Archive for the ‘Trademark Basics’ Category
Not a day goes by that I don’t get a call from a distressed business owner who – after using one of those ‘trademark filing’ services online – contacts me because their trademark got rejected. And it always brings to mind the origin story of the lucky horseshoe. Legend has it a blacksmith (who later became St. Dunstan) was approached by a man who asked that horseshoes be attached to his own cloven feet. Dunstan recognized the customer as Satan and explained that he must shackle him to the wall to perform the service. While hammering, Dunstan deliberately made the job so excruciatingly painful that the bound devil begged for mercy. He refused release until the Devil promised to never enter a house where a horseshoe was displayed from the door. Hence the reason today’s door “knockers” look like horseshoes. The application for and granting of a trademark is a process. One in which several steps must be taken. Not […]
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”. DESCRIPTIVE MARKS Descriptive marks describe some aspect of the product or service with which the mark is used. Descriptive marks are usually not very good choices for your mark. Trademark protection is only extended to des
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. At present, intent to use trademarks can now be filed with the United States Patent & Trademark Office, even though the actual federal registration will not issue until the actual mark is used in commerce. As long as the application is in good standing, however, and proper extensions of time are filed until the trademark is actually used in commerce (up to three years is acceptable), then the application filing date shall be considered the date of first use, thus reserving the applicant’s trademark rights. You would be wise to consult with a Florida trademark attorney first, before undertaking any trademark matters with 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. If it is an intent to use application without opposition, the United States Patent & Trademark Office issues a Notice of Allowance, giving the applicant six months in which to file a Statement of Use, demonstrating use of the trademark in commerce. If the trademark is still not being used in commerce, the application can request six month extensions to file the Statement of Use, as long as it does not exceed a three year time period from the date the Notice of Allowance was issued. […]
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. Searching for records other than those listed in the pending application and federal register in known as a common law search. Areas searched could include phone directories, yellow pages, state trademark registers, industrial directories, etc. This is done to ascertain whether or not a particular trademark that has not been filed with the United States Patent & Trademark Office is being used by others. Though it is not required to perform a common law search, it could prove beneficial in avoiding potential trademark infringement matters. You
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. The owner of a trademark that has been Federally registered with the United States Patent & Tradmark Office is presumed to be the exclusive owner of the trademark for the goods and services specified in the registration, and is generally entitled to exclusive nationwide use. Additionally, trademark owners have the right to request U.S. Customs Officials to seize imported goods bearing an infringing trademark. Once your trademark is Federally registered, you are legally entitled to use the registration symbol “(R)”,
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”. Descriptive marks: Descriptive trademarks describe one or more aspects of an associated product or service. Descriptive trademarks are usually not preferred. Trademark protection is only extended to descriptive trademarks that have attained a secondary meaning. Secondary meaning is achieved when a trademark has been used for so long and/or so exclusively that, beyond conveying a literal meaning, the public associates the mark dire
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. Obtaining a trademark on your company’s name or products can facilitate quick and effective recourse in the event that your company or product name is held hostage, preventing would-be thieves from unfairly benefiting from the goodwill you have worked so hard to generate. If you have a specific matter involving trademarks, it is advisable to speak to a trademark lawyer to determine the scope of your rights and the best course of action.
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. Not surprisingly, the trademark rights to Coca-Cola have been valued at over 80 billion dollars. By obtaining adequate trademark protection on their brand identities, these companies have been able to prevent others from using their identifying trademarks without permission.Trademark rights can provide an owner with the power to prevent others from adopting the exact trademark, as well as “confusingly similar” trademarks. You would be wise to consult with a Florida trademark attorney first, before undertaking any trademark matters.
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. As any qualified intellectual property attorney familiar with the United States Trademark and Patent Office regulations can tell you, this is simply NOT TRUE. Business licenses, fictitious name statements, and articles of incorporation are not substitutes for Federal trademark registration. Mistaken assumptions about trademark rights can be very costly to a business. Trademark issues should be addressed at the early stages of business development to avoid such problems. If you have a specific matter involving a trademark,it is advisable to speak to a trademark attorney who is knowledgeable and experienced in practicing before the United States Patent and Trademark Office, in order to assist you with se
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. Brand Names – Words used by a company to identify their name or the name of a product or service. Well known examples include Coca Cola, McDonalds, and Microsoft. Slogans – Catch phrases used to identify a product or service. Some well-known examples: We Bring Good Things to Life (General Electric); Soup is Good Food (Campbell); and Don’t Leave Home Without It (American Express). Logos – Designs or graphical images associated with a product or service. Well known examples include the swoosh mark used by Nike and the flag logo used by Microsoft. You would be wise to consult with a Florida trademark attorney first, […]
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. A section 9 renewal application must also be filed by the registrant within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, as long as the additional fees are paid. Registrations granted prior to November 16, 1989 have a 20-year term, as long as an affidavit of use is timely filed. Registrations granted on or after November 16, 1989 have a 10-year term. The same rule above applies […]
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. After about six or seven months from the date the application was filed, you should receive a response from the United States Patent & Trademark Office. However, a total of one year to several years may elapse while the application is being processed, depending on the filing basis and the legal issues which may arise during examination of the mark. You can check on the current status of your mark by visiting the Trademark Applications and Registrations Retrieval (TARR) database. You would be wise to consult with […]
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. I am also listing other grounds for refusal discussed in the Trademark Act, such as the following. The proposed trademark contains immoral, deceptive, or scandalous matter. The proposed trademark may cast a negative light on a person (living or dead), institutions, beliefs, or national symbols, or refer to them contemptuously. The proposed trademark utilized the flag or coat of arms, or other insignia of the United States, or of any municipality or State, or of any foreign nation. The proposed trademark utilizes in some form a name, portrait, or signature […]
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 Still another example of where this would come into play is when there is ownership of an application filed in a foreign country (as long as it takes place within six months of the date to file a foreign application). When there is ownership of a foreign registration (with a copy) then this practice is acceptable as well. A final basis would be the extension of protection of an international registration to the United States under the Madrid Protocol, as discussed in the Trademark Act. You would be wise to consult with […]