TradeMark Express Blog: All Things Trademark

COVID-19 and Your Trademark

noreply@blogger.com (Unknown) — Fri, 20 Mar 2020 22:57:00 +0000

The coronavirus has penetrated nearly every aspect of our lives and the world of trademarks is not immune.

You can read the entirety of the USPTO’s message here: https://www.uspto.gov/coronavirus

Practically speaking, the pandemic shouldn’t affect the average trademark application filer. While all of the USPTO offices are closed to the public, employees are still going to work. “Unless otherwise notified, USPTO operations will continue without interruption. Patent and trademark application deadlines and other deadlines are not extended.”

Now when it comes to fees, the only fees being waived, as of now, relate to the petitions.

So, if you have an ABANDONED application OR a CANCELLED/EXPIRED registration and the failure to respond was related to the COVID-19 outbreak, “the USPTO will waive the petition fee.”

“If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired.”

“In all cases, the petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.”

You can read the entire notice here: https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

Now, there are NO waiver or extensions of dates or requirements for the following:

“(1) the 36-month period set forth in 15 U.S.C. § 105l(d) within which a statement of use must be filed and the associated fee(s);” aka EXTENSIONS & the STATEMENT OF USE

“(2) the periods set forth in 15 U.S.C. §§ 1058, 114 l(k) for filing affidavits of continued use or excusable nonuse and the associated fee(s);” aka the Section 8

“(3) the period set forth in 15 U.S.C. § 1059 for filing a renewal and the associated fee(s);” aka the Section 9

“(4) the periods set forth in 15 U.S.C. §§ 1063 and 1064 for filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board” aka if this applies to you, an attorney is helping you

Now with anything related to the coronavirus, this is subject to change at a moment’s notice. If you’re not sure if any of this applies to your unique situation, give us a ring at 800-776-0530 or email us staff at tmexpress dot com

LeBron James & A Tale of Two Taco Tuesday Trademarks

noreply@blogger.com (Unknown) — Thu, 05 Sep 2019 18:37:00 +0000

Photo by Christine Siracusa on Unsplash

It may not be the best of times ahead for LeBron James’ recent trademark filing for Taco Tuesday.

On August 15, King James’ company LBJ Trademarks, LLC has filed for a Federal trademark for “Taco Tuesday” within four different classifications of goods and services. Looks like there’s a plan in the works for a podcast, “downloadable audio/visual works” as well as “a website featuring non-downloadable videos, and social media posts in the field of sports, entertainment, current events and popular culture.”

There’s been some public debate about whether or not a trademark is even possible for that phrase. But that’s already been decided and the answer was, yes. Taco John’s filed for Taco Tuesday for restaurant services in 1989 and has maintained the registration since then. They’ve even made some waves sending out cease and desist letters “for over two decades.”

But that’s not the potential hiccup for James’ new filing. Research of the USPTO Trademark database shows that there’s a registered mark out there that could prove to be problematic.

There are some services listed that could conflict with an already registered trademark, Techno Taco Tuesday. LeBron James’ trademark also filed for “advertising and marketing services…;” however, MNTRA Entertainment LLC of Las Vegas has had Techno Taco Tuesday trademarked since June 26, 2018 for “advertising, marketing and promotion services” among other related services. Their first use date for these services is May 20, 2014.

All of this could prove to be an issue for the basketball player’s filing in that (1) the marks are similar in Sound & Appearance, (2) the International Classification is the same, 35, (3) the Services are related, and (4) MNTRA’s usage has been in use for 5+ years whereas James’ filing was an Intent to Use, meaning use is not yet being claimed.

In fact, the USPTO has already refused two other Taco Tuesday marks (same owner) because of Techno Taco Tuesday’s registration. Here’s what they had to say:

“In this case, applicant’s mark TACO TUESDAY is confusingly similar to the mark TECHNO TACO TUESDAY in Registration No. 5505122. Specifically, TACO TUESDAY in applicant’s mark is highly similar in sound and appearance to the TACO TUESDAY in registrant’s mark in Registration No. 5505122…

Moreover, the applicant’s mark TACO TUESDAY is wholly encompassed within the registrant’s mark TECHNO TACO TUESDAY in Registration No. 5505122, thus, purchasers are likely to believe that registrant’s mark merely identifies an additional line of advertising, marketing and promotional services. Specifically, purchasers are likely to believe that the mark TECHNO TACO TUESDAY in Registration No. 5505122 identifies a new line of advertising, marketing and promotional services offered under the TACO TUESDAY line of advertising and promotional services. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d)…

In summary, because of the contemporaneous use of the distinctive phrase TACO TUESDAY, it follows that purchasers are likely to believe that the marks identify the same source for advertising and promotional services and advertising, marketing and promotional services. Thus, the marks are confusingly similar.”

