September 28, 2009

Sounds Have Rights Too: Quacking and Other Alternative Trademarks Can Be Registered

mallard_duck.jpg An upcoming case, Ride the Ducks v. Bay Quackers, is set to highlight the importance of sound marks, an often overlooked, but key concept of trademark law. A Georgia tour company called Ride the Ducks is suing Bay Quackers, a San Francisco tour company, claiming that the latter distributes kazoos that produce a quacking sound that is identical to the one made by Ride the Ducks’ Wacky Quacker noisemaker.

While this may seem somewhat ridiculous, a sound can establish a link in a listener’s mind, creating a mental association with a particular business. To qualify for registration, a sound mark must be source identifying and must either be inherently distinctive or have acquired distinctiveness. Famous sound marks include NBC's chimes, the Pillsbury Doughboy’s giggle, AOL’s “You’ve got mail” alert, and MGM’s lion's roar.

In addition, colors, 3D marks, graphics, scents, and other non-drawing formats also may be eligible for trademark registration. You work tirelessly to carefully sculpt your brand image and amass goodwill. It’s critical to employ both common and unorthodox IP protection to uphold your company’s reputation!

A trademark attorney can help you craft a personal IP game plan!

May 13, 2009

Branding With Promotional Merchandise

your%20logo%20hat.jpgIf you have registered a trademark for your business, you may have also thought about using your logo with promotional merchandise. Many trademark holders increase brand awareness by affixing their mark to hats, t-shirts, or mugs. There are different methods of ensuring that the logo retains its protected status while you use it in this manner.

The best way to protect the mark is through registering multiple classes on the trademark application. For example, in addition to stating the mark will be used in connection with your particular goods or services, also indicate the mark will be used with classes that include promotional items such as t-Shirts, Class 25, and coffee mugs, Class 21.

In the alternative, if money is a concern, you may enforce your mark without registering for additional classes. Common law trademark rights can prevent others from using your mark in a particular region, with specified goods or services, if you are already using the mark. Because federal registration can cost anywhere from $275 to $ 325 per class, common law enforcement may be a more economical choice for business promoters with limited start-up capital. However, while common law rights protects the mark, they do not provide the same presumption of validity and ownership as federal protection.

If you have any questions about obtaining a trademark, or about common law trademark rights, contact an experienced trademark attorney.

February 18, 2009

What are Pseudo Marks?

"Pseudo mark" is a designation the U.S. Patent & Trademark Office assigns to marks that has an alternative meaning or spelling. For example, if the mark was comprised of H2O arranged in a cascading manner, the pseudo mark field in the USPTO database might display the mark as "water fall."

The USPTO assigns pseudo marks in their database to assist in the trademark search process.

The pseudo mark label does not show up on the registration certificate, and this categorization has no legal significance.

February 13, 2009

The Business or Its President: Who Is the Trademark Owner

The trademark application can only be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. The applicant may be any person or entity capable of suing and being sued in a court of law. "Entities" includes corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law.

If the president of a corporation is identified on a trademark application as the owner of the mark, when in fact the corporation is the owner, the application is void, because only an owner can file an application. However, if the president and a related company both use the mark, the president will be permitted to be named the owner, if in fact he or she really is using the mark.

If the applicant owns all (or substantially all) of the related company in such a way that he or she controlled that company's activities, there is unity of control, meaning that the the applicant and the company are considered to be a single source, and either could be named as the trademark owner for purposes of trademark application.

For more detailed rules on the trademark process, refer to the TMEP (Trademark Manual of Examining Procedures).

Trademark registration is a complex task, with legal implications lurking in every field on the application. Seek the assistance of a trademark attorney to guide you through this process.

January 16, 2009

Client Spotlight: Metro Diner

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Congratulations to Metro Diner, a local restaurant in the historic San Marco neighborhood in Jacksonville, Florida! They have registered three trademarks with the State of Florida: their name, their logo, and their slogan, "Where The Locals Eat."

The logo, as you can see, is in the signature dark and light green colors. Their slogan is very a propos to their typical customers who crowd the diner for breakfast and lunch.

Protect your business identity--register your trademarks today. Contact a trademark and business attorney to help you through the process.

December 10, 2008

Tips for Renewing Your Florida Trademark Registration

So you're in business. You've registered your trademark, identifying the goods or services you're offering. Your business may be restricted to your city, or you may have customers/clients in big cities like Jacksonville or a small town like Palatka. In any event, one of the biggest mistakes my clients make is to file away their trademark's Certificate of Registration, and not give their trademark a second thought.

Florida Statute 495.071 prescribes the duration and renewal procedures for Florida trademarks. Here are some tips:
1. Registration expires 5 years from the date of registration.
2. Renewal can be filed as early as 6 months before the date of registration expiration.
3. Prepare a statement that your trademark is still in use in Florida, for the same class of goods or services as when you filed your registration.
4. Prepare to provide a specimen showing use of your mark in connection with those goods or services.
5. Set aside $87.50 (per class of goods & services) for the filing fee.

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November 19, 2008

Use of Another's Trademark

Just because another party has registered a trademark does not necessarily exclude you from using and registering that trademark as well. Trademark protection depends on the scope of use, extent of use, use of the trademark in a geographic location, and association with a particular set of goods or services, among other factors.

Furthermore, a registered owner may agree to allow another to use the registered trademark, or grant a license to another to use that trademark. Permissive use or licensing involves negotiation of fees, costs, use, and royalties.

On the other hand, registration does not guarantee exclusive ownership. Rights associated with registration may cease if the owner stops using the trademark (either entirely or for the purposes stated in the application for registration), if the owner fails to pay maintenance fees, or if another party can prove that the registered owner was not, in fact, the first to continuously use the trademark to identify goods or services.

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September 26, 2008

Do I Have to Register my Trademark?

If a distinct logo, name, or slogan is used to identify goods or services, the first one to use that trademark is entitled to ownership of that trademark. However, the rights associated with ownership of that mark are limited.

It is thus highly recommended to register the trademark. For a reasonable filing fee, registration offers many other benefits to the owner. Examples include the right to sue for infringement, and getting the clock ticking on the five-year wait before the trademark achieves an "incontestable" status.

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September 24, 2008

Registering a Trademark at the State, Federal, and International Levels

Whether offering goods or services at a local or world-wide level, registering a trademark is always recommended. So where should a business begin this process?

If doing business in only one state, then trademark registration should be done with the Department of State. This is true for small businesses and growing chains alike.

Once a business markets and promotes to consumers across state lines, it becomes eligible for federal trademark registration at the U.S. Patent & Trademark Office. This has been an integral step in business growth and franchising. However, it is recommended that the trademarks are also registered at the state level where the business is conducted. In the event that a competitor infringes upon that trademark, then remedies at both the state and federal level may be available.

Despite the fact that there is no such thing as an "international trademark," filing an application for a U.S. trademark can lay the foundation for applying for trademark registration in other countries. There are procedural requirments involved, so consultation with a trademark attorney is advised.

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September 10, 2008

Citizenship and Trademark Registration at Home and Internationally

American citizenship is not required to file for trademark registration in the U.S. The basic requirements are that the applicant is using the mark in association with goods and services across state lines, and that the mark is not infringing on the mark of another.

There is technically no such thing as an "international trademark." To secure trademark protection in other countries, an application must be filed in those countries. That process can begin with filing a U.S. trademark application.

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