Florida Intellectual Property Law Blog

Hats off to Mark Reichel of The Daily Dose of IP Blog for his post regarding the U.S. Patent Office discontinuing its annual top ten patent holder list.

In the Patent Office press release, the PTO announced that it will no longer be publishing its annual ranking of the top 10 organizations obtaining the most U.S. patents in the preceeding year.  According to the press release, it is abandoning the list of top ten patent holders and "emphasizing quality over qualtity by discouraging any perception that we believe more is better." 

 About time.  I always wondered why the patent office focused so much attention on their "top ten list" as all it really did was provide those few "repeat customers" lucky enough to be in the "top ten" with bragging rights on their level of innovation.  

I wonder if the patent office's departure from this "strictly by the numbers" approach is the beginning of a new trend in the intellectual property field.  Are we finally able to look beyond the total number of patents in any defined segment before making broad generalizations based upon that number.

For example, as long as I can remember, the well known publication, Intellectual Property Today has tabulate its "Top Patent Law Firm" and "Top Trademark Law Firm" listings based EXCLUSIVELY on the number of patents and trademarks these firms obtained for their clients in any given year. 

The law firms near the top of this list invariably (like their corporate counterparts in the PTO's top ten listings) used their ranking in IP Today's top ten lists in their marketing materials. 

Perhaps such marketing efforts are persuasive--I don't know--but I welcome comments from in-house patent counsel as to what weight, if any, the IP Today annual top firm survey has on their choice of private patent or trademark counsel.

(As an aside: I am currently considering corrective laser eye surgery to eliminate my having to wear glasses and have narrowed my choice of surgeons down to a handful in the Fort Lauderdale / Miami Florida area---let me tell you...the number of eyes ZAPPED per year per doctor is not on my list of criteria!)

I am sure that rankings that go "strictly by the numbers" is the easiest and least controversial method of publishing listings of law firms and the PTO's top ten list.  But just because something is the "easiest and least controversial" does not mean that it is faultless.  From the perspective of a Florida patent attorney, I fail to see how a ranking by the numbers provides any indication of quality (as in the listings of patent law firms) or of innovation (as in the PTO's top ten listings).  

Florida trademark infringement lawsuits can be brought under either the Florida trademark statute (Chapter 495) or under federal law (Lanham Act) depending upon whether or not a federal trademark registration has been obtained.  If you are not sure if you or someone else has obtained a Florida trademark registration, you may want to do a search on the Florida trademark database.  Many general practitioners in Florida only occassionally see intellectual property litigation of any type, much less, Florida trademark litigation,  and are not aware of the benefits of Florida's trademark statute.

At one time, state law was seen as providing the primary venue for protection of trademarks.  All of this changed, however, when federal trademark laws were enacted by Congress.  The main federal statute is the Lanham Act and it was enacted in 1946 and amended numerous times since then.  Federal law has since provided the most extensive protection of trademarks.  However, it would be a mistake to dismiss Florida state law remedies for trademark infringement, particularly in view of the recent amendments to Florida's trademark statute.    

According to an article in the Boston Herald, the Florida owners of a modern design magazine called Modernista are being sued for alleged trademark infringement and unfair competition by a Boston ad agency that utilizes the trademark "Modernista!".

The lawsuit, which was filed on Friday, February 24, 2006 in Massachusetts District Court against Perfect Vision Media Group, LLC of Miami Beach, addresses agency concerns that the magazine's name could cause confusion among customers about who publishes the magazine and sells ad space.

Founded in 2004 in Miami, Modular Wheels has created a new 2006 line of customized wheels for such luxury trademark names as Ferrari, Porsche, Lamborghini, Mercedes, and BMW vehicles. According to the article at businesswire.com, the average costs for custom wheels for these vehicles is usually between the $1,000 to $1,500 range. Modular Wheels has cut that down between $350 to $550, a savings of more than 50%.

