Abandonment

When a trademark no longer identifies the origin and quality of goods or services then it is abandoned. This means that the owner’s rights regarding the trademark are forfeited and someone else may now use the trademark. This does not mean that you should start using a trademark that you think will be abandoned. Good-faith pre-abandonment use is only permissible to establish priority if there was no knowledge. Abandonment occurs either when a trademark is not being used and there is no intent to use or when the trademark becomes a generic term for the goods or services it is used for. In either case this now means it is not acting as an identifier of origin or quality. If a trademark has not been used for three consecutive years, then the owner must demonstrate their intent to resume commercial use or else the mark will be abandoned. Evidence that can be used to demonstrate intent to resume commercial use includes marketing proposals or targeted use only to specific customers. It is important remember the mantra use it or lose. Your rights hinge on your use.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Estoppel and Trademarks

In trademark law estoppel is applicable as always. Estoppel prevents a party from changing their position to one that is not consistent with their prior position. The goal is to stop a party from reversing positions because things changed and they now want to provide benefit to themselves. Equitable estoppel can be applied to announcements and statements if it would harm or detriment another party through their lack of knowledge or reliance on. Judicial estoppel applies to positions taken during the legal process. This is generally at the discretion of the courts and can vary depending on the court. It is important to remember that statements made in briefs may the trademark owner or a retained attorney can be considered binding judicial admissions. Collateral estoppel is when an issue has been litigated previously by the parties and future claims are precluded. It is always important to be mindful of what you say and how you say it as it may impact you, your trademark, or the application process down the road.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Laches and acquiescence

Laches is when the owner of a register trademark exhibits an unreasonable delay in asserting their rights regarding their trademark and in doing so gave passive acquiescence (or consent) to another trademark that may been infringement. Acquiescence is when consent is actively granted by the owner of a trademark to another trademark owner or part that may have otherwise constituted infringement. The theory behind laches is that the vigilant and not those that delay exercising their rights should benefit as this aid several things such a dispute resolution, litigation when the information is fresh, and to provide certainty for parties attempting to make investments. In order to prove laches as a defense it must be shown that the trademark owner had knowledge of use and did not take action in an excusable amount of time. It must also be shown that the defendant relied on the trademark owner’s inaction and asserting these rights now would result in prejudice. It is very important for you as a trademark owner to be vigilant and quick when asserting your rights in order to protect against potential infringement.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a parody?

A parody is when a registered trademark is imitated by another party on the grounds of humor. Even on this ground, if the mark is too similar and may cause likely of confusion then it could still be infringement. Parody is not the same as fair use as a parody defense is an argument against likelihood of confusion unlike fair use. Parody is balance between the public interest of allowing jokes and the rights of a rights of the owner of a registered trademark. The owner’s goodwill and investment must still be protected. It will be more difficult to defend a parody trademark that is used to competitively sell a product. A parody trademark used only for humor, entertainment, or criticism is more likely to be permissible. It is also important for a parody trademark to not cause dilution. If it tarnishes the reputation of the registered trademark, then dilution may be argued. Goodwill will also be looked at to see if the intent was to amuse the public or confuse potential customers.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Disputing Likelihood of Confusion

Showing that there is no likelihood of confusion for a trademark application cited with this issues is not easy, but not impossible. This is generally the first way to dispute likelihood of confusion, but there are other affirmative defenses which can be used. To show there is no confusion it is important to emphasize all the differences in the trademarks, goods, potential customers, and where the goods or services will be sold. Even minor differences should be used as many little differences can add up to a strong argument. This can mean things like color, text, packaging, nature of goods, advertising, quality, price, etc. Another thing that can be looked at is whether there are third parties using trademarks that may also be considered similar. If this is the case, then it may be possible to argue the public is aware of such similar marks and has the ability to distinguish between them. Based on this it may also be possible to show that the registered trademark is weak or has a significant meaning in the industry. It is of course best to avoid likelihood of confusion altogether by carefully searching and crafting your application prior to filing, but it is possible to obtain registration by showing there is no likelihood of confusion.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Fighting Internet Infringement

The vast scope of the internet can have major implication when addressing trademark infringement. If you find yourself on the wrong side of an internet infringement case, there may be several avenues available to overcome a detrimental outcome. One of the most common defenses is using the descriptive fair use doctrine. This doctrine allows for a defense when a registered trademark is used with good faith only to describe your goods or services. Use may also be allowed if it is nominative fair use, which means it was only used to refer to the registered trademark. In addition, commentary, parody, noncommercial use, and criticism are allowed as they are protected by the right to free speech. It is imperative to ensure that you are not using a registered trademark to attract customers. Many times this can boil down to whether the use was in bad or good faith. Always be sure you know not only your rights, but those of another trademark owner if their mark appears on your website in any capacity.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Can I trademark a domain name?

