Archives for October 2020

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.

Trademarks (name + logo + slogan) represent brands. Federal trademarks protect brands. If you discover that another company is infringing your trademark, you can and should take action to enforce your rights.

How should you handle trademark infringement?

1. Learn What You Can About Them

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:

1. What they sell
2. Where they sell it
3. When they first used the brand
4. Whether they have a Federal trademark

2. 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.

Trademark infringement is a complicated Federal legal matter. We can help.

3. 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.

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.

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.

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.

4. Know Your Trademark Rights

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.

5. Get Legal Help to Handle Trademark Infringement

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

Most business owners and entrepreneurs know the importance of a name and logos. They are the cornerstones of most brands. Unfortunately, these owners sometimes overlook a keystone to their brands – catchphrases, slogans, and taglines.

Phases, slogans, and taglines are examples of phrases that can resonate with consumers long after they see (or hear) an advertisement. Sometimes, these phrases can even surpass names and logos. Consider:

• “Just Do It.^®” (Nike)
• “Don’t leave home without it.^®” (American Express)
• “I’m lovin’ it.^®” (McDonald’s)
• “Nationwide is on your side.^®” (Nationwide Insurance)

These phrases show the power of trademarks.

The single best way to protect a trademark is with Federal trademark registration.

They come with important nationwide protections that ensure that no one else can use your phrase. A few reasonable proactive steps will go a long way toward safeguarding and securing your phrase.

Whether you’ve been running a successful business for years, just started a business, are considering launching one, here’s what you need to know:

A Bit About Trademarks and Protecting a Brand

Phrases, like all trademarks, represent brands. They help customers find the products that they like and distinguish them from the competition.

Trademarking your phrase gives you the exclusive right to use it. If you don’t, then your competition can use it or develop one that is really close. Also, only one business can own a brand in each industry. Typically, it’s whoever trademarks it first.

If someone else trademarks your phrase first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand.

Here’s how to start the process to trademark your phrase, slogan, or tagline:

1. Select a strong, protectable phrase.
2. Check the availability of your phrase name as a trademark.
3. Collect your information and decide on a strategy for your Federal trademark application.
4. Prepare and file your new application (correctly).
5. Start using the right trademark symbol with your phrase.

1. Select a strong, protectable phrase.

The key to getting a Federal trademark is to first select a phrase that’s strong in a trademark sense. Trademarks are not created equally. There are different kinds, and some are more effective and easier to protect than others.

The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.

Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.

1. Start by trying to include invented words or words that have no association with your products or services (“Just Do It.^®” for footwear). If that does not work, then…
2. Try words that allude to your products and services (“Don’t leave home without it.^®” for credit card services).
3. Always try to avoid away from using only words that:

• are generic for a product or service;
• are often used in business or industry;
• only describe characteristics and features; or
• are already part of everyday speech.

Read More: The Four Types of Trademarks + Strength

If you don’t know whether your phrase is arbitrary (strong) or descriptive (weaker), you may be better off consulting an experienced trademark attorney.  In any event, knowing which kinds of trademarks are strong important. Otherwise, you could be wasting your time and money.

2. Check the availability with a trademark search for similar marks.

The next step is to determine if your phrase has been trademarked by anyone else. This is because a lot of phrases are already trademarked. So, you may want to run a trademark search of the Federal trademark database to find exact and close matches. It can also be useful to conduct Internet searches.

These searches aren’t as straightforward as inputting your phrase and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.

The objective here is to make sure that your phrase is not similar or easily confused with someone else’s mark. For all of these reasons and others, it’s usually best to have an attorney run your trademark search.

Get customized legal advice and help every step of the way through the registration process. Contact us today.

 

 
3. Collect your information and decide on a strategy for your Federal trademark application.

Applying for a Federal trademark is more than just filling out online forms. That is the easiest part of the process.

The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.

When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls.  Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it.  So, the most successful applicants start the application process with a strategy.

