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, alas, it does not).  Descriptive trademarks can still be registered and this is where the Supplemental Register.

A descriptive trademark is not going to make the Principal Register without evidence that it has acquired distinctiveness over time. And it is a long time–five years.  But a descriptive trademark can be applied for on the Supplemental Register, be used with the ® and, after being used for five years, can be subject to a new application on the Principal Register accompanied by a showing of use and recognition by the public in connection with the trademark.

In the meantime, nobody else can register the same mark.

While any trademark lawyer will tell his or her clients to adopt trademarks that are already distinctive, by using fanciful and suggestive terms in them, a business that is bent on using a mark that clearly conveys its goods or services to potential customers still can obtain trademark protection.  It will take years and the costs of filing two applications to reach the best level of protection, but don’t underestimate the value of using the ® and blocking others in the meantime.

When in doubt about whether something is descriptive or merely suggestive (a distinction only a trademark attorney could love), it makes sense to go ahead with the trademark filing, see if you can convince the Examiner it should go on the Principal Register, and, if not, take the Supplemental Register.  Why?  If for no other reason than you would hate to see someone show up with a similar mark later, block your future registration, and maybe even get it on the Primary Register because they were more bold in their filing strategy.

Trademark SCAM ALERTS

By Chuck Knull

Trademark Scam Alert
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 thoughts go to the name and address listed as the trademark owner. These people create official-sounding companies and send out official-looking communications intending to cause alarm.

The kinds of communications you might receive relating to so-called extra services are things like publishing your trademarks in a book, at a charge over $1000 per three month period. (This is supposed to “add” protection to the trademarks by making them publicly available.) Another offer we have seen is a  service is to register domain names that include trademarks in various foreign countries, where, according to the offer, some local company is “just about” to take out these domain names and, by good fortune, the writer of the offer has discovered this is about to happen and put a hold on the domains until the fortunate trademark owner has the opportunity to send him a couple thousand dollars to register them.

Other offers come from so-called trademark service companies who will renew your trademarks, respond to office actions on your pending trademark applications, and the like. The prices for these proposed services are generally higher than what we charge per our fee schedule

[we would be pleased to provide you with the current fee schedule on request], and from what we have learned from reports of unfortunates who have used such services, the services provided are probably going to kill the trademark in question, rather than helping them.

We have even seen offers from a company that is sending out notices to trademark owners saying that not only have their trademarks been cancelled but also that someone else has jumped in and taken the marks (sort of a variation on the domain name scam mentioned above.)

You will not get what you think you are paying for. The offers that we have has reviewed are either worthless, such as the publication in the book noted above, which would have absolutely no effect upon the validity or strength of the trademark, or useless, such as the taking out of domain names in a foreign nation where one does no business, or counterproductive, or having a person unskilled in trademark law make filings at the USPTO.

If you receive any query regarding your trademarks that looks official but is directed to you rather than your trademark counsel, please assume it is a scam and send it on to your counsel.

14 Trademark Scams Uncovered

The U. S. Patent & Trademark Offices fight against trademark scams continues. They are now providing images of 14 non-USPTO solicitations that they have identified as big problems. In each case, they have received complaints from trademark applicants about the confusing and deceptive nature of these solicitations. Still topping their list is the “United States Trademark Registration Office” scam. If you have received a letter, invoice, or e-mail about your trademark and you aren’t sure about the source, head over to the USPTO solicitation warning page and compare it against their examples. Or, you can simply contact your trademark attorney about it.

In 2016 and 2017, scammers have been prosecuted in the U.S. for wire and mail fraud. Perhaps, putting some scammers in jail will cut down on this abuse.

The main USPTO page, “WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications” is available here.

For your convenience, here are the links for the 14 trademark scam images that are currently available on the site (as of 10/30/12):

United States Trademark Registration Office – The original $375 invoice scam.

Patent & Trademark Agency – Renewal notice from a private company in NYC.

Trademark Registration and Monitoring Office – A monitoring service in LA that threatens “PENALTIES AND LATE FEES” if you don’t pay up.

United States Trademark Maintenance Service – Section 8 filing service from Arizona that warns of “PENDING TRADEMARK CANCELLATION”.

U.S. Trademark Compliance Service – Another Arizona filing service, similar to USTMS.

WDTP – “Registration of the International Trademark” – which is really a private database in the Czech Republic.

WIPT – “Register of International Patents and Trademarks” – same scam as WDTP.

TM Collection – “International Register of Trademarks” – this one is a print version out of Hungary, but basically ths same scam.

TM Edition – “International Catalogue of Trademarks” – TM Collection by another name.

Patent Trademark Register – another “Registration of International Patents and Trademarks” but out of Austria.