Yes, it is possible to trademark a domain name so long as it is used in the same way all trademarks must be used, as an indicator of source and to distinguish your goods or services from your competitors. This means that it cannot be used solely as a domain name to access a website. It is important to note that just because you have a trademark it does not mean you are entitled to use that domain name. Someone may already own it and if that is the case then the only way to obtain it is to purchase it from the owner. The similarity of domain names can be taken into account when determining whether there is a likelihood of confusion with another trademark. In addition, using a registered trademark in a domain name be considered dilution. Such cases are generally resolved through the Anticybersquating Consumer Protection Act or the Uniform Domain Name Dispute Resolution Policy (UDRP). It is important to know your rights both as an owner of a trademark and owner of a domain name.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

The Internet and your Trademark

There are many important aspects of trademark law that can be applied in cyberspace. False advertising claims can be brought online so remember to be just as careful about what you say regarding your products and those of your competitors as you would normally. Using your trademark on the internet could constitute as use in commerce depending on how exactly it is used. It must still be used as indicator of source on your goods or services. Using your trademark in an internal fashion such as a keyword purchase or sponsored content may not be enough to show use in commerce. Likelihood of confusion and dilution can be found for marks used on the internet with the same standards as normal being weighed. However, the internet as a marketing channel must be taken into account and can add factors like initial interest confusion. Initial interest confusion occurs when consumers are attracted to a website that is using a registered trademark. This diverting of traffic can infringe on the rights of the trademark owner. The use of the internet is essential to success in this day and age and knowing your rights and responsibilities as a trademark owner in the digital age is imperative.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is false advertising?

Advertising is considered false when the things such as origin or description or representation of a fact are false or misleading during promotion or advertisement. False or misleading means that it is likely to cause confusion or deceive. False advertising can apply to a claims about a person’s own goods or services or to a claims about a competitor. For a false advertising claim it must be shown that a false or misleading statement was made in regards to advertising or promoting goods and there was deception that would likely influence a consumer’s purchase and cause injury. If both parties are competitors then there should not be easy to demonstrate that injury is possible, however if they are noncompetitors then probable injury may be tougher to prove. A possible defense to a false advertising claim is “puffing.” This is the idea that advertising usually involves exaggeration and that is acceptable to a certain extent and does not necessarily make the claim false. Before making claims make sure they are properly vetted and cannot be misconstrued.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Dilution Law

Dilution is when another trademark would infringe on your trademark’s reputation or identity. This can occur even without a finding of likelihood of confusion. The goal of dilution law is to prevent damage to a trademark owner based on the name. The two main forms of dilution are blurring and tarnishment. Blurring occurs when a trademark would weaken the standing of a registered trademark by “blurring” the mental image consumers and others have when they think of the registered mark. This has the potential to diminish the mark’s uniqueness. Tarnishment is when a registered trademark could be linked to other products which would harm the way the mark is perceived. An example could be low quality or unsavory goods. The goods do not need to be related to tarnishment. There are many other factors to be considered as well such as fame of the mark and recognition, distinctiveness, and degree of similarity.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Counterfeit Products

A counterfeit is a form of infringement where someone using a spurious mark that is either identical or indistinguishable from a registered trademark. There are criminal penalties, which can include hefty fines and even imprisonment, and civil remedies for counterfeiting. Counterfeit goods and even facilities and equipment used to counterfeit may be subject to seizure. For a mark to be found counterfeit it would have to be have been used on the same goods or services as the registered mark. Something may be found to be a counterfeit even if the infringing party did not know the mark was registered. Other factors include the point of view of the average person and whether or not the intention was to deceive purchasers. It is also very important to note that counterfeit may even be found with the original mark if it is found to be used in a way that deceives the public. Take steps to ensure that not only you, but those you have allowed to use your trademark are using it properly.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Reverse Confusion

One possible outcome of a likelihood of confusion fight is reverse confusion. Reverse confusion is when the infringing newer trademark is more well-known than the senior trademark. This can happen if the younger mark was the subject of an advertising campaign and potential customers are more likely to recognize it than the older mark. This finding can of course be detrimental for the owner of the older mark as consumers may pass when purchasing their goods because they think the older mark is the infringer. Reverse confusion may also be bad for the younger mark if it is found that they used or advertised the new mark with disregard for the older mark’s status. This bad faith move can result in damages. Reverse confusion can add complications and risks for both sides. Like regular likelihood of confusion, it is best avoided through careful searching and selection of a trademark prior to filing.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Purchaser Sophistication

One factor that is taken into account when determining likelihood of confusion is how sophisticated and knowledgeable the customers purchasing your goods or services are. The more sophisticated they are the less likely they would be to confuse conflicting trademarks. This is something that should be considered as you begin your new trademark application. If you are selling goods or services to professionals rather than the general public the sophistication may be considered high. If you are only selling to the general public, then it may be low. Ordinary purchasers are less likely to have as much specific knowledge in regards to what they are purchasing and a professional is more likely to discriminate between trademarks. The amount of attention a potential purchaser will pay when considering. Will they think about the various products available or just grab what they see first? Is this in an impulse purchase or would it involve careful consideration? These are all important questions when analyzing a conflicting mark this is for similar goods and services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Intent and Trademarks