It is important to select a trademark that can be registered as a Federal Trademark prior to introducing a new product or service into the marketplace. Businesses should be very careful in selecting a mark so that they retain the ability to obtain registration and can prevent others from using the mark. Trademarks are classified into following four categories:

• Generic
• Descriptive
• Suggestive
• Arbitrary

Let's take a look at these categories in more detail:

GENERIC MARKS

Trademark rights cannot exist in marks that are considered generic. A generic term is the common ordinary name of a good or service and can never be a trademark. Examples of generic terms include "corn flakes", "automobile" and "basketball".

Inexperienced entrepreneurs often overlook the importance of properly securing rights to their business and product names during the frenzied pace of the start-up phase of their businesses. Unfortunately, mistakes at these early stages of choosing and protecting names can end up being very costly.

Trademark law provides the exclusive right to use a mark that serves to distinguish the goods of one person from another. A trademark typically includes a word, phrase, logo, design or even a combination of these. It is used to identify the source of a particular product. A service mark is similar to a trademark except that it is used to identify the source of services. Consumers identify trademarks with a particular quality of goods or services. Trademarks are valuable assets of a business and continuously increase in value as the products or services they represent gain brand recognition and consumer loyalty.

I am frequently asked by inventors to explain how patents differ from trademarks and from copyrights. They are fundamentally different. Lets take a quick look at trademarks and copyrights now.

First, lets look briefly at trademarks. A trademark can be a word, logo, design, or even a combination of these. A service mark is similar to a trademark except that it is used to express the origin of services.

Under common law, the first person to use a trademark on a product in actual commerce, is considered to have trademark rights. Before the 1990s, one could only establish trademark rights by using the trademark in commerce on actual products.

Many people will recognize the symbol of the encircled ® but do not realize its significance. This symbol denotes that a trademark has been registered and should only be used if indeed a registration has issued. When one claims common law rights to a trademark or service mark, they can use the ™ or (sm) symbols, respectively. The ™ symbol also can be used if awaiting the issuance of federal registration from the United States Patent & Trademark Office.

If the Trademark Examiner deems the application acceptable, the trademark is then set for publication in the Official Gazette of the United States Patent & Trademark Office. This notice of publication provides a thirty day period for any opposition or extension of time to oppose to be filed. If it is a use based application and there is no opposition, the Examiner then grants the registration within three months of the Notice of Publication.

When a trademark has been registered with the United States Patent & Trademark Office in the Principal Register, its benefits are maximized, as it is given constructive notice, which gives notice of the registration. After five years the trademark becomes incontestable as well, and it is able to withstand challenges by others, due to a presumption of validity.

In order to establish trademark rights, a federal registration is not required. The actual use of a trademark gives rise to common law rights. Typically, the first to file an intent to use application with the United States Patent & Trademark Office or actually use the trademark in commerce can claim ultimate registration rights. As discussed in a previous article, however, there are many benefits to federal registration of a trademark.

Your corporate name, along with the brand identity established by your products or services, could become your most valuable asset. A strong brand identity can help prevent your company, product, or service from becoming a commoditized item, helping to insulate your company from the effects of price competition. Typically, trademarks tend to continuously increase in value as the products or services they represent gain brand recognition and consumer loyalty.

Trademarks are generally classified into one or more categories by the United States Patent & Trademark Office, namely, generic, descriptive, suggestive or arbitrary. Marks receive differing degrees of protection based upon their particular classification.

Generic marks: Trademark rights cannot exist in trademarks that are considered generic. A generic term is the common ordinary name of a good or service and can never serve as a trademark. Examples of generic terms include "corn flakes", "automobile" and "basketball".

The interaction between trademarks and domain names has created a minefield of potential dangers to businesses. Without proper trademark protection through the United States Patent & Trademark Office, a company's reputation and goodwill can be "kidnapped" by so-called cyber-squatters. Proper trademark protection can provide a potent barrier to would-be cyber-squatters.

