Archives for May 2020

If you plan on being in business for any amount of time, you’ll be building a brand.

Brands are important.

Trademarks represent and protect brands.

Trademarks help customers find the products and services that they like. They also help customers recommend products and services to their friends. Plus, trademarks convey stability, trust, and tap the human preference for visuals.

For all of these reasons, trademarks have value. That is why you need to know how to protect yours.

Trademarks can be protected at three levels – common law, State, and Federal. Each offers very different protections with some significant limitations.

Understanding these differences and limitations shows why Federal trademarks are best.

Common law

These trademark rights do not require registration with any governmental agency. They are very limited because they:

extend only as far as the areas where the trademark is actually used;

do not extend to the Internet; and

are easily trumped by State and Federal trademarks.

State trademarks

These trademark rights are granted by respective States. But, like common law rights, they are limited because they only extend to the borders of a State.

Federal trademarks

Federal trademarks provide nationwide protections along with important legal presumptions like ownership and validity. These protections make enforcing your trademark rights easier and more effective.

Here are just a few ways that Federal trademarks offer superior protection.

They Put the Federal Government to Work for You

The U.S. Patent and Trademark Office will immediately begin rejecting

applications for trademarks that are similar to yours. In fact, the USPTO is legally required to refuse them.

They Come with a Legal Presumption of Ownership in All 50 States

A Federal trademark comes with a nationwide legal presumption of ownership of your trademark, along with an exclusive right to use it and access to Federal courts to protect it.

They Provide Enhanced Protection on Social Media

Social media services like Facebook, Instagram, and Twitter have policies in place to protect brands against abuse – provided that you can establish ownership. A Federal trademark makes establishing ownership a mere formality.

They Provide Enhanced Protection on the Web

When you secure a domain that includes your trademark, all of the legal protections and presumptions that accompany Federal trademarks apply to your web address.

They are Required to Access Amazon’s Brand Registry

The Amazon Brand Registry is an important and powerful brand protection tool. When you enroll, Amazon will look for and stop trademark violations. Amazon’s Brand Registry is limited to Federal trademarks, however.   

Federal Trademarks Make You Stand Out in a Crowd With the ®

Only owners of Federally registered trademarks are legally permitted to use the ® sign. This symbol is an attention grabber, in both the offline and online worlds.

They Reduce Future Trademark Problems

Registration adds your mark to the Federal trademark database, where it will be found by competitors searching for new names. They will have strong incentives to steer far clear of your Federally registered mark or face Federal litigation and money damages.

Trademarks are the foundation of every successful brand. Remember – people have relationships with brands, not products. The single best way to protect your brand is with a Federal trademark registration.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Your brand is WHO you are, WHAT you do, and WHY you do it.

It’s how consumers will first encounter your business.

It’s the common thread throughout your marketing. Your website, business cards, and invoices all reflect it.

That’s why brands are important, especially for small businesses.

Trademarks (name + logo + slogan) represent brands.  Federal trademarks protect brands.

If you discover that another company is infringing your trademark, as a business owner you can and should take action to enforce your rights and protect your brand.

This is how to get started:

Know Your Trademark Rights and Protect Your Brand

A (Federal) trademark gives you the exclusive right to use your name + logo + slogan.

This exclusive right extends to all 50 States.

This exclusive right extends to all trademarks that are “confusingly similar.”

If (1) you have a Federal trademark, (2) the new brand is similar to (or the same as) your trademark, and (3) they started their business after you, then you can take steps to stop them.

Keep reading to see what to do next.

If you don’t have a Federal trademark, you can’t stop them yet. You may still be able to trademark the brand and stop these copycats. Consider talking with an experienced trademark lawyer.

Learn What You Can About Them so You Can Protect Your Brand

The first thing to do is to learn about them. Visit their website and social media pages. Grab screenshots. Take pictures of their products or advertisements.

You’ll want to find out:

• What they sell
• Where they sell it
• When they first used the brand
• Whether they have a Federal trademark

Keep it Off Social Media

You don’t want to post about it on social media. It can get you into legal trouble and won’t help.

We’ve seen defamation lawsuits that started when one company posted an Instagram story about another company stealing their brand.

Handle it offline – away from your customers.

Ask Yourself: Are They Too Close?

You’ll need to weigh whether they are using a trademark that is legally too close to yours. This test can get complex.

Still, they’re probably too similar if they meet these three conditions.

They Sound or Look Similar or Have a Similar Meaning

You’ll want to be broad about what sounds and looks similar.

For example, if the brands share a keyword, they may be too similar

Words like “Inc.” “The” or “And” won’t make a difference. You can ignore them.

You’ll also want to consider what the brands mean. If the brands allude to related feelings or even geographic locations, they may be too similar.

