Washington Redskins Lose Trademarks

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Today the Trademark Trial and Appeal Board made history when it decided to cancel six Washington Redskin trademarks as disparaging to Native Americans.  So what does this mean?

Well for starters, this does not mean the Washington Redskins cannot keep using their name.  In the U.S. it is not mandatory that you have a federally registered trademark to have rights to use a name.  This decision also does not mean the Washington Redskins cannot appeal the decision.  The TTAB has indicated it will not enforce the cancellations until after there has been an opportunity for the owners to appeal the decision.  In fact, last time the TTAB tried to cancel the trademarks, a federal judge overturned the decision based on the fact the name was not disparaging at the time of registration.

So what does this TTAB decision mean?  Well if successful, cancellation of the Washington Redskins marks means that the league will have a far more difficult time protecting its mark against unauthorized use in court.  In other words, it does not mean that the league’s owners cannot successfully protect the mark in court; it just means that it will be more difficult to prove in court that it has rights to the name to the exclusion of others.  Ultimately, the famous status of the Washington Redskins mark will probably prevent the unauthorized use of the mark by others without legitimate threats of litigation from the league’s owners.  Thus, it is not advisable to start using the mark without a valid license from the Washington Redskins unless you want a lawsuit on your hands.

At the end of the day, the future of the Washington Redskins name is uncertain.  Although this decision does not prevent use by the league of the name at this time, it does lead the way for future court decisions and/or laws that could force the league to change its name.  You also have to consider from a marketing standpoint that the negative press might also push the team to have no choice to change the name.

Finally, this decision should not undermine the importance of a trademark to a business.  Although the Washington Redskins can still continue use of their name, enforcement of its rights to the name will be an up-hill battle.  Ownership of federally registered trademarks is immensely important to a company and the decision to cancel these six trademarks is no doubt a huge blow to the future of the league’s name.

Curious to see more legal analysis on the Washington Redskin trademark issue?  Visit our past blog post The New Name of the Washington Redskins NFL Team.

For more information about trademarks, or if you need help with a trademark, please visit our website at www.OnlineTrademarkAttorneys.com.

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Etsy Copyright Infringement Notice — Now What?

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As the largest online craft retail store in the world, Etsy.com has become the website for aspiring artists to showcase and sell their handcrafted goods.  With an easy to use and easy on the eye platform, it is no wonder why artists are lining up to join the Etsy community.  But for all the good Etsy does for the underdog artist, many are unaware of the potential legal ramifications they could encounter by using Etsy. This is especially true with copyright infringement.  In fact, Etsy is filled with examples of copyright infringement.  As Pablo Picasso once said, “Good artists copy, great artists steal.”  The problem is, when Picasso said these words he neither anticipated nor did he live in the world we live in today where websites like Etsy have opened up greater opportunity for artists to sue other artists for copyright infringement.

A copyright is a form of intellectual property that gives an owner exclusive right to produce copies of original creative works.  Specifically, it acts to prohibit anyone to reproduce, distribute, display or make derivative works of that artist’s creation without the permission of the copyright owner.  What complicates the issue of copyright infringement is the fine line between infringement and fair use.  The doctrine of fair use is a defense to copyright infringement.  It stands for the idea that a non-copyright owner should be allowed to reproduce and use a copyrighted work under “fair use” circumstances, such as for criticism, comment, news reporting, teaching, scholarship and research.  However, a quick glance at Etsy reveals many of its members are unaware of exactly what fair use of another’s copyright means.

Whether your use of a particular item constitutes copyright infringement is really a question of what type of license you have.  Often times when an artist purchases materials they plan to repurpose, they are given a non-exclusive license allowing them to sell such repurposed items for profit.  There are, however, instances where purchasing materials does not give you the right to sell your repurposed items.  One such example of this is where you buy fabric that contains a University’s logo from your local fabric store.  At first glance, it would seem the ability to purchase this fabric at a nationally recognized chain like Joanne Fabric and Craft Stores would entitle you to repurpose the fabric and sell it to others without the University’s consent.  However, this is not the case and if you look closely at the bolt you purchased the fabric from, you will see licensing information stating you are purchasing the limited right to use the fabric for your personal use.  In other words, by repurposing the fabric and selling the repurposed items on Etsy you are no longer using the fabric for personal use, but for commercial use.  As a result, your use of the fabric would constitute copyright infringement.

Another problem many Etsy users often face are issues of trademark infringement. A trademark differs from a copyright in that a trademark protects the name, terms and symbols that are used to identify of the source of a product.  Trademark infringement can arise in a number of different situations.  Turning again to the fabric example above, use of the University’s logo on a pair of pajama pants would also constitute trademark infringement.  By using the fabric with the University’s logo, such use has the risk that the buyer believes the University has endorsed and stands by the quality of this product.  However, this belief would be false and the use of the fabric would constitutes trademark infringement.

