Category: Trademark Law

How To Choose a Good Trademark

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Trademarks are primarily words, logos, or combinations of both that are used to distinguish your goods and services from those of others. Federal trademark registration helps prove your ownership of the trademark and can prevent competitors from around the country from using confusingly similar trademarks. Consider these guidelines in choosing your trademark.

1.   Select a word or logo that is not descriptive of your goods or services. Made up words, such as Xerox and Exxon, are the strongest trademarks. The next strongest are real words (such as foods, plants or animals) that have nothing to do with the goods or services; one example is Apple for computers. Marks that simply describe the goods or services, such as Shoes for selling shoes, are not registerable and should not be used. Trademarks generally operate as adjectives, not nouns, so that a trademark owner will say it makes “Xerox laser printers,” not “Xeroxes.”

2.   Try to avoid using common terms. You want to select a trademark that will help you stand out and using common terms in your trademark, such as Best or American, are less memorable.

3.   Do not use surnames, such as Jones or Smith, in your trademark, because they are generally not registerable. This is especially true where the rest of the mark is descriptive, such as Smith’s Shoes to sell shoes.

4.   Do not use geographic locations, such as Italy, in your trademark because they are generally not registerable.

5.   Avoid short acronyms and numbers. While there are a few well known acronyms, such as IBM, they are usually hard for people to remember. It will also be very hard to get a .com domain name for a three or four letter acronym.

6.   Once you have selected a trademark, check to see if similar words or logos have already been registered (you can check http://tmsearch.uspto.gov to search federal registrations) or are already being used in the marketplace (you can search Google) for similar goods. Remember to also search for slightly different spellings. You cannot register a trademark that is confusingly similar to an already registered mark and there are risks of using a trademark that is confusingly similar to others already in the marketplace. Just because something is spelled different doesn’t mean it’s ok to use it. Whether something is confusing is determined by the “sight, sound, meaning” test.

If no confusingly similar marks are found, then check to see if domain names are available for your mark.

For more information about selecting a good trademark, please contact the offices of Karish & Bjorgum at (213) 785-8070.

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June 29, 2020
Supreme Court Clarifies Law on Trademark Infringement Damages

On April 23, the United States Supreme Court issued an opinion that significantly changes trademark infringement damages. The case is Romag Fasteners v. Fossil. Under the law (15 U.S.C. §1117), a victim of trademark infringement (the plaintiff) can recover: (1) the infringer’s profits, (2) the victim’s own damages caused by the infringement, and (3) the costs of the lawsuit. However, there was a split of authority among the various appeals courts about whether the plaintiff had to prove that the infringer acted willfully to be awarded the infringer’s profits. The Supreme Court held that a plaintiff does not have to prove willful trademark infringement to be awarded the infringer’s profits.

Although judges have some discretion in awarding damages, this decision will likely make it easier for plaintiffs to get an infringer’s profits even in cases of innocent or negligent infringement. Also, it is often difficult for plaintiffs to prove their own damages caused by infringement. The increased ability to get an infringer’s profits will likely increase the amount of damages awarded. This may in turn lead more plaintiffs to file lawsuits.

April 24, 2020
U.S. Attorney Now Required On All Trademark Applications

On July 2, 2019, the U.S. Patent and Trademark Office announced a new rule requiring all foreign trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States. “The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.”

The requirement is aimed at combating fraud by foreign citizens interacting with the USPTO. Disciplinary measures against foreign lawyers and parties are typically limited. The USPTO is hoping that the threat of discipline to U.S.-licensed attorneys will force those attorneys to police their foreign clients and prevent fraud.

This new trademark rule takes effect on August 3, 2019. At Karish & Bjorgum, we regularly practice before the U.S. Patent & Trademark Office and handle all phases of domestic and international trademark prosecution. If you are in need of a U.S. attorney to represent you, feel free to contact us.

More information on this new rule can be found here: https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us

August 7, 2019
USPTO Trademark Expedited Cancellation Pilot Program, a New, Quicker Way to Clear the Register

Many of those who try to register trademarks in the US quickly discover that things are already crowded on the US Trademark Register, making it difficult to find and then register word marks. While some of this is due to a healthy business environment, much is also due to companies and individuals filing for and obtaining registrations that include goods and services not actually used in interstate commerce.

The Trademark Office largely relies on the honesty and integrity of trademark owners, and when this doesn’t happen, there are serious repercussions. Indeed, in a recent random audit, the USPTO found that over half of active trademark registrations include some goods or services for which the registered mark is not actually being used. This unfairly blocks new users from obtaining their own registrations.

To partially address this problem, in November 2017 the USPTO begun to conduct random audits of post-registration maintenance filings. As a further response, the Trademark Trial and Appeals Board (TTAB), which handles oppositions and cancellation actions, began a pilot program in 2019 to explore the effectiveness of an expedited cancellation proceeding for challenges to registrations of allegedly unused marks.

Under this pilot program, the TTAB identifies newly filed cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures. The standards of proof in an ACR proceeding remain the same as those in a traditional proceeding, and a final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions.

