Hello Everyone!
Trademark infringement lawsuits are plentiful. Pop Icon, Madonna, is currently being sued by apparel manufacturer, LA Triumph, over the use of the trademark "Material Girl", the name of Madonna's new teen clothing line. L.A. Triumph claims it has used the "Material Girl" trademark in commerce since 1997. The company further stated, it has used the trademark in the same classification as Madonna, which is junior clothing. Apparently, both lines offer similarly styled clothing which is reflective of the 80s era.
Who Has Priority Trademark Rights
I did a search for Material Girl on the USPTO Trademark database website and Madonna's company, Material Girl Brand, LLC, filed for the trademark "Material Girl" in the clothing and accessory classifications based on intent to use. The application was published for Opposition (meaning another company can assert priority trademark rights and have the application denied) on July 20, 2010. Then there is L.A. Triumph, which does not have a registered trademark or pending trademark application with the USPTO, claiming it has been using the mark in commerce (offering goods for sale to the public) since 1997.
As I have previously discussed on this blog, an unregistered trademark, has priority rights, if the mark is used first in the region the mark originated. If it is proven L.A. Triumph did actually have a viable junior clothing line using the trademark "Material Girl" since 1997, then L.A. Triumph can assert trademark infringement in its region: the West Coast. Madonna could possibly still use the mark in other parts of the country, but of course that would be near impossible as the clothing is offered nationwide in Macy's stores.
Did Madonna's team do a thorough trademark search?
The answer to that question is not known. Either her legal team did not perform a good comprehensive trademark search and did not discover L.A. Triumph's prior use of the "Material Girl" mark. Or the search was valid and because of L.A. Triumph's non-use of the mark, could not be found. We just do not know the answer to that question yet.
Resolution
Madonna could fight L.A. Triumph regarding the use of the "Material Girl" trademark or she could settle. I predict she will settle because millions of dollars have already been spent manufacturing, marketing the clothes, and distributing the line. So a quick resolution is in the best interest of Material Girl Brand, LLC. A settlement could include either the purchase of the trademark rights outright or an agreement to some type of licensing fee.
I am looking forward to the outcome of this case.
Showing posts with label USPTO. Show all posts
Showing posts with label USPTO. Show all posts
Monday, August 23, 2010
Monday, August 16, 2010
Pillsbury Doughboy vs. My Dough Girl: Is it trademark infrigement?
Hello Everyone:
Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.
Are the marks too similar?
Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.
Similar Doughboy registered trademarks
Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.
What is next for My Dough Girl
Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.
Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.
Are the marks too similar?
Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.
Similar Doughboy registered trademarks
Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.
What is next for My Dough Girl
Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.
Sunday, February 21, 2010
Threat of Trademark Infringement?
Hello:
Recently, I have been receiving inquiries regarding threats of trademark infringement. Threats of trademark infringement include:
1. Written or verbal communication by an entity or individual expressing their intent to use a trademark owner's trademark without their permission,
2. Written or verbal communication of an infringer's intent to register or claim ownership of an owner's trademark with the USPTO.
These threats are usually made when the infringer realizes that the trademark owner is using the trademark and has built up a goodwill. However, the trademark owner has not "officially" submitted an application for registration with the USPTO or the state in which the trademark owner is located.
If you are a trademark owner and receive threats of trademark infringement, take the following steps.
1. Hire a trademark attorney to draft a cease and desist letter to the infringer. However, a cease and desist letter is only effective if the infringer has already started to use the trademark.
2. Check the USPTO's database to determine if the infringer has filed an intent to use or an application based on use claiming your trademark.
3. If the infringer has filed an application for your trademark, hire an attorney to file an Opposition to the registration of the trademark with the USPTO.
4. Immediately submit an application for trademark registration with the USPTO. An application based on continuous use can be filed if you have been actively using the trademark in interstate commerce (offering a product or service to the public).
Remember, although a trademark owner may not have obtained federal registration of the trademark, a trademark owner still has priority to use the trademark in their region and natural area of expansion. The USPTO will consider this evidence when granting trademark registration.
I hope this article was helpful. Please contact me via email at lgivens@phillipsgivenslaw.com if you have further questions.
