Small Business Tips | The Trademark Firm

Don’t Fall for a Trademark Myth

April 29, 2016 by ddawsey

After nearly thirty combined years practicing trademark law, and hundreds and hundreds of registrations, David and I feel like we’ve heard just about everything wrong that people think about trademarks. But some of the most wrong are also the most common. Don’t fall for a trademark myth, especially any of the biggest trademark myths that we hear year after year.“You can always use your own name as a mark.”

Trademark Myth #1: “I can always use my own name as a trademark.”

Nope. If your name happens to be McDonald, forget about trademarking anything even remotely associated to the food industry. And having the same name as a famous brand won’t save you from an infringement charge, either. When a company becomes famous enough to trademark a name, like MCDONALDS®, they control the use of that mark in the specified goods and services area – no matter what your name is. For a great story on the use and obstacles to a family name, check out the problems the family of the late musician Frank Zappa are dealing with as different branches of the family square off against each other: http://www.nytimes.com/2016/04/30/business/media/whats-in-a-name-just-ask-frank-zappas-feuding-heirs.html?_r=0

Trademark Myth #2:“I’ll check my mark by running it through one of those free searches on the internet.”

Not if you have any sense, you won’t. Lawyers make their living by selling their time and expertise to clients. Would it make sense to give that time and expertise away? Most of the free trademark searches are automated links to the USPTO trademark database, and can only search for exact matches. Try running “Nike Shoes” through a free search. Chances are it will say that the mark is “potentially available for registration.” That’s because the registered trademark is just NIKE®, not “nike shoes,” so there is no match. The computer can’t figure out the association, but I bet the people at NIKE® won’t have any trouble, and no trouble making sure that you don’t infringe on their mark. An adequate search, which is the only kind done by thetrademarkfirm.com, covers federal registrations, state registrations, sound and look-alike marks, common law use, and internet presence. Anything less is dangerous and irresponsible.

Trademark Myth#3: “If someone infringes my registered mark, the government will enforce it.”

Sounds logical, and after all, we are talking about federally registered trademarks. But it doesn’t work that way. Although the owner victimized by an infringer may feel like the victim of a crime, almost all the time, trademark infringement is a civil matter. That means that both parties in any enforcement action will usually pay the costs of their own lawyers. There are some “fee-shifting” statutes, under which the losing side can be made to pay the winner, but these are not easy to obtain. If you intend to register a trademark, consider the costs of enforcement as part of the price of owning the registration.

Trademark Myth #4: “As long as I change another’s mark somewhat, I’ll be O.K.”

Very, very wrong. This is a myth along the lines of “if I only copy X seconds of a song, it isn’t a copyright violation.” The test for trademark infringement is whether a mark is “confusingly similar” to a registered mark. That test is a relatively low bar for famous marks. Think of the case of the HERSHEY® chocolate bar. You can picture it in your mind right now. Try changing that appearance, even in a fairly major way, and you’re still going to have something confusingly similar.

Trademark Myth: 5: “The best mark is one that describes my product exactly.”

Now this is a tough one, but wrong nonetheless. Suppose you want to market a new brand of racing bicycles under a trademark of “Speedy Bikes.” The USPTO is going to reject that mark as being “descriptive,” that is, it simply tells you what the product is or does: a fast bicycle. A better choice is a “suggestive” mark, one that calls to mind some quaity of the product without actually describing it. Consider GREYHOUND® (bus service that is hopefully even speedier than a greyhound) or JAGUAR® (cars that are fast and beautiful like the cat).

Even better are “arbitrary” or “fanciful” marks like APPLE® (computers that have no relationship to the fruit), or the NIKE® “Swoosh” (no intrinsic meaning of any kind). These marks are extremely powerful because it is impossible to get them out of your head or to mistake them for anything else. The downside of such marks is that since they have no apparent tie to the goods, it takes a long time and a lot of marketing money before the public comes to clearly associate that mark to your product.

The best way to avoid trademark myths is to work with an experienced trademark law firm. We at thetrademarkfirm.com know that we aren’t the only trademark lawyers you can find, but we are always ready to help you achieve the best results from your trademarking efforts.

Trademark Protest? Try a Letter of Protest

April 14, 2016 by ddawsey

A relatively little known trademark protest procedure in the trademark office allows a third party to file a letter of protest against a pending trademark application. The process is simple, free and easy. The filing of a letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. A letter of protest will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of the ex parte examination of a trademark application. Trademark Manual of Examining Procedure (TMEP) §1715.01.

An “issue that can be dealt with by an examining attorney in the course of the ex parte examination” presents some limitations that may not be apparent on the surface.

To begin with, it means that only trademark protests that can be decided solely on outside evidence can be presented. The most common grounds for accepting a letter of protest include: likelihood of confusion with a U.S. trademark registration or prior pending application; descriptiveness/genericness of the mark, use of a registered mark in the identification of the goods/services, or a false association with the protestor.

