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.

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The New Name of the Washington Redskins NFL Team

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It’s not a question of will it happen, it’s a question of when will it happen? My guess is that within the next two years, the Washington Redskins will go by another name. A recent Congressional bill entitled,The Non-Disparagement of American Indians in Trademark Registrations Act was introduced recently that proposes to deem the term, “redskin(s)” a disparaging word that cannot be registered as a trademark in the U.S. The Washington Post and USA Today both report that this bipartisan bill will prevent the future registration of trademarks using the term “redskin(s)” as well as cancel all existing federal trademarks using the term.

The bill seeks to amend the Trademark Act of 1946 or otherwise known as the Lanham Act. Specifically, it seeks to add the term “redskin(s)” to the current disparaging definition. In accordance with the Lanham Act section 2(a), trademarks shall be refused registration if they “disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. Here, the bill will amend the current Act to cancel any registration that includes the disparaging term. Among those that will be canceled are the six registrations currently owned by the Washington NFL team.

This is not the first attempt to cancel the mark, however, this is the one that will succeed. In 1992, Suzan Harjo along with six other Native Americans petitioned the Trademark Trial and Appeal Board (TTAB) to cancel six registrations owned by Pro-Football, Inc. (owner of the Washington Redskins). Harjo lost that case on a defense of laches by Pro-Football. Simply put, the laches defense applies when a party waits too long to file an objection. Here, Pro-Football registered the name in 1967 and the claim was brought in 1992, too long in the court’s opinion. However, this time it’s different.

This bill seeks to retroactively cancel all registrations. In other words, if this bill passes the House and the Senate, goodbye Washington Redskins trademark. This does not mean the NFL team will have to change its name. However, it does mean the trademark is no longer protected under federal law and as a result it will be tougher to defend the name in infringement cases. So will they change their name? You bet they will. Above all, to ensure they don’t offend anyone. Additionally, federally registered trademarks represent a valuable commodity in the NFL. Just imagine all those new product sales.

Goodbye Washington Redskins, Hello Washington………?

In the trademark world, good things don’t come to those that wait.  If you seek trademark registration, www.onlinetrademarkattorneys.com is where you should go.

Published May 10, 2013 by Brent Sausser.

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.

Do You Need to Hire a Trademark Attorney to File a Trademark Registration?

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So who do you trust? When you take your car to the mechanic to get an oil change they come back with a list of four other “issues”. If you ask a restaurant who serves the best steak around they say, “us”. That is why, these days, we rely on Google Local, Yahoo Local, Yelp, Zagat, and most importantly statistics. The Wall Street Journal reported this week, “trademark applicants represented by attorneys are 50% more likely to earn a stamp of approval from the U.S. patent office than those who go at it alone”. We provide similar information on our website. However, if you like statistics, check out the Wall Street Journal article as well as the Thomson Reuters News article both published this week.

Or if you’re looking for trademark attorney assistance visit our website: Online Trademark Attorneys Website.

Published April 11, 2013 by Brent Sausser.

Kate Middleton Knows the Value of a Trademark Registration

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Kate Middleton recently trademarked her name in the U.K for the Royal Foundation Charity. According to the article, she is registering her royal title in relation to a number of goods and services, including t-shirts, in territories around the world. In the original article by The Telegraph Kate explains, “this also protects the foundation against other people using its name illegally.” My thoughts exactly, Kate.

After researching the details through the United Kingdom Intellectual Property Office (UKIPO) database, the trademark name filed is “THE ROYAL FOUNDATION OF THE DUKE AND DUCHESS OF CAMBRIDGE AND PRINCE HARRY” and it covers four international classes of goods or services. Specifically, it includes Class 25 for clothing, footwear, headgear; Class 36 for charitable fund raising; management of charitable funds; financial grant making; Class 41 for educational activities; cultural activities; organising of events (and yes, that’s how they spell organizing in the UK); publishing, including electronic publishing; and lastly Class 45 for Licensing of intellectual property. The Duchess also filed a US registration covering the same goods and services. These and other trademark registrations provide a barrier to potential infringers.

The US and UKIPO databases already show attempts to cash in on Kate’s name. The UKIPO database reveals that an applicant attempted to register, “The Duchess of Cambridge” for “a cheese which we will sell and distribute to the UK and international markets”. It did not receive a registration. The US database reflects two attempts. The first one is for a trademark filed in 2011, “KATE’S KLOSET ‘FOR THE FRUGAL PRINCESS'”. This trademark was rejected on a 2(d) basis for likelihood of confusion with the “FRUGAL PRINCESS”. In fact, the Examiner didn’t even mention Princess Kate. The second is for the not so inconspicuous mark, “PRINCESS KATE”. To which the Examiner replied, nice try, and rejected the application for a false connection with a living individual.

