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.

Intent to Use Applications – Trademark Reservations, Table for One

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So you’ve come up with the perfect name for your future goods or services. Now what?

The Search
You should first conduct a comprehensive trademark search to identify whether other uses of your mark exist. Some key entrepreneur friendly websites offer misguided advice: Entrepreneurship.com suggests that research is key, then states, “do a basic trademark search”. Forbes and SBA.gov offer the sound advice, “check for trademarks”, however, they both follow that with a link to the USPTO trademark search tool. The USPTO provides this search as a basic “knock out” tool. However, you should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name NIE KEY for shoes. If you enter this in to the USPTO search bar you get zero results – “Yay!”. Again, it is a basic tool not a comprehensive search. The median price for trademark litigation in 2011 excluding damages was $384,000. A basic trademark search is treacherous waters, conduct the real thing if you truly intend to use the mark.

The Application
The two most common types of applications filed with the Trademark Office are based on Section 1(a)(actual use) or 1(b)(intent to use). If you have not used the name but plan on using the name in the future you should file an intent to use application. This application costs the same as an actual use application at the time of filing. However, it will cost you an additional $100 to file an Amendment to Allege Use or a Statement of Use once you begin using the name in association with your goods or services. In addition, you can file five six month extensions for $150 each after the Notice of Allowance issues. In other words, you can possibly reserve the name for three years after you receive a Notice of Allowance. You have to show “good cause” for extensions 2-5. For example, good cause would be building a plant for product manufacturing, working through research and development for a product, eccetera.

Reserving Your Trademark
No one calls it a trademark reservation, but that is exactly what you are doing. In order to rightfully file an intent to use application you have to have a “bona fide intention…to use” the mark in commerce. If you do not, your application is void ab initio (from the beginning). That means that you can’t think of some really cool name, file the trademark application, and sit on the name waiting for a potential buyer. This is why trademark trolls do not exist. After you have obtained registration you can claim the filing date as your date of first use even though you didn’t use the mark until after you filed. That’s the benefit of an intent to use application, you reserve the name. For example, let’s say you file an intent to use application January 1st and Company B files an actual use application January 2nd. We also have to assume here Company B’s date of first use is also January 2nd. You start using the trademark in July, file a statement of use, and successfully acquire a registered mark. Even though you started using the trademark in July, you have superior rights to Company B who started using the trademark in January. As a result Company B will be refused federal registration on a likelihood of confusion basis.

Filing an Amendment to Allege Use or a Statement of Use
An Amendment to Allege Use or a Statement of Use always accompanies an intent to use application. You file the Amendment to Allege Use before publication or you file the Statement of Use after Notice of Allowance. Do not file between these notices, because this is the “black out period“. The filing of either of the above will require a declaration (stating you’re using the mark) as well as a specimen (an image of your trademark in use in commerce). Once these are filed, and the application is approved, you are on your way to registration.

Our Plug: If you need trademark assistance you should seek trademark attorney help from OnlineTrademarkAttorneys.com. We offer a comprehensive trademark search for $299 and both a search and trademark registration for $475 plus government fee.

Published June 6, 2013 by Brent Sausser.

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.

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.