Basics: Do I need a patent, trademark or
copyright?
If
you have an idea for how to manufacture a device or solve a
problem, you probably should look to patent law (See the
PATENT FAQS), which protects ideas. If you have a
creative endeavor (a screenplay, a novel, a work of art),
you are probably in need of a copyright, which law protects
expressions of ideas and original works of authorship
when those original works are reduced to a “tangible medium
of expression” (i.e., paper, recorded tape, sculpture,
canvas, digital medium, etc.). If you have written a
computer program, you may have overlapping protections under
patent and copyright law. On the
other hand, if you have a catchy business name, brand name,
product name or logo, then you probably need to consider
trademark law, which is the subject of this FAQ subsection.
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What is a trademark?
A trademark is any word, name, symbol or logo used in
commerce to identify and distinguish the goods of one
manufacturer or seller from those of another. A trademark
identifies the source of a particular good. Rolex® would be
an example of a trademark for a watch.
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What is a servicemark?
A servicemark is also a trademark, but instead of
identifying the source of goods, a service mark identifies
the source of a provider of services. For example Hilton® is
a service mark for hotel services and Ruth Chris® would be
an example of a service mark for restaurant services.
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Do I really need a federal registration? Why
should I file to register my trademark federally?
Yes, you should file a trademark for any marks or logos you
use with your business. Initially, having a federal
registration on your logos is a cornerstone for brand
protection and recognition among the consuming public. The
advent of the Internet and today’s global economy make
trademark consideration more important than ever. Even
small businesses should consider trademarks now because
simply having an Internet presence could place the business
in the stream of international commerce. The process of
searching and trademarking logos is a good way to identify
and pre-empt larger problems of infringement that may
surface later. Also, having a trademark registration is a
way to constructively prove your ownership of the trademark,
it can ensure federal jurisdiction to enforce your rights
against those who would “palm off” of your reputation, and
it affords you the protection of the U.S. Customs Service
against infringing or counterfeit goods. Also, the U.S.
registration can serve as a powerful basis for obtaining
registration in foreign countries; it can serve as a basis
for generating revenues through licensing; and add
quantifiable value to your overall business. Ask Mercedes®,
GAP®, Harley-Davidson® or Starbucks®
about the value of a federal trademark registration.
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Should I file a State trademark registration?
A
state trademark is never a bad idea, particularly since they
are relatively inexpensive, but they do not establish
“constructive use” of a trademark nationally as do federal
trademark registrations. State trademarks should be used to
supplement federal trademarks, which are more powerful.
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How long does it take to register a trademark?
A
trademark application that proceeds without any
complications whatsoever may occur within a year, but it is
not unusual for a trademark registration to take more than a
year and less than two years. If an opposition proceeding
or arguments on the merits complicate the application,
longer periods of time might not be unusual. The process
can generally be expedited when a trademark attorney
familiar with the process and the objections that might
otherwise complicate the application assists the client.
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How long does a
trademark last?
A
trademark can potentially last indefinitely. The Coca Cola®
trademark has been in use and registered since the late 19th
Century! To maintain a trademark, however, the owner must
file certain paperwork with the Trademark Office. Namely,
between the fifth and sixth year following registration, an
owner must file a “Section 8 Affidavit” to prove continued
use of a mark. A Section 8 Affidavit must again be filed
within the year before the end of every ten-year period
after the date of registration. The registrant can file the
affidavit inside a grace period of six months after the end
of the sixth or tenth year, by paying an additional fee.
Additionally, the registrant must also file a Section 9
renewal application within the year before the expiration
date of the term (10 year terms). Provided the Section 8
Use Affidavits and Section 9 Renewals are filed at regular
intervals, the trademark can last forever.
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Do I have any protection if I do not register
my trademark? What are "common law" rights?
Applicants who have not registered a trademark, but who have
actually used the marks continuously in commerce may have
what are known as “common law” rights under federal law and
under state laws that protect such uses. It is possible to
enforce common law rights, but the rights to enforcement of
those rights and damage remedies can be significantly
restricted. Under common law usage, there will not be any
presumption of nationwide constructive use of the mark and
there is no ability to “reserve” rights to future use of a
name. A trademark litigant under common law will face
significant additional burdens in proving the scope of use
and damages, which may geographically limited.
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What is trade dress?
“Trade dress” refers to a concept closely related to
trademark law, but instead of protecting a name or logo,
trade dress refers to the overall look and appearance of a
product. Trade dress essentially protects a product’s
image, which can encompass colors, shapes, textures,
ornamental, and “nonfunctional” features of a product. A
primary basis for trade dress protection is found under
43(a) of the Lanham Act, codified at 15 U.S.C. § 1125.
Registration and enforcement of a trade dress is possible,
but can be complicated because an applicant or litigant may
encounter enhanced burdens of proving “distinctiveness” of
the product through “secondary meaning” by consumers.
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What role does a trademark or servicemark
have in franchising?
