by | | Trademark Law
A client recently received an invoice from a company that requested $1,420 for trademark registration.
We’d just filed her trademark registration application with the United States Patent and Trademark Office (USPTO).
She felt like it looked official, but her intuition was screaming, “SCAM!” so she reached out to me and asked, “Should I pay it?”
I told her in no uncertain terms:
NO.
In this case, the invoice was from someone who offers a private “register” for trademarks.
It’s essentially a private database where you can claim ownership of a trademark for other people to see.
But you don’t actually have a legal claim over that mark with a private “service” like this.
Besides, this is literally what the USPTO does. (Plus, the USPTO grants you actual rights and protections for your trademark.)
And just in case you’re wondering whether there’s an advantage to being listed in one of these private databases?
There’s not.
The USPTO has the only official database of registered and applied-for trademarks in the United States, and you don’t need to pay any additional fees to be listed.
**Before we go any further: 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.**
How scammers create trademark scams
Unfortunately, there are a lot of successful scams out there. And it’s not because people are gullible or naive.
It’s because scammers have become very sophisticated.
When you file an application, your mailing and email addresses become public record.
So these private companies can easily get a hold of your personal information (like your mailing address) via your actual trademark registration applications…
Which means these scams often look – and feel – completely legit.
Another popular scam lately even involves spoofed “USPTO” phone calls.
A spoofed call will actually say it’s from the USPTO, and it can be very difficult to tell whether or not the call is “official.”
Spotting a trademark scam
If you’re the victim of a scam via correspondence (physical mail or email):
- You will likely see the words “US,” “Agency” or “Office” on the letterhead
- Your application serial number or registration number may be referenced accurately
- Your trademark name may be included
But something should feel “off.”
For instance, a name may be misspelled, or they may be asking you to pay a fee in a foreign currency, like Euros.
Official USPTO correspondence will:
- Say it’s from The United States Patent and Trademark Office
- Come from their Alexandria, Virginia office
- Or be a uspto.gov email address
If you’re the victim of a scam via phone call:
Beware that it’s likely a trademark scam if they’re asking you to verify personal information or pay a fee over the phone.
The USPTO will never ask for details like your social security number or credit card information over the phone.
If you spot a trademark scam
- Contact your attorney before you do anything else
- Visit the USPTO website to check for common scams
- Report it to the FTC
Most scams will ask you to pay a fee with the goal of tricking you into believing you somehow owe money to the USPTO.
There’s very little you can do about it once they actually have your money, so being proactive is key.
And just because your trademark is already registered doesn’t mean you’re safe from these scams.
Some private companies will attempt to submit filings or pay required maintenance fees for you – at an alarmingly inflated rate.
Be a savvy trademark owner.
Follow up with your attorney on any correspondence that doesn’t pass the gut check!
And reach out if you need a trademark law specialist.
Want to keep Uncomplicating Trademarks for yourself?
Get on the exclusive podcast list and start listening today.
by | | Trademark Law
If you’re like most small business owners, it’s likely you’ll spend countless hours painstakingly coming up with one thing:
Your business name.
You might poll your family (or random internet strangers).
You might end up with a list of 100s of options.
Or you might just have ONE option that ultimately feels like the only option.
When you’re busy establishing a unique and memorable brand identity, there’s a lot of (internal) pressure to make it perfect.
Which is why, once you finally nail it, you’ll be sure to register it with the state so it’s locked down.
Except, it probably won’t come as a shock to learn the legal aspects of actually protecting your brand assets – like your name – are complex.
And registering your business name with the state is not the same as registering your trademark.
**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.**
Understanding business name registration
A business name is exactly that.
It’s just a name (albeit one which will likely be an integral part of your brand).
A business name is also known as a trade name or fictitious business name (DBA “doing business as”).
It’s the name under which you’ll conduct your business – it belongs on your storefront, business cards, website, and whatever other promotional materials you use.
Basically, your business name is how customers identify you in an otherwise crowded marketplace.
And you register your business name with your state for a variety of reasons. Because:
- Many states consider business registration a legal requirement.
- Registering your business boosts the appearance of professionalism.
- It protects against others using the same name in your local jurisdiction
But, unless your business name is also the name you choose to register as a trademark, you’re limited in how protected you are:
Registering your business name only prevents other businesses from using that same name within your state. Nothing is stopping businesses in the other 49 states from using the same name. The Secretary of State Offices aren’t set up to communicate with each other.
So, to protect your name nationwide (and make it easier to apply for protection it in other countries), you’ll need to pursue trademark registration.