If you are currently using Etsy to sell your artwork or handmade items, chances are you have either received or are aware of the Etsy Copyright Infringement or Trademark Infringement Notice.  It is important that you take these types of notices seriously and to determine what your rights are from someone knowledgable in trademark and copyright laws.  Depending on the allegation, Etsy generally gives you time to remove the item before deciding to shut down your store. However, in some instances where the copyright infringement is flagrant Etsy may not even give you notice of your violation and shut down your store immediately.  For many who rely heavily on their Etsy sales, this is simply not an option.  It is therefore imperative that you know your rights.

If you have received a notice from Etsy informing you that you have infringed on another person’s copyright or trademark and wish to know what your rights are, contact The Law Firm of Sausser & Spurr, LLC for a free consultation.

Published August 26, 2013 by Alex Spurr.

What is a Common Law Trademark?

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Provided by OnlineTrademarkAttorneys.com

A common misconception in trademark law is the belief trademark rights in the United States requires the mark to be formally registered with the United States Patent and Trademark Office (“USPTO”).  This is not the case.  Instead, U.S. trademark law is based on a first-use system and trademark rights can be established simply by continuous use of the mark in connection with goods or services.  Federal registration is, therefore, not a prerequisite to trademark rights in the U.S.

So what does this mean for you and your business?  Assuming the name does not infringe on an already registered trademark, this means once you start using your mark in connection with your goods or services you have a common law trademark.  Simply put, all you need to do is use the mark to have common law trademark rights.  This is true even if someone subsequently files for federal registration of the same name.  With that said, a common law trademark is not a replacement for a federally registered trademark.  In fact, there are several important reasons why you should still register your trademark with the USPTO.

The biggest problem with a common law trademark is the rights conferred to you are substantially more limited than the rights you would have if you federally registered your mark.  One reason for this is because rights from a common law trademark are limited to the geographical area in which you sell or offer your goods or services.  This means that if you have only conducted business in the New England area, your rights to the mark would not extend to other parts of the country.  Although there are instances where a name can acquire national common law trademark rights, this is very rare and difficult to achieve.  Conversely, by successfully registering your mark with the USPTO you automatically acquire nationwide rights to the registered mark.  Assuming another person does not already have common law rights in the name, this would then allow you to preclude any subsequent person from using the name in relation to the goods or services you provide anywhere in the country.

Another reason federal registration is important is it places everyone on notice of your exclusive right to use the mark as it relates to your goods or services.  This is important because it will allow you to prevent any subsequent person from acquiring common law rights in the mark after you have registered the name.  Given the global economy we live in today, this is particularly important because it is becoming easier for people to reach a large population base to sell their particular goods and services.  As a result, the potential for consumer confusion is a much greater threat to businesses than it was twenty years ago.

Finally, federally registering your mark is also beneficial because it helps to impede another person filing suit against you for trademark infringement.  Recently, there have been many cases of small companies with valid common law rights to a mark being sued by big companies who now wish to use the name and have acquired federal registration of the mark.  Although these small companies theoretically have common law trademark rights to their name, the risk of a lawsuit does not outweigh changing their name.  This is because trademark infringement lawsuits easily will run a company more than $200,000 in legal fees, an expense most businesses cannot afford.  As a result they have no choice but to stop using their name and opt for another name.

These are just some of the benefits of acquiring federal registration.  To see more benefits of federally registering your mark, please visit the USPTO Website.  If you have a mark and are interested in more information regarding trademark registration with the USPTO, please visit Online Trademark Attorneys.

Published July 2, 2013 by Alex Spurr.

Cease and Desist – What are your options?

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So you have just received a trademark cease and desist letter. Like most trademark cease and desist letters, the person contacting you has probably given you one of two options: 1) stop using the name to identify your goods and/or services; or 2) be sued.  If you are like most business owners neither of these choices is ideal.  This is because you have spent a great deal of time and money getting your name out to the public and the thought of changing your name is difficult to accept.  At the same time, in 2011 it was estimated the average cost to litigate a trademark infringement case through trial starts at $384,000 excluding any judgments and damages awarded.  So what do you do?

Unfortunately, without knowing the circumstances of your case it is difficult to determine what options you have.  For example, depending upon when you first started using the business name in commerce you may have certain rights to the trademark that are grounded in common law.  Another important consideration is how similar is your business name to the other trademark in relation to the goods and/or services you both offer.  Where it is an exact match, unless you can show common law trademark rights chances are you may be infringing on their trademark.  What about the notoriety of the other mark?  If the other mark constitutes a famous mark this will act as an absolute ban on your using the mark regardless of the dissimilar nature of the goods or services you are offering unless, of course, you can show common law trademark rights.