The applicant for Taco Tuesday didn’t reply to the refusals in a timely manner so it remains to be seen if there’s a persuasive enough argument out there for the USPTO. And given this precedence, it seems fairly likely that James’ filing should receive a similar refusal for the advertising related services.

Comprehensive trademark research will make you aware of any potential problems before you file so you can make an informed decision about your brand.

Trademark 101: State Trademark or Federal Trademark?

noreply@blogger.com (Unknown) — Thu, 04 May 2017 18:41:00 +0000

Now that you know what a trademark is, what a trademark isn’t, and that you should get a trademark, let’s explore if a State trademark or Federal trademark is most appropriate for your needs.

For the USA, trademarks can be obtained either at the State level or the Federal level. So, which do you need? I’ll explain both and that’ll give you a clearer picture as where to go from here.

First and foremost, a State trademark gives you trademark protection for that specific state whereas a Federal trademark gives you trademark protection nationwide. Simple enough, yes? But, which is the right trademark for your needs?

1) Are you actively in business?

2) Are you only doing business in one city or county or just statewide?

If you answered yes to both, then exploring a State trademark is your next step. Here are some advantages to a State trademark:

· The right to expand statewide. The name will be waiting for you in other metros.

· If another mark is infringing upon yours within the state, you’ll have access to State courts.

· Other entities will much more readily accept your trademark and first use common law rights when you have a registered State trademark.

· Future Federal trademarks will not be able to be used commercially anywhere in your State, thus giving you a strategic advantage against larger competitors.

While a State trademark certainly has its advantages, the increase in Federal filings over the years shows the influence of the internet and the wide reach possible for even the smallest of businesses. So, first, let’s make sure you can even qualify for a Federal trademark.

1) Are you currently in business in at least 2 states and/or between the USA & any other country?

2) If you’re not yet in business or in business in only one state, do you have plans to expand to another state or states or other countries?

Before you answer yes or no, it’s important to define what being “in business” actually means in respect to the trademark world. To qualify for a Federal trademark, the mark must be in use in interstate commerce. “For goods (i.e. products), "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "Interstate commerce" involves offering a service to those in another state or rendering a service that affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).”

So, if you answered yes to either of those questions and your business is truly involved in either interstate, “territorial (between the United States and a territory of the United States), (or) foreign commerce (between the United States and a foreign country),” then exploring a Federal trademark is the way to go.

Still not sure or have other questions, please leave a comment or email me shannon at tmexpress dot com

Trademark 101: Should You Trademark?

noreply@blogger.com (Unknown) — Fri, 28 Apr 2017 14:00:00 +0000

Source

Now that we know what a trademark is and is not, let’s dive into the next logical question: should you trademark?

The easiest way to answer this question is to look at your business and your plans for it.

- Is the name, logo, or slogan an integral part of your business?

- Are you doing business on a statewide or nationwide or international level? If you’re only doing business citywide or countywide, do you see potential for geographical growth?

- Would another business in your industry using the same or similar name hurt your business? In other words, is it possible you’d lose customers if someone had the same or similar name in your industry?

If you answered yes to any of the above then exploring a trademark is the way to go.

Here’s what a US Federal trademark gives you:

· A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);

· Public notice of your claim of ownership of the mark;

· Listing in the USPTO’s online databases;

· The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods; • The right to use the federal registration symbol “® ”;

· The ability to bring an action concerning the mark in federal court; and

· The use of the U.S. registration as a basis to obtain registration in foreign countries

Pretty nice perks, huh? If you’re still not sure if a trademark is right for you, please leave me a comment or send me an email shannon at tmexpress dot com

Trademark 101: What Isn’t a Trademark?

noreply@blogger.com (Unknown) — Wed, 26 Apr 2017 15:00:00 +0000

Source

Yesterday’s post was all about what a trademark is so today we’re going to talk about what a trademark is not. Knowing both sides of that coin will give you a clear idea if a trademark is right for you or not.

Let’s use yesterday’s examples as a jumping off point:

· PEACE is the name of your new clothing line and your logo is the peace sign. Both of these things appear on the tags that are attached to the clothing items. You have a variety of designs and sayings that appear on the front of your clothing items, e.g. the front of a t-shirt.

· LOVE is the name of your daycare services. Your slogan, Love blooms here, appears on the web site, the brochures for new parents, the signage inside & outside of the facility. There are also multiple heart designs, created by you, used in your advertisements.

· HAPPINESS is the name you use for your invention, a new kind of food processor. You have stacks & stacks of technical documents explaining how your invention works and every page has the name at the top.

	POSSIBLE TRADEMARKS:	NOT A TRADEMARK:
PEACE	Name & heart logo as shown on the tags	Designs & sayings on the front of the clothing
LOVE	Name; slogan since it identifies the services and is used in the offering of those services	Multiple heart designs
HAPPINESS	Name of the food processor	Technical documents

So why are those items not trademarks? The main reason is that none of them identify the source (i.e. the origin) of the goods/services. Let’s do the breakdown explanation you all know by now that I love.

