Archive for the ‘trademark registration’ Category

Trademark Registration, Monitoring your trademark after registration

Thursday, July 1st, 2010

Once you receive your trademark registration certificate in the mail, you may be asking yourself, “now what?”  The process of getting your trademark was a long one, and you definitely don’t want to take the chance that you may lose the mark and have to start all over again.  Your trademark is without a doubt important to you, so you probably want to know the things that you need to do to keep it safe.

First, periodic filings are required to retain your trademark.  These filings are due 5 and 10 years after you get your trademark and then every 10 years thereafter.  You must prove in these filings that you are using the mark in commerce exactly as the trademark was filed.  The deadlines for the trademark filings are firm and missing a deadline can be extremely costly, often leading to loss of your trademark.

Second, protecting your new trademark is an essential part of retaining your trademark.  As the trademark owner it is your legal responsibility to adequately police your trademark and make sure no one is infringing upon it, failure to do so can result in the loss of your trademark rights.  This can be a difficult task as adequate protection of your mark requires constant monitoring of new trademark applications with the USPTO and also watching for infringing use of your trademark in commerce.

To assist with these duties and responsibilities, I offer a “Trademark Monitoring” service.  This services works to ensure that 1) No one infringes on your trademark; 2) You continue proper use of your trademark; and 3) You never miss a trademark renewal.  If you are interesting in this service please contact me at 1-877-350-6275.

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Trademark Registration – Choosing your Trademark Wisely

Saturday, June 19th, 2010

I get a lot of inquiries from clients who are attempting to register a trademark which is not really “registerable.”  This is because they are trying to achieve trademark registration on a word that is generic for the product or service they are offering.

It is extremely important when selecting a trademark to ensure it use unique enough to quality for trademark protection.

On one extreme, the most protectable type of trademark, often referred to as a “fanciful” mark, is a mark which is a completely made up word.  An example of such a mark is Kleenex, which not a word until it was invented by the company and thus has no dictionary meaning.   The value of a fanciful mark in particular is that nobody can really validate their use of the mark legally because the word did not even exist until you created it.  Another type of mark that is generally very strong is a mark which bears no obvious relation to the product it represents, such as Apple referring to computers.  Because these marks have no obvious relation to the product to which they refer, they are highly protectable trademarks.

The weakest trademarks, on the other hand, are marks which clearly relate to the products to which they refer.  For example “Flame-grilled Chicken” as a name for a restaurant that features flame-grilled chicken is clearly descriptive and lacking in creativity.  It would be virtually impossible to even register this trademark.

Your best bet as you create your mark is to be as creative as possible and stray away from anything that could be seen as describing the product or service you intend to offer under the trademark.  The more arbitrary the relation of the mark to the product is, the stronger your mark will be.  The originality of your mark proportionally increases its strength.

If you have any questions regarding the strength of your proposed trademark please call trademark attorney Josh Gerben at 1-877-350-6275.  You may also visit the US Government’s trademark Web site at www.uspto.gov for more information.

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Trademark Registration, Can I register my name and logo in the same trademark application?

Tuesday, May 25th, 2010

One of the most common questions that clients tend to ask is: “Can I register my name and logo in the same trademark application?”  In order to answer this question it is important to note that there are two ways trademark registration can be achieved: 1) A registration of just word(s); or 2) A registration of word(s) with the logo or design you have created for marketing purposes.

Word mark applications, or applications without any logo specifications, are generally preferable because they provide the word(s) you are attempting to protect with broader legal rights.  This is because the registration of a word by itself protects the word itself, whereas the registration of a word and logo together only protects the word in the context of the logo.

Moreover, registering your trademark as just words provides you with more flexibility in the future.  If you register a trademark as words and a logo today, you are married to that logo for life.  This is because there is a legal requirement to “use” a trademark exactly as it is registered.  If you register a trademark as a logo, you must always use that exact logo in commerce.  If you update the logo and stop using the logo you originally registered as a trademark you will run afoul of this requirement and potentially lose all rights in your trademark.   On the other hand, if you register a trademark as just the words, you can use those words in any logo you have now or develop in the future and be in compliance with the “use” requirement.

Granted, there are always situations when filing a trademark as a logo is beneficial (and sometimes it makes sense to make two filings: one for the words and one for the logo).  If you have any questions on this issue please give trademark attorney Josh Gerben a call at 1-877-350-6275.

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Trademark Registration Battle: Jay-Z vs. David Ortiz

Thursday, May 20th, 2010

Notorious Yankee fan Jay-Z and Red Sox David Ortiz are currently at odds, but not over baseball.   Their dispute is over Ortiz’s “Forty Forty” nightclub in the Dominican Republic.  Jay-Z claims that his US trademark registration of the name 40/40 for his nightclubs in the United States is being infringed on by Ortiz.  This claim brings up some interesting issues. First, does a US trademark extend beyond US borders? Also, how similar must a mark be to be an infringement anyways?

