Archive for category Trademark Law

Ten Steps to Choosing a Winning Trademark Name

Posted by admin in Trademark Law, Trademark Tips on January 6, 2011

Choosing a good name for your products takes effort. You can do it successfully if you take the following steps.

Nobody wants to choose a name, invest money and resources into their product, only to find out that the name has already been taken!

1. Think of features or attributes of your product

2. Make a list of these words

3. Think of your competitors

4. List these competitors, and make sure not to use them, or any similar sounding names

5. Narrow down your list to 10 or 15 names

6. Search on the internet for these names in every possible spelling

7. Document your findings; your list should be narrowed down to 4-5 names

8. Conduct a free search on the USPTO website

9. Conduct a search for business names using state directories, telephone directories, etc.

10. Order a comprehensive trademark search from a competent Trademark Attorney or the National Trademark Center*.

* In this final step, a search will be conducted on the final mark you have chosen. The results will be analyzed by Attorney Natalie Levy and an opinion letter will be drafted, explaining to you the likelihood of having  your name approved for registration, the competition, etc.

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Trademark Maintenance

Posted by admin in Trademark Law on December 16, 2009

A registered trademark has a term of ten years and it is renewable every ten years for an additional ten year period.

A Declaration of Use must be filed between the 5th and 6th year following registration. If no Declaration of Use is filed, the registration will be cancelled. If the mark is not used for three consecutive years, the mark can be cancelled and be deemed abandoned.

Another declaration that can be made at this time is a Declaration of Incontestability. What this affidavit states is that no lawsuits have affected the trademark, and that no third party is claiming ownership of it. This affidavit is not mandatory, but is often filed together with the Declaration of Use.

If at any time the mark is altered or the range of services extended, it is important to advise your trademark attorney to make sure that you have adequate protection for your mark.

The federal registration of your mark is a valuable business asset. The Certificate of Registration should be kept in a safe place with your other important documents.

Notice of registration should be given by displaying with the mark the words “Registered in US Patent and Trademark Office” or “Reg,. US Pat. & Tm Off.” or the letter R enclosed within a circle.

If your business begins to expand beyond the United States, you may want to consider protecting your mark in other countries. We will be happy to assist you in this regard.

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TRADEMARK INFRINGEMENT

Posted by admin in Trademark Law on November 25, 2009

TRADEMARK INFRINGEMENT

Rights in trademarks are acquired through the use of the trademark; by using the trademark in commerce, on their labels or goods, or if a service mark, in connection with their service, i.e. on advertising. Under common law, use of a trademark in a geographic area, gives one certain rights. A trademark can be federally registered with the U.S. Patent and Trademark Office if the mark is used in commerce between or among the states. Federal registration gives the owner of the trademark certain enhanced rights. One can also apply for a trademark even before it is used, as long as one has a bona fide intention to use the mark in commerce.

Trademark infringement occurs when one adopts and uses a trademark that is confusingly similar to an existing trademark of another. Doing this creates confusion in the marketplace among consumers, who won’t know the origin of a certain product and, thus, could not rely on receiving consistent quality. It is also considered unfair to allow an infringer to benefit from the original owner’s time, money, and effort in building good will for the trademark.

The attorneys of the National Trademark Center begin the fight against infringement with a Cease and Desist letter. In many cases, this is enough to stop the infringer from continuing use of his mark. If this doesn’t work, we discuss litigation options with the trademark owner.

Another main area of unfair competition law as applies to trademarks is dilution.

This is a different sort of damage, and it can occur in two different ways. The first is when the distinctiveness of the mark is blurred. This can occur by the mark being used on too many different items not controlled by the original owner. The second way a mark can be diluted is by tarnishment. In this case, the original mark is used in a bad way, putting the mark in a bad light, not intended by the owner. One example of this was a case involving the slogan “Enjoy Coca-Cola.” The slogan and mark were owned by the Coca-Cola Company. An unauthorized seller marketed a poster showing a bag of cocaine with the slogan “Enjoy Cocaine.” Anyone seeing the poster probably realized that the Coca-Cola Company was not associated with the cocaine poster; so there was no likelihood of confusion. However, under a theory of dilution of the Coca-Cola mark, the court stopped the sale and distribution of the poster.

REMEDIES FOR INFRINGEMENT

Under current law, if trademark infringement is found, a trademark owner has several remedies. First, the trademark owner can obtain a permanent injunction prohibiting the infringing party from using the infringing mark or any other mark that is confusingly similar to the trademark owner’s mark. Second, monetary damages to compensate the trademark owner for the infringement can be awarded. These damages can be increased up to three times if the trademark infringement is deemed to be willful. Third, the court has the discretion to award to the trademark owner its attorney’s fees for bringing the action.

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