As an internet lawyer specializing in trademark infringement litigation, cases, registration and assessment, I hear common language from clients all the time. Personally, I prefer they way clients speak about their problems. In many ways, their description of the issue is more accurate than the legal term we label it with.

Yes, someone has stolen your trademark. Trademark theft occurs every day. And a good trademark infringement lawyer will help you get your stolen trademark back from the person who took it.

Too many companies and too many trademark lawyers simply send out trademark infringement cease and desist letters as a matter of course. They don’t, as good attorneys or good companies, or good stewards of the trademark system, stop and think about who they’re sending the letter to. Sometimes people aren’t intentionally infringing your trademark at all, and sometimes there are legitimate reasons why people have registered a similar domain name, or used a similar company name, or have otherwise done something, which you believe is too close to your trademark.

My name is Trademark Infringement Attorney Enrico Schaefer, and today we’re going to talk about the do’s and don’ts of sending a trademark cease and desist letter. The deal here is this. There are people who will directly attack your trademark and those people deserve a very aggressive threat letter. They deserve to receive a threat letter which tells them that you believe that they’ve intentionally targeted your trademark and that they’re liable potentially for statutory damages and attorney’s fees under trademark law.

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

Too many companies and too many trademark lawyers simply send out trademark infringement cease and desist letters as a matter of course. They don’t, as good attorneys or good companies, or good stewards of the trademark system, stop and think about who they’re sending the letter to. Sometimes people aren’t intentionally infringing your trademark at all, and sometimes there are legitimate reasons why people have registered a similar domain name, or used a similar company name, or have otherwise done something, which you believe is too close to your trademark.

My name is Trademark Infringement Attorney Enrico Schaefer, and today we’re going to talk about the do’s and don’ts of sending a trademark cease and desist letter. The deal here is this. There are people who will directly attack your trademark and those people deserve a very aggressive threat letter. They deserve to receive a threat letter which tells them that you believe that they’ve intentionally targeted your trademark and that they’re liable potentially for statutory damages and attorney’s fees under trademark law.

A good attorney will put in that very aggressive trademark infringement threat letter, the fact that there’s a demand to cease and desist certain types of activities, to turn over the domain, to take down the website, these types of things. But as a trademark attorney who sees these kinds of letters every day, I have to tell you simply creating a trademark infringement form letter and sending it out to everyone you believe may be infringing your trademark, is not the way to go. You need to categorize the people that you’re sending the letters to into at least two, if not three boxes.

The first box are people who are actually running legitimate businesses who just happen to be using a similar trademark and there’s no indicia that they targeted your trademark, or even knew about your trademark, prior to launching their product or service. These people may have invested tens or hundreds of thousands of dollars in their use of a similar mark, and it’s going to be very difficult for them to rebrand.

You won’t be able to prove, and your lawyer won’t be able to prove, that they intentionally targeted your mark and thus have engaged in intentional infringement. So, what you’re looking to accomplish with those folks is some sort of cooperative approach where you may even have to pay them the money to help them rebrand.

Believe me, paying money to someone who hasn’t targeted your trademark, in order to further your trademark rights or broaden your trademark rights around your mark, is a good investment in many instances, and oftentimes costs a lot less than filing a trademark infringement lawsuit and paying the attorney’s fees required in order to move that litigation case through the court system.

The second box, are those folks who, man, it really appears that they may have known that you existed, but they didn’t understand trademark law when they engaged in the infringing activity. So, they may have registered a domain name that was similar but in a different type of goods and services. They may have used a variation of your trademark as part of their branding or marketing materials. It just seems like there is something there that may be problematic, but you’re not quite sure.

For those folks, you may have to send a notice letter which contains a little bit more of a threat. So, the notice letter is going to say, “Hey, we’ve got trademark rights. You may not have been aware of it. We have superior rights.” You establish your first use in commerce, you establish the likelihood of confusion, and you try to get them to contact you through their attorney so you can start to have a business-to-business discussion through the lawyers.

In the second category, you have to be a little bit more aggressive than that. So it’s going to be a blend between a notice letter and it’s going to potentially contain some threats that say, “If you do not take these actions, if you do not cease and desist infringing activity, you could be liable for damages, statutory damages, and attorney’s fees in litigation.

The third box are folks who by all appearances are intentionally infringing your trademark and they have no qualms about it. Those folks do need to receive a trademark threat letter, which is very aggressive and is designed to scare them into complying with the cease and desist portion of the letter, where they’re going to cease using the name or any derivation of the name. Potentially and make some disclosures to your attorney, which will help you understand whether or not they’re using the mark in other forms that you can’t see.

One of the big things that a trademark lawyer will always do in the cease and desist portion of the letter is demand more information, right? Because you many only be seeing the tip of the iceberg, and the trademark infringement might run really deep underneath that tip. So, you certainly don’t want to get into a situation where you resolve an issue with someone who’s infringing your trademark on a particular domain name, without realizing that they may have registered 50 other variations of your trademark as domain names.

You certainly don’t want to give a trademark infringement general release, where you release some of any liability, if you don’t fully understand the situation. So, the trademark infringement threat letter that is going to be the most aggressive form is going to threaten immediate litigation if they do not comply with the demands set forth by your attorney in the letter itself.

Now, what I always say is, look at it, you don’t want to get into a situation where you’re simply creating a cease and desist form letter for trademark infringement, or even copyright infringement, because those letters tend to – they smell like form letters, right? What they can suggest to the recipient is that you’re not really serious.

Unless the letter is tailored to the situation in such a way that it makes it clear that you are focused 100% on that infringer, then they sometimes will just throw them in the circular file, in the waste can. Their attorneys will indicate that it doesn’t appear that it’s very serious and they will not comply with the demands that you are seeking. The key to the trademark infringement threat letter model, and notice letter model, is to achieve a result without having to go to trademark infringement litigation, which is much more expensive.

Any good trademark attorney is going to advise you that the cost of trademark infringement litigation can certainly run into the hundreds of thousands of dollars. Given that cost, it’s much better to achieve your result without having to go to court and having to deal not only with your own attorney, but with the lawyer who’s going to represent the defendant.

My name is Trademark Infringement Attorney Enrico Schaefer. I hope you learned something today, and we’ll see you next time.

You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

If you want to protect your name as a trademark, there a numerous steps that you need to go through. It is not as simple as simply filling out a form. If you do anything incorrectly on your trademark registration application, your trademark, even if it gets registered, because it’s of course based on the information that you and your trademark attorneys provide, could be invalid. So you could have spent all that time and money for nothing, because somebody challenges your trademark down the line and it turns out you provided some misinformation, either intentionally or innocently. Boom, your trademark is invalid.

How do you register a name as a trademark? How do you register a logo or slogan as a trademark? How do you register a design as a trademark? These are questions that we hear all the time as trademark registration attorneys who specialize in getting your brand registered as a federal trademark at the United States Patent and Trademark Office, so that you get all the benefits under the U.S. trademark law of having a trademark registration.