Once an Answer is filed by the trademark owner/respondent, the TTAB will invite the parties to participate, and if they agree, an assigned TTAB Interlocutory Attorney and an Administrative Trademark Judge will participate in the mandatory discovery conference. In addition to the usual subjects covered during a discovery conference, these conferences explore potential stipulations of fact, evidentiary stipulations, ways to limit discovery, and the possible use of the “summary judgment ACR model” to abbreviate the proceeding by having the Board treat summary judgment motion filings and accompanying evidence as the final record and briefing and decide disputed factual issues.

The TTAB makes every effort to issue final decisions in ACR cases within 50 days once they are ready for decision. By reducing the length and complexity of the case, ACR provides a more efficient and economical alternative to the traditional full cancellation proceeding, thus offering to save the parties a lot of time and money compared to a traditional cancellation proceeding.

February 7, 2019
Beware – False Marking May Cost You Big

In its decision on December 28, 2009 in The Forest Group, Inc. v. Bon Tool Company, the Federal Circuit clearly set forth the standards and possible penalties for false marking (placing a patent number on a product when the product is not covered by that patent).

False marking is covered under 35 U.S.C. §292. Pursuant to §292, a false marking claim consists of (1) marking an unpatented article with (2) intent to deceive the public. See Clontech Labs. Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005). “Intent to deceive is a state of mind arising when a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true.” ld.(citing Seven Cases of Eckman’s Alterative v. United States, 239 U.S. 510, 517–18 (1916)). A party asserting false marking must show by a preponderance of the evidence that the accused party did not have a reasonable belief that the articles were properly marked. Id. at 1352–53. An assertion by a party that it did not intend to deceive, standing alone, “is worthless as proof of no intent to deceive where there is knowledge of falsehood.” Id. at 1352.

Once it is clear that a product is not properly marked, the analysis comes down to whether the defendant had intent to deceive. The court looks to such Factors as: how obvious it was that the product was outside the patent claims, whether the defendant was advised by patent counsel to mark the product and the educational level and sophistication of the defendant. Proving intent to deceive may be difficult in situations where the scope of the claims has not been interpreted and the product is close to the claimed language. However, in circumstances where knowledge of falsehood is clear, defendants may be face hefty fines in suits that can be brought by any member of the public.

In The Forest Group, Inc. v. Bon Tool Company, the Federal Circuit was asked to opine on whether §292 intended a fine for the entire act of false marking not to exceed $500 regardless of the number of falsely marked products or whether each falsely marked product could be assessed a fine of up to $500. The Federal Circuit held that each falsely marked product could be assessed a fine of up to $500 even though prior courts had reached a contrary result, mostly because the wording of the statue was changed over time. The Court pointed out that the statute clearly intended this measure of damages, that a fine not to exceed $500 regardless of the number of falsely marked products would clearly eviscerate the statute, and that policy considerations support the per article interpretation of §292.

The policy considerations pointed out by the Federal Circuit include: “that acts of false marking deter innovation and stifle competition in the marketplace”; that “[i]f an article that is within the public domain is falsely marked, potential competitors may be dissuaded from entering the same market”; that “[f]alse marks may also deter scientific research when an inventor sees a mark and decides to forego continued research to avoid possible infringement”; and that “false marking can also cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product with which a competitor would like to compete.” The Court noted that the injuries occur each time an article is falsely marked, and that the more articles that are falsely marked the greater the chance that competitors will see the falsely marked article and be deterred from competing.

The Forest Group argued that interpreting the fine of §292 to apply on a per article basis would encourage a rash of false marking litigation by plaintiffs in qui tam suits who had not suffered any direct harm. The Federal Circuit held that such suits were explicitly provided for and encouraged by 35 U.S.C. §292 so that individuals can help control false marking. The language of 35 U.S.C. §292(b) states that “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.” The Court noted that a maximum fine of $500 for the entire act of false marking regardless of the number of falsely marked products would not provide sufficient financial motivation for plaintiffs in qui tam suits.

However, before you run out and bring a bunch of qui tam suits for false marking you should note that a court does not have to fine at a rate of $500 per article marked. The Federal Circuit held that 35 U.S.C. §292 provides for a maximum of “not more than $500 for each such offense” thereby allowing for a range of fines. The district courts should “balance encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.” The Federal Circuit did not provide a list of factors for district courts to use in determining the appropriate fine per article falsely marked. However, the Federal Circuit noted that in case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.
In The Forest Group, Inc. v. Bon Tool Company, the false marking claim was brought as a counterclaim by a defendant accused of patent infringement. Clients accused of patent infringement should carefully evaluate whether a counterclaim for false marking is warranted.

Additionally, clients who believe a product in the marketplace is falsely marked should consider action to put the producer and seller of the article on notice of the false marking. In situations where the producer and seller are clearly aware that the article is falsely marked, then a qui tam suit may be justified.

Karish & Bjorgum, PC is a full service intellectual property law firm specializing in intellectual property litigation in the federal and state courts. We help our clients protect the names of their businesses and their products and the ideas behind them.

September 23, 2018
What is a trademark?

A trademark is a word, name, symbol, or device, alone or in combination that is used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.

What is a service mark?

A service mark is any word, name, symbol, device, alone or in combination that is used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

Do I have to register my trademark or service mark?

