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.

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 fgp@danburylaw.com or phone 203-744-1929. Further information about me can be found at www.danburylaw.com.

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.

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.

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.

Trademarks: Year End Review

The end of the year is a good time to take stock of your business's assets. If those assets include product names and slogans, which often serve as trademarks or service marks, they should be reviewed. A trademark is typically a name or a picture that identifies a product and serves as an indicator of origin (i.e., your company). A good example of a trademark is the Nike Swoosh®. Whenever it appears on a shoe or a shirt, we know that the product has been made or licensed by Nike (counterfeiting is beyond the scope of this article). Similarly, the phrase "Just Do It® " is a service mark for Nike.

Trademarks depend on use. Unless a business is actively using the trademark in commerce, it will not have the trademark for very long. Trademarks can be common law trademarks (meaning use of the name as a source indicator without federal registration), or a federally registered trademark (entitled to use the ®). Federal registration can provide enhanced rights. Those businesses dependent on their own brand named goods should consider federal registration. Some local examples of federally registered trademarks include: Bobbex® (a trademark for non-toxic plant growth regulators for agricultural use); The Taunton Press® (a trademark for printed publications, namely magazines and books in the fields of cooking, crafts, gardening, knitting, home building, home design, sewing, and woodworking); and Sonics and Materials® (a trademark for ultrasonic, vibration, spin, hot plate and heat staking machines and devices for the welding, joining and fastening of thermal plastic components, textiles and other synthetic materials). One of the most famous trademarks, with Newtown roots, is Scrabble®. It has been federally registered since 1950.

For those with federally registered trademarks, making sure they are up to date is important, as there are some periodic filing requirements. Also, the end of the year is a good time to search the Internet to see if any competitors are infringing the trademark. A hypothetical example of an infringing trademark would be the use of the name "Bobbet" for a similar product to Bobbex®. Were this an actual infringement, the owner of the Bobbex® trademark should take action to protect its rights.

Protecting a Character

I recently faced the issue of how best to protect a live action character, with distinguishing features and a definite message. Neither trademark nor copyright registration alone would provide the full range of protection that combined filings would. what we decided to do was the register the character's name as a trademark (the name was available) and use as the description of goods and services, the message or meaning that the character stood for. This is what the public associated the character with. At the same time, we decided to file for copyright protection for the character's costume or design, linked to its name.

We believe this will provide the best protection possible.

Domain names and trademarks

Domain name serves as an address on the Internet. In the case of our law firm, www.danburylaw.com is the Internet address for the firm's website. In our case, it does not function as a trademark or service mark because we don't use it to identify our law firm as Chipman, Mazzucco, Land & Pennarola, rather we chose it as a convenient and hopefully memorable name that would enable clients and others to find us. In other cases, domain names do function as trademarks. One of the more famous is amazon.com. According to a recent search I performed at the USPTO website, there appear to be thousands of domain names registered. For each registered trademark, the applicant had to provide evidence that the domain name was being used as a source indicator for goods or services.

Should I Try to Register My Domain Name as a Trademark?

The answer to this question really depends on what use you intend to make of it and whether the potential protection that a trademark registration can provide warrants the time and expense. In our law firm's case, had we promoted "danburylaw.com" as a source for legal services, we could have likely obtained a federal registration. There is a good chance (given that our use began in 1998), that we could have prevented the use of danburylawyer.com from its use of the name. Its domain name was created in October 2000. However, given the nature of our practice, that of our colleague at www.danburylawyer.com, there was never a reason to make an issue of our priority.

For some businesses, this will not be the case. A secondary user may be looking to trade on the good name and reputation of the prior user. In that case, federal registration may provide some benefits.

The Supplemental Register

The USPTO maintains two trademark registers, the Principal Register and the Supplemental Register. The Principal Register is the place for the traditional, good against the world, marks like Coke and Pepsi. A critical requirement of registration on the Principal Register is uniqueness, either initially or established over time.

The Supplemental Register is for those trademarks which are principally descriptive and won’t qualify for initial registration on the Principal Register. The marks must be capable of distinguishing goods and services (even though they may not actually serve that purpose). An example might be The Brewery, for a business that brews beer. A mark that has been on the Supplemental Register for 5 years has acquired “secondary meaning” and can be transferred to the Principal Register.

Certainly, if a mark can go on the Principal Register, that is the place to go. Many more rights flow from such a registration. Nevertheless, registration on the Supplemental Register is beneficial in that it permits use of the ®, the symbol of federal registration and serves as a deterrent to junior users of the mark.

