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.
Thursday, August 5, 2010
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.
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.
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.
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.
Friday, December 18, 2009
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.
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.
Thursday, November 12, 2009
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.
We believe this will provide the best protection possible.
Monday, November 2, 2009
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.
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.
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