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.
Thursday, May 28, 2009
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.
Monday, May 4, 2009
Why I Should Hire a Trademark Lawyer? Comprehensive Search Resources
Hello!
In my previous post, I discussed the number one pitfall individuals make when submitting a trademark application to the USPTO, which is not performing a comprehensive search. In this post, I will explain what a comprehensive search entails and provide a list of resources to conduct the search.
A comprehensive search will gather any information or trademarks that are similar to your trademark. This type of search will include:
A search of 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.
In addition, if you plan to sell your product or service in another country, you can also obtain an international search.
The cost for this type of search for a name only starts at $550.00. However if you want a search performed for a logo and name, the cost is around $950.00. International Searches do require much larger fees.
There are several companies that perform comprehensive searches. Here are a few:
CT Corsearch.
CompuMark
4 Trademark.com
I hope this information was helpful. Please leave a comment if you have any questions.
In my previous post, I discussed the number one pitfall individuals make when submitting a trademark application to the USPTO, which is not performing a comprehensive search. In this post, I will explain what a comprehensive search entails and provide a list of resources to conduct the search.
A comprehensive search will gather any information or trademarks that are similar to your trademark. This type of search will include:
A search of 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.
In addition, if you plan to sell your product or service in another country, you can also obtain an international search.
The cost for this type of search for a name only starts at $550.00. However if you want a search performed for a logo and name, the cost is around $950.00. International Searches do require much larger fees.
There are several companies that perform comprehensive searches. Here are a few:
CT Corsearch.
CompuMark
4 Trademark.com
I hope this information was helpful. Please leave a comment if you have any questions.
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, April 6, 2009
New Federal Trade Commission Proposed Rules on Blogger Product Endorsements: What brands and bloggers need to know
Hello!
Welcome Back! The Federal Trade Commission recently released proposed changes to their Consumer Product Testimonial and Endorsement Rules. They are:
An advertisement containing a consumer endorsement about the performance of an advertised product or service must reflect the actual performance of the product or service. Essentially the advertiser must have sufficient evidence, if applicable, competent and scientific evidence, to verify that the consumer endorsement is correct. Sec. 255.2(a)
In addition, the consumer endorsement must be representative of the results consumers would generally achieve. The endorsement can not be an atypical result. Advertisers must also have sufficient evidence to support general results.
These proposed changes do not apply to highly subjective testimonials for certain products such as movies, games, or restaurants. But if the advertiser is paying the consumer endorser to endorse the product, then the above rules do apply.
Most importantly, if an advertiser is paying a consumer to endorse a product with cash or free products, then the advertiser and the consumer must disclose the financial relationship. If not, both advertiser and consumer may be held liable for making false statements.
HOW DOES THESE RULES AFFECT BLOGGERS AND ADVERTISERS IN NEW MEDIA?
In the new proposed rules, The Federal Trade Commission also addressed advertising in new media (Web 2.0). Essentially, if an advertiser pays a blogger to write a review endorsing a product or service, the advertiser and the blogger must disclose the financial relationship. In addition, both blogger and advertiser both will be liable for any false or unsubstantiated claims regarding results of products or services.
WHAT CAN ADVERTISERS AND BLOGGERS DO TO AVOID LIABILITY?
1. When using bloggers to endorse product or services, advertisers should make certain that their products do what they claim. Advertisers should extensively test products, run trials, and document evidence that substantiate results for most users of the product or service.
2. Advertisers should provide data to bloggers that evidence typical results for most individuals. Advertisers should stress to bloggers that if the product does not produce the desired results as documented, do not write a favorable review.
3. Advertiser should include disclaimers on consumer endorsements that state that results are typical of most individuals using the products. However, if a consumer achieves an unfavorable result, it is atypical and may be based on a variety of personal factors unknown to the advertisers.
4. When writing a favorable review or endorsement of a product, bloggers should always disclose they received the product for free or was paid to write the review.
5. Bloggers should always give their true opinion of the product whether paid or not.
6. Bloggers should post any product disclaimers and company trials or evidence substantiating their review of the product.
