Category Archives: Trademarks

Why and How Brands Selling on Amazon Should Enroll in Amazon Brand Registry

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(Originally published in the Dallas Business Journal, October 2, 2019.)

If you are selling products on or through Amazon, this article will discuss why you should consider enrolling your brand name(s) in Amazon Brand Registry, and provide information about how to do so.

Why you should enroll in Amazon Brand Registry

There are a number of benefits to brand owners enrolling in Amazon Brand Registry, which was created to help build and maintain customer trust and ensure customers that they are purchasing authentic goods. Ultimately, Brand Registry helps you:

  1. Ensure that your brand is accurately represented on Amazon.
  2. Monitor how third parties are using or misusing your brand on Amazon (including searches for text, as well as images of your products and logos).
  3. Find and report potential infringers and counterfeits [1]

As a brand owner, you have a duty to police your marks to protect against infringement and act reasonably in protecting your trademark rights to avoid diminishing the value of your brand, damaging your goodwill and weakening (or even losing) your mark…and Amazon Brand Registry is another tool in your arsenal to help you do that.

Although reporting alleged infringement of your brand or other violations of Amazon’s Intellectual Property (IP) policy to Amazon using the Brand Registry Report a Violation tool is not the only mechanism to enforce your rights (and you still may need to bring legal action against the alleged infringer to address infringement, especially outside of the Amazon environment), it can be an effective and much less expensive, expedited way to quickly address issues of concern on Amazon’s platform.

For example, Amazon can remove a product listing and even suspend an account due to violations of laws and/or Amazon’s policies. And, although you don’t have to have an Amazon Brand Registry user account to report alleged intellectual property infringements, it’s no doubt easier for Amazon to take action on behalf of those who have enrolled their brand(s) in the Brand Registry than for those who use the publicly available form to report. And the Brand Registry and other systems Amazon has put in place appear to be making a difference, as Amazon claims that 99% of all Amazon page views by Amazon customers landed on pages that did not receive a notice of potential infringement.

How to enroll in Amazon Brand Registry

In order to enroll your brand(s) in Amazon Brand Registry, you will need:

  1. An active registered trademark for your brand(s) in each country [2] where you wish to enroll (e.g., the United States Patent and Trademark Office (USPTO)). The mark(s) may be text-only or image-based (e.g., logo, stylized font, etc.) and needs to appear on your products or packaging. You will need to provide the following information to Amazon:
  • Your brand name that has an active registered trademark.
  • The registration number for the trademark.
  • A list of product categories (e.g., apparel, sporting goods, electronics) in which your brand should be listed.
  • A list of countries where your brand’s products are manufactured and distributed.

Note: It can take anywhere from six months to a year or more to obtain a trademark registration. Although you may be able file a trademark application yourself, trademark law and prosecution of trademark applications can be difficult to navigate. Therefore, it is advisable to work with a trademark attorney to obtain registration of your mark(s) in the United States and other countries.

2. An existing Amazon Vendor Central or Seller Central account, or create a new Amazon account for free, to sign in to Amazon Brand Registry. Using the same username and password that you use to sign in to Vendor Central or Seller Central to create your Brand Registry account ensures you get full access to the features and benefits from vendor and seller services linked to your Brand Registry account.

3. Verification that you are the rights owner or the authorized agent for the trademark.

  • Once you submit the information to Amazon Brand Registry, Amazon will attempt to reach out to a contact associated with the trademark registration you provided to Amazon (e.g., the Attorney of Record with the USPTO for the trademark registration).
  • Amazon will send a verification code to this contact, and the contact will need to provide the code to you, and you will then need to provide the code to Amazon to complete the enrolment process.
  • Once Amazon has verified the information you provided, you will get access to Amazon Brand Registry’s benefits and features that help you protect your brand.

Once you’ve enrolled your first brand with Amazon Brand Registry, you can:

  1. Add additional active trademark registrations for your already enrolled brand(s) to your Brand Registry account by logging into your account and visiting the “Update your brand profile” section via the Brand Registry Support page;
  2. Enroll additional brands at any time by clicking on Enroll a new brand from the home page of your account.
  3. Submit a request to the Brand Registry Support team to add additional representatives of that brand, including agents (e.g., trademark attorneys). All users will need to have their own Brand Registry login credentials.