My name is Trademark Registration Attorney Enrico Schaefer, and we here at Traverse Legal, we hear these types of questions all the time. Of course the answer is that there is a multi-step process that you need to go through in order to get your trademark registered right.

If you want to protect your name as a trademark, there a numerous steps that you need to go through. It is not as simple as simply filling out a form. If you do anything incorrectly on your trademark registration application, your trademark, even if it gets registered, because it’s of course based on the information that you and your trademark attorneys provide, could be invalid. So you could have spent all that time and money for nothing, because somebody challenges your trademark down the line and it turns out you provided some misinformation, either intentionally or innocently. Boom, your trademark is invalid.

That is a terrible result. It does not cost a lot of money to register your name as a trademark. You need to do it right. It’s an important business asset for your company. Keep in mind Apple’s trademarks are worth 50% of its overall market value, and that is true for many companies. The trademark value as an asset actually exceeds the value of all their tangible assets, all of their revenue assets. These are critically important things for companies like yours.

So, how to register a name as a trademark begins with the question of is it a new name that you’re thinking about using or is it a name that you’ve been using for many years, and now want to get that name registered?

There’s very important difference is between the approaches that would apply to those two scenarios and the reason why is this. If you’ve already been using the name for years, well, it’s very difficult to change your name midstream. That name is probably incorporated into your domain name. It’s part of your overall marketing. All of your advertising revolves around that name.

So, in that instance, what you are going to do is a trademark availability opinion from your trademark or registration attorney, who’s going to tell you whether or not it makes sense to go through with registration. Here’s the reason why. If it turns out that you file for registration, there are companies that monitor those registrations filings.

If it turns out that you trigger a really big company to come after you because they’ve got superior trademark rights and they believe your trademark is confusingly similar to theirs, they can end up shutting down your use of the name. So, trademark registration could actually result in a huge step backwards for your business or company.

So, once you get that availability opinion back and the trademark attorney says that your name is available for registration, that the risk of triggering a threat letter is small, then you could go through the process of understanding the business model in order to understand what international class you are going to register in. What your description of goods and services are. What specimen will work for your registration application, and what are your first uses of the trademark ever and in commerce, so that you can identify your first use.

These are really important items. Now let’s say that you’re going to be choosing a new name for your new startup company or business, and you’ve got lots available to you but you got one you really like. The best thing for you to do at that point is to contact a trademark registration attorney who understands trademark law. Ask them whether or not the name you are considering for the use of your company name or brand is in fact available. There are two things that you’re typically looking at as a company in this situation.

The first is, is there a domain name available which incorporates that word so that you can actually live in a domain name that matches your trademark. The other is whether or not there is a previously registered or unregistered trademark out there that might be too close to your mark within your international class, goods and services, in order to preclude registration.

You don’t want to invest in a new trademark, a new name, a new logo, a new slogan, a new brand, a new design, if two years later you’re going to learn that someone else had something that was confusingly similar before you did. So, before you make that investment of tens of thousands of dollars or hundreds of thousands of dollars in your brand, spend a little bit of money to make sure that it is a brand which is available for use in commerce without infringing someone else’s trademark.

If in fact it comes back that there are problems then you’re going to go back to square one. You’re going to start looking for a new name, slogan, brand, design, to match what your business model is going to be.

Another word to the wise, a good trademark lawyer will help you understand what are strong trademarks and what are weak trademarks. It’s always tempting to want to pick a descriptive word that describes your business for your trademark so that way, customers will know what you do. But those typically are weak trademarks. Nike, Microsoft, these are great brands because they’re completely made up words.

Footlocker, pretty good brand because it in fact doesn’t tell you exactly what they do but includes the word foot, which is related to shoes, so perhaps a little less strong brand than a completely made up word such as Nike.

So let’s just review. You want to know how to trademark a name, a slogan, a logo, a byline, a design. You’re starting point is to contact a Internet lawyer who understands the process and trademark law to get you registered.

Once you go through that process and you find your name, then you’re going to devote the advertising and marketing dollars you need in order to create consumer awareness, so when they see that name they think of you.

My name is Trademark Registration Attorney Enrico Schaefer. We’ll see you next time.

So if you have trademark rights in a word, logo, symbol, design, slogan, you get to protect more than just the literal use of that trademark.  You get to have the exclusive right to use that mark in commerce as related to your goods and services or any other goods and services that might be similar to yours, and you get to preclude anyone from using something that is similar to the point that there is a likelihood of confusion from the consumer point of view.

So what in the trademark world does this concept of likelihood of confusion mean?  Well, there are any number of different factors that a court would look at in order to determine whether or not someone is infringing a trademark, whether or not there is a likelihood of confusion between the plaintiff’s trademark and the defendant’s use.  The thing that you need to understand is that if you’re in a similar market selling something that is similar, if you’re using a word or design that looks or appears to be similar, consumers might think that the defendant’s trademark or the defendant’s use is in fact sponsored or owned by or endorsed by the plaintiff trademark holder.

So the test of likelihood of confusion is a very broad one, and every case is fact specific.  If you receive a trademark infringement threat letter, someone is alleging that you are infringing their mark in commerce.  Do not rely on the slight differences between what you’re doing and what the complaining party is doing with their mark.  That’s not going to get you anywhere.  You have to put yourself in a consumer’s point of view and say, “If I saw the two marks side by side and I saw what each company was doing, would I potentially be confused about who was who? Would I be confused about the source and origin of the goods and services that I was buying?”  Not only do we protect the Nike Swoosh, in the area of sporting goods and apparel and shoes, but we protect against any use that is similar to the Nike Swoosh, because we don’t want consumers to be confused about who they’re dealing with.

A good trademark infringement attorney is going to tell you, if you receive a cease and desist threat letter for trademark infringement, that you’ve got a big problem if your use is similar.  Here is the problem from the defendant’s point of view.  You might get shut down.   You’ve got an investment in the use of a domain name perhaps.  Perhaps your using the trademark in your marketing materials.  If you’ve received a trademark infringement threat letter claiming substantial similarity, are you going to continue to invest your time and money in that use, knowing that at some point down the line you could be shut down, and even more so you could be liable in a trademark infringement lawsuit for up to $150,000 and statutory damages plus attorney fees?  How much time and effort are you going to want to continue to put into that mark?

One thing that trademark lawyers at trademark law firms will do for clients who are in the defensive position who have been accused of trademark infringement is try and negotiate an exit strategy for the defendant when there is a problem.  So if you think that you may be in a difficult situation, either because you can’t afford to fight the fight, or because you now realize that just because your trademark is slightly different that it’s not going to potentially help you in a court of law, or if you didn’t realize that trademark law protects around the trademarks broader than the literal use of the mark but now you do, you need to negotiate an exit.  You might get a joint use agreement with the plaintiff.  You might be able to buy yourself some time to transition out of your current inventory and transition into a new mark.