The use of another language won’t make a difference. In the US, hello and “hola,” for example, are treated as the same.

They Sell Similar Products + Services

You’ll want to be broad about what is a similar product or service.

They don’t need to be the same. Even complementary products and services can be “similar” for trademark infringement.

For example, shirts and bags could be too similar because many stores sell both.

They Sell to the Same Types of Customers or Through the Same Outlets

If their products and services can be sold in the same way that you sell yours, then they need to stay further away from your trademarks.

Get Legal Help

If you decide that someone is using a trademark that is too close to yours, contact a trademark lawyer to help you work through your many options.

Most trademark-infringement enforcement strategies start with sending a cease and desist letter addressed to the trademark infringer demanding that they stop infringement. Many times, however, other options are preferable. These include applying for a Federal trademark, sending a reservation of rights letter, or continued monitoring.

In the US, you are responsible for enforcing/protecting your trademark property rights. You can lose your trademark rights if you do not enforce them.

Trademark enforcement is not a DIY project. It involves Federal Statutes, legal analyses, and strategy. Also, you may inadvertently say something that can be used against you.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Federal trademarks offer serious protection for brands. They come with exclusive rights to use and important legal presumptions of ownership and use, for example. So, it makes sense that they are not easy to get. In fact, to register a trademark can be really complicated.  Even most attorneys don’t deal with them!

I have been helping clients register their trademarks and protect their inventions for over 20 years. In that time, I’ve learned how the U.S. Patent and Trademark Office (we call it the “USPTO” for short) really works. I’ve secured over 2500 Federal trademarks and patents.

In this article learn how to register a trademark. We’ll discuss what you’ll need to show the USPTO to succeed. Understand – applying for a Federal trademark starts a complex Federal legal process – regardless of your mark or your business. Still, getting your Federal trademark comes down to showing the U.S. Patent and Trademark Office these four facts:

1. No conflicts. Your trademark is not “likely to be confused” with the marks of other registrations or pending applications.
2. Trademark distinctiveness. Your trademark is sufficiently distinctive to be a brand identifier.
3. Use on commerce. Your trademark is being used in commerce.
4. Capability to distinguish products. Your trademark can serve as a brand identifier and is not prohibited by Federal law.

Here is what all this means for you and your brand.

No conflicts

Your trademark cannot conflict with any registered and active trademarks.  The U.S. Patent and Trademark Office (or “USPTO” for short) says that this is the most common reason to refuse registration a trademark.

Understand that after your application is filed, the USPTO will search the Federal trademark database to look for conflicts between your mark and any registrations When there is a conflict, the USPTO will refuse registration.

Obviously, when your mark is identical to a registered mark, there is probably going to be a conflict. But here is the tricky thing – all that the USPTO needs to find is enough similarity to make confusion “likely.” This means that the USPTO only has to believe that consumer confusion is more likely than not – a very subjective standard. The USPTO bases this decision on (1) similarity between the marks in appearance, sound, or meaning, (2) similarity between the goods/services, and (3) how those goods/services are purchased. This is where a trademark lawyer comes in.

Arguments that you disagree, without much more, will not change an Examiner’s mind. You’ll need to apply the same multi-faceted 12 factor analysis the Examiner is using. A trademark lawyer is far more likely than you to do this effectively.

Trademark distinctiveness

Distinctiveness, in a trademark sense, is a measure of how well a mark identifies the source of a product. The USPTO measures trademark distinctiveness on a continuum and in view of the goods and/or services of an application. The more distinctive your trademark, the stronger it will be, and the easier it will be to get registered.

At the most distinctive end of the continuum are “fanciful” or “arbitrary” marks. “Fanciful” marks are invented words with no dictionary or other known meaning. KODAK, PEPSI, and EXXON are examples of fanciful marks. “Arbitrary” marks are words with actual, dictionary meanings that have no association/relationship with the goods/services of an application. APPLE for computers is an example of an arbitrary mark.

Next on the distinctiveness continuum are “suggestive” trademarks when you register a trademark. “Suggestive” marks require a mental step – imagination, thought, or perception – to reach a conclusion as to the nature of those goods or services of an application. CITIBANK for financial services, GREYHOUND for bus lines, and JAGUAR for automobiles are examples of suggestive marks. If you do not choose a fanciful or arbitrary mark, a suggestive mark is your next best option.

Fanciful, arbitrary, and suggestive marks are the strongest and most easily registrable types of marks. In fact, they so strong that their distinctiveness is considered inherent.

Last on the continuum are “descriptive” trademarks. These marks immediately convey an ingredient, quality, or characteristic of the goods or services of the application. No mental step is required. For example, the mark CREAMY would be merely descriptive for yogurt. The USPTO will refuse registration of a “descriptive” mark unless you can show that the mark has acquired some distinctiveness through extensive use for several years.