Your intentions can come into play when trademark infringement is being determined. What would be looked at is if you were actually intending to compete with the conflicting mark or if you were attempting to deceive possible customers. To determine this, things such as similarity of trade dress like packaging or colors and font used for the text can be analyzed. It is also always important to demonstrate that you were operating with good faith. Good faith can be shown by ensuring a complete and thorough search for conflicting marks was done, you did not believe there was a conflict, and that the mark you selected accurately reflects your goods or services. Bad faith may be found if styles and other elements were copied or there is no credible reason to adopt such a trademark. Before filing make sure you are operating with good faith and not trying to infringe on the rights of another trademark owner.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Proximity of the goods to a conflicting mark

When determining whether or not your trademark is likely to be confused with a possibly conflicting mark one of the most important thing to look at is if the goods are related. The closer the goods are to each other the higher the chance of likelihood of confusion being raised by the examiner. An important question is would an average person purchasing these goods be likely to think these items came from the same source? This question is tough because in today’s society the average consumer would expect companies to make a plethora of goods even if they are seemingly unrelated. Factors that should be taken into account include the place where the products are sold, price, whether the goods can be used together, and even the possible dangerous consequences of confusion such as in the case for medicine. If your goods or services are similar or closely related to those of a conflicting mark, then you may want to consider an alternative name.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Is my trademark similar to another?

Figuring out whether or not your trademark is similar to another is not as easy as one might think, but it is very important to consider before attempting to gain registration. Taking your trademark and looking at it side-by-side with another will not answer this question because more than just appearance is taken into account. Sound and meaning are also very important aspects. In addition, it is important to remember that trademarks will be judged as a whole and not by their individual components. Other things to take into account are the market place your product will be sold in and whether or not your goods are similar to those of the other trademark. When judging marks for similarity remember that those purchasing your products will not have perfect memory of the trademarks and thus more prone to be confused than you. Certain similarities may be acceptable such as if the mark is overall weak or the similarities have to do with generic portions which have been disclaimed. In certain cases, packaging or some other form of distinct presentation may make a difference, but not always.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Likelihood of confusion

One very common trademark application issue is likelihood of confusion with another registered or pending trademark. Depending on the specifics of the cited mark or marks, an Office Action containing likelihood of confusion can be a major obstacle in the way of registration. The main thing the examiner will look at is whether a consumer is likely to confuse or mistake your trademark for another. In determining this the examiner will look at the text, logo, appearance, sound, and entirety of your mark’s commercial impression. It is important to note that such confusion must be probable, not just possible. Other factors that play a part in determining likelihood of confusion include the strength and distinctiveness of the cited mark, relation of goods/services, consumer sophistication, third-party use, quality of goods, advertising and sales, and other relevant evidence. There are other options to deal with likelihood of confusion such as negotiating a co-existence agreement with the owner of the cited mark. Likelihood of confusion is one of the tougher issues to deal with and at the end of the day it all may come down to examiner’s opinion. Before fighting it is important to consider all possibilities and outcomes.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Incontestability

Registration is only the first step in fully securing your trademark. It is possible to add another level of protection to your trademark by obtaining incontestable status. Your trademark is eligible for this status if you have used your trademark continuously for five years after registration. To obtain this you must file a section 15 affidavit of incontestability.  Why would a trademark owner want this? Incontestability provides the exclusive right for you to use your trademark and if questions arise it can be used to show that your trademark’s registration is conclusive evidence of your ownership. The affidavit will also shield your trademark from being contested as descriptive. Incontestable status can also help when it comes to fighting those attempting to infringe on your rights. Incontestable status will not help if you engaged in fraud to obtain your mark or the status. In addition, it is important to maintain proper maintenance of your mark even if it is incontestable as it can still be abandoned.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Proper trademark maintenance

You spent time, effort, and money getting your trademark. Do not let this be for nothing. You must maintain your trademark to ensure your rights remain intact. You must not only use your trademark continuously, but also demonstrate this to the USPTO. You must file a section 8 affidavit of use between the fifth and sixth year after registration. In this affidavit you must attest that you have been using your trademark in commerce for five years continuously on all items in your application and contain a specimen showing this. If you are not using it on some of the items, then they must be disclaimed. You must also file a section 8 affidavit along with a section 9 renewal application between the ninth and tenth year after registration and every ten years after. In addition, a section 15 declaration of incontestability may be filed any time after the five-year mark. This declaration is not mandatory, but will bolster the protection for your trademark. Many choose to file this at the same time as the first section 8 affidavit.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

An overview of the Madrid Protocol

Your trademark grants you protection in the country you filed it in, but what if you want to do business or expand your market into other countries? There are ways to expand your trademark’s protections. Established in 1989, the Madrid Protocol was an international treaty which established an international trademark registration filing system. The system is administered by the World Intellectual Property Organization (WIPO). The system allows applicants to register in other member countries through a single application. Obtaining an international registration through this system affords the same benefits and protections as a national registration. First a request for extension of protection is filed in the home country. Once reviewed it is sent to WIPO for another review before being sent to the designated countries. If no issues are raised by this point, then it will be sent back to the home country and published for opposition. International protection can be invaluable protection if you are planning on expanding your business abroad.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.