COVID-19 and Your Trademark

The coronavirus has penetrated nearly every aspect of our lives and the world of trademarks is not immune.

You can read the entirety of the USPTO’s message here: https://www.uspto.gov/coronavirus

Practically speaking, the pandemic shouldn’t affect the average trademark application filer. While all of the USPTO offices are closed to the public, employees are still going to work. “Unless otherwise notified, USPTO operations will continue without interruption. Patent and trademark application deadlines and other deadlines are not extended.”

Now when it comes to fees, the only fees being waived, as of now, relate to the petitions.

So, if you have an ABANDONED application OR a CANCELLED/EXPIRED registration and the failure to respond was related to the COVID-19 outbreak, “the USPTO will waive the petition fee.”

“If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired.”

“In all cases, the petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.”

You can read the entire notice here: https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

Now, there are NO waiver or extensions of dates or requirements for the following:

“(1) the 36-month period set forth in 15 U.S.C. § 105l(d) within which a statement of use must be filed and the associated fee(s);” aka EXTENSIONS & the STATEMENT OF USE

“(2) the periods set forth in 15 U.S.C. §§ 1058, 114 l(k) for filing affidavits of continued use or excusable nonuse and the associated fee(s);” aka the Section 8

“(3) the period set forth in 15 U.S.C. § 1059 for filing a renewal and the associated fee(s);” aka the Section 9

“(4) the periods set forth in 15 U.S.C. §§ 1063 and 1064 for filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board” aka if this applies to you, an attorney is helping you

Now with anything related to the coronavirus, this is subject to change at a moment’s notice. If you’re not sure if any of this applies to your unique situation, give us a ring at 800-776-0530 or email us staff at tmexpress dot com

LeBron James & A Tale of Two Taco Tuesday Trademarks

Photo by Christine Siracusa on Unsplash

It may not be the best of times ahead for LeBron James’ recent trademark filing for Taco Tuesday.

On August 15, King James’ company LBJ Trademarks, LLC has filed for a Federal trademark for “Taco Tuesday” within four different classifications of goods and services. Looks like there’s a plan in the works for a podcast, “downloadable audio/visual works” as well as “a website featuring non-downloadable videos, and social media posts in the field of sports, entertainment, current events and popular culture.”

There’s been some public debate about whether or not a trademark is even possible for that phrase. But that’s already been decided and the answer was, yes. Taco John’s filed for Taco Tuesday for restaurant services in 1989 and has maintained the registration since then. They’ve even made some waves sending out cease and desist letters “for over two decades.”

But that’s not the potential hiccup for James’ new filing. Research of the USPTO Trademark database shows that there’s a registered mark out there that could prove to be problematic.

There are some services listed that could conflict with an already registered trademark, Techno Taco Tuesday. LeBron James’ trademark also filed for “advertising and marketing services…;” however, MNTRA Entertainment LLC of Las Vegas has had Techno Taco Tuesday trademarked since June 26, 2018 for “advertising, marketing and promotion services” among other related services. Their first use date for these services is May 20, 2014.

All of this could prove to be an issue for the basketball player’s filing in that (1) the marks are similar in Sound & Appearance, (2) the International Classification is the same, 35, (3) the Services are related, and (4) MNTRA’s usage has been in use for 5+ years whereas James’ filing was an Intent to Use, meaning use is not yet being claimed.

In fact, the USPTO has already refused two other Taco Tuesday marks (same owner) because of Techno Taco Tuesday’s registration. Here’s what they had to say:

“In this case, applicant’s mark TACO TUESDAY is confusingly similar to the mark TECHNO TACO TUESDAY in Registration No. 5505122. Specifically, TACO TUESDAY in applicant’s mark is highly similar in sound and appearance to the TACO TUESDAY in registrant’s mark in Registration No. 5505122…

Moreover, the applicant’s mark TACO TUESDAY is wholly encompassed within the registrant’s mark TECHNO TACO TUESDAY in Registration No. 5505122, thus, purchasers are likely to believe that registrant’s mark merely identifies an additional line of advertising, marketing and promotional services. Specifically, purchasers are likely to believe that the mark TECHNO TACO TUESDAY in Registration No. 5505122 identifies a new line of advertising, marketing and promotional services offered under the TACO TUESDAY line of advertising and promotional services. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d)…

In summary, because of the contemporaneous use of the distinctive phrase TACO TUESDAY, it follows that purchasers are likely to believe that the marks identify the same source for advertising and promotional services and advertising, marketing and promotional services. Thus, the marks are confusingly similar.”