PEACE has a number of designs and sayings that appear on the clothing items, e.g. the front of a t-shirt. These items do not identify the clothing brand itself. They are merely decorative or ornamental.

LOVE uses a bunch of unique heart designs in their advertisements – billboards, leaflets, newspaper ads, etc. – but these designs are not used on the web site, the signage, etc. In other words, clients wouldn’t refer to these heart designs when looking for this business.

- These designs may be eligible for copyright protection. We’ll get into that area of intellectual property at a later day.

HAPPINESS is the name at the top of the technical documents, which is not the good to be sold (i.e. the food processor) but rather is the technical explanation of how the good works. If you’re looking for a food processor, you’re not going to look for the technical mumbo-jumbo.

- These technical documents would be part of your patent application. Again, we’ll explore that another day.

I hope this quick primer helps explain what a trademark is AND helps you decide if going the trademark route is right for you.

And if you’re still not sure, leave a comment or drop me a line – shannon at tmexpress dot com

Trademark 101: What is a Trademark?

noreply@blogger.com (Unknown) — Mon, 24 Apr 2017 15:00:00 +0000

Source

Welcome to the first day of class! Before we get into the nitty gritty of trademarks, let’s go back to the beginning. And the beginning of the beginning is defining what a trademark is and what a trademark is not.

Here’s what the USPTO says: “A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”

So, that’s clear, right? Mmhm, thought so. Let’s simplify this a bit.

First things first, we’re going to use the word trademark regardless if we’re talking about a business that sells products (i.e. goods) or services. Keep that in mind please.

Simply put, a trademark protects names, logos, or a combination thereof that are used for goods and/or services. Let’s break that down even further using examples:

What do you think could be a trademark? What isn’t?

	POSSIBLE TRADEMARKS:	NOT A TRADEMARK:
PEACE	Name & heart logo as shown on the tags	Designs & sayings on the front of the clothing
LOVE	Name; slogan since it identifies the services and is used in the offering of those services	Multiple heart designs
HAPPINESS	Name of the food processor	Technical documents

As you can see, the common denominator for those possible trademarks is that (1) they are names or logos or slogans and (2) are used to identify the source of the products (i.e. goods) and services. This last point is often a sticky wicket for folks. Let’s break these examples down even further to differentiate the source from the goods/services created.

PEACE and the logo identify the source (the clothing line) of the goods (the individual clothing items with the designs & sayings on them)

LOVE and the slogan identify the source (the daycare) of the services. In other words, that’s the name & slogan of the business.

HAPPINESS identifies the source of the tangible good (the food processor). This is the name that will be on the product itself, the tags, labels, packaging, etc.

Tomorrow, we’ll talk about what a trademark is not and, furthermore, how the examples of non-trademarks can be protected.

And we're back!

noreply@blogger.com (Unknown) — Sun, 23 Apr 2017 18:16:00 +0000

Source

Hello there readers!

The blog has been on a bit of a hiatus as we revamped our site (check it out - nice, eh?) and while I specifically re-focused my day-to-day activities.

But, I'm back and am here to talk trademark and answer any questions. Have one? Leave a comment or send me an email - shannon at tmexpress dot com

Since it's been awhile, I thought it a good idea to go back to Trademark 101 so that's what we're going to do. Over the next couple of weeks, I'll be going back to the beginning and outlining the basics of the basics.

The trademark world and the USPTO don't change in leaps and bounds but there have been enough significant changes that it's worth going over these essentials.

So, thanks for reading & here we go!

$50 Discount: Ends Wednesday, July 20th - Mention the Blog When Ordering

noreply@blogger.com (Unknown) — Sat, 16 Jul 2016 18:51:00 +0000

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So, you finally settled on the perfect name for your product or service – that's fantastic! Finding just the right name is vitally important to the success of any product line or service.

Or, perhaps, we've already searched & filed a trademark for you. If it's been a couple of years, have you had protective research conducted? Do you have a logo or a slogan or a new product/service name?

Regardless if you're new to the world of trademarks or have already gone 'round once, let's walk through a quick primer. Protecting your brand is a vital part of your overall business plan.

Trademark Step-by-Step Primer

1) Is it required that I register my trademark?

No, not at all. However, registering your trademark, specifically your Federal trademark, does provide you with several advantages:

* Public notice of your claim of ownership of the mark;

* A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;

* The ability to bring an action concerning the mark in federal court;

* The use of the

U.S.

registration as a basis to obtain registration in foreign countries;

* The ability to record the

U.S.

registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

* The right to use the federal registration symbol ®; and

* Listing in the United States Patent and Trademark Office's online databases.

2) But what if someone else already came up with that name?

While the name may be unique and distinctive to you, there is a possibility that another party already has prior trademark or common-law rights to the name for your industry. Before you invest time, money and effort into your name, you need to have comprehensive research done, which will tell you if the name is truly available.