Although the proposed rules have yet to be adopted, I think the above tips are great practices for advertisers and bloggers. The Commission may not adopt all of the rules, but considering the explosion of new media, regulation is inevitable.
I welcome your thoughts!
Welcome Back! The Federal Trade Commission recently released proposed changes to their Consumer Product Testimonial and Endorsement Rules. They are:
An advertisement containing a consumer endorsement about the performance of an advertised product or service must reflect the actual performance of the product or service. Essentially the advertiser must have sufficient evidence, if applicable, competent and scientific evidence, to verify that the consumer endorsement is correct. Sec. 255.2(a)
In addition, the consumer endorsement must be representative of the results consumers would generally achieve. The endorsement can not be an atypical result. Advertisers must also have sufficient evidence to support general results.
These proposed changes do not apply to highly subjective testimonials for certain products such as movies, games, or restaurants. But if the advertiser is paying the consumer endorser to endorse the product, then the above rules do apply.
Most importantly, if an advertiser is paying a consumer to endorse a product with cash or free products, then the advertiser and the consumer must disclose the financial relationship. If not, both advertiser and consumer may be held liable for making false statements.
HOW DOES THESE RULES AFFECT BLOGGERS AND ADVERTISERS IN NEW MEDIA?
In the new proposed rules, The Federal Trade Commission also addressed advertising in new media (Web 2.0). Essentially, if an advertiser pays a blogger to write a review endorsing a product or service, the advertiser and the blogger must disclose the financial relationship. In addition, both blogger and advertiser both will be liable for any false or unsubstantiated claims regarding results of products or services.
WHAT CAN ADVERTISERS AND BLOGGERS DO TO AVOID LIABILITY?
1. When using bloggers to endorse product or services, advertisers should make certain that their products do what they claim. Advertisers should extensively test products, run trials, and document evidence that substantiate results for most users of the product or service.
2. Advertisers should provide data to bloggers that evidence typical results for most individuals. Advertisers should stress to bloggers that if the product does not produce the desired results as documented, do not write a favorable review.
3. Advertiser should include disclaimers on consumer endorsements that state that results are typical of most individuals using the products. However, if a consumer achieves an unfavorable result, it is atypical and may be based on a variety of personal factors unknown to the advertisers.
4. When writing a favorable review or endorsement of a product, bloggers should always disclose they received the product for free or was paid to write the review.
5. Bloggers should always give their true opinion of the product whether paid or not.
6. Bloggers should post any product disclaimers and company trials or evidence substantiating their review of the product.
Although the proposed rules have yet to be adopted, I think the above tips are great practices for advertisers and bloggers. The Commission may not adopt all of the rules, but considering the explosion of new media, regulation is inevitable.
I welcome your thoughts!
Thursday, March 26, 2009
Can An Individual Trademark Their Legal Name?
Hello!
Since I have been practicing trademark law, individuals always ask me if they can trademark their legal names. This particularly becomes an issue when the individual has developed a reputation as a recognized leader in their field; earns a salary from speaking engagements; writes published material; is a recognized inventor, or is a celebrity.
The trademark laws state that common first and last names can be trademarked if they are distinctive, i.e, developed a secondary meaning; or used to identify a source of goods, services, or talent associated with the individual. Lastly, the goods, services, or talent must be sold in commerce.
I will use the name Bill Gates as an example.
How can a common name like Bill Gates become distinctive? As stated above, a common name acquires distinctiveness if it develops a secondary meaning. When someone sees or hears the name Bill Gates they automatically think the inventor of the computer operating system, Windows. Thus Bill Gates' name has developed a secondary meaning, i.e. inventor of Windows. In addition, the name Bill Gates is associated with the origination of the product Windows and Microsoft Software. Lastly, Windows and Microsoft are sold in commerce in the U.S. and around the world. As a result, Bill Gates is a name that can be trademarked and protected from use by other individuals for commercial gain.
So when wondering if you can trademark your legal name. Consider these factors?
Have you become famous in your field?
Do you gain an income from the use of your name?
When people see or here your name, do they automatically think of a product, service or talent you offer?
