MyBrandMark.com is a law firm specializing in trademarks and patents.
Disputing Likelihood of Confusion. Fighting Internet Infringement. Can I trademark a domain name? The Internet and your Trademark. What is false advertising? Dilution Law. Counterfeit Products. Purchaser Sophistication. Intent and Trademarks – My Brand Mark Blog. Proximity of the goods to a conflicting mark – My Brand Mark Blog. When determining whether or not your trademark is likely to be confused with a possibly conflicting mark one of the most important thing to look at is if the goods are related.
The closer the goods are to each other the higher the chance of likelihood of confusion being raised by the examiner. An important question is would an average person purchasing these goods be likely to think these items came from the same source? This question is tough because in today’s society the average consumer would expect companies to make a plethora of goods even if they are seemingly unrelated. Factors that should be taken into account include the place where the products are sold, price, whether the goods can be used together, and even the possible dangerous consequences of confusion such as in the case for medicine. Is my trademark similar to another? – My Brand Mark Blog.
Figuring out whether or not your trademark is similar to another is not as easy as one might think, but it is very important to consider before attempting to gain registration.
Taking your trademark and looking at it side-by-side with another will not answer this question because more than just appearance is taken into account. Sound and meaning are also very important aspects. In addition, it is important to remember that trademarks will be judged as a whole and not by their individual components. Other things to take into account are the market place your product will be sold in and whether or not your goods are similar to those of the other trademark. When judging marks for similarity remember that those purchasing your products will not have perfect memory of the trademarks and thus more prone to be confused than you. Likelihood of confusion – My Brand Mark Blog. One very common trademark application issue is likelihood of confusion with another registered or pending trademark.
Depending on the specifics of the cited mark or marks, an Office Action containing likelihood of confusion can be a major obstacle in the way of registration. The main thing the examiner will look at is whether a consumer is likely to confuse or mistake your trademark for another. In determining this the examiner will look at the text, logo, appearance, sound, and entirety of your mark’s commercial impression. It is important to note that such confusion must be probable, not just possible. Other factors that play a part in determining likelihood of confusion include the strength and distinctiveness of the cited mark, relation of goods/services, consumer sophistication, third-party use, quality of goods, advertising and sales, and other relevant evidence.
Proper trademark maintenance – My Brand Mark Blog. You spent time, effort, and money getting your trademark.
Do not let this be for nothing. You must maintain your trademark to ensure your rights remain intact. You must not only use your trademark continuously, but also demonstrate this to the USPTO. You must file a section 8 affidavit of use between the fifth and sixth year after registration. In this affidavit you must attest that you have been using your trademark in commerce for five years continuously on all items in your application and contain a specimen showing this. Incontestability – My Brand Mark Blog. Reverse Confusion – My Brand Mark Blog. One possible outcome of a likelihood of confusion fight is reverse confusion.
Reverse confusion is when the infringing newer trademark is more well-known than the senior trademark. This can happen if the younger mark was the subject of an advertising campaign and potential customers are more likely to recognize it than the older mark. This finding can of course be detrimental for the owner of the older mark as consumers may pass when purchasing their goods because they think the older mark is the infringer. Reverse confusion may also be bad for the younger mark if it is found that they used or advertised the new mark with disregard for the older mark’s status. This bad faith move can result in damages. An overview of the Madrid Protocol – My Brand Mark Blog.
Letters of protest – My Brand Mark Blog. Filing an appeal – My Brand Mark Blog. What is a Disclaimer? – My Brand Mark Blog. Claiming Distinctiveness – My Brand Mark Blog. Overcoming Rejections – My Brand Mark Blog. Why was my application rejected? – My Brand Mark Blog. Office Actions – My Brand Mark Blog. All applications filed with the USPTO undergo review by an attorney examiner.
The examiner’s job is to ensure that there are no procedural issues with your application and that the trademark you are seeking to obtain is eligible to register. If the examiner finds an issue with your application, they will issue an Office Action. Once issued you will have six months from that date it was issued to respond to all the issues it contains. If you do not respond to an Office Action within six months, then your application will be abandoned. Once abounded you have two months from the date of abandonment to file a petition of revival. Filing your application online – My Brand Mark Blog. Can I obtain Federal registration for my foreign trademark? – My Brand Mark Blog. The answer is likely yes.
The US is one of the largest markets in the world and for an expanding business it is important to ensure your protections are in place. As long as the country you are from is part of a trademark convention with the United States or is reciprocal to US citizens, you can use your foreign registration or application as a basis to file with the Federal government. The foreign filing you are using as a basis for your new US application must have been filed in your country of origin. Foreign applicants are allowed to file as long as they have an intent to use their trademark and may use the date of filing on their foreign application or registration as their date of filing on the US application. What is a drawing? – My Brand Mark Blog. A drawing is, in essence, your trademark.