Note: If you enrolled a brand in Brand Registry prior to April 30, 2017 and your brand meets eligibility requirements, you need to re-enroll your brand in the Brand Registry.

[1] Amazon also has a program called Transparency — an item-level tracing service that helps brands proactively identify and prevent counterfeits from reaching customers.

[2] Amazon currently only accepts trademark registrations that have been issued by government trademark offices in the United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom, the European Union, and the United Arab Emirates.

Lessons From Google Surviving The Genericide Attack

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The U.S. Court of Appeals for the Ninth Circuit recently affirmed a federal district court’s grant of summary judgment in favor of Google Inc. in connection with an attempt to cancel the “Google” trademark registrations under the theory that the mark has become computer-1330162_1920 (2)a generic term used by the public for searching on the internet. The ruling is a victory for brand owners, especially those who risk genericness challenges because of the success of their products or services and the widespread (mis)use of their marks by the public.

Overview of the Google Case

In 2012, Chris Gillespie and David Elliott registered 763 domain names that included the word “google” and an additional term identifying a specific brand, person, product, location or event such as googledisneyworld.com, googledallascowboys.com and googledonaldtrump.com. Google filed a cybersquatting compliant under the Uniform Domain Name Dispute Resolution Policy,[1] claiming that the domain names were confusingly similar to the “Google” trademark and were registered in bad faith. The complaint was filed with the National Arbitration Forum (“NAF”), and the NAF found in favor of Google and transferred the domain names to Google.[2] Elliott and Gillespie (collectively “Elliott”) then filed an action in the Arizona district court petitioning to cancel the “Google” trademark[3] under the Lanham Act,[4] arguing that the word “google” is primarily understood as a generic term universally used to describe the act of internet searching.

The parties filed cross-motions for summary judgment, with Elliott arguing that (1) it is an indisputable fact that a majority of the relevant public uses the word “google” as a verb (e.g., “I googled it”), and (2) verb use constitutes generic use as a matter of law, and Google arguing that verb use does not automatically constitute generic use and that Elliott failed to present sufficient evidence to support a jury finding that the relevant public primary understands the word “google” as a generic name for internet search engines. The Arizona district court found in favor of Google,[5] and ruled that, even if the term “google” has become known — and is used as a verb — for searching the internet, that doesn’t necessarily mean that the primary significance of the term “google” to the relevant public is as a generic name for internet search engines generally instead of as a mark identifying the Google search engine in particular. On May 16, 2017, the U.S. Court of Appeals for the Ninth Circuit affirmed the district court’s grant of summary judgment.[6]

Before we discuss the court’s decision in more detail, let’s review some of the concepts framing the issues raised in the Google case.

The Spectrum of Distinctiveness — Weak vs. Strong Marks

Not all marks are created equal, and some terms can never be marks. The generally recognized categories of types of terms on the “spectrum of distinctiveness” or “distinctiveness/descriptiveness continuum” (which roughly reflects their eligibility to obtain trademark status and the degree of protection accorded from weakest to strongest) are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful terms. Generic terms are terms that the public understands primarily as the common name for the goods or services, such as “Salt” when used in connection with sodium chloride or “The Chocolatier” for a store providing chocolate candy. “Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.”[7] In other words, because generic terms identify the product or service and not the source of the product or service, generic terms are not protectable. On the other end of the spectrum are arbitrary and fanciful terms. Arbitrary marks are common words that are used in a unique way such that the words have no relationship to the product or service, such as “Apple” for computers. Fanciful marks are terms that have been invented or “coined” for the sole purpose of functioning as a trademark, such as the term “Google” for an internet search engine[8] or “Xerox” for copiers. Arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.”[9]

However, even a strong arbitrary or fanciful mark has the potential to lose its trademark significance and become generic.

