When registering a trademark with the United States Patent and Trademark Office (USPTO) one must submit a specimen, that is, something showing the use of the mark in commerce. But what qualifies as a specimen? According to the USPTO, a specimen is “an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services.” The USPTO requires a “proper specimen,” which “shows the mark on the actual goods or packaging for the goods.” These proper specimens for goods include “a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods.”
Continue reading "What is a Trademark Specimen?" »
The United States Patent and Trademark Office, like most government offices, survives on the accuracy of its data. Trademark applications and other submissions to the USPTO are expected to be accurate. A simple mistake in the listing of goods and services can be seen as perpetrating a fraud on the USPTO and will completely invalidate an application, even where the other listed goods and services were not affected by the mistake. This makes trademark auditing an extremely important part of any trademark holder's intellectual property protection strategy. Trademark auditing is an evaluation of a company or individual's marks to ensure that those marks remain accurately registered in association with the correct classes of goods or services. Failing to accurately register or monitor your marks can result in losing one of your most valuable assets: the goodwill associated with your trademark.
Continue reading "Trademark Auditing is More Important Than Ever" »
When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.” But not all words qualify as trademarks. A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark. Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.
Continue reading "Trade Name vs. Trademark: TTAB Clarifies the Difference Between Words Used to Describe Products and Services and Those Indicating a Business Name" »
Many businesses and individuals do not know that trademark rights arise not only from registration with the United States Patent and Trademark Office, but from simply use of a trademark in connection with goods or services. These rights, or common law trademark rights as they are known to lawyers, come from the continuous prior use of a mark in commerce. But common law trademark rights are not preferred, as they extend only to the places where a trademark has been used in commerce. Additionally, they do not offer the benefits of federal registration with the United States Patent and Trademark Office, such as the ability to recover profits, statutory damages, attorneys fees, treble (triple) damages for willful infringement, national priority, and the right to use the ® to give notice of rights in a mark.
Continue reading "What Are Common Law Trademark Rights?" »
Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough. It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application. 1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection. A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce. This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party. But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.
Continue reading "Trademark Rights: Registration Alone Isn't Enough" »
Thinking about registering a trademark? Make sure you have a competent attorney doing your pre-registration trademark search and think about selecting a mark that is not widely used. Using a widely used mark will likely welcome other users of the same mark. Showing that generic trademarks can arise from abbreviations, the First Circuit Court of Appeals recently held that the phrase “duck tours,” when used in a composite mark in relation to boat tours, is generic and causes no likelihood of confusion. This decision reversed the district court's holding that the “Super Duck” trademark, in connection with boat tours in the Boston area, created a likelihood of confusion with the plaintiff's “Boston Duck” mark.
Continue reading "First Circuit Holds "Duck Tours" is a Generic Trademark" »
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
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
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.
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.
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.
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.
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.
It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately three weeks after filing, which will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
Current status information may be obtained through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ or by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. Applicants should check on the status of their pending applications every six months.
Remedies for trademark infringement include:
- Preliminary and Permanent Injunction : 15 U.S.C. §1116. Injunctive relief is the preferred remedy in trademark infringement cases. In determining the appropriateness and scope of the injunction, and in balancing the equities of the parties, a court may resolve any doubt in favor of the senior trademark holder.
- Monetary Relief : 15 U.S.C. §1117(a). The court may award plaintiff, subject to the principles of equity, "(1) defendant's profits, (2) damages sustained by the plaintiff and (3) the costs of the action." Harm to the plaintiff, in the form of lost sales and injury to reputation and goodwill is often difficult to prove and quantify. The plaintiff must demonstrate that, but for the defendant's infringing activities, the plaintiff would have made the sales. Also, "in assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount." Id . Damages are to function as compensation to the plaintiff, not a penalty to the defendant.
- Attorneys' Fees : 15 U.S.C. §1117. "The court, in exceptional circumstances may award reasonable attorney fees to the prevailing party." "Exceptional" cases usually involve infringement which is malicious, fraudulent, deliberate or willful.
- Enhanced damages for use of counterfeit marks : 15 U.S.C. §1117(b). A counterfeit mark is one which is substantially indistinguishable from a registered mark. "[U]nless the court finds extenuating circumstances," the court shall award the plaintiff treble damages.
