TRADEMARK

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Should we be considering filing for a patent, trademark or a copyright?

If you are looking to protect a slogan or a logo for your business, chances are that what you need is a trademark. If your objective is to protect an idea, improvement to a product or the function of a product, you may be principally concerned with patents. (See the Patent FAQS). On the other hand, if you have an artistic endeavor, such as a sculpture, art work, book or music, then you probably have copyright issues. (See the Copyright FAQ). Sometimes protections can overlap; for instance, software can be protected using both patent and copyright law.

What is the difference between a trademark and a service mark?

A trademark is any name or symbol that is used in business and that consumers associate with the source of a good. For instance, consumers associate Nike® with shoes, and this is a trademark. A service mark is any name or symbol that is used in business and that consumers associate with the source of a service. For example, consumers associate Southwest® with airline services.

Does a business need a federal registration to do business? What benefits come with federal registration of trademarks?

A business does not have to have a trademark to be in business, but it is a very good idea. In certain fields of business, it would almost be unheard of not to register trademarks—for instance if you sell a manufactured product or hope to open branches outside of one locality. A federal trademark provides protection for brands on goods or services and prevents would be competitors from taking a free ride on the goodwill you develop among customers. A federal trademark registration covers the entire United States, whereas operating without a registration may leave open territories across the United States where you have not established significant business contacts. More than ever, a federal trademark is also important to keep predators from stealing your business on the internet. A federal registration can be used to help recover attorney fees in disputes; it can add value as a business asset; it can be used in tax planning and licensing; and it can also be used as the cornerstone for international trademark rights under international treaties such as the Madrid Protocol. There is a reason why the top companies in the world register trademarks—Apple®, Porsche®, Starbucks® or Google® to name a few well known trademarked brands.

Are there advantages of filing state trademark registrations?

It can never hurt. A state registration will not cover the United States, but every trademark you own can be extra ammunition against an infringer. The federal trademark should be a priority.

What timeframe can we expect to register a trademark?

Most applications take a little over a year, presuming there are no major complications from the Trademark Office or objections from third-parties. It would be unusual for a normal application to take longer than a year and a half. Having an attorney familiar with the process can significantly avoid costly delays.

How long can a trademark last?

Potentially indefinitely. Coca Cola® has been registered since the late 1800s. As long as a trademark owner pays the fees to renew the trademark, it will not lapse. Owners have to file Section 8 declarations of continued use between the 5th and 6th years after registration, and then combined Section 8 and 9 renewals every ten years after registration.

If I don’t register a mark, can’t I just rely on “common law” rights? What are common law rights?

If you do not register a federal trademark, you will be forced to rely only on common law rights, and they simply are not as strong for most trademarks. “Common law” rights simply refer to the rights that a user of a trademark may have acquired through using the mark in business over time. If consumers have come to associate a trademark with a particular good or service, common law rights can exist under state or federal law. The federal trademark is preferred because it can cover the entire United States, but common law rights are usually asserted anyway at the same time a case of infringement is made.

The problem with common law rights is that the burden of proof for ownership of the rights can be higher than with registered trademarks. A registered trademark creates a prima facie case of ownership of the trademark across the entire country—meaning that it is presumed that ownership rests with whoever is named on the certificate. However, common law rights focus on proven use in commerce by the Plaintiff and evidence is required that consumers actually associate the mark with the trademark, and in a particular geography. National coverage cannot be assumed and experts and survey evidence must often be used to prove common law rights even exist.

What is a trade dress? And can a trade dress be registered?

A trade dress is the look and appearance of a product that consumers associate with a particular seller of the goods. A trade dress is a type of a trademark right and it can attach to either product packaging or to a product itself. Trade dress can cover things like colors, shapes, and even smells and sounds. The key to protecting a trade dress is use in commerce of the trademark and ultimately showing that the mark is associated with the seller. Common examples of trade dress might be the red color of Dirt Devil® vacuum cleaners, or the sound of the NBC® chimes that introduce a show on television. The one thing a trade dress cannot protect is features of a product that are governed by “function.”

How can a trademark or servicemark be used in franchising?

Trademarks and servicemarks are the cornerstone of most franchise businesses. Subway® and McDonalds® are examples of popular franchises, and the trademarks are a large part of the value of the franchise businesses. Consumers know the names of those businesses, which may make it desirable to want to own one of those restaurants. Consequently, the contracts surrounding the business will include license agreements to the rights to use those trademarked brands. The “franchisor” will extend licenses to the business owner (the “franchisee”) to use the brand in exchange for licensing royalties. The arrangement is mutually beneficial provided the franchisee lives up to standards that must be set by the franchisor. Franchises are a highly regulated type of business by many governmental taxing and other regulatory authorities.