Genericide — When Good Marks Go Bad

The Lanham Act allows cancellation of a registered trademark if it is primarily understood as a “generic name for the goods and services, or a portion thereof, for which it is registered.”[10] This phenomenon has become known as “genericide” — when the public appropriates a trademark and uses it as a generic name for a particular type of goods or services, irrespective of the source of those goods or services. Once a mark becomes generic, it is no longer subject to trademark protection — and “linoleum,” “thermos” and “videotape” are some well-known victims. As McCarthy on Trademarks and Unfair Competition describes, genericide can occur for a variety of reasons: Continue reading →

10 Legal Considerations for Entrepreneurs – Part 1

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startup-1018512_1920Becoming an entrepreneur is an exciting endeavor…but being your own boss often requires that you wear many different hats and take responsibility for all of the details involved with operating a business. After you’ve evaluated your business idea and researched the market, and while you’re in the process of creating your business plan and determining startup costs and other essentials to get your business up and running, here are some legal considerations to keep in mind…

1. Hire Professionals.

Attorneys, accountants and other professionals are invaluable resources for a new business owner, as they can help you navigate through the many details and requirements necessary to start and run your business, including those mentioned below. Seek referrals from friends, family, and other business owners. You may want to find professionals who are familiar with your particular industry and/or working with new businesses. Having good professionals on your business team (especially in the beginning) can be one of the best investments you’ll ever make in your business, and, hopefully, you will develop relationships with these advisors that will last for the life of the business (and beyond). It is often much less expensive to hire a professional to do something right the first time than it is to hire a professional to fix a problem after-the-fact. Although a great deal of information, “forms” and resources are available online and can be helpful for educational purposes, relying on the internet to be your lawyer will likely come back to haunt you at some point.

2. Name Your Business (or Product).

Deciding on the name of your business is one of the most important – and sometimes most difficult – aspects of starting a new business. Not only will you want to make sure the name is appealing to customers, but you’ll also want to make sure the name isn’t already being used by a third party providing identical or similar products or services. Before using or registering a business name, you should at least perform a quick “knockout” availability search: (a) check for entity names and state trademark registrations with Secretary of State Offices where business will be done; (b) search the federal U.S. Patent and Trademark Office (USPTO) trademark database; and (c) perform a Google search to determine whether any third party has common law rights to the name. If you are in a regulated profession or industry, there may be restrictions of what you can and cannot include in your business name. You’ll also want to make sure the domain name is available for your business name.

Once you decide on a name (and type of entity) and are comfortable that it’s available to use, you’ll need to register your name with your Secretary of State’s Office and potentially with your County Clerk’s Office as well.

Please note that registration of a business name with one or more Secretary of State offices does not guarantee that you have exclusive rights to use that name and/or are not infringing another party’s mark. The Secretary of State does not allow registration of identical business names in its state (mostly to avoid internal confusion). However, multiple entities can register identical fictitious, assumed or doing business as (d/b/a) names in the same state.  [For example, if XYZ Company, LLC is already registered with the Texas Secretary of State, another company could register ZYX Products, LLC and then register a fictitious name for XYZ Company…so it would be ZYX Products, LLC, d/b/a XYZ Company.]

Trademarks or service marks, on the other hand, can be used by multiple entities at the same time, so long as they are not used in connection with the same or similar goods or services and customers are not likely to be confused as to whether the goods or services are provided by the same entity. If your entity is also using its business name as a trademark or service mark in connection with its products or services, then it is advisable to have your legal counsel perform a trademark search to be as certain as possible that no other individual or entity is also using the mark for similar goods or services.  Depending on the results of the search, filing a trademark application with the USPTO to obtain a federal trademark registration for the mark (and/or logo) may be advisable.

Click here for more information about selecting and protecting names and marks.

In Part 2, we’ll discuss legal entities, financing your venture, and related matters.

Can My Company Say “Super Bowl” in Our Super Bowl Ad?

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football-player-260556_1280-2By now, you’ve probably seen and heard countless promotions mentioning “The Big Game”…but maybe you’ve never considered why they don’t just come out and say the actual name of the game.  Well, the term Super Bowl is a registered trademark owned by NFL Properties LLC.  And with advertisers spending $5 million or more on 30-second commercial spots for the Super Bowl, it’s little wonder that the NFL is so protective of its trademarks and copyrights.  (And, even if the price tag for an ad isn’t quite as high, the same is true for other big events and recognizable brands, such as the World Series, the Oscars, March Madness and the Final Four, the Emmys, the Grammys, and the Olympics.)

