preliminary injunction enjoining Palantir Technologies from using PALANTIR in advertising. In imposing a preliminary injunction, the court required Palantir Technologies to place on all of its Web sites, including its blog, a “prominent disclaimer that advises viewers that it is different from Palantir.net and that advises viewers how to access Palantir.net.” The court also enjoined Palantir Technologies from “engaging in any Internet advertising under the palantir mark, that is, no more Google advertisements.”

The case cite is Palantir Technologies, Inc. v. Palantir.net, Inc., 2008 WL 152339, No. 07-3863 (N.D. Calif. Jan. 15, 2008).

Seattle Trademark Lawyer - Published by Michael Atkins  Palantir.net Gets Preliminary Injunction Against Palantir Technologies

Technorati Tags: brand, marketing, Palantir

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Scrabulous Infringing On Scabble Trademark Held By Mattel?

You know Scrabble. Created in 1933, the classic wordplay board game has been a favorite worldwide for decades. So when Calcutta-based developers Rajat and Jayant Agarwalla created a Scrabble knock-off application called “Scrabulous” for the social networking site Facebook, people started signing up like crazy. As of today, Scrabulous has 600,000 daily users but that’s only a quarter of the number of people who have signed up to play it. Hasbro Inc., which owns the rights to the crossword game in the United States and Canada, and Mattel Inc., which owns the rights elsewhere, believe the online game, developed in India, infringes on their copyrights and trademarks.

You’d think Hasbro & Mattel, who together own the world-wide rights to the game, would see an opportunity here and find a way leverage these social media passionistas to further promote their product. Sadly, they don’t see it that way and have issued a cease and desist order trying to get Facebook to take the game down.

From a legal standpoint, Hasbro / Mattel are well within their rights and in fact, as Shel Israel points out in a response to Matt Dickman’s excellent post on this topic last week, companies must consistently go after intellectual property infringement cases to make future charges stick. Moreover, if the Agarwallas had simply printed a copy of Scrabulous and sold it as a board game, there would be little controversy about whether it constitutes a copyright violation.  Technorati Tags: trademark, copyright, hasbro, mattel

Companies Without Conversation « NextUp 

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Arbitrary / Fanciful & Registered Trademarks Likely To Be Protected By Courts

When branding your company and product, always remember that a strong trademark, one that is arbitrary or fanciful, is more likely to be protected by the courts.  Of course, registering your marks with the USPTO also provides considerable advantages as illustrated in the J&B case analyzed below.

J&B Wholesale Distributing, Inc., a Minnesota corporation, Plaintiff, v. ReduxBeverages, LLC, Redux Inc., Redux, LLC, and James Kirby. Defendants.Civil No. 07-4570, UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA, 2007 U.S. Dist. LEXIS 93586,  (December 20, 2007).

Ownership/Validity of the Trademarks: J&B has submitted documentation that it has obtained federal and state registrations for the marks No Name(R) and No Name Steaks(R). Under the Lanham Act, registration constitutes prima facie evidence of ownership and validity. 15 U.S.C. § 1057(b). Redux does not appear to challenge this element of the infringement  claim. Accordingly, J&B has met its burden of demonstrating that the marks are entitled to protection.

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Top 5 Benefits of Trademark Registration

Traverse Legal Attorney Brian Hall provides an overview of the prerequisites needed to enforce trademark rights and obtain a valid trademark registration with the USPTO. Listen as he reviews the benefits of having a trademark registration, including nationwide priority, easy identification, deterrence, presumptions, and the availability of damages. Ultimately, Mr. Hall illustrates the return on investment for trademark registration while highlighting how trademark law can offer numerous benefits to registered trademark owners.

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Trademark Registration: Do I have To Hire a Lawyer?

Why can’t I simply file the trademark registration myself?  Do I really need a lawyer?

The answer is simple.  Some people do register their trademarks with the USPTO without legal assistance.  However, you need to be aware of the risks associated with filing a trademark with competent lawyer assistance.  While anyone can fill out an on-line trademark form, there is a lot more to trademark registration than filling in the blanks and paying a filing fee. Here are some things to think about.