Caveat: Any mark, whether on the Principal or Supplemental Register, is potentially subject to attack by a superior, common law user.

The difference between Trademarks and Copyrights

"I have a great name for a product – can I copyright it?"

"I developed a great software application, can I trademark it?"

As to the first question, the answer is no, but you may be able to trademark it (i.e., obtain a federally registered trademark). The answer to the second question is also no, but the software enjoys copyright protection and may even be patentable.

Copyright Law protects original works of authorship that are fixed in a tangible medium Those original works range from books and songs to paintings and photographs to software code. It is important to note that it is not the idea itself that is copyrightable but the expression of the idea. For example, Ansel Adams, a famous American photographer of the West, took many pictures of Yosemite National Park, the Grand Canyon and the Tetons. Once the image he saw in his camera was fixed on the negative, his copyright in it and the subsequent photographic print was created. If I photocopy one of his prints, I have violated his copyright. If, on the other hand, I manage to stand in the same place he did and capture an identical image, I have not violated his copyright. Rather, I have created my own copyrighted material. It is the expression of ideas that is protected, not the ideas themselves.

Copyrights arise the instant the work is fixed in a tangible medium. Federal registration of copyrights is handled by the Copyright Office, www.copyright.gov, a division of the Library of Congress. There is no need to register a copyright in order to own one but protection is enhanced if you do.

A trademark is commonly referred to as a source indicator. It is intended to identify the source of goods or services and to enable the public to distinguish among goods and services. Two great examples of strong trademarks are "Coke" and "Pepsi". While copyrights arise on creation, trademarks are dependent on use. The phrase "use it or lose it" is apt in the trademark world. Unlike copyright, priority is important in trademark use. In almost every reported case, the first user of a trademark, for a particular good or service, will have priority over a subsequent user of the same trademark, for a similar good or service.

Choosing a Trademark

Trademarks come in three basic flavors. They are, from strongest to weakest, Fanciful/Arbitrary, Suggestive and Descriptive. A fourth category, Generic, consists of those words that are too common to srve as trademarks. An example of a generic mark is aluminum foil. A suggestive mark in the same line would be Reynold's Wrap. It is suggestive because "Wrap" suggests something about the product - in this case, its use to enclose something.

If your slate is clean, an Arbitrary mark is the safest bet. An example might be "Dog" for brand of shoe polish. There is no discernable connection between the name and the product. A Suggestive name for the same product might be "Buff It!" A Descriptive name might be "Murphy's Shoe Polish". The Generic name,is of course: "Shoe Polish".

Assuming there is not a conflicting mark, the Trademark Office should have little difficulty with the Dog mark. Buff It is somewhat weaker, but still a good mark. Murphy's Shoe Polish may require some aging - a chance for the name to be associated with the product, before a registration would issue. Shoe Polish is open to all users - and hence, of little value to anyone, including the consumer.

A Book Review

There are a number of good books for lawyers covering trademark law. One book that I believe is useful for both lawyers and laypersons alike is Trademark Law: A Practitioner's Guide by Sigrun D. Kane. The book is published by the Practising Law Institute, 810 Seventh Avenue, New York, New York 10019 and is currently in its fifth edition. It provides a good overview of the law and is full of practical advice. The book gives the reader insight into the world of trademarks in an accessible, user friendly way. There are illustrations to explain many of the concepts and conflicts discussed in the book.

The book gives insight into the workings of both the Trademark Office and the Trademark Trial and Appeal Board. It is not a substitute for legal advice, but it can give a leg up.

A Useful Site

There are a number of useful trademark oriented websites. One worth checking out is www.trademarkia.com. This site facilitates a search of the Trademark database located at www.uspto.gov. The search available throught the Trademarkia website is no subsitute for a more thorough search, but is is a good place to start.

I will periodically highlight other useful sites.

The Care and Feeding of Trademarks

Once you have a federally registered trademark, and are a proud recpient of the certificate complete with gold seal, your job is not done. There is periodic upkeep, such as filings with the Trademark office between the 5th and 6th years. It is important to continue to use the trademark in commerce, as abandonment can be found from lack of use. If you expand the good or services you provide under the trademark, consider filing a new application for them.

In addition to the above, you should, at the very least, make regular searches of the USPTO Trademark database to determine if any competing trademark applications have been filed. While the USPTO will regularly refuse to register what it believes are conflicting trademarks, it doesn't catch everything. Early contact with the owner of the proposed trademark may avoid a costly dispute.