3) Ok, so the name is clear; now what?

To register your trademark, you have 2 options – file for a Federal or a State trademark. If you are only going to sell your product or services in 1 state, then a State trademark is the way to go.

While anyone has the ability to go online to access these forms, it's strongly recommended to hire a private company or an attorney for the preparation and/or filing of the trademark application. To ensure a successful filing, it's best to leave it in the hands of those with experience.

4) You found the perfect name – now, make sure it's truly yours!

Step 1: USPTO Tess Preliminary Search	FREE
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Beware of Official-y Correspondence

noreply@blogger.com (Unknown) — Mon, 08 Dec 2014 22:38:00 +0000

Once you get that trademark filed be aware that your information is of public record, which means, unfortunately, some will mine that resource & some of those folks will send you solicitations.

These solicitations often look very official, and "may use names that resemble the USPTO name, including, for example, one or more of the terms "United States," “U.S.,” "Trademark," "Patent," "Registration," "Office," or "Agency."

Some will even have documents that resemble actual government documents rather than what you'd expect a company to send and this is often done by "emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records."

Most of these are asking you for money. That's your major warning flag.

"All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

If you did receive something that you're not too sure about go ahead and forward it to me - shannon at tmexpress dot com - and I can confirm if it's official or not.

Read more about what the USPTO has to say about this here.

IP Webinar Series: December 9-11th

noreply@blogger.com (Unknown) — Thu, 04 Dec 2014 17:36:00 +0000

"The Minority Business Development Agency (MBDA) and the U.S. Patent and Trademark Office (USPTO) will co-host a free webinar series to help business owners understand the intellectual property process, starting on Tuesday, December 9.

Register today!

This three-part webinar series will provide participants with insightful tips for success on getting a patent or registering a trademark or copyright."

The trademark webinar takes place on December 11th, 1pm-2pm EST. Register here.

I'll be there so "see" you on-line!

Hello Again!

noreply@blogger.com (Unknown) — Mon, 01 Dec 2014 23:25:00 +0000

It's been awhile but we are back! And as Mr. Waving Turtle up there indicates it has taken me a bit to get back here to the old blog watering hole (or wherever turtles congregate so I may continue the metaphor) but I'm here and ready to go so let's talk trademarks!

If you've got a topic you'd like addressed please comment and I'll be sure to tackle it in a future post.

For today, I'll assemble a greatest hits list. This will provide a good overview of trademarks as a whole. You can also search the blog if you're looking for something more specific. And if nothing pops up then leave me a hey I wanna hear about this note in the comment section.

Trademarks - A Quick Introduction

- Aww, my 3rd post ever. It's an oldie but goodie. Plenty of basic info here.

What is a Trademark?

- What it is.

What is NOT a Trademark?

- What it isn't.

What's the deal with the © ® ™ symbols?

- While my Seinfeld-ian homage may have fallen flat the info in the post is gold, Jerry! Gold!

Is it Possible to Search my Trademark for Free?

- Spoiler Alert! It ain't but finding out why is handy to know.

What is a Trademark Search?

- aka what does it mean when a search is comprehensive?

Do You Need a Registered Trademark?

- Maybe. Maybe not. Read on to find out.

How to Know When to Trademark your Logo

- Got a cool logo? You may want to think about protecting it.

Trademark a Name and Logo: Together or Separate?

- The filing costs shouldn't be your only consideration here.

Brainstorming Tips for Creating a Business Name

- You've got the business but don't know what the heck to call it. Check out this post for some tips.

Starting a Business Series

- For many, many posts I wrote up on starting business in all kinds of different industries and included general business start-up knowledge to more specifics, such as associations, books, and articles.

Copyrights & Trademarks: How to Protect Your Music

noreply@blogger.com (Unknown) — Wed, 06 Nov 2013 20:01:00 +0000

I've written about the difference between copyrights and trademarks before. Yesterday's post focused on literary works, which could certainly have commonalities (e.g. lyrics) with today's subject. From the written word to the spoken - today we're talking about...

SOUND RECORDINGS

Over the years we've worked with all kinds of musicians running the gamut of genres - rock and roll, country, hip hop, and even a Frankie Valli tribute band. Just like those creating literary works folks creating anything with sound will likely need copyrights and trademarks.

MUSICIANS & BANDS

Copyright

"Sound recordings are defined in the law as 'works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.' Common examples include recordings of music, drama, or lectures."

So any format which is "fixed" (i.e. CDs, MP3s, record albums, etc.) AND emits sound should be filed for copyright. The Copyright Office allows online filing and seeing as how it's only 35 bucks a pop it is more than worth it to file each and every sound recording you create.

Trademark

You'll want to research and trademark any element that you're using that represents you as a band or a musician. This means your personal name (e.g. Beyonce), your band name (e.g. Maroon 5), or your logo (e.g. Wu-Tang).