If you own a business and haven’t filed a trademark, you should follow in Kate Middleton’s footsteps. Protect your business from other people using your name. For more information regarding trademarks or help filing a trademark see our website: Trademark Lawyers Website.

Published April 3, 2013 by Brent Sausser.

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.

Athletes’ Trademarked Names – The Brand is Out on the Field!

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We have become too familiar with the term “Tebowing”, but did you know it represents a registered trademark? That’s right, Tim Tebow owns the trademark, “Tebowing”. In fact, he owns one trademark registration and twelve pending applications for variations of “Tebow”. Prior to his registration, others have wrongfully attempted to cash in on his name. In addition to Tebow’s thirteen, the United States Patent and Trademark Office (USPTO) shows twenty-one applications using a variation of the name “Tebow”. The applied for marks range from “It’s Tebow Time” to “What Would Tebow Do”. Needless to say, all the trademarks filed without Tebow’s consent received a rejection on a Section 2(a) basis for a false connection with a living individual.

As the NFL draft approaches, the young draft hopefuls need to start thinking about protecting their brand. A lot of athletes already understand the importance of trademark protection. Tiger Woods currently stands at eighteen trademark registrations that make use of his image or name. Jimmie Johnson owns two registered trademarks and one pending application. Nike owns the Jeter logo, named after Derek Jeter. David Beckham currently enjoys six registered trademarks and one pending application. Victor Cruz owns eight pending trademark applications, none of which include his end zone salsa dance. However, he does have a few trademarks pending for his Young Whales brand. Lebron James owns four registered trademarks and three pending marks. Surprisingly, Lebron James does not own “King James Active wear”, the registration, filed in 2009, belongs to a South Carolina resident. Athletes understand that their image sells. As a result, some seek to protect that image through registrations with the USPTO.

A couple of newer athletes understand the value of a trademark. From the 2012 NFL draft Robert Griffin III and Colin Kaepernick have both filed for trademark registrations. RGIII currently owns eleven pending applications for various phrases, such as “Unbelievably Believable” and “Work Hard Stay Humble”. He also owns three pending applications for marks utilizing his name, including his well-known monikers, “RG3” and “RGIII”. Colin Kaepernick holds six pending applications that feature all or a portion of his last name, such as “Kap 7” and “Kaepernicking”. Both of the starting quarterbacks in the 2013 Super Bowl have a trademark associated with their name. Joe Flacco owns his name as a trademark for athletic apparel, advertising services, and entertainment services in the field of athletics. These younger athletes understand the importance of protecting their brand through trademark registration. Other athletes should follow in their footsteps.

People know fame sells. As a result, athletes need to keep a watchful eye on businesses and individuals that try to claim that fame as their own. Two trademark applications have received rejections from the USPTO for trying to use the name Justin Blackmon, one not so indiscrete (“Justin Time Blackmon” and “Justin Blackmon”). Andrew Luck does not own a federally registered trademark. However, some still toe the legal line by attempting to register trademarks using his name. One hundred and thirty-six trademark applications and registrations feature the word “luck” for clothing. Some of them seem like allusions to the number one overall pick in the 2012 NFL draft. “Suck For Luck” represents one example. This application utilizes a common phrase in 2011 in reference to fans hope to attain the number one pick in the 2012 draft for the sake of acquiring Andrew Luck. These younger athletes need to realize, like some of their colleagues, they obtain fame the day they turn professional and others will try to use that name to profit unfairly.

The Lanham Act provides some restrictions to acquiring a trademark for goods or services using a name based on an individual. As discussed herein, Section 2(a) prohibits falsely suggesting a connection with a living individual. However, you can overcome this restriction by showing consent of the living individual to use the name in association with the goods or services. As a result, athletes provide a written consent to use their likeness in the mark, which they provide as part of the application record. In addition, Section 2(e)(4) restricts the registration of primarily a mere surname. However, most athletes overcome this rejection by having the surname combined with additional matter (i.e. no longer merely a surname). Athletes have hurdles to acquire trademark registration of their name. However, the benefits of applying far outweigh the chance of receiving a rejection.

Athletes should understand that their name represents their brand. Trademark protection prevents others from profiting through false association. Trademark registration offers athletes the opportunity to reap the benefits of their own image. To all the athletes, and in the words of Kid President, “that means it’s time to do something”, protect your name, get a trademark. For more information regarding trademarks or help filing a trademark see our website: Our Trademark Law Firm.

Published March 18, 2013 by Brent Sausser.

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