For starters, you’ll need to decide which products/services are included in your application and which ones should be excluded. You’ll also need to figure out the correct filing basis for their application, as well as how you are going to show the USPTO that consumers perceive your phrase as a brand.

If you don’t understand the legal consequences of each of these options, you’re very likely going to get one or more of them wrong, which will impact your brand protection.

Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC, for example. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.

Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.

These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.

4. Prepare and file your trademark application with the United States Patent and Trademark Office (correctly).

Every application starts a Federal legal proceeding, involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.

Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.

Here, it is important to understand that not all applications result in registrations. The USPTO severely limits the types of changes you can make to an application after it is filed. So, mistakes during submission can easily sink an application.

5. Start using your mark and use it with the right trademark symbol.

Using a trademark symbol is an important signal to consumers (and the competition) that your logo represents your brand.

There are three trademark symbols. They are:

• the letters TM
• the letters SM, and
• the letter R in a circle — ®

The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).

The letters SM are a trademark symbol for unregistered service marks (marks for services such as legal services).

The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for Federal trademarks only – after you have a Federal trademark registration.

Read more: All About Trademark Symbols (in Plain English)

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

Nothing represents your business more and sets the stage for all that follows than your company name. They are the cornerstones of most brands. But, how do you safeguard this valuable asset?

That’s where trademarks come in. A Federal trademark provides many nationwide protections and ensures that your brand is exclusively yours. Plus, a few reasonable proactive steps can go a long way toward safeguarding and securing your brand.

Whether you’ve been running a successful business for years, just started a business, are considering launching one, here’s what you need to know:

The single best way to protect a trademark is with Federal trademark registration.

Why Trademark a Company Name?

Company names, like all trademarks, represent brands. They help customers find the products that they like and distinguish them from the competition.

When you trademark a company name, you’re granted the exclusive right to use it. If you don’t, then your competition can use it or one that is really close. Also, only one business can own a brand in each industry. Typically, it’s whoever trademarks it first.

If someone else trademarks a company name first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand. That’s why it’s important to protect your trademarks.

Here’s how to start the process to trademark a company name:

1. Select a strong, protectable name.
2. Check the availability of your company name as a trademark.
3. Collect your information and decide on a strategy for your Federal trademark application.
4. Prepare and file your new application (correctly).
5. Start using the right trademark symbol with your company name.

1. Select a strong, protectable name.

The key to getting a Federal trademark is to first select a name that’s a strong trademark.

Trademarks are not created equally. There are different kinds, and some are more effective and easier to protect than others.

The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.

Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.

1. Start by trying to include an invented word (Exxon^®). If that does not work, then…
2. Try to use a word that has no association with your products or services (Amazon^®). If that does not work, then…
3. Try words that allude to your products and services (Netflix^®).
4. Always try to avoid away from using only words that:

• are generic for a product or service;
• are often used in business or industry;
• only describe characteristics and features; or
• are already part of everyday speech.

Read More: The Four Types of Trademarks + Strength

If you don’t know whether your mark is arbitrary (strong) or descriptive (weaker), you may be better off consulting an experienced trademark attorney.  In any event, knowing which kinds of trademarks are strong important. Otherwise, you could be wasting your time and money.

2. Check the availability with a trademark search for similar marks.

The next step is to determine if your company name has been trademarked by anyone else. So, you may want to run a trademark search of the Federal trademark database to find exact and close matches. It can also be useful to conduct Internet searches.

These searches aren’t as straightforward as inputting your company name and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.

The objective here is to make sure that your company name is not similar or easily confused with someone else’s mark.

For all of these reasons and others, it’s usually best to have an attorney run your trademark search.

Get a customized trademarking strategy for your brand. Contact us today.

3. Collect your information and decide on a strategy for your Federal trademark application.

Applying for a Federal trademark is more than just filling out online forms. That is the easiest part of the process. The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.

When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls.  Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it.  So, the most successful applicants start the application process with a strategy.

