How to balance creativity with legal strategy to protect your brand

How to balance creativity with legal strategy to protect your brand

Attention is currency.

Because of that, almost every business owner, regardless of industry, spends a lot of time thinking of creative ways to stand out.

And while creativity is a necessary tool in the business owner’s toolbox…

I worry that all this time spent on creative thinking may lead to less time for critical thinking about things like legal strategy.

(Because, let’s face it, anything that involves legalese tends to be a lot less fun!)

Of course, you need to make yourself known if you want to stay in business and that takes a lot of creativity and strong marketing skills.

But the last thing you want is to spend all the time and effort carving out your space only to lose it all because you failed to consider the legal consequences of your choices. 

The trick is learning how to balance creativity with legal strategy so you can protect your brand.

And it’s actually not as hard as you might think.

**But before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Choosing a strong brand name

The balance between creativity and legal strategy can start even before your business does.

In fact, I would argue if you haven’t started your business yet, you’re ahead of the game.

The reason being:

Anytime you name anything for your business, including your business name itself, you want to go way past marketing tactics and consider naming from a legal perspective.

At least, you want to do this if you ever hope to have a successful trademark registration.

So, whether you’re naming your business or another brand asset like your signature offer, podcast, newsletter, etc., you can start the creative process of brainstorming…

While still considering the legal side of things.

Here are 7 questions to help you do that:

  1. What’s being named? 

This can be a simple description. You just want to describe what it is and what it does.

For example

“A podcast where I talk about my coaching strategies”

  1. Who is the target audience for the name? 

Now you can get specific. List out everything you know about your audience from gender and age group to marital status and geographical location. 

  1. What feelings do you want the name to evoke? 

Don’t be afraid to pull out that trusty thesaurus if you need to!

  1. Are there any internal naming guidelines to consider?

If your company has established guidelines, REFERENCE THEM!

  1. Are relevant domain names available?

Sometimes, checking domain availability is all you need to do to realize the name you’re dreaming of isn’t going to work, and you need to choose a different avenue.

  1. Are there any key considerations to consider from your brand strategy? 

Again, if there are established guidelines, REFERENCE THEM!

  1. Are there competitor or peer names you know you want to stay away from? 

Now, this question is KEY! 

You want to make sure you’re staying away from names that are likely to cause confusion for your clients or customers between you and another business. 

Check out this deep dive into the role likelihood of confusion plays in trademark registration.

You can bookmark this post to refer back to each time you have a new brand asset to name so you can always balance your creative efforts with legal strategy.

Just remember that this isn’t an exhaustive list.

Once you answer the questions (and anything else that comes up during brainstorming), you should have a couple of names you’re happy with.

The next step is to work with a trademark attorney to run a search and check that your name(s) are actually available to use.

Deciding when to register your trademark(s)

Once you have confirmation that your trademark (or a few of them) are available, your first instinct may be to file a registration application as quickly as possible.

But you might want to slow down and consider another piece of the legal strategy puzzle first:

Have you formed a business entity yet?

This won’t apply to every business owner’s situation, but most of the time, you want to form a business entity before you register your trademark.

Because when you submit your application for trademark registration to the United States Patent and Trademark Office (USPTO), you have to indicate who owns the trademark. 

That is the individual or entity using the trademark in commerce (or who will be using the trademark in commerce in the case of an intent-to-use trademark application). 

A business entity is essentially an organization that one or more people form to conduct business. 

Business entities include sole proprietorships, partnerships, Limited Liability Companies (LLCs), and corporations.

They provide a layer of protection between your personal assets (think your home and your car) and your business-related liabilities and debts. Because you have no personal liability for the business’s financial losses, your liability is limited. 

Which is the major reason most people choose to form an entity when they start a business. 

Now, if you were to file a trademark application as an individual and later form an LLC, you would have to reassign the trademark application to the LLC to ensure the USPTO’s records are accurate and that the chain of title for the trademark is clean.

Note: “Chain of title” = public records that track ownership of a registered intellectual property asset from the initial owner to the present. These records are used to establish ownership status and must be kept up-to-date to protect and preserve intellectual property rights.

