The Trademark Information Network

Awhile back the USPTO launched a media component to their trademark page, namely, the Trademark Information Network. From this page you can watch a number of different videos that discuss the basics of trademarks and all the way up to post-registration issues.

Have you watched any? What did you think?

I'll devote some posts to watching these videos & provide a critique/reaction to each one.

Election Trademarks 2012

As discussed before any time there's an event that stirs the nation trademark applications follow. Nowhere is this more obvious than during an election season.

Not surprisingly, most of the presidential-themed filings revolve around Obama. And even less surprisingly, the USPTO is refusing registration. It is assumed that most of these applicants are in no way affiliated with the famous men mentioned so they will all likely receive the following message:

"The examining attorney refuses registration because the mark consists of or comprises matter which may falsely suggest a connection with the individual..." 

Let's take a look at a few...

On January 21, The Gervasio Group filed for It's Rmoney! Vote Romney! for 4 different classes. Since the applicant filed a TEAS PLUS form that means this filing cost $1100. Eesh, ouch. I'm not finding much about this company other than their Nevada filing so who knows? Maybe they are affiliated with Romney but I'm placing my bets on that they'll be getting an Office Action refusal.

A few days later, Daniel Sladek filed for No Newt is Good Newt for 2 different classes. First, I'm loving the connection to Gary Gnu that's implied in this mark. Second, I'm afraid Mr. Sladek is also going to receive a "false connection" refusal.

Two applicants (out of many!) that are familiar with that dreaded response from the USPTO are You Can Say What You Want About Obama, But He Got Osama and Ron Paul Speaks the Truth.

So I think the overall lesson here is that if you are not somehow DIRECTLY affiliated (i.e. you have permission) with a famous person, please think twice (and thrice and again) before filing for a trademark.

Friday Fun Day!

Rather than devote every post to some legal-y aspect of trademarks, I thought it'd be fun to devote Fridays to the lighter side of the trademark world. So...

Welcome to Friday Fun Day!

Today's post is dedicated to that fun-loving bunch - Hipsters!

Okay, so they've been skewered to death, yes, but still hipsters are everywhere (I live in Portland OR, trust me). So let's embrace this subculture & see what it looks like when hipsters and trademarks collide.

Easily, my favorite hipster-related trademark has gotta be Dads are the Original Hipsters. Check out the blog here though be forewarned - you'll easily get lost in the images of flannel-wearing, beard-having, bike-riding dads and the funny, funny commentary.

Here's a fellow who has fully embraced the moniker - Harry the Hipster! Naturally his blog focuses on music and the logo he's thinking about going with is...what else, a mustache! Kudos to you Harry for flinging yourself in wholeheartedly!

What are your favorite hipster-related brands, blogs, funny places?

What Do I Do If...

someone is infringing on my trademark?

Let's assume you've taken our advice to have comprehensive research conducted every 2-3 years and lo and behold, someone is infringing on your mark!

While, yes, it can be maddening to see someone using your good name regardless if done intentionally or on accident (though the intentional misuse is certainly far more annoying). 

However, check your emotions at the door. Most likely, this company is blissfully ignorant of your trademark and is using it in good faith (i.e. assuming that they have every right to the name). You were savvy enough to have comprehensive research conducted before you filed; others may not be as up to speed as you.

That being said, you'll still have to decide what to do next.

1) Do your homework. This company popped up in the research but you'll want to dig a bit more. Doing all of this BEFORE calling an attorney will save you time and money. Plus you'll be educated in case this happens again.

If they have a pending trademark application you'll have their Serial Number and can check their filing here. Go to the Documents tab. Links to click on include:

     * Application - Copy down the contact info, including their attorney. Note any first use dates.

     * Specimen - If they filed as in use, there should be a specimen. Copy & paste this into the file you're creating.

     * Offc Action Outgoing - If you see this link that means the USPTO has an issue with their filing, one of which may very well be a refusal based on your prior filing. 

