Service Marks

USPTO TO INCREASE TRADEMARK FILING AND OTHER FEES

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Trademark application

On May 27, 2016, the United States Patent and Trademark Office (“USPTO”) published in the Federal Register a Notice of Proposed Rulemaking to adjust trademark fees [Notice].  If all goes as planned, the fee adjustments will be effective in January 2017.  Because many of the adjustments are fee increases, those planning to file an application for trademark registration may want to act sooner rather than later.

As you may know, the USPTO largely relies on self-funding to pay for trademark related operations.  This means that ideally those who use the various services provided by the Trademark Office pay for those services.  Because the overall goal is to achieve aggregate cost recovery, periodically, fees must be adjusted to match projected expenses.  The USPTO summarizes the objectives for the rulemaking as: Continue reading

THE POWER OF LOGOS AND COLOR

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In a recent blog, Larry Bodine, a web and marketing guru, offers great advice to business owners when choosing the “look” of their logo/trademark. He provides information as to how some large companies came to adopt their famous marks, their investment expenses along with examples of  famous logo faux pas.  Larry’s blog re-enforces a message I have offered [Earlier Blog] as to how important it is to select your logo/trademark with care. [See Also]

WHY ARE THE SAN DIEGO CHARGERS TAKING PRE-EMPTIVE ACTION TO PROTECT THEIR RIGHTS IN FUTURE TRADEMARKS?

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Football Play Strategy Drawn Out On A Chalk BoardThe football world is abuzz with the possible relocation of the San Diego Chargers to Los Angeles. Background for Team Move.  While the outcome of where the Chargers end up is of short term interest, the more interesting question business owners should ask is: Why did the team file “intent to use” applications  Section 1(b), Lanham Act for federal registration of two possible marks with the United States Patent and Trademark Office (“USPTO”)? 1/  The answer is that the Chargers want to block others from hindering their future adoption of the new marks if the relocation happens.

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WHAT IT TAKES TO PROTECT A CERTIFICATION MARK? (Part 2)
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Orange Tick Circled Shows Quality And Excellence

This blog follows on my earlier examination of why a certification mark could improve the bottom line for both for-profit and not-for-profit organizations.

If you think that setting up a certification program is in your future, or you already have one in place, here are some points to consider as you develop or perfect the program:

1.         A certification mark is not the same as the mark your organization uses to identify its goods and services (“identification mark”).  While the design of the certification mark may incorporate some elements from your identification mark, it should nonetheless have distinctive elements to eliminate confusion between the two. 

2.         Because there are basically three types of marks, it is critical to understand which kind applies to your organization, because the standards for the United States Patent and Trademark Office (“USPTO”) registration process differ: 

            a.         Marks that certify that goods or services originate from a specific geographic region (“Champagne” for wine, “Roquefort” for cheese, “Indian River Fruit” for Florida citrus);

            b.         Marks that certify that goods or services meet certain standards for quality, materials or mode of manufacture (“UL” mark certifies electrical equipment meets certain safety standards; “Pure Wool” logo means the product is made of a 100% wool); and

            c.         Marks that certify that the work or labor for a product or service was performed by a member of a union or other person meeting certain standards.( Union workmanship).

3.         Identify the standards that an applicant to your program must meet.  These may be created by your organization or based on standards established by a governmental agency or other standard developer.

4.         The certification mark will be used by third parties, not by your organization.  Once the third party has met the standards your organization has set, they will be permitted to use the certification mark in connection with their own goods or services to tell the world they are “qualified” to do so by the certifier.

5.         Consider federally registering your certification mark with the USPTO, which, once accomplished, basically gives your organization protection in all 50 states.

6.         If you are going to request federal registration of the mark, the USPTO will require you to submit a copy of the standards you have established to determine whether others may use the certification mark. (37 C.F.R. §2.45)

7.         To protect your rights in the mark and not risk being deemed to have abandoned it, maintain an appropriate policing program to insure that it will be used correctly by the third parties.  Here are two actions you should take:

a.         Issue a letter that makes it clear that they are using the certification mark under license from your organization and if they fail to maintain the standards you have required, you can revoke the privilege; and

b.         Monitor third-party use of your certification mark.  For example, depending on what is appropriate, you could require periodic refresher training or status reporting.  At such intervals, your organization could charge fees to support this monitoring process.