As you might imagine, reassigning the trademark adds additional time and expense to the trademark registration process.

And if you fail to follow through, someone else could actually attack – and cancel! – your registration.

For that reason, most business owners choose to form their entity first and file their trademark application(s) after so that they can indicate the business entity will own and use the mark.

(But, of course, you always to chat with a trademark attorney about what makes the most sense for you and your business.)

Trademarks versus trade names

If you’ve got your entity sorted (or you’ve decided to register your marks as an individual), you probably want to know which of your trademarks you should register first.

Like I mentioned before, there are so many marks you can have, including:

–Business name

–Newsletters

–Podcasts

–Services

–Offers

–Logos

And so on.

Most business owners choose to submit a registration application for the business name first since that’s the mark you use most often.

If you’re actually using it as a trademark, that is.

Believe it or not, there’s a difference between your trade name and your trademark.

Which means, your business name may NOT actually be your trademark.

A trade name is defined in Section 45 of the Trademark Act as “any name used by a person to identify their business or vocation.”

You register your trade name with your state to conduct business there. It serves administrative and accounting purposes and is used to sign contracts.

If you’ve registered your trade name as a business entity, it probably includes an entity designation, like LLC or Inc. 

Your trade name could also be a DBA, which stands for Doing Business As – also known as a Fictitious Business Name here in California.  

Each state actually has different trade name requirements. 

And, it’s important to note that in many states, registering your trade name doesn’t actually prevent other businesses from operating a business under a confusingly similar trade name. 

Yikes, right?!

Your trademark, on the other hand, is a word, phrase, symbol, design, or a combination of those things that identify your goods or services in the marketplace. 

Unlike a trade name, registering your trademark with the USPTO gives you exclusive rights to that registered mark in all 50 states. 

That means you can prevent others from using the mark (or a confusingly similar one!) anywhere in the US by sending cease and desist letters or pursuing other causes of action in state and federal court. 

Your trade name can only function as a trademark if it’s USED as a trademark.

Using your trade name as a trademark

Not sure if you’re using your trademark properly?

Here’s a 5-step checklist for proper trademark use on your website:

  1. Check your trademark symbol.

The ™ symbol is used for common law marks that represent goods or services that are not federally registered with the USPTO, including marks whose registration is pending. 

The ™ symbol and the word “trademark” are interpreted as broadly covering both product marks and service marks. 

So, in the case of unregistered marks, the ™ symbol always is correct.

The ® symbol is used for marks registered with the USPTO. This symbol can only be used once federal registration is granted (applying for a trademark isn’t enough) and can only be used in connection with goods and services listed in the federal registration. 

The proper trademark symbol provides notice to third parties that may deter them from using the mark and can also provide evidentiary benefits in any potential infringement suits.

  1. Check where your Trademark Symbol is.

The ™ or ® symbol should be placed immediately following the mark. 

The standard is to place the symbol in superscript in the upper-right-hand corner, or in some cases, in subscript in the lower right-hand corner.

  1. Check your trademark symbol frequency.

A trademark symbol does not have to be used every time the mark is used throughout a web page. 

Instead, use the symbol in the first instance the mark is used, in the most prominent use of the mark, or in the website footer.

It’s best practice to use the trademark symbol at least once per web page in which the mark is used. 

Placing the trademark symbol in any static representation that is repeated on every page is also a good idea (for example, trademark notice in the website footer).

  1. Check that your trademark is used as an adjective.

Your trademark should be used throughout your webpage as an adjective (e.g., a word that describes the traits, qualities, or number of a noun). 

Trademarks should never be used as nouns (e.g., a person, place, or thing), verbs (e.g., an action word), or possessives. 

  1. Check that all trademarks are included.

If your website has a trademark notice in the footer or on a standalone webpage, make sure all trademarks are included.

A trademark notice will list all trademarks (this can be common law or registered) and note that they are trademarks of your company.

Once you’re confident you’re using your trade name as a proper trademark, you can proceed with filing a trademark application.

