Video FAQ’s
Welcome to our Video FAQ’s. These are short videos covering basic aspects of trademark law. We will be adding more videos.
Trademark Infringement
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- Trademark Infringement
- Description
- We have and continue to handle many trademark infringement cases. To determine if it is a trademark infringement, the courts look at the following factors: 1. the strength of the mark; 2. the degree of similarity between the two marks; 3. the proximity of the products; 4. the likelihood that the prior owner will bridge the gap; 5. actual confusion; 6. defendant's good faith in adopting its own mark; 7. the quality of defendant's product; and, 8. the sophistication of the buyers. This is not intended to be an exhaustive list, but is merely a starting point. Furthermore, when evaluating the similarity of the marks, the sound, meaning and commercial impression of the marks are evaluated (see factor #2). The ultimate test is whether or not consumers are going to be confused. There are also additional provisions in the law to remedy § 43(a) Unfair Competition (15 U.S.C. § 1125(a)) - Under the Lanham act, unregistered marks are protected as well. And trade dress, etc. This provision has far reaching implications and has provided protection for restaurant formats, colors of products, sounds and smells. The key difference in proving an infringement of a registered trademark and an unregistered mark is that in the case of an unregistered mark it is necessary to demonstrate that the mark functions as a mark, namely that it has acquired secondary meaning and it indicates source There is also protection for famous marks and to prevent dilution of those marks. Under the trademark statute there is also the Anticybersquatting Consumer Protection Act also known as the ACPA which permits trademark owners to stop the unlawful misappropriation of domain names by third parties.
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- Trademark Application Requirements
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- To file an application, we need to know the following: 1. The owner of the mark, citizenship, domicile 2. The mark to be registered 3. Identify the goods and/or services 4. Declare that you are the owner of the mark, and that you are entitled to registration 5. Submit a fee for each class covered by application 6. Indicate your filing basis, there are 5 basis: 5 Basis for filing •Use •Intent to Use •Foreign Application •Foreign Registration •Madrid Protocol
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- International Trademark Registrations
- Description
- Madrid Protocol Law became Effective in U.S. November 2, 2003 Many major countries and jurisdictions around the world are included in this filing system, and more are being added regularly. It requires an application in a home country (U.S.) then extend that to Madrid and designate the specific countries of interest Applications are examined in each country per their local law Single registration easier to maintain Costs are significantly less than filing in each country directly Simplified filing and maintenance system. Does not change individual country substantive law We can work with you to formulate a plan to seek protection of your marks on a world wide basis.
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- What is Intellectual Property?
- Description
- Intellectual Property law overview. Patents, Trademarks, Copyrights, Trade Secrets explanation of each area of the law and how they are different, and how they are similar. Intellectual property is distinguished from all other property rights in that they are both intangible and inexhaustible. Intellectual property is similar to other property rights in that they each posses the right to exclude. Patents protect inventions. New, useful, non-obvious processes, machines, articles of manufacture, and compositions of matter Copyrights protect expressions of ideas, not the underlying idea. Trade Secrets protect information and ideas of commercial value which are secret Trademarks protect the symbols by which products and services are identified in the marketplace.
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- Trademark Examination Process
- Description
- Trademark Examination Process After the application is filed, it is examined for registrability. Substantive examination is made to determine if the mark conflicts with a prior mark on the register, or if the mark is descriptive of the goods or services, among other things. If there is an issue, an office action will issue and the applicant has 6 months to respond. Assuming the application is approved, the application will be published for opposition giving third parties 30 days from the publication date the right to object to the issuance of a registration. Once the opposition period is completed, or successful conclusion of the opposition, either a registration issues, or if the basis of the application is intent to use, a Notice of Allowance issues.