Recently, I have been receiving inquiries regarding threats of trademark infringement. Threats of trademark infringement include:
1. Written or verbal communication by an entity or individual expressing their intent to use a trademark owner's trademark without their permission,
2. Written or verbal communication of an infringer's intent to register or claim ownership of an owner's trademark with the USPTO.
These threats are usually made when the infringer realizes that the trademark owner is using the trademark and has built up a goodwill. However, the trademark owner has not "officially" submitted an application for registration with the USPTO or the state in which the trademark owner is located.
If you are a trademark owner and receive threats of trademark infringement, take the following steps.
1. Hire a trademark attorney to draft a cease and desist letter to the infringer. However, a cease and desist letter is only effective if the infringer has already started to use the trademark.
2. Check the USPTO's database to determine if the infringer has filed an intent to use or an application based on use claiming your trademark.
3. If the infringer has filed an application for your trademark, hire an attorney to file an Opposition to the registration of the trademark with the USPTO.
4. Immediately submit an application for trademark registration with the USPTO. An application based on continuous use can be filed if you have been actively using the trademark in interstate commerce (offering a product or service to the public).
Remember, although a trademark owner may not have obtained federal registration of the trademark, a trademark owner still has priority to use the trademark in their region and natural area of expansion. The USPTO will consider this evidence when granting trademark registration.
I hope this article was helpful. Please contact me via email at lgivens@phillipsgivenslaw.com if you have further questions.
Thursday, June 11, 2009
Understanding USPTO Office Actions
Hello!
Welcome Back! Posting was kind of slow this past week because my MAC is in the shop getting a much deserved upgrade!
Understanding USPTO Office Actions can be a very daunting tasks for a non-attorney. Office Actions are drafted by USPTO attorneys and set forth the legal status of a trademark application. Thus the Office Action contains a lot of legalese, i.e., rules, laws, etc. that may need interpretation and sometimes further research and explanation. Understandably, an individual who filed their application without an attorney can be intimated and confused. There are several types of Office Actions. However, I will address the two types I encounter the most.
Office Action: An USPTO examining attorney informs the applicant of any conflicts with another trademark. Also an examining attorney may address issues such as whether the trademark is valid under US trademark law or the sufficiency of submitted specimens. An applicant has 6 months to respond to the Office Action and to correct or address each issue raised. If each issue is not addressed and appropriately remedied within the 6 month time frame, then the application will be abandoned.
Priority Action: An USPTO examiner will issue this action after consulting with the applicant or the applicant's attorney regarding specific requirements that have to be met before the application is approved for publication. If the requirement is not met, the application will be abandoned. However, if the applicant responds within 2 months, the application is given priority processing.
If you are a business or individual who receives one of the above actions, and have no idea how to respond, it is very important to obtain legal assistance. If an applicant does not address all of the issue and/or does not respond within 6 months, the applicantion can be abandoned. I obtain many clients who are near the abandonment stage or their application has been abandoned because they did not answer the Office Action correctly. Fortuantely, if an application is abandoned, the USPTO does allow the applicant to Petition the USPTO to revive the application. The cost is $100 and must be received within 2 months after the abandonment takes effect.
As always I welcome your thoughts. And please if you have a question, please ask.
Welcome Back! Posting was kind of slow this past week because my MAC is in the shop getting a much deserved upgrade!
Understanding USPTO Office Actions can be a very daunting tasks for a non-attorney. Office Actions are drafted by USPTO attorneys and set forth the legal status of a trademark application. Thus the Office Action contains a lot of legalese, i.e., rules, laws, etc. that may need interpretation and sometimes further research and explanation. Understandably, an individual who filed their application without an attorney can be intimated and confused. There are several types of Office Actions. However, I will address the two types I encounter the most.
Office Action: An USPTO examining attorney informs the applicant of any conflicts with another trademark. Also an examining attorney may address issues such as whether the trademark is valid under US trademark law or the sufficiency of submitted specimens. An applicant has 6 months to respond to the Office Action and to correct or address each issue raised. If each issue is not addressed and appropriately remedied within the 6 month time frame, then the application will be abandoned.