Addressing trade dress

If you feel like the scales have tipped slightly to the legal strategy side, this is where we tip back to the creative part of protecting your brand.

Since your first trademark registration will likely be your business name, we need to talk about the different forms this could take.

(Because trademark protection extends beyond words, phrases, and even logos.)

Enter Trade Dress.

Trade Dress is the total image and overall appearance of a product that often includes features such as size, shape, color, color combinations, textures, graphics, and even sales techniques defining a particular product. 

It’s the “look and feel” of a product or service that distinguishes it from the competition. 

In order to be registered with the USPTO, your trade dress has to be both distinctive AND nonfunctional.

Distinctive = a consumer must recognize the trade dress as a reflection of the company’s brand and an indication that the product or service comes from that company.

Nonfunctional = its sole purpose must be ornamental or aesthetic. 

Some fun trade dress examples that have been successfully registered include:

–Atmosphere of an Apple store 

–Design of the Coca-Cola bottle

–Shape of Hershey’s kisses 

–The lifesaver’s hole 

As you build your brand, this is where you get to flex your creative muscles the most and think outside the proverbial box. 

There may be brand elements that differentiate you from the competition that can be protected.

Even if they’re not the standard word, phrase, symbol, design, or a combination of those things, you could still create trade dress that’s entitled to trademark registration. 

Protect your brand with a holistic approach

I say this, even as a trademark attorney:

You can protect your brand the most if you take a holistic approach that considers your assets from both a creative and legal perspective.

Thinking outside the box is your best defense against trademark infringement and a market presence you can securely hold for as long as you want to keep your trademark active.

But also, consider the legal implications of developing and successfully registering your trademark(s).

And don’t forget to consult with an attorney during the process.

I’m here to help when you need it.  

More of an audio learner, or want to digest this in a “mini-format?”

Get on the exclusive podcast list and start Uncomplicating Trademarks today.

 

What should you do if you receive a trademark Office Action?

What should you do if you receive a trademark Office Action?

It’s a scenario that urges many business owners to hit the panic button:

You submit your application to the United States Patent and Trademark Office (USPTO) and wait an eternity for some sort of response.

But the one you get isn’t the one you were hoping for.

It’s an Office Action (OA).

Cue the sinking stomach.Womp womp.

I know this can be really scary, but it doesn’t mean all hope is lost, and you should hit panic or fold and give up your whole business endeavor now.

An Office Action in response to your trademark application doesn’t have to spell THE END.

It could just be that you need to put in a bit more work before you can enjoy the happily ever after of a successful trademark registration.

**But before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

What is an Office Action?

An Office Action is written correspondence from the USPTO that may ask a question, request clarification, or may even flat-out refuse registration of your mark. 

Yes, that last scenario sucks (there’s no other way to say it), but it’s obviously not the only reason you might receive an OA in response to your trademark application.

In fact, ~60% of applications receive an OA for one reason or another.

If you receive an OA, you’re required to submit a written response in order for your application to continue being considered for registration.

 And your response must address each issue raised by the Examining Attorney. 

It’s also important to note that there are two types of OAs:

  1. Non-Final Office Action

A Non-Final OA is the first correspondence from the USPTO that raises any issue. 

  1. Final Office Action

As the name suggests, the USPTO will issue a Final OA as a final warning about issues they’ve identified in your application. 

A Final OA will only be issued if a Non-Final OA was issued first and the USPTO determined that you failed to address or overcome the issues raised in the Non-Final OA. 

This represents your last chance to argue for registration without having to bring an appeal before the Trademark Trial and Appeal Board (T-T-A-B).

Both Non-Final and Final OAs require written responses, and your approach is determined by whether the issues raised by the USPTO are substantive or not. 

Non-Substantive Office Actions

If you’ve received an OA, the first step is to determine whether the issues raised are non-substantive.

Because if you receive a non-substantive Office Action, you can actually breathe a sigh of relief. 

Non-substantive office actions mean the Examining Attorney isn’t flat-out refusing registration, they’ve just identified a few issues in your application that need to be cleaned up. 