Franchising is an important way of doing business that
frequently involves licensing of trademarks, servicemarks,
logos, copyrights and trade secrets. A “Franchisor” will
typically license intellectual properties, including
trademarks, to a “Franchisee” in exchange for substantial
control of a business and continuing royalties for such
use. The Franchisee will benefit from brand identification
(such as McDonalds® or Subway®) and
goodwill among the consuming public. Franchises are an
important way that business owners can use trademarks, but
franchises are also heavily regulated by taxing authorities,
the Federal Trade Commission and State authorities.
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What protection do I have with an assumed name, or D/B/A?
Not much. This is a common question and many small business
owners are shocked to learn that their assumed name, which
is usually registered at the county or state level, does not
provide the same protections as a trademark registration.
More shocking is when a business owner receives a cease and
desist letter and is accused of trademark infringement by
using a registered assumed name. An assumed name certificate
does not necessarily mean that a name or logo is being used
as a trademark. An assumed name is technically just an
alternate name for a business or person. It may just be a
“trade name” rather than a trademark. There is certainly
utility in registering assumed names, and there may be some
overlap trademark usage, but it would be a mistake to stop
with an assumed name, which is no substitute for a trademark
registration.
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Do I need a trademark search before I register a trademark?
Before I use a trademark?
Conducting a trademark search is a really good idea. A good
trademark search can eliminate or at least help to avoid an
expensive trademark infringement headache later. If a
business chooses a name without any form of search, it
unnecessarily risks that it will be required to change its
name, logos, packaging, signage, domain names later—or
worse, to defend a trademark infringement lawsuit. Prior to
filing a trademark application, a search can avoid
rejections with other similar marks and the need for costly
legal arguments in the Patent Office. People who might
oppose a trademark registration may be inclined to file
“opposition” proceedings that can significantly increase the
cost of or jeopardize obtaining a trademark registration.
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What is an "opposition proceeding"?
After a trademark application has been allowed and enters
the publication phase of the registration process, anyone in
the general public is given the opportunity to register a
complaint in the form of an opposition proceeding about why
a mark should not register. Oppositions are usually filed by
competitors, or by persons who have a similar interest in an
allegedly similar use of a particular proposed mark.
Opposition proceedings are governed by specific procedures
in the Trademark Manual of Examining Procedure (TMEP), and
proceed in quasi-litigation fashion to explore the basis of
the opposition. An opposition proceeding closely resembles a
“cancellation” proceeding, which is procedure used by
persons wanting to cancel a trademark that has been
registered—outside of the federal court. It is not uncommon
that parties in opposition proceedings will wind up as
trademark infringements in federal court. It is important to
have a trademark attorney assist you with any opposition
proceedings. Your product and business names are at stake.
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Is it necessary for a lawyer to conduct a
trademark search?
It is not
absolutely necessary, but it is a very good idea to have an
experienced trademark lawyer conduct a search or review
professional search results. There are a lot of
non-attorney firms that purport to conduct a search,
however, it is the legal analysis of the search
results that you pay for, and which allows a business owner
to make an informed decision about choice of a mark or
decision to develop a brand. Only an attorney familiar with
the nuances of trademark registration and trademark
registration can give you this type if insight. If you are
willing to stake brand planning around search results
performed by a clerk, who may or may not have any legal
training, a $35 search might suffice. But, you may just get
the advice you pay for.
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Should I file to register my trademark
before I start doing business? What is an "intent to
use" trademark application?
Maybe. If you have not started using a brand name, but have
one in mind, it may be beneficial to reserve the name by
filing an “intent to use” application. As indicated by the
name, the “intent to use” application starts the trademark
process rolling before you actually use the mark. The
Trademark Office will evaluate the mark and if it is
entitled to registration, will issue a “Notice of Allowance”
conditioned on proof by the applicant that the trademark has
been used in commerce. The normal timeframe to file a
“statement of use” is within six months of issuance of a
notice of allowance, but extensions of time can be purchased
on a month-by-month basis.
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If I have started conducting business with a
trademark, is it too late to register?
Absolutely not. But you
should probably file an “actual use” trademark application
as soon as possible to protect your use of the mark and
reserve the right to use the mark nationwide.
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Do I really need an attorney to register a trademark
No, but be
prepared to risk a major headache and an enhanced risk of
nonregistration when you get pages and pages of objections
and legalese back in a response six to eight months after
you file your initial application. Despite noteworthy
efforts by the Trademark Office to make the process more
user friendly, the reality is that the Trademark-Examining
Attorneys who will evaluate your application are lawyers.
They speak like attorneys, write like attorneys, and
generally respond favorably when dealing with attorneys who
understand the nuances of their profession and their
specialty. Having a trademark attorney file your
application is partially a question of efficiency, and in
helping to guide you with decisions during the process that
are more likely to result in a meaningful and expeditious
registration.
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I received a letter from an attorney to cease
and desist use of a name or logo - what next?
This is
when you need to hire an attorney. Do not send any letters,
emails, or make any phone calls without the assistance of an
attorney who knows trademark law and more
specifically—trademark litigation. Anything you say,
including your actions following the letter, can and will
potentially be used against you to try and prove a case of
“exceptional” conduct and infringement. It is imperative
that you file appropriate responses and that you have
effective assistance of experienced counsel.
