Not everyone uses an arbitrary or fanciful brand name. Often times individuals or companies will just go with someone’s name (present company included). Read on for a list of considerations when using a personal name as a trademark. Continue reading “Using A Personal Name As A Trademark”
Rats. You spent so much time selecting your name, and you can’t use it. For one reason or another, you and your attorney have determined that you have to change your brand name: you received a cease-and-desist letter in the mail that contained some pretty valid claims; your application to federally register your trademark was rejected; or a trademark search revealed a third party that started using a similar name before you did. “But I love this name!” you proclaim. “I brainstormed, worked with a marketing company, surveyed my friends, Googled, and I purchased a domain name.” What’s a trademark owner to do?
Using a descriptive trademark can have its benefits — consumers likely don’t have to guess at the goods or services you offer if you come right out and describe them in your brand name. But are you familiar with the downside to using a descriptive trademark?
It’s November, and we are well into apple season. Have you heard about the trend in apple branding and policing of fruit-related tradmarks? It all started with the Honeycrisp, a variety of apple that has apparently revitalized the apple industry. Apple “brands” have been cropping up (pun intended), and the owners are taking trademark ownership seriously in protecting, policing, and monitoring their marks.
The final part of a four-part blog series on the intersection of fashion and intellectual property law, this post touches upon design patents and their role in the fashion industry. (Playing catch-up? Click for the previous posts on fashion and IP, namely, copyright, trade dress, and trademark/counterfeiting.)
You’re not thinking about a trademark search.
You’ve got a GREAT idea. Excellent! Have you given any thought as to what you might call it? The name by which everyone will know this great *thing* you’ve created? In an ideal world, you will have retained the services of an attorney to perform a trademark search prior to choosing a name. Spending a ton of money on merchandise, logo design, and labels only to find out later that someone else beat you to it? Not something that any business owner wants to deal with. Why oh why didn’t you think about a trademark search?
What’s the purpose of a trademark search?
The main purpose of a trademark search is to ensure that you, the brand owner, will not be infringing on any other person or entity’s rights if you use your brand name in connection with your goods or your services. The other purpose of a trademark search is to anticipate, to the extent possible, whether the mark is likely to be accepted by the Trademark Office if you choose to register it.
A thorough search will look for marks similar to yours used in connection with products and services similar to yours. A trademark lawyer will check sources such as the United States Patent and Trademark Office, Google, state trademark registries, and trade-specific websites. Oftentimes, trademark lawyers have special software that pulls marks that look or sound similar to your trademark. (The Trademark Office looks for marks that are similar to yours in sight and sound, too.) This special software also helps to identify the existing marks that carry the most risk.
Ideally, a search should take place before your launch, but that’s not always the case. Though every scenario varies, depending on the facts, it is usually best to have a trademark search performed so that you don’t find yourself spending more money on something that could have been prevented. In other words, spending a little money now could save you from spending more money — and a big headache — from dealing with attorneys’ fees, a rebrand, a cease-and-desist letter or a trademark infringement lawsuit later.
What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.
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Many business owners are vaguely familiar with the trademark application process. Without fail, though, when a business wants to register its trademark with the U.S. Patent and Trademark Office (or “USPTO”) the first question is “How long until I get my registration?” Of course, the answer is “it depends.” Are you using the mark yet? The answer to that question matters when it comes to registration.
Keep in mind that there’s never a guarantee that submitting an application for federal registration of a trademark will result in registration. Nonetheless, the federal trademark application process usually follows one of two paths:
The Trademark Application Process: The Use-Based Application
Step 1: File the application along with a “specimen.” The specimen is usually a photo or image showing use of the mark in connection with your goods or services.
Step 2: Approximately three months later, an Examining Attorney at the USPTO reviews the application. Upon review, he or she will either:
- Approve the application for publication (meaning there are no visible issues with the trademark application); or
- Initially reject the application by issuing an Office Action. Rejections can be on substantive or non-substantive grounds. (An example of substantive grounds? The existence of a confusingly similar mark that essentially “blocks” your application. A non-substantive ground is asking for revisions to the description of your logo.) An initial rejection is not the end of the world — in fact, many times, the stated issues are surmountable.