These are administrative matters, like:

– Requesting a disclaimer for a specific term or phrase

– Requiring changes to the description of the goods or services

– Asking for an alternate specimen to be submitted

In other words, a non-substantive OA doesn’t typically require legal research or argument. 

Which means they can be relatively “easy” to address and get your application back on track to registration. 

If you receive a substantive Office Action on the other hand, more work is required. 

Substantive Office Actions

If you’ve received a substantive Office Action after submitting your trademark registration application to the USPTO, the Examiner has identified more complex issues in your application. 

The most common reasons an Examining Attorney may issue a substantive OA include:

– They determine a likelihood of confusion exists

– They believe your mark is too descriptive

– They believe your mark is failing to function as a trademark

Note: This is not an exhaustive list of all the reasons an Examining Attorney may find a substantive issue in your trademark application.

Substantive OAs typically require legal research and argument to properly address. 

And this is the moment I tell you to stop DIYing things.

It’s time to chat with an attorney ASAP at this point. 

So do not pass go, do not collect $200, do not file that OA in your email folder, and ignore it. 

Get advice from a trademark registration attorney right away.

Responding to an Office Action

Substantive or non-substantive, your written response to either a Non-Final or Final Office Action must be received no later than 3 months from the date the OA is issued in order to be considered timely. 

The moment you receive an Office Action:

Note the response deadline on your calendar. In your project management tool of choice. Both electronic and paper. 

And go ahead and set a reminder on your phone while you’re at it.

It might sound like overkill, but you won’t think so if you miss the deadline. Because if you do, the USPTO will consider your application abandoned. 

If that happens, you won’t receive a refund of your filing fees (and attorney’s fees if you’re working with an attorney).

And your application will never reach registration. 

If you’re within the 3-month timeframe to respond, you can file a Request for Extension of Time to receive an additional 3 months (for a total of 6 months to respond). 

(But note that at the time of publishing this blog post, this will set you back $125, plus any requisite attorney’s fees.)

Whatever you do, DO NOT WAIT UNTIL THE END OF THE TIMEFRAME TO FILE YOUR RESPONSE. 

Let’s be real – life can be unpredictable, and it’s all too easy for unforeseen circumstances to affect your ability to respond.

Add that to the frequency with which the USPTO’s Trademark Electronic Application System (TEAS) is down due to maintenance, and you want to leave yourself plenty of time.

If the unthinkable happens and the USPTO declares your application abandoned, you can file a Petition to Revive Abandoned Application, so long as:

– It’s filed no later than two months after the issue date of the Notice of Abandonment

– You submit the Response to Office Action

– You pay the fee for extension 

If you’re looking for a bottom line, this is it:

Working with an attorney for your trademark registration, including Office Action responses, can alleviate a lot of the stress and pressure that comes with taking on a project that has significant legal consequences for you and your business.

 

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

Can two businesses have the same trademark? (Understanding Likelihood of Confusion)

Can two businesses have the same trademark? (Understanding Likelihood of Confusion)

You found your trademark registered for another business, so all hope is lost, and you’re about to face a frustrating rebrand, right?

Not necessarily.

If the exact same trademark is registered for goods and services that are different from yours, you could actually still be in the clear.

How does that work?

It works because of 3 magic words in Trademark Law:

Likelihood of Confusion

**But before we dive in – this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

What is “Likelihood of Confusion?”

Your trademark is a unique identifier for goods or services that allows your customers to know at a glance that the deliverables they’re getting are coming from you.

A “Likelihood of Confusion” occurs if your trademark is confusingly similar to another trademark and the goods and services are related. 

In that case, consumers would likely mistakenly believe that the related goods and services are from the same source. 

And trademarks that exist in the same International Classes don’t even have to be identical to be considered confusingly similar.

How is a “Likelihood of Confusion” determined?

Technically, 13 factors, known as the DuPont Factors, can be used to determine whether a Likelihood of Confusion exists.

But there are 2 predominant factors an Examining Attorney (EA) will use:

DuPont Factor 1. Similarity or dissimilarity of the marks in their entireties for appearance, sound, connotation, and commercial impression.