- Destruction of infringing articles : 15 U.S.C. §1118. "[T]he court may order that all [infringing] labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant . . . be delivered up and destroyed."
Filing a trademark registration application with the Patent and Trademark Office (PTO) can be a daunting process for the average person. A good trademark attorney can handle that process typically for a small flat fee.
The Process for Filing Trademarks:
1. What qualifies a trademark for federal registration? A trademark must be used to identify the products or services that you offer or sell to your customers, at least some of who are located in other states, territories or countries.
2. What disqualifies a trademark mark for federal registration? There are numerous reasons why a mark may not be accepted by the USPTO. For instance, the following examples illustrate some issues which would disqualify a mark from registration: a proposed trademark lacks distinctiveness; a proposed trademark is too generic, as in "cellular" or "aspirin"; proposed trademark is close enough to an existing registered mark to make customer confusion likely; proposed trademark consists of lengthy written matter; proposed trademark is a slogan that is merely informational or laudatory, such as "Proudly made in the USA"; proposed trademark is a governmental emblem; proposed trademark is primarily a surname; or is deceptive, scandalous or disparaging.
3. What if I have not used my mark yet? If You Haven't Yet Used Your Trademark Commercially, your mark might still be capable of registration. However there is a slightly different process for registration and protection of that name, mark or brand. You will file an "intent-to-use" application since you haven't yet used your trademark in commerce. You will still need to provide a drawing or image of the mark.
4. What happens after I file my trademark? You will be contacted by the assigned examiner. Be prepared to respond timely to the trademark examiner's questions and concerns. This is the point where a qualified attorney can provide value. Failure to file proper and timely responses to the trademark examiner's questions can result in the unintentional abandonment of the application. Internal consistency is very important when filing a trademark application. If you don't portray the trademark exactly the same way every time you describe or illustrate it, you'll have a rough time getting your application approved.
There is lot that goes on from the filing of the application to its ultimate registration of rejection. The process includes the examination of the application by a USPTO attorney (the trademark examiner), written correspondence between the USPTO and the applicant, subsequent negotiations, and the filing of legal documents or written arguments to advance the application to actual registration. The entire process, from filing to actual registration, usually takes a year or more.
If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.
If the mark is published based upon the applicant's bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose. The applicant then has six (6) months from the date of the NOTICE OF ALLOWANCE to either:
- use the mark in commerce and submit a STATEMENT OF USE; or
- request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE.
Both forms are available here. If the STATEMENT OF USE is filed and approved, the USPTO will issue the registration certificate. You should contact an attorney if you have question with this process.
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.
The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.
This is a point where another person/entity may contact you alleging that you are violating their mark. They may even send a threat letter telling you to withdraw your applicaiton. A lawyer can help you with questions or concerns about this stage of the trademark process. Contact a law firm if you are threatened with a law suit at this stage.
Yes. In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:
- primarily merely descriptive or deceptively misdescriptive of the goods/services;
- primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
- primarily merely a surname; or
- ornamental.
This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at here, for a complete discussion of the grounds for refusal of registration of a mark.
Yes. You should search the USPTO records before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search on-line or by visiting the USPTO Trademark Public Search Library at 2900 Crystal Drive, 2nd Floor, Arlington, Virginia. The library is open between 8:00 a.m. – 5:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Library are free.
Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See PTDL for a listing of their locations, or http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html. Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO cannot assist you in selecting a search firm.
You can check the status of any pending application or registration through the Trademark Application and Registration Retrieval (TARR) database, available on-line at http://tarr.uspto.gov, or by calling the Trademark Status Line at (703) 305-8747.
Yes. After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. We do not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce its rights in the mark based on ownership of a federal registration.
Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
- constructive notice to the public of the registrant's claim of ownership of the mark;
- a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- the ability to bring an action concerning the mark in federal court;
- the use of the U.S registration as a basis to obtain registration in foreign countries; and
- the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.
Do Trademarks, Copyrights and Patents protect the same things?
No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention.
You or your attorney can process your trademark application from anywhere, even Traverse City, Michigan!
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