Trademarks, service marks, certification marks and collective marks
A trademark is any word, phrase, symbol or combination of words and symbols adopted and used by a business or individual to identify and distinguish the source of goods or services of one party from those of others. For example, NIKE®, DOVE® and STARBUCK® are all well-known trademarks that identify the source of the products.
A service mark identifies and distinguishes the source of a service. Usually, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the service. For example, STATE FARM®, WELLS FARGO® and UPS® are well known service marks.
A certification mark is used to certify commercial products have a certain quality or meet a set standard. The manufacturer claims that the product has been tested to verify compliance with a set standard. For example, “UL LISTED”, “Asthma & Allergy Friendly” , and “GOOD HOUSEKEEPING PROMISES”, are well known certification marks.
A collective mark is owned by an organization and used by its members to identify themselves with a level of quality or accuracy, geographical origin or other characteristics set by the organization. For example, “CPA” is used by the Society of Certified Public Accountants and “FTD” is used by a group that participates in a national flower delivery service.
Conducting a complete search of a trademark before it is used in commerce and/or an application is filed with the United States Patent and Trademark Office is extremely important. The results of the search may identify potential problems such as prior registered marks in the same class of goods or services and pending applications for similar marks that have priority in the marketplace. A trademark search may save you the expense of applying for a trademark registration in which you will likely not receive a registration because another trademark owner may have stronger rights to the mark. The search results may indicate when compared to other trademarks whether your mark appears as a generic or descriptive word in other registrations and thus is weak and difficult to protect.
A trademark attorney can conduct searches that include existing federal trademark registrations and pending applications, trademark registrations in all 50 states, and unregistered “common law” uses, such as domain names, websites, trade directories and business listings.
You should file a trademark application with the state in which you are selling your service or product. As soon as you have sold your product or advertised your service using your trademark you may apply for a state trademark registration. A state trademark registration may also help document the marks first date of use in commerce.
United States Patent and Trademark Office (USPTO) Registration
There are two types of applications, one for trademarks that are being used in commerce. The second type of application is for trademarks that have not been used in commerce but the owner has a bona fide “intention-to-use” the trademark in commerce within the next 36 months.
The application will be reviewed by a trademark examining attorney within three months of the filing date. The examining attorney checks to make sure there are no registrations or pending applications in the trademark database for similar trademarks and determines if the mark is eligible for registration.
The trademark examining attorney may refuse to register a trademark for the following reasons:
- merely descriptive or deceptively misdescriptive
- primarily geographically descriptive or primarily geographically misdescriptive
- likelihood of confusion in commerce with another registered trademark
- primarily use of a surname
- ornamentation or merely a decorative feature of the goods
When a trademark examining attorney refuses to register a trademark an Office Action is issued. The Office Action will list one of the reasons listed above or request additional information regarding the description of goods or the description of the trademark. The examining attorney may request better specimens of the mark in commerce or a disclaimer of a generic term. A Response to the Office Action needs to be filed with the USPTO within 6 months or the trademark application will be considered abandoned.
Trademark Trial and Appeal Board (TTAB)
The TTAB is an administrative board that hears and decides adversary proceedings between two parties, namely oppositions to the registration of a mark and cancellations of registered marks within the first five years. The TTAB also hears and decides appeals from owners of trademarks in response to a trademark examining attorney’s refusal to register a mark.
Trade dress is a product's physical appearance, including its size, shape, color, design, and texture. In addition to a product's physical appearance, trade dress may also refer to the manner in which a product is packaged, wrapped, labeled, presented, promoted, or advertised, including the use of distinctive graphics, configurations, and marketing strategies. The packaging of a Klondike® Bar is an example of trade dress. The overall appearance of a store like Target® with the use of red and white at the entrance and throughout the store is an example of trade dress.
International Trademark Protection
If you are using a trademark in foreign countries you should file for trademark registrations in each country you are selling products or services under the mark. Many countries require that trademark applications be filed and registrations be obtained before the mark is protected in that country. Mere use of an unregistered mark will not generally afford protection in most foreign countries.
The U.S. has entered into several international treaties that allow U.S. registrants to obtain trademark protection in certain foreign countries based on a single international filing. For example, U.S. applicants with a pending U.S. application or a registration may file a single International application for over 95 countries under the “Madrid Protocol.” The single application is filed electronically through the USPTO. Filing fees for each country still must be paid and separate examinations take place in each country, just as if separate applications had been filed in each country. This centralized filing process saves time and money and can expedite the filing and registration process for U.S. applicants seeking foreign protection.