This refers to the fact that the EA has to compare the marks in their entirety.

Meaning they cannot dissect the marks and compare only their parts.

For example

Let’s say your mark is WHITE FROST for lipstick and another mark exists for WHITE ICY, an eyeshadow.

The EA can’t just focus on WHITE in deciding if a likelihood of confusion exists. 

(But when the marks share the same first term, it’s more likely to make an impression on consumers, which the EA will consider in their analysis. )

Now, your mark for WHITE FROST also features an icicle design. 

That might not matter much because it’s important to note that word components of trademarks generally dominate over design elements. 

And to take it a step further, when one of the marks is a word mark, the registration covers all forms of the mark (in any font, color, size, etc.). 

So if the other mark being compared is a design mark that features the same words AND also features design elements, those design elements probably aren’t enough to distinguish the marks. 

Going back to our example – if your mark was WHITE ICY with an icicle design and there was another registration for the word mark WHITE ICY for the same or similar/related goods or services, the EA is probably going to find that a Likelihood of Confusion exists.

Irrespective of how cute your icicle design is.

DuPont Factor 2. Similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is used.

When the parties’ goods or services are closely related, a lesser degree of similarity of the marks may be enough for the EA to find a Likelihood of Confusion exists.

For example

Both marks are for makeup products in our WHITE FROST for lipstick and WHITE ICY for eyeshadow example.

Even though the second word in each mark is different, they both give the impression of winter. 

And if you were shopping in Ulta, you’d likely think that the same company sold these products. 

But if WHITE FROST were lipstick and WHITE ICY were teeth-whitening services, the distinction would be less clear-cut.

The EA would then have to consider whether the goods or services are sufficiently related in consumers’ minds to cause confusion concerning their source or origin. 

As you may have already guessed, a lot of this analysis centers on the International Classes (ICs) you choose in your trademark registration application.

The role International Classes play in determining Likelihood of Confusion

In the US, you can file a trademark registration application with the United States Patent and Trademark Office (USPTO) in 45 different classes.

Classes 1-34 are goods.

Classes 35-45 are services.

(You can search your goods or services to see what classes they fall into with suggested descriptions in the Trademark ID Manual.)

But here’s the thing:

When an EA reviews your trademark registration application to see if a likelihood of confusion exists with any registered marks or applications filed before yours, they look at not just the classes you selected when you filed your application.

They also look at coordinated classes.

For example

If you file for clothing such as T-shirts and hats in Class 25, the USPTO found that it’s likely you’ll also file for jewelry in Class 14. 

This is coordinated classes at work. 

Coordinated classes can give some guidance as to whether a similar trademark – but in a different class – might cause problems with your application reaching registration. 

It’s likely that if a similar trademark is in a coordinated class, the similarity of the trademarks will raise concerns with the EA.

You can avoid a lot of the headaches all of this will cause by doing a knockout search BEFORE you launch any product or service. 

But now you also know that just because you don’t find an exact match, it doesn’t mean it’s safe to proceed. 

It means it’s time to chat with an attorney about doing a comprehensive search. 

Because as the Dupont factors we covered above demonstrate – you also have to consider the legal analysis by an Examining Attorney. 

So it’s always better to look before you leap so you don’t waste time and money on filing feeds and you avoid being on the receiving end of a cease and desist letter.

Likelihood of Confusion in the wild

Here’s a great real-world example for you:

A company filed a trademark application for BLACK INK in class 30 in connection with “Coffee beans; Roasted coffee beans; Coffee-based beverages; Ground coffee beans; Green coffee; Unroasted coffee; coffee pods; coffee in pouches for brewing.”

When the EA reviewed their application, they cited a registration for BLACK INK in class 33 in connection with “Alcoholic beverages except beers; Wines.” 

That was the basis for finding a likelihood of confusion and refusing registration. 

The Examining Attorney provided 15 third-party registrations covering coffee beans and alcoholic beverages to support their position. 

Now, you might be wondering who in their right mind would confuse coffee beans with alcoholic beverages.

(Coffee-flavored Kaluha notwithstanding.)

