5 Times a Trademark was Stolen or Lost

Your Trademark Identity

Your trademark is the lifeblood of your business. It’s what your business comes to be known by, and it can consist of symbols, words or a word that is used to represent the company’s goods or services. Trademarks can be tricky for new business owners because there are both common law trademarks that utilize the ™ symbol, and then there are federal Trademark Law that utilize the ® symbol.

Federal trademarks have been registered legally, though, which means that although your business might have been utilizing a trademark longer with the ™ symbol, another business could come along and gain rights to your trademark if the owners apply to have it registered with the U.S. government and obtain registration. Although your business may have been the originator of the trademark, if the trademark was not officially registered, another company could obtain it for use in geographic areas outside your use, and essentially “steal” your trademark. This is why it’s extremely important to ensure that you understand trademark law and seek the assistance of a trademark attorney like those found at the Law Office of Jeff Williams in Texas.

Plenty of instances exist during which companies lost their trademarks because the owners didn’t take the opportunity to appropriately register it with the federal government.

1. Around the World in 80 Jobs

In 2012, a man named Turner Barr started a blog entitled, “Around the World in 80 Jobs.” The man’s blog shared his experiences finding gainful employment, traveling and living abroad oversees, how he funded his traveling by taking interesting travel jobs and provided other people with travel job opportunities so they could do the same thing. His site gained huge amounts of traffic. However, a huge company named Adecco USA later came along and began a similar campaign and used Barr’s title, “Around the World in 80 Jobs.” Because Adecco USA filed a trademark application for the trademark, though, they were the ones who ultimately received rights to it.

2. Gucci Vs. Guess

Gucci and Guess are two world-renowned companies that are known for their infringement battles. Gucci has accused Guess of using their trademarked colors and symbols often throughout the years in a manner that borders on copying the Gucci brand and causes brand confusion. In 2012, Guess was found guilty of copying Gucci trademarks, such as the red-green stripe mark, the repeating GG pattern, the stylized G design mark, the script Gucci design mark and the diamond motif trade dress. Although Guess may have been using some of the designs before Gucci, because Gucci had the designs registered, they won the ruling in the case.

3. RIM Vs. BBM

Jim McLeoad is the owner of a broadcasting representation group in Canada called BBM, which stands for BlackBerry Messenger Service. His company had been using the name “BBM” for nearly 6 years when in 2010, the owner spots a RIM (Research in Motion, Ltd.) billboard utilizing his trademark to advertise its messaging service. Although the BBM trademark was well associated with the company, because it was not officially registered, RIM was able to begin marketing with the other company’s trademark.

4. Tyra Banks

Tyra Banks is one of the most popular supermodels of all time, and some wig making companies created wigs utilizing Tyra’s name, photos, images and identity in 2013. Tyra chose to sue the companies stating that they were infringing upon her very famous name. Although her name itself might not be officially trademarked, since the companies did not obtain the appropriate trademarking and permission from the supermodel to utilize what’s associated with her, they could be facing millions of dollars in penalties.

Closing

As you can see, not properly registering your trademark can result in it becoming lost or stolen or end up with you being charged with trademark infringement. A trademark attorney who is skilled at trademark law like the ones at the Williams IP Law in Texas can assist you in making sure that all your trademarks are legal.

5 Trademark and Copyright False Facts

Intellectual Property Misconceptions

Unless you’re an intellectual property attorney you probably hold a number of misconceptions about patents, trademarks and copyrights. Don’t feel bad if that’s true for you. Most people don’t need to be experts on the subject. Unfortunately, these misconceptions can lead you to run afoul of the law or to believe that you have rights that don’t actually exist.

Here are five common intellectual property misconceptions that seem to come up frequently. If you need common sense, real world advice on the subject, contact a Texas patent attorney to learn more.

1. They didn’t invent that, so how can they have a trademark for it?

A trademark is essentially a source identifier. When you see “Coke” or “Coca-Cola” on a bottle or advertisement, you know exactly which company made the product. This dovetails nicely with the fact that the Coca-Cola company also created their product. However, it’s sometimes possible for someone to register a trademark for something that they didn’t technically “create.”

A notable instance of this occurred when the BBC registered a trademark for blue police boxes. The network had used a blue police box as a central component of their Dr. Who television series for decades. Even though the actual police call boxes were created by law enforcement agencies, a court ruled that people so closely associated modern images of the devices with the show that the BBC was entitled to hold the trademark.