A copyright protects original works of authorship fixed in a tangible medium of expression. Works of authorship include: literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound recordings and architectural works. Copyright protection is available for published and unpublished works.
A copyright gives the author “exclusive” rights to the work. Only the author may reproduce the work, prepare derivative works, distribute copies of the copyrighted work by sale or other transfer of ownership, perform the copyrighted work publicly or display the copyrighted work publicly.
Ownership of a copyright is vested in the author or authors of the work. The authors of a “joint work” are co-owners of the copyright in the work. The author of a “work made for hire” is the employer or other person for whom the work was prepared.
A copyright registration may be obtained by filing an application with the U.S. Copyright Office. Prompt filing of a copyright applicant in the Copyright Office establishes a public record of the copyright owner’s claim, creates a presumption that the copyright is valid and enables the owner to claim certain “statutory” damages and even to recover the attorneys’ fees expended in asserting the copyright against an infringer. Registration is generally required as a condition for filing any copyright infringement suit in a federal court.
A copyright registration lasts for the life of the author plus 70 years. If a work is created by an employee and is owned by the employer, the copyright term last for 95 years from the date of first publication or 120 years from the year of creation, whichever expires first.
The Federal Defend Trade Secrets Act defines a trade secret as:
all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—
(A) the owner thereof has taken reasonable measures to keep such information secret; and
(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by another person who can obtain economic value from the disclosure or use of the information;
18 U.S.C. § 1839(3)
Trade secrets can be recipes, client lists, software code, a prototype for a new invention, investment strategies, pricing information and drawings or architectural plans. The best way to protect trade secrets is to make sure you have employee agreements that include non-disclosure and non-compete clauses; include language in your business policies as to the protection of all trade secrets; use passwords to protect trade secrets that are in an electronic format and lock up recipes, formulas and prototypes. Before you meet with potential investors make sure the investors sign non-disclosure agreements and non-compete agreements.
Trade secrets give a business a competitive edge. The greatest threat to company trade secrets is internal employee theft. Business owners need to make sure they have proper procedures in place to protect company secrets and protect their competitive edge in the marketplace.
Cybersquatting and Domain Name Disputes
According to the Anticybersquatting Consumer Protection Act, Cybersquatting is registering, trafficking in, or using an Internet domain name with the bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter offers to sell the domain to the person or entity who owns the trademark contained within the name at an inflated price.
In the United States, the owner of a trademark may file a civil complaint under the Anticybersquatting Consumer Protection Act in federal court in an effort to obtain control of the domain name. Another alternative is to file a Complaint through the Uniform Domain Name Dispute Resolution Policy that is provided through the World Intellectual Property Organization (WIPO) or the National Arbitration Forum (NAF). WIPO and NAF provide expedited administrative proceedings in the form of arbitration for the resolution of cybersquatting issues. A trademark owner may be able to obtain a ruling from an arbitrator ordering the registrar to turn the domain name over to the trademark owner.
Due Diligence Regarding IP Assets
We assist business owners with identifying all intellectual property assets prior to the sale or purchase of a business. We help the business owner develop an inventory of all trademarks, patents, copyrights, domain names and trade secrets. We make sure the proper registrations and assignments are in place and all maintenance fees are updated. A business owner’s intellectual property assets may be the most valuable aspect of the business. So all intellectual property assets need to have clear ownership, updated registrations, and releases of all liens placed on the assets.
Intellectual Property Litigation
Marks Gray attorneys provide litigation services for a wide variety of intellectual property disputes. We assist clients involved in the following litigation:
- Trademark infringement
- Trade Dress infringement
- Copyright infringement
- Patent infringement
- Unfair competition and deceptive trade practices
- Theft of trade secrets
- Cybersquatting and domain name disputes
- Breach of licensing agreements, non-compete agreements, non-disclosure agreements
We also represent clients in Petitions for Cancellation of Trademarks and Notices of Opposition of Trademarks before the Trademark Trial and Appeal Board. We work closely with the client to develop a litigation strategy that meets the client’s goals and expectations. We represent individuals, small businesses and large corporations in state and federal courts using the most efficient and ethical methods of resolution.