An experienced trademark attorney is going to be better than you at judging the distinctiveness of your trademark and locating it on the distinctiveness spectrum.

Use in commerce

To register a trademark, rights are based on use in the marketplace. The USPTO requires that trademark owners actually use their marks before it will issue a federal registration (absent ownership of and reliance upon a foreign registration). So, every trademark applicant must specify a use “basis” for filing. Most U.S. applicants base their application on either:

actual use of the mark in commerce; or a genuine or bona fide intent to use the mark in commerce in the future.

If you have already used your mark in commerce in connection with all the goods/services listed in your application, you may file under the “use-in-commerce” basis.

If you have not yet used the mark but have a bona fide intent to do so in the future, you may file based on that genuine intent. A bona fide intent is sometimes said to be more than a mere idea and less than being market-ready. Applications filed on an “intent-to-use” basis require proof of use before the USPTO will issue a registration certificate.

Lastly, not all use qualifies at the USPTO. The use must be of a type that the U.S. Congress can regulate. This means use with a good or service that crosses state, national, or territorial lines, or that affects commerce crossing such lines (e.g., an Internet business) or that caters to interstate or international customers.

Capability to be a brand identifier

Not every word, name, symbol, or device adopted as a trademark is registrable. Some marks are simply not capable of distinguishing and identifying the source of a product. Others are precluded by Federal law. The following are a few examples:

Ornamentation: The USPTO will refuse registration of the applied-for mark when it is a feature or part of the “dress” of the goods. Such matter does not serve the trademark function of identifying the source of a product.

Deceptive: Marks containing a term that misdescribes the character, quality, function, composition, or use of a product will be refused registration. It is not impermissible for a mark to be technically misdescriptive so long as prospective consumers would not be likely to believe that the misdescription is true. For example, the mark BLACK FLEECE for clothing items would be deceptive while the same mark for cheese would not.

Protected by statute: Federal law reserves the use of certain particular national and international organizations such as Boy Scouts of America and Peace Corps. Also reserved are names, symbols, seals, and medals adopted by the United States Federal government, including agencies. For example, SECRET SERVICE, COAST GUARD, and SMOKEY BEAR are all reserved by the Federal government.

Generic terms: Any term that identifies a type of product instead of the source is not registrable. Aspirin, Jetski, Bubblewrap, and Jacuzzi are examples of generic terms. A generic term can never distinguish a brand because consumers use it to refer to a category of goods/services.

Remember, to register a trademark, a trademark distinguishes a product from the competition.  Only devices (names, logos, colors, catchphrases) that consumers recognize as a brand are protectable trademarks.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Congratulations! You’re the proud owner of a (Federal) trademark! You made a smart business decision to secure the trademark that represents your brand. Now it is time to learn about trademark renewal.

You now have the exclusive right to use it for the products and services that you sell. This means you’re the only one who can use it to represent your brand.

You don’t have to worry about copycats or rebranding. Plus, you have a leg up when it comes to legally protecting your trademarks.

Here is the really good news. A properly maintained Federal trademark may last forever – if you use it and keep it in good standing. If you don’t stay on top of your trademark renewal, someone else can take your trademark.

Here’s what you need to know.

Start Using the Trademark Symbol

You should add the ® symbol to the upper right corner of your mark wherever it is used. This includes on social media and especially your website.

The symbol lets the world know that your brand is protected nationally by Federal law.

It also makes it easier to show that someone intentionally copied your mark.

You should not use any trademark with your corporate identity.

Example: Microsoft Corporation is a corporation in the State of Washington, but Microsoft® is a federally registered brand of software, computer hardware, and cloud services.

Use Your Mark

If you use your trademark to brand a product, then it must appear on the product (e.g., tags or labels), the product packaging, or on a display for the product.

If you use your mark to brand a service, then your mark must be used in the sale or advertising of the service (e.g., a website).

Be Consistent in How You Use It

You’ll need to continue using your trademarks in the exact same way. That means the same exact words, colors, spacing, and punctuation. You’ll also need to use it on the same products or services.

Any alteration in how you use a trademark could hurt your trademark rights.

Keep Using It

Trademark rights come from use in the marketplace. You need to use your trademark to brand the products or services that you sell. Otherwise, you risk losing it.

Also, you need to use your trademark to renew it (see below).

Look for Copycats

As a trademark owner, you need to find and stop copycats. Otherwise, you could lose your trademark rights.

While the U.S. Patent and Trademark Office will prevent others from registering similar marks, it does not get involved with enforcement.

You’ll need to search for similar brands selling similar products or services. The best way to do this is with Internet searches. Some trademark owners set up “Google Alerts” to automate this process.

If you do see a similar brand, for similar products or services, you’ll want to have a trademark law firm prepare and send a trademark cease + desist letter.