Here are the lessons for today from this trademark attorney.  Make sure before you brand your goods, your services, your company, you have a competent trademark law firm do a trademark availability search.  You do not want to invest in a brand that you later have to change.  It could put you out of business.  If you’ve already chosen a brand and you receive a trademark infringement threat letter, then you need to get a good trademark law firm involved in order to be able to understand what your risk is, what your rights are, what options you have, and what the recommendation of the attorneys are in terms of moving forward.

My name is trademark attorney Enrico Schaefer, and we’ll see you next time.

Trademark registration is the process by which you file an application to the USPTO, the United States Patent and Trademark Office, asking the United States government to, essentially, acknowledge and validate that the word or brand or logo that you are submitting is, in fact, considered trademark worthy under U.S. law.

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

Matt Plessner: Hi, it’s Matt Plessner for Trademark Law Radio. Today we are talking with Enrico Schaefer for the Traverse Legal in Traverse City, Michigan, about how to trademark a name, brand or logo. Enrico, how are you?

Enrico Schaefer: I’m doing great, Matt. How are you doing today?

Matt Plessner: I am well. Let’s first start out talking about registration. What exactly is trademark registration and how do you go about doing it?

Enrico Schaefer: Well, trademark registration is the process by which you file an application to the USPTO, the United States Patent and Trademark Office, asking the United States government to, essentially, acknowledge and validate that the word or brand or logo that you are submitting is, in fact, considered trademark worthy under U.S. law.

So, you go through a trademark registration process which involves submitting your application, and an examining attorney from the trademark office will review your application. They may give you an office action saying we need clarification of this, that or the other thing.

After you get through that process, they will publish your trademark. If they believe that your trademark is acceptable and isn’t infringing someone else’s mark, then they will publish it for opposition for 30 days where anyone in the world could come in and oppose your trademark, rarely do they. Then, once you get through that process, if all goes well, after approximately 12 months, they will issue you a Certificate of Registration. And at that point, your trademark will go from a common law trademark to a registered trademark with the USPTO.

Matt Plessner: And, Enrico, is trademark registration important?

Enrico Schaefer: Yes, it’s really important, Matt. The reality is that the moment you start doing business under a name or a brand or a logo and you start offering goods and services under that name, brand or logo, you have common law trademark rights. What that means is without doing anything more than being in business, your brand becomes a trademark under law. But going through the trademark registration process with the United States Patent and Trademark Office and actually achieving registration is really important because you get a bunch of really good benefits from doing that.

Number one, you get a presumption under law that your trademark is valid. Number two, you put the world on notice that you’re claiming trademark rights. Number three, you get to use that little, Matt, you might know the little circle ‘R’ that you see by so many logos, that tells the world that not only are you claiming trademark rights, but that you’re registered, your trademark is registered with the USPTO.

The most important thing that you get through the trademark registration process is you get to assert statutory damages against anyone who infringes your trademark willfully. So, let’s say, you’ve got your trademark, you’ve got it registered, and all of a sudden you notice your competitor across the street starts using a really similar name. You can now send them a trademark infringement threat letter saying we want you to cease and desist, and if you don’t, you could be liable for up to $150,000 in statutory damages plus attorney’s fees.

Matt, as you might imagine, that typically gets people’s attention.

Matt Plessner: Well, great. And, now, understanding about a trademark name, it sure sounds important. Tell me, Enrico, what is the attorney’s role in all of this?

Enrico Schaefer: Well, look it, you can go ahead and try and get through the registration process with the trademark office on your own. You can use a service like Legal Zoom where they just, basically provide you what is already available online through the USPTO.gov, which is the form, the application form, or you can hire a trademark registration attorney to actually get you through the process of registration.

The attorney’s role becomes really to help the client understand what is a good trademark. So, if you’re a company or business or start-up that is trying to figure out what your brand name is going to be or what domain name you are going to pick for your company, you need to understand the difference between a generic word, a descriptive word, a suggestive word or an arbitrary trademark.

A generic word can never be trademarked. So, if I’m selling cars and I’m going to call my company ‘Cars’, I can’t have any trademark rights in that. If I want to use something like ‘The Best Cars in the World’ as my company name, well, that’s just describing my service and the quality of my service. That’s a terrible trademark. The best trademarks are suggestive or arbitrary. So, Nike is a made up word. It can only mean one company in the world and that’s Nike. That’s a really strong trademark. So, you need to understand what you’re trying to achieve under trademark law when you pick your brand.
If you’ve already got your brand, then the next thing the attorney is going to do is he’s going to do an availability search to make sure that before you file your application for trademark registration, that the trademark is ‘clear’, meaning that no one else is already on file with something similar that’s going to not only potentially stop your trademark from going through; but, perhaps, even trigger a threat letter against you by that company saying you can no longer use that name.

So, the first thing is a trademark availability search and opinion letter. If it comes back as clear enough as a tolerable level of risk for your trademark, then you get into the trademark application process. And there’s all kinds of things within the application that you need to get right or you could really be causing yourself a problem. It does not cost that much money to hire an attorney to help you get through the trademark registration process. And a good trademark registration attorney can take you all the way from A to Z, get you through the process, get you your registration and now you’ve got a much more valuable asset, an intangible property asset, with your trademark registration.

Matt Plessner: And how long does it take to trademark a name?

Enrico Schaefer: It’s variable, but in the United States, you’re usually talking between 8 and 16 months to get through the entire trademark registration process at the USPTO.

Matt Plessner: And, now, I guess one final question, Enrico, how much does it cost to register a trademark?

Enrico Schaefer: There are a couple of variables, but in general, you should plan on spending something in the $1600 to $1700 range to not only get a trademark availability search and opinion from the attorney. If the trademark comes back as clear … even if you’ve been using it for ten years, you should still get a trademark availability opinion and clearance letter from your attorney.

But if it comes back clear, then you’re going to go through the trademark registration process. So, that approximate $1600, $1700 is going to buy you all of that and that even includes the $300 or so registration fee with the trademark office. A very low investment for what will be a very valuable item in terms of your assets moving forward.

Matt Plessner: Well, thank you very much for your time, Enrico, and I’m sure we all have a better understanding of how to trademark a name.

Enrico Schaefer: Yeah, not a problem, Matt. We’ll talk to you next time.

Matt Plessner: Join us next time on Trademark Law Radio. I’m Matt Plessner.

You have been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

My name is Enrico Schaefer and I specialize in trademark and intellectual property issues.  Today, we’re going to be talking a bit about intellectual property and trademark rights.  Some of the questions we receive from clients and prospective clients all the time are, “what is the difference between the various types of intellectual property?”  “Is a trademark intellectual property?” “What is the difference between a trademark and a copyright?”  “What is the difference between a patent and a trademark?” “What is the difference between a patent and a copyright?”  Today, we’re going to have a little bit of an intellectual property primer and we’re going to talk a little bit about the differences between various forms of intellectual property and, in fact, what is intellectual property.  Today, we’re going to be dealing with a very broad topic of IP.