Is someone else already using the trademark I want to register? An experienced trademark attorney has the database tools and search query skills to let you know whether you should even spend the time and money investing in a trademark. If someone else is or was using the mark in commerce  before you, even if they have not registered their mark with the trademark office, they have superior trademark rights. Moreover, it is very difficult for a layman to determine whether they have a fanciful, arbitrary, suggestive, descriptive or generic trademark.  Such a categorization is critical when determining how much to invest in a particular trademark.  Keep in mind, a trademark is meant to protect a good or service and distinguish it from the marks of others.  Therefore, a weak trademark will give you weak protection.

Should I register a  "standard character" or "stylized or special form" mark? There are different kinds of trademark registrations.  Knowing which kind of trademark to file is one of the most important trademark decisions you will make.

What international class should I register my trademark?  Selecting an international class that accurately reflects the goods or services you are offering is critical.  When more than one class might apply, you need expert advice to make the correct designation.

What risks am I incurring by registering a trademark? Non-lawyers do not typically have the necessary education, experience and training to identify the liabilities that he or she may be exposing themselves if they register a mark without proper due diligence. 

What happens if the examining attorney tells me I need to amend my trademark registration? The examining attorney almost always raises questions and requires amendments. If you get this part wrong, chances are you will not be successful in registering your proposed mark.

What is someone opposes my registration after the examining attorney has published it for opposition? This starts an administrative proceeding akin to arbitration.  Good legal advice at this juncture is critical.

Hiring a trademark specialist can minimize your trademark risk.   While you can file a trademark without a lawyer or hire a service that will provide self-generated forms for you to fill out on your own, the old maxim “you get what you pay for" is as applicable to trademark registration as it is to other purchases. 

An experienced trademark lawyer has the necessary tools to conduct a trademark availability search,  analyze problematic existing trademarks and the likelihood of a successful registration.  The legal value is delivered by the attorney through background research, analysis and recommendations both before and after registration. 

For help in protecting your valuable intellectual property and trademarks as well as protecting yourself from liability for trademark infringement, contact a trademark attorney today. 

The Life of a USPTO Trademark Application

People often ask why it takes so long for a trademark to be registered with the United States Patent and Trademark Office (USPTO). In order to understand the answer to this question, an individual looking to file a trademark must know what happens between the time of filing and the time of achieving registration.  While the USPTO does provide some answers, they do not provide much.  First things first, an individual, or even better a lawyer on behalf of the individual, files the trademark with USPTO.  Sometime thereafter, usually within a month, the new application is entered into the trademark system.  However, once the trademark is entered into the system, the trademark application must wait until an examiner is assigned to it.  The examining attorney is the individual who reviews the trademark filing, requests additional information, and ultimately approves the trademark for registration or denies the trademark for a variety of possible reasons.  So, not only does it take several months to be assigned an examining attorney, but it also may take time for that examining attorney to review the trademark and notify the applicant of next steps. 

These next steps may include the requirement for the applicant to respond to an outgoing office action, provide additional information, or identify reasons as to why the trademark application should not be rejected.  If an outgoing office action is issued, a response is usually due within six months.  Therefore, the earlier you can respond, the more likely it is the earlier you will get a final decision.  Usually there is more than one response required, but as soon as the examining attorney approves the trademark application for publication, which is likely between six and twelve months after the first filing, the rest of the process moves along at a set pace.  The trademark applicant is provided a notice of publication, and within about a month, the trademark is published for opposition. The mark is then published for opposition for 30 days, and may be extended if someone requests to extend the time to oppose.  If an opposition is received, this time period may be extended longer.  Usually, however, within about two months after the time the trademark is published for opposition, the trademark will be registered on the principal register.  All in all, the process usually takes anywhere between ten and eighteen months depending on how many outgoing office actions are necessary, how long it takes to respond to those actions, and whether or not there is an opposition or a request to extend the time to oppose to the trademark.  Therefore, it is critical that you contact an attorney as soon as you can to get the trademark registration process started. 

Leelanau Cellars Loses Case on Appeal

A three judge appellate panel of the sixth circuit court of appeals ruled in favor of Chateau de Leelanau Vineyard and Winery on trademark infringement claims brought by Leelanau Wine Cellars, Ltd.  Leelanau Cellars applied with the United States Patent and Trademark Office (USPTO) for registration of the mark “Leelanau Cellars” on the principal register in 1997 based on first use of 1977.  In 1999, the Defendant began doing business as “Chateau de Leelanau Vineyard and Winery.”

Leelanau Wine Cellars claimed the exclusive use of the word “Leelanau” which is also the geographic region and county where wine is produced and bringing a federal court infringement action against Defendant for its use of Chateau de Leelanau Vineyard and Winery.