In these difficult economic times, developing a certification program can not only help to set you apart from your competition but also force others to play by your rules.  That is definitely an enviable position.

TRADE NAMES VERSUS TRADEMARKS UNDERSTANDING WHY YOU MAY NEED BOTH
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             In the course of my practice, I am often asked to explain the difference between a trademark and a trade name.  Understanding the role that each  plays in the life of a business is important so that the owner can take appropriate steps to protect its interest in one or both of these forms of intellectual property.

What Is a Trade Name and How Can You Protected It? 

              Once you have chosen the legal form under which your business will operate, you need to identify the official name of the owner of that business.  If you will be a sole proprietor, then your name will be the one that identifies the owner, for example, Susan Smith.  If John Wilson and Susan form a partnership, then the name of the owner of the business might be “Smith & Wilson. “  On the other hand, Susan and John could operate as a corporation or limited liability company and might name their entity “Smith & Wilson, Inc” or “Smith & Wilson, LLC.”

              Depending on the State where Susan chooses to run her business, she may need to register her sole proprietorship or partnership name with the appropriate State and local authorities.[i] / If she will operate as a corporation or limited liability company, she will first have to form the entity in the State of organization before the entity can come into existence. Part of the formation process will require her to identify the official name of her entity in accordance with the naming conventions required by that State’s law.

              Although the business owner has been identified with an official name, the owner may wish to use another name in the market place.  In Susan’s case, if she is a caterer, she might want to identify her business as “Heavenly Spread.”  This other name will be her trade name, also referred to as a fictitious name.  Owners operating in this manner usually will make the distinction clear when entering into agreements by signing as “Susan Smith dba (or T/A) Heavenly Spread,” even though they drop the dba designation when marketing to the public.

              Because no one will know who actually owns Heavenly Spread when Susan announces the opening of her catering establishment using the Heavenly Spread name, she will have to register her fictitious name in accordance with the State’s fictitious name regulations where she conducts her business.  Such registration is necessary so that if anyone needs to contact her as the owner or has a complaint with Heavenly Spread, there will be a record with the State identifying the owner of that trade name.

What Is the Difference Between a Trade Name and a Trademark?

              A trade name is an alternative name that a business owner can use.  By contrast, a trademark or service mark, which can be a word, phrase, symbol, design or combination of such, indicates to the consuming public that there is a specific provider that stands behind the goods or services being offered which is different from another provider of similar goods or services.

              It is possible that the owner of a business will adopt the same words for its official name or trade name and its trademark.  Prime examples are “Dell” and “Ford.”  However, the family names did not become trademarks immediately.  Rather, it took time for those words to take on the characteristics of a trademark, meaning that in the mind of the public those words came to stand for the providers of specific goods, namely, computers and cars.

              In the case of Susan and John, they can choose to adopt “Heavenly Spread” as their service mark in connection with their catering business.  However, before adopting any mark, it is wise to have a professional search done to be sure that others who provide similar services are not already using the mark for their business.

What Are Some Steps You Can Take to Protect Your Trademark?

              As a business owner you only acquire rights in a mark by using it; therefore, one major step that must be taken to protect your rights in your mark is to use it continuously and frequently.  Do not be afraid to display it prominently, whether on your website, labels, or marketing materials.

              Another protective step is to use the symbols   TM SM  ® near your mark.Use of these symbols shows that you are claiming ownership rights in the mark.

              “TM” stands for trademark and “SM” stands for service mark.  You do not need to have any special governmental approval in order to display those symbols.  However, depending on the geographic area where you conduct your business, your trademark protection may be limited to that geographic location.  This means that while your business is focused in Maryland and Virginia, someone else operating in Texas or Oklahoma may use the same mark for a similar business and not be guilty of infringing on your rights.