Trademarks are valuable assets of a business and continuously increase in value as the products or services they represent gain brand recognition and consumer loyalty. Over 90% of the market capitalization of Yahoo! is based on its brand equity. Other companies, including BMW, Nike, Apple and Ikea, have brand equity valuations exceeding 70% of the company's total market value.

Many business owners believe that filing for a business license, submitting articles of incorporation, or submitting a fictitious business name statement gives them exclusive rights to use their name as a trademark and prevents competitors from using similar identifying marks nationwide.

Trademark law provides the exclusive right to use a trademark that serves to distinguish the goods of one person from another. A trademark typically is a word, phrase, logo, design, symbol, or a combination thereof. Trademarks serve to identify the source of a particular good, while Service marks identify the source of a particular service.

An Affidavit of Use must be filed for a trademark registration to remain valid. This affidavit must be filed with the United States Patent & Trademark Office between the fifth and sixth year following registration, and within the year before the end of every ten year period after the date of registration. With payment of an additional fee, the registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year.

I cannot really give you an exact time when registration will issue after a trademark application has been filed. However, I can give you a reasonable time frame of what to expect.

Usually, an applicant will receive a filing receipt approximately six months after filing the application. The filing receipt includes the serial number of the application, which must be included in all future correspondence with the United States Patent & Trademark Office.

The United States Patent & Trademark Office reserves the right to refuse registrations of trademarks it feels do not comply with its guidelines. I've outlined these for you here, to give you a better idea of what they are. It should be noted that not all words, names, symbols, or devices function as trademarks. A great example of this are marks that are merely the generic name of the goods.

There are several basis for foreign applicants filing registrations with the United States Patent & Trademark Office.

This process is acceptable if there is use in interstate commerce or commerce between the United States and a foreign country.

Another situation is when there is a bona fide or good faith intention to sue the mark in interstate commerce or commerce between the United States and a foreign country

The page which shows the trademark that the applicant is seeking to register is known as the "drawing." According to the United States Code, the drawing must depict the trademark as it is actually utilized. If the application is based on a bona fide intent to use, this drawing has to show the trademark exactly as the applicant intends to use it. If the application is based on a foreign application or registration, the drawing must show the trademark as it appears or will appear when registered in a foreign entity. The drawing has to depict only one trademark, as the applicant cannot register more than one trademark per application.

The particular way the mark is actually used in the offer of services or on the goods is what is known as a specimen in the intellectual property realm. Acceptable specimens of use for a trademark include labels, tags, or containers. Specimens composed of magazine advertising or brochures are typically used for service marks. It should be noted that unless the specimens are bulky or larger than 81/2" by 11" (in which case facsimiles are acceptable), one actual specimen for each class of goods is required for filing with the United States Patent & Trademark Office.

Even though federal registration is not valid outside of this country, qualified owners of trademark applications either pending before the United States Trademark & Patent Office or of an issued registration, may seek registration in any country recognizing the Madrid Protocol by filing a single application.

Although obtaining counsel is not a required for Federal Trademark Registration with the United States Patent & Trademark Office, I recommend employing an attorney who is familiar with intellectual property matters, as there are numerous substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice that must be complied with, regardless of who is filing the application.

There are no federal regulations governing the use of the designations "TM" or "SM" (Trademark or Service Mark) by the United States Patent & Trademark Office. Local, state, or foreign laws may govern use of these designations, and a trademark attorney should be consulted.

Though not required, there are advantages of registering trademarks with the United States Patent & Trademark Office which offer several benefits to the registrant. There is notice given to the public of the claim of ownership of the mark made by the registrant, as well as national legal presumption of ownership granting exclusive rights to use the mark on or in connection with the goods or services that are detailed during registration.

A trademark that can be filed with the United States Patent & Trademark Office can be categorized as any word, name, symbol, or device, or any combination used, or intended to be used in commerce to identify and distinguish goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.