You may also want to trademark the name/logo for the actual performances (e.g. this Radiohead filing) AS WELL AS the tangible recordings (e.g. this Radiohead filing).

And if your merchandise is a big part of your musical identity, you might also want to consider filing for those various products. Check out this filing to see how The Grateful Dead filed their skeleton logo for use on magnets, stickers, paper & cloth posters, and clothing. Of course, filing for trademark protection for merchandise may be well down the road but it's good to keep those possibilities in mind. Plus, hey, it's thinking positive!

RECORD LABELS, STUDIOS, or PRODUCERS

Copyright

This area is going to be a bit different for you. Usually labels will own the copyright on the sound recordings (or attain them through a recording agreement); however, scenarios differ so cementing your plan before signing an artist is probably the way to go. Check out this link for further information.

Trademark

This area is pretty clear cut for you folks. Since you're offering a service you'll want to make sure that your company name and/or logo is legally available before filing for a trademark.

Have questions? Please leave a comment here or email me directly -- shannon at tmexpress.com

Copyrights & Trademarks: How to Protect Your Book

noreply@blogger.com (Unknown) — Tue, 05 Nov 2013 19:21:00 +0000

I've written about the difference between copyrights and trademarks before but I thought it a good idea to get into the nitty-gritty of specific works. Today's post is about...

LITERARY WORKS

We've had the pleasure of assisting many writers and publishers over the years (need help with both? Check out The 90 Day Author) and this is a group of folks that need both copyrights and trademarks. Let's break it down, shall we?

WRITERS

First, congratulations! Whether you've completed a novel, a reference book, a cookbook, a children's book, or any major text, please take a moment to pat yourself on the back. That's quite an accomplishment and should be savored!

Now that you've got the creative-y stuff settled it's time to get to business, namely, the business of protecting your work. Simply put, copyright your printed works and trademark any element that you'll be using in commerce.

Copyright

Literary works include fiction, non-fiction, poetry, textbooks, catalogs, and more. Check out the full list here. The Copyright Office allows online filing and seeing as how it's only 35 bucks a pop it is more than worth it to file each and every literary work you create. This is applicable even if you haven't published your piece yet.

Trademark

What about Book Titles?

This is an area worth exploring a bit. Titles of a single creative work are not protected by trademark law. Let's delve into this a bit further.

Single creative works consist of materials where the content does not change, such as a book, a DVD, downloadable songs and a film. Single creative works do not include periodically issued publications, such as magazines, newsletters, brochures, comic books, comic strips or printed classroom materials, because the content of these works change with each issue.

However, trademark registration may be possible if the title is used on a series of creative works or is used in other arenas.

When it comes to titles for a book series, the rationale is the same: while the title stays the same, the content changes. Take a look at the filing for Ring of Fates, part of The Final Fantasy catalog: "a series of books featuring fictional stories and/or fantasy stories."

When it comes to trademarks for literary works it is not possible to protect the work itself but it could be possible to protect the various representations of the work. I'll explain:

- If your literary work is a part of a series (e.g. Harry Potter) then you should have comprehensive research conducted prior to filing for a trademark.

- If you have a set of characters or designs or even the book title that will be used on goods such as clothing, toys, posters, etc. (e.g. Dr. Seuss) then, again, you'll need comprehensive research conducted prior to filing for a trademark.

- If you're not sure if a trademark applies to your situation, please leave a comment here or email me - shannon at tmexpress.com

PUBLISHERS

Copyright

This area is going to be a bit different for you. Some publishing companies own the copyright to the literary works though, more often than not, publishers typically are licensees. Where your company falls in this spectrum is going to depend on your author agreements. For further guidance, check out this booklet from the World Intellectual Property Organization.

Trademark

This area is pretty clear cut for you folks. Since you're offering a service you'll want to make sure that your company name and/or logo is legally available before filing for a trademark.

Have more questions? Please leave a comment here or email me directly -- shannon at tmexpress.com

Current TradeMark Express Special - Save $100 off your next trademark order!

noreply@blogger.com (Unknown) — Mon, 04 Nov 2013 19:53:00 +0000

Order by tomorrow, Tuesday, November 5th and take $100 off your next trademark order!

TradeMark Express is currently running a post-shutdown special. If you've been holding off on getting started on your research and application filing perhaps taking a hundred bucks off of our Premium Package will entice you!

You may call us to order -OR- just order online.
If ordering online, please be sure to reference this special in order to ensure you get the $100 off.

Not sure if you need a trademark?

Anyone that's started a small business or is in the throes of starting a small business knows how overwhelming it can be just to get to opening day. You've got licenses & permits to think about, what sort of business entity structure is right, where the money is going to come from, and on and on. Phew! While it can almost be too overwhelming, your entrepreneurial drive and your passion for your business will get you through it.

Now when it comes to your business name, we can all agree that that's an important, if not the most important feature of your business. Your small business name is the face, if you will, of your products and/or services. It's how your customers will come to know you, how they'll get back to you, and how they'll refer you to new customers.

