Trademarks

/Trademarks

What Good is a Trademark Registration on the Supplemental Register?

By Chuck Knull There are two "registers" for federal trademarks, the Principal Register and the Supplemental Register.  The Principal Register is what most everyone shoots for when they apply for a trademark registration.  A registration on the Principal Register has more substance--It carries an immediate presumption that the trademark is distinctive as used on the goods or services covered by the registration.   Presumptions are good things when you go to enforce your trademark. Some trademarks, however, are too descriptive to be allowed registration on the Principal Register.  In other words, the marks describe elements of the goods or services covered, without being the only way to describe such goods or services.  For example, "Cooperstown Wine and Cheese Shop" could be a descriptive trademark for a wine and cheese store in Cooperstown, New York (if New York law permitted wine and cheese to be sold in the same store, which, [...]

By | 2018-01-18T09:49:33+00:00 October 6th, 2017|Categories: |Tags: , , , , |Comments Off on What Good is a Trademark Registration on the Supplemental Register?

Trademark SCAM ALERTS

By Chuck Knull Trademark Scam Alert Scam artists are once again on the prowl to clip trademark owners who like to pay bills for useless services or who overreact to letters and emails telling them that their trademarks are in jeopardy.  We have already received a bunch of inquiries from out clients about letters and emails they have received that either offer some extra service regarding their trademarks or imply that we, as their trademark attorneys, have missed deadlines that will cause the loss of the trademarks. When we file trademarks for our clients, the filing information is publicly available at the U.S Patent and Trademark Office.  This means that our name and address is listed as Attorney of Record and the name and address of the trademark owner is also available. Legitimate concerns know to contact the attorney of record about the given trademark. People with illegitimate [...]

By | 2018-01-18T09:49:33+00:00 September 13th, 2017|Categories: |Tags: , , , |Comments Off on Trademark SCAM ALERTS

Product Configuration Trademarks

Did you know that in addition to trademarks on names, words, and logos, U.S. law allows you to trademark product designs? Trademarks identify and distinguish the source of goods – often through brand names, like “Coca-Cola” and “Coke,” or symbols, like the cursive red and white Coca-Cola logo. Those trademarks protect the Coca-Cola Company from counterfeiters. But the company also has registered trademarks on its distinctive glass bottle. Product configuration trademarks potentially allow protection not only of brand names but also packaging and product design itself. There are several key considerations when applying for a product configuration trademark. (These considerations are also important to any unfair competition claim brought against another similar product configuration.) First, to be considered for registration, products configuration marks must have “acquired distinctiveness.” The Supreme Court decided in 2000 that product designs cannot be, as a matter of law, “inherently distinctive.” In somewhat circular fashion, to [...]

By | 2018-01-18T09:49:33+00:00 July 4th, 2016|Categories: |Comments Off on Product Configuration Trademarks

Disparaging marks and the First Amendment

by Kate E. Rieber Under Section 2(a) of the Trademark Act, certain marks are restricted from registration if they contain immoral or scandalous matter; essentially, if the mark would offend a large portion of the general public, or considered vulgar, that is sufficient to deem it immoral or scandalous, and thus deprive it of federal registration. For example, the mark “BULLSH*T” (without the asterisk!) registration was refused based on 2(a), immoral or scandalous matter. This section further goes on to state that if the mark disparages or brings into “contempt or disrepute” persons (alive or dead), institutions, beliefs and/or national symbols, such mark will be refused registration. However, in In re Tam, Appeal No. 2014-1203 (Fed. Cir. December 22, 2015) [precedential], a recent appeal decided by the Federal Circuit, the Court determined that refusing to register marks considered “disparaging” violates free speech and the First Amendment. In Tam, the applicant sought to register [...]

By | 2018-01-18T09:49:33+00:00 April 17th, 2016|Categories: |Comments Off on Disparaging marks and the First Amendment

Taking photos off the internet can be costly

by Charles H. Knull In the early days of the internet, many people believed that “everything on the internet is free to take and copy.” Those people often ended in court as defendants in trademark and copyright infringement cases. The belief that intellectual property laws were somehow suspended on the web was dispelled, Of course, there is still plenty of “borrowing” that happens because it is so easy to cut and paste text and to “right click” on a photograph and then use the text or photograph on one’s own project or website. Beware the Robots! For a good number of years, copyright and trademark owners discovered web infringements by happenstance. Some big guys did employ people to constantly search the web for ripped-off materials. Then these people were replaced by Robot programs that scan huge numbers of web pages and can identify infringing graphic images based upon the images which are entered [...]

By | 2018-01-18T09:49:34+00:00 April 17th, 2016|Categories: , , |Comments Off on Taking photos off the internet can be costly

What Happens to Trademarks When You Reorganize?

By Kate E. Rieber Did you know that you can lose control of your trademarks because of a simple corporate reorganization or business name change?  Trademarks and their related goodwill are assets and need to be moved from one entity to another in the right way to avoid losing your rights. For a variety of reasons, some business owners may decide to change their name.  Sometimes this can be because of a merger, or deciding that a corporation is more advantageous than an LLC, or simply because he or she wanted a business name that accurately reflected the goods and services of the business.  Moving from a DBA to an LLC, incorporating, or making seemingly minor changes in the wording of your business name can create confusion about who owns your brand and, on occasion, can actually undermine the value of long-held trademarks. Changing a business name can be a [...]

By | 2016-05-19T13:04:58+00:00 June 9th, 2015|Categories: |Tags: , , , , , , , |Comments Off on What Happens to Trademarks When You Reorganize?