Is the assumed name or d/b/a the same thing as a trademark?

No. An assumed name or d/b/a is just an alternate name that a business may operate under by state or county authorities. Sometimes an assumed name can be an indication that common law trademark rights or claims can exist to a given name, but it is not a trademark. An assumed name will not give a business owner anything close to the rights that come with either federal or
state trademarks. It’s not a bad idea to register assumed names, but don’t make the mistake of confusing one with a trademark or servicemark.

Should we perform trademark searches before we register our trademarks?

Absolutely. Although it is not required by law, some form of trademark search should ideally be conducted before filing a trademark application. It is best to have a trained professional familiar with trademark law conduct a search, but minimally an applicant should endeavor to see if others are using or have registered a similar mark for similar goods or services. While no search is guaranteed, a properly performed trademark registrability search can go a long way in helping an applicant to identify existing registered trademarks that might block an attempt to register a trademark.

These searches can save time, money, and unnecessary complications down the road. Outside of searching PTO records, more comprehensive searches can be geared to identifying potentially problematic uses by third-parties, for instance in assumed names at the county level, state trademark registrations, or on the internet which might create a problem. These types of searches will often help applicants pick quality brands that will not be shot down by the PTO, or worse, that might be burdened with opposition proceedings, cancellation proceedings, consumer confusion—and sometimes lawsuits. Product recalls and lawsuits are expensive, and will quickly dwarf the cost of a preemptive trademark search.

What happens if an “opposition proceeding” is filed against our trademark application?

If somebody or some business files an opposition against your trademark, it is because they feel your use and registration of the trademark will harm their right to use that trademark or one that is similar to it. Often, the petitioner will have a similar name or sell a similar good or service so that consumers might be confused. At least this will be the allegation. The opposition is a proceeding that any member of the public is permitted to file after publication of an applicant’s trademark application, if they believe they would be harmed by the registration. After a complaint is filed, the applicant of the trademark has an opportunity to respond in an answer and the procedure for this dispute is handled by the Trademark Trial and Appeal Board (“TTAB”). Until the dispute is resolved the application will not move forward toward registration. The TTAB will use its own procedures, as well as the Trademark Manual of Examining Procedure (“TMEP”). The proceeding is a form of litigation, however, the only remedy that can come out of the TTAB is the opposition will either be allowed or denied. The TTAB cannot award damages or make determinations about infringement, which is why many TTAB opposition proceedings end up in federal court. This proceeding is similar to a “cancellation” proceeding at the TTAB, which is a challenge to a trademark after it has been registered. When oppositions and cancellation proceedings start flying, an applicant needs to be represented by competent trademark counsel. A bungled TTAB proceeding can have significant consequences for brand rights, and rights that may still be at issue in federal court.

Is it really necessary to get a lawyer to conduct a trademark search? Especially if these non-attorney services say they will perform a search for less money?

As they say, “you get what you pay for.” Some non-attorney services may perform trademark searches, but they often fall short on helping an applicant either perform the search correctly, or in providing any meaningful analysis of the results. It is not legally required to have a lawyer do a trademark search, but it is not a good idea to bypass competent advice of an attorney either. For the same reasons that people employ dentists to pull teeth, and accountants to file tax returns, it is a good idea to have a trademark lawyer file your trademark application. It is the legal advice of an experienced attorney familiar with trademark law that can help an applicant to make informed decisions about how to navigate the trademark process.

Is it useful to file a trademark application before we are doing business? What is an ITU or “intent to use” application?

It can be useful to file an intent-to-use trademark application if you are concerned that the trademark or servicemark might be taken. Reserving a trademark is the whole purpose of the ITU application. You may not want to invest time and money in branding only to find out the mark is taken right before you’re ready to launch. The ITU application may end up costing a few hundred dollars extra in fees, but that cost is often worth the peace of mind knowing that the mark is reserved. Unlike an “actual use” trademark application, you will eventually be required to prove use in commerce of the trademark. After a “Notice of Allowance” is granted, the applicant has 6 months to prove use in commerce, but extensions of time can be purchased in 6 month increments.

I have been doing business for years without a federal trademark. Is it too late to register?

No. Trademark rights only ripen when they are used in commerce. Feel free to contact us to discuss your business name. If it is the type of name or brand that is eligible for a federal trademark, we can help you file an actual use trademark application.

Is it really necessary to get an attorney to file a trademark application?