Register of International Patents and Trademarks – another “Register of International Patents and Trademarks” but from Slovak Republic.

Trademark Renewal Service – “Trademark Cancellation Advisory” from a private company in D.C.

Trademark Safeguard – Trademark Monitoring Service – Order form for a monitoring service in NYC, “THE US PATENT AND TRADEMARK OFFICE HAS ALLOWED CONFUSINGLY SIMILAR NAMES TO BE REGISTERED.”

Intellectual Property Agency Ltd. – The British version of the renewal reminder.

As always, if you get something and you aren’t sure whether it is official USPTO correspondence or not, feel free to contact us and we will take a look.

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 seamless transition with the help of a qualified attorney, but make sure you mind your trademarks.

If you have registered a trademark (or trademarks) under the first business, it is important to speak with your trademark attorney before dissolving the business and changing the name.  This is because legally the trademark is owned by that first business.  Once that business is dissolved, ownership does not automatically transfer to your new business.  In order to keep you (and your new business) as the recorded, legal owner of your trademarks, you would need to file an “assignment” with the United States Patent and Trademark Office (“USPTO”), transferring (or “assigning”) the trademark from your initial business to your new business.  Without showing a verifiable chain of ownership from the initial business to your new business, the trademark is at risk of being abandoned or cancelled.

Just as you were able to apply for and register your trademark online, the USPTO has an online form for submitting assignments.  At its most basic definition, an assignment is when a trademark, and all of its attending goodwill, is literally assigned to another owner.  For example, your trademark attorney would file an assignment, assigning your mark or marks from your first business to your new business.  Once the assignment is accepted and recorded, you would then be free to dissolve your first company, safe in the knowledge that your trademarks are still valid and under your ownership.

If you have, however, dissolved a business and are now operating under a new one, it is not the end of the world (or your trademarks).  It is imperative that you speak with your trademark lawyer about the next best steps to ensure that your trademark remains valid, and that you are still the legal owner on record.

Getting a Trademark Step-by-Step

By Chuck Knull

  1. 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. .
  2. 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 one cannot even be sure about exact matches. A “knock out” search can be supplemented by searching on the internet, looking in stores, and attending trade shows.  Often, if a mark has been in use for a while, and nobody has objected, a “knock out” offers some assurance that applying for the mark will not cause big trouble.
  3. Professional search and opinion.  If the mark(s) look clear after your knock out search, and there is a clear need to be absolutely sure of its viability, we can order a full common law, federal and state search report, to review that report, and to render an legal opinion on the use and registration of the mark. This process will cost about $1500-$2,500 per mark. However, having this search and an opinion of counsel before adopting a trademark is the only evidence that can be used to show that adoption of a trademark was made in good faith. Not having evidence of adoption in good faith is willful infringement, also known as “betting your company.”
  4. The application. Applications may be based on “use in commerce” if the mark is being used on the product or in offering the service already. Or it can be “intention to use”  where the product or service is in development. An intention to use application will cost more from the beginning, but it may be worth it for the reservation of the mark. An “in use” application costs $500 flat fee for its preparation and filing, plus at least $225 for the US government filing fee.  The application is only step one.
  5. Wait for word from the Trademark Office. Two or three months after application filing, an Examiner from the Trademark Office will probably write a letter called an Office Action that asks questions about the trademark. There may be technical issues to resolve, such as whether the mark means anything in a foreign language, an unsatisfactory drawing or other submission.  The Examiner may also cite existing trademarks as blocking the trademark. A response to an Office Action is due within 6 months. Responses to Office Actions take time and research.  We can respond to some office actions in less than half an hour (about $150), but others may take a great deal more time ($600-750).  It is impossible to predict what an Examiner may see as flaws in an application; sometimes applications we think will be difficult breeze through, and others are problematic.  Examiners look at applications differently and often are wrong, but correcting their view takes time and research.
  6. Publication. After the Office Action is responded to satisfactorily, the application should move on to be published in the Official Gazette of the USPTO, at which time others have the right to voice objection by filing a Notice of Opposition and beginning an administrative proceeding to prevent the mark from registering or receiving its Notice of Allowance.
  7. U.S. Trademark Registration If no one opposes your trademark, it should issue and the Trademark Office will mail a registration certificate. 

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 of one brewery’s “Red Ale” looking and sounding a lot like the “Red Ale” from another brewery that used to have a territory far enough away to make no difference. As we have reviewed the nation we have noted that a lot of growing local breweries need to step up the level of protection for their brands.  Otherwise, they may face expensive and uncertain litigation in the future.