But that’s just the DuPont Factors, Coordinated Classes, and Likelihood of Confusion in the wild.

Want to avoid the confusion, of well, Likelihood of confusion? Get in touch.

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Domain name and trademark availability aren’t interchangeable

Domain name and trademark availability aren’t interchangeable

In the quest for the perfect business name, you’ll likely find yourself doing a lot of online research and sleuthing around to make sure you don’t infringe on someone else’s trademark.

(At least, that’s what you should be doing.)

If you’re like most people, there’s a good chance that search leads you to a domain name availability checker.

But there’s a problem with that.

The problem is that your domain name and trademark are not the same.

And the availability of one doesn’t dictate the availability of the other.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Domain name ≠ Trademark

Trademarks are widely misunderstood.

But in a nutshell, a trademark is a unique identifier that allows your customers to know at a glance that the product/service they’re getting is coming from you.

Your trademark can take a lot of different forms, including words, logos, slogans, sounds, and colors.

Domain names are vastly different from trademarks.

A domain name is a unique name associated with an IP address. To be considered whole, a domain name has to be used with its suffix.

Those are the letters that follow the dot after the domain name, like “.com,” “.net,” “.org,” and so on.

In general, domain names are “first come, first serve.”

The first person to purchase a domain name retains the rights in the domain until they sell it or the registration expires. 

Even if the domain name is a trademark for someone else.

In which case, you can imagine there are instances of someone selecting a domain name in bad faith with the intention of luring potential customers to the website to purchase products they believe come from a competitor.

Or cybersquatting – when someone purchases a domain name for the sole purpose of prohibiting a trademark owner from gaining access to the name or to sell it for an exorbitant amount.

Not cool.

Infringing on another trademark

For our purposes, let’s assume the domain name owner had no ill intent when they purchased the name. 

They may not be acting in bad faith or cybersquatting, but they could still find themselves with legal issues.

How?

If the owner of the domain name starts to use it in a way that infringes on someone’s trademark rights, they could be facing a cease and desist letter, UDRP (Uniform Domain-Name Dispute-Resolution) complaint, or litigation.

Trademark infringement occurs when someone uses another company’s trademark on or in connection with goods and/or services.

And they do so in a manner that’s likely to cause confusion, deception, or mistake about the source of the goods and/or services.

In other words, you could potentially own a domain name that’s similar or even identical to someone else’s trademark without infringing on that mark…

As long as whatever you’re doing with that domain name is in no way connected to what the trademark owner does.

(And a lot of this will be determined by international classes.)

What business owners need to know

All of this is to say that you need to make sure that the domain name you plan to use isn’t at risk of infringing on someone else’s trademark rights.

And you do that by going back to the search we talked about in the beginning.

Once you’ve chosen a distinct name you feel good about for your business, you need to take it a lot further than a domain name availability checker.

You need to run a comprehensive trademark search and include as many different variations on the name as possible – to make sure there is no likelihood of confusion between your domain name and someone else’s trademark.

And once you’ve done that, you can look into registering your domain name as a trademark.

But that’s a discussion for another article.

Need help navigating it all? Apply to work with Nicole Cheri Oden Law.

 

Want to keep Uncomplicating Trademarks for yourself?

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Is a free trademark search good enough?

Is a free trademark search good enough?

There’s a new trademark search platform in town.

TESS (the Trademark Electronic Search System) retired after 23 years to make room for the United States Patent and Trademark Office’s (USPTO) new system:

Trademark Search.

The name may be simple, but the platform really isn’t.

As the USPTO works out the kinks with its new system, the results of your free trademark search can be a bit jumbled up.

The search engine isn’t very intuitive – you’ll probably need to set aside several hours for a basic search now.

And these new changes may leave you wondering if a free trademark search before you file is good enough.

Or if it’s time to work with an attorney.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Conducting a knockout search on the new platform

Conducting your own free trademark search, otherwise known as a knockout search, is always a good idea.

It can help you save time and money before you actually call up a Trademark Attorney.

But only if you know how to do it correctly.

