Posts tagged with "Trademarks"

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

Redskins Eye Supreme Court to Overturn Trademark Disparagement Restriction

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To update my earlier blog [Blog] concerning whether Section 2 (a) of the Lanham Act, 1946, which restricts federal registration of trademarks  found to be scandalous or disparaging, will withstand challenges to its constitutionality, the Redskins football team has raised the ante by its unusual petition to the Supreme Court.

In the petition, the Redskins suggests that the Supreme Court not consider the constitutionality of Section 2 (a) until after the team’s appeal of an adverse District Court ruling is decided by the U.S. Court of Appeals for the Fourth Circuit.  Continue reading

DISPARAGEMENT ISSUE IS FRONT & CENTER FOR USPTO TRADEMARK REGISTRATIONS

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Push pin on trademark textSection 2 (a) of the Lanham Act, 1946, 15 U.S.C. Sec. 2 (a), which restricts the registration of trademarks found by the USPTO to be scandalous or disparaging, was determined to be unconstitutional on the basis of the First Amendment by  the Court of Appeals for the Federal Circuit in a case (In re Simon Shiao Tam-2014-1203), brought by “The Slants,” an Asian-American rock band.  [Background]

Mr. Simon Shiao Tam, as the owner of the mark, filed in 2011 a registration application for  “The Slants” (Serial No. 85-472044).  The USPTO examiner rejected the application on the basis that the applied for mark was disparaging under Section 2 (a)  because the word had a long history of being used in a derogatory way for people of Asian decent.  The examining attorney believed that people of Asian decent would take offense from the use of the applied for mark.  The rejection was upheld by the Trademark Trial and Appeal Board (TTAB.) 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]

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.

TRADEMARK RIGHTS GIVE WAY TO FREEDOM OF EXPRESSION
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     If you plan to create a work that will include references to famous people, you may well ask will you run into challenges for using such references. A recent 9th Circuit decision offers guidance as to whether your use will withstand the challenge by a famous person who claims you are violating his or her trademark-related rights.

            Brown v. Electronic Arts, Inc., involves James “Jim” Brown (“Brown”), the famous football player, who sued Electronic Arts (“EA”), the manufacturer distributor and seller of the Madden NFL series of football video games.  http://caselaw.findlaw.com/us-9th-circuit/1640518.html?DCMP=NWL-pro_ip  The video games allow users to control avatars representing professional players, and to participate in simulated games.  Some versions of the games included likenesses of Brown.

            Brown’s claims under the Lanham Act, the main federal trademark law, are of particular interest here.  Generally with trademarks, the basic test a mark’s owner is asked to show is whether use of the competing mark is likely to cause confusion in the public’s mind, and Brown’s basic argument was that EA’s use of his likeness without his permission was likely to cause confusion in the mind of the public as to whether he endorsed the video games. 

            However, there is always the understanding that granting exclusive use of marks limits constitutionally protected free speech.  In evaluating the competing interests of protecting the public from deception and protecting freedom of expression, when the identifying material in question appears in an expressive work, Courts tend to shift the balance toward First Amendment considerations.

            Because EA’s videos are considered expressive works, the Court considered whether EA’s use of Brown’s likeness in the videos was relevant.  Given EA’s professed interest in creating a high level of realism for the various football teams portrayed, inclusion of Brown’s likeness in the recreation of the ’65 Cleveland Browns team was relevant.

            While the takeaway from the Brown v. EA decision is that if inclusion of a famous person’s likeness in an expressive work is relevant, you are likely to withstand a challenge to such use under federal law.  However, it is important to keep in mind, despite the dismissal of Brown’s case in federal court, Brown was not foreclosed from pursuing claims under California law for invasion of privacy and unfair businesses practices.