The applicant for Taco Tuesday didn’t reply to the refusals in a timely manner so it remains to be seen if there’s a persuasive enough argument out there for the USPTO. And given this precedence, it seems fairly likely that James’ filing should receive a similar refusal for the advertising related services.

Comprehensive trademark research will make you aware of any potential problems before you file so you can make an informed decision about your brand.

Trademark 101: State Trademark or Federal Trademark?

Now that you know what a trademark is, what a trademark isn’t, and that you should get a trademark, let’s explore if a State trademark or Federal trademark is most appropriate for your needs.

For the USA, trademarks can be obtained either at the State level or the Federal level. So, which do you need? I’ll explain both and that’ll give you a clearer picture as where to go from here.

First and foremost, a State trademark gives you trademark protection for that specific state whereas a Federal trademark gives you trademark protection nationwide. Simple enough, yes? But, which is the right trademark for your needs?

1)      Are you actively in business?

2)      Are you only doing business in one city or county or just statewide?

If you answered yes to both, then exploring a State trademark is your next step. Here are some advantages to a State trademark:

·         The right to expand statewide. The name will be waiting for you in other metros.

·         If another mark is infringing upon yours within the state, you’ll have access to State courts.

·         Other entities will much more readily accept your trademark and first use common law rights when you have a registered State trademark.

·         Future Federal trademarks will not be able to be used commercially anywhere in your State, thus giving you a strategic advantage against larger competitors.

While a State trademark certainly has its advantages, the increase in Federal filings over the years shows the influence of the internet and the wide reach possible for even the smallest of businesses. So, first, let’s make sure you can even qualify for a Federal trademark.

1)      Are you currently in business in at least 2 states and/or between the USA & any other country?

2)      If you’re not yet in business or in business in only one state, do you have plans to expand to another state or states or other countries?

Before you answer yes or no, it’s important to define what being “in business” actually means in respect to the trademark world. To qualify for a Federal trademark, the mark must be in use in interstate commerce. “For goods (i.e. products), "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "Interstate commerce" involves offering a service to those in another state or rendering a service that affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).”

So, if you answered yes to either of those questions and your business is truly involved in either interstate, “territorial (between the United States and a territory of the United States), (or) foreign commerce (between the United States and a foreign country),” then exploring a Federal trademark is the way to go.

Still not sure or have other questions, please leave a comment or email me shannon at tmexpress dot com

Trademark 101: Should You Trademark?

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Now that we know what a trademark is and is not, let’s dive into the next logical question: should you trademark?

The easiest way to answer this question is to look at your business and your plans for it.

-          Is the name, logo, or slogan an integral part of your business?

-          Are you doing business on a statewide or nationwide or international level? If you’re only doing business citywide or countywide, do you see potential for geographical growth?

-          Would another business in your industry using the same or similar name hurt your business? In other words, is it possible you’d lose customers if someone had the same or similar name in your industry?

If you answered yes to any of the above then exploring a trademark is the way to go.

Here’s what a US Federal trademark gives you:

·         A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);

·         Public notice of your claim of ownership of the mark;

·         Listing in the USPTO’s online databases;

·         The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods; • The right to use the federal registration symbol “® ”;

·         The ability to bring an action concerning the mark in federal court; and

·         The use of the U.S. registration as a basis to obtain registration in foreign countries

Pretty nice perks, huh? If you’re still not sure if a trademark is right for you, please leave me a comment or send me an email shannon at tmexpress dot com

Trademark 101: What Isn’t a Trademark?

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Yesterday’s post was all about what a trademark is so today we’re going to talk about what a trademark is not. Knowing both sides of that coin will give you a clear idea if a trademark is right for you or not.

Let’s use yesterday’s examples as a jumping off point:

·         PEACE is the name of your new clothing line and your logo is the peace sign. Both of these things appear on the tags that are attached to the clothing items. You have a variety of designs and sayings that appear on the front of your clothing items, e.g. the front of a t-shirt.

·         LOVE is the name of your daycare services. Your slogan, Love blooms here, appears on the web site, the brochures for new parents, the signage inside & outside of the facility. There are also multiple heart designs, created by you, used in your advertisements.

·         HAPPINESS is the name you use for your invention, a new kind of food processor. You have stacks & stacks of technical documents explaining how your invention works and every page has the name at the top.

