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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.

Tags: expedite trademark registration, register a trademark, registering trademarks, trademark registration, us trademark registration
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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.

Tags: application for trademark, expedite trademark registration, register a trademark, registering trademarks, trademark attorney
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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.

Tags: expedite trademark registration, register a trademark, register us trademark, registering trademarks
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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

Tags: application for trademark, register a trademark, trademark attorney, trademark registration
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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

Tags: application for trademark, register a trademark, trademark registration process, us trademark registration
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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.

Tags: how do i trademark a product name, register a trademark, trademark a name
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Trademark Search, When to Conduct a Trademark Search

Sunday, February 7th, 2010

I can not count the amount of times I wished I had a time machine for clients who retain my firm to assist them in the trademark registration process. A lot of clients retain my firm to conduct a trademark search after they have built up significant equity in their brand name or logo. The problem with conducting a trademark search so late in the process is that many times a conflict can exist that will cause a major reinvestment to be needed in a new name or logo.

I find that a lot of clients believe that if they are able to register the trademark as their business name when they register an LLC or Corporation that their trademark is “available for use.” This, however, is not the case. Trademark law in the United States is complex. In order to know if a trademark is “available” for use, a full federal, state, and common law trademark search should be conducted by a professional.

My best advice to business owners is that before you open your doors, or start to market that new product or service, conduct a trademark search with a professional that can give you a good legal opinion as to whether or not it is safe to proceed. And please, whatever you do, do not think that you can use any of the “free” searches available on the internet to ensure your trademark is available. Those trademark searches are legally worthless.

If you would like to retain my firm to conduct a trademark search for you, please click here or call us at 1-877-350-6275

Tags: conduct a trademark search, register a trademark, trademark search, us trademark search
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How Much Does It Cost To Register A Trademark?

Friday, August 7th, 2009

An important element of the trademark registration process is understanding how much it costs to register a trademark. There are essentially two fees you should be concerned about:

How much will the lawyer charge to conduct a trademark search and draft your trademark application;
How much will the U.S. Government charge to file the trademark applications (to register a trademark you are filing an application with a United States Government entity called the United States Patent and Trademark Office).

As of August 2009, I charge an affordable flat legal fee for my services of either $195 or $475 depending on the package of service you prefer. For $195, I will conduct a basic trademark search and draft and file your application. This option includes a federal trademark search in which I will determine if anyone has previously registered your trademark. While this search is extremely thorough, I would suggest the comprehensive trademark search package which is $475. This second option is considered a full legal clearance because it looks for any trademarks that could present a legal issue. In addition to searching federal trademark databases, it searches state and common law trademark databases. This is because if another company has registered a similar trademark at the state level, or has developed common law rights in the trademark, this company may be able to sue you for trademark infringement even once you file your federal trademark application. Therefore, the comprehensive search results come with a letter from my law firm detailing all the legal risk associated with your proposed trademark.

The government filing fee to register a trademark is $325 or $275 per class of goods and/or services. The difference in price depends on a number of factors, however, I can normally qualify my clients for the reduced filing fee of $275.

Therefore, the total cost to register a trademark is:

The Legal Fee, plus,
The U.S. Government Filing Fee.

For more information on how much it costs to register a trademark please view all options on our Trademark website a www.trademarkarmor.com.

Tags: basic trademark search, comprehensive trademark search, free trademark consulation, register a trademark, trademark registration, trademark search
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What is a trademark?

Wednesday, August 5th, 2009

I receive many inquiries regarding what a trademark actually is and what it protects. As your attorney, I will provide you with a comprehensive definition of a trademark as well as answer any questions you may have pertaining to the trademark registration process.

Generally speaking, a trademark is a word, symbol, device or name that identifies the source of a good or service. Therefore, your trademark could be just a name, or it could be a logo, a slogan, or “tagline.” More recently, trademark law has expanded to the point where you can even register a particular smell as a trademark. At the very core, a trademark is used to associate a good or service with a particular company. Trademarks are intended to prevent consumer confusion by immediately distinguishing the producer of a good or service.

In order to assist you in completing a successful trademark application that will not be denied by the USPTO, I will utilize our trademark search software to search for any existing marks that may potentially conflict with yours. If such a conflict arises, I will offer my legal advice to you as an attorney on the risks involved in proceeding with your particular application or what you may need to change about your mark to avoid an infringement issue.

In addition to receiving questions about trademarks, I often receive many inquiries concerning patents and copyrights. While all three may appear similar, there are important distinctions that exist between each. As previously stated, a trademark protects an identifier of a good or service. Patents, on the other hand, protect ideas like inventions. Lastly, a copyright protects original works that are typically placed in the following categories: literature, dramatic, musical, artistic, and intellectual. Therefore, the content of a book is protected by copyright law while the name of a series of books (e.g. Harry Potter) would be protected by trademark law.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

Tags: register a trademark, register us trademark, registering trademarks, trademark a band, trademark a logo, trademark a name, trademark a product name, trademark registration, us trademark, us trademark application, us trademark registration, what is a trademark
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What is a USPTO Office Action?

Tuesday, July 14th, 2009

I get a lot of calls from potential clients who have received an Office Action on their trademark application and want to know what it means. An Office Action from the USPTO can mean a lot of different things. It can be something as simple as the USPTO asking for a simple clarification on your application or something as serious as a denial of your trademark application (please note that a denial can always be appealed).

One of the most critical aspects of a USPTO Office Action is ensuring a response is filed with the USPTO within the deadline stated on the Office Action. If you receive an Office Action for something as simple as a clarification of information on your application and do not respond by the deadline your application, your trademark application will be considered to be abandoned and you will lose all priority on your trademark. Therefore, it is extremely important to treat any Office Action seriously and respond in the proper time frame.

Another critical aspect of responding to an Office Action is ensuring that you are properly responding to the USPTO’s requests. Failure to properly respond to the requests can also lead to denial of your application. Therefore, if you have been issued an Office Action it is highly recommended that you contact a trademark attorney so that the response filed is technically correct.

My law firm helps clients respond to all types of Office Actions. Even if your trademark has been initially denied by the USPTO we can e draft a legal argument to attempt to overturn the negative decision. The cost to respond to an Office Action will vary depending on the particular Office Action. I offer a free trademark consultation to clients who are looking to respond to an Office Action. I can be reached directly at (202) 294-2287 for this free consultation.