Priority Action: An USPTO examiner will issue this action after consulting with the applicant or the applicant's attorney regarding specific requirements that have to be met before the application is approved for publication. If the requirement is not met, the application will be abandoned. However, if the applicant responds within 2 months, the application is given priority processing.
If you are a business or individual who receives one of the above actions, and have no idea how to respond, it is very important to obtain legal assistance. If an applicant does not address all of the issue and/or does not respond within 6 months, the applicantion can be abandoned. I obtain many clients who are near the abandonment stage or their application has been abandoned because they did not answer the Office Action correctly. Fortuantely, if an application is abandoned, the USPTO does allow the applicant to Petition the USPTO to revive the application. The cost is $100 and must be received within 2 months after the abandonment takes effect.
As always I welcome your thoughts. And please if you have a question, please ask.
Tuesday, June 2, 2009
USPTO Filing Fees: Why Some Are More Expensive Than Others
Hello!
Last week I wrote a post mentioning USPTO fees to file two classifications under one trademark. I stated that the fees were $275 per classification for one trademark and the filing fee for each unique trademark is $325. However, a reader rightfully pointed out that USPTO filing fees are different prices depending on whether you are filing a paper application vs. online application. Also, the USPTO has a shorter online application that is less expensive than a regular online application.
As a result of @BSpeer's comment, I decided to break down the USPTO application fee structure below:
$275 per classification if you qualify to use a TEAS PLUS online application. For a list of requirements to file a TEAS PLUS online application, click here. Most importantly, your services or goods must appear in the USPTO's Acceptable Identification of Goods and Services Manual and you must agree to communicate with the USPTO regarding your application via email.
$325 per classification if do not qualify to use TEAS PLUS and you have to use a regular TEAS online application.
$375 if you choose not to apply online and use a paper application.
I hope this post clarifies my earlier statements and gives a better explanation of the USPTO's filing fees for trademark applications. I always welcome your thoughts and comments.
Last week I wrote a post mentioning USPTO fees to file two classifications under one trademark. I stated that the fees were $275 per classification for one trademark and the filing fee for each unique trademark is $325. However, a reader rightfully pointed out that USPTO filing fees are different prices depending on whether you are filing a paper application vs. online application. Also, the USPTO has a shorter online application that is less expensive than a regular online application.
As a result of @BSpeer's comment, I decided to break down the USPTO application fee structure below:
$275 per classification if you qualify to use a TEAS PLUS online application. For a list of requirements to file a TEAS PLUS online application, click here. Most importantly, your services or goods must appear in the USPTO's Acceptable Identification of Goods and Services Manual and you must agree to communicate with the USPTO regarding your application via email.
$325 per classification if do not qualify to use TEAS PLUS and you have to use a regular TEAS online application.
$375 if you choose not to apply online and use a paper application.
I hope this post clarifies my earlier statements and gives a better explanation of the USPTO's filing fees for trademark applications. I always welcome your thoughts and comments.
Thursday, May 28, 2009
When Filing a Trademark Application: Make Sure to Include the Correct Classifications
Hello!
I hope your week is going well!
Today I want to discuss another common error individuals make when filing a trademark application without the assistance of a trademark attorney. This error is not choosing the correct identification or class for goods and/or services or not choosing enough classifications to cover all goods and services.
The USPTO has an extensive list of acceptable identifications for goods and services. For example, if you are offering entertainment services, usually your classification number is 041. If you are selling cosmetics, your classification number is 003. It is very important to choose the appropriate classification because if the classification is wrong, the USPTO will reject the application. Furthermore, if you don't include all classifications that apply to your product or services, you will have to file another trademark application to include those classificationss. The following is an example:
I have a barbecue restaurant business but I also sell my famous barbecue sauce. I have one trademark that applies to my restaurant and barbecue sauce. When I submit my trademark application, I would choose classification 043 for restaurant services and classification 030 for barbecue sauce.
The above scenario is less expensive than having to file two separate trademark applications. Each identification filed under one trademark costs $275.00. Whereas, filing two separate applications for each class is $325.00 per application.
However, if you have a trademark for the restaurant and a separate trademark for the barbecue sauce, then you would have to file two separate trademark applications. The USPTO only accepts one trademark per application.
I hope you found this information helpful. If you would like, please share your thoughts.