So your first step after you've decided on your small business name is to research it to ensure that no one else had the same bright idea before you did. Ta-da! A comprehensive trademark search is the next step and what better time to order than when you can save some dough!

Order by tomorrow, Tuesday, November 5th and take $100 off your next trademark order!

The Government Shutdown and Your Trademarks

noreply@blogger.com (Unknown) — Tue, 15 Oct 2013 14:19:00 +0000

Since several clients have asked how the government shutdown may affect their trademarks, we here at TradeMark Express decided it’d be a good idea to provide all of our clients an update.

First, good news! The USPTO “will remain open...[and will] operate as usual for approximately four weeks.” This means that all “11,789 employees will be excepted” until approximately starting the week of October 28th. This means that all of your trademark needs will be met from filing a new application to submitting renewal forms.

However, should the reserve funds be exhausted before then the USPTO will shut down. If a shut down happens, regardless of when it occurs, “a very small staff would continue to work to accept new applications and maintain IT infrastructure.” But what does this mean for you?

NEW APPLICATIONS

Even if the USPTO shuts down, new applications will be accepted. Given that it takes about 3-4 months to be assigned to an examining attorney there will be no noticeable delays for new applications as it’s not expected (or hoped!) that the government will be shut down for months. So, more good news! There is no need to delay your needed comprehensive research or application preparation!

PENDING APPLICATIONS

In regard to already filed applications including those with pending Office Actions or those needing renewal forms, the USPTO will essentially function on a holiday schedule. This means that “any action or fee that is due on a date falling on...a Federal holiday...is considered timely if the action is received, or the fee paid, on the following day that is NOT...a Federal holiday.” Let’s say the USPTO shuts down and your Office Action is due the very next day. No need to worry! It won’t actually be due until the USPTO is open.

CAVEAT – While these are the provisions in place as of now, the USPTO representative I spoke to warned that nothing is “positive yet” and the office is in “wait and see” mode as the USPTO has never closed down before. Should anything change from what’s outlined above, TradeMark Express will send out another notice.

TO SUM IT UP...

If you’re thinking about filing a new application or have a pending application that needs attention then don’t delay and contact TradeMark Express today!

The Trademark Information Network

noreply@blogger.com (Unknown) — Tue, 14 Feb 2012 16:00:00 +0000

Awhile back the USPTO launched a media component to their trademark page, namely, the Trademark Information Network. From this page you can watch a number of different videos that discuss the basics of trademarks and all the way up to post-registration issues.

Have you watched any? What did you think?

I'll devote some posts to watching these videos & provide a critique/reaction to each one.

Election Trademarks 2012

noreply@blogger.com (Unknown) — Mon, 13 Feb 2012 16:00:00 +0000

As discussed before any time there's an event that stirs the nation trademark applications follow. Nowhere is this more obvious than during an election season.

Not surprisingly, most of the presidential-themed filings revolve around Obama. And even less surprisingly, the USPTO is refusing registration. It is assumed that most of these applicants are in no way affiliated with the famous men mentioned so they will all likely receive the following message:

"The examining attorney refuses registration because the mark consists of or comprises matter which may falsely suggest a connection with the individual..."

Let's take a look at a few...

On January 21, The Gervasio Group filed for It's Rmoney! Vote Romney! for 4 different classes. Since the applicant filed a TEAS PLUS form that means this filing cost $1100. Eesh, ouch. I'm not finding much about this company other than their Nevada filing so who knows? Maybe they are affiliated with Romney but I'm placing my bets on that they'll be getting an Office Action refusal.

A few days later, Daniel Sladek filed for No Newt is Good Newt for 2 different classes. First, I'm loving the connection to Gary Gnu that's implied in this mark. Second, I'm afraid Mr. Sladek is also going to receive a "false connection" refusal.

Two applicants (out of many!) that are familiar with that dreaded response from the USPTO are You Can Say What You Want About Obama, But He Got Osama and Ron Paul Speaks the Truth.

So I think the overall lesson here is that if you are not somehow DIRECTLY affiliated (i.e. you have permission) with a famous person, please think twice (and thrice and again) before filing for a trademark.

Friday Fun Day!

noreply@blogger.com (Unknown) — Fri, 10 Feb 2012 16:00:00 +0000

Rather than devote every post to some legal-y aspect of trademarks, I thought it'd be fun to devote Fridays to the lighter side of the trademark world. So...

Welcome to Friday Fun Day!

Today's post is dedicated to that fun-loving bunch - Hipsters!

Okay, so they've been skewered to death, yes, but still hipsters are everywhere (I live in Portland OR, trust me). So let's embrace this subculture & see what it looks like when hipsters and trademarks collide.