2. You have to enforce your copyright every time you suspect infringement.

This is certainly true for trademarks, which the registration holder must defend vigorously. Copyright holders don’t necessarily have to be so aggressive. That’s why so many people are able to write fan fiction or design fan art based on popular characters without being contacted by attorneys. The copyright holder may not feel that their rights are being infringed. Still, they can choose to enact legal remedies if they choose.

3. Big corporations are trademark bullies.

Large corporations have many resources, and one of their most valuable assets is their trademarks. They’ve worked hard to build a recognizable brand and it’s unfair, not to mention illegal, when others try to sell their products under that mark. The law enables trademark registrants to defend their rights, which is why it’s always best for smaller companies to create their own distinctive trademarks. It’s a much less expensive proposition in the long run, and it allows a startup to make a name for themselves.

4. If I’m not making money from it, it must be fair use.

Anyone who wants to freely distribute a video, text or other work that draws significantly on the creative work of others may not be protected under fair use. Whether or not money is made is not always an issue. For instance, it’s unlikely you could legally post a movie online even if you first bought the film on DVD. That movie is still protected by copyright, and consumers don’t have the right to distribute it. When it doubt, consult with an intellectual property attorney.

5. It isn’t necessary to register a copyright anymore.

Actually, registering a copyright is still an exceptionally good idea. With a registered copyright you have the right to sue people who unlawfully use your work and you can collect monetary damages. While you don’t have to register you will certainly have more legal rights if you do.

Contact the law office of Jeff Williams for a Free consultation or to learn more about patents, trademarks and copyrights. As an experienced patent attorney in Dallas and Houston Texas, Jeff is well qualified to offer guidance and advice about even the most complex intellectual property matters.

Washington Redskins and Trademark Rights (Updated)

This is an update from the blog we did in 2016.

Federal Court Decision May Shore Up Redskins’ Trademark Rights

Is the name used by the NFL’s Washington Redskins offensive? That question was at the heart of an on-going court battle between members of the Native American community and the team’s owners. A court decision at the end of 2015 favored the team’s ability to keep their Redskins trademark rights, while the plaintiffs continued their fight against registration of the mark, it was social pressure that made the biggest change.

The Initial Case

1992

The first legal action against registration of the Redskins’ trademarks came in 1992 when Suzan Harjo and other Native Americans attempted to cancel the registrations by petitioning the U.S. Patent and Trademark Office. At the heart of their claim was the Lanham Act, one of the foundations of U.S. trademark law, which says that any trademarks that are “disparaging, scandalous, contemptuous, or disreputable” cannot be legally registered. It took seven years, but the USPTO eventually agreed with Harjo, cancelling registration of the Redskins’ trademarks. Team owners appealed the decision in court, winning on the grounds that there was insufficient evidence of disparagement. Further appeals followed, but Harjo and the other plaintiffs were unable to win, with courts saying they had waited too far beyond their 18th birthdays to file suit.

2006

Amanda Blackhorse and other plaintiffs filed their own cancellation action in 2006. This group of plaintiffs was younger, giving them an advantage over the previous efforts. Initially, the new lawsuit appeared to pay off.

2014

A group of 50 U.S. Senators signed a letter to the NFL asking for the Redskins to change their name. The Redskins also lost a ruling by the Trademark Trial and Appeal Board that said the name was disparaging to a “substantial composite of Native Americans.” Washington would appeal the decision, which was overruled by the Supreme Court in 2017.

2015

In July of 2015, a federal court ordered the USPTO to cancel six trademark registrations of the Redskins mark. The judge made it clear that the team can still use the mark, but that federal registration of the mark is not legal because it could be seen as disparaging or offensive.

The December ruling turned matters around in favor of the team’s ownership. The Washington D.C. District Court decided that the Lanham Act’s prohibition against disparaging marks might constitute viewpoint discrimination, which would violate the First Amendment rights of citizens. This decision was not actually rendered in connection with the Redskins’ lawsuit. Instead, it originated in the legal efforts of an Oregon rock band that calls itself The Slants.

2020

Weeks of social pressures and renewed pressure from investors including FedEx, Nike, and PepsiCo eventually led team management to conduct a “thorough review” of the name. It was not long after this that the team removed Redskins as the name.

A Similar Case (The Slants)

The Slants, four Asian-American men, attempted to gain a federal trademark registration of their name, but the USPTO refused on the grounds that the name might be considered disparaging. Undaunted, and with the assistance of a trademark attorney, the young men continued to pursue their rights for trademark registration. Those efforts finally appear to be paying off, and the victory for The Slants may translate into victory for the owners of the Redskins trademark.