You might remember hearing about the Indiana church that received a cease and desist letter from the NFL related to its plan to project the game on a big screen and charge admission for a Super Bowl party in 2007.  Although it may seem harsh to go after a church, the letter (which had as much to do with the church’s use of the Super Bowl mark as it did with the church’s plans to show the game on a big screen) resulted in that church — as well as other churches that got wind of the letter — to cancel their plans.

Trademark owners have a duty to police their marks in order to avoid losing rights in the marks.  In other words, mark owners are legally required to protect against unauthorized uses of their marks, or they risk diminishing the value of their brands, damaging their goodwill, and weakening their marks and the value attached to those marks.  It would be pretty hard to justify the sponsorship fees and ad rates that “official” sponsors and advertisers pay if any of these mark owners allowed anyone else to benefit without having to shell out for that privilege.

And although sportscasters and news providers can say “Super Bowl” to talk about the game (thanks to a trademark fair use exception for criticism and news reporting), unless you are an approved, official sponsor, you’ll need to get creative instead of using the “Super Bowl” mark (or hashtag, for all you ambush marketer wannabes) to promote your products, services, or sales.

So, enjoy “The Big Game” and all of the “Star-Studded Red Carpet Events” during “Awards Season,” because “The Battle of The Brackets” in March will be here before you know it!

 

Why Should I Register My Trademarks?

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TrademarkIn the United States, trademark rights are based on (1) priority (who used the mark first), (2) territory (the geographic area(s) where the mark has been used), and (3) use (whether products or services are actually provided under the mark).

Generally, the first to either use a mark in commerce or file an intent-to-use application with the United States Patent and Trademark Office (USPTO) has the ultimate right to use and registration of the mark.

Common law rights arise when products or services are offered for sale in connection with the mark.  However, common law rights are limited to the trade area in which you actually use the mark and those rights may be limited or even prohibited by prior senior uses of the same or confusingly similar marks.

A trademark owner may also register a mark in one or more individual states through Secretary of State Offices.

Although registering your mark with the USPTO is not required to establish rights in a trademark, there are many important benefits of federal trademark registration with the USPTO.  For example, upon registration of a federal trademark, the registrant obtains rights to the mark throughout the United States retroactive to the date of filing of the application. The registrant also obtains the right to stop junior users from adopting confusingly similar marks in overlapping trade areas or anywhere the registrant has acquired goodwill in such mark.

Here are some of the benefits of registration:

  • Registration provides constructive notice nationwide of the mark owner’s claim in the mark and evidence of ownership of the mark.
  • The mark owner has the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • The mark owner may bring lawsuits for infringement in federal court.
  • The mark owner may be entitled to recover profits, damages and costs of infringement, attorneys’ fees and treble damages.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • The mark can obtain incontestable status after continuous use for 5 years after the date of registration on the Principal Register (which limits third parties’ rights to contest your mark).
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

An application for trademark registration requires: (1) a completed application form, (2) a nonrefundable filing fee ranging from $225-$375 per class of goods/services, and, for marks already being used in commerce, (3) specimens of the mark showing use of the mark in connection with the applicable goods/services.

Click here for more information about how to select and protect a trademark.

 

Trademarks – Principal Register vs. Supplemental Register

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Some marks are not as strong as other marks, and certain marks that are not eligible for registration on the Principal Register, but are “capable” of one day distinguishing an applicant’s goods or services (such as descriptive terms) upon the acquisition of secondary meaning (proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce), may be registered on the Supplemental Register.

Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service.  Examples of descriptive marks include BANK OF AMERICA for a bank headquartered in the United States and WHOLE FOODS for a grocery store that sells health foods (both of which have since acquired distinctiveness and are now registered on the Principal Register).

Only marks actually used in commerce may be registered on the Supplemental Register, so an intent-to-use application is not eligible for registration on the Supplemental Register until the applicant has filed an acceptable allegation of use.

Benefits of Registration on the Supplemental Register

While not the preferred trademark register, registration on the Supplemental Register does provide the following benefits over purely common law rights (i.e., no registration at all):

  • Notice of the mark to anyone who searches the USPTO records.
  • Protection against third-parties registering confusingly similar trademarks at the USPTO.
  • Right to use the official registered trademark symbol “®” as notice of federal registration.
  • Right to sue infringers in federal court and have federal law control key issues of validity, ownership, infringement, injunctions and damages.
  • Ability to obtain foreign trademark protection in countries with international treaties.
  • After five years of usage and/or registration on the Supplemental Register, the registrant can apply for registration of the mark on the Principal Register.

