Trademark Holders Beware!

Congratulations, you've got your registered trademark and can proudly display your certificate, complete with its gold seal. Espect to be solicited by various official sounding vendors, looking to sell you "monitoring" services and other products. These are from commercial vendors, looking to make money. You don't have to sign up with them and should consult your trademark attorney if you have any questions. the process has become so abusive, that the US Patent and Trademark Office has a warning on its website: www.uspto.gov/trademarks/solicitation_warnings.jsp It certainly makes sense to do an internet search to see if others are suign your trademark in a competitve way. If you find such a use, you should evaluate the costs and benefits of various actions, and seek legal advice. As always, you can contact me at fgp@danburylaw.com or 203-744-1929 ext 22

Battle of the Brands

As the New York Times reports in its Business Day section, Trademarks are an important part of branding, and can be key to being found in cyberspace and shelf space. It is important to review existing trademarks, both to support them and to protect them from encroachment from others.

Selection of a trademark is critical. As the Times article points out, a generic phrase may not offer any protection and can cost millions to defend. The marketers of Pretzel Crisps are in a battle with Frito-Lay, an opponent with very deep pockets.

Having been involved in a number of trademark disputes, I know first hand that it is better to avoid them, then to take the chance. Even where a questionable mark gets past the Trademark office, competitors may take a dim view of what has been filed. In the Pretzel Crisps case, a cancellation proceeding is pending to eliminate any trademark protection for the name. If successful, Frito-Lay and others would be free to market their own Pretzel Crisps.

Top 5 Trademark Tips

A Trademark is a wonderful way to promote your businesses' goods or services. Wtih the use of the internet and social meeting, the branding that a trademark fosters is a valuable asset. Here are 5 tips:

1. Use it or lose it: A trademark does not exist in a vacuum. It derives its strength and priority from use in commerce. Use it in advertising, on business cards, social media outlets -- any place the public will see your goods or sevices featured.

2. Be the first kid on the block: With very few exceptions, the first user of a word, phrase or image as a trademark will have priorty for the goods and services it is associated with. That priority can extend to other potential simlar uses. A trademark for Acme Handbags is likely to extend to, and prevent another user from obtaining an Acme trademark, for wallets and other similar accessories.

3. Look before you leap: Make sure your catchy name or phrase isn't already being used for a similar or related product. Search the US Trademark site, check with a number of search engines and online directories and consider a professional search. You don't want to build an expensive branding campaign without a thorough review.

4. Defend the Trademark: If you let others use it, your priorty may be meaningless. Trademarks can be lost.

5. Watch out for commercial solicitations in the guise of government agencies: Clients with Federally registered trademarks invariably get solicted for monitoring services, foreign registrations and other services for official sounding sources. They are almost always looking to provide a service you don't need.

As always, questions and comments are welcome. As a trademark lawyer in Danbury, Connecticut, you can reach me at fgp@danburylaw.com or 203-744-1929, ext 22. Fran Pennarola, www.danburylaw.com

Typical fees and costs for a Trademark application

This is a fair question for clients and prospective clients to ask. Unlike many areas of the law, the more unique the trademark as relates to the goods and services, the less costly the trademark is likely to be. The reason for this is that a unique mark will more likely sail through the USPTO than will one that is more descriptive. For example, Sludge, as a trademark for salad dressing would likely be approved quickly, whereas Salad Sauce would likely run into problems.

The fewer the goods or services associated with the trademark, the less the filing fees will be. The filing fee for each class of goods is $325 (unless you can use one of the canned descriptions, which can reduce the cost to $275).

Searching a trademark can cost between $100 and $500 or more, depending on the type of search requested or needed. A basic search of USPTO records, and the Internet, using a number of search engines is typically in the $200 range. Depending on the results of the search, further information may be necessary.

Legal fees for filing a trademark application, including the basic search, typically run about $500.

There are two kinds of applications. The first is based on actual use. This requires prior use in commerce and examples to be filed with the application. Advertisements, web pages, photos of the product for sale are some of the kinds of examples I have used. Many trademark applications are filed on the basis of intent to use, that is for a product or service yet to be offered in commerce. These types of applications require an additional filing fee (currently $100 per class) when filing an affidavit to allege use.

An unknown cost is the time required to respond to office actions from the Trademark Office examining attorney. Simple issues may be resolved for a few hundred dollars or less, more complicated issues can cost considerably more. Again, choosing a unique trademark and an appropriate description of the goods or services can minimize (or even eliminate) these costs.

The bottom line is that an application for a unique trademark, for a single class, already being used in connection with the goods or services, will probably run about $800. The typical case where an office action has to be dealt with, or an application to allege use has to be filed, will probably run to between $1200 and $1500.

As always, I am happy to respond to questions.

fgp@danburylaw.com 203-744-1929

Life afer a "merely descriptive" initial refusal

Trademark applications are sometimes met with an initial refusal by the trademark examining attorney as being "merely descriptive". This category of potential trademarks is rejected because if tells something about the product. For example, "Adhesive Tape" is descriptive and would not be permitted as trademark (it might be rejected as generic as well"). Recently, when faced with an initial rejection, on descriptiveness grounds, we were able to satisfy the examining attorney by assembling evidence that the proposed trademark had acquired secondary meaning and that the target audience for the trademark associated our client with the mark to the substantial exclusion of others. We did this through thorough research on the internet and other sources. Sometimes, you can't meet the burden of proving secondary meaning. If the trademark is in acutal use, you can amend to the Supplemental Register. While this brings fewer rights, it can provide a path to eventual registration on the Principal Register.

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 fgp@danburylaw.com.

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 www.danburylaw.com.