TRADEMARK FILING

In today’s marketplace one way to distinguish your business is with a catchy name or design that is affixed to your product or accompanies the product or service. Famous trademarks include Coca Cola®, Disney Frozen™, Google®, and many others. By using unknown or made up phrases, one creates a unique impression in the mind of the consumer that can make your business more valuable. Careful consideration should be given to the choice of the selection of the mark as it will impact your legal protection. Also important to consider is the type of search for similar marks as searching for similar marks can help you avoid a competitor already using the same phrase. Balanced against a comprehensive search is the available financial resources to contribute to the trademark process. Finally, if you intend to sell your goods or services internationally, then you should consider applying for trademarks in other countries.

Trademarks are something that some people think is simple, but in fact are very complicated and mistakes are often made by people who haven’t done many trademarks or try to do it themselves. Like many legal mistakes, a business will not know they have made a mistake in a trademark application because the mistakes are revealed in disputes often long after they were made.

In looking further at mark selection, one should consider not only the planned usage by the company, but also how competitors tend to use their trademarks which are different within the industry. For example, if a party tends to use a design, but also runs simple ads without the design, then both a word mark and a design mark would be advisable. In looking at the mark, there are a variety of legal grounds upon which a mark can be rejected. We will discuss a few here, but there are many more and you should discuss your proposed or actual trademark with an attorney.

Some trademark applications are rejected because they are confusingly similar to other trademarks. This is fairly common. Whenever a trademark is applied for, the trademark office does a search of both registered trademarks at the U.S. Trademark Office, and likely an internet search, such as by using Google. This search will be done by an attorney at the U.S. Trademark Office (a U.S. Government agency) assigned to review your trademark application. The standard of confusingly similar does not mean the same. Hence, simply changing “cars” to “kars” would not avoid an issue. The standard is somewhat broad to take into account how words sound similar even if spelled differently. Further, the mark does not have to be used in the exact same good or service to be confusingly similar. If the proposed mark was for sweaters and the already registered mark was for hats, there may still be a possibility for confusion given that both items are clothing.

Another reason why trademark applications are rejected is because it is actually commonly used trade language. An example of this is if one tried to trademark “Doctor Group” for a group of doctors providing medical advice and services. Such a trademark would be simply using common industry terms and thus not unique enough for a trademark application.

There are also other reasons a trademark may be rejected and we can help address those issues. Other issues that can arise are rejections based on the registration of a surname (last name) of a person, merely descriptive trademarks, generic names for goods or services, mark appearance issues, goods description issues, specimen (example) of trademark issues, government insignia. If you have received an office action on a trademark you have filed we can try to represent you and respond to the office action. Often, after review of the proposed Office Action and discuss with you, we can provide a quote for the price to respond to the proposed Trademark Office Action.

Trademarks are an area of law that seems simple, but is actually pretty complex when you get to resolving disputes or taking the best strategy to deal with a trademark dispute. Please contact us if you need assistance with a trademark dispute.

After all of the effort to develop a product or service and then to create a catchy trademark for your product, you need to protect it against infringers. If you are not diligent in policing your trademark you could not only dilute the value of your trademark because customers won’t value it, but you may also waive your rights to the trademark. Customers expect a trademark to have consistent value and quality and if your competitors are allowed to copy your trademark and you don’t take legal action, the value of your trademark is much diminished. We have represented trademark owners in legal disputes before the Trademark Trial and Appeal Board, and in Federal Court.

Conversely, some companies go beyond protecting their valid trademarks to using them as an anti-competitive way to prevent competitors from providing similar products that don’t infringe trademarks. We have represented clients in trademark disputes before the Trademark Trial and Appeal Board, and in Federal Court.

The first step in any trademark litigation is to contact an attorney to review the case and to determine the applicable deadline to respond to the lawsuit. Clients should be aware that in addition to contacting any attorney, attorneys often benefit if the client will also write-up a summary of the dispute along with relevant names, dates, and details. Clients should also include relevant numbers, such as sales of products under the trademarked products or services. Gathering all the relevant documents regarding the usage of the trademark, sales, communications will provide the attorney with more information that may help to judge how best to handle a lawsuit over a trademark.

After the basic information gathering regarding the trademark in question, the client needs to also inform the attorney of what the client would like to do with respect to the dispute. The more specific the client is, the better. The client should also discuss with the attorney their fees, costs, and what the clients hopes or wishes for result of the litigation. A client should be aware that an attorney cannot guarantee any result, but attorneys should be aware of client preferences and goals so that the attorney can work with them on a strategy that makes the most sense given the facts of the case and the parties involved.

In a trademark infringement litigation, first one must evaluate the trademark involved in terms of the word or design and the applicable goods/services. The owner of a trademark must prove that there is a likelihood of confusion between its trademark and the alleged trademark infringer. Not only must the marks be confusingly similar, but the goods or services must be similar enough to cause confusion (with a noted exception). For example, if a small company sells a soda or carbonated syrup called, “Spark” and another person uses the word, “Spark” in relation to a car battery then a consumer will not be confused between soda and a battery. The one exception to this is for famous marks, such as Coca-Cola, which are provided wider protection than their exact class of goods/services because the public may think that anything with Coca-Cola in it must be associated with the Coca-Cola company.

In addition to similarity of trademark, the trademark owner must establish use of the trademark in commerce and establish the date of use in commerce. The trademark owner must show that it used the trademark first in commerce. In trademark litigation, a trademark registration can help a trademark owner establish that it had priority to use a trademark. Thus, it is highly advisable that before a party commences trademark litigation that it have a registered trademark.