Benefits of Registration on the Principal Register Not Applicable to the Supplemental Register

The following benefits of registration on the Principal Register are not enjoyed by registration on the Supplemental Register:

  • Constitutes prima facie evidence of the registrant’s exclusive right to use the mark nationwide.
  • Constitutes constructive notice of the registrant’s claim of ownership to eliminate the good faith defense.
  • Has a presumption of validity.
  • Carries a presumption that the registrant is the owner of the registered trademark.
  • May be filed with the United States Customs Service to prevent importation of infringing foreign goods.
  • Can become incontestable after five years of registration.

Acquired Distinctiveness/Secondary Meaning

A mark that is descriptive in nature and/or registered on the Supplemental Register cannot likely be registered on the Principal Register without a showing that the mark has become distinctive of the applicant’s goods or services in commerce, namely, that the mark has “acquired distinctiveness” or “secondary meaning.”

After five years of use or registration on the Supplemental Register, a statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made is usually sufficient to show acquired distinctiveness/secondary meaning.

However, depending on the nature of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The mark owner may then submit actual evidence of acquired distinctiveness.

The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.

To support the claim of acquired distinctiveness, a mark owner may respond by submitting additional evidence. Such evidence may include specific dollar sales under the mark, advertising figures (or indicating the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared), samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  So, if you are using a descriptive mark, it is wise to keep these requirements in mind and keep track of this information so it is available if needed.

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness: (1) length and exclusivity of use of the mark in the United States by the applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) the applicant’s efforts in the United States to associate the mark with the source of the goods or services, such as unsolicited media coverage and consumer studies.  A showing of acquired distinctiveness need not consider all these factors, and no single factor is determinative.

 

Protecting Your Marks Outside of the United States: Foreign Trademark Priority Filings

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Trademark protection is geographic in scope…meaning that a trademark is only protected in the geographic area(s) (state/region/country) in which the mark is used or registered.

earth globeA United States trademark application or registration with the United States Patent and Trademark Office (“USPTO”) does not protect a trademark in any foreign country.  However, U.S. trademark applications and registrations can be used to obtain trademark protection in other countries and vice versa.

Six-Month Priority Foreign Filings

If the foreign trademark application is filed within six months of the U.S. application, the foreign application can claim “convention priority.”  This means that the foreign application will be treated as if it was filed on the same day as the U.S. application.  Nearly all countries are members of the Paris Convention, which put this rule in place.

“Claiming priority” in this six month window can prove to be a major advantage by providing you with the earliest possible filing date for your mark.  If other applicants file similar marks after that priority date, they will be rejected or suspended. In other words, your application will receive priority over applications filed after not only your actual filing date, but also over applications filed between your actual filing date and your priority date.

Taking advantage of priority foreign filings also allows you the opportunity to spread out the costs associated with trademark filings over a six-month period and gives you time to assess your international brand protection strategy without sacrificing any protection…which can be significant, especially for a new venture or brand.

Foreign trademark applications filed after this six-month “priority” date take the actual dates on which they are filed.

Other Cost-Saving Measures and Strategies

In many cases, there are mechanisms available that provide efficient and cost-effective ways of obtaining protection for your brand simultaneously in multiple countries.  For example, the Madrid Protocol allows a trademark owner to seek protection in any of the almost 100 member countries by filing one application and designating as many member countries as it chooses.  It is also possible to file a single Community Trade Mark (“CTM”) application for a trademark covering all of the countries in the European Union.  You can designate the EU/CTM in your Madrid Protocol application.

 

What’s in a (Brand) Name?

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Choosing a name for your company, creative project, product or service is just as important as (and often more difficult than) naming a child or pet. Brands are so important that many big companies spend hundreds of thousands of dollars and months or even years on research, focus group testing and the like in attempts to find just the right name or logo for a new product or service.