Understanding trademark registration
Your business name may be just a name.
But your trademark is property.
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:
- Word Marks (e.g., Apple)
- Logo Marks (e.g., The Golden Arches)
- Slogan Marks (e.g., “Just do it”)
- Sound Marks (e.g., The Intel Chime)
- Color Marks (e.g., Tiffany’s Robin Egg Blue)
And as the owner of a trademark, you have the right to prevent other businesses and individuals from infringing on your trademark rights.
Trademark registration gives you access to unmatched brand protection.
- You can enforce your exclusive rights to that registered mark across the US\
- You can use the powerful ® symbol to put potential infringers on notice of your registration
- You have the right to file a federal trademark infringement action
- You can obtain damages and attorney’s fees if your federal trademark infringement action is successful
- You will have an easier process registering your trademark internationally
- You’ve secured a valuable asset for your online business
What should you do if you want your business name and registered trademark to be the same?
First things first:
If you intend for your business name and trademark to be the same, it’s important to do a comprehensive search before you move forward with registering that name with the Secretary of State.
A comprehensive search looks beyond the USPTO’s Trademark Electronic Search System (TESS) and explores things like:
- Domain hosting sites
- Social media platforms
- Secretary of State filings
- Existing state trademark registrations
- And what’s beyond page one of Google search results
The goal is to examine the risks associated with the use and possible registration of your selected trademark.
You want to make sure no other business is using the exact same or similar mark in the exact same or similar way.
In other words, you’re checking for a likelihood of confusion between your mark and another mark that could leave a client/customer wondering if they’re dealing with your business or someone else’s.
But working with an attorney to run a comprehensive search means the attorney is also analyzing other relevant trademark issues, like:
-Is your proposed mark too descriptive?
-Is it geographically descriptive or misdescriptive?
-Does it fail to function as a trademark because it’s being used ornamentally?
(Plus all the other reasons an Examining Attorney could refuse registration of your mark.)
That’s why a comprehensive search is a gold-star business practice.
It not only increases the chance of your trademark reaching registration, but it also helps you to identify – and address – any other issues BEFORE you spend a pretty penny on filing fees.
Registering your business name is not the same as registering your trademark
Now you know:
Registering your business name with the state and registering it as a trademark are two totally different processes with very different outcomes.
- Business Name Registration: The main reason you register your business name is to comply with the legal requirements of your State.
It doesn’t grant exclusive rights to the name itself or prevent others from using a similar name for different goods or services or the exact same name in other states.
- Trademark Registration: Trademark registration ensures no one else can use a similar mark for related goods or services.
It offers national protection, encompassing your mark’s specific design, wording, etc.
If you own a small business, you will have to register your business name with your Secretary of State Office.
You can choose to apply for federal trademark registration and give your brand as much protection as possible.
Reach out if you’re ready to choose a business name only you have exclusive rights to.
Want to keep Uncomplicating Trademarks for yourself?
Get on the exclusive podcast list and start listening today.
by | | Trademark Law
Delta Faucets and Delta Airlines.
How is it possible for two IDENTICAL marks (Delta) to be successfully registered as trademarks in the United States?
It’s because of their classes.
In the US, you can file a trademark registration application with the USPTO in 45 different classes.
And your trademark will only be protected in the class or classes it’s registered in.
This means more than one brand can have the same mark as long as it’s for different goods or services.
Just like Delta Airlines and Delta Faucets.
That’s why international class selection is no small thing.
**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.**
45 International Classes
The 45 different international classes help distinguish types of trademark usage (and make it easier to identify potential infringement).
Classes 1-34 are goods.
Classes 35-45 are services.
CLASSES OF GOODS
- Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.
- Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.
- Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing and abrasive preparations.
- Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.
- Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
- Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.
- Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.
- Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.
- Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signaling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers’ masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus.
- Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.
- Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes.
- Vehicles; apparatus for locomotion by land, air or water.
- Firearms; ammunition and projectiles; explosives; fireworks.
- Precious metals and their alloys; jewelry, precious and semi-precious stones; horological and chronometric instruments.
- Musical instruments; music stands and stands for musical instruments; conductors’ batons.
- Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.
- Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.
- Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.
- Materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal.
- Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.
- Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.
- Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.
- Yarns and threads for textile use.
- Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
- Clothing, footwear, headwear.
- Lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.
- Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.
- Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.
- Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yogurt and other milk products; oils and fats for food.
- Coffee, tea, cocoa and substitutes therefor; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water).
- Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.
- Beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other preparations for making non-alcoholic beverages.
- Alcoholic beverages, except beers; alcoholic preparations for making beverages.
- Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers’ articles; matches.
CLASSES OF SERVICES
- Advertising; business management, organization and administration; office functions.
- Financial, monetary and banking services; insurance services; real estate services.
- Construction services; installation and repair services; mining extraction, oil and gas drilling.
- Telecommunications services.
- Transport; packaging and storage of goods; travel arrangement.
- Treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation.
- Education; providing of training; entertainment; sporting and cultural activities.
- Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software.
- Services for providing food and drink; temporary accommodation.
- Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services.
- Legal services; security services for the physical protection of tangible property and individuals; dating services, online social networking services; funerary services; babysitting.
Not sure where your mark fits?
You can search your goods or services to see what classes they fall into with suggested descriptions in the Trademark ID Manual.
Selecting your international class
Most brands will fall into multiple classes.
And you want to be careful which classes you choose.
Or you could find that your registered trademark actually isn’t as protected as you believed.
For example
An online coach might assume that Class 41 is the only class they need to register for their coaching and speaking services.
But if that coach also has an e-commerce store with merchandise and a downloadable podcast, they could be found to be infringing on someone else with their mark unless they also registered in the appropriate classes for all of their activities.
Cover yourself with the right international class(es)
There are many reasons your trademark application could be refused, and you can add misfiling to the list.
And if your application is refused because you misfiled, you don’t get your filing fees back.
Don’t waste your hard-earned money or your time.
Work with a trademark attorney who can ensure you select the proper classes and include an accurate description of the goods and services that will be covered.
Reach out if you’re ready to get started.
Want to keep Uncomplicating Trademarks for yourself?
Get on the exclusive podcast list and start listening today.
by | | Trademark Law
I wish I could tell you not to worry – that it will probably all work out.
But that wouldn’t be realistic (and lawyers are nothing but realists, you know).
The truth is nearly half (48.3%, to be precise) of all trademark applications filed with the USPTO will be rejected. That puts the U.S. at the lowest success rate for successful trademark registrations compared to any other country.
So your concern is justified, but it also doesn’t mean you should throw away any hope of having a successfully registered trademark.
You can arm yourself with the knowledge of why the USPTO might refuse your ™ registration.
And how to prevent that from happening.
**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.**
The #1 reason your trademark registration application may be refused
I have 3 words for you:
Likelihood of confusion.
That is the #1 reason your trademark registration application may be refused.
A likelihood of confusion means exactly what it sounds like…
It’s likely that consumers will confuse the mark with an existing registered trademark or a mark with a pending application that has an earlier filing date than yours.
How a “likelihood of confusion” is determined
An Examining Attorney at the USPTO’s office will determine if a likelihood of confusion exists using the DuPont Factors to guide them.
(The DuPont Factors originated after a landmark case in 1973, E.I. DuPont de Nemours & Co. v. Celanese Corp., and have since become the most important consideration when it comes to trademark application analysis.)
There are 13 DuPont Factors in total.
These 2 are given the most consideration:
- The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression.
- The relatedness of the goods or services as described in the application and registration(s). TMEP Section 1207.01.
In short, the more similar the two marks are, the less related the goods or services have to be to support a finding of likelihood of confusion [see TMEP Section 1207.01(a)].
And if two marks are identical – or nearly identical – the respective goods or services don’t need to be as close to find a likelihood of confusion.
Other DuPont Factors to consider
As I mentioned, there are 13 DuPont Factors in all.
I’d recommend you also consider the following if they’re applicable and relevant to your situation:
- The similarity of established, likely-to-continue trade channels
- The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing [see TMEP Section 1207.01(d)(vii)]
- The number and nature of similar marks in use on similar goods [see TMEP Section 1207.01(d)(iii)]
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark [see TMEP 1207.01(d)(viii)]
- Fame of the prior mark
- Nature and extent of any actual confusion
- Concurrent use without evidence of actual confusion: length of time and conditions
What likelihood of confusion looks like
Every (good) trademark attorney in the world will tell you to conduct a knockout search to look for any likelihood of confusion.
When you do that, you want to make sure you’re searching for variations of your mark.
You’re looking for anything that could be confused with your mark, such as:
-Spelling something slightly different and creating a phonetic equivalent (like E-Z versus easy)
-Separating the words (or putting them together)
-Adding a definitive article like “the” or “a”
-Making the word plural (or nonplural)
-Adding or subtracting a letter
Some examples of actual USPTO refusals include:
SPARK LIVING vs. SPARK
SPARK LIVING received a refusal to register their mark for “leasing of residential real estate; residential real estate listing; residential real estate service, namely, residential rental property management; specifically excludes commercial property and office space.”
