Thursday, September 9, 2010

Stock Photo Warning

If you use photographs on your website, make sure that they are either royalty free (ones you have taken yourself or for which you have an unlimited license) or that you have made proper arrangements to license the use. Just because the photo is available for downloading on the Internet, doesn't mean you can use it for free. If not, you could be facing either hefty licensing fees or damage claims for copyright violation.

Reliance on a third party website developer is no defense - even innocent infringers can be held liable. There is software available to the stock photo companies that allow them to search the web for use of copyrighted material. You can be found. It has happened to more than one client.

questions, concerns: contact Fran Pennarola at

Friday, August 13, 2010

Protecting Your Trademark

A trademark's viability depends on continued use and vigilance. When it comes to trademarks, the law has a "use it or lose it" philosophy, which makes sense in light of a trademark's role as an identifier of the source of goods and services. If there are no goods and services that are being promoted through use of the trademark, it no longer functions as one. A subsequent user can file to cancel a dormant federally registered mark, or can defend an infringement action based on abandonment.

The length of time it takes for an unused trademark to be considered abandoned varies, but the owner of a trademark it wished to keep is advised to use it. There are, of course, United States Patent and Trademark Office requirements for periodic filings, the failure to comply with can result in abandonment.

In addition to lapse by nonuse, there is the possibility that failure to protect a trademark can result in its loss. Aspirin was originally a trademark, but was allowed to enter the public domain. Kleenex (r) and Xerox (r) are regularly policed and defended by their owners to prevent this. We send out letters to users of clients' trademarks to advise of their rights and to demand cessation.

Periodic searches on the Internet of your own trademark are prudent. There are companies that provide this service for a fee, and can access databases not always readily available.

Additional information about trademarks can be found at the Trademark Section of our website at

Thursday, August 5, 2010

How we can help you secure a trademark

If you are thinking of securing a federally registered trademark for an existing product or service, or one you intend to offer, we can help. The first thing we do is to check for conflicting registered and common law trademarks. It is not enough to simply do a search at the USPTO for the exact trademark you wish to use. You need to consider variations, both in word and sound, as well as similar trademarks for closely related products. Next, we expand the search to consider other sources, including various Internet based searches, company name directories and other data.

Assuming no conflicts are found, we can file the application for you and shepherd it through the process, which can take 12-18 months (sometimes longer). Applications for existing products or services require samples of use of the trademark in commerce (advertisements, web pages, invoices - depends on the nature of the goods or service). Where the application is based on intent to use (for that new product in development), final registration will depend on proving actual use.

Fees and costs for a single class application tend to be in the $700-800 range, which includes the $325 fee to the USPTO. More involved applications result in higher costs as do the need to respond to the Trademark Office.

I am always happy to answer questions and can be reached via email at or phone 203-744-1929. Further information about me can be found at

Tuesday, May 25, 2010

Food Industry trademarks

Many of my recent trademark filings have been for food products. Certainly in this highly competitive industry, a memorable name (to go along with a great product) can mean the difference between success and failure. Some common isues that have arisen in registration include:

1. Is the name sufficiently unique? It may not be enough that there are no other food related products that are similarly named. The trademark examining attorneys at the U. S. Patent and Trademrk Office will often raise flags on the grounds that the holder of an existing trademark, in an arguably related field, may want to expand. I recently confronted this in a matter involving a nutrition drink and a chiropractor. Because the chiropractor had a previously registered trademark in a portion of the phrase our client sought to use for a nutrition drink, and he used the trademark in connection with nutritional services he provided, the trademark examining attorney raised the possibility that the doctor might move into providing goods and issued a provisional refusal. The matter is yet to be resolved.

2. Is the proposed trademark simply a foreign word or phrase for a common English word? If the answer to the question posed is "yes", no trademark will issue (when proposed as a trademark for a related product or service). The USPTO requies you to provide the English translation of foreign words. One could not get a trademark for "Coche" for motor vehicles, as it is simply the Spanish word for car.

3. Is the proposed trademark the surname of a living person? If you intend to use a surname as a trademark (even if it is your own), you will need the permission of the living person whose name you are using. Permission has to be in writing and filed with the application.

A little advance planning (and searching) can go along way to mimimize these and other issues.

Monday, May 3, 2010

Consent or Coexistence Agreements

Your Acme Motor Oil can coexist with Acme Burgers and Acme Bulldozers with little pushback from the U.S. Patent and Trademark Office and little likelihood that any of the other Acmes has a legitimate complaint. Registration should be allowed. What about Acme Antifreeze?

Here you run in to the "Likelihood of Confusion" argument that is the the ban of a trademark attorney's exisitence. While in your mind there is no way that anyone could mix up the source of Acme Motor Oil and the source of Acme Antifreeze, since both are in the sphere of automotive products (both are engine area additives), the USPTO and your fellow Acme supplier may things differently. To mimimize the possibility of rejection and to prepare for the inevitable office action (a note from the Trademark Examining Attorney explaining the probable rejection of the Acme Oil trademark in the face of the Acme Antifreeze mark). you may want to seek an agreement with the owner of the the Antifreeze mark to consent to your use.

A propertly drafted consetn or coexistence agreement can go a long wany to meeting"likelihood of confusion" issues, but it is not a total panacea. There really needs to be some distinguishing features between the two products. For example, I doubt that any consent agreement could handle the confusion issues arising if Hostess, a maker of snack Cakes, had an agreement with the holder of the Hostess Cupcakes trademark. In addition to some distinctions between the two products, the agreement should cover efforst that the companies will make to avoid confusion, cooperatin in the event of confusion and dispute resolutions.

In the even a coexistence agreement would not work, a license agreement may.

Wednesday, April 21, 2010

Food Industry Trademarks

Much of the trademark work Ihave done lately has been food industry related. Product names and logo designs are key to building a brand and a company. With so many choices facing the consumer today, selection of the right brand name is critical to success in this area, especially where competition for shelf space is critical.

It is important to avoid overly descriptive names - they stand little chance of achieving federally registered trademark status. For those of you looking to do it yourself, first search the U.S. Patent and Trademark Office database, and then the major search engines. If you are not familar with boolean logic, and the need to think outside the box, you would be best served by hiring a trademark attorney or a search firm. The last thing you wnat to do is go to market with a product whose name and very existence can be challenged.