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Federal Trademark Registration: Principal vs. Supplemental Register

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By: Vivek Vaidya A trademark can be registered with the United States Patent and Trademark Office on either the principal or supplemental register. Registration on the principal register provides more trademark protection than on the supplemental register. However, there are a host of benefits for registering the mark on the supplement register if it does… Read More

By: Vivek Vaidya

A trademark can be registered with the United States Patent and Trademark Office on either the principal or supplemental register. Registration on the principal register provides more trademark protection than on the supplemental register. However, there are a host of benefits for registering the mark on the supplement register if it does not meet the requirements of the principal register.

A trademark can register on the principal register if it is fanciful, arbitrary or suggestive. A fanciful mark is a made up word, such a Kodak for cameras. An arbitrary word is one that has meaning, but not in association with the goods or services it is connected to as a trademark. A famous example of an arbitrary trademark is Apple for computers, as the fruit has nothing to do with computers. A suggestive trademark is one that suggests the type of good or service with which it is associated, but still requires consumers to make some sort of connection in their own mind. An example is Microsoft, which is suggestive of being used in association with software for microcomputers but still requires an individual to think for a moment in order to realize the relationship between the word and the goods.

While fanciful, arbitrary, and suggestive marks can all register on the principal register, a descriptive mark cannot.  A descriptive mark is one that describes the goods or services with which it is associated. One of the reasons that a descriptive mark cannot register on the principal register is the USPTO’s fear that one party will have a monopoly over a commonly used word in a particular industry. For example, the trademark Homemade Ice Cream for an ice cream shop describes exactly the goods and services associated with the trademark.  However, businesses still like to use descriptive marks because it can be a great marketing tool that attracts customers, even if the trademark does not have strong legal rights.

This is where registration on the supplemental register comes into play; descriptive trademarks can be registered on the supplemental register.

While registration on the supplemental register does not provide a presumption of ownership throughout the United States, it is still a federal registration that prevents other similar trademarks from registering with the USPTO, even on the principal register. There is also the deterrent effect, as new businesses who see a trademark registered on the supplemental register will likely not use the mark to avoid a legal dispute. Therefore, there still are good reasons to register a trademark on the supplemental register, even if it is descriptive and cannot be registered on the principal register.
If you would like help registering your trademark on the USPTO’s principal or supplemental register, or if you have general questions about the topic, please do not hesitate to give us a call at (415) 633-6841, or email us at info@blgtrademarks.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Efficiently Enforcing Your Trademarks: The Importance of Monitoring Services

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By: Vivek Vaidya Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states and is a way of establishing legitimacy in the marketplace. While ownership of a trademark registration… Read More

By: Vivek Vaidya

Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states and is a way of establishing legitimacy in the marketplace.

While ownership of a trademark registration allows you to prevent others from using a confusingly similar mark, you have a duty to actively enforce your trademark.  Failing to do so can actually erode your trademark rights. Allowing others to use the same mark is evidence that your trademark is not a strong one.

The USPTO does some work for owners of federal registrations in preventing confusingly similar marks from passing their examination process, but the fact is that the examiners who review trademark applications are people and the determination whether a mark infringes on another is a multi-factor balancing test.  Two reasonable people can come to different conclusions when reviewing the same trademark application.

This is why the USPTO provides an alternative avenue of protecting your rights.  As those who have gone through the registration process may know, the last step in the process after the examiner approves an application is called an Opposition Period.  During this 30-day window, third parties can formally oppose an application, and argue that it should not mature into registration because doing so would infringe upon their trademark rights.  A trademark owner can keep track of applications that are in the Opposition Period because they are published weekly on the Official Gazette, an USPTO publication that can be hundreds of pages long.  However, searching through the Official Gazette each week will make any normal person’s eyes glaze over.

This is where monitoring services come in.

Various companies provide software services to monitor the Official Gazette for confusingly similar trademarks that are progressing towards registration.  Signing up with these services allows trademark owners to be notified when such an application exists. At this point, the owner can work with an attorney to form a strategy for opposing the application.
At the end of the day, you as a trademark owner are responsible for policing your trademark rights, and not doing so erodes those rights.  Monitoring the Official Gazette for potentially infringing trademarks is extremely tedious, which makes monitoring services very attractive.  Stopping potential infringers in their tracks during the application process is an efficient way to stop infringement before it occurs, reduce the risk of expensive litigation down the road, and ensure that your trademark rights are protected.

