Trademark Auditing is More Important than Ever: Trademark Registration Requires a Lot More than Simply Filing with the USPTO

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.

Trademark Rights – Registration Alone Isn’t Enough: Filing a Statement of Use for a 1(b) Application

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.

First Circuit Holds "Duck Tours" is a Generic Trademark

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. 

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."

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.

Register Trademark For a Catchphrase: Protect Your Brands

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. 

"Traverse Legal's attorneys know trademark law and pride themselves on advanced trademark registration techniques which are both cost-effective and budget oriented.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals. "

If you have a trademark issue, or wish to register a trademark, you may contact one of our trademark attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Here is a list of some well-known catch phrases as reported on by Caroline Donnelly here.

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

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

Powered by ScribeFire.

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.

When Can I Use a Competitor's Trademark to Compare My Goods and Services?

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.