It is not absolutely necessary, but if you file on your own, you may ultimately end up spending more money in attorney fees later to correct a mess—or worse, lose money in the form of time wasted with pending trademarks that will never register or fighting trademark disputes from applications that were not adequately researched before filing. The Trademark Office has moved to electronic filing, and it is easier to file than before, but truthfully, the process is still run by attorneys at the Trademark Office and they prefer to deal with attorneys who are familiar with the process and the intricacies of trademark law. In the experience of our firm, applicants with attorneys fare much better than those who choose to go it on their own.

We received a cease and desist letter from any attorney. What do we do?

You should contact our law firm immediately to discuss your case. There is no fee to have an initial consultation. Do not call the opposing lawyer and try to work it out yourself, even if you are an experienced businessperson. Anything you say can and will be used against you in a court of law. Trademark matters are not usually a criminal issue (although it can be in counterfeiting matters), but civil court attorneys will use your well meaning statements against you later. Resist the urge to email, send letters, or phone calls to plead your case or try to work it out. If a negotiation needs to be had, then it needs to be handled properly and in a way that will not prejudice your rights in court.

What is trademark infringement?

A trademark infringement exists when an infringer uses a logo or name in a manner that creates a “likelihood of confusion” among consumers about the source of a good or service. A variety of factors can contribute to trademark infringement, but they include how close use of the name is, the types of goods and services on which they appear, and the intent of the alleged infringer. In other words if a potential customer might be confused about where a good or service originates, then there might be a case of trademark infringement. Trademark infringement can exist under federal law or state law, but the ultimate test is always about “likelihood of confusion”. Trademark infringement can be of a registered federal trademark under 15 U.S.C. § 1114(a), or of a common-law trademark under 15 U.S.C. § 1125. Other types of trademark infringement can exist under theories known as “dilution” or “tarnishment”. Dilution simply refers to whittling away of a trademark’s ability to relate to a specific good or service. Uses of a trademark that are not in connection with the owners goods or services, such as “Cadillac Bar and Grill” could diminish the ability of Cadillac© to be associated with automobiles. Under federal law, dilution infringement only exists for famous trademarks. Another type of trademark infringement known as “tarnishment” infringement is where unsavory associations could be made by consumers as a result of unauthorized uses of a trademark.

What recourse does a trademark holder have against infringers?

A trademark holder can go after the trademark infringer for (a) lost sales attributable to the infringing goods or services; (b) disgorgement of profits resulting from infringement; (c) attorney fees, in exceptional cases where bad faith in shown; (d) a “reasonable royalty” that an infringer should have paid for unauthorized use of the trademark; (e) injunctions to stop future infringements; or (f) seizures and destruction of infringing products by either the U.S. Marshals Service or U.S. Customs. In some cases damages may be enhanced for bad faith infringement. In cases of emergency, a trademark holder may seek preliminary injunctions or temporary restraining orders to stop imminent shipments or infringements before they are unleashed on the consuming public. Seizures are particularly common in cases of counterfeit trademark infringement. If your business is being damaged by trademark infringement, or has been accused of trademark infringement, you should contact the attorneys of Buche and Associates, P. C. immediately so we can discuss your rights.

What types of defenses can be raised to allegations of trademark infringement?

A very basic defense is that a defendant’s use does not infringe the rights of a plaintiff. It is not uncommon for plaintiffs to exaggerate with respect to the scope of their alleged trademark rights. In some cases a defendant’s use of a name or logo will not be similar enough to the plaintiff’s trademark to count as an infringement. In other instances the goods or services of the defendants will be too far removed from those of the plaintiff so that “likelihood of confusion” is highly improbable. Depending on what type of trademark or service mark the plaintiff owns, the burden of proof can be significant. In some cases, with descriptive marks, a plaintiff may have to prove that the alleged trademark has obtained “secondary meaning” before they can get into the issue of infringement.

In other cases, the plaintiff may have problems with the strength or validity of their alleged trademark rights. For instance, a trademark that merely describes a good or service, such as San Diego Trademark Attorney, would not be entitled to any legitimate protections if challenged because it merely describes the geographic location and nature of the service provided. If mistakes were made during the registration process of a trademark, those mistakes can sometimes be used to invalidate a trademark. For instance if the owner falsified information about dates of first use in commerce, which is commonplace, such a trademark may be challenged on the basis of being fraudulent.

A variety of other defenses may be raised in trademark proceedings such as acquiescence, laches, and fair use. Whether a particular defense may be raised is a factually specific inquiry and defenses must be customized for a given case.

Assuming a plaintiff can even establish liability, a large portion of the defense of a trademark case may also be in the form of damages arguments. A plaintiff that uses a lost profits theory will have to present economic models that show that they would have been able to make sales that went to the defendant. Consequently, market share in an industry becomes very relevant, which is a reason that many damages models in trademark cases rely on economists and CPAs as expert witnesses. A plaintiff that uses a reasonable royalty theory of damages will similarly have hurdles to prove the percentage or dollar value that would be reasonable.