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- Trademark Cancellation Actions
- Description
- Cancellations are administrative proceedings where testimony and arguments are submitted to the Trademark Trial and Appeal Board for determination. Typically, the basis for a cancellation is the mark conflicts with a third partys rights in a mark. Many cancellation actions are brought on the basis of non-use, or non-use for three consecutive years which is prima facie abandonment. The benefit of a prima facie abandonment case is that the mark owner has the burden of proving that the mark has not been abandoned instead of the plaintiff. Trademark cancellations can also be brought on the basis of fraud on the trademark office or that the mark has become generic. It is important to know that after five years of registration of a mark, many reasons for canceling a mark, including prior use of mark, are no longer available. Most cancellations are settled early on typically because the owner of the mark has lost interest in the mark, ceases to be in business, or the parties enter into a mutual consent to use and register their marks or despite investigations into use, it is clear that the mark is in use and that the cancellation would not be successful. If the case is not settled early on, then there is a specific schedule of events that need to be adhered to in order to successfully defend or prosecute the opposition. Like regular court litigation, there is the discovery phase, where each side can obtain discovery through the conventional ways, such as: Requesting documents or things Asking written questions Asking for specific admissions of facts Taking a deposition After the discovery phase, there is the testimony phase, where each party asks questions and elicits answers to put the facts of the case into the record. First the plaintiff goes, then the defendant, and the plaintiff then gets a reply period. This is just like as if you were in court and testifying, except that it is done in lawyers offices before a court reporter. After the testimony phase, there is a briefing phase, where each party gets to submit its briefs applying the law to the facts as elicited in the testimony phase. First the plaintiff, then the defendant, and then the plaintiff gets the last word by filing a reply brief. Oral argument is available, but it is discretionary, and not many cases are argued.
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- International Protection of Trademarks
- Description
- We have far ranging experience representing clients in foreign countries and registering their marks throughout the world. Trademarks are Jurisdictional Countries have Individual Laws but can be broken down into categories when determining how to approach international protection of your mark. •Commercially Important Countries •First to File •First to Use •Others (Usually based upon another Registration) It is through the Madrid Protocol that United States applicants can obtain International Registrations. However, it is necessary to designate the countries of interest that are to be covered by the international registration and pay the fees accordingly. Virtually every country in the world has some sort of trademark legislation providing for the registration and protection of trademarks. You can file a single application in the EEC at this time and cover all countries in Europe (except Switzerland) with a single registration.
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- Explanation of the Relative Strength of Marks
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- Relative Strength of Marks The cornerstone of trademark protection is that without proper policing the mark can become generic. (Asprin, Escalator, Cellophane) It is a duty of the trademark owner to prevent confusion in the marketplace and to protect its mark. Federal registration adds a number of important remedies, including possibly treble damages and attorney fee awards. Relative Strength of Marks. In ascending order of strength: Generic - these can not be registered as they are the common descriptive name of a particular class of products or services (ASPRIN) Descriptive - these can only be registered upon demonstrating secondary meaning, i.e. that through use, the mark has acquired a meaning in addition to its common meaning that identifies a source of goods or services (WEIGHT WATCHERS) Suggestive these marks are inherently registrable, and suggest the nature or quality of the products or services (DIAL-A-MATTRESS mattress sales) Arbitrary these marks are registrable as the terms or symbols have no direct connection or association with the particular goods or services (APPLE for computers) Fanciful these are typically made up terms (KODAK for photographic supplies) It is important when selecting a mark for adoption and evaluating a mark for potential infringement to honestly determine the relative strength of the mark in question. The more descriptive/suggestive they are, the narrower the scope of protection. The more arbitrary or fanciful they are, the wider the scope of protection. The stronger the mark is the further away you can keep other marks. Trademark Rights come into existence in one of two ways, the earlier of: 1) first use in commerce, or 2) first to file an intent to use application, or based upon foreign application or foreign registration in the US Patent and Trademark Office.