	POSSIBLE TRADEMARKS:	NOT A TRADEMARK:
PEACE	Name & heart logo as shown on the tags	Designs & sayings on the front of the clothing
LOVE	Name; slogan since it identifies the services and is used in the offering of those services	Multiple heart designs
HAPPINESS	Name of the food processor	Technical documents

So why are those items not trademarks? The main reason is that none of them identify the source (i.e. the origin) of the goods/services. Let’s do the breakdown explanation you all know by now that I love.

PEACE has a number of designs and sayings that appear on the clothing items, e.g. the front of a t-shirt. These items do not identify the clothing brand itself. They are merely decorative or ornamental.

LOVE uses a bunch of unique heart designs in their advertisements – billboards, leaflets, newspaper ads, etc. – but these designs are not used on the web site, the signage, etc. In other words, clients wouldn’t refer to these heart designs when looking for this business.

-          These designs may be eligible for copyright protection. We’ll get into that area of intellectual property at a later day.

HAPPINESS is the name at the top of the technical documents, which is not the good to be sold (i.e. the food processor) but rather is the technical explanation of how the good works. If you’re looking for a food processor, you’re not going to look for the technical mumbo-jumbo.

-          These technical documents would be part of your patent application. Again, we’ll explore that another day.

I hope this quick primer helps explain what a trademark is AND helps you decide if going the trademark route is right for you.

And if you’re still not sure, leave a comment or drop me a line – shannon at tmexpress dot com

Trademark 101: What is a Trademark?

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Welcome to the first day of class! Before we get into the nitty gritty of trademarks, let’s go back to the beginning. And the beginning of the beginning is defining what a trademark is and what a trademark is not.

Here’s what the USPTO says: “A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”

So, that’s clear, right? Mmhm, thought so. Let’s simplify this a bit.

First things first, we’re going to use the word trademark regardless if we’re talking about a business that sells products (i.e. goods) or services. Keep that in mind please.

Simply put, a trademark protects names, logos, or a combination thereof that are used for goods and/or services. Let’s break that down even further using examples:

·         PEACE is the name of your new clothing line and your logo is the peace sign. Both of these things appear on the tags that are attached to the clothing items. You have a variety of designs and sayings that appear on the front of your clothing items, e.g. the front of a t-shirt.

·         LOVE is the name of your daycare services. Your slogan, Love blooms here, appears on the web site, the brochures for new parents, the signage inside & outside of the facility. There are also multiple heart designs, created by you, used in your advertisements and on t-shirts worn by staff.

·         HAPPINESS is the name you use for your invention, a new kind of food processor. You have stacks & stacks of technical documents explaining how your invention works and every page has the name at the top.

What do you think could be a trademark? What isn’t?

	POSSIBLE TRADEMARKS:	NOT A TRADEMARK:
PEACE	Name & heart logo as shown on the tags	Designs & sayings on the front of the clothing
LOVE	Name; slogan since it identifies the services and is used in the offering of those services	Multiple heart designs
HAPPINESS	Name of the food processor	Technical documents

As you can see, the common denominator for those possible trademarks is that (1) they are names or logos or slogans and (2) are used to identify the source of the products (i.e. goods) and services. This last point is often a sticky wicket for folks. Let’s break these examples down even further to differentiate the source from the goods/services created.

PEACE and the logo identify the source (the clothing line) of the goods (the individual clothing items with the designs & sayings on them)

LOVE and the slogan identify the source (the daycare) of the services. In other words, that’s the name & slogan of the business.

HAPPINESS identifies the source of the tangible good (the food processor). This is the name that will be on the product itself, the tags, labels, packaging, etc.

Tomorrow, we’ll talk about what a trademark is not and, furthermore, how the examples of non-trademarks can be protected.

And we're back!

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Hello there readers!

The blog has been on a bit of a hiatus as we revamped our site (check it out - nice, eh?) and while I specifically re-focused my day-to-day activities.

But, I'm back and am here to talk trademark and answer any questions. Have one? Leave a comment or send me an email - shannon at tmexpress dot com

Since it's been awhile, I thought it a good idea to go back to Trademark 101 so that's what we're going to do. Over the next couple of weeks, I'll be going back to the beginning and outlining the basics of the basics.

The trademark world and the USPTO don't change in leaps and bounds but there have been enough significant changes that it's worth going over these essentials.

So, thanks for reading & here we go!