Know the laws your rights
Us Trademark Applications Trademark Law Intellectual Property
When should you file the U.S. applications?
It depends on your industry. However, in any case as soon as possible, but no later than when you have spent a “trigger sum” ($5,000-$25,000) developing the brand name, such as expenditures on design or market research.
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Trademark Obstacles Trademark Law Intellectual Property
How to get around obstacles (other marks found on the register)?
Trade one of your marks for the mark sought.
Buy the mark.
Buy a license to use.
Buy a “consent to use.” This may also be worded as an agreement not to sue. (Although this may not be adequate to permit you to obtain a U.S. registration because the Trademark Office is not required to accept it, it will be useful assurance to your client that it may use the mark without fear of action by its owner.)
Act to cancel the prior user’s mark.
Buy a similar earlier registration for leverage against your main obstacle.
Change your name. Small changes may suffice. The addition of a word. If the prior user’s mark is geographically limited you may be able to pick up the rest of the country. Misspellings will not suffice.
However, if a mark is important to you it is prudent to act quickly
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Trademark Name Adoption Trademark Law Intellectual Property
What procedures should you follow when you wish to adopt a name for use as a trademark?
(1) Determine if the mark is capable of registration and protection.
(2) Search to determine if someone already owns the mark.
(3) Begin the registration process for the mark as soon as possible, either on the basis of use (if you have made use), or “Intent to Use” if you intend to use in the future. Remember the “Intent to Use” law requires a “bona fide intent to use”. Bona fide intent is not generally questioned. The purpose of requiring such intent is to prevent someone from filing a bunch of trademarks and “warehousing” them, for purposes of later resale.
(4) “Police the Mark,” i.e. set up procedures to watch for infringes and to take appropriate action to get them to stop such infringing uses.
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Business Name Record Trademark Trademark Law Intellectual Property
What are the resources to run a thorough name check to make sure I don’t choose a name for my record label that is already in use?
You can do your own free search of trademarks registered federally at the US Patent and Trademark Site: http://www.uspto.gov/main/search.html. This site also has a lot of information on copyrights.
However, without going into details, there are other things to search for than federally registered trademarks; there can be state law trademarks and common law trademarks. There are several online sites that provide these searches for a fee.
Another good alternative would be to hire a lawyer specializing in Copyright and Trademark law.
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Mark Registeration Trademark Law Intellectual Property
If I use a mark I cannot register, can I stop others from using a similar mark?
Generally no. There are certain words you may be able to adopt as a mark for your own use, even though you may not be able to register them as a trademark, and thus prevent others from using the same or a similar mark. One of the important benefits of using a trademark that you can register is that you may be able to exclude others from using it.
Before using a mark that you cannot register, think long and hard and get the advice of a trademark attorney. This is not a decision to be taken lightly. If your product or service becomes successful, you will want to exclude others from copying not only your idea but your name or mark!
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Trademark Licenses Trademark Law Intellectual Property
What if I license others to use my trademark?
The licensor of a trademark should also require that its licensee clearly and frequently declare the license relationship on packaging and advertising materials. For example, “Manufactured by XYZ Co., under authority of ABC Co., owner of the trademark DEF.”
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Trademark Not Register Trademark Law Intellectual Property
What may not serve as a trademark? What is not registerable?
Certain words or symbols cannot be appropriated as a trademark, and may not be registered under the Federal law known as the Lanham Act. These are outlined below.
(a) Generic words (the common name of a thing, such as “piano”, “concrete”, “cigarette”, “copy”, “car”)
(b) Descriptive marks that merely describe a product or service that have not achieved recognition as functioning as a trademark (trademark practitioners call such recognition “Secondary Meaning” and the term is fully explained below). Descriptive marks may be registered on the “Supplemental Register” and then moved onto the principal register after secondary meaning is acquired.
(c) Geographically descriptive marks, for example, the name of any state, city or foreign nation. You may register such a mark if it is not generally identifiable as a source of the goods, or if you build secondary meaning over time through sales and advertising.
(d) Primarily merely a surname, except if you build secondary meaning over time through sales and advertising.
(e) Deceptively misdescriptive marks
(f) Immoral or deceptive marks
(g) Scandalous, immoral or used in a disparaging matter – For example, is the trademark “Redskins” owned by the Washington Redskins professional football team scandalous or disparaging to American Indians? The word “Senussi” was rejected for cigarettes on the grounds it is the name of a Moslem religious sect.
(h) Disparaging words
(i) Suggesting a false connection with persons, institutions, beliefs or national symbols.
(j) Flags, coats of arms or other insignia of the U.S.
(k) An individual without his consent
(l) A deceased President, while the widow is still alive
(m) Trade names, unless used on goods or services in the same way a trademark is used
(n) Certain words and phrases covered by Special Statutes providing for exclusive use by certain organizations, such as trademarks of the Boy Scouts, the American Legion, the Veterans of Foreign Wars and the Daughters of the American Revolution and any symbols of the “Olympics”.
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Corporate Name Trademark Corporations
Can we use our corporate name as a trademark?
Yes. A corporate name may serve as or become a trademark if it is affixed to goods (or “point of sale” material) or used to identify a service (in advertising, on business cards, or letterhead).
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Trademark Protection Trademark Law Intellectual Property
What is the scope of protection for a trademark?
Trademarks are registered in classes for specific goods like perfume, soap or automobiles. The scope of protection should be narrowly construed to the marketing area of the product. However, with licensors licensing famous trademarks for a plethora of products that narrow scope of protection has expanded broadly in recent years. Are a perfume and an automobile likely to cause confusion as to source if similar names are used? I call your attention to the fact that the Harley Davidson Motorcycle Company is licensing its name for a perfume.
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Secondary Meanings Trademark Law Intellectual Property
What is secondary meaning?
Secondary meaning arises when consumers have come to identify a trademark with you over time. In that case a descriptive mark that you would not have been able to register initially may achieve trademark status and be subject to registration, at some time in the future, after sufficient use has been made to prove secondary meaning.
A trademark attroney can assist you to gather the evidence that may be necessary to prove sufficient to meet the threshold required to establish secondary meaning. That may consist of advertising and sales volume, or consumer surveys. For example, KOOL menthol cigarettes, BUFFERIN for buffered aspirin and CHAP STICK for a lip balm were all descriptive, but ultimately achieved registration.
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