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Our firm offers comprehensive Trademark Services. We will work with you and your company to see if there are others using a Trademark or Service Mark similar to yours. We do this to avoid a likelihood of confusion with third party marks. It is important to protect the goodwill you have or hope to establish in your mark.
We will work with you from the conception of your trademark idea to registration with the United States Patent and Trademark Office “PTO.” It is your intellectual property, protect it! We offer discounts for multiple applications. We also have relationships with international counsel and will work with you to get your trademark registered abroad. Always think global!!
To qualify your mark for federal registration, you must use it in commerce. This means that any mark that has been used in connection with the sale of goods or the advertising or rendering of services can be registered- except that it:
*Cannot contain immoral, deceptive or scandalous material.
*Cannot incorporate the flag, coat of arms, or other insignia of either the United States or any individual state, municipality, or foreign nation.
*Cannot de a deceptive geographical indication of the origin or wine or spirit.
*Cannot disparage or falsely suggests a connection with any person, institution, belief or national symbol.
*Cannot use a name, portrait, or signature that identifies a living individual without his or her writte permission.
*Cannot include the name, signature, or portrait of a decesed U.S. president during the life of his widow, without her written permission.
*Cannot be generic, commonly descriptive, functional, or misleading.
*Cannot be something that would likely be confused with a commerical identifier in use by another.
*Cannot be a primarily surname.
Restictions are, as anything else, subject to interpretation. For example, there is a registation of a representation of a condom decorated with the stars and stripes.
WHAT IS MEANT BY “CONFUSINGLY SIMILAR?”
In the world of intellectual property, an owner of a trademark is rewarded for creativity and ingenuity. In the creation stage of a trademark, name, symbol or other device identifying a product or service, the owner must follow several guidelines to avoid creating a mark that is confusingly similar to another owner’s mark.
When applying for a trademark application at The United States Patent and Trademark Office (“PTO”), the applicant must sign a statement sworn under the penalty of perjury that, among other attestations, no other owner to the best of his or her knowledge has a trademark or service mark similar to the one in his or her application. This is why the screening stage of a developing a trademark is extremely important. It allows the owner to search for the existence of prior trademark registrations, applications or domain name. Screening is inexpensive and normally done preliminarily before a more expensive search is conducted and recommended before applying for registration at the PTO.
The PTO examiner will also conduct a search of the U.S. federal trademark registrations and applications and will notify the pro se applicant, or her attorney if the search revealed any marks that are confusingly similar to the applied for mark. In the well known case In re E.I. du Pont de Nemours & Co., 476 F. 2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals established what has become known as “The Dupont Factors” relevant to a determination of a likelihood of confusion between marks. The test encompasses several factors with the following usually considered the most relevant:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
5. The number and nature of similar marks in use on similar goods.
6. A valid consent agreement between the applicant and the owner of the previously registered mark.
The PTO and federal courts follow the basic principle that marks must considered in their entireties. For example, if the mark is a standard work mark with a design and the previously registered mark is merely a design, the PTO cannot dissect the design portion from the applicant’s mark and consider it alone as confusingly similar. That is not to say, however, the PTO would not ultimately find a likelihood of confusion if it clear that more weight is given to the design than the word portion of the mark. Weight may be attributed to the prominent size of the design or the placement of the design on the mark, etc.
Fortunately, there is no mechanical test in determining a likelihood of confusion. It is fortunate, because each application must be decided on a case by case basis. With the advice of an attorney, the applicant may overcome an official action by the PTO by presenting legal arguments that any similarity of the marks will not lead to confusion as to the source of the goods.
Our office assists trademark applicants in responding to a rejection from the PTO. Contact us for an appointment.
- J. Sandy Bartlett 12/5/14
NEXT BLOG TOPIC: #HASHTAG MARKS
HOW TO “POLICE” YOUR MARK
Other ways to assert ownership in your trademark besides using it and using it correctly include knowing who else has a trademark that may be confusingly similar to your trademark. There are several ways to become aware of other similar marks and assert your rights, but to name a few: (1) review the trademark use in your industry and related industries, and (2) send a cease and desist letter to notify any user that you claim exclusive ownership of your mark and they should stop using it immediately.
Some of the best ways to increase your awareness of other marks that may be similar to yours are: (1) Attend industry conferences, (2) look in trade magazines and by all means, (3) search the internet for your trademark periodically. For example, if your trademark is “MARRIOTT” for “hotel services,” you would want to know if any other company is using anything that sounds the same, looks the same, or in any way infringes the goodwill established in your MARRIOTT mark. Marriott International, Inc. even went so far as to obtain a registration for the letter “M” for hotel services. This means that Marriott International, Inc. can control any other company’s use of MARRIOTT and/or the letter “M” in connection with hotel services!! Yes, you too can have Marriott International, Inc.’s level of trademark muscle if you take the time in advance of registering or using your mark to create a strategy of use and protection. The size of your business does not have to be a game changer in trademark matters.
As we discussed last week, it is not enough to have a “big name” if you let your rights in the mark dissolve. Unknowingly, while you go about the business of doing your business, someone else may be out there with a similar business using a similar mark. Top companies know that there is so much value in a name. That is where the experience of an attorney is extremely beneficial. Our firm will not only help you register your mark at the US Patent and Trademark Office (in early posts we talked about the benefits of having a registered trademark), but we will help you assert your rights and prevent others from usurping your rights for their benefit.
- J. Sandy Bartlett 11/6/14
NEXT WEEK’S BLOG TOPIC: What is meant by “confusingly similar?”
HOW TO “POLICE” YOUR MARK
A trademark is intellectual property, and just like real property (i.e. land), an owner of a trademark can lose her rights if she does not diligently assert her ownership. Such action is called “policing” your trademark. There are several ways an owner can police her trademark. One way is to USE it. The owner must use it correctly and make sure others use it correctly when identifying your product or services.
There are some well known examples where the owner lost its rights because the use of the mark became so common that it was blurred whether the mark was a source identifier or a noun. How did it happen? They were all savvy owners who shelved out millions of dollars in the development of their marks: CORN FLAKES (Kellogg’s), ESCALATOR (Otis Elevator), ASPIRIN (Bayer), DRY ICE, only to have their marks now considered generic in the United States.
Over time a trademark can become generic if it becomes too much of an identifier for the thing it is meant to describe. It is not necessary that consumers know the source of the trademark, but it should be clear to the consumer that there is a source.
In order to use your mark properly, let the world know that you claim exclusive rights to use the trademark for the particular goods and/or services by filing an application at the United States Patent and Trademark Office. The trademark owner who holds a valid registration from the United States Patent and Trademark Office holds more than a piece of paper. The registration is a tool to enforce the owner’s rights against other users who may attempt to infringe upon the registered owner’s rights through trademark law and domain name registration.
It is strongly advisable to seek attorney assistance BEFORE you select a trademark to identify your goods or services. Our attorneys will conduct a search and advise whether there is already an owner of the trademark for the same or similar goods and/or services. Such a search opinion can save thousands in potential legal fees for a mark AFTER marketing and distribution has begun.
Use your mark correctly and stop others from using your mark incorrectly without your consent through a license agreement.
Contact our office for more information!
- J. Sandy Bartlett 10/30/14
NEXT WEEK’S BLOG TOPIC: OTHER WAYS TO ASSERT OWNERSHIP IN A TRADEMARK
<!--[if !supportLists]-->- <!--[endif]-->J. Sandy Bartlett
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