NOTE: The above fees apply when filing an application online.
I hope your week is going well!
Today I want to discuss another common error individuals make when filing a trademark application without the assistance of a trademark attorney. This error is not choosing the correct identification or class for goods and/or services or not choosing enough classifications to cover all goods and services.
The USPTO has an extensive list of acceptable identifications for goods and services. For example, if you are offering entertainment services, usually your classification number is 041. If you are selling cosmetics, your classification number is 003. It is very important to choose the appropriate classification because if the classification is wrong, the USPTO will reject the application. Furthermore, if you don't include all classifications that apply to your product or services, you will have to file another trademark application to include those classificationss. The following is an example:
I have a barbecue restaurant business but I also sell my famous barbecue sauce. I have one trademark that applies to my restaurant and barbecue sauce. When I submit my trademark application, I would choose classification 043 for restaurant services and classification 030 for barbecue sauce.
The above scenario is less expensive than having to file two separate trademark applications. Each identification filed under one trademark costs $275.00. Whereas, filing two separate applications for each class is $325.00 per application.
However, if you have a trademark for the restaurant and a separate trademark for the barbecue sauce, then you would have to file two separate trademark applications. The USPTO only accepts one trademark per application.
I hope you found this information helpful. If you would like, please share your thoughts.
NOTE: The above fees apply when filing an application online.
Tuesday, May 26, 2009
When Submitting a Trademark Application: What is an appropriate specimen
Hello!
I hope everyone had a great Memorial Day Weekend!
I am still continuing my "Why You Should Hire a Trademark Lawyer Series." As I have said before, this series is very important because a good percentage of my client base comes from individuals who have attempted to file a trademark on their own.
Another reason, trademark applications are rejected by the USPTO is because they do not include the appropriate specimen. When filing a trademark application based on actual "Use", an appropriate specimen should show that the trademark or servicemark is being used in commerce, i.e., goods or services are being offered or sold to the public.
The following are examples of specimens that are acceptable when submitting a trademark application for products:
1.Product or package labels or tags (for clothing, etc.).
2.Banners, Window Displays, Signs.
3.Catalogs showing the products for sale.
4.Website pages showing the products for sale.
The following are not acceptable specimens for products:
1. Advertisements. Any type of ads, brochures, flyers, etc.
2. Price Lists.
Acceptable Specimens for Services:
1. Advertisements are acceptable here. So any ads, brochures, flyers, etc. advertising the services are appropriate.
2.Company Letterhead. If letter includes an offer for services.
Specimens not acceptable for Services:
1. Memos.
2. Invoices.
3. Business Plans
Remember submitting the wrong specimen can delay your trademark application for 6 months or more. I hope you found this information useful. Please share your thoughts.
I hope everyone had a great Memorial Day Weekend!
I am still continuing my "Why You Should Hire a Trademark Lawyer Series." As I have said before, this series is very important because a good percentage of my client base comes from individuals who have attempted to file a trademark on their own.
Another reason, trademark applications are rejected by the USPTO is because they do not include the appropriate specimen. When filing a trademark application based on actual "Use", an appropriate specimen should show that the trademark or servicemark is being used in commerce, i.e., goods or services are being offered or sold to the public.
The following are examples of specimens that are acceptable when submitting a trademark application for products:
1.Product or package labels or tags (for clothing, etc.).
2.Banners, Window Displays, Signs.
3.Catalogs showing the products for sale.
4.Website pages showing the products for sale.
The following are not acceptable specimens for products:
1. Advertisements. Any type of ads, brochures, flyers, etc.
2. Price Lists.
Acceptable Specimens for Services:
1. Advertisements are acceptable here. So any ads, brochures, flyers, etc. advertising the services are appropriate.
2.Company Letterhead. If letter includes an offer for services.
Specimens not acceptable for Services:
1. Memos.
2. Invoices.
3. Business Plans
Remember submitting the wrong specimen can delay your trademark application for 6 months or more. I hope you found this information useful. Please share your thoughts.
Wednesday, April 29, 2009
Why I Should Hire a Trademark Lawyer?
Hello!
Welcome Back.