The Board found a likelihood of confusion with the registered mark SPARK for brokerage, leasing, and management of commercial property, offices, and office space.
FREEDOM X vs. OXLIFE FREEDOM
The USPTO refused to register the mark FREEDOM X, in standard character and stylized forms, for “cannulas for oxygen concentrators for medical applications” because of a likelihood of confusion with the registered mark OXLIFE FREEDOM for “oxygen concentrators for medical applications.”
The Board found the goods to be related and complementary since “cannulas for oxygen concentrators for medical applications are necessarily used with oxygen concentrators for medical applications – at the same time, by the same consumers.”
BLACK ICE vs. BLACK ICE
BLACK ICE for coffee beans was refused on the grounds that it’s confusable with BLACK ICE for alcoholic beverages.
In case you’re getting discouraged, here’s a great example of when the likelihood of confusion doesn’t apply.
(Despite the fact that the marks are identical.)
DELTA (airline) vs. DELTA (faucets)
Same name. Yet both are protected under federally registered trademark laws.
How can that be?
Because a consumer is highly unlikely to confuse their bathroom sink with an airplane.
Other potential reasons your trademark registration could be refused
A likelihood of confusion may be the #1 reason, but it isn’t the only reason why your trademark registration could be refused.
Other reasons include:
- Descriptiveness: A mark that’s considered merely descriptive of the goods or services (these directly describe a characteristic, quality, function, or feature of the product or service).
- Geographical Descriptiveness: A mark that consists of only geographic names or terms that primarily indicate a geographic location.
- Failure to function: A mark that consists of common, everyday expressions, widely used terms, or generic phrases that consumers are unlikely to perceive as a brand identifier.
Note: This is by no means an exhaustive list.
Reduce the odds that your trademark registration will be refused
By knowing what to watch for, you’re a lot less likely to submit a trademark application that will be refused.
But your absolute best bet to get your application in the 51.7% of applications that are approved by the USPTO is to work with a trademark attorney.
Reach out if you’re ready to register yours.
Want to keep Uncomplicating Trademarks for yourself?
Get on the exclusive podcast list and start listening today.
by | | Trademark Law
You’re doing what you set out to do…
Successfully running your business.
And you’ve been using your mark continuously in commerce for the last 5 years. You’ve proven beyond a doubt this is your brand and your mark.
It makes sense that you would want to protect it as much as possible.
So maybe you’re thinking about filing a Section 15 Declaration of Incontestability so you can officially own an incontestable trademark.
But what does “incontestable” really mean?
And how can it benefit you when you already have a federally registered trademark?
**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.**
Section 15 Declaration of Incontestability
A Section 15 Declaration of Incontestability is a signed declaration that indicates you claim incontestable rights in a trademark and:
- have been – and are still – using the mark continuously in commerce for five years following the date of registration for ALL of the goods and/or services listed in the registration, AND
- there hasn’t been a final legal decision adverse to your claim of ownership of the mark or to your right to register the mark or to keep the registration, AND
- there isn’t any pending legal proceeding involving the mark in the USPTO or in a court of law.
The only “catch” to note:
If you’re going to file a Section 15 Declaration re Incontestability, you must do so within one year of the expiration of any period in which there were five consecutive years of continuous use.
You’ll notice I said, “If you’re going to.”
And that’s because you don’t have to file a Section 15 Declaration of Incontestability to keep your trademark rights – but because it expands the rights you’re entitled to, it may be worth your time to do so.
The benefits of incontestable status
Incontestability, in the context of trademark law, refers to a legal status granted to a registered trademark that provides extra advantages and protections to its owner.
Once your trademark is incontestable, certain aspects of the registration actually can’t be challenged by third parties.
Namely:
- 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.
And it can have a deterrent effect against potential infringers, as it signals the trademark owner’s enhanced legal protection.
Why incontestability matters
Obtaining incontestability status is a strategic decision for trademark owners.
If your mark is incontestable, and someone infringes your rights so that you have to sue – all you have to do is present your trademark registration to the court.
You can skip the part where you invest your time and money proving to the court that your trademark is valid, you are the owner of the trademark, or that you have the exclusive right to use that mark.
Your incontestability proves all of that in one fell swoop.
And the infringing party can’t claim otherwise.