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- Trademark Oppositions
- Description
- Oppositions are administrative proceedings where testimony and arguments are submitted to the Trademark Trial and Appeal Board for determination. Typically, the basis for an opposition is the third partys prior rights in either a registered or unregistered mark, and the likelihood of confusion and/or dilution should the application proceed to registration. Most oppositions are settled early on. If they are not, there is a specific schedule of events that need to be adhered to in order to successfully defend or prosecute the opposition. Like regular court litigation, there is the discovery phase, where each side can obtain discovery through the conventional ways, such as: Requesting documents or things Asking written questions Asking for specific admissions of facts Taking a deposition After the discovery phase, there is the testimony phase, where each party asks questions and elicits answers to put the facts of the case into the record. First the plaintiff goes, then the defendant, and the plaintiff then gets a reply period. This is just like as if you were in court and testifying, except that it is done in lawyers offices before a court reporter. After the testimony phase, there is a briefing phase, where each party gets to submit its briefs applying the law to the facts as elicited in the testimony phase. First the plaintiff, then the defendant, and then the plaintiff gets the last word by filing a reply brief. Oral argument is available, but it is discretionary, and not many cases are argued.
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- What is the Intent to Use Notice of Allowance Period
- Description
- What is the Intent to Use Notice of Allowance Period? This is only applicable to trademark applications that are filed on the basis of intent to use. Because U.S. Trademark law is based upon the commerce clause, lawful use in commerce needs to be demonstrated in order for a trademark application to mature into registration. A Notice of Allowance issues after the completion of the publication period. This starts the 3 year period within which use must commence. During the Notice of Allowance period, until use of the mark commences, every six months an extension request must be filed in order to keep the application pending. Once an allegation of use is filed demonstrating that the mark is in use for the goods identified in the application, the application will proceed to registration. At any time during the application process, an intent to use application can be converted to use except during the publication period.
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- Federal Trademark Maintenance and Renewal
- Description
- Use Affidavit is Required during 6th Year of Registration Incontestability Affidavit is possible after 5 years of continuous use from registration date Additional rights gained, including cutting off prior users rights Renewal Every 10 Years from initial registration date Must show use of the mark is in use at the time of both maintenance and at renewal (§ 8 Affidavit) It is now permitted within 6 months of due date upon payment of additional fees to file a belated maintenance of renewal affidavit. Failure to maintain or renew your mark will result in cancellation of the registration Unlike when you own real property, the USPTO does not send out notices to trademark owners letting them know that they have to file and pay a fee in order to keep their registration alive. There are many third parties that try and take advantage of this by sending out government looking formal documents and seeking payments for these services. As a part of the services that we offer as a firm to our clients, we provide our clients with ample warning of due dates well in advance, and because of our sophisticated records management system, can produce reports of our clients marks at any time.
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- Explanation of trademark use in commerce
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- What is trademark use in commerce? It is the bona fide use of a mark in the ordinary course of trade. In the case of goods, the mark must appear on or in connection with the product or product packaging. In the case of services, the mark must appear in connection with the offering or rendering of the services. Because the United States Patent and Trademark Office authority to regulate trademarks comes from the commerce clause, it is critically important that the use be a lawful when that Congress can regulate. It is important that the use not be one merely to reserve a mark. In the case of specific industries, such as the pharmaceutical or alcoholic beverage industries, where it is necessary to be in compliance with other laws, such as labeling requirements, it is important that the necessary permits are in place in order to lawfully be in use in commerce.
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- What are Trademarks and what are the different types of marks
- Description
- What are Trademarks: Trademarks are the symbols by which goods and services are identified and sold efficiently in the marketplace. Trademark law is essentially a consumer protection statute to prevent consumers from mistakenly purchasing the goods from one source believing them to come from other. 4 Types of Marks Trademarks any word, name, symbol, or device, or any combination thereof, identify goods Service Marks any word, name, symbol, or device, or any combination thereof, identify services Certification Marks regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization Collective Marks membership in a union, an association, or other organization
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- Trademark Five Year Statute of Limitations
- Description
- After five years of registration, trademarks in the United States can no longer be challenged on the basis of a prior users rights in its mark.