The marks Jay-Z has for his nightclubs, “40/40” and “40/40 Club,” are US trademarks.  Also, Ortiz is not a citizen of the US, but rather he is a citizen of the Dominican Republic which further distances him from the jurisdiction of US trademark law.

The markets for nightclubs in the US and the Dominican Republic are clearly separate as they are at a vast distance from each other. Since direct competition is unlikely, Jay-Z’s most valid concern would be that Ortiz’s club is trading off of the prestige of his “40/40” trademark.  He can claim that Ortiz’s use of his trademark weakens its validity.  Also, a negative impression of Ortiz’s club could easily create a negative impression of Jay-Z’s club in the consciences of consumers due to the incredible similarity between the names.  That being said, as long as Ortiz is not marketing the club in the United States, it can make it very difficult for Jay-Z to enjoin his use of the mark.

You might be wondering how it could be that Ortiz and Jay-Z came up with the same idea for names of their nightclubs.  It may help to note that the “40/40 Club” is a reference to the club of elite baseball players who manages to steal 40 bases and hit 40 home runs in a single season (Ortiz is not a member of this club).  It makes sense, then, why both Ortiz and Jay-Z who obviously have interest in baseball would choose a name for their clubs that refers to an elite club within the game.

Perhaps the lesson to be learned from this dispute is that people can and do come up with the same ideas, and it pays to be the first to register a trademark with the USPTO.  Jay-Z may not be able to stop the use of “Forty Forty” in the Dominican Republic because of international limitations, but he will definitely be able to stop any infringement on his name within the US.

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Trademark Registration, Trademark “Use” Requirement

Saturday, April 24th, 2010

In order to obtain a trademark registration in the United States, you must actually “use” your trademark in commerce.  This requirement can cause a lot of confusion for individuals and businesses seeking the protection of a registered trademark.

When filing a trademark, the US Government asks the trademark applicant whether the trademark has been “used in commerce” or if the trademark applicant “intends to use” the trademark in commerce in the future.   Many trademark applicants make the assumption that claiming use is “better” and therefore make up reasons they believe constitute “use.”  This is extremely risky behavior.   All trademark applicants should be aware that if the trademark application does not meet the statutory definition of trademark “use”, yet “use” of the trademark is claimed in the trademark application, then the trademark will be subject to cancellation at almost any time for the making of a fraudulent statement to the USPTO.

Because of the consequences associated with making an inaccurate statement in a trademark application, the question of what constitutes “use” of a trademark under federal law is one that frequently arises.  One of the overriding guidelines for the use in commerce is that the trademark cannot be “used” just to obtain or reserve the trademark registration without intention of continued future use.  This general rule exists primarily to prevent people from speculating about which trademark names could be desired in the future and registering them purely in the hopes of eventually selling them for profit.

The issue I run into all the times is that clients always want to believe they are “using” their trademarks.  For example, many client claim that they are using their trademarks because they have shipments of product in from the manufacturer, they have intracompany use of the trademark, or they have sold a product or service to personal friends and relatives.  These are all examples of unacceptable “uses in commerce.”

The good news is that applying for a trademark as “intent to use” is not necessarily a bad thing.  Provided your trademark is strong enough, you can obtain priority on your trademark as of the date of your trademark filing.  This is because the USPTO wants you to be protected while you are in the process of starting your business or bringing a new product or service to market.  If you file as intent to use you have approximately one year from the date you file your application to prove to the USPTO.

The bottom line is that the issue of “use” in trademark law can be relatively difficult to navigate — and can have severe consequences if not handled properly.  If you retain my firm to assist with your trademark registration, as your trademark attorney I will assist you with this any many of the other tricky issues associated with registering a trademark.

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Trademark Registration, Why You Should Register a Trademark

Saturday, April 17th, 2010

A lot of individuals call my office and wonder if trademark registration is really necessary.  Generally, there are four major benefits of trademark registration.  If any of these benefits make sense to you, then I highly recommend that you consider registering your trademark:

1.  Federal trademark registrations are used by major companies to police trademark rights.  For example, Google, Facebook, Yahoo, etc. all have trademark policies.  The policies heavily favor the owner of a federal trademark.  If you have a federally registered trademark and there is some infringement of your mark going on in their system (think how big Google is),  you can write a letter to their trademark enforcement department and most of the time the infringing use is stopped within a week or two.  Compare this with going to court and spending tens of thousands in legal fees to enforce a trademark.

2.  Trademarks are like property – they appreciate in value.  A trademark can be bought, sold or licensed.  Therefore, if you were ever attempting to sell your business one day, ownership of the federal trademark could significantly increase the purchase price.

3.  Federal trademark registration ensures protection of your intellectual property.  I’ve seen it happen where someone does not register a trademark and then someone else files something similar that then prevents that individual from using their trademark.  I then get the “how do we fix this” call.  Unfortunately, there are not good fixes to this problem.  With 7 billion people on the planet, your idea will occur to someone else.  Obtaining a trademark ensures you will not have to worry about someone else being able to limit the use of your trademark.