As I have previously stated, many of the clients I obtain are those who have tried to register their trademarks without the assistance of an attorney and the USPTO rejects their application. Consequently, I have started this series appropriately titled "Why I Should Hire a Trademark Lawyer" to address common questions or pitfalls many trademark owners commit when attempting to navigate the USPTO on their own. Today, I am going to discuss in depth the number one pitfall:
1. Not obtaining or performing an adequate trademark search.
A simple search on Google to determine whether a trademark name, logos, or taglines are in use by another party, simply will not do. If I submitted a trademark application to the USPTO, based on a Google Search, I would be sued for malpractice. This is a big big public misconception. There are thousands of viable trademark claims or rights that simply do not show up in a Google Search. Why?
a. Some businesses do not own a website,
b. Some business are operating under DBAs that search engines may not find,
c. Some businesses, do not do any active advertising or marketing
However, this list is not exhaustive. There are so many mom and pops that fall under this category. You would not know if they existed unless you hired an attorney or a search company to do a comprehensive trademark search.
Another misconception is that if a search is performed using the USPTO's trademark database, and the name is not taken, you are in the clear. WRONG. WRONG. WRONG. The USPTO's database only includes registered trademarks, not common law trademarks. A common law trademark right exists when one is the first to use the mark in their region, regardless of whether the mark has been registered with the USPTO.
Once the USPTO receives your trademark application, they will perform a comprehensive search and if your trademark is already in use, your application will be rejected. In addition, you will have to possibly choose another trademark name, logo, and/or tag line.
So before deciding to file a trademark application, consult with an attorney regarding a comprehensive search. It will save you time, headaches, and money.
In my next post, I will give an detailed example on what a comprehensive search includes.
Welcome Back.
As I have previously stated, many of the clients I obtain are those who have tried to register their trademarks without the assistance of an attorney and the USPTO rejects their application. Consequently, I have started this series appropriately titled "Why I Should Hire a Trademark Lawyer" to address common questions or pitfalls many trademark owners commit when attempting to navigate the USPTO on their own. Today, I am going to discuss in depth the number one pitfall:
1. Not obtaining or performing an adequate trademark search.
A simple search on Google to determine whether a trademark name, logos, or taglines are in use by another party, simply will not do. If I submitted a trademark application to the USPTO, based on a Google Search, I would be sued for malpractice. This is a big big public misconception. There are thousands of viable trademark claims or rights that simply do not show up in a Google Search. Why?
a. Some businesses do not own a website,
b. Some business are operating under DBAs that search engines may not find,
c. Some businesses, do not do any active advertising or marketing
However, this list is not exhaustive. There are so many mom and pops that fall under this category. You would not know if they existed unless you hired an attorney or a search company to do a comprehensive trademark search.
Another misconception is that if a search is performed using the USPTO's trademark database, and the name is not taken, you are in the clear. WRONG. WRONG. WRONG. The USPTO's database only includes registered trademarks, not common law trademarks. A common law trademark right exists when one is the first to use the mark in their region, regardless of whether the mark has been registered with the USPTO.
Once the USPTO receives your trademark application, they will perform a comprehensive search and if your trademark is already in use, your application will be rejected. In addition, you will have to possibly choose another trademark name, logo, and/or tag line.
So before deciding to file a trademark application, consult with an attorney regarding a comprehensive search. It will save you time, headaches, and money.
In my next post, I will give an detailed example on what a comprehensive search includes.
Monday, November 17, 2008
Can You Trademark a Common Name?
Hello!
Thank you for visiting! Today's post will address whether you can trademark common or generic names. I briefly discussed this issue in a previous article you can find here. Basically common or generic names, or words or phrases that are merely descriptive are not sufficient for trademark registration with the USPTO. See TMEP §1213.05. However, if a combination of common or generic names create a unique name, tag line, or coined phrase, then the USPTO considers them unique enough to be a trademark. See the example below:
Go and Daddy separately are two common or generic words. Alone neither are sufficient for trademark registration. However, the combination of "Go Daddy" together is a unique name that is trademarked!
So when choosing names for trademark registration, do not be afraid to use common names together to create a unique name or phrase. As long as your name has not been previously used by another individual or entity, and you are using the name in commerce, trademark registration is feasible.
I hope this information was helpful. If you have any questions, please leave a comment.