Now, if you go to the Wikipedia entry, you’ll see a great rendition of information about intellectual property.  Essentially, intellectual property talks a lot about the exclusive rights that are granted to a person or a company to something that is intangible.  So, when you think about intellectual property, you’re always thinking about this concept of exclusive rights.  In addition, exclusive rights are important because what you’re doing is you’re trying to figure out why this is important.  And the reason it’s important is because when someone has exclusive rights, they’re the only one in the world that gets to use that idea, that name, that brand, that piece of artwork, that photograph, so we’re always dealing with the concept of exclusive rights in dealing with intellectual property.  Moreover, bundled with that exclusive right, which goes to the owner, is the concept that you can license your intellectual property and, more importantly, that you can stop people from using your intellectual property if they do not have permission. Thus, you can send them a trademark infringement threat letter, a copyright infringement threat letter or a patent infringement threat letter.

Let’s talk a little bit about intellectual property law and what that seeks to convey.  Again, intellectual property law seeks to convey exclusive rights to a variety of intangible assets.  By intangible assets, we mean something that cannot be touched.  So, for instance, if I have a shoe company and I’m manufacturing shoes, I’d have a tangible asset, the shoe.  But if I idea, then I have an intangible piece of property.  If I have a name that goes with my product, a brand, then that is an intangible asset.  So, there are different types of intangible assets and thus, there are different types of intangible property.  Some types of intangible property deal with copyrights and if we take a look at some of the first examples here of music, literary and artistic works, these are intellectual property rights that are going to be governed by copyright law.  When we look at discoveries and inventions, we are going to be talking about patents and trade secrets, both different types of intellectual property.  If we’re going to be talking about words, phrases, symbols and designs, we’re in the area of law known as trademark law. Trademarks are a type of intellectual property which protect and provide exclusive rights to the use of a word, a phrase, a symbol or design.  The Nike swoosh is a trademark of the Nike Corporation and only Nike can use that swoosh.  American Airlines is the name of an airline company.  It is a word and only American Airlines can use that word.

So, these are the types of things that we call IP (intellectual property).  Today, we’re going to be talking a little bit about a particular type of intellectual property and that is trademark intellectual property.  So, trademark intellectual property is going to be the type of intellectual property that deals with words, phrases, brands, slogans, these types of things.  So, let’s start out by talking a little bit about what is a trademark.

A trademark is something that is going to designate goods or services in the market, so that if you are going by the company name Traverse Legal, people know when they go and see a designation of a website as Traverse Legal, or another use of the word Traverse Legal that they’re dealing with my law firm.  So, Traverse Legal is, in fact, a trademark.  There are lots of trademarks out there.  Everyone who, in fact, uses a brand or a company name is in all likelihood using a trademark.  So, trademark is something that is distinctive.  And by distinctive what we mean is that it’s going to be something that is going to be unique identifier for you.  And a distinctive mark is something different than a generic mark.  So, if I say I’m going to run a tool company and I’m going to sell tools and I named my company “tools”, that’s not distinctive.  If I’m going to run a tool company and call it Geronimo, that is distinctive, so a brand has to be distinctive in order to have trademark rights.  And it is going to be used by an individual a business, an organization or some other legal entity to identify products or services (goods or services) in the market.  So, it’s going to tell consumers who you are, and it’s going to give consumers confidence to know when they buy something from you, they, in fact, are dealing with you.

So, we’ve got different types of trademarks.  If it’s a common law trademark and you’re not registered yet, you can use the TM designation to say I’m claiming this word as my trademark.  If you are providing services as opposed to selling goods, you can use the SM designation.  And once you get registered with the trademark office, you can use the circle ®, which not only tells someone that you’re claiming a trademark, but also that it is registered and you are going to protect it to the nth degree.

A trademark can be a word or a name, it can be phrase or a slogan, it can be a design or a logo or an image, and all these things can be protected as trademarks. And, of course, if you own a trademark and someone is using something that is confusingly similar, the owner of the trademark can sue for trademark infringement, can send a threat letter alleging trademark infringement, this type of activity is very, very common.  So, obviously, there are lots of trademarks out there and many of them are very familiar to all of us. So, if we get into this little image here, you’ll recognize a lot of these trademarks, right?  You’ve got Coca-Cola, you’ve got Christian Dior, you’ve got Google, these companies have the exclusive right to use these names, these words and the designs that you’re seeing here in commerce and no one can use something that’s confusingly similar.

Keep in mind that trademarks are protected beyond the literal word or the literal design; it really is anything that it is similar.  So, if you were to take a look at Levi’s here.  If you were to start a jean company and use a red logo that was vertical that used this block style of letters, even if you picked a different word altogether, you might be the subject of a threat letter for trademark infringement from Levi.  If you’re software or hardware vendor and you used an Intel type logo or deign for your brand, you might get a threat letter, even if you pick a different company.  And if you are Canon and you’re in the photography and printer business and someone else tries to register a trademark or use a trademark that is Cannon or Cannin, you’re probably going to get a trademark infringement threat letter because trademarks are broader than the actual use of the word and the actual design; they protect around designs.

So, at www.traverselegal.com, we’ve got a lot of information about trademarks.  We encourage you to go to our website and take a look around.  We have everything there that you need to know in order to determine how to register a trademark, to understand what a trademark is, and how to protect or license your trademark.

The key items that I want you to take away for today are that IP (intellectual property) contains a lot of different elements, but if you have intellectual property, whether a copyright, a patent,  a trade secret or a trademark, you have the exclusive right to use that in commerce.  That means you can stop other people from using things that are, in fact, similar.  The other concept I want you to take away today is that a trademark is a name, a phrase, a symbol or design that designates who you are and tells the world your name.  You need to protect it and you need to establish it; you need to grow it as an asset.

My name is Trademark and Intellectual Property Attorney Enrico Schaefer and we will see you next time.  Have a great day!

You have been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

Welcome to Trademark Law Radio, my name is Trademark Infringement Attorney Enrico Schaefer.  I work for a law firm that specializes in all trademark matters, trademark law, trademark registration, and, of course, trademark licensing and trademark infringement.

Today, we are going to be talking about trademark infringement.  It is obviously a hot topic because the internet makes trademark infringement very easy.  It’s as easy as creating a website or domain name and then allowing someone to infringe on it by registering a similar domain name or using your trademark in their web page.   And let’s face it, in today’s world, trademark infringement is rampant and you need to protect your trademark, especially if it’s registered, if, in fact, you are going to build value around that trademark.

So, the first thing that we’re going to talk about is really, what is trademark infringement.  So, let’s talk about the “what,” and then we can talk about what to do in terms of protecting your trademark.