If so, I would recommend that you hire a trademark attorney to possibly trademark your name. In addition, I would suggest you register your name as a domain name asap!
Since I have been practicing trademark law, individuals always ask me if they can trademark their legal names. This particularly becomes an issue when the individual has developed a reputation as a recognized leader in their field; earns a salary from speaking engagements; writes published material; is a recognized inventor, or is a celebrity.
The trademark laws state that common first and last names can be trademarked if they are distinctive, i.e, developed a secondary meaning; or used to identify a source of goods, services, or talent associated with the individual. Lastly, the goods, services, or talent must be sold in commerce.
I will use the name Bill Gates as an example.
How can a common name like Bill Gates become distinctive? As stated above, a common name acquires distinctiveness if it develops a secondary meaning. When someone sees or hears the name Bill Gates they automatically think the inventor of the computer operating system, Windows. Thus Bill Gates' name has developed a secondary meaning, i.e. inventor of Windows. In addition, the name Bill Gates is associated with the origination of the product Windows and Microsoft Software. Lastly, Windows and Microsoft are sold in commerce in the U.S. and around the world. As a result, Bill Gates is a name that can be trademarked and protected from use by other individuals for commercial gain.
So when wondering if you can trademark your legal name. Consider these factors?
Have you become famous in your field?
Do you gain an income from the use of your name?
When people see or here your name, do they automatically think of a product, service or talent you offer?
If so, I would recommend that you hire a trademark attorney to possibly trademark your name. In addition, I would suggest you register your name as a domain name asap!
Tuesday, March 17, 2009
When Choosing a Business Name Also Perform a Trademark Search!
Hello!
When choosing to go into business, there are several imperative tasks you must accomplish to ensure you are legally compliant. They are:
1. legally organize your business with the Secretary of State's Office;
2. obtain a valid business license;
3. obtain a federal employee identification number and if needed a sales tax number;
4. claim and obtain a trade name (if needed);
5. claim and apply for a trademark
However, most new business owners never consider claiming and applying for a trademark until it becomes a necessity or someone else asserts claim to their trademark. For this very reason, I advise my client to:
1. do a preliminary search to ensure that a trademark right has not been claimed in the company's business name;
2. after a trademark search has been completed, and the business name appears free from trademark claims, immediately apply for state and federal trademarks.
In my legal opinion, it is imperative to perform a trademark search as soon as you choose a company name. Why? If you choose a name that already has priority trademark rights, and you have spent considerable funds establishing and growing the business, you may have to change your name. Ouch! In addition, if no trademark rights have been asserted in your company name, you would want to claim ownership of the trademark. Very often people tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!
A preliminary search on Google will cost you $0. However, to ensure you are not infringing another trademark owner's rights, a more comprehensive search can be done for $550. In my opinion, $550 is a small price to pay for a piece of mind.
I welcome your thoughts!
When choosing to go into business, there are several imperative tasks you must accomplish to ensure you are legally compliant. They are:
1. legally organize your business with the Secretary of State's Office;
2. obtain a valid business license;
3. obtain a federal employee identification number and if needed a sales tax number;
4. claim and obtain a trade name (if needed);
5. claim and apply for a trademark
However, most new business owners never consider claiming and applying for a trademark until it becomes a necessity or someone else asserts claim to their trademark. For this very reason, I advise my client to:
1. do a preliminary search to ensure that a trademark right has not been claimed in the company's business name;
2. after a trademark search has been completed, and the business name appears free from trademark claims, immediately apply for state and federal trademarks.
In my legal opinion, it is imperative to perform a trademark search as soon as you choose a company name. Why? If you choose a name that already has priority trademark rights, and you have spent considerable funds establishing and growing the business, you may have to change your name. Ouch! In addition, if no trademark rights have been asserted in your company name, you would want to claim ownership of the trademark. Very often people tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!
A preliminary search on Google will cost you $0. However, to ensure you are not infringing another trademark owner's rights, a more comprehensive search can be done for $550. In my opinion, $550 is a small price to pay for a piece of mind.
I welcome your thoughts!
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