Radio Interview of Attorney Brian Hall Discussing The Difference Between Federal and State Trademark Registrations

Listen to Traverse Legal, PLC attorney Brian A. Hall talk about the differences between federal trademark registrations with the United States Patent and Trademark Office (USPTO) and state trademark registrations as well as the benefits and drawbacks of both trademark registrations.  Mr. Hall reviews the requirements of trademark registrations at the federal and state levels while reflecting upon what common elements of each.  Ultimately, Mr. Hall provides practical considerations for entities seeking a trademark registration, discusses why to choose a federal trademark registration over a state trademark registration, and expresses when a state trademark registration may be selected.

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Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

Trademark Clearance Search: What Trademark Databases Should I Be Searching?

In today’s global marketplace, it is a virtual certainty that every brand describing a good or service has a trademark issues.  There is essentially a shortage of available words and increased tension between use of those brands in different countries. 

If You Plan to do Business Internationally, You Should File a Community Trade Mark

With the advent of the Internet, most businesses with a website can be doing business internationally.  Any e-commerce site would definitely have the potential, and likelihood, of reaching consumers in foreign countries.  Who truly knows where your product or service may be the most successful.  As such, it the prudent decision is to file for a Community Trade Mark (CTM).  A Community Trade Mark allows a registrant to protect a trademark in all of the countries of the European Union (EU) by filing a single trademark application with one single office, the Office for Harmonization in the Internal Market (OHIM).

What is a Trademark Specimen? You'll need to Know What a Trademark Specimen Is and What the USPTO Requires If You Want to Register Your Trademark

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.”

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.

The Lifecycle of a Trademark Opposition: Understanding the Trademark Opposition Process at the Trademark Trial and Appeal Board (TTAB)

What do you do when you, or preferably your trademark-monitoring attorney, find a application in the United States’ Patent and Trademark Office’s database that is likely to confuse consumers because it is similar to your mark?  One possible solution is to file an opposition.  Every trademark must go through a series of stages on its way to registration, hopefully on the Principal Register.  One of these stages, titled publication for opposition, allows a party to oppose the registration of a trademark that it believes is likely to cause confusion with its mark.

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.

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

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