If your business has been threatened with allegations of trademark infringement or if you have been made a defendant in a case of trademark infringement, it is imperative that you immediately contact qualified attorneys familiar with trademark infringement litigation. At Buche & Associates, P.C., we have extensive experience with trademark litigation and we can help you with your case. We will be very comfortable arguing your case to a judge or to a jury.

What is the difference between counterfeiting and trademark infringement?

“Counterfeiting” is the worst form of trademark infringement because it refers to a situation where the counterfeiter knowingly took the trademark of another and falsely applied it to a good that did not originate with the trademark owner. The counterfeiter is applying a trademark with the purpose of misappropriating the goodwill of that trademark and the value of that trademark that belongs to the owner. If the case of counterfeiting is proven, the penalties can be severe and even criminal. The most obvious cases of trademark counterfeiting are with “fakes” such as purses or watches. But, the term “counterfeiting” is also used with reference to copyright. Counterfeiting can exist with both trademarked property and copyright protected property. The music, film and software industries have dealt with online piracy for years, and have continued to fight such counterfeiting. In many cases, the allegations are handled in the civil courts, but sometimes the U.S. Attorney’s Office, the U.S. Marshall Service and U.S. Customs may get involved when criminal issues are involved.

In any case of counterfeiting a central issue is intent. For this reason, it is not always as clear as one might think about whether a counterfeit exists. In some cases, sellers of merchandise can be the unwitting victims of counterfeiters. Other questions come up when goods are not counterfeits, but instead “grey goods” or “refurbished goods” bearing legitimate trademarks.

If you are having an issue with counterfeiting, or have been alleged to be involved with counterfeit activity, the allegations are serious and you need an experienced attorney familiar with the issues. We offer a free consult to have a preliminary discussion about your case.

What is the meaning of grey goods?

“grey goods” refers to trademarked products that are sold outside the authorized territory. In many cases, trademark owners will authorize use of their trademarks only in certain territories. When those goods are sold outside of the authorized territory, then they become “grey market goods” and this can be a type of trademark infringement. If the quality of goods bearing the same trademark are different, this can be a problem because it can lead to consumer confusion.

Does a person need to be a United States citizen to file for a U.S. trademark?

No. It is not required to be a United States citizen to file for protections in the United States. It is commonplace for citizens of other countries to apply for protections in the United States. Trademarks can be owned by individuals as well as by business entities based outside of the United States.

Is there an international trademark?

There is still no single trademark filing that will cover all countries. But, the world is closer now than before because of international treaties, like the Madrid Protocol. A Madrid Protocol trademark application can be based on a United States registration and be used to obtain international protections. There are now over 80 countries that are members of the Madrid protocol and you can find a list of these countries here. Once filed, a Madrid application will be forwarded to the International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland, which will register the mark and forward to “Contracting Parties” which are other countries in which the applicant want to register a mark.

If you are interested in securing a Madrid Protocol registration, please contact our firm discuss a fee quote.

What is a “merely descriptive” rejection?

Sometimes a trademark application will be rejected by the trademark office based on a rejection of “merely descriptive.” Basically, this means the trademark office examining attorney believes that the name you have attempted to register is simply a descriptor of the goods or services that you sell or would like to sell. For example if you wanted to protect the name “San Diego Donuts,” for a donut shop, it would likely be rejected because the name simply describes geographically where the store is and what is being sold. In trademark language, the office would be rejecting your application because it was not “distinct”–meaning that it does not indicate to the consumer a specific source of the goods. Under the Trademark Manual of Examining Procedure 1209.01(b), a proposed mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specific good or service.

The best way to avoid a merely descriptive rejection is with careful selection of trademarks in the first place. Experienced trademark attorneys will often spot potential issues with the proposed mark prior to filing and may counsel their clients to select alternate names. Descriptive marks can be difficult to register, but more importantly, they can be difficult to enforce even if they do manage to get registered.

This being said, if you have encountered a difficult rejection, it is not necessarily fatal to your trademark application. It may be worth challenging the rejection depending on the nature of the goods and services recited in the application. Also, it may be possible to argue that the trademark has obtained “secondary meaning” and submit evidence of consumer recognition.

If you have received rejections of this variety, it is important to consult with a knowledgeable trademark attorney who is familiar with responding to trademark office office actions. At Buche & Associates, we are familiar with trademark law and have practiced in this arena for over 15 years. If you would like a free telephone consultation to discuss the status of your application, do not hesitate to contact us.