I have written about the problem of relying on the TTB Certificate of Label Approval. A COLA IS NOT BRAND PROTECTION. My discussion is intended to offer a roadmap to actual brand protection using the Federal Lanham Trademark Act and related legislation to obtain concrete protection. The primary methods of obtaining protection for your brands must, of course, depend on individual budgets, but a growing brewer must not stint on brand protection or it will very possibly run into boundaries that it will not be able to cross over.

The aim of any brewer of beer should be to make sure that when a customer orders its beer, it gets its beer. The aim of branding is to be sure that all potential customers know about one’s brands. The way one does both of these things is by adopting a brand strategy.  Below is an aggressive strategy such as the ones that I have helped large, multi-national brewers carry out. Select from this list in a generous way and implement each selection.

Trademark Registrations Are Territorial

Except for a very few, absolutely famous trademarks, a trademark registration will not provide trademark rights beyond the jurisdiction providing the registration.  There are great stories in trademark law about people visiting foreign countries, seeing a nice product with a nice mark connected to it, and taking the entire concept of the product and mark to another country and, more or less, cloning the product.  Later, the originator decides to move into the same country and finds that it has no rights to use its trademark there.  Trademark registrations are territorial.

I have had some interesting cases showing such twists and turns. I represented a Dutch milk (not beer) coop which had made a popular condensed milk product in Vietnam (used to make wonderful Vietnamese coffee). The mark had been expropriated by the Communist Vietnamese government.  But Vietnamese immigrants to the USA demanded the product and the former managers of the Vietnamese subsidiary who were among these immigrants developed the brand in the US under the authority of the Dutch Coop.

When Vietnam went capitalist, the milk company which had evolved out of the seizure from the Dutch tried to bring into the US a close version of the Dutch product already here.  It lost in court.

Another situation causing great agitation for AmBev, the owner of the Budweiser beer brand, involves prior use of Budweiser by European brewers blocking attempts by AmBev to obtain Common Market trademark registrations (and a reverse situation where the Czech owner of perhaps the oldest Budweiser trademark must change its brandname for its been when it sells into the United States).

Strategic Trademark Registration

  1. Obtain trademark registrations for each beer brand in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.
  2. Obtain a trademark registration for one’s House Mark in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.  I have previously written about House Marks.
  3. Obtain trademark registrations for each beer and can label (including all colors and graphics) in each country where the beer will be sold, because trademark rights are territorial.  An advanced trademark program is going to be concerned with look alike labels.  It is too easy for a bartender or consumer to pick up the wrong bottle, can or six pack if the labels are too similar.  A few mistakes and the brewer that has simulated the popular label will find its sales increasing.
  4. Obtain whatever protection is available for any special bottle or can colors and shapes. In the U.S., such protection is generally available through trademarks. In other countries, special design protection is available.
  5. Obtain trademark registrations for slogans used in advertising your beers.A good slogan can enhance even a one trademark brewery’s house brand mark. Some old standards are listed below:- The Beer that Made Milwaukee Famous (Schlitz)
    – The Champagne of Bottled Beer (Miller)
    – It’s All About the Beer (Heineken)Check out more great beer slogans here.
  6. Make appropriate trademark applications for goods distributed to bars and restaurants, such as signage, glassware, coasters, and for any items that are sold or licensed for sale, such as T-shirts with beer labels on them.

Many of the worst experiences that brewers face are caused by t-shirt companies printing what they consider to be parody t-shirts featuring pictures of beer cans or bottles along with statements like “I only drink

[name of beer] when I want to get blasted.”  Alcohol is a highly regulated business and the government frowns upon statements about beverages that imply potency, drunkeness, and the like.

A brewer should want nothing to do with such “parody” and the first step is to apply for trademark applications for the types of goods that might be bothersome.

Copyright Registrations Support Your Trademarks

  1. Depending upon how original and artistic one’s labels are, it may be possible to apply for and register copyright in the labels. Timely registrations can provide clout against competitors who copy too closely other’s labels.  Learn more about why applying for copyright registration is a good idea here.
  2. Company websites and advertising materials should be subject to periodic copyright applications and registration.

Police Trademarks to Stop Problems Early

  1. Review and dispute domain names containing house mark or brand marks or similar
  2. Have your trademark lawyers proactively watch your marks or employ a trademark watch service for USPTO applications for alcoholic and non-alcoholic beverages, restaurants and bars, and foods such as cheese and snacks; oppose similar names.
  3. Monitor Twitter, Facebook, etc. for derogatory comments about brands and take action by complaining to these services and/or referring to your lawyers.
  4. Check for new COLA filings for alcoholic beverages to assure that no similar names to your brands are applied for in COLA filings.  Small breweries, distilleries and wineries may never do anything beyond a COLA filing. Timely cease and desist letters can stop the use of similar names.  We have discussed why reliance upon a COLA alone is not a brand protection program.
  5. An owner of a registered trademark can file with U.S. Customs to prevent counterfeit or unauthorized imports of trademarked goods. Entry of such goods, when they are alcoholic beverages, is less of a problem than with some other goods.
  6. Review competitor advertising for misrepresentations of your brands or false or misleading claims as to their own brands. Take action if necessary.