Your brand distinguishes your products and services from your competitors’ products and services. But a brand is much more than just a name or logo.  Your brand also serves as a symbol of the quality, value, and reputation which customers and fans expect in products you sell and services you provide…not to mention the emotional connection customers and fans can develop with your brand.  For example, if we’re talking about driving a Beetle or listening to The Beatles, you probably don’t just think “car” or “band.”  Instead, you likely have thoughts and emotions related to your experiences with and perceptions of those brands — whether positive or negative.

With so much at stake, choosing a name that will resonate with your customers and fans and convey information about your product or service is important.  When brainstorming a name for your company, creative project, product or service, remember that not all brands are created equal … particularly when it comes to trademark protection.

Brands — also known as Trademarks (used on products) and Service Marks (used in connection with services) — include any word, name, symbol, or device, or any combination of these, used, or intended to be used, in commerce to identify and distinguish the goods or services of one entity from those sold or provided by others, and to indicate the source of the goods or services. Trademarks can include entity names, product names, logos, domain names, 800 numbers, slogans, phrases and tag lines, character names, band names, jingles, and trade dress, such as product configurations, color, packaging and store designs.  

The best marks are memorable, appealing and elicit desired responses.  The ultimate goal should be to find a mark that is uniquely yours — a mark that is not confusingly similar to an existing mark used for similar products or services (i.e., someone else beat you to the punch), one that suggests some connection with another organization or famous person, or one that consists of a person’s last name.  And it can take a village of marketing, artistic, business and legal types to find that perfect mark.

While searching for that perfect mark, you should keep in mind that some marks are stronger than others…

  • Generic terms are common names for products or services, such as SALT when used in connection with sodium chloride or THE CHOCOLATIER for a store providing chocolate candy.  These terms can never be protected as trademarks.
  • Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service, such as SALTY used in connection with crackers or DALLAS.COM for a website providing tourism information about Dallas.  These marks are not initially protectable unless the owner can show that the mark has gained “secondary meaning” or “acquired distinctiveness” (proof that the mark has become distinctive of the mark owner’s goods or services) in the marketplace over time through extensive and substantially exclusive use.
  • Suggestive marks suggest some characteristic or nature of the product or service and require imagination, thought or perception to reach a conclusion as to the nature of those products or services, such as COPPERTONE for suntan lotion or BLOCKBUSTER for a video rental store. Although there can be a fine line between descriptive and suggestive marks, suggestive marks are automatically protected as trademarks because they are “inherently distinctive.”
  • Arbitrary marks are very strong marks because they have no relation to the product or service, such as APPLE for computers.   However, because these are real words, other companies may have also adopted the words as marks, such as APPLE VACATIONS.
  • Fanciful/coined marks are the strongest marks because they are made up words, such as XEROX for copiers or EXXON for gasoline, and consumers only associate the mark owner with selling that service or product.  

From a trademark protection perspective, fanciful/coined, arbitrary or suggestive marks are preferable to descriptive (protectable with acquired distinctiveness) or generic (never protectable) marks.  Many company, product and service names tend to be descriptive or suggestive because business owners attempt to quickly choose names that help consumers easily identify their products or services.  However, the more creativity you use in the naming process, the stronger the mark and the more likely you are to prevent third parties from being able to use the same or similar mark on similar (or even unrelated) products and services.

Before using or registering a name for your services or products, you should, at the very least, perform a quick “knockout” availability search to see if a third party may already be using the same or similar mark in connection with the same or similar products or services.  You should:

  • Check for entity names and state trademark registrations with Secretary of State Offices where business will be done.
  • Search the U.S. trademark database.
  • Perform a Google search to determine whether third parties have common law rights to the name.
  • Perform a WHOIS search to determine whether domain names are available (as brands typically want a corresponding web presence).

A mark is one of the most important words, phrases or designs you will use to represent your products or services to the world.  Although selecting a name may seem simple, trademark law is very nuanced and is often much more complex than it appears. Therefore, I believe it is a wise investment of resources to engage a trademark attorney to perform more sophisticated searches to determine whether your mark is available and inform you as to the potential risks associated with use and/or registration of your proposed mark.  (Note:  You can save yourself some time and money by performing knockout searches for your potential marks before asking an attorney to search a particular mark more thoroughly.)

