If you answer NO to any of the following three questions, your trademark business knowledge is not up to par. Did you know that if you don’t clear your trademark properly it can become a serious liability? Did you know that if you choose a descriptive trademark, it may be very weak and difficult to enforce? And did you also know that if you select a strong trademark and clear it properly it can become a very valuable business asset? Let’s get into the meat and potatoes of these concepts... 1. Failure to Properly Search and Clear your Trademark Can Lead to Serious Liability: How can a trademark become a serious liability? If you use a trademark that is likely to cause confusion with another party’s prior registered or prior-established common law trademark, they can sue you for infringement. At...
Read MoreThe USPTO has established ex parte expungement and reexamination proceedings for cancellation of a registration, in whole or in part, when the required use in commerce of the registered mark has not been made. This is big news, because it creates an entirely new option for trademark applicants whose applications for registration have been refused under Section 2(d), (likelihood of confusion) with a prior registered mark. As an attorney practicing before the USPTO for over twenty years, I have often been confronted with the situation where my client’s trademark application was refused on grounds of likelihood of confusion with a prior trademark that was registered for a very extensive listing of goods. Upon review, it sometimes appeared that the registered mark was only being used in connection with a few of the many goods for which it was registered, and...
Read MoreIf you know early on that you intend to expand into foreign markets, it is wise to try to secure your rights in those markets as early as possible. One way to do this is to file an application for International Registration under the Madrid Protocol, an international trademark registration regime administered by the World Intellectual Property Organization. Again, to be prudent, you would want to conduct trademark searches in those countries where you seek to obtain trademark rights before commencing use of the trademark in those markets. Nike ran into an issue as it grew and expanded into Italy. A cobbler in Italy had already been using the trademark “swoosh” for many years prior to Nike’s creation. Because trademarks are a form of property, rights in many jurisdictions are determined by priority– which party was the first to use...
Read MoreFamous trademarks enjoy a broad scope of legal protection because they are more likely to be associated and remembered in the public's mind, also known as brand awareness. Start-ups and entrepreneurs do not have same level of legal protection as giants with famous brands. But it’s not all smooth sailing for those famous brands either. World-famous brands like Nike, for example, are constantly engaged in legal efforts to protect their brand. The more renowned a company is the more likely that someone out there will try and capitalize (free-ride) off of it. Famous brands often need to file lawsuits against people piggy-backing on their trademark. The reason being is that if others can successfully capitalize on the famous brand without legal ramification, they could greatly harm the business by destroying the value of the good will that has been developed...
Read MoreEverybody these days has a web site. If your business does not have a website, people will question whether you have a business at all. But what you display on your website could lead to problems if you’re not very careful. This post concerns the use of images on your website, and, while the law is unsettled, it’s as treacherous as a minefield. In fact, the terrain is so hazardous that you may even be liable for merely embedding a tweet on your web site. Information for Trademark Clients We advise clients regarding how to use their trademarks on their web site so as to comport with trademark law. The issues discussed below fall under the rubric of copyright law. But these copyright issues affect trademark owners, because websites will often include both trademarks and copyrighted material, or at least...
Read MoreYou Can’t get a Federally Registered Trademark for Weed With so many states making marijuana legal, cannabis entrepreneurs, like any other businesspersons, may want to protect their good will and brand identity by obtaining the protection of federal trademark registration. For the moment, alas, they are out of luck. In order to qualify for federal trademark registration, the trademark must be used on the goods identified in the trademark application in interstate commerce. The Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce. In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. Weed May Be Legal In Your State Although pot, Mary Jane, marijuana, or whatever moniker you prefer, may be legal under the laws of various states, it is still absolutely illegal under federal law pursuant to the Controlled Substances Act...
Read MoreMore than just a trademark- A reflection of your Company Selecting a trademark is often difficult. Your trademark needs to convey the appropriate image for your company and what you are selling. It should have a positive connotation that makes consumers feel good. It must not have any undiagnosed negative connotations, such as an unfavorable meaning in a foreign language understood by the target consumers. Ideally it should not be descriptive of your company or your products or services. Finally, it needs to be available – that is, not confusingly similar to another party’s trademark for related goods or services. So, in a nutshell, you need to put some serious thought and time into the selection of your trademark. Suppose you are in the business of selling snack foods, your target consumer demographic is young urban dwellers, and your new...
Read MoreHow they are handled and what happens if you don’t fight for your trademark? Nobody wants to get involved in litigation. It is expensive, stressful, time consuming and the outcome is always uncertain. Nonetheless, litigation is one of the risks that comes with trademark use. If you use a trademark that is confusingly similar to another party’s prior existing trademark, they might sue you for trademark infringement. Additionally, if another party adopts and begins using a trademark that is confusingly similar to your trademark, you may be forced to litigate against them in order to safeguard your rights. A trademark is a form of property, and like any other form of property there are costs involved in the upkeep of the property. For trademarks, these costs include monitoring and enforcement. Monitoring is the ongoing surveillance of the market and trademark...
Read MoreEntrepreneurs see a need in society and develop a solution to fulfil that need. The rewards can be great, both to the society and the entrepreneur. But in order for those rewards to be realized the people who can benefit from the entrepreneur’s innovation need to be made aware of it. Once they are aware of it, they need to know how to access it, whether it is a product or a service. Before they can access it, they need to remember it, especially what it is called. This is one of the most important functions of a trademark: as a way for the consumers of your product or service to store the information they will need to purchase your offering and to continue to repeatedly purchase your offerings in the future. Your trademark (also referred to below as TM)...
Read MoreOn January 2, 2021, the fees for various types of trademark (also referred to as TM) filings are being increased by the United States Patent and Trademark Office. Notably, the TEAS standard filing fee is increasing from $275 to $350, and the TEAS PLUS fee is increasing from $225 to $250. Other fees, such as the fee for the Declaration of Continued Use, are increasing as well. In the grand scheme of things, this should not be a big concern to applicants. A trademark is a valuable piece of intellectual property, that if properly maintained can increase in value as time goes by. The small additional expenses necessitated by these increased USPTO filing fees are not something that any serious entrepreneur or established business owner would consider an impediment to federal registration of their trademarks. In the United States, we...
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