Trademark Oppositions–Worth Fighting?

7 01 2012

Many people file trademarks without the assistance of an attorney, either through the USPTO website, which is quite user friendly, or through an online service. Once you file your trademark, however, the process isn’t over. You may receive an office action, which asks you to submit additional information or explanation with regard to your mark. You will also have to file an additional form if you did not submit a specimen when you filed the mark.

Another issue that may arise after you file your trademark application is a trademark Opposition. An Opposition may be filed against you by another party who believes it may be damaged by your registration of the mark. This often occurs if your mark is similar to another mark, but the similarity was not picked up by your examining attorney.

The first rule of trademark Opposition is: Don’t Panic! Just because someone says your mark is confusingly similar to theirs, doesn’t mean it is. Many trademark owners hire aggressive law firms to protect their rights, and these firms oppose any mark that is even slightly related to their client’s mark, even if they are unlikely to win on the merits. Because so many trademark applicants default on Oppositions, these firms succeed in spite of the fact that they often have no case.

Your best option is to hire an attorney who regularly fights trademark Oppositions. That attorney will be able to analyze your case and determine the most cost effective way to proceed. You may, after consultation with an attorney, decide to abandon your mark. You also may decide to fight the Opposition.

Opposition Procedure:

  • If you choose to fight the Opposition, either on your own or with the assistance of an attorney, the first step is for you to file an answer. The answer looks a lot like the answer you would file in a lawsuit. It tells your side of the story and includes any affirmative defenses you may have.
  • Thirty days after the answer is due, the parties must participate in a pre-discovery conference, where they discuss the case. Subjects covered in the pre-discovery conference include the possibility of settlement and the issues surrounding discovery. You may conduct this conference on your own with the opposing party, or you may have a Trademark Trial and Appeal Board representative participate in the conference with you.
  • The next step is for each party to exchange initial disclosures, which disclose the identities of individuals with discoverable information that you may use to support a claim or defense, and copies or descriptions of documents and tangible things that you may use to support a claim or defense. You can’t seek discovery or move for summary judgment until after you make your initial disclosures.
  • Discovery begins after the initial disclosures, and it is very similar to the discovery conducted in a regular lawsuit. The discovery devices available in a civil action are all available in an opposition, and the motions available in a civil action are generally available.
  • Thirty days before the close of discovery, the parties must make expert disclosures, and fifteen days before your testimony period, you must make additional, pre-trial disclosures.
  • There is no live trial in a trademark Opposition. Each party has a period in which they are permitted to submit trial evidence, and the opposer has an opportunity to submit rebuttal evidence. Briefs are filed after the evidence is submitted, and a written decision is provided within three to six months.
  • The loser can file a request for reconsideration, or an appeal in a U.S. District Court.
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Work For Hire: Good or Evil?

20 09 2011

When negotiating an entertainment related contract, anything can happen (I’d love to spend this blog post telling you all the crazy stories that came to mind when I wrote that line, but that wouldn’t be very informative and might get me sued for defamation).  One thing that almost always happens, however, is an argument regarding copyright ownership, and that argument usually centers around the inclusion of a Work for Hire clause.

The words Work for Hire seem to be almost universally hated. Artists see it as a disadvantage no matter what the situation, and they can hardly be blamed. A Work for Hire clause or agreement requires one party to give up rights to intellectual property, and no one likes to give things up. And the numerous articles and blog posts imploring artists not the sign Work for Hire agreements would give anyone the impression that there is never a good reason to do so. Clients on the business end of the entertainment industry also express discomfort with the Work for Hire. Knowing it is likely to cause a problem, they often ask me to “say it some other way” or “make it friendlier.”

Unfortunately, a Work for Hire clause can’t be stated another way, or made much friendlier, because it only works if it jumps off the page, yelling “I’m a Work for Hire and you’re giving up your rights.” That’s a good thing, because it prevents people from being tricked into signing away their rights. The main problem with the Work for Hire clause, in my opinion, is misunderstanding.

The reason the Work for Hire clause is often necessary is that, without a Work for Hire clause, collaborators on a project become equal owners, with equal rights to sell and otherwise encumber the whole project, and equal rights to collect money from the project. This happens whenever two or more authors prepare something with the intention that their contributions be merged into inseparable or interdependent parts of a whole.

This arrangement is fine if you are truly collaborating with a partner or several partners, and you intend to share equally in the final project. Many collaborations, however, are not set up that way. Often, one or more parties gets paid up front for their work on a project, while the person or entity that hired them takes a risk on its eventual success. An unequal division of rights, in that situation, may be more fair than a 50/50 split. The same goes for situations where one party will be solely responsible for selling a project. Without the Work for Hire, there is no guarantee of exclusivity.

The lesson to take away from this (very abbreviated) explanation of the Work for Hire clause, is that whether to include it (or whether to sign it) turns on your intentions with regard to the final product. If you intend to be an equal owner, no Work for Hire is necessary. But, if you intend to have anything other than a 50/50 division of rights, the Work for Hire is the only way to make your arrangement enforceable. That can be to the benefit of both parties. The point, as in all contract negotiations, is to understand and accept the contract terms before you sign the contract.