But is incontestability a misnomer?
A federally registered trademark with incontestable status provides you with the broadest protection possible.
But “incontestable” might be more accurate (albeit more of a mouthful) if they called it what it really is – “more difficult to contest.”
Because even if your trademark is incontestable, it is not automatically immune to all challenges or invincible in some way.
In fact, incontestability won’t protect your mark from the following potential claims that ALL trademarks are susceptible to, such as:
- Genericness
- Abandonment
- Fraud on the Trademark Office
- Misrepresentation of the goods or services for which the mark was obtained
That said, the scope of challenges available to third parties is significantly narrower for an incontestable trademark compared to non-incontestable trademarks.
Obtaining your incontestable trademark status
Claiming incontestable status for your federally registered trademark offers you a lot of advantages, including:
–Stronger legal protection
–Enhanced brand reputation
–Streamlined licensing opportunities
–Better deterrence against infringement
–Efficient brand monitoring and enforcement
And these benefits can definitely help you maintain your competitive edge in a crowded online market
If incontestable trademark status is in your future, reach out.
We’ll make sure incontestability is the right move for your brand and get started with your application.
Want to keep Uncomplicating Trademarks for yourself?
Get on the exclusive podcast list and start listening today.
by | | Trademark Law
There are some wonderfully weird things out there that are successfully registered as trademarks.
Things like:
–The Aflac Duck quack
–The shape of a Coke bottle
–Tiffany’s robin-egg blue color
–Hasbro PlayDoh’s distinct smell
–Even the way Yamaha’s Waverunners vertically spray water
So if you can register sounds, shapes, colors, smells, and…water spray? (this is a “movement trademark, by the way) you must be able to register a domain name as a trademark.
Right?
Well, here it comes…
It depends.
Such a lawerly answer, I know, so let’s look at what it depends on…
**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.**
Defining a domain name
First, what is a domain name?
You likely already know that it’s a unique name associated with an IP address. In other words, it’s the big black X-that-marks-the-spot on the map of the internet where your business virtually exists.
To be considered whole, domain names have to be used with their suffix.
Those are the letters that follow the dot after the domain name.
.com
.net
.org
And so on.
These suffixes can also get really specific depending on geographical areas.
For example
You might own mydomainname.com, but someone else could own mydomainname.ca (Canada’s unique suffix) or any of the other suffix endings for the same root domain.
Pro Tip: if it’s economically feasible, consider snagging a domain name and all the available suffixes to prevent other third parties from using them.
Finding the right domain name to register as a trademark
Most online businesses find it useful to have a domain name that reflects the name of their business (or the products or services it provides) so potential customers and clients can easily remember the name.
Which means the domain name may be descriptive.
And if the domain name is too descriptive, it may not qualify for federal trademark registration.
A descriptive mark requires a secondary meaning that makes it distinctive to qualify for registration on the Principal Register.
And marks don’t acquire a secondary meaning unless they’re continuously used in commerce for a long period of time in a substantially exclusive manner.1
…What does this even mean?!
Let’s use DeGidio v West Group Corp2 as an example:
In that case, the Plaintiff owned the domain name “lawoffices.net,” which provided an attorney directory, legal information relating to cyberlaw issues, a vanity email service, listings of domain names for sale, and a hosting service for legal-related websites.
Defendants used the domain name “lawoffice.com” to market the West Legal Directory, an online resource providing legal information for businesses, professionals and general consumers.
The Plaintiff asserted trademark protection for LawOffices.net, but did not actually own either a federal or state trademark registration for the LawOffices.net designation.
The Court ultimately decided that “LawOffices” as used by the Plaintiff in its domain name, was too descriptive to be entitled to trademark protection.
Successful trademark registration of a domain name
The most well-known successful trademark registration of a domain?
Booking.com
After a lengthy court battle, the U.S. Supreme Court found that consumers perceived the term “BOOKING” as a brand name – as opposed to a generic online hotel reservation service – and granted trademark protection.
This paved the way for many domain name trademark registration filings to follow.
If you’re hoping to federally register a domain name as a trademark, here’s your best bet for success:
- Look for a distinctive domain name.
- Work with a trademark attorney for a thorough analysis.
- Purchase as many available suffixes as economically feasible.
You can apply for your consultation with Nicole Cheri Oden Law anytime for guidance that will help increase your odds of successfully registering your domain name as a trademark.
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1. 15 USC §1052(f)
2. (6th Cir 2004) 355 F3d 506, cert denied (2004) 542 US 904