If you are interested in monitoring services, having an attorney monitor on your behalf, or would like legal aid with opposition proceedings or trademark disputes, we can be of aid.  Please call (415) 633-6841 or email us at info@blgtrademarks.com for further assistance.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Copyright Basics

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By: Vivek Vaidya What Can Be Copyrighted?  A copyright is given to any expression of an idea, fixed in a tangible medium, that contains at least a modicum of creativity.  In simpler terms, copyright extends to any tangible creation that required the slightest of human discretionary choice to create.  A scribble on a piece of… Read More

By: Vivek Vaidya

What Can Be Copyrighted? 

A copyright is given to any expression of an idea, fixed in a tangible medium, that contains at least a modicum of creativity.  In simpler terms, copyright extends to any tangible creation that required the slightest of human discretionary choice to create.  A scribble on a piece of paper can be protected by copyright law.

What Rights Do Copyrights Give You? 

There are 6 rights associated with copyright protection: 

  1.  To reproduce the copyrighted work in copies or phonorecords;
  2. to prepare derivative works based upon the copyrighted work;
  3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
  4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
  5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
  6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

A copyright generally lasts for the life of the author plus 70 years, meaning you can pass it down for future generations to profit from.

Benefits Of Registration With The U.S. Copyright Office 

A copyright is created when the work itself is created.  That means you own a copyright even if you do not register the work.  However, there are a host of essential benefits for registering your copyrights, including the following:
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  • Provides Notice:  Registering your copyright with the U.S. Copyright Office puts others on notice that you are the owner of the copyright.  You can always license, or completely sell one or all of the 6 rights associated with a copyright above. Providing notice means opening up the opportunity for monetizing your copyright, especially when others want to perform or display your work, or make derivative works based on yours.
  • Registration is required to sue for infringement:  In order to sue for copyright infringement in federal court, you have to have your copyright registered.  Therefore, registration is essential to actually enforcing your rights.
  • Five year presumption:  Registering a copyright within 5 years of publishing the work give you the presumption in court that the facts in the registration are all true.  This makes it much easier to win a case, because the defendant then has the burden of proving that they did not infringe on your copyright. The law is on your side, and legal fees are greatly reduced.

Conclusion

Registering a copyright is an essential process for any person who is looking to make a living off their creativity.  You automatically get basic copyright protection when you create the work, but registering it protects it at a much more substantial level because of the enforcement power, and it opens to the door to all types of new opportunities for growth and monetization.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Copyright Assignment vs. Copyright License

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By: Vivek Vaidya Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and create derivative works based on the original. When giving another person permission to do any of those things with your work, you need a license or assignment agreement. Having the proper agreement in… Read More

By: Vivek Vaidya

Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and create derivative works based on the original. When giving another person permission to do any of those things with your work, you need a license or assignment agreement.

Having the proper agreement in place will ensure that your intentions are met in terms of who will maintain ownership over your copyright and what exact rights out of your bundle of rights you’ll be giving the other party.

Copyright Assignment

With a copyright assignment, you are contracting to give someone else your entire copyright. Upon execution of the agreement, the ownership of the copyright will transfer from one party to another. Once you assign your copyright, you may not publish your work even if you were the original author.

Assignment with Reversion

A newer type of assignment is an assignment with reversion. A reversion is a future right to own the copyright. Thus, the copyright will be granted to another person, who owns the copyright for a period of time or until a condition is met, and then the copyright reverts back to the original owner. In some cases, the original owner will have to pay for the reassigning of the copyright.

Copyright License

If you want to maintain ownership of the copyright, a license is a better option. With a license, you’ll be maintaining ownership, while granting permission for another party to use your work in a particular way. It’s very important to carve out the scope of the permitted use carefully to ensure that you’re not granting an over-inclusive set of rights.

Other important considerations are the license’s exclusivity, duration and payment terms. Parties may negotiate for whether the license is exclusive, meaning that the licensee will be the only person afforded those rights and the licensor will not grant these rights to anyone else, or whether the license is non-exclusive, meaning that the licensee is not the only person or entity being granted the particular rights. The license agreement’s duration shall be clearly provided, including both parties’ rights to terminate. Finally, how the licensor will be paid for the granting of the license should be laid out.