Areas that require resolution of contested points of view are off-limits. A letter of protest should not be submitted, and will never be accepted, if the issue presented relates to: common-law prior use, an ownership dispute, fraud, or a mere disagreement with the examination conducted by the Examining Attorney or with the Examining Attorney’s exercise of judgment. So, the USPTO denies letters of protest that do not include factual, objective evidence, and only factual and objective evidence.

No argument is allowed in a trademark protest, only objective evidence, like independent evidence of a likelihood of confusion, for example, published advertisements showing that the parties provide the same goods and services. If you’re thinking by now that a letter of protest is a pretty weak way to block a trademark application, there is some merit in that thought. However, remember that an Examining Attorney may not have done a thorough search for internet or other reference material, and by bringing it to the Examiner’s attention, you just might tip the scale towards a rejection. Even more important, the letter of protest procedure stands entirely separate from an Opposition proceeding. Even if your trademark protest is entirely rejected, you can still bring an Opposition without prejudice, and then you’ll get the chance to argue all your evidence, including disputed and disputable evidence, to the TTAB.

Conflicting Marks

November 8, 2015 by ddawsey

There are millions of businesses with registered trademarks and many produce numerous products and services. Unless it is a totally fanciful mark (a “made-up” symbol, like the Nike® “swoosh”), it is doubtful that your selected mark will be completely exclusive and not in use, in at least some similar fashion, by someone. The main question is how similar your mark can be to another mark and still avoid infringement? You may get away with using a similar mark to an already registered mark for several years, but when the owner notices you, it may be very expensive to make a change.

Your Brand Should Work For You

October 26, 2015 by ddawsey

The brand of your company plays 3 roles in your business that might be called the 3 “p’s” of trademark:

Promotion
Protection
Profit generation

Types of Trademark Protection

October 22, 2015 by ddawsey

There are three types of legal protections available for trademarks:

Common law protection
State protection
Federal protection

The common law is the law created by judges’ decisions, solidified over the centuries and it is based upon general principles of justice. This law governs trademarks that are put into use, but not registered. If you are using a name, you gain a set of rights just by using it.

Choose the Best Name for Your Business

October 5, 2015 by ddawsey

It should be apparent that you can’t register the names of goods and services you provide as a trademark. For example, if you sell apples you will not be able to register the name “Apple” as a trademark for your business. On the other hand, if you sell computers, the name “Apple” might be easy to register (that is, if you’re the first user!) as a trademark, and can be amazingly effective.

Don’t Forget International Trademark Registration

September 25, 2015 by ddawsey

International trademark registration doesn’t exist, at least in a simple and unified form. Trademark registration is territorial in essence, meaning that trademark protections are only good in the country (or sometimes group of countries) in which they are registered. You have to file an independent trademark application in every country where you want to register it, except for special situations like the European Community Mark, which has cross-border effectiveness within the EU.

Good and Bad Marks Can Be Closely Related

May 13, 2015 by ddawsey

It’s an interesting paradox that some poor choices as trademarks can be closely related to excellent marks. Probably the #1 reason we give negative opinions on trademark searches, and the #1 reason for trademark rejections by the trademark office, is that the proposed mark is descriptive.

A descriptive mark, or as the trademark office likes to call them, marks that are “merely” descriptive, are marks that “merely” describe the goods and services. Because they are descriptors of the kind of the goods, they can’t serve as identifiers of the source of the goods. Therefore, they can’t act as trademarks or service marks, because the purpose of marks is to assure the public of the provider of the goods, not the nature of the goods themselves.

Use It or Lose It in Trademark

April 6, 2015 by ddawsey

Most trademark holders understand that a trademark must be used in business to be maintained. A more complicated issue is how and when time gaps in the use of a mark may lead to cancellation. A new ruling by the Trademark Trial and Appeal Board (TTAB) reviews many of the basic rules in this area. Read the full case here: Ziebarth v Del Taco, LLC; TTAB Cancellation 92053501

A Trade Name is not a Trademark!

March 31, 2015 by ddawsey

And you need to know the difference. Maybe there would be less confusion if instead of using the words “Trade Name,” we called it by a more accurate term: “Business Name.” We see this quite commonly in our trademark practice, and here’s the usual scenario. A new company or entrepreneur registers a “business name” (say “XYZ, Inc.”) with their home state. The state, usually through the Secretary of State’s office, searches the name, and if it doesn’t find any competing names on the state’s business register that are either the same or confusingly similar, will approve and register the business name. The business owner takes the state’s clean result in the search for competing business registrations as assurance that it’s OK to use “XYZ” as a trademark in its branding and advertising. No! Not true! The state only searches for business registrations, not for product names or trademarks. If there is another company, say the “ABC” company, offering a product called “XYZ,” then it’s “ABC” that owns the trademark, and XYZ, Inc. is looking at a trademark infringement lawsuit if they try to use their business name as a trademark.