If the company popped up in the Common-Law research then finding out more info may be a bit more difficult, though certainly not impossible. The research will show you their web site, address, and/or phone number. Cull as much information as you can from these sources. Start with a web search if you don't already have a web site - use the name, reverse address, phone number, etc. to try to locate a site. Information to gather includes:

     * Owner Information including phone numbers, addresses, owner names, etc.

     * Start Date - you can typically find this information on a site's About Us page. If there is no web site check the records provided. An incorporation or fictitious filing record will contain a date.

     * Trade Area - again, check the About Us page but also look at Locations, Services, etc. If there is no web site this may be a bit trickier to determine. 

We offer a competitive check service you may want to consider if you're finding this process difficult. 

We interrupt this broadcast to bring you this message --> Do NOT call them about their infringement directly. Absolutely resist the urge to take matters into your own hands. 

2) Once you've got yourself a hefty file on the infringing company, read it again. Now ask yourself some important questions:

     * Am I going to lose customers to this company? Is it reasonable for people to confuse me with them and vice versa?

     * Do our trade areas cross? Am I only selling on the West Coast with no plans to expand and they're only selling in one state, county, city on the East Coast? Do I want to sell in the areas that they're in even if I'm not yet doing so?

     * Has this been willful infringement? Have I already lost sales and customers to them? (If you're answering yes to either question then you'll want to gather evidence that shows that)

3) Call a trademark attorney. Even if the best case scenario exists (the USPTO is already in the midst of rejecting their application), you will still want to seek that legal advice. You've done your homework, asked and answered some determining questions - now you're ready to take all of that information to a trademark attorney to decide your next step.

The question of what that next step is a tricky one; check out this great article for more on that subject.

What Do I Do If...

someone wants to sue me, sue me? 

Eek! If you're asking yourself this question, you likely received a very scary letter demanding that you cease and desist the use of your name. 

First, take a breath! Yes, this can be a very harrowing experience but there are steps you can take to maneuver through this.

1) Resist the urge to contact the company or their attorney directly. Actually, don't just resist, DO NOT DO IT.

2) Carefully read through the cease and desist. Highlight the exact complaint(s) being made against you. 

3) Research any terminology as well as any highlighted portions of the letter. Scour the internet and the library to educate yourself as much as possible. Of course, you're welcome to give us a ring and we can walk you through the different meanings and terms. Arm yourself with as much information as possible because that's going to make the next step that much easier (and cheaper).

4) Call a trademark attorney. Yes, you will have to spend money on an attorney because you must take this cease and desist seriously. We have a cadre of attorneys we'd be happy to recommend.

5) Make up your own mind. The trademark attorney is going to give you options but the ultimate decision is yours. 

An anonymous former client wrote a great post about this on Tony Wright's blog. It should be noted that this client used us AFTER this experience was over. His post really hones in on why comprehensive research is so needed BEFORE you file for a mark.

Tomorrow's post will be the flip-side - what if you need to sue someone who is infringing on your mark?

Protect Your Mark, Part Two

Yesterday's post was about recording your trademark with Customs, which will prevent the importation of infringing goods. However, you'll want to be sure to take the necessary steps to protect your mark within the U.S. as well.

Straight from the horse's mouth: "You are responsible for enforcing your rights if you receive a registration, because the USPTO does not 'police' the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark." 

Ok, so what does this actually mean? Since the USPTO will not police the use of marks it's going to be up to you be your own trademark cop. This means having that comprehensive research done every 2-3 years. Now this is going to be a whole different mind-set from the first time this work was done. Instead of looking to see if your mark is infringing on others you'll now be looking for those that may be infringing upon you. 

The rationale in determining if marks are infringing upon you is going to be the same that was used to decide if your new name might be infringing on others.

Protect Your Mark, Part One

One of the many advantages to owning a Federal trademark on the Principal Register is the ability to record your mark with U.S. Customs & Border Protection (CBP). Why is this important? "CBP officers monitor imports to prevent the importation of goods bearing infringing marks..."

As of October 2005, they've made it very easy to do so with electronic filing, which you can access here.

The fee is $190 per International Class and must be renewed with CBP at the same time you renew with the USPTO. There is one typo on that last link; USPTO filings are for 10 years, not 20.