When I first started playing baseball at the age of 5, my coach started with the basics.  Sure, I saw plenty of games on TV, but playing and watching require two different skill sets.  Want to play on the trademark field?  Then it’s best to start with some fundamentals!

A trademark is any word, symbol, design, tagline, or logo that is used in association with goods or services to identify and distinguish the products of one company from those of another.   In business parlance, a trademark is also known as a “brand name.”

Examples of trademarks include McDonald’s®, the Nike® “swoosh” design and Just do it® slogan, and the Coca-Cola® bottle design.

A service mark is a trademark that is used in connection with services, as opposed to goods.  An example of a service mark is FEDEX® for ground and air shipping and transportation services.

Trade dress is the protectable look and feel of a product shape, or in the case of restaurants and stores, the elements of their layout and design that are proprietary.  An example of protectable trade dress is a unique perfume bottle shape.

Take-Away:  Trademarks are a vital part of any brand and marketing positioning strategy. What’s in a name? Perhaps your entire competitive advantage!

 

The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) is the administrative forum that adjudicates all trademark opposition and cancellation proceedings that are filed in the United States Patent and Trademark Office.   A case is commenced by the filing of a Notice of Opposition (in the case of an Opposition) or a Petition for Cancellation (in the case of a Cancellation).  The TTAB assigns an interlocutory attorney to each opposition or cancellation proceeding.  The interlocutory attorney is responsible for setting the discovery and trial schedule and all deadlines and actions that relate to the case, as well as hearing motions brought by either party.

In the market for a trademark law firm?  Keep it simple by thinking like a consumer and try to find the best quality lawyer or trademark law firm at the most competitive price.  In choosing a trademark lawyer, be mindful to take into account the following factors:

  • What is their trademark clearance and prosecution experience before the USPTO?
  • Do they charge a flat-fee for their trademark lawyer services or is it hourly-based?
  • Does the trademark lawyer  place a limit on what he or she will charge for their trademark services?
  • What is their litigation experience?
  • Do they place an emphasis on conflict resolution?
  • Are they willing to discuss alternative fee arrangements?
  • Do they have litigation experience before the Trademark Trial and Appeal Board?
  • Have they ever represented a client  in bringing or defending a Notice of Opposition?
  • Have they ever represented a client in bringing or defending a Petition for Cancellation?

 

 

U.S. Trademark Counsel LLC, a trademark protection law firm, is pleased to introduce its “Trademark Litigation Basics” series.  Trademark Litigation Tips is specifically tailored to general counsel and outside counsel of consumer product companies who seek general knowledge and information regarding their trademark infringement cases.

Trademark Litigation Basics is a valuable resource for attorneys without specific training in trademark law and brand protection.  One of the key mission’s of Trademark Litigation Tips is to provide procedural and evidentiary advice regarding trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.

Before you unknowngly make a mistake regarding the handling of your trademark opposition or trademark cancellation matter, contact James Hastings to order a copy of our handbook “The Trademark Cancellation and Trademark Opposition Manual.”  In it you will find useful tips and traps for handling your trademark opposition or trademark cancellation proceeding, including:

  • Plaintiff’s burden of proof
  • Effective affirmative defenses and counterclaims
  • How to save money on your legal budget

 

Trademark law is primarily federal in nature and is governed by the Trademark Act of 1946 and its various amendments, also known as the “Lanham Act.”takes into account several criteria in determining whether a trademark is available for use and registration.  In conducting a search to determine the availability for use and registration of a particular mark, your attorney should conduct a full search of the United States Patent and Trademark Office records, state trademark office records, and common law listings (unregistered uses of similar trademarks that nonetheless are afforded protection under law).

It’s a known fact:  many brand owners think that “trademarking” a product or service is deceptively simple. This and other common mistakes about trademark rights  tends to create confusion and greater risk to those companies who do not have a working knowledge of the basics of trademark law.  Keep in mind the following miconceptions that can create major problems for you and your team when selecting a trademark for your brand. 

