Posts Tagged ‘registering trademarks’

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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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Can I trademark a band name?

Wednesday, July 8th, 2009

I get a lot of calls from clients who are starting a band and want to know if they can trademark the name of their band.  The answers is: absolutely.  In fact, obtaining a trademark on a band is the best way to protect the name of a band.

The difference between any other trademark and a trademark for a band is that a band’s trademark tends to always fall under two separate “classes” as designated by the United States Patent and Trademark Office.  When  a trademark application is filed, the application requires that the applicant identify the “class” of goods or services which the trademark identifies.  There are 45 different classes.  In the case of a band, it almost always requires registration under two classes (Class 9 for MP3′s and CD’s and Class 41 for concerts).

If your band produces CDs, or downloadable music files (MP3′s), your band’s name is the identifier of these “products.”  Therefore, it is necessary to designate on the trademark application that your band name produces these products under Class 9.

In addition, if your band performs concerts, your band’s name is the identifier of these “services.”  Therefore, it is necessary to designate on the trademark application that your band name sells these services under Class 41.

Therefore, you can certainly trademark a band name.  When you file the tradmeark application you will be protected from anyone else using the band’s name to sell music or perfom concerts.  In order to obtain this protection please click on the “register your trademark” link below.  Once you complete our online form an attorney will contact you to go over the details of the trademark for your band.

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

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Help with trademark searches and registration

Friday, June 26th, 2009

For anyone looking for help with a trademark search or the trademark registration process I would like to invite you to visit Trademark Armor.  I get calls everyday from small and large businesses who need help in determining if their trademark is available or has already been taken by someone else.  Moreover, many businesses find the trademark registration process extremely confusing and are happy to know that my law firm can provide help with the process.

My law firm was built to provide trademark search and application help to anyone or any business who has a name or a logo that they want to protect.  While anyone can go online and attempt to fill out a trademark application themselves, the process contains many technical details that are not apparent on the face of the application.  Failure to properly complete a trademark application can lead to its denial by the federal government.  My law firm works to help ensure that your trademark application will be accepted by the federal government and avoid the common mistakes made in applications.

A federal trademark is the strongest protection that any business can have on its name or logo.  My firm helps hundreds of businesses every year register a trademark.  If you are unsure how to get started in the trademark search and registration process please give me a call today.  I am always available to help in the trademark search and registration process.

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

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How to Conduct a US Trademark Search

Wednesday, June 17th, 2009

Many clients call my office wanting to know if their trademark is “available” for registration.  The only way to determine if a trademark is available is to conduct a US trademark search.  A US trademark search can be conducted on the Web site of the United States Patent and Trademark Office (www.uspto.gov).

While anyone can go on the USPTO Web site to conduct a trademark search, it is virtually impossible for an unskilled searcher to determine if a US trademark is capable of achieving registration.  This is because the USPTO search engine is not robust enough to do a thorough US trademark search without the skill of an experienced searcher.  In order to determine if a US trademark is capable of achieving registration, the US trademark searcher must break down the trademark into multiple parts and look for similar marks in categories containing related goods.  Therefore, it is highly recommended that a US trademark lawyer is hired to conduct a US trademark search.

Moreover, in addition to the federal trademark database, a US trademark search must include a US state trademark search and a US common law search in order to provide full legal clearance for use of the trademark.  This is because under US trademark law if someone has registered a trademark with a state or simply begun use of the trademark in commerce (i.e. a common law trademark), that person or company may have certain rights that could interfere with a federal trademark.  Therefore, a complete US trademark search also includes a search of state and common law databases.

Once the US trademark search is complete, only a US trademark lawyer can interpret the results to provide an opinion on whether or not a US trademark is capable of achieving registration.

For a complete US trademark search please visit www.trademarkarmor.com

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How to register a trademark in the USA

Thursday, June 4th, 2009

Many international clients call my law firm to find out just how to register a trademark in the USA.  To register a trademark in the USA a company or individual must draft and file an application with the United States Patent and Trademark Office.

While this USA trademark application can be completed by anyone, I highly recommend to potential clients that they retain my firm to complete their trademark application.  The reason I recommend retaining a USA trademark attorney to draft and file a trademark application is because there are many technical and legal elements hidden in the USA trademark application.  If certain information is not entered correctly, it could lead to rejection of the USA trademark application and loss of any priority established on the trademark.

Moreover, to register a trademark in the USA it is imperative to first conduct a USA trademark search.  If a trademark search is not conducted prior to an attempt to register a trademark in the USA a client may not be aware of a pre-existing federal, state or common law trademark that could result either in the rejection of a USA trademark application or in a limitation of the client’s rights in their trademark.  Therefore, to register a trademark in the USA I recommend to potential clients that they retain my law firm to assist them in conducting a proper USA trademark search and then for the drafting and filing of the USA trademark application.

Once a USA trademark application is filed, a client must then wait for the U.S. Government to review and approve their application.  It generally takes about 8-10 months to register a USA trademark from the date the application is filed.  However, so long as the USA trademark application is ultimately approved, the trademark rights start on the date the USA trademark application was filed.  Therefore, when a client wants to register a USA trademark to protect their rights, they can be assured that no one will be able to attempt to register a USA trademark that is similar to theirs after the date of their USA trademark application filing.

To get started with the process to register a USA trademark please follow the link below.

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How long does the U.S. trademark registration process take?

Wednesday, May 27th, 2009

Many of my clients are surprised to learn that the U.S. trademark registration process can take from six to eighteen months to be completed.  In today’s fast paced economy many of my clients want to know if there is a way to expedite the US trademark registration process.

Unfortunately there are no expedited fees that can be paid to make the U.S. trademark registration process move any quicker.  The fact is that every U.S. trademark application must be reviewed by a trademark examining attorney with the United States Patent and Trademark Office (USPTO).  Because of the large volume of trademark applications received by the USPTO it generally takes four months just for the US trademark application to reach a US trademark examining attorney.  Once the examining attorney reviews the U.S. trademark application, if he/she does not have any problems with the proposed U.S. trademark registration, then the trademark application must go for a thirty day period of public comment.  It is only after this period of public comment closes can the U.S. trademark registration be issued.

Therefore, a successful U.S. trademark registration can be accomplished in as little as six months, however, many U.S. trademark applications require additional steps.  For example, the trademark examining attorney may require additional clarifications on the application.  Or, the attempted US trademark registration may be rejected on one of many grounds.  A trademark rejection may always be appealed, however, this adds multiple months to the process.

To ensure that a client’s US trademark registration attempt avoids these pitfalls, I generally encourage clients to complete a comprehensive trademark search to ensure that the trademark application will not be rejected based on a pre-existing similar trademark.  In addition, I highly recommend clients follow my advice on the completion of their U.S. trademark application to ensure the process goes as smoothly as possible.  At the end of the day, the US trademark registration process affords clients great protection on their trademarks, it just requires the patience of Job.

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