Trademark infringement is the violation by a third party of the exclusive rights of the trademark owner, who has the exclusive use rights with regards to that trademark in commerce.  So, it is violating the exclusive rights of the person or company that owns the trademark and it implies that there is no authorization by the third party to use the mark.  That is to say, no permission has been granted.  And infringement actually occurs when someone uses a mark that is identical.  Those are the easy ones, right? If I tried to launch a company called Microsoft selling software, I’d be in deep trouble.  The more challenging aspect is that infringement occurs when someone uses a mark that is confusingly similar to your mark, okay?  And so, someone uses something that’s close but not quite the same, then, in fact, there may be a trademark use without authorization of the trademark owner.

Now, we need to talk a little bit about what is confusingly similar.  This obviously is the most challenging aspect of trademark, and it is trying to determine what, in fact, is trademark infringement when two people are using a similar mark but not quite the same or using a mark in different markets (one person selling wine, the other person is selling beer).  This concept of trademark infringement is typically something that does require a trademark attorney who specializes in trademark law because of this challenging concept:  what is a confusingly similar trademark?  It’s not going to be trademark infringement unless, in fact, someone’s using something that’s confusingly similar.

Okay, so, let’s talk a little bit about goods and services.  If you are selling a particular good, let’s say, t-shirts or a particular service, let’s say, consulting service, then you’re going to compare your mark to the third party’s use of a similar trademark and you’re going to compare what goods are you selling versus what goods are the other person selling.  What service are you providing compared to what service the other person is providing.  If you are selling something that is in the same market, for example, if you’re both selling running shoes, if you’re both selling widgets, if you’re both selling machines that do a specific item, then there’s going to be a much higher likelihood of confusingly similar marks.  If you are providing a service and you have a registered trademark for your service or a service mark and you’re both offering accounting services, then there is going to be higher likelihood of confusingly similar use of the marks, a confusing similarity.

So, let’s talk a little bit more about this notion of confusing similarity.  The first thing you need to know is that in many countries you do have to have a registered trademark in order to assert trademark rights.  In the United States, you do not have to have a registered trademark in order to assert trademark rights.  You can have what are called “common law” rights.  So, it’s always good to register your marks in every country in which you’re doing business, but it’s certainly especially important to outside the United States.  So, again, let’s take a look at what are the factors that are going to go into confusing similarity.  Let’s talk a little bit about some important ones.

When you’re trying to determine whether or not a third party’s use is confusingly similar to your trademark, you’re going to look at, number one, the strength of your mark.  And what do I mean by that, “The strength of your mark”? Well, Microsoft has got a very strong mark because everyone in the world knows who Microsoft is.  It’s a very unique word (Microsoft).  It’s a very arbitrary word to attach to a trademark, which means if you hear the word Microsoft, you’re automatically going to think of a single company, that being Microsoft Corporation.  So, there are a lot factors that go into strength, but in general, for today, you’re mark is strong if it is unique and it is well-known.  So, a strong mark is going to have broader protection.

The second factor we’re going to talk about is the proximity of the goods or services.  And that’s something that we already touched on.  If you are offering a particular good and the person you believe is infringing is in the same or similar market, then there is a greater likelihood of confusion.  Let me give you an example.  There’s Delta Faucets and there’s Delta Airlines.  They both co-exist as trademarks and no one thinks that one company is the other company or that Delta Faucets has anything to do with the ads they see running for airline services.  So, you can have the exact same trademark in different markets and that can be okay because there is a low likelihood of consumer confusion.  And keep in mind, we’re really talking about from a consumer perspective here.  Is a consumer going to be confused about the source and origin of the goods.  When I buy a product that has got the word Nike attached to it, I have the right as a consumer to believe and to know that that product, that shoe, was actually manufactured by Nike and not some other company.  So, we’re trying to protect consumers here.

Let’s talk about another factor that goes into whether or not a trademark use is confusingly similar.  And that’s the similarity of the marks.  That is going to be an interesting issue it depends on how long and how unique the word is.  So, if I have a company called Apple Computers and I’ve got a registered trademark for that, that’s great.  Well, what if I’m a company that’s going to launch as Apel computers, what do you think?  Are those confusingly similar words?  The answer is, yes, because the trademark office protects around the trademark.  So, think of it this way.  It’s much broader than the literal word.  Trademarks protect around the word.  And the greater trademark rights you have, the broader the circle is around the word.  Apple, Microsoft, some of these companies have extremely broad trademark protection.  But trademark are, in many instances, phonetic, so the trademark office would see Apple and Apel as virtually identical, if not, identical uses of the word.  So, you’re not focused on the spelling, you’re focused on the phonetics, and you’re focused on whether or not a consumer in seeing the word or hearing the word would be confused, that’s always the test.

Okay, let’s talk about a forth factor here.  The forth factor is has there been actual confusion?  If consumers are actually confused and they’ve contacted you saying, “hey, where is my widget that I ordered?”  And you say, “Well, what’s your name…what’s your address…” and you realize this person has never placed an order with you and then you, upon further questioning, realize that this consumer was really dealing with another company with a similar name, then that, in fact, is actual confusion.  And that is always the best evidence of infringement that there is because consumers weren’t likely confused, they, in fact, were confused.

Let’s talk a little bit about marketing channels.  There’s a lot of factors here because there’s a lot of different ways that trademarks can differentiate themselves in the market.  If you are selling fish sticks and you’re distributing them only over the internet, then it’s less likely that someone with a similar trademark who sells fish sticks in the grocery store is going to result in confusion or actual confusion or a likelihood of confusion.  If you sell fish sticks and the other person sells wholesale fish, they’re less likely to be confusion, even though you’re both selling fish.  So, these are always fact-specific questions, but you want to know how are you selling your goods or services versus how is the alleged infringer selling their goods and services.

The next thing is the type of goods, what is the degree of care that a consumer is likely to exercise in the market?  So, some goods, on very casual inspection, are assumed to be sold by the particular brand owner.  We spend a lot of time researching and buying certain goods such as, for instance, you might spend a lot of time trying to figure out what’s the right car to purchase.  You are going to spend a lot less time picking ketchup off of the shelf.  So, you need to look at what is the consumer experience with regards to this market.  How much time and care do they actually spend in looking at the brand to determine whether or  not they are actually getting what they think they are getting?

Another factor is “intent.” Sometimes, the person who is using a similar mark is, in fact, intending to siphon off your customers. And so, If they are intentionally infringing on your trademark, then that is going to be a very big factor in your favor in proving trademark infringement.

The last factor, which is really not the last factor, because they could look at lots of other things, but the last thing that courts will almost always look at is whether or not there’s going to be a product line expansion.  Oftentimes, the trademark in question – the infringing use of the trademark – is something that’s not quite in your market.  But if you are likely to expand into that market or a similar market in the future, then it makes it more likely that the court is going to grant you exclusive rights and find trademark infringement.