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 about 100,000 COLA applications a year, does not miss the duplication. Or not see the duplication as a problem because for it, the products are not the same.  A number of years ago, the owner of the mark BLACK & WHITE for whiskey had to sue a brewer who had come out with BLACK & WHITE for beer,  And Remy Martin, with its REMY mark for Cognac, had a trademark battle with a wine called F. REMY.  The fact that all the products had approved COLAs did not help the two brands which were the latecomers.

If there is no match for the brand name, and the COLA is approved, the brewer, winemaker or distiller should not even think for a moment that it has a clear brand name/trademark for its product. A COLA approval is not a trademark clearance.  The fact that a COLA application is made and approved is, of course, great evidence that the applicant has a bona fide intention to use the trademark, but that will not be enough to carry the day if there is use or even a prior, bona fide intention to use, the same of similar mark.

This is because trademark law does not work only on exact matches of terms in a given mark.  Trademark infringement happens when there is likelihood of confusion.  Under the criteria for finding likelihood of confusion, trademarks for soft drinks, restaurants, and cheese, to name a few, have caused problems for marks for alcoholic beverages. I have had the experience of representing the makers of MURPHY’S IRISH STOUT, which of course, had a number of approved COLAs for its brands and container labeling and had been brewing since 1856, when a restaurant named Murphy’s tried to cancel its US trademark registrations. There are legions of other such cases. The owner of the BOAR’S HEAD trademark for meats had to sue a brewer who came out with BOAR’S HEAD beer,.  The owner of BLACK LABEL for beer had to litigation against a cigarette maker that came out with BLACK LABEL cigarettes.

The only way to assure trademark clearance is to obtain a full clearance trademark search which, after analysis, shows no blocking trademarks in use.

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 sell cough syrup with a name and label that too closely resembled those of an established brand, the second comer could be sued for trademark infringement and unfair competition. When a maker made only one type of cough syrup, then its brand name was both the house mark and the product’s trademark.

Today trademark law is a consumer protection law. A trademark is registered to a person or company that uses the mark to identify its products so that consumers associate the mark with assurances that the quality, whether good or bad, is what is expected from that product. The first user of a mark is the one who has the rights in it so long as they continue to use it in commerce. Under the current law, the Lanham Trademark Act, a first user who has registered its mark can enforce their rights in the mark in federal court and obtain sanctions against the second comer ranging from injunctive relief to the infringer’s profits. If the infringement is found to be is willful, or done with knowledge of the earlier mark, the first comer may be awarded its legal costs and treble damages.

Adopting a Mark. A House Mark offers immense advantages if it is based on a trademark which has been in long use, such as a mark based on a successful product or successful store name. Trademark protection grows in strength over use time through use of the trademark on a service or product, so choosing an already strong name and enlarging the scope of products or services available in association with the mark allows a business to start off strong.

Thus, the best and strongest House Mark is one which is already a famous trademark or service mark, and if a company is fortunate to have such a mark available or be able to license such a mark for use on a new line of products or services, it can be solid gold. An example of this is the Vicks mark which is strong or famous on VICKS VAPORUB and is now being extended to use on vaporizers, thermometers, tissues and other “cold related” products. Currently, the TIDE Brand of laundry soap is being extended into laundermats.

If a business does not have a strong and long used store name, then it should look for a trademark that is a “coined” or an invented word. For example, a retailer with the House Mark QUALITY DRUGS (a “weak” mark until it has been used for years) might concoct a new mark such as QUADRU, which has no meaning in itself and takes a bit of thought to connect to either quality or drugs. If invented terms are not to a retailer’s liking then adopting a House Mark which is “suggestive” of the products on which it will be used is the next best approach. For example, a retailer could use the mark QUALITY HEALTH for dietary supplement products, citing a suggested benefit of the products. The worst type of mark to adopt, especially as a House Mark, would be a “descriptive” mark. If a store or manufacturer used the House Mark QUALITY DRUGS PRODUCTS the mark would merely be describing what the products. Such marks are not enforceable without huge amounts of evidence that consumers only associate the House Mark with the products. And that evidence can be difficult or impossible to gather.

Definitions

Trade Dress. Trade dress describes the packaging of products. Trade dress can operate as a House Mark. Examples of such is the Coke Bottle and the MacDonalds Golden Arch.