4.  If franchising your business is a consideration, you should always (and I mean always) ensure your trademarks are properly protected.

For more information on trademark registration please call trademark attorney Josh Gerben at 1-877-350-6275

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Trademark Registration, Apple’s Ipad Problem

Monday, April 5th, 2010

There have been several interesting stories in the news lately about trademark disputes involving Apple’s new tablet product, the iPad.  With the iPad coming out in less than a week, these disputes have finally been settled by Apple’s acquisition of the trademark registration to the name ‘iPad.’

To the surprise of many, the name of Apple’s newest product was already registered by Fujitsu, a Japanese company with a touch-screen Windows Mobile device named iPAD.  This posed a large trademark infringement issue for Apply since the Fujitsu product is the most similar to the new Apple tablet and also is sold in the same market.

Fujitsu had their product name registered as a trademark from 2002 until 2009, but didn’t start attempting to renew the legal protection for their product name until mid-2009 (presumably after finding out about Apple’s new product).  Apple filed challenges to the Fujitsu ownership of the trademark registration in September of last year.  However, Fujitsu appeared to have substantial common law and legal claims to the ‘iPad’ name, as they had been producing and selling an ‘iPAD’ touch screen tablet since 2002.

Therefore, Apple determined the best way to avoid an issue was to spend some cold hard cash.  The issue was settled when Apple purchased the ‘iPad’ trademark registration from Fujitsu for an undisclosed price.

Fujitsu’s windfall in this case provide an example of benefits that come with the legal ownership of a name.  If Fujitsu didn’t have a legal claim to the ‘iPAD’ name in the form of a trademark, Apple may have preferred a lawsuit to purchasing the rights, and Fujitsu probably would not have been in a strong enough negotiating position to extract a hefty settlement.

To register a trademark today call Gerben Law Firm at 1-877-350-6275

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Trademark vs. Copyright: Do I need a Trademark or a Copyright

Sunday, March 14th, 2010

Many clients call my office unsure of whether or not they need a trademark or a copyright to protect their intellectual property.

The answer is that trademark registration is appropriate when you are trying to protect the name (and/or associated logo or slogan) of a business, a product or a service that you are offering.  On the other hand, a copyright protects a work of art such as the contents of a book or a movie (remember this means the contents of a book or a movie, not the title).

For example, a trademark registration protects the name of a software program such as “Microsoft Word.”  The trademark registration prevents any other company from making a program and calling it “Microsoft Word.”  A copyright protects the software code that makes up the program (thus preventing someone from copying the program’s code and reproducing it without Microsoft’s consent)

Another example is that a trademark registration would protect the name of a band such as “The Black Eyed Peas.”  The trademark registration prevents any other band from using this name to sell music.  On the other hand, a copyright protects the music the band produces (thus preventing someone from copying and distributing the music without the band’s consent – think Napster).

For more information on trademark registration please visit our home page: Trademark Armor.

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Trademark Registration, Cost of Trademark Registration

Sunday, February 14th, 2010

One of the most frequent questions I get asked by potential clients is, “How much is the cost of trademark registration?”  The answer is that you need to be concerned about two fees in the trademark registration process.  The first is how much you are going to pay a lawyer to conduct the trademark search and draft and file the trademark application.  The second is the US Government filing fee (Uncle Sam wants to get paid before they even review your application).

At Gerben Law Firm we try to make the trademark registration cost as low as possible.   As a potential client, you should understand that hiring anyone who is not a lawyer to conduct your trademark search and draft and file your trademark application is extremely risky.  There is a high likelihood that your application will be denied using a service such as Legal Zoom (I get a lot of calls from their dissatisfied customers).  Moreover, please do not believe that you can conduct a “free trademark search” and determine whether or not your trademark is available for use.  There is a lot that goes into conducting a proper trademark search that is impossible to do online.  Our search uses special software and is conducted by an attorney.  There is just no replacement for this type of search. I have seen too many people rely on a free trademark search to file their trademark, only to have it rejected from the US Government (and thus lose all the fees they paid to have the trademark filed).

The cost of trademark registration at Gerben Law Firm as of February 14, 2010 is as follows:

Legal Fee: $495 Flat Rate (includes comprehensive trademark search and drafting and filing of your trademark application)

US Government Filing Fee: $275 or $325 per class (most applications require only one class)

Because each trademark registration is different, give me a call to get an exact quote on the cost of trademark registration for your trademark.  I can be reached directly at 1-877-350-6275.  I encourage you not to worry about saving a few dollars by using a service such as Legal Zoom.  If your application is not done correctly, you will lose your US Government filing fees and end up spending more in the long run to secure your trademark.  I invite you to call me at 1-877-350-6275 and register your trademark properly.

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