Assignments and Licensing Agreements should be drafted by an attorney to ensure that existing and future rights are protected, while keeping in mind the overall business objectives and creative pursuits. If you are thinking about signing a license or assignment, please consult with an attorney to make sure you understand every provision and the agreement as a whole.

If you would like help reviewing or drafting an Assignment or Licensing Agreement, or if you have general questions about the topic, please do not hesitate to give us a call at (415) 439-0153, or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Common Office Action Refusals: Trademark Section 2(d) Likelihood of Confusion

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By: Vivek Vaidya One of the most common refusals of a trademark registration with the United States Patent and Trademark Office is a Section 2(d): refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy…. Read More

By: Vivek Vaidya

One of the most common refusals of a trademark registration with the United States Patent and Trademark Office is a Section 2(d): refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy.

A refusal for likelihood of confusion is based on the examining attorney’s determination that the applicant’s mark used in association with its range of goods and services so resembles a registered mark that consumers would be confused as to who is actually the source of the goods or services associated with the mark.  

Factors for Determining Likelihood of Confusion:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
  • The relatedness of the goods or services as described in the application and registration(s);
  • The similarity or dissimilarity of established, likely-to-continue trade channels;
  • The conditions under which and buyers to whom sales are made, i.e., impulsive vs. careful, sophisticated purchasing;
  • The number and nature of similar marks in use on similar goods; and
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. 

While all of the above factors are considered when making a 2(d) determination, the similarity of the marks in sight and sound, and similarity of the goods and services are usually given the most weight.  There is no mechanical test for a 2(d) refusal, and each case is decided based on its unique circumstance.

Avoiding the Problem: Clearance Searches

The best practice in avoiding a 2(d) refusal is to follow the examining attorney’s protocol for discovering conflicting marks to the best of your ability.  The examining attorney conducts a search of the USPTO’s records on an internal system for marks that so resemble any registered mark or prior filed application.

While the examining attorney’s particular search strategy is made public, the internal system that the examining attorney uses is not.  The USPTO does have a search engine that allows the public to conduct searches, but it is easy to miss a conflicting mark. This is because examining attorneys look at not only similarity in sight, sound and streams of commerce, but also foreign equivalents, connotations, synonyms, natural expansions upon a stream of commerce, and many other factors.

The bottom line is that conducting a perfect search is very difficult, which is why an applicant looking to register a mark should contact an attorney to conduct a clearance search.  The attorney will do their best to emulate the examiner’s protocol, and may even go a step further by ordering a clearance search from a professional service that performs an extremely meticulous clearance search.  An attorney is best suited to sift through the professional search results and make a determination of the risk each mark presents while being mindful of practical considerations.

Overcoming a 2(D) Refusal

If you have received an Office action that cites a 2(d) refusal for likelihood of confusion, it is your right to present arguments to the USPTO that the refusal was incorrect.  The two most common arguments are that the marks are not confusingly similar, or that the mark has acquired distinctiveness in the marketplace such that consumers have a strong association between your mark and your services such that registration should be permitted.  Making these substantive arguments truly requires an experienced attorney who has argued numerous Office Actions, understands the law, and can make the most persuasive argument possible – often utilizing extrinsic evidence.

Need a hand with performing a clearance search or responding to a 2(d) refusal for likelihood of confusion?  We are happy to help. Call (415) 633-6841, or email us at info@blgtrademarks.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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California Opens Trademark Registration for Cannabis Brands

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By: Vivek Vaidya The new year started on a positive note for cannabis brands with the legalization of recreational marijuana.  In conjunction, the state announced that it will now be accepting applications for trademarks associated with recreational cannabis. Secretary of State Alex Padilla launched an online portal called Cannabizfile to help entrepreneurs join the fast-growing… Read More

By: Vivek Vaidya

The new year started on a positive note for cannabis brands with the legalization of recreational marijuana.  In conjunction, the state announced that it will now be accepting applications for trademarks associated with recreational cannabis.
Secretary of State Alex Padilla launched an online portal called Cannabizfile to help entrepreneurs join the fast-growing cannabis industry. The portal provides step-by-step information on how to run a cannabis enterprise in California, including how to protect brands through trademark registration.

Trademark law provides protection to the names, slogans, phrases and logos that distinguish one company’s goods and services. Brand owners typically apply for the nation-wide protection through federal registration with the United States Patent and Trademark Office (USPTO).  However, registration with the USPTO is only allowed for goods and services that are lawfully used in commerce. Cannabis brands have long been restricted from registration due to federal drug laws, as it remains a Schedule 1 narcotic under the federal Controlled Substances Act.