With the new system, there are two different search types to choose from:

  1. Basic Mode
  2. Expert Mode

Conducting a free trademark search in Basic Mode

In basic mode, you can run simple searches for a few things:

  • the name of the trademark,
  • goods and services, 
  • an application’s serial number, 
  • a registration number, 
  • the owner or applicant, and 
  • a mark description (for logos, imagery, or words)

Just select what you’re searching for from the search dropdown menu.

Conducting a free trademark search in Expert Mode

To take it a bit further, expert mode allows you to select the Class Filter from the left-hand menu and search for specific classes.

You can even select coordinated classes (those the USPTO has grouped together for goods and services that are closely related).

And you can search by field tags – a “code” you can add to your search to find detailed information.

For example

The field tag [on] would search and return matching owner names.

A note of warning here:

The new system no longer provides one-click access to a summary of information about the specific registration or application.

You’ll need to know how to navigate the Trademark Status and Document Retrieval (TSDR) page to find relevant information.

Why you should do your own search

Before you even start your search on the Trademark Search platform, make sure you’ve done a little sleuthing first:

–Look for your trademark on social media sites

–Check out domain hosting sites

–Dig around on Google

If that quick check doesn’t return any conflicts, you’re probably ready to try running a search on “basic mode” to dive deeper.

Doing your own search means you can confidently move on to the next step of hiring an attorney for a comprehensive search.

The difference between a comprehensive search by an attorney and your free trademark search

So what will an attorney do differently than you can do with your own free trademark search?

To be honest, you can do a lot of the same things an attorney will do for you if you have the time and energy to dedicate to your search.

For example, these are things your attorney will do that you could do if you know how:

–Narrow down the search by class

–Sort through canceled and abandoned registrations

–Take coordinated classes into account and sift through all of those

In addition to exploring all the variations of a mark, including

-plurals or nonplurals

-each word by itself (if your trademark has more than one word)

-any acronyms and what they stand for

-phonetic equivalents

-all English equivalents if the mark is in another language 

And running all those variations through Trademark Search to check for other applications or existing registrations.

But your attorney will also expand the trademark search to include state and common law trademarks that could cause potential headaches down the road for you.

Not to mention that a proper comprehensive search can take hours and hours thanks to the immeasurable different variations of the trademark.

Because if there’s even one misspelling or incorrect search option, you may think you’re in the clear when you really aren’t.

And no one wants to find out they aren’t in the clear after they file their trademark application.

When your free trademark search goes wrong

Shortly after the launch of Trademark Search, a client came to me after filing her own trademark application. (She had used the new platform to run her own knockout search.) 

2 weeks after filing, she had an email in her inbox: “Cease and desist.” 

Turns out there actually was a business with an extremely similar mark for extremely similar services that held a trademark registration with the USPTO. 

And they were requesting that she expressly withdraw her trademark application. 

She didn’t know what she had done wrong and was ADAMANT that she hadn’t found an exact match for the same goods and services.

Upon reviewing her case, I found she’d filed her application in the wrong class with an inaccurate description of her services.

So not only was she out the filing fees she paid to the USPTO, but she also had to pay additional fees for me to clean up the mess. 

A huge part of what I do involves empowering online business owners to handle their own legal.

And you need to do some initial legwork – like running knockout searches – before you contact an attorney.

But that’s all those free trademark searches are really good for: 

A quick initial check.

Once that’s done, you definitely want to talk to an attorney to make sure you’re not gambling with your time, money, effort, or brand.

Apply to work with Nicole Cheri Oden Law when it’s time to secure your trademarks.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

 

Are trademark rights forever?

Are trademark rights forever?

The new PDF registration certificates from the United States Patent and Trademark Office (USPTO) aren’t as spiffy as the old paper certificates – but they’re just as valuable.

Because once you’ve received that email, you’re officially a registered trademark owner.

You deserve to celebrate!

But don’t get ready to wash your hands of the whole trademark registration biz and carry on as before.

In fact, if you want to keep your newfound trademark rights, you’ve just signed on for a whole list of trademark ownership obligations.