Trademark Opposition 101

By Charles H. Knull What is an opposition or cancellation proceeding and what does it mean for your trademark strategy? Opposition and cancellation proceedings are administrative trials held within the Trademark Trial and Appeal Board, which is a reviewing arm of the U.S. Patent and Trademark Office.  They are one of the ways that disputes between trademark owners can be resolved during the process of registering a U.S. trademark. An opposition is an action brought against a "published application" by someone who doesn’t want the trademark to register (generally someone with a similar trademark).  When an application for trademark registration is filed, not only is the application reviewed by a Trademark Examiner at the USPTO, but also, if the application is approved, it is published in an issue of the weekly USPTO Official Gazette. Once published, anybody can file objections within 30 days.  Those objections can trigger an opposition proceeding. A [...]

By | 2018-01-18T09:49:34+00:00 April 29th, 2015|Categories: |Tags: , , , , |Comments Off on Trademark Opposition 101

Understanding the Scope of Your Trademark

By Chuck Knull Many laymen, and too many lawyers, confuse trademark rights with copyright (and patent rights). Trademark law, which at its roots is a law intended to protect consumers from making purchases of products which are not what they intended to buy, provides a right for a trademark's user to keep others away from its mark for similar goods or services. But in no sense is a trademark's user the "owner" of the term, slogan, or logo which embodies the trademark. On the other hand, a copyright or patent give its owner a bundle of rights that only the owner can exercise. From time to time, law suits are brought for trademark infringement that are a source of puzzlement and curiosity to trademark lawyers.   There are two recent examples of such relating Upstate New York businesses. One of the law suits was brought by Dov Seidman, an author and [...]

By | 2018-01-18T09:49:34+00:00 October 28th, 2014|Categories: |Tags: , , |Comments Off on Understanding the Scope of Your Trademark

Getting a Trademark Step-by-Step

By Chuck Knull Select a trademark for your product or service. Be prepared by having more than one mark that you like. A mark that is coined is a much stronger mark than one that describes. There is a lot that goes into selecting a good mark. . Knock Out search for similar trademarks.  Trademark law protects against “confusingly similar” marks. So if you have selected CLEANE as your mark for soap, if there is a mark KLEAN or CLEAN on the market, you would be infringing if you use CLEANE. We perform  “knock out” searches by checking the records at the U.S. Patent and Trademark Office.  It takes some time and we have a flat fee charge of $400 for such a search.  Such a search should tell if there is no exact match for the mark on file at the USPTO, but the USPTO database has its flaws, and [...]

By | 2018-01-18T09:49:34+00:00 April 21st, 2014|Categories: |Tags: , , , , |Comments Off on Getting a Trademark Step-by-Step

Protecting Beer Brands: A Trademark Strategy for Brewers

By Chuck Knull I have spent a great deal of time as a lawyer helping brewers keep their brands from encroachers.  There are numerous ways that the brand names and trade dress of one beer can cross over into the territory of another beer brand.  As a result, a bartender in a dimly lit bar may pick the wrong bottle out of the cooler for a patron, or a soused patron might slur out an order one brand when intending another. Things like this have plagued the larger brewers for ages. Hence, specially colored and shaped bottles, and distinctive cans are often used by them. Add to this the confusion of restaurants and pubs, which may have names close to the names of beers,  serving their own mini-brews and the problem gets bigger.  Now, with a multitude of local breweries growing and expanding in the U.S., the possibility is growing [...]

By | 2018-01-18T09:49:34+00:00 December 17th, 2013|Categories: |Tags: , , , , , |Comments Off on Protecting Beer Brands: A Trademark Strategy for Brewers

A COLA is Not a Trademark

By Chuck Knull Before a brewer, winemaker or a distiller can put its product into kegs, cask, bottles, cans or boxes, the labels that it will stick on the packaging (including labels on imported product)  must be approved by the Alcohol and Tobacco Tax and Trade Bureau (TTB). The approval is called a Certificate of Label Approval (COLA).   Many brewers, winemakers, distillers, and importers mistakenly believe that the COLA has the same or similar importance to a U.S. trademark registration in terms of securing brand protection and/or clearing them from infringing other people's trademark rights.  They couldn't be more wrong. When the TTB looks at COLA applications, one of the things it reviews is the brand name, i.e., the trademark.  If there is an exact match for the brand name for already approved product by another then the COLA may be denied. That is, if the TTB, which examines [...]

By | 2017-10-06T17:00:27+00:00 November 19th, 2013|Categories: |Tags: , , , , |Comments Off on A COLA is Not a Trademark

Should I Register a Bunch of Trademarks for My Products or Adopt a House Mark?

By Chuck Knull A “House Mark” is a trademark that is used to identify the source of a line of products rather than a single product. A company can have trademarks on each of its products and also have a trademark that appears on all its products. The latter is the House Mark. Trademarks began as signs on stores and identifying marks on products. One went to the Red Lion Tavern because one knew about and relied on its quality of bangers and mash and the strength of the tavern’s ales. If another Red Lion Tavern appeared in the village, the first tavern could sue to have the second tavern change its name. As consumer products came about, purchasers of cough syrup, for example, would look for product names they recognized and trusted. The names and labels on these products became trademarks. If someone else came along and tried to [...]

By | 2018-01-18T09:49:34+00:00 November 13th, 2013|Categories: |Tags: , , , |Comments Off on Should I Register a Bunch of Trademarks for My Products or Adopt a House Mark?