Easily, my favorite hipster-related trademark has gotta be Dads are the Original Hipsters. Check out the blog here though be forewarned - you'll easily get lost in the images of flannel-wearing, beard-having, bike-riding dads and the funny, funny commentary.

Here's a fellow who has fully embraced the moniker - Harry the Hipster! Naturally his blog focuses on music and the logo he's thinking about going with is...what else, a mustache! Kudos to you Harry for flinging yourself in wholeheartedly!

What are your favorite hipster-related brands, blogs, funny places?

What Do I Do If...

noreply@blogger.com (Unknown) — Thu, 09 Feb 2012 16:00:00 +0000

someone is infringing on my trademark?

Let's assume you've taken our advice to have comprehensive research conducted every 2-3 years and lo and behold, someone is infringing on your mark!

While, yes, it can be maddening to see someone using your good name regardless if done intentionally or on accident (though the intentional misuse is certainly far more annoying).

However, check your emotions at the door. Most likely, this company is blissfully ignorant of your trademark and is using it in good faith (i.e. assuming that they have every right to the name). You were savvy enough to have comprehensive research conducted before you filed; others may not be as up to speed as you.

That being said, you'll still have to decide what to do next.

1) Do your homework. This company popped up in the research but you'll want to dig a bit more. Doing all of this BEFORE calling an attorney will save you time and money. Plus you'll be educated in case this happens again.

If they have a pending trademark application you'll have their Serial Number and can check their filing here. Go to the Documents tab. Links to click on include:

* Application - Copy down the contact info, including their attorney. Note any first use dates.

* Specimen - If they filed as in use, there should be a specimen. Copy & paste this into the file you're creating.

* Offc Action Outgoing - If you see this link that means the USPTO has an issue with their filing, one of which may very well be a refusal based on your prior filing.

If the company popped up in the Common-Law research then finding out more info may be a bit more difficult, though certainly not impossible. The research will show you their web site, address, and/or phone number. Cull as much information as you can from these sources. Start with a web search if you don't already have a web site - use the name, reverse address, phone number, etc. to try to locate a site. Information to gather includes:

* Owner Information including phone numbers, addresses, owner names, etc.

* Start Date - you can typically find this information on a site's About Us page. If there is no web site check the records provided. An incorporation or fictitious filing record will contain a date.

* Trade Area - again, check the About Us page but also look at Locations, Services, etc. If there is no web site this may be a bit trickier to determine.

We offer a competitive check service you may want to consider if you're finding this process difficult.

We interrupt this broadcast to bring you this message --> Do NOT call them about their infringement directly. Absolutely resist the urge to take matters into your own hands.

2) Once you've got yourself a hefty file on the infringing company, read it again. Now ask yourself some important questions:

* Am I going to lose customers to this company? Is it reasonable for people to confuse me with them and vice versa?

* Do our trade areas cross? Am I only selling on the West Coast with no plans to expand and they're only selling in one state, county, city on the East Coast? Do I want to sell in the areas that they're in even if I'm not yet doing so?

* Has this been willful infringement? Have I already lost sales and customers to them? (If you're answering yes to either question then you'll want to gather evidence that shows that)

3) Call a trademark attorney. Even if the best case scenario exists (the USPTO is already in the midst of rejecting their application), you will still want to seek that legal advice. You've done your homework, asked and answered some determining questions - now you're ready to take all of that information to a trademark attorney to decide your next step.

The question of what that next step is a tricky one; check out this great article for more on that subject.

What Do I Do If...

noreply@blogger.com (Unknown) — Wed, 08 Feb 2012 16:00:00 +0000

someone wants to sue me, sue me?

Eek! If you're asking yourself this question, you likely received a very scary letter demanding that you cease and desist the use of your name.

First, take a breath! Yes, this can be a very harrowing experience but there are steps you can take to maneuver through this.

1) Resist the urge to contact the company or their attorney directly. Actually, don't just resist, DO NOT DO IT.

2) Carefully read through the cease and desist. Highlight the exact complaint(s) being made against you.

3) Research any terminology as well as any highlighted portions of the letter. Scour the internet and the library to educate yourself as much as possible. Of course, you're welcome to give us a ring and we can walk you through the different meanings and terms. Arm yourself with as much information as possible because that's going to make the next step that much easier (and cheaper).

4) Call a trademark attorney. Yes, you will have to spend money on an attorney because you must take this cease and desist seriously. We have a cadre of attorneys we'd be happy to recommend.

5) Make up your own mind. The trademark attorney is going to give you options but the ultimate decision is yours.

An anonymous former client wrote a great post about this on Tony Wright's blog. It should be noted that this client used us AFTER this experience was over. His post really hones in on why comprehensive research is so needed BEFORE you file for a mark.

Tomorrow's post will be the flip-side - what if you need to sue someone who is infringing on your mark?

Protect Your Mark, Part Two

noreply@blogger.com (Unknown) — Tue, 07 Feb 2012 16:00:00 +0000

Yesterday's post was about recording your trademark with Customs, which will prevent the importation of infringing goods. However, you'll want to be sure to take the necessary steps to protect your mark within the U.S. as well.