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What is trademark
infringement?
Trademark infringement is use of name in commerce that
creates a “likelihood of confusion” among consumers as to
the source of a particular good or service. Federal causes
of action for trademark infringement of registered
trademarks are brought under 15 U.S.C. § 1114(a). Common
law causes of action and “false designation of origin”
claims are usually brought under 15 U.S.C. § 1125 and are
usually accompanied by assorted state causes of action for
“palming off” and unfair competition. Famous trademarks may
include Lanham Act and state causes of action for “trademark
dilution” by either “blurring” or “tarnishment.”
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What
remedies are available for trademark infringement?
Trademark
infringement plaintiffs are usually concerned principally
with stopping infringing use of a trademark. This relief of
stopping infringing uses of a trademark is the injunctive
side of the law. If emergency circumstances or irreparable
harm is being done, temporary or preliminary injunctions may
be available to stop infringing uses of a trademark pending
a resolution of the case on the merits. Trademark
plaintiffs may also be entitled to damages in the form of
lost sales, or the defendant’s profits from proven
infringing uses of the trademark. In cases deemed
“exceptional,” successful plaintiffs who show bad faith
infringement may be entitled to attorney fees and enhanced
damages. If infringing imports are involved, the owner of a
registered U.S. Trademark may be able to stop the infringing
goods by and through seizure of goods at points of entry
into the country. If your business has been damaged by
trademark infringement, the attorneys of Buche & Associates,
P.C. are well versed in finding the best avenues for
exacting justice from the Courts and against your opponent.
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What defenses are available against allegations
of tradmark infringement?
A case of
trademark infringement can be difficult for a plaintiff,
both in terms of proving liability and in proving
damages—particularly when you have good defense attorneys.
There are a variety of defenses that a defendant will want
to explore. Initially, a defendant will look to whether the
allegedly infringed mark is even properly trademarkable.
The age of the claimed trademark, strength of the mark,
registration status of the mark, and complications during
the registration process can affect the validity of a mark.
A variety of challenges may also be raised under federal law
to the venue of a particular dispute and the standing of a
given plaintiff to bring suit. To establish liability, a
Plaintiff will need to show “likelihood of confusion,” which
proof must meet federal standards of admissibility under the
federal rules of evidence. Assuming a case gets to a fact
finder, which may be a jury or judge, a plaintiff will still
have to persuade that trier of fact that a likelihood of
confusion exists. If it does not, the attorneys at Buche &
Associates, P.C. will enjoy presenting your case and defense
to a jury or judge. Moreover, even if a plaintiff can prove
liability for infringement, damages for trademark
infringement typically require the input and opinions of
economists that pass muster under federal admissibility
standards. Damages must also be directly attributable to
infringement, and not the overall success of a defendant in
business for reasons unrelated to the infringements. If you
or your business has been named in a trademark infringement
lawsuit, you need an aggressive defense by experienced IP
lawyers. The lawyers of Buche & Associates, P.C. will
provide the most aggressive defense to your business
available under law.
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What is counterfeiting?
“Counterfeiting” is a term reserved for the most egregious
acts of trademark infringement. The term speaks to a range
of conduct that can invoke both the civil and criminal
justice systems. In the most commonly understand
nomenclature, the act involves criminal actions of importing
“fakes” of trademarked items. Counterfeiting is a major
issue for the producers of software and manufactured goods
and where true counterfeiting is involved, the U.S. Customs
Service, the U.S. Attorney’s Office and U.S. Marshall
Service may be involved. However, in recent years, the term
“counterfeiting” has also been used extensively in civil
courts to obtain statutory damages under 15 U.S.C.§ 1117 and
to address issues of infringement in the world of “grey
goods” and “refurbished goods” bearing the trademarked
products of others. As with any trademark infringement, if
you have been accused of counterfeiting or alleged to
infringe the trademarks of others, you should immediately
consult an attorney experienced in the realm of trademark
infringement.
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What are grey goods?
The term
“grey goods” is used to describe trademarked products sold
outside of a realm of authorized distribution. Trademarked
goods are frequently licensed to be sold or distributed only
within certain territories. When the vendor of trademarked
goods sells into unauthorized territories or countries, this
may be considered either an act of trademark infringement, a
contractual violation of a license agreement, or both. Grey
goods are particularly problematic where the qualities of
goods sold in one territory are different than those
licensed to be sold in another territory, but where the
products are sold into territories where the goods may be
confused.
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Do I need to be a U.S.
citizen to get a U.S. trademark?
No,
this is not necessary, but the citizenship of the applicant
will need to be recited in the U.S. trademark application.
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Is it possible to get an international
trademark? Can I get trademarks in foreign countries?
It is
possible, now, to file a Madrid Protocol trademark
application based on a United States registration. The
Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks (Madrid Protocol) is an
international treaty that allows trademark owners to apply
for registration in any of the countries that have joined
the Madrid Protocol (61 currently) by filing a single
application, called an "international application." The
International Bureau of the World Intellectual Property
Organization, in Geneva, Switzerland administers the
international registration system.
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