Obtain more information here:

• Read Court of Appeal's Decision in Leelanau Wine Cellars v Black & Red.
• Read the Traverse City Record-Eagle article “Leelanau” fair game for labels.

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Trademark Lawyers: Protecting, Registering, Responding

Our lawyers handle a wide variety of intellectual property issues, including the filing and protection of federally law trademarks, drafting and responding to trademark infringement threat letters and drafting infringement letters on behalf of our clients.  We also handle complex trademark infringement litigation under both the Lanham Act, UDRP and the Anticybersquatting Protection Act. If you have a trademark issue, or wish to register a trademark, you may contact an attorney for a free evaluation. 

If you don't protect your intellectual property, who will?

How Strong Is Your Trademark?

The selection of a particular mark that will function as a trademark is very important. This is because the particular mark will be placed on a continuum where the mark will be categorized as fanciful, arbitrary, suggestive, descriptive or generic. The strength of trademark protection varies along the continuum with the greatest protection for fanciful and arbitrary marks, somewhat lesser protection for suggestive marks, even less protection for descriptive marks and finally no protection for generic marks.

Fanciful marks consist of "coined" words or terms that have been invented and do not have a dictionary meaning, such as Kodak, Polaroid or Exxon. Arbitrary marks are those marks that consist of commonplace words, terms or symbols that are used in such a manner that they do not describe the product or service with which they are associated and includes such marks as Black & White for scotch whiskey and Apple for computers. Suggestive marks are familiar words or phrases that are frequently used by publishing and media companies in an inventive way to "suggest" what their product or service really consists of and are the middle ground between arbitrary and descriptive marks; such marks include Nickelodeon for a children's television channel and At A Glance for calendars. Descriptive marks describe the product, service or contents of the product and include such marks as Continuous Progress for educational materials and Personal Finance for a financial investment magazine. Generic marks are names of the product or service itself and these terms cannot function as trademarks; such terms include Aspirin, Consumer Electronics Monthly as a title of a magazine and Pocket Book for paperback books.

Using a Competitor's Trademark

After your company has registered its trademarks and has a product ready for the market, it can be very tempting to boost your product through comparison with the product of a competitor. However, such comparisons must be done carefully in order to ensure that you don't infringe upon the trademark rights of a competitor in the market, who will be all too willing to file suit against you.

In instances where you would like to use the trademark of another party, there is important symbolism standards that must be followed in order to ensure that you are protected from liability. These symbols are intended to recognize and identify the owner of the trademark, keep other parties from distorting the trademarks of others, and distinguish the different companies at play.

For help in protecting yourself from the liability of a trademark infringement, contact an attorney today.

Third-Party Contractors: Obtaining Their Copyrights

While your company has rights over all material created by your employees within your business, a whole new standard is at play when you contract another company to create copyrightable works. For example, if you contract a graphic design company to create a logo for your company, you <strong>only</strong> have the rights to that work if the third-party signs an agreement that gives you those rights.

This agreement is more than the simple receipt that the designers may give you upon the completion of their work. This is because your company does not own the work simply because its creation was paid for by you. Such work is the property of the artist/design company until they sign an agreement giving the copyrights to the person who contracted the work.

This issue of copyright ownership is why it is so important for companies who are planning to contract a third-party to consult an attorney before any deal is made. With the help of an attorney an effective agreement can be drafted that leaves your company free to use the work in any way it pleases. Without such help, it is easy to find your company forced to seek permission or negotiate a license agreement in order to use the work.

Copyrights: Company-Created

Companies that market products to consumers create copyrightable works very frequently. In fact, any "original work of authorship" that is "fixed in a tangible medium" has an ability to be copyrighted.

As you can assume, these kind of works come up very frequently when a company is conducting advertisements. To ensure that these works enjoy the same protection of your trademarks, you should include a copyright notice at the bottom; e.g., "(c) 2007, YourCompany, inc. This however, will have to be filed with the U.S. Copyright Office before sue over any copyright violation.

While a notice is not required to uphold your copyrights, this does serve to make others aware of the nature of the work, and it makes it easier to prove that the third party violation was done intently if you decide to sue.

Trademark Infringement: Litigation or Co-existence

A "cease and desist" letter is always a first step in a case of (or potential) trademark infringement after you have secured the denial of a trademark application. This is because a third party will rarely stop the use of a mark following its denied registration, and simply continue the use of the mark just as before their application.