How to Choose a Strong Trademark, Part II

27 07 2011

If you choose a weak trademark, or one that is ineligible for trademark protection, your competitors may be able to use similar marks, making it more difficult for your customers to identify your business, product, or service. Having a strong trademark makes it less likely that you will be forced into costly litigation over trademark rights later on, and more likely that any dispute that arises will be resolved in your favor. In my last post I explained that, in order to achieve maximum trademark protection, your trademark should a highly distinctive, strong trademark without any descriptive, surname or geographic connotations. The following types of trademarks are eligible for protection:

1.) The Suggestive Mark: A suggestive mark suggests, but does not describe the product or service. The customer must go through a mental process in order to associate the mark with the type of product or service it represents. An example of a suggestive mark would be “Greyhound” for fast busses, “Razr” for a thin cell phone, or Frootloops for fruit flavored cereal.

2.) The Arbitrary Mark: An arbitrary mark is one that has an ordinary meaning that is unrelated to your goods or service. This type of mark is protected even more broadly than the suggestive mark. Some examples of arbitrary trademarks are “Apple” for computers and “Amazon” for an online store.

3.) The Fanciful Mark: Fanciful marks, like arbitrary marks, enjoy the broadest protection under trademark law. This type of mark isn’t a dictionary word. Instead, a fanciful mark is a letter or number combination that has no function other than its use as your mark. Some examples of fanciful marks include KODAK, EXXON, and GOOGLE.

Attempting to register your trademark is a good idea. If your trademark is denied registration, you will have the opportunity to choose a stronger trademark before investing time and money in the development of the weaker one. Whether or not you choose to register your trademark right away, it is important to make sure that your mark is not confusingly similar to someone else’s registered mark, as the use of such a mark could subject you to liability. To do a free trademark search on your own, go to www.USPTO.gov.





How To Choose A Strong Trademark, Part I

26 07 2011

If you choose a weak trademark, or one that is ineligible for trademark protection, your competitors may be able to use similar marks, making it more difficult for your customers to identify your business, product, or service. Having a strong trademark makes it less likely that you will be forced into costly litigation over trademark rights later on, and more likely that any dispute that arises will be resolved in your favor. Therefore, it is important for you to understand a few very basic things about trademark law.

Maximum protection for your trademark will be achieved if you select a highly distinctive, strong trademark without any descriptive, surname or geographic connotations. Such a trademark will be registered in the Patent and Trademark Office and in foreign countries with little difficulty, and will have maximum protection under trademark law.

Some words cannot be protected by trademark law because they are not distinctive: Some types of words are excluded from trademark protection because they are not distinctive. Some examples include generic names. A generic name may be a common dictionary term (if you make computers and you plan to call your product “Computer,” you would be using a generic name to describe your product), or it may be a former trademark that has become a common name for a product. These terms are viewed by the public as descriptors of the product itself, not of the source of the product, so you cannot reserve exclusive use of these words.

Sometimes, a non-distinctive mark may acquire distinctiveness through secondary meaning: Sometimes, a nondistinctive word such as a descriptive term, a geographic term, or a name may become eligible for protection where it becomes distinctive through long time use. This type of distinctiveness arises where your use of the mark creates a secondary meaning in the minds of consumers, who associate the mark with your product or service despite its basic weakness as a mark. Secondary meaning may take substantial time and money to develop, and may be difficult and expensive to prove in court. Therefore, you should choose a mark that is distinctive on its own, not one that requires secondary meaning.

The strongest marks are those that are inherently distinctive. Some marks are inherently distinctive, so that you don’t have to prove secondary meaning in order to achieve protection. These marks are the strongest, and they fall into three categories: Suggestive terms, Arbitrary terms, and Fanciful terms. To achieve maximum trademark protection, your mark should be suggestive, arbitrary, or fanciful. In my next post, we will look at these three types of trademarks in more detail.





The Importance of having a FANTASTIC Logo

16 07 2011

Recently I was speaking with an entrepreneur who was bragging about hiring a very expensive graphic designer to design a logo.  The entrepreneur was spending a huge portion of his startup budget on just the logo.  This is a very common and costly mistake!

A logo is your trademark.  As a general guideline, it should be recognizable and unique.  Anything else depends on your industry and target demographic.  For instance, sometimes you will want your logo to obviously indicate the product or service you offer.  Other times, you want it to be more subtle or just be something memorable.  But your logo will never be the key driver of your business.  Having a great logo or a catchy slogan will mean nothing if you provide a bad product or service.  Similarly, having a decent logo will be good enough if you provide a great product or service.

In the case of a startup with very little seed capital, wasting money on an expensive logo is a bad investment.  If you have a large amount of seed capital, then it does not affect you as much.





Patents, Trademarks, & Copyrights–a Primer

21 06 2011

What Is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

What Is a Trademark or Servicemark?

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled “Basic Facts about Trademarks”.

What Is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.