What comes first?  A trademark registration or use of the trademark in commerce by the owner who is seeking registration?  In other words, can one obtain a federal trademark registration without first using the mark in commerce?  The answer is no!

Trademark use is always a prerequisite to registration in the United States Patent and Trademark Office, with minor exceptions.  Note that although registration is not a requirement for use, owning a trademark registration has several advantages, including the following:

  • constructive notice to the public that you are the owner of the trademark in question
  • a legal presumption that you are the owner and have all rights associated with ownership, including the right to prevent third-parties from using or registering confusingly similar trademarks
  • Heightened damages in certain case

Before applying for a trademark registration, always consult with a trademark lawyer to determine whether the trademark is available for use and/or registration.  By taking this simple step, you will save you and your company time, aggravation, and potential legal liability down the road.

Connecticut trademark lawyers representing Parfums de Coeur Ltd. have filed a case against Victoria’s Secret Brand Management and its parent company Limited Brands Inc., alleging trademark infringement and other causes of action for Victoria’s Secret use of the trademark VS Fantasies and Victoria’s Secret Fantasies for among other things, eau de parfum.  The case, Parfums de Coeur Ltd. v. Victoria’s Secret Stores Brand Management Inc., is currently pending in United States District Court in Connecticut.

Parfums de Coeur is a Darien, Connecticut company that describes itself as a leading retailer of designer quality fragrances and colognes.  Parfums de Couer alleges that the Victoria’s Secret VS Fantasies trademark is likely to cause confusion with Parfums de Coeur’s family of “fantasy” trademarks, including Body Fantasies and Sexiest Fantasies. Victoria’s Secret has trademark applications for the VS Fantasies trademark currently pending in the United States Patent and Trademark Office.

 

A petition for cancellation of a U.S. trademark registration is available to any party who believes that an already existing federal trademark registration should not be allowed to remain an active registration due to a variety of grounds, including abandonment of the trademark.

What is meant by trademark abandonment and how is it proven?

What is Trademark Abandonment and How is it Proven?

In order to successfully bring a case for trademark abandonment, a plaintiff (petitioner) needs to prove the following elements by a preponderance of the evidence:

1.  non-use of the trademark for at least 3 consecutive years by the trademark owner; and

2.  an intent not to resume use of the trademark by the owner

Section 45 of the Trademark Act goes on to define “abandonment” of a trademark registration as

When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

If you or your company have received a petition for cancellation, it is important to quickly act on the complaint and follow Trademark Trial and Appeal Board rules of procedure.

The best way to determine your rights and legal options in a petition for cancellation is to speak to a trademark cancellation lawyer.

If you fail to do so, there is the possibility that your registration could be cancelled, thereby exposing your valuable brand to further peril.

If you have any questions regarding your trademark cancellation matter, please feel free to contact me and I will be happy to provide you with a complimentary consultation.

Let’s suppose that your business has filed a trademark application, and it has been approved for registration by the United States Patent and Trademark Office.  Does that mean that you now have been awarded a trademark registration?  No!

Each and every trademark application that gets approved for registration first must be published in the Official Gazette of the Trademark Office to permit any third-party that believes that your trademark is confusingly similar to their own to oppose your trademark application. This is what is known as a trademark opposition.

In selecting a trademark opposition lawyer, you should keep in mind the following tips:

  • Experience – has this attorney represented clients in other trademark opposition cases before the Trademark Trial and Appeal Board?
  • Fees – does the trademark opposition attorney represent clients on a flat-fee basis, rather than an hourly rate?  
  • Philosophy – is the attorney open to listening to your needs and preferred outcomes both in time and expense to your business?

Since trademark opposition cases before the Trademark Trial and Appeal Board (TTAB) fall within the exlusive jurisdiction of the United States Patent and Trademark Office, you may hire a trademark opposition lawyer in any state in the United States to represent your interests before the TTAB.  By doing a little homework and asking the right questions, you will better protect your trademark rights and interests.

 

 

 

Candace Nelson, a judge on the Food Network’s successful show, Cupcake Wars, is in her own battle after suing a Fairfield, Connecticut based business for trademark infringement.  Nelson’s company, Sprinkles Cupcakes, Inc., has filed a lawsuit in Connecticut District Court alleging that Pink Sprinkles LLC of Fairfield has committed trademark infringement based on Pink Sprinkles’s use of the “sprinkles” moniker for cupcakes and other baked goods.  Sprinkles Cupcakes is the owner of a United States trademark registration for the trademark SPRINKLES for bakery goods and retail store services featuring bakery goods.

Simple case?  Not really. Even though the plaintiff has a federal trademark registration, there are plenty of defenses available to our Connecticut neighbor, Pink Sprinkles.  I seem to recall a famous case before the Trademark Trial and Appeal Board rendering the mark “soft and chewy” for cookies merely descriptive of baked goods and thus not eligible for registration.  There are other cases that have held no matter how much money the owner of a merely descriptive trademark pumps into the brand, or no matter how successful the brand gets, it is in the end —well, merely descriptive.  It also appears that the Pink Sprinkles may have other defenses available to it that could level the playing field with its deep-pocketed adversary.

Let’s hope that the case comes to a swift resolution that keeps Pink Sprinkles in business and profitable!