So, these are the types of things that you want to look at if you have been the victim of trademark infringement and you’re trying to determine what to do and whether you have a trademark infringement claim. Or, if you’ve been falsely accused of trademark infringement or accused of trademark infringement in a way that gives you pause.   these are the types of factors you want to be thinking about in determining whether or not you are, in fact, infringing on someone else’s trademark. These are the things that a court under trademark law is going to look at in order to determine whether or not there is trademark infringement.

You have been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

Welcome to Trademark Law Radio.  My name is Trademark Attorney Enrico Schaefer and today we are going to be talking about name and brand protection.

If you are going to start a new company, launch a new product, a new service, a new slogan or new logo, you are going to need to protect that.  And what I mean by protect the logo, the name or the mark, is that you want to be the only one in the world that can use that brand that you have picked for your company or product or service.  You want to be the only one in the world that gets to use that for your goods and services.  So, if you are a faucet company and you are manufacturing kitchen sinks and similar things, you want to be the only one who gets to be Delta Faucets.  If you are an airline, you want to be the only one that gets to be Delta Airline.  Now, Delta Faucets and Delta Airline could co-exist in the trademark world because no one is likely to be confused about who is who.

In terms of name and brand protection, there are two levels of protection.  One, there is common law protection.  Two, there is trademark registration which gets you some super protection.

There are two different types of marks you can protect.  There is a trademark. And a trademark is for goods, products, tangible things that you can sell.  This is what we normally think of when we talk about brand protection, but you should know that if you happen to sell services, then you actually would be getting a service mark as opposed to a trademark.  So, if you are a consultant, an accountant, a lawyer, or a doctor or you sell your own intellectual property, your own ideas, your own assistance and help in the service market, then you are going to be service mark.

Now, what you want to do is make sure that you tell the world that you are claiming exclusive use over this particular mark, whether it is a trademark or service mark.  So, if it is good (a product), you are going to use the TM for trademark and you are going to add that to the right and top of your word, symbol or logo.  So, in the case of Microsoft, you would add TM to the right of Microsoft™.  That would tell the world that that you are  Microsoft and you are claiming trademark rights in this word, in this design, in these colors, in this logo, etc.  So, TM designates trademark and it designates essentially a common law trademark, meaning you have not achieved the circle R (®)yet. You are not registered, but you still are claiming trademark rights.  The goal is to get registered and get that circle R, but you got to get through the trademark registration process with the USPTO or a foreign trademark service in order to get there.  So, always add the TM to your trademark while you are going through the registration process.  And even if you are not going to get registered, you should add a TM for your trademark in order to tell the world you are claiming exclusive rights to this word.

If you happen to be a service company like Quicken that offers consulting services for loans or loan service, then they would use an SM for service mark and telling the world that they claim exclusive rights over this mark and we provide services.  So, Quicken would use the SM.  Now, obviously, all of these companies, Microsoft, Intel, and Quicken have a registered trademark, so they would go directly to the circle ® to tell people that they have a registered trademark, and they would put that ® in place of the TM or SM (Microsoft®, Intel®, and Quicken®).  So, that is what you need to be thinking about in terms of telling the world, and providing notice to the world, that you are claiming trademark rights.

Understand that if you get registered, you get a number of tremendous benefits that provide you the leverage you are going to need in order to protect your trademark.  That really is the Holy Grail of name and brand protection, to get the circle ®.  The registration process usually takes around 12 months.  A good trademark attorney can get your trademark through the trademark registration process in about 12 months and you can then start using the circle ®, after registration, next to your trademark telling the world I claim exclusive rights and, in fact, I am registered.

So, let’s talk about some of the benefits you get if you are registered.  You get a presumption of validity that people can’t necessary attack your trademark.  You get a presumption that you are first.  You get super rights for anyone who engages in intentional infringement.  You definitely get a lot of benefits.  If you are going to send someone a trademark infringement threat letter, you want to be registered.

Before you file for trademark registration, you need to understand that you already have common law rights.  Now, common law trademark rights allow you to claim first use, allow you to send a trademark infringement threat letter.  If you put the TM in there, you are providing notice; all that is good.  But, understand that before you file, you still  have trademark rights.  And in the United States, under the USPTO law, it’s still the first person to use the mark in commerce that is the one that is going to have the first common law trademark rights.

Now, let’s talk about picking a name. Picking a name is always an extremely challenging thing because you’ve got to pick a name for your brand or pick a name for your company.  So, go to your partners and start brainstorming.  Try to think of things that are non-obvious.  An arbitrary or suggestive trademark is much better than a descriptive one.  Everyone always wants to name their company after what they do, for example, Jones Consulting Service or Car Parts, those are terrible trademarks.  You want something that is arbitrary that could only mean you.  Find at least three names that you can all agree on that sound like they would  be a good brand.  Is it pronounceable? Is it something that people will remember?  Is it easy to spell?  Then, after you pick your three names, you are going to have to go back to your trademark attorney and you’re going to have to have them do a trademark clearance for those three names to see which, if any of them, is available in the market in your goods and services.  It could very well be that someone else is already out there using something similar, so let’s talk about that.

Trademarks are not literal. That is to say, that just because you pick a trademark and no one else is using that exact trademark, does not mean that there is not a trademark infringement problem.  If you were to pick Apple Fences for your trademark, chances are you could do that even though there is an Apple Computer, because no one is going to think that Apple Computers  is selling fences, so there’s no likelihood of confusion.  So, if you were to pick Apple,  and you were to say, “Well, I looked at Apple Fence and I didn’t see any other companies that are named Apple selling fences.”  But the trademark office – the examining attorney – is going to look at all kinds of variations of the word Apple.  He’s going to do Aple, Apel, Appal, and all kinds of variations because anything that is phonetically similar or sounds like it might be the same, might potentially infringe.

So, a good trademark registration attorney will know how to conduct a trademark clearance search in order to tell you what the risk is if you should pick that trademark for a brand.  You do not want to pick a word, a symbol or design only to find out three years later that someone else has prior use rights, prior trademark rights in that word, and now you have to rebrand.  You lose your entire investment in your brand and the cost of repackaging and rebranding is incredible.  So, the USPTO.gov is the website where you can learn a lot about trademark law, it’s certainly going to have a lot of guidelines and there are online forms.  One of the questions we always get is “do I need a trademark registration attorney in order to file my name?” and the answer is no, technically, you don’t.  But it sure is a good idea because there are a lot of fields that have to be filled out and a lot of things that have to happen. For instance, your trademark clearance, none of that happens at the USPTO level.  If you don’t do a trademark clearance before registering, you could have a problem

My name is Trademark Attorney Enrico Schaefer and that’s all for today on Trademark Law Radio.