Straight from the horse's mouth: "You are responsible for enforcing your rights if you receive a registration, because the USPTO does not 'police' the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark."

Ok, so what does this actually mean? Since the USPTO will not police the use of marks it's going to be up to you be your own trademark cop. This means having that comprehensive research done every 2-3 years. Now this is going to be a whole different mind-set from the first time this work was done. Instead of looking to see if your mark is infringing on others you'll now be looking for those that may be infringing upon you.

The rationale in determining if marks are infringing upon you is going to be the same that was used to decide if your new name might be infringing on others.

Protect Your Mark, Part One

noreply@blogger.com (Unknown) — Mon, 06 Feb 2012 16:00:00 +0000

One of the many advantages to owning a Federal trademark on the Principal Register is the ability to record your mark with U.S. Customs & Border Protection (CBP). Why is this important? "CBP officers monitor imports to prevent the importation of goods bearing infringing marks..."

As of October 2005, they've made it very easy to do so with electronic filing, which you can access here.

The fee is $190 per International Class and must be renewed with CBP at the same time you renew with the USPTO. There is one typo on that last link; USPTO filings are for 10 years, not 20.

noreply@blogger.com (Unknown) — Fri, 03 Feb 2012 16:04:00 +0000

Our Facebook Page

Check out the TradeMark Express facebook page - like us for access to handy articles as well as coupons.

Speaking of coupons, we're currently running a special. Get your trademark AND save $50!

Does your business have a facebook page? There are 5 good reasons why you should.

noreply@blogger.com (Unknown) — Tue, 13 Dec 2011 18:52:00 +0000

More Changes Coming to the USPTO's Online Presence

The USPTO issued a press release on December 7th. Here are the details:

On or about December 16, 2011, the USPTO will introduce a new system, Trademark Status and Document Retrieval (TSDR 1.0). TSDR 1.0 will redefine the way Trademark status data and all documents will be displayed to the public. It reengineers the existing functionality that TARR and TDR currently provide and adds new features, providing access to one place for viewing, printing, and downloading snapshots of the data the USPTO stores about a trademark application or registration.

New features include:

The ability to preview and print the status content being presented.
The ability to download a PDF or the original form of the status content (an Extensible Markup Language (XML) file).
The ability to view the mark as stored in the USPTO mark image repository, and expand the size thereof through mouse rollover feature.
The organization of content into logical sections, with a more logical arrangement of the content within those sections.
The ability to collapse and expand sections of the data.
The ability to move easily between status and document content.
The presentation of basis data at both the case and class levels.
Links to related properties, where applicable.
Access to Trademark status data without going to the TSDR site via an Application Programming Interface (API), which is accessible via unique URL’s that allow the retrieval of data in a specified format (PDF or XML).
Significant decrease in the amount of time between an update to the internal USPTO database record and what is available externally (seconds as opposed to hours).

Please note that, at a currently undetermined point, both TARR and TDR will disappear. Until then, the links for both TARR and TDR will take the user to an "interim" page, from which either the existing system can be reached or the new TSDR 1.0 can be accessed.

noreply@blogger.com (Unknown) — Fri, 02 Dec 2011 17:15:00 +0000

Occupy Trademark

The Occupy Wall Street movement has moved into the trademark arena with a number of new trademark application filings.

There are currently two filings for Occupy Wall Street both of which were filed on the same day:

* Occupy Wall Street, which appears to be owned by those directly involved with the movement.
* Occupy Wall Street, which is owned by Fer-Eng Investments, LLC. "Fer-Eng Investments appears to be a shell corporation with the only officer named as “The Ferraro-Eng Family Trust.” The names provided on the address refer to Vincent Ferraro and Wee Nah Eng. Interestingly enough, Ferraro, a Stanford Business School grad, is the former Vice-President of Worldwide Marketing for Hewlett-Packard"

Now, those affiliated with the movement filed as in-use so Fer-Eng's intent-to-use filing will likely not end well.

The two latest to jump into the trademark pool are:

OCCUPY Las Vegas
Occupy Los Angeles

The LA mark filed for "political action committee services, namely, promoting the interests of Occupy Los Angeles in the field of politics" whereas the Las Vegas mark filed for clothing.

In a Las Vegas Review Journal interview, Mary Underwood (the protester who filed the application) stated ""This way we can make the argument that they are harming our brand...This is just a bulwark against people using the term in sketchy ways."

Underwood said she doesn't intend to restrict use of the term by people from the Occupy Las Vegas site and has plans to turn over the trademark to whatever entity develops to represent Occupy LV."

I'm sure this won't be the last of the Occupy trademarks. My bet is on parody marks next.

What do you think of these filings? Is it hypocrisy, as some have opined? Or is the movement coalescing in order to protect their voice?