If you do not receive a favorable response to your letter, it may be time to file a complaint in federal court over this alleged trademark violation.

However, litigation is not always necessary, nor the most accommodating of your business interests. It is always possible to negotiate an agreement with the third party in order to peacefully co-exist. This would be advisable in a case where there is little likelihood of consumer confusion.

In a situation in which an agreement is best suited, it is important to have a drafted agreement that fully protects your company's rights, both under the current circumstances, and any potential future one.
Contact an attorney today to discuss a response to a trademark infringement, or the drafting of a co-existence agreement.

Fighting Trademark Infringements

If it becomes necessary to challenge a third party's use of a mark, the most important legal hurdle to jump is the right to the mark. If you are to stop the use of another party's mark, you have to be able to prove that you have superior rights to the mark. This is to say that the third party started using the mark after your company.

It is also important for a court to realize the confusion that the trademark violation has upon consumers, as a "likelihood of confusion" is necessary to win relief for a trademark infringement. This often means that both the marks and the products or services involved must be sufficiently similar to cause confusion.

However, with the help of an attorney, it is possible to protect your trademark from being infringed upon in the first place. The most effective way to do this is by filing opposition to the registration of another mark with the appropriate trademark office, which, if successful, will have the application denied.

A follow up to achieving the denial of a third party's trademark application is to send them a "cease and desist" letter, which will allow you to confirm that they have stopped using your prior registered trademark.

Monitor the Competition After Receiving Trademark Registration

Finally receiving your certificate of registration is not the end of your trademark or service mark worries. As the trademark owner, you still have work to do to ensure that the effort put into the registration doesn't all go to waste.

The only way to ensure that your trademark is protected is with a vigilant eye out for third party use of your mark by companies who wish to capitalize off of your company's goodwill by adopting a similar, or even the same, mark. Although your own marketing division may be the best ones to watch for potential trademark violations, it is possible to contract attorneys to monitor incoming trademark applications into the USPTO, and work with you to challenge their registrations. These attorneys will be able to alert you to an application for a trademark that is confusingly similar to your own and even challenge the registration all together.

Utilizing Your Trademark

It is important that you utilize your trademark correctly in order to ensure that your customers perceive a distinct and uniform mark. This is important in all internal and external communications, and should be ensured throughout your company.

It is usually very helpful to prepare a style guide to distribute among your company in order to brief everyone about the use of your newly minted mark.

Key principles of the use of your trademark:
1) Follow the mark with a term that describes the product or service
2) Distinguish the mark from other text
3) Use the mark uniformly

By following those three simple rules you can ensure that your trademark is best prepared to become a household name.

Protecting the Trademark-Domain Connection

After your company has selected a trademark, it is imperative to get a hold of the corresponding domain names in the top-level domains. In this way, your consumers can type: "yourbrand.com" into their browser in order to find your product and company.

However, if you type that into your own browser and find that is already in use, you don't have to scrap the trademark all together. If the original domain name is already taken, you can try a different top-level domain, modify your choice of domain name, or attempt to purchase the registration from the original owner.

If you find that a domain name in relation to your trademark was registered in bad-faith by a third party "cyber-squatter", it is possible to have the domain name transferred to you through arbitration. This however, is rarely a legal issue that can be effectively handled by traditional firms, and should be referred to a firm experienced in domain name disputes.

The Trademark-Domain Connection

As soon as your company has selected its new trademark, your company should work to register the respective domain name in at least one of the top-level domains (.com or .info). This is because it will allow your customers to contact your company with nothing more than the trademark that you are marketing.

Registering the domain name can be done through many different registrars, but it is important to find a reputable one, and be fully aware of the rights you hold under the service agreement for that company. There are important questions that must be asked and answered if you intend on maintaining the domain name for as long as your company is around, and to enter into an agreement without knowing your rights to sale and transfer is to seriously inhibit your options in the future.

Contact an attorney today for a free consultation on your rights under the many service agreements for different registrars and enhancing and protecting your trademark on the internet.

International Trademarks

While any brand that is registered in the United States goes through the Patent and Trademark Office, if you plan on selling your product outside of this country, the process can be much more complex. This involves using local counsel in each country in which the product or service will be sold. This process can be expedited through the Community Trademark system for European markets, which is administered by the European Union.