You have been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Thankfully, this is one of the easiest parts of the application. But don’t relax too much; it is critical that you complete this section correctly.

The depiction of the mark you submit now is what will appear on your registration certificate once the application process is completed. And remember: you cannot add or subtract words and designs to the mark throughout the process, except in very rare circumstances. So, the mark you submit now is what will register later. And you want it to look perfect, right?

Before we talk about some of the important issues in this section, you should know a quick definition. Sometimes you will see official documents that refer to a mark “drawing.” Don’t be alarmed; there’s no sketching involved… The word “drawing” merely refers to a “depiction of the mark.”

A mark may appear as a Standard Character mark or as a Special Form mark.  A Standard Character mark is the most flexible of all mark depictions.  It grants protection to the wording itself, without regard to the font, style, size, or color.  Although the mark looks like plain typed wording when registered, a Standard Character mark means that you can change how you display the wording over the life of the trademark.  Not bad for a simple looking mark, right?

A Special Form mark, on the other hand, is a mark that comprises special characteristics, like fonts or designs or colors.  Special Form marks can be broken down into two categories: Stylized marks and Design marks.  A Stylized mark is a mark in which the wording appears in a particular font.  A Design mark can be a composite mark, in which you protect wording that is combined with a design.  Or, it can be a mark comprised of design elements alone.

Remember, then, to submit a Special Form drawing when you want trademark protection for a particular design, stylization of wording, or combination of the two.  If you want protection for wording alone, without regard to font, style, or color, the Standard Character format might be the one for you.

When submitting a Special Form drawing, you must also comply with additional requirements.  After uploading the mark image, you will see a field for entering the “literal element.”  This field is used to indicate all of the words that appear in the attached mark image.  Do not use this field to add words, letters, or numbers that do not appear in the attached image.  The submitted image must be complete and depict your entire mark.  Then, you must submit a complete description of the mark.  It can be simple and very straightforward.

If the mark is in color, you must claim each of the colors in the mark and indicate the location of each of the colors within the mark.  Be sure to be complete and precise.  If you do not wish to claim any particular colors, simply submit a depiction of the mark in black and white and indicate that no colors are claimed.

Because of all of the additional requirements and limitations created by color Special Form marks, most applicants apply either for Standard Character marks or for Special Form marks that appear in black and white.  This allows them the greatest flexibility in use of their marks as their businesses grow and change over the years.

I know that’s a lot of terms and information, so feel free to replay this video.  And look for more videos and links to information throughout the website.

I’m Sandhya Mahajan, Trademark Information Network.

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MARK TRADEMAN, TMIN NEWS ANCHOR:
Congratulations on the registration of your trademark! You’ve probably invested a lot of time and money into getting this registration, so don’t forget to take the actions necessary to protect your valuable asset.

Trademark rights can last forever, but in order to keep your federal trademark registration you must continue to use the mark in commerce and file the required maintenance documents at regular intervals. The first maintenance document must be filed between the 5th and 6th years after registration and the remaining documents must be filed between the 9th and 10th years after registration, and then every 10 years thereafter. We’ll talk more about that in a moment, but be aware: Failure to file these documents will result in the cancellation, or loss, of your federal registration.

Nobody wants that to happen, so keep it right here and we’ll let you know what you need to do to keep your registration alive.  To help us along, let’s check in with Grant Gainsworth, our Senior News Analyst, and one of our usual featured guests, Professor Christina Graham-Lawson.  Thanks to you both.

GRANT GAINSWORTH, TMIN SENIOR NEWS ANALYST:
Of course.

CHRISTINA GRAHAM-LAWSON, PROFESSOR LAW:
Happy to help!

TRADEMAN:
Grant, you’re the Office expert; let’s start with you.  In order to keep their registrations alive, what do our viewers need to do?

GAINSWORTH:
Well, the first thing you need to do is look up the trademark’s Date of Registration.  The due dates of your post registration maintenance documents are calculated from that date, so you need to know what it is.

TRADEMAN:
And where do you find that date?

GAINSWORTH:
The easiest place to find it is on your actual registration certificate.  Or, if your paper certificate isn’t handy, you can access a digital copy through the USPTO database.

TRADEMAN:
Alright, folks.  Feel free to pause this broadcast while you look up your Date of Registration; sounds like you’re going to need it.  We’ll wait…

And when you’re ready, I’ll ask the professor for an example of how to calculate when the post registration documents are due.  Professor?

GRAHAM-LAWSON:
Let’s say your trademark registered on April 15th, 2010.  Add 6 years for the due date of the first maintenance document: April 15th, 2016.  Ten years for the second: April 15th, 2020.  Then ten years for the third: April 15th, 2030.  And so on.

The great part is that you don’t have to wait until the last day of the filing window to submit your forms.  In fact, you can file up to 1 year before the documents are due.  So, the windows for filing actually look like this.

TRADEMAN:
What happens if you miss your filing deadline?

GRAHAM-LAWSON:
Well, it depends on when you discover that you missed the deadline.  If it’s within 6 months of the due date, you can take advantage of the grace period and file your maintenance documents, along with a filing fee and a grace period surcharge.

If you miss both the deadline and the grace period, you’re out of luck.  Your registration will expire or be cancelled and there is no opportunity to revive the registration.  At that point, you will have to start all over again and file a brand new application.

So, make sure to set a reminder for filing your maintenance documents.  To keep your registration alive, you must meet your deadlines.  And the Office does not issue reminders about when the documents are due.

TRADEMAN:
Quick follow-up here, because we get this question a lot from our viewers.  If your registration expires or is cancelled, does that mean you’ve lost your trademark?

GRAHAM-LAWSON:
Not necessarily.  You might still have rights in the mark, but you have lost the powerful nationwide protection that a federal registration creates.

TRADEMAN:
OK; thanks.  So, what are these post registration documents that must be filed?  Grant?

GAINSWORTH:
The document due between the 5th and 6th year after registration is the Section 8 declaration.  This is a sworn statement that you are continuing to use the mark in commerce for each good or service listed in the registration, and it must include a specimen of use and a filing fee.

TRADEMAN:
Now, what do you do if you are not using the mark for each and every good or service listed in the registration?

GAINSWORTH:
If you are not using the mark for specific goods and services, you must delete those items from the registration.  The only exception is if special circumstances exist that excuse your non-use of the mark.  It is not always easy to make that claim, however, as you must provide both evidence and an explanation to support the excusable non-use claim.

TRADEMAN:
OK.  And to clarify, when you say “specimen,” is that the same type of specimen that’s required during the application process?

GAINSWORTH:
It is.  The same concepts apply here: a “specimen” shows how you use your mark in commerce.  It could be a label, a tag, or a container if you registered your mark for goods or an advertisement if you registered your mark for services.

TRADEMAN:
Alright.  And, remember, folks, if you need more information about specimens or just want a refresher, be sure to watch the specimens news broadcast which provides examples and explanations of acceptable submissions.