              If you qualify to obtain federal registration of your mark, meaning that you are actually using the mark in interstate commerce, you can apply to the United States Patent and Trademark Office.  Once you complete the registration process, you are authorized to use the ® designation with your mark.  Federal registration provides you with more muscle to restrict others from using your mark as it means that, generally, your ownership rights extend throughout the United States.

              A third step you should take to protect your mark is to choose it carefully.  If your mark is merely descriptive, meaning it describes your services or goods, you may not qualify for federal registration.  Or, even if you do, there will be many others using similar terms, making it harder for you to distinguish yourself.  Such an outcome defeats the very purpose of having a mark, which is to enable you to distinguish yourself from your competition.

              Therefore, while it could be harder, and may even cost you money to identify, choosing a strong mark gives you a higher level of protection.  A strong mark means a word mark that may be a made-up, arbitrary, suggestive or fanciful word or phrase.  Some strong marks that come to mind are:  “Xerox,” “NIKE,” “Apple,” “VW Beetle,” “Footlocker.”

              What you should take away from this discussion is that while a business owner may use the same words for the business’ official name or trade name and its trademark, each iteration serves a different purpose.  By understanding the distinctions, you will know how best to protect your interests in the various ways you go about presenting your business to the public.

              For additional information about the trademark/trade name distinction, go to the SBA’s blog at:

http://www.sba.gov/community/blogs/community-blogs/business-law-advisor/difference-between-trade-name-and-trademark-%E2%80%93-a


[i] /           Establishing a business in any jurisdiction can require the owner to apply for multiple registrations and permits or licenses.  Those requirements are beyond the scope of this Blog.

A STAR VS A SWOOSH FOR A TRADEMARK
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When advising my small business clients about what to consider when they adopt a trademark or service mark, I urge them to look for strong characteristics in the mark that will help to differentiate them from their competitors.  In the case of word marks, the farther you get from using descriptive terms, the stronger and more protectable your mark will be.

If having a logo is an important part of your brand development, I suggest that you consider your design carefully, with an eye toward selecting a strong mark, so that you can effectively protect it against competitors.  One company has learned the hard way that even with a service mark logo successfully registered with the United States Patent and Trademark Office (USPTO), it could not prevent a direct competitor from using a similarly designed mark.

Here are the bare facts.  Amazing Spaces, a self storage company in Houston, Texas, registered with the USPTO a five-pointed star in a circle as one of its marks.  Its rival in the same geographic market, Metro Mini Storage, adopted a five-pointed star in a circle for its service mark.  Metro Mini refused to back down when Amazing Spaces demanded it cease and desist.  You might think this is a no brainer.  The registered mark should win, right?  Well according to the Fifth Circuit Court of Appeals, Amazing Spaces had a non-protectable mark and dismissed the claim against Metro Mini.  The Court’s reasoning is important and goes to the core of what really constitutes a trade mark.

A trademark exists only if in the mind of Ms. Q. Public, it successfully acts as an identifier of the source of the goods or services being sold.  In the case of a logo, it is important to avoid adopting ordinary geometric shapes because they can be considered by a consumer as mere decoration.

Even if you successfully were to register such a logo with the USPTO, it later could be cancelled by a challenger under the theory that the design or symbol you adopted was common and likely to be perceived by consumers as ornamentation rather than indicating you as the source of the goods or services.  The only way you could defend your mark against such an attack would be by proving that it had acquired “secondary meaning.”  In other words, consumers viewing the mark know it refers to you, in the way that the swoosh means NIKE.  So while NIKE’s simple curved bar shaped logo upon its introduction in the 1970’s may not have withstood a challenge similar to that raised by Metro Mini, due to NIKE’s longstanding promotional efforts, the swoosh has acquired the necessary secondary meaning.

The clear lesson is that even in the case of a big player like NIKE, having simple geometric shapes acquire the strength to withstand a direct challenge by a competitor could depend on how much time and money you have spent in getting the public to understand that the logo is not merely ornamentation but stands for you.

If you were considering the adoption of a logo for your goods or services, what characteristics would you want the design to have?  Do you have any war stories to share related to selecting your logo?