If your company is interested in expanding its trademark protection outside of the US you should consult an attorney with a list of interested jurisdictions, which will allow counsel to provide you with estimated costs and formulate a strategy to accomplish the registrations.

Strong Marks

The strongest trademarks set themselves apart from others and leave the consumer with no doubt of the source of the product or service. These "strong" marks are distinctive enough to differentiate the product from the similar products of competitors, but can also withstand a judge's oversight enough to be widely protected from third party use.

What makes a strong mark?

A strong mark can be usually described as either "arbitrary" or "fanciful". An arbitrary mark consists of common words with little or no relation to the product or service. A fanciful mark is imaginative and coined. For example, the trademark Apple has no relation to the computers that it marks - making it an arbitrary title that consumers associate with a wide amount of products, but a single company. In other words, arbitrary marks are names or elements with significance in certain contexts but no immediate significance with respect to the relevant goods or services.

An example of a fanciful mark could be Xerox which is a word created solely to act as a trademark. These are the strongest types of marks because it is rarely possible for competitors to adopt the same trademark, as it is an invented word.

In addition to arbitrary and fanciful trademarks are "suggestive marks" which while not a strong as the formers, are still generally protectable. Suggestive marks might hint at a quality or character of the product, but do not actually describe the product. An example would be Greyhound a term which alludes to the fast nature of the service provided.

The nature of brands and marks are such that there can be very strong marks, and terribly weak marks. The best way to gauge the nature of your mark is with the aid of legal counsel, because it is with the help of an attorney that you can assess the ability to protect your mark against third party use. With the help of a trademark attorney, you can ensure that your mark is protectable and high in "mark strength".

Narrowing Down to a Final Trademark: Legal Clearance

Selecting trademarks within a company are oftentimes primarily done by the marketing department, but it is essential to have an attorney's input into the process. This way, the attorney can research the trademark registry to foresee conflicts before they arise.

This legal oversight can save your company untold amounts of capital because it is too easy to invest thousands in a marketing campaign that is later found to be for a mark that cannot be protected from use by competitors, or even worse, is already is use by a third party.

When it comes time to selecting a final trademark, the best solution is to contact an attorney and submit a shortlist of possible trademarks for clearance.

Choosing a Trademark

Since a trademark is the method through which consumers will remember and choose your product, the selection of the brand you would like to turn into a trademark is one that should be done carefully. Your selection of a trademark is one of the most important decisions that will be made in a brand's lifetime, and so it should not be a decision made in haste, since it is the first step in building the brand recognition that will drive your product and company.

While many companies try to select a trademark that describes the product or service in some way, shape, or form, the opposite is what should be done. A mark that describes the product is generally a weak one because it is going to fail at distinguishing that product or service from those offered by competitors.

A strong mark is one that is distinctive and sets the product or service apart from others. A mark like this will also eliminate any doubt on the part of the consumer as to the source of the product or service.

Define: Brand

Wikipedia defines a brand as: a name, logo, slogan, and/or design scheme associated with a product or service. Wikipedia also defines a brand as a symbolic embodiment of all the information connected to the product and serves to create associations and expectations around it.

A brand is anything that reminds the recipient of a good or service from a particular source. This "anything" can really be just that. A brand can be any tool of identification, including a jingle, device, symbol, slogan, or even a color combination. These "identifiers" are collectively known as trademarks, and when a company selects one, a brand is born.

It is through trademark and intellectual property law that these identifiers are protected, and when your company is trying to pick its own mark, it is important to ensure that it is protected from competitors or hijackers to the fullest extent of the law.

Brand Name Assets

Brand Assets are oftentimes the most valuable asset owned by a company and each year BusinessWeek, with the help of Interbrand, publish their list of the world's most valuable brands. In 2006, Coca-Cola was the world's most valuable brand with an approximate value of $67 billion. Also high on the list of 2006's most valuable brands were the familiar names of Disney and McDonald's, which were both valued at approximately $27 billion. Rounding out the top ten was Mercedes-Benz, valued at approximately $22 million.

Rather than baulk at the potential price-tag these brands could take, the question that all small-time entrepreneurs should be asking is how one gets a brand to be that valuable.

The truth is that there are so many factors that go into making a brand's value number in the millions. This can include investments in advertisements, the quality of the product or service behind the brand, and countless other factors that mark the company that owns the brand, and the brand itself. And if you want