Obtaining federal registration of a trademark is not always a straightforward process. Frequently, it is necessary to engage in nuanced legal arguments before the USPTO consents to registration. The cases involving the Redskins and The Slants are extreme. Most trademark rights battles do not drag on for years nor do they involve federal litigation. Still, it makes a great deal of sense to rely on the services of an experienced trademark attorney when you want to seek registration for your brand name or logo.

If you need Trademark Assistance

Texas trademark attorney Jeff Williams has tremendous experience when it comes to obtaining and protecting the intellectual property rights of his clients. If you are interested in obtaining or enforcing your trademark rights, contact the Law Office of Jeff Williams to learn more.

Intellectual Property Search Basics

Patent Protection

It’s important to remember that the patent search is only one step in a much longer process. If the results of the search are favorable, then drafting the patent application may begin.

The inventor is by no means required to immediately pursue patent protection after a search is completed. However, there may be benefits to filing an application with the U.S. Patent and Trademark Office with all possible speed.

The U.S. is now a “first to file” country, which means that the first inventor to file an application for new technology is the individual who is deemed to be the originator of the idea and therefore eligible for a patent.

This contrasts with the prior U.S. system under which a “first to invent” rule was followed. Under this system, an inventor who could produce documentation showing that they were the originator of a product or process could prevail over another inventor who filed their application first.

Accordingly, inventors may feel a great deal of pressure to immediately pursue patent protection. This is where the advice of a qualified intellectual property attorney becomes indispensable.

Your attorney can help you to determine whether or not your invention is sufficiently well-developed to pursue patent protection. If you are still deep in the development process, then your attorney may recommend filing a provisional patent application.

Such an application preserves an earlier filing date for your invention while also providing you with one year in which you may continue to develop the technology. You may rely on the guidance of your IP attorney during this time. At the end of the year, you may file a non-provisional patent application that more completely describes your invention. This application will be examined by the U.S. Patent and Trademark Office, and it also may issue as a patent.

Should I Do A Trademark Search?

It is always advisable to do a trademark search before you proceed with selecting a name for a business, band name, slogan, or any other symbol, mark, or terminology to represent your product and service to the public.

Typically it is best to do the trademark search at the very first stages of the process. Costs and efforts associated in getting a new product to the market, branding, and advertising can be relatively high.

It can be disheartening, frustrating, and harmful to your business to begin such a process without first making sure you trademark is clear from potential issues. It is common to see demand letters for infringement when a proper trademark search was not performed prior to using a mark.

There are 45 trademark classes which are essentially categories of marks split based on the type of the good or service that can be registered by the USPTO. It can be a tedious process to search this on your own with all of the different options available.

It’s also important to search for unregistered trademarks because even though a trademark is unregistered it could still prevent you registering your trademark and could still lead to trademark infringement.

The cost to perform a search is extremely small when compared to trademark infringement.

To learn more about the patent and trademark search process set up a FREE Consultation with Jeff Williams.

How to Register a Trademark in Texas

If your business operates on a national level, then the choice to pursue a federal trademark registration makes sense. Such a registration protects your mark from use by someone else on a nationwide basis.

However, what if you only plan to operate in the State of Texas? A federal trademark registration may not make sense in this situation, especially when there is the option of obtaining a state trademark registration.

In general, obtaining a state trademark registration in Texas is far less complicated, time-consuming and expensive than pursuing a federal registration. When seen in this light, it becomes clear that a Texas trademark registration just makes sense.

What Is a Trademark?

Many entrepreneurs initially don’t understand why they would need a trademark registration. Once they understand the benefits that an official registration grants, they quickly begin to see the advantages.

According to Texas trademark law, a trademark may be a word, phrase, logo, device or symbol. A trademark also may include any combination of these components. The primary purpose of this trademark is to identify the source of the goods or services that are associated with use of the mark. This makes it easier for consumers to always come back to a brand name that they know and trust.

Why Should You Register Your Trademark?

Numerous advantages come with registering a trademark in Texas. Essentially, it formalizes your use and ownership of your particular mark. This means that you are empowered to prevent other individuals or businesses from using your trademark to their benefit.

As an example, suppose that you have invented a new widget that everyone needs to have. You’ve registered a trademark for the unique name of your widget in order to protect your rights.