No, but federal registration has several advantages.

What are the benefits of federal trademark registration?

1.   Constructive notice nationwide of the trademark owner’s claim;
2.   Evidence of ownership of the trademark;
3.   The federal courts may be used to protect the trademark;
4.   A U.S. registration can be used as a basis for obtaining registration in foreign countries;
5.   Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods; and
6.   The exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

Do I have to be a U.S. Citizen to obtain a federal registration?

No, but an applicant’s citizenship must be set forth in the application.

When is it proper to use the federal registration symbol “®”?

The federal registration symbol may be used ONLY once the mark is actually registered in the U.S. Patent and Trademark Office. The federal registration symbol should only be used on goods or services that are the subject of the registration.

Is a federal registration valid outside the United States?

No. However, if you own a trademark application pending before the USPTO, or a registration issued by the USPTO, then you may seek registration in other countries through the Madrid Protocol by filing an “international application”. Also, some countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.

Can the USPTO refuse to register a mark?

Yes. The USPTO will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
Additionally, federal codes recite several reasons for refusing registration, including:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional.

How long does a trademark registration last?

Trademark registrations can be renewed indefinitely, but a trademark holder has to file certain documents to maintain the trademark.

Can the ownership of a trademark be assigned or transferred from one person to another?

Yes. A registered mark, or a mark for which an application to register has been filed is assignable. Written assignments may be recorded in the U.S. Patent and Trademark Office for a fee.

What is a certification mark?

A certification mark is any word, name, symbol, device, alone or in combination that is used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

What is a collective mark?

A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

Karish & Bjorgum attorneys have years of experience filing trademark applications and working with the USPTO to obtain trademarks for our clients and we can help you.

September 23, 2018
Disclaimer Requirements: The Problem With Adjacent Descriptive Words

Many trademarks consist of two, three, or more words, with some words being “descriptive.” In these cases, the Trademark Office will require that such descriptive word(s) be “disclaimed” to make it clear that that trademark registrant does not have exclusive rights to such descriptive words apart from the trademark as a whole.

As an example, the owner of the three word trademark BONKA BIRD TOYS, for retail store services for pet toy, etc., had to disclaim “BIRD TOYS.” Likewise, the owner of the trademark STARBIRD PARROT TOYS, for pet toys, had to disclaim “PARROT TOYS”. This is not surprising as both BIRD TOYS and PARROT TOYS are clearly descriptive. Thus, if a third party filed for the marks BRIGHTEYE BIRD TOYS or LADDYBUCK’s PARROT TOYS, the owners of the BONKA BIRD TOYS and STARBIRD PARROT TOYS trademarks would not be in a strong position to oppose such new trademarks.

But what happens when a certain phrase consisting of two or more descriptive words, which hasn’t been used together before in the marketplace, is included in a trademark?

As a case in point, consider the trademark BALLISTIC COGNITIVE PREWORKOUT, for nutritional supplements. “PREWORKOUT” is a well-recognized type of nutritional supplement to be taken before a workout, and “COGNITIVE” describes an intended feature of the nutritional supplement- to help with improved cognition and focus during a workout. Yet, the phrase COGNITIVE PREWORKOUT is otherwise not a known term for these types of nutritional supplements.

Under the trademark rules of practice embodied in the Trademark Manual of Examining Procedure (TMEP) Section 1213.08(a)(i), the Trademark Office will nonetheless require a disclaimer of the entire phrase “COGNITIVE PREWORKOUT” in the mark BALLISTIC COGNITIVE PREWORKOUT because both words “COGNITIVE” and “PREWORKOUT” are descriptive and they are presented side-by-side.

TMEP 1213.08(a)(i) Standardized Printing Format for Disclaimer

Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and Trademark database purposes. The standardized disclaimer text is as follows:

No claim is made to the exclusive right to use “____________” apart from the mark as shown.

See 1022 OG 44 (Sept. 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm’r Pats. 1983) (“[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant’s rights.”).

For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common-law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter. Disclaimers with these additional statements can be entered by examiner’s amendment. The examining attorney must inform the applicant or attorney who authorizes the amendment that the disclaimer will be printed in the standardized format.

What if the trademark was COGNITIVE BALLISTIC PREWORKOUT instead of BALLISTIC COGNITIVE PREWORKOUT? It turns out that in that case, since the two descriptive words are separated by the non-descriptive word BALLISTIC, under TMEP 1213.08(a)(i), each of the “descriptive” words COGNITIVE and PREWORKOUT could be disclaimed separately.

Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:

No claim is made to the exclusive right to use “________” and “________” apart from the mark as shown.

While the “and” connector is preferred, the USPTO will also accept a statement that “no claim is made to the exclusive right to use “________” or “________” apart from the mark as shown.”

So, the pointer for trademark applicants is that when considering possible trademarks, it is best to separate possibly descriptive words with non-descriptive words to avoid having to disclaim two (or more) word combinations. If all things are otherwise equal, you are better off choosing COGNITIVE BALLISTIC PREWORKOUT instead of BALLISTIC COGNITIVE PREWORKOUT.

September 19, 2018