It is the exact representation of your trademark as you are, or intend, to use it. Drawings can be “typed” or they can be “special form drawings. A drawing is typed when it only standard Latin characters (words, numbers, letters). Drawings that are special form are those which contain a specific design, style, or color. Making sure your specimen is correct – My Brand Mark Blog. When filing a trademark application, you will have to include a specimen at some point in the process.
A specimen is a sample that shows that you are using your trademark in commerce. What is exactly needed varies from application to application depending on your goods/services and what class they are in. Each international class included on your application will require a separate specimen. The sample should show your trademark being used on your goods/services or in connection with them. Describing and classifying your goods/services – My Brand Mark Blog. You know what your goods or services are, but describing them accurately and in way that will protect your trademark is not always easy.
For starters your description should only include the items which you are currently or intend to use your trademark on. Generally, the best descriptions are brief, using common commercial names, and not vague or broad. Goods/services also have to be classified. The USPTO categorizes applications by putting them into classes (or international classes). Each class included on your application will require a separate filing fee, specimen (sample), and dates when you first used your trademark. I missed my deadline, what can I do? – My Brand Mark Blog. Did your deadline pass? Do not panic, there may be a chance your trademark application can be revived. A petition for revival can be filed within 60 days (2 months) from the date of abandonment. If more than 2 months have passed, then your only option is to file a new application. A petition for revival requires additional government fees. Abandonment occurs when the USPTO has not received a response by the deadline specified.
What is a Statement/Proof of Use? – My Brand Mark Blog. If you received Notice of Allowance (NOA) from the USPTO that means you are close to registering your trademark. The USPTO has decided your trademark is allowed and you now have to demonstrate to them that you are currently using your trademark in commerce. A Statement of Use (SOU) is what will demonstrate that you are doing so. You have 6 months from the NOA to file an SOU or an Extension. An Extension will grant you an additional 6 months to file an SOU. Up to six Extension may be filed for a total of all 3 years, although note that all applicable fees must be paid for each Extension. An Explanation of the Principal Register and the Supplemental Register – My Brand Mark Blog. The Principal Register offers the strongest federal protection for your trademark. It affords you all of the benefits of Federal Registration. Marks allowed on the Principal Register are ones that are either arbitrary/fanciful marks or marks that have may be descriptive, but have obtained a secondary meaning.
Sometime when denied the Principal Register a mark is given the option to be placed on the Supplemental Register. This occurs when a mark is descriptive, but has not yet acquired a secondary meaning. The Supplemental Register gives these marks time to acquire a secondary meaning while giving them certain benefits. Why Federal Registration is important – My Brand Mark Blog. Federal registration is one of the strongest forms of protection for your trademark and offers you many benefits. In certain cases, State registration may be enough, but generally Federal registration is preferred. Those thinking about infringing on your rights will think twice knowing that you have gone through the proper steps to protect your trademark with the Federal government.
Federal registration is evidence that you own your trademark and that you have the exclusive right to use the mark on your applied for goods or services in commerce. It also demonstrates that you have been using this trademark since you filed your application. Federal registration gives you the right to statutory remedies and to bring suit in federal court. How to use a trademark – My Brand Mark Blog. Your trademark is special to you, your brand, and your company.
There are several rules of thumb that should be followed to preserve this special status. To maintain a trademark, it is important that the public recognize it is a trademark. This can be accomplished by using generic terms alongside your mark so that people realize your mark is in fact a trademark and not a name for the goods. When placing your trademark on goods or marketing material your trademark should stand out from other text so it is clear that it is separate and different. You may also use the TM ™ symbol to indicate you claim the term as a trademark. Use it or lose it – My Brand Mark Blog. Searching existing trademarks – My Brand Mark Blog. Before filing a new trademark application, it is very important to search for existing or prior pending marks that may conflict with yours. The importance of this cannot be overstated. An overview of trade dress – My Brand Mark Blog. Using color as a trademark – My Brand Mark Blog. What can be used as a trademark? – My Brand Mark Blog.
Can I trademark a Name or Place? – My Brand Mark Blog. While it is possible to trademark a name or place, there are many limitations. Full names and surnames can only be trademarked if there is a secondary meaning associated with them and as long as you are not infringing on the right of another person using their own name or a company with a similar name.
Geographic terms can be trademarked as long as they are not descriptive of the origin of the goods. Selecting a trademark – My Brand Mark Blog. Not all trademarks are created equal. Some are better than others and easy to register and protect. Confused about what a trademark is? Here are the basics! – My Brand Mark Blog. Free Estimate. Trademark Registration.