Thank you for visiting! Today's post will address whether you can trademark common or generic names. I briefly discussed this issue in a previous article you can find here. Basically common or generic names, or words or phrases that are merely descriptive are not sufficient for trademark registration with the USPTO. See TMEP §1213.05. However, if a combination of common or generic names create a unique name, tag line, or coined phrase, then the USPTO considers them unique enough to be a trademark. See the example below:
Go and Daddy separately are two common or generic words. Alone neither are sufficient for trademark registration. However, the combination of "Go Daddy" together is a unique name that is trademarked!
So when choosing names for trademark registration, do not be afraid to use common names together to create a unique name or phrase. As long as your name has not been previously used by another individual or entity, and you are using the name in commerce, trademark registration is feasible.
I hope this information was helpful. If you have any questions, please leave a comment.
Friday, September 26, 2008
Why You Should Hire A Trademark Attorney To File A Trademark Application
Hello!
Welcome Back! Now some of you may think that I am writing this article because I want you to hire me or one of my colleagues. Now of course if you think I might be an awesome attorney, then please contact me. LOL! But this blog is purely to provide valuable information to people who need it. I felt compelled to write this article because many individuals believe that the process to file a trademark application is simply filling out the application online and then Viola!, six months later you have an official trademark registration. Is it that easy? Well maybe about 50% off the time. To be honest, a large portion of my client base are individuals who filed their own trademark application and it was subsequently rejected. Yes rejected. There are numerous reasons the USPTO rejects an application. The most common reasons are:
1. The proposed mark is too similar to a registered trademark.
2. The applicant submitted an insufficient specimen (trademark and/or logos).
3. The appliciant failed to prove the mark is currently being used in commerce.
4. Applicants submit items that should be sent to the US Copyright Office to the USPTO.
4. The applicant missed an all important USPTO deadline.
So what can a trademark attorney do to ensure the likliehood of success in obtaining a registered trademark that most individuals do not do?: They are the following:
1. Perform a comprehensive trademark search to ensure your mark does not infringe on a registered or unregistered mark that has priority rights. Trademark attorneys hire trademark searh companies to do a comprehensive search of your mark. This search will gather any information or trademarks that are similar to your trademark. These companies search the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet. This cost for this type of search starts at $550.00. This may sound steep, but who wants to do all of this research themselves? Remember, there may be an existing trademark that has priority rights over your trademark that is not registered with the USPTO. A trademark that has been used in commerce first in its region has valid trademark rights even if it is not registered. I discussed this concept here. So do not simply rely on the trademarks listed in the USPTO database. It WILL NOT contain all valid existing trademarks that may compete with yours.
2. Analyze the contents of any comprehensive search and give a legal opinion regarding the likliehood of success of your trademark obtaining registration. Once this information is gathered, a trademark attorney will use his or her knowledge of the trademark laws and determine whether: a) there is a competing trademark, 2) whether a competing trademark has priority (1st to use) rights over yours and vice versa, 3) whether you should pursue a trademark dispute, or 4) whether you should choose another trademark.
3. File your application and ensure the application is worded correctly and that you have the correct specimens (evidence you are using the trademark in commerce) for submittal. One of the top reasons trademark applications are rejected is because individuals do not submit the correct specimens. A correct specimen for goods can be a label or a container. A correct specimen for services can be a brochure or advertisement for services. Often individuals simply submit the drawing (logos) or name as the specimen. This is incorrect and your application will be rejected.
4. Make sure you do not miss any deadline for responses to a USPTO action. The USPTO reviews your application and subsequently provides several office actions before the application is offically approved and a registration issued. However, these office actions have very strict response deadlines. If you miss a deadline, your application can be abandoned. What does this mean? You have to start over. Trademark lawyers are very careful about adhering to deadliens. If we don't, guess what? You can sue us for malpractice.
Lastly, many individuals use companies like Legal Zoom to file trademark applications. These companies DO NOT perform comprehensive searches. I repeat they DO NOT perform comprehensive searches. They only check the USPTO database. So you can pay this company around $550 which includes the $325 USPTO filing fee, and cross your fingers. If the applications is rejected because the USPTO did their own research and found a competing right, you are basically out of luck.
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