And if you don’t stay on top of them…

You could just as easily lose your trademark rights.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Maintenance and renewal filings

There are several actions you’ll need to take in the first 10 years of trademark ownership.

Between years 5-6

File a Declaration of Use under Section 8 to show you’re still using your registration. 

You’ll need to include specimens for each class of goods and services you originally listed in your application.

An optional step at this stage that I highly recommend is to:

File a Section 15 Declaration of Incontestability.

Once your trademark is incontestible, certain aspects of your registration can’t be challenged by third parties.

Aspects including:

  • The validity of the registered mark. 

The incontestable status of a trademark creates a legal presumption of its validity, making it easier for the trademark owner to defend against challenges to its registration.

  • The owner’s ownership of the mark.

In court proceedings, incontestable trademark registration is considered conclusive evidence of the trademark’s ownership.

  • The owner’s exclusive right to use the registered mark in commerce.

Incontestability provides a defense against certain grounds of cancellation, such as claims of descriptiveness or likelihood of confusion.

Between years 9-10

File a Section 8 Declaration of Use combined with a Section 9 application for renewal, including specimens for each class.

You’re once again declaring that your trademark is still in use for the goods and services listed in the registration.

Every 10 years after

You will need to continue filing a Section 8 Declaration of Use combined with a Section 9 application for renewal every 10 years. 

And, of course, there are filing fees that go along with each of the steps laid out here.

Policing your trademark 

A lot of business owners think they’re pretty much done worrying about trademark registration once they have that certificate.

But it’s not time to let your guard down yet.

Because for as long as you’re a trademark owner, you’re responsible for policing your mark and taking action if someone else tries to infringe on your trademark rights.

In fact, the USPTO literally states

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.

And if you don’t?

Your trademark registration could actually be canceled.

Here are a few ways you can police your mark:

–Set up a free Google alert to get notified whenever your trademark is mentioned online.

–Regularly run internet searches on your preferred search engine.

–Regularly search for your mark on social media.

–Check the USPTO database for new filings.

If you find an infringer, chat with an attorney for next steps – including a cease and desist letter – right away.

Proper trademark use

Once you own a registered trademark, you want to make sure you’re actually using it properly.

This is especially important on your website (aka your virtual storefront) so you don’t endanger your mark’s protection.

Here are 5 steps to take:

  1. Use the proper trademark symbol.

Should you use the ™ or ® symbol?

The ™ symbol is used for common law marks representing goods or services not federally registered with the USPTO, including marks whose registration is pending. 

In the case of unregistered marks, the ™ symbol always is correct.

The ® symbol is used for marks registered with the USPTO. 

This symbol can only be used once federal registration is granted (applying for a trademark isn’t enough) and only in connection with goods and services listed in the federal registration. 

  1. Check that the symbol is in the right place.

The ™ or ® symbol should be placed immediately following the mark.

It’s standard practice to place the symbol in superscript in the upper-right-hand corner.

  1. Check that you’re using the symbol frequently enough.

Use the symbol in the first instance the mark is used, in the most prominent use of the mark, or in the website footer.

It’s best practice to use the trademark symbol at least once per web page on which the mark is used. 

And placing the trademark symbol in any static representation that is repeated on every page is also a good idea (for example, trademark notice in the website footer).

  1. Use your trademark as an adjective only.

Your trademark should be used throughout your webpage as an adjective (aka a word that describes the traits, qualities, or number of a noun). 

Trademarks should never be used as nouns (a person, place, or thing), a verb (an action word), or as a possessive. 

  1. Update your trademark notice.

Include a trademark notice in either the website’s footer or on a standalone page that lists all trademarks (common law or registered) as trademarks of your company.

Protect your trademark rights forever

The cool thing about trademark registration is that so long as you:

–Stay on top of your renewal and maintenance filings 

–Police to protect your mark from infringement and genericide

–And use your mark properly

That registration could last forever. 

Listen to episode 30 of Uncomplicating Trademarks to learn how our Watch The Mark services do the heavy lifting for you.

Or apply to work with me if you already know you need a trademark attorney on your side.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

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