To know what options you have it is essential that you contact an attorney knowledgeable in trademark law.  Receiving a cease and desist letter is a serious matter that should not be ignored, as intentional trademark infringement will subject you to the potential of increased damages.  Even if you are willing to completely walk away from the business name, it is still recommended you seek advice from a trademark attorney.  This is because you would hate to find yourself in the same predicament again and an attorney can help ensure that you choose the right (non-infringing) name for your business.

For more information about your options, please visit our website: Online Trademark Attorneys. Online Trademark Attorney Google+ Profile

Published June 5, 2013 by Alex Spurr.

Can “Boston Strong” Really be Trademarked?

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Generally speaking, Americans are fairly accepting of a person’s creative pursuits to making a buck. After all America is the land of the free. However, recent events have brought a new meaning to what is fair game when it comes to making a profit.

Just days after the April 17th Boston bombings, a total of seven applications were submitted to the United States Patent and Trademark Office (“USPTO”) seeking to trademark the now famous catchphrase “BOSTON STRONG.” Although there are many purposes to filing a trademark, one of the main reasons to do so is to exclude others from using the phrase to profit from it commercially. With six of the seven trademarks filed having to do with clothing and accessories and the seventh related to beer, this would potentially mean only one of these eight applicants would have the right to profit from the catchphrase.

At this time it is unclear what the USPTO will do. However, trademark registration of a catchphrase after a national tragedy is nothing new. After the 9/11 attacks the Todd M. Beamer Foundation successfully filed for and received trademark rights to the phrase “LET’S ROLL”. The phrase became a national catchphrase after it was publicized that these were the last words of United Flight 93’s passenger Todd M. Beamer.

Keep in mind that a trademark can literally be any word, phrase, sound or even scent. The only requirement is that the mark be used for commercial purposes to identify the source of a particular product or service. It is arguable that merely using the phrase “BOSTON STRONG” on a t-shirt or other clothing is probably not enough to establish rights to a trademark. This is because using the phrase in this way does not necessarily identify the source of such goods, especially where so many other companies have sold t-shirts with the exact same catchphrase. With that said, the same argument probably does not apply to Samuel Adams brewer Boston Beer Co., who has filed the trademark application for “BOSTON STRONG” as it relates to beer. According to the beer company, they plan to use the phrase in relation to its 26.2 Brew. Here, the catchphrase actually identifies a particular product that Boston Beer Co. sells and distributes, their 26.2 Brew. This possibly could be viewed as an appropriate use of the catchphrase as a trademark, assuming the USPTO does not find other grounds to deny their application.

At the end of the day, there are many reasons the USPTO could deny any of these applicants trademark rights to the catchphrase BOSTONG STRONG and most trademark experts believe the applicants will not be successful. What’s more, any action by the USPTO will take another 6-7 months, which leaves you to wonder if the decision to trademark the catchphrase BOSTON STONG was really worth the $325 filing fee.

www.onlinetrademarkattorneys.com.

Published May 8, 2013 by Alex Spurr.

What is a Generic Trademark?

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Everyone knows what an escalator is. The word escalator is a term used to describe a moving staircase. But what many people don’t know is that back in the 1940s, the word “ESCALATOR” was a trademarked name owned by the Otis Elevator Company.  That meant the term could not be used in the general sense to describe a moving staircase and was intended to identify the source of a particular type of moving staircase manufactured by Otis. However, this changed when in the landmark case Haughton Elevator Co. v. Seeberger, the court concluded the word “ESCALATOR” constituted a generic term for a moving staircase, thereby extinguishing the term’s original trademark status.

A trademark is rendered generic when the trademark is used to identify the actual product or service as a whole rather than identification of the source of the product or service.  In other words, a mark becomes “genericized” when it is used by the general public as a generic verb, which identifies a class of certain products or services. Other examples of famous “genericized” trademarks include zipper, aspirin, kerosene, Philips-head screw, yo-yo and thermos.

In recent times, Google is a great example of a company undertaking extensive efforts to prevent their name from becoming genericized.  As a search engine, Google offers online-based searches that you can also find on Yahoo or Bing.  However, because of Google’s dominating presence in the business of search engines the public has started using the term Google to identify all search engines, not just Google’s search engine. Although from a marketing standpoint such substantial use of the name is good news for Google, Google also does not want the term to become a generic trademark, as this would allow anyone to commercially exploit it. To see more of a discussion regarding use of Google as a verb, see Wikipedia’s discussion.

Also, check out an example of CHANEL taking action to prevent their mark from becoming genericized.

For more information about generic trademarks or registering your trademark, please visit our website at www.onlinetrademarkattorneys.com.

Published April 24, 2013 by Alex Spurr.

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What is a Breastaurant Anyway?