For starters, you’ll need to decide:

• what is the best format for your mark – is a composite mark better than standard characters? Will you need a “drawing”?
• which products/services you should include in your application and which ones should be excluded?
• what is the correct filing basis for their application?

If you don’t understand the legal consequences of each of these options, you’re very likely going to get one or more of them wrong, which will impact your brand protection.

Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC, for example. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.

Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.

These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.

4. Prepare and file your trademark application with the United States Patent and Trademark Office (correctly).

Every application starts a Federal legal proceeding, involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.

Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.

Here, it is important to understand that not all applications result in registrations. The USPTO severely limits the types of changes you can make to an application after it is filed. So, mistakes during submission can easily sink an application.

5. Start using your mark and use it with the right trademark symbol.

Using a trademark symbol is an important signal to consumers (and the competition) that your logo represents your brand. There are three trademark symbols. They are:

• the letters TM
• the letters SM, and
• the letter R in a circle — ®

The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).

The letters SM are a trademark symbol for unregistered service marks (marks for services such as legal services).

The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for Federal trademarks only – after you have a Federal trademark registration.

Read more: All About Trademark Symbols (in Plain English)

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

Many believe that Federal trademarks are a DIY project and make the mistake of filing their own applications or worse using a self-directed filing service. This can be a costly mistake because it’s really easy to make a filing mistake that you cannot fix later.

The reason: Federal trademarking is a complex Federal legal matter that involves making dozens of legal decisions and judgment calls – many of which are interrelated. Plus, the U.S. Patent and Trademark Office has too many rules to count.

Consequently, there are literally hundreds of ways your DIY Federal trademark application might be rejected. Nonetheless, self-filed applications are easy to spot because they share many of the same mistakes.

Here are some of the most common traps for DIY Federal trademark applications:

1. You identified the incorrect applicant/owner. You are required to apply in the name of the owner of the trademark. Legally, the owner is the person or entity (e.g., corporation, partnership, LLC) who will be using the mark. Many DIYers make the fatal mistake of using their name, their DBA, or the company owner’s name – instead of the company’s legal name.

2. You ask for too little protection. Your trademark application needlessly includes (1) unregistrable elements; (2) articles such as “the,” and (3) claims to color. All of these extra elements narrow the scope of a Federal trademark.
Relatedly, you include an overly narrow listing of products and/or services in your application.

3. Your mark is too close to another Federal trademark. Your trademark is too close to another Federal trademark. Beware: the USPTO measures similarity based on sight, sound, and meaning, as well as any similarity of products or services. So, “Bob’s Burgers” may be too close to both “Robert’s Fast Food” and “Burgers by Bob”, for example.

4. Someone else has already registered the trademark. The USPTO won’t register your mark if someone else has already registered it.

Your brand is important. Avoid costly mistakes by working with our team.

5. You picked the wrong filing basis. Your trademark application indicates that you are using your trademark, but you either (1) submitted unacceptable/insufficient “specimens” of use; or (2) you only have an “intent” to use your mark for the products or services listed in your application.

6. Your trademark is “merely descriptive.” Brand names that describe a function, a feature, or a characteristic of products or services are rarely registrable. This is the most common rejection made at the USPTO. Too many DIYers don’t understand that the listings of products and services in their applications contribute to this problem but can also avoid/overcome this problem.

7. Overpayment of Government filing fees. You paid all of the USPTO filing fees up front, even for products or services that have no hope of being approved for reasons 1-6 above. The USPTO filing fees are not refundable and can add up quickly. An experienced trademark attorney can help you minimize your risk of overpayment.

Applying to protect your trademark is just not a DIY project. If you file your trademark application yourself, you’ll probably do it wrong. In addition, you’ll be more likely to secure only partial protection and overpay the official fees.

So, do yourself and your business a favor. Hire an experienced trademark attorney. You’ll maximize your chances of success, minimize the risk of overpaying the Government for your trademark, and save yourself time and worry.

Because your brand is worth it.

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