Renew on Time

Trademarks may never expire – if you “check-in” with U.S. Patent and Trademark Office at specific times to let them know that you are still using your trademark.

These dates for trademark renewal are listed on your registration certificate and they’re vitally important.

If the documents are not filed by the due dates, your registration will be canceled and cannot be revived or reinstated.

@ Five years

• • You’ll need to file a Declaration of Continued Use. This states that you’re still using your mark. You’ll need to do this to continue your trademark rights.
  • Also, you may want to file a Declaration of Incontestability if you have used your mark continuously and consistently.
  • Incontestability means that your brand is strong and easier to legally protect. It also makes it harder for people to challenge your trademark.

@ Ten years

• • You’ll need to file a Declaration of Continued of Use. Again, this states that you’re still using your mark.
  • You’ll also need to file an Application for a Renewal.
  • This is required to continue using your trademark.

@ Every Ten years thereafter

• • You’ll need to file both a Declaration of Use + an Application for Renewal.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Trademarking your brand is a smart business decision. Knowing how to get the most out of it is just as important.

You are responsible for using and maintaining your trademarks. You want to keep it in good standing at the U.S. Patent and Trademark Office. You’ll also want to take the steps needed to get the most out of it. Here’s how.   

1. Announce Your Registration to the World
2. Start Using the Trademark Symbol
3. Look for Copycats
4. Consider Foreign Trademark Protection
5. Periodically Check New Filings at the U.S. Patent and Trademark Office
6. Keep Your Application Alive
7. Register your mark with U.S. Customs and Border Protection  

Announce Your Registration to the World

Trademark registration conveys stability, scale, and, most importantly, credibility. Don’t keep it a secret! Plus, you’ve worked hard to register your trademark – celebrate it. Publicize your achievement by:

• Posting on social media sites like Facebook®, Instagram®, LinkedIn®, and Twitter®, and;
• Writing a blog post;
• Issuing a press release;
• Sending out an email to your subscribers; and
• Mentioning your award in your newsletter. Creating awareness about your trademark registration very well might result in a bump in sales too!

Start Using the Trademark Symbol

You should add the ® symbol to the upper right corner of your mark wherever it is used. This includes on social media and especially your website. This lets the world know that your brand is protected nationally by Federal law.

It also makes it easier to show that someone intentionally copied your mark and get money damages.

Beware: Only Federal trademarks that have been granted an official registration certificate by the USPTO should use the ®. 

Trademark Protection Means Looking for Copycats

As a trademark owner, you need to find and stop copycats. Otherwise, you could lose your trademark rights. While the U.S. Patent and Trademark Office will prevent others from registering similar marks, it does not get involved with enforcement.

You’ll need to search for trademark infringement by checking for similar brands selling like products or services.

The best way to do this is with Internet searches. Some trademark owners set up “Google Alerts” to automate this process.

If you do see a similar brand, for similar products or services, you’ll want to have a trademark law firm prepare and send a trademark cease + desist letter.

Consider Foreign Trademark Protection

If you do business abroad, you can use your U.S. registration as a basis to obtain a registration in foreign countries. Consider Canada, China, the European Union, and Japan.

Periodically Check New Filings at the U.S. Patent and Trademark Office

The trademarking process is not perfect. The USPTO can make a mistake and approve a trademark that is too close to yours. If you discover a mistake, you have the option to oppose the registration of the new trademark. Talk with your trademark attorney.Often, applicants retreat at the first notice of an intent to oppose. 

Keep Your Trademark Alive

Trademarks may never expire – if you “check-in” with U.S. Patent and Trademark Office at specific times to let them know that you are still using your trademark.These dates are listed on your registration certificate.

• The first renewal is due between the 5th and 6th year after the date of registration;
• The second renewal is due between the 9th and 10th year after registration; and
• The third and all subsequent renewals are due every ten years thereafter. These dates are important. If the documents are not filed timely, your registration will be canceled and cannot be revived or reinstated.

Watch Out for Scammers

There are private companies that try to impersonate the U.S. Patent and Trademark Office to scam people into paying fees to them. They often use names and terms like “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency” to make their solicitations look like official government documents. These solicitations are scams and have no connection with the USPTO. Unfortunately, this practice continues after registration. So, be sure to read trademark-related communications carefully before deciding to pay.

All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by email, specifically from the domain “@uspto.gov.” 

Register your mark with U.S. Customs and Border Protection (CBP)

If you are worried about cheap and/or inferior quality knock-offs hurting your brand, you can ask the CBP, a part of the Department of Homeland Security, to stop the importation of goods that infringe your Federal trademark. The CBP stops over $1 billion of infringing goods every year. The top seized commodities included apparel, accessories, consumer electronics, and pharmaceuticals.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com