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Yes, you read that right…a Breastaurant. So what is it exactly? Well, according to Wikipedia, a “breastaurant” is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”  In other words Hooters is a breastaurant, right? Wrong. Hooters was a breastaurant. Just like Twin Peaks and the Tilted Kilt were breastaurants. That’s because the term “breastaurant” is officially a trademarked name and there can only be one “breastaurant” now—Bikinis Sports Bar & Grill.

Never heard of them? Well, they’re a Texas-based chain similar to Hooters where the main attraction is not necessarily the game on that night or the beer. And with Hooters making over $1 billion each year, there doesn’t seem to be any sign of this genre of restaurant slowing down. But if Hooters is upset about the loss of this coined term, they don’t intend to show it issuing a statement to ABC News “The restaurant model that others have dubbed ‘breastaurants’ is a moniker too shallow to define Hooters.”

So now the question becomes what will we call these other restaurants where the main attraction are the scantily clad waitresses? Hooteraunts?

For more information about trademark registration and the importance of securing your business name with a trademark, please visit our website at www.onlinetrademarkattorneys.com.

Published June 5, 2013 by Alex Spurr.

Naming Your Small Business…Do You Really Need a Trademark?

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Naming your business is often one of the most important decisions a business owner will make when starting a new business. Whether you plan to market your business worldwide or just within your close-knit community, the name of your business is important because it identifies your company. Your name is what makes you different—it is what your customers use to distinguish you from your competitors.

To understand the importance of a trademark, it is helpful to start with a definition.  A trademark is a symbol, word, or combination of words that act to identify a particular company or product. Take for example the trademark of Apple. Standing alone the word “apple” generally suggests a piece of fruit. However, take that same word and use it in the context of computers and technology.  Suddenly, you think of the company that produces and markets MacBooks, I-Phones and I-Pods. The term Apple is a trademark—it marks the consumer’s brain to think of the products and services Apple offers when when they think about computers and technology. To protect this, Apple trademarked their name with the United States Patent and Trademark Office.

So how does this relate to you? Trademarking is not just critical for companies like Apple…it is a critical step for any business to take, regardless of its size or potential market. To better put it into perspective, lets look at what many have called the “David and Goliath” story of trademark infringement, where a small microbrewery based out of Vermont known as Rockart Brewery learned the hard way just how important a federally registered trademark was to its business. In celebration of its 10th Anniversary, Rockart Brewery introduced to its customers its anniversary brew it had coined “THE VERMONSTER.” Although it had successfully sought a state-issued trademark from Vermont in 2006, Rockart Brewery never bothered to seek a federally registered trademark for the name of its new brew.  The problem—Monster Energy drinks.

In recent years, the market for energy drinks has gown exponentially.  One such company that has taken hold of this rapidly growing market is the billion-dollar corporate giant known as Hansen Naturals of California, the maker of Monster Energy drink. Given the success of the Monster Energy drink, Hansen Naturals has undertaken extensive and aggressive steps to protect use of its trademark Monster Energy. So in 2009 Hansen Naturals felt it necessary to serve a cease and desist order on Rockart Brewery claiming trademark infringement for its use of THE VERMONSTER name because it was confusingly similar to Monster Energy drinks. This meant unless Rockart Brewery pulled THE VERMONSTER off the shelves, they would be sued.

What makes this case so interesting is the fact that Rockart Brewery, after seeking the advice of counsel, was told it was likely they would PREVAIL in its defense against Hansen Naturals. The only problem was the legal fees it would take to put on such a defense would bankrupt the company. This left Rockart Brewery with two choices: (1) discontinuing use of THE VERMONSTER name, or (2) go bankrupt. Fortunately, Rockart Brewery rejected both of these options and instead used the local press and other social media avenues to create enough publicity that eventually led to Hansen Naturals backing down. But not all stories end up like this. More often than not when a small business is faced with a similar situation they decide to just stop using the name. We just don’t hear about these examples.

As Rockart Brewery demonstrates, regardless of the size of your business there can be severe repercussions for failing to protect your business’s name, even if use of the name by you is perfectly legal. A federally registered trademark not only helps to prevent others from using the likeness of your business’s name associated with the goods and services you provide, but it also makes it much more difficult to sue for trademark infringement for your use of the name.  In today’s market, the Internet has created a global economy where businesses all over the world will affect the way you do business. This is true even if your business is strictly limited to your local community.  As a result, it is important that you seek the necessary protections to the identity of your business.

So the question for any new business owner is how do you plan on protecting the identity of your business?  That’s simple…by federally registering the name of your business as a trademark with the Unites States Patent and Trademark Office. For more information regarding trademarks or help filing a trademark see our website: Trademark Law Firm.

Published March 20, 2013 by Alex Spurr.