 

 

A Connecticut disc jockey has sued MTV”s Jersey Shore for trademark infringement. The plaintiff, Paul Lis of Farmington, has used the name “DJ Paulie” for years as part of his professional identity.  He is also the owner of a United States trademark registration for “DJ Paulie”for entertainment services.  In the lawsuit, Mr. Lis claims that MTC’s commercial promotion and use of “DJ Pauly D” the nickname of one of the Jersey Shore’s cast members, constitutes trademark infringement and otherwise violates Mr. Lis’s trademark rights in and to the Paulie D name for entertainment services.

Here’s the lesson: trademarks are intellectual assets that have value and are worthy of protection and enforcement if properly registered and used. Finding the right Connecticut trademark lawyer to enforce your rights can make the difference.

Smart business people continue to make the same mistake: that obtaining a trademark registration is a simple administrative process, akin to going to your local DMV to obtain your car registration sticker.  The fact is that trademark law and trademark rights are a nuanced area of law, requiring proper planning and diligence to ensure that your trademark rights are not only protected, but that you will not unwittingly infringe the rights of others.

To lower your risk of getting sued for trademark infringement or being the recipient of an unwanted trademark cease and desist letter, have a competent trademark lawyer take the following steps on your behalf:

1.  Conduct a full trademark search: A trademark search begins with a search of the United States Patent and Trademark Office for federally registered trademarks that may be “confusingly similar” to the trademark that you wish to use or register.  Note that “confusing similarity” is not the same as “identical.”  In fact, many trademarks are deemed to be confusingly similar to preexisting registrations, even if not identical.  A search of state trademark office records in each state where you wish to conduct business is also recommended if your business is more local in nature.  For instance, if your business is in Connecticut, then you should conduct a Connecticut trademark search.

2.  Conduct a Commercial Search:  Since trademark rights vest upon use of a mark in commerce, even unregistered trademarks can be protected and be invoked against a third-party for alleged trademark infringement.  Therefore you should have a search done of commercial trade databases, the internet, and other publicly available listings for trademarks that may be deemed confusingly similar for the same or similar goods or services for which you wish to use your trademark.

Once the above searches are conducted, your attorney should prepare a brief opinion letter to you if he or she believes that you have the right to use and/or register your desired trademark in commerce.  By following the above recommendations, you will be able to better guard against infringing the rights of other trademark owners.

In choosing a trademark lawyer to handle your trademark infringement, trademark opposition or trademark cancellation matter, you should first satisfy yourself that they the particular trademark attorney or trademark law firm has the experience to handle your case.  Certain factors that will help guide your decision may include:

  • years of experience
  • types of clients
  • Trademark Trial and Appeal Board litigation experience
  • District Court litigation experience (if applicable)
  • Settlement and Dispute Resolution experience

Once you determine that a trademark attorney is a good candidate to represent you, the question that follows is equally important: how much do they charge for your services?  To negotiate the best rates, always ask the following questions:

  • do you charge flat-fees for your trademark legal services?
  • if you do not charge a flat-fee, will you place a dollar-cap on your fees?
  • If you charge by the hour, how does your hourly rate compare to other attorneys in the area?

Before you retain a trademark lawyer to handle your case, feel free to contact me at (203) 244-4264 or email me at jhastings@merchantscounsel.com to discuss any questions that you may have about the process.

 

 

 

Preparing and filing a trademark application with the United States Patent and Trademark Office is not a simple task. Like most governmental agencies, the Trademark Office has many rules and regulations that must be followed in the filing process.  If a trademark owner does not carefully follow these requirements, chances are that his/her trademark application will either be rejected for being incomplete or die an administrative death further down road.  The following is what you will need to successfully prepare and file your trademark application:

  • Name and address of Applicant
  • State of formation (if a corporation or LLC)
  • Basis for Use  (intent to use in commerce or based on use)
  • description of goods or services on which the mark is to be used
  • date of first use (if a use-based application)
  • specimens of use (marketing or promotional materials if a use-based application)
  • submission of a trademark “drawing” (either block letters or design mark)
  • Signature
  • Appointment of counsel to communicate with the USPTO
  • Payment of governmental filing fee

The above information is the minimum of what you or your attorney will need to do and know in order to successfully register and use a trademark in commerce in association with your company’s products or services.  In planning a trademark strategy, make sure that you speak with an experienced trademark attorney in your area.

While it may come as a surprise to many business owners, a federal trademark registration does not grant the owner a 100% right to use the trademark in interstate commerce.  How is this so?  The answer lies mainly in the role and limited jurisdiction of the United States Patent and Trademark Office and Trademark Trial and Appeal Board.

In determining whether to grant a trademark registration, the Trademark Office looks to various federal rules, trademark examining procedures, and case law to determine whether a trademark is eligible for registration. The Trademark Office does not render any opinion on whether a trademark owner is free to use the trademark in commerce on particular goods or services of the trademark owner. Why?  Because the Trademark Office is limited to matters of registration, not rendering opinions or granting rights to use a trademark in the marketplace. In fact, there are many companies that have a trademark registration, only to be sued in federal court for trademark infringement!

Want to know more about how to avoid a trademark infringement lawsuit in Connecticut, New York, or other states?  Feel free to call me at (203) 244-4264.