Choosing a mark that’s already being used by a third party can result in cease and desist letters and trademark infringement lawsuits…potentially requiring you to abandon use of the mark, destroy all products and materials that depict the mark, and potentially even paying the third party mark owner profits gained from infringing uses of a mark as well as damages the mark owner may have incurred from such infringing use.  The last thing you want to do after spending a bunch of money to print business cards, stationery, packaging, advertising and goodness knows what else emblazoned with your mark is having to scrap everything and start from scratch with another mark.

Hiring a lawyer to guide you during the mark selection process can save you (potentially hundreds of) thousands of dollars and several headaches down the road.

 

Intent to Use Trademark Applications: Reserve Your Brand Today!

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Although actual use of a mark in commerce is usually required to protect a trademark, Intent-to-Use (“ITU”) Trademark Applications extend potential protection to a mark before it is used in interstate commerce.  One of the main benefits is that, once the application matures into a registration, you can claim the filing date as your constructive date of first use of the mark, even though you didn’t actually use the mark until after you filed. (In other words, filing an ITU application provides nationwide priority over others, with the exception of parties who had used the mark before your filing date, parties who had filed before you, or parties who are entitled to an earlier priority filing date based upon the filing of a foreign application). You will also be able to establish some priority in a mark and determine whether your mark is registrable before you invest large sums of money for advertising, printing, etc.

Bona Fide Intent.  Before you file an application with the U.S. Patent and Trademark Office (“USPTO”), you must have a good faith or bona fide intention to use the mark in commerce. I recommend that your intent be bolstered by verifiable documents (corporate minutes, reports, plans, contracts, evidence of R&D, market research, manufacturing activities, steps to acquire distributors or obtain required governmental approval, or other similar activities).

Goods and Services.  A trademark application must list the specific goods/services that will be provided in connection with the mark. (Goods are products; services are activities performed for the benefit of someone else.) The description of goods/services should use clear, concise terms that are easily understood by the general public. Once an application is filed, you can clarify or delete certain goods/services, but you must file a new application to add additional goods/services. As ITU applications are often filed before final decisions have been made, it is usually best to be broad and over-inclusive with respect to the goods/services you reasonably intend to offer.

Allowed Applications. Once your mark clears the initial evaluation and publication process, the USPTO will issue a Notice of Allowance. Your Allowed application will not mature into a Registration unless and until you file an Allegation of Use indicating that you have begun use of the mark in commerce.  You have six (6) months from the date the application is Allowed to file an Allegation of Use. However, you may file up to five (5) six-month Extensions, which allows you to “reserve” the mark for up to three (3) years before actual use of the mark in commerce is required. If an Allegation of Use is not filed within 36 months of the date the application was Allowed, the application will abandon. The USPTO filing fees are currently $150 per Class of goods/services for each Extension, and $100 per Class of goods/services to file an Allegation of Use.

Establishing Use. In order to prepare an Allegation of Use, you will need the following for each Class of goods/services: (1) Date of First Use Anywhere (MM/DD/YY); (2) Date of First Use in Commerce (MM/DD/YY); and (3) a Specimen of Use.

  • Date of First Use Anywhere. The date the mark was first used in commerce anywhere (which may be earlier than, or the same as, the date of the first use of the mark in commerce).
  • Date of First Use in Interstate Commerce. For goods (Classes 1-34), “interstate commerce” involves sending the goods across state (or country) lines with the mark displayed on the goods or packaging for the goods. With services (Classes 35-45), “interstate commerce” involves using or displaying the mark in connection with selling, advertising or offering a service to those in another state (or country) or rendering a service which affects interstate commerce (e.g., restaurants, gas stations, hotels). “Use in commerce” must be bona fide use in the ordinary course of trade, not “token” use simply made to reserve rights in the mark.
  • Specimen of Use. A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Specimens for goods (Classes 1-34) may take the form of labels, tags, packaging, or containers for the goods, a display associated with the goods, or a photograph of the goods that shows use of the mark on the goods. Specimens for services (Classes 35-45) should include some reference to the type of services rendered and may take the form of website screenshots, magazine advertisements, brochures, a sign, a business card or stationery, or a photograph showing the mark as used in rendering or advertising the services.