  1. As long as our trademark is not identical to another, we can use it.  Whether one can register and use a trademark in commerce is based on whether the trademark is “confusingly similar” to the preexisting trademark(s) of a senior user.  To determine if the trademark is “confusingly similar” to that of another party, the United States Patent and Trademark Office and U.S. District Courts look to many factors, including, the similarity of the trademarks, goods, types of customers, and other relevant factors.  In short, the more similarities, the greater the chance that adopting your desired trademark could bring rise to a claim of trademark infringement.
  2. Once we apply for a trademark, we “own” it.   Contrary to popular belief, filing a trademark application in the United States Patent and Trademark Office is just the first step in the registration process. Once the Trademark Office receives the trademark application, it reviews it for several substantive and procedural requirements, and conducts its own search for preexisting registrations that may be considered confusingly similar and a bar to your registration.
  3. You must have a trademark registration to have trademark rights.  Under U.S. trademark law, use in commerce is what creates trademark rights; not registration.  In fact, one cannot obtain a trademark registration in the United States without first submitting a statement of use evidencing use of the trademark in commerce.  That being said, unregistered trademarks, if properly used in connection with goods and services, create in the owner intangible property rights that are enforceable against third-parties who adopt the same or confusingly similar trademark.

Take away:  Trademark rights vest at the time of use in commerce.  One does not need a trademark registration to have enforceable trademark rights.

     

    An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service on the applicant, or its attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119.

    Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board and must serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney. Electronic signatures are permissible and required for oppositions filed through ESTTA.

     

    The Trademark Trial and Appeal Board (TTAB) is an administrative board of the United States Patent and Trademark Office.  The TTAB hears and decides adversary proceedings between two parties, namely, oppositions (party opposes a mark after publication in the Official Gazette ) and cancellations (party seeks to cancel an existing registration). The TTAB also handles interference and concurrent use proceedings, as well as appeals of final refusals issued by USPTO examining attorneys within the course of the prosecution of applications.   The Trademark Trial and Appeal Board is located in the offices of the United States Patent and Trademark Office in Alexandria, Virginia.

    A useful guide to TTAB practice is the Trademark Board Manual Procedure (TBMP), which provides practitioners and brand owners with basic information generally useful for litigating cases before the TTAB. The manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the TTAB, its reviewing tribunals, the Director, or the USPTO. Rather, the TBMP describes current practice and procedure under the applicable authority, as of the manual’s issue date.

    For complete information about TTAB Rules of Practice, the Trademark Board Manual of Procedure must be read in conjunction with the August 1, 2007 Federal Register notice detailing significant changes to the TBMP.

    If you or your company are a party to a trademark opposition or trademark cancellation proceeding in familarity with trademark law, and the TTAB Rules of Practice are essential.

    Many of us learn best through the use of memory devices known as mnemonics. So in honor of all you Scrabble ® fans out there, here is a “G-R-E-A-T” way to interview and select a trademark lawyer to represent your legal interests before the Trademark Trial and Appeal Board:

    “G” is for Geography.   Since trademark law if federal in nature, is really does not matter if your lawyer’s office is in suburban Des Moines even though your company is located in New Jersey.  This is especially true since the overwhelming majority of cases before the Trademark Trial and Appeal Board are submitted on the papers – meaning that your attorney’s physical presence in the Trademark Office is never required.

    “”R” is for Rent.   If your lawyer is a partner in a large firm with offices located in the top floor of an impressive building in a wonderful city, chances are you will help to pay for the luxury of remaining in that location in the form of higher hourly rates.  In fact, a recent survey by Incisive Legal Intelligence on national average hourly billing rates supports this point.

    “E” is for Experience.    When we think of experience, the best lawyers are the ones not only with subject matter knowledge, or even a history of handling the same types of cases.  In fact, these are the minimum requirements of any “good” lawyer.   What makes a great lawyer is one who is able to achieve your desired results in the least amount of time for the least amount of money while exposing you to the least amount of risk.  Sounds simple?  It isn’t.

    “A” is for Aptitude.   The Trademark Board Manual of Procedure is like a big instruction booklet that comes with your child’s toy car – with the big difference being that if your trademark lawyer doesn’t know how to successfully put together a trademark opposition or cancellation, you may find yourself losing more than just a toy.

    “T” is for Timing.   To many lawyers, it’s “time” that is everything – as in billable hours.   That is why hourly fee arrangements continue to remain so popular among law firms.    In today’s business environment, what matters are results.  Therefore, always insist that your attorneys agree to a flat-fee arrangement when representing you and your company in a United States Patent and Trademark Office case.   Successful results are often the product of preparation and timing – not the number of hours expended.