Now, Grant, what about the second document that’s due?

GAINSWORTH:
The document due every ten years after registration is the Combined Sections 8 & 9.  As you might guess, the filing includes the Section 8 declaration and, in addition, a Section 9 request for renewal of the registration.  The Section 9 filing calls for a signed request for renewal and a filing fee.

TRADEMAN:
And those are mandatory filings, correct?

GAINSWORTH:
Correct.  Failure to file the Section 8 declaration when it is due and the Combined Sections 8 and 9 form when it is due will result in the cancellation of your registration.

TRADEMAN:
Important to keep in mind.  Now, Professor, I understand there is an optional, but highly beneficial, form that applicants can file.  Can you tell us a little about it?

GRAHAM-LAWSON:
Certainly, Mark.  The Trademark Act allows for registered trademarks to become “incontestable” by filing a Declaration of Incontestability.

TRADEMAN:
And what exactly does that mean?

GRAHAM-LAWSON:
Well, essentially, an incontestable trademark registration is one that has an extra layer of protection against challenges.  Once a registration becomes incontestable, another party cannot challenge the ownership of the mark or argue that the mark should not have been registered.  There are exceptions, of course, such as registrations obtained fraudulently or marks that have been abandoned, but overall, it means your trademark is very well protected.

TRADEMAN:
Sounds like a good way to reinforce your rights.

GRAHAM-LAWSON:
It is.  And that’s why so many trademark owners claim incontestability for their marks.  It limits the types of challenges that may be made against a registration, reducing the likelihood of the loss of that registration.

TRADEMAN:
OK, so what do viewers need to do to claim incontestability for their marks?

GRAHAM-LAWSON:
Like most legal filings, there are several criteria that must be met.  The mark must be registered on the Principal Register, it must have been in continuous use in commerce for a period of 5 years after the date of registration, and there may not be any adverse decisions or pending proceedings involving rights in the mark.

TRADEMAN:
Now you said incontestability is only available for marks on the Principal Register.  Does that mean marks on the Supplemental Register are not eligible?

GRAHAM-LAWSON:
That’s correct.

TRADEMAN:
And if some of our viewers don’t remember the Register on which their marks are registered, is there a place they can look up that information?  Is that also on the Registration Certificate?

GRAHAM-LAWSON:
It is.  In addition to showing the Date of Registration, the Registration Certificate indicates whether the mark is on the Principal or the Supplemental Register.

TRADEMAN:
OK; great.  So, that’s the basic rundown of the required and optional post-registration documents: Sections 8 and 9 are required; Section 15 is optional.

Now that we have an understanding of what the documents are, we need to know how to file them.  For that, we turn to our Investigative Reporter, Sandhya Mahajan, who has some breaking news about a common mistake to avoid.  Sandhya?

SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
If you’ve gotten this far in the registration process, you’ve probably encountered the Trademark Electronic Application System, or, as it’s more commonly known, TEAS.  T-E-A-S.  TEAS is the electronic filing system that allows trademark applicants and registrants to file their paperwork over the Internet.  It’s all available through the USPTO.GOV website.

And, according to my sources here at the Office, TEAS is the best way to file your post-registration documents.  If you could put it up on the screen there…

You can see the Combined Sections 8 and 15 form, the Combined Sections 8 and 9 form, plus the individual Section 8 and Section 15 forms, if you need to file them separately.  All the relevant forms are right there in one place.

TRADEMAN:
Excellent.  And what about the common mistake that registrants can avoid?

MAHAJAN:
Right.  I spoke with several senior officials here and they indicated that one of the biggest mistakes made by registrants is a failure to update their Ownership information.  And, before I tell you how to update your information, let me tell you why it’s important:

Section 8 and Section 9 documents must be filed by the current owner.  If the documents are not filed by the proper owner, the documents may be refused and the registration could be cancelled. So it is imperative that you keep your information up to date.
When you open one of the registration maintenance document forms in TEAS, you’ll see that the Owner of the Mark field is automatically filled in with the most recent Owner of the Mark information found in the USPTO database.

Double check that field and make sure that the Owner of the Mark information is accurate.  If what’s listed is not correct, read and carefully follow the instructions provided on the form.

Typically, old or outdated information in the USPTO database is caused by a registrant failing to notify the Office of a change in ownership of a trademark.  It may be because the business changed its name, was sold, or for some other reason.  You can fix the discrepancy by filing an assignment or a “change of name” document through the USPTO’s Assignment Division.  The form for doing so is also available on the USPTO website.

TRADEMAN:
OK.  Good to know.  Thanks, Sandhya.

MAHAJAN:
Sure thing, Mark.

TRADEMAN:
So, remember, use the TEAS forms on the USPTO.GOV website to file your post-registration documents electronically and, before you submit them, make sure that the Ownership information correctly reflects the current owner of the mark.  Otherwise, your registration could be cancelled.

In addition, make sure all the other information in your filing is accurate.  For example, if goods or services currently identified in the registration are not in use, they should be deleted from the registration when you submit your filings.  Otherwise, someone could challenge your registration because it contains goods and services that are not in use.

Grant?  Christina?  Anything else you’d like to add in our remaining minutes?

GAINSWORTH:
I’d like to tack on to what Sandhya said and remind people that, in addition to your Ownership information, you should also keep your Correspondence information up to date.  That way, the Office can contact you, if needed.

GRAHAM-LAWSON:
And I’d recommend contacting TAC if you have any questions.

TRADEMAN:
TAC.  That’s the Trademark Assistance Center, correct?

GRAHAM-LAWSON:
Correct.  They can’t provide legal advice, but they can answer general questions about the trademark process and give guidance on the type of information to include in a form.

TRADEMAN:
Anything else?

GRAHAM-LAWSON:
I’d say, while you have your registration certificate handy, jot down when your filings are due on a calendar.  Set an electronic reminder.  Or post the due dates in a place where you’ll see them.  A lot can happen over 6 to 10 years; it’s easy to forget.
GAINSWORTH:
And remember, if you to fail to file the required maintenance documents, your registration will be cancelled.  After the grace period provided by law, there is no additional time for late filing.  And, unlike an abandoned application, you cannot revive your registration.  Unfortunately, your registration will be dead and you’ll have to begin the application process all over again.

TRADEMAN:
Serious stuff.  Thanks to you both.

GAINSWORTH:
Sure.

GRAHAM-LAWSON:
Thank you.

TRADEMAN:
You worked hard to get your registration, so work hard to keep it alive.  The Office will not be sending you reminder notices, so be sure to set that reminder now to file these maintenance documents later.  The continued life of your registration depends on it.

And, as always, feel free to replay this broadcast at any time and check back on USPTO.GOV for more information.

For Sandhya Mahajan, Grant Gainsworth, and Professor Christina Graham-Lawson, I’m Mark Trademan, Trademark Information Network.

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