Parallel to the federal registration system, California state trademark registration also requires a “lawful commercial use” of one’s product and services.  Now that recreational cannabis has been legalized, cannabis companies can reap the benefits of trademark registration at the state level.

State registration of the mark serves as a public notice of the brand’s use.  It also provides evidence of first use, which is the basis for deciding trademark conflicts, and allows for legal causes of action under the California Business and Professions Code.

There are a few drawbacks to state trademark registration.  Unlike applications filed with the USPTO, state applications cannot be filed on an “intent to use” basis.  This means cannabis brands must be operating in compliance with state law in order to register. Furthermore, state registration only provides protection for brands operating within the jurisdiction.

As long as recreation marijuana remains illegal at the federal level, cannabis businesses are wise to register their trademarks at the state level.  Contact BLG Trademarks at (415) 633-6841 or info@bendlawoffice.com to help you with the process of protecting your cannabis brands in California, and obtain the right to stop competitors from cashing in on your goodwill.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Benefits of Trademark Registration

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By: Vivek Vaidya What Is A Trademark? A trademark is a word, phrase, slogan, symbol or design that indicates the source of a particular product or service to consumers.  It is a branding mechanism that is meant to differentiate your products/services from other companies and other products/services. A trademark helps consumers make decisions about what… Read More

By: Vivek Vaidya

What Is A Trademark?

A trademark is a word, phrase, slogan, symbol or design that indicates the source of a particular product or service to consumers.  It is a branding mechanism that is meant to differentiate your products/services from other companies and other products/services. A trademark helps consumers make decisions about what to purchase because the mark or symbols represent a reputation.  Put simply, having a strong trademark is an essential asset to any company.

What Are The Benefits of Trademark Registration?

Registering your trademark with the United State Patent and Trademark Office (USPTO) provides immediate benefits.  Here is a list of some of the most important benefits of registration:

  • Presumption That Registrant is the Rightful Owner

In the case of a trademark dispute, the burden is on the non-registered party to prove they are not the infringing party. Practically this means that if you have registered your trademark or service mark on the USPTO’s federal registry, you have a tactical advantage. The court will presume you are the rightful owner of the mark in all 50 states.

  • Discourage Use of the Mark by Other Companies

When a company forms and decides upon a name, they routinely search for competitors.  A new company is much less likely to choose a mark that already exists or is similar to one that exists to avoid the risk of infringement.

  • Prevent Registration of Similar Marks

When the USPTO decides whether to allow the registration of a mark, they look at other marks that have been registered that may be confusingly similar to the applicant’s mark.  Therefore, if you register your mark, the USPTO polices your mark and protects your brand for you by preventing other companies from registering a similar mark.

  • Instant Rights

Federal trademark rights begin when the application is filed with the USPTO, not when the registration is approved.  Therefore, the sooner you file an application, the sooner your rights are established.

  • Protection Against Foreign Imports With Your Mark

Federally registered trademarks can be registered with U.S. Customs and Border Protection, who will protect your mark for you by denying entry of products that are shipped into the United States using your mark.  They essentially police foreign counterfeit imports for you because your mark is registered with the USPTO.

  • Ability to Bring a Lawsuit in Federal Court

Registering with the USPTO is imperative for suing others for trademark infringement under the Lanham Act in federal court.

  • Statutory Damages

While punitive damages are not available in an infringement suit under the Lanham Act, judges do have great discretion in enhancing damage awards beyond the plaintiff’s monetary damages and the defendant’s profits subject to the principles of equity.  Where there is willful trademark infringement, a judge can award three times the actual damages and profit loss to a successful plaintiff, and a plaintiff in a trademark counterfeiting suit may recover up to $1 million in statutory damages instead of actual damages or profits.

  • Use of the famous ®

Only a registered trademark may use the symbol ® next to their trademark.  This symbol not only puts others on notice that the trademark is registered and that they cannot register or use a similar mark in association with similar products or services, but it brings an aura of legitimacy to any company.  It conveys that the business owners are serious about their brand, that they protect it, and that they care about the quality of products that it is associated with.

I want to register my trademark. What’s the next step?
Call Bend Law Group, PC at (415) 633-6841 or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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