Step 3: After the application has been examined (and/or after you’ve adequately addressed an Office Action), the mark passes through to “publication.” This means that the content of your application is posted in the Federal Register. Then, third parties get thirty days to file an objection to your application. (This usually happens when that third party owns a mark similar to yours and feels it would be damaged by your achieving registration in the mark).
Step 4: If no oppositions are filed, the mark should proceed to registration. The typical timeframe from the date of filing to the date of registration (if no Office Actions are entered) is anywhere from six to ten months.
The Trademark Application Process: The “Intent-to-Use” Application
Filed if you have not yet used your mark in commerce, but have a bone fide intent to do so.
Steps 1-3 above also apply to an Intent-to-Use application, with a few differences. First, you can’t file an Intent-to-Use application with a specimen, because the you haven’t begun using the mark yet (so, there’s nothing to submit). Instead, after Step 3 (the publication period), the Examining Attorney issues a “Notice of Allowance.” Then, you have six months from the date of the Notice of Allowance to either:
- File your specimen, showing proof of use of the mark (along with a filing fee); or
- File a request for a six-month extension (along with a filing fee). An applicant can file for an extension up to five times.
Once the Examining Attorney approves the specimen, the application should proceed to registration.
So there you have it — the trademark registration process in a nutshell. If you wish to apply for federal registration of your trademark, feel free to contact Spear IP below.
What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.
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Along with “how does the trademark registration process work?” one of the most common questions that I hear over and over is, “why should I register a trademark?” Your rights to your trademark or service mark begin the minute you first use of the mark “in commerce” (legalese for, essentially, public offering of your goods or services), regardless of whether you register. And, the current fee charged by the Trademark Office per class of goods or services in an application ranges from $225-$275 per class, which can add up if you are in the business of offering several types of goods and/or services. So why register? Because trademark registration comes with some hefty benefits.
The ® Is For Registered.
If you register a trademark with the United States Patent and Trademark Office (or “USPTO”), you will enjoy a variety of perks. Federal registration allows you to use the ® symbol, which is reserved for federally registered marks, and lets the world know that you consider this mark to be your brand, thus working to ward off infringers.
The Public Record.
Registration also creates a public record of your ownership of the mark and date of registration and date of first use. This can be important if you find yourself arguing with an infringer that attempts to claim his use of a similar brand predates yours.
Also, this public record prevents infringers from claiming their adoption of a similar mark was done in “good faith.” (In other words, “We didn’t know you existed” doesn’t really work as a defense if you have a registered trademark.)
The Potential Remedies.
Other benefits to registering your mark with the USPTO are the remedies available to a brand owner if infringement happens. Think of “remedies” as the things that you ask for in a lawsuit because of the harm that has been done to you. Remedies in general range from things like money damages in the form of lost profits, to non-monetary remedies such as a temporary injunction.
Owning a federally registered mark entitles the owner to the following:
- Certain statutory damages in cases of counterfeiting, including the potential to block imports that infringe upon your mark;
- Potential to recover triple or “treble” damages; and
- The ability to file a lawsuit in federal court (as opposed to state court).
These benefits are important weapons to have in your arsenal when policing your brand against unauthorized users.
Also, knowing that you’re entitled to the remedies listed above could make an infringer more cooperative. How so? Well, they don’t have to respond to your cease-and-desist letter. But the thought of being on the hook for a tripling of your monetary damages? That’s a powerful motivator to respond and work something out.
When you register a trademark with the Trademark Office, you get to enjoy protection in all of the United States. Without registration, you have basic rights. But an opponent could argue that your rights are limited to the states in which you actually operate. (This can leave some gaps in protection!)
The Point: A little investment now can go a long way. Familiarize yourself with these benefits and think about whether your brand could benefit from federal trademark protection.
What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online.