Then, a competitor comes along, selling a knock-off widget of questionable quality. To make matters worse, that competitor is using a trademark that is confusingly similar to yours. Unless consumers are paying really close attention, they may accidentally buy the competitor’s inferior product, believing it to be yours.

When that knock-off product proves unreliable, the public may form a poor opinion of your company even though the product was made by your competitor.

When your trademark is registered, you have the ability to prevent your competitor from using your trademark. This helps to ensure that any goodwill that your company has earned remains where it belongs.

Texas State Requirements

If you want to register a trademark in Texas, then you’ll have to meet certain requirements.

For instance, you must be able to demonstrate to the secretary of state that your mark was in use in commerce in Texas on goods or services prior to the date on which you applied to register your mark.

Additionally, it’s necessary that your mark be different from other trademarks that are already registered in Texas. The more original and unique your mark is, the easier it will be to register. This also makes it easier for consumers to remember.

The office of the Texas Secretary of State also looks in the registered trademarks at the U.S. Patent and Trademark Office to ensure that the new mark is not identical to an existing trademark.

How to Register for a Trademark in Texas

Applying for a Texas trademark registration is easy.

Just fill out the Trademark or Service Mark Application Form, which can be obtained online. Note that the form must be notarized before it is submitted.

Include three original specimens showing use of the mark in Texas, and be ready to pay the official fees for each class of goods or services for which you are applying.

Next, the state reviews the application and specimens. They follow up if any issues are raised.

The trademark registration will issue if there are no issues. It remains valid for a five-year term, at which time it can be renewed.

Getting a Texas trademark registration is relatively easy when compared with a federal registration. Nonetheless, there can be bumps in the road. If the application is not correctly completed, it can result in significant delays and unexpected costs.

What If Your Texas Trademark Application Is Rejected?

Each trademark application that is received by the Secretary of State is examined. Occasionally, in the viewpoint of the official who reviews the application, some trademarks are not entitled to registration.

The rejection may say that the proposed trademark is merely descriptive. This is a legal term that means that the trademark isn’t considered distinctive enough for registration. According to state law, trademarks are required to meet certain standards. When a mark is deemed to be merely descriptive, it means that the mark:

  • Describes the use, purpose or function of the goods and services
  • Describes who uses the goods or services
  • Describes a desirable characteristic
  • Is a laudatory mark that claims superior quality
  • Merely a person’s name
  • Describes a geographic feature of the products

Receiving a rejection that your trademark is merely descriptive may seem final, but it doesn’t always have to be. If you application is rejected for being merely descriptive, then it makes sense to consult with a qualified intellectual property attorney.

This is because it may be possible for the attorney to argue that the trademark has acquired distinctiveness through prolonged use in Texas. Other arguments may be possible, which is why it is always wise to meet with a trademark attorney before giving up on your application.

Alternatively, applicants for trademarks in Texas may be asked to “disclaim” a portion of their mark. Although some applicants may be alarmed to receive such a notice, this is actually a positive development. It means that although the mark is considered distinctive and eligible for registration, a portion of the mark is not distinctive when viewed separately.

Accordingly, it is not permissible for the applicant to have the exclusive right to use this portion of the trademark by itself. By disclaiming this portion of the mark, the applicant is acknowledging that they do not have the right to prevent others from using that portion of the mark by itself.

If you have received a notification that you are required to disclaim a portion of your trademark, contact a Texas intellectual property attorney to learn whether or not agreeing to the disclaimer is appropriate.

Once you have responded to a notice that your trademark is merely descriptive or agreed to disclaim the exclusive right to use a portion of your trademark, the application is likely to proceed to registration.

Contact Williams IP Law if you need assistance in registering a trademark in Texas or are looking for general intellectual property advice.

Tom Brady Denied Trademark Registration of TOM TERRIFIC

Trademark registrations are among the most commonly pursued intellectual property rights in the U.S., yet it can be surprising just how little understood these protections are. It’s not unusual for the average person to believe that once a word or phrase is registered as a trademark, it is somehow illegal for anyone other than the rightful owner to use the mark.

Tom Terrific

However, this isn’t quite the case, as football legend Tom Brady recently learned. Brady and his legal team from TEB Capital Management filed two trademark applications with the U.S. Patent and Trademark Office earlier this year trying to protect the “TOM TERRIFIC” mark.

Both applications stated that Brady and his team had an intent to use the mark in interstate commerce for goods such as T-shirts, printed photographs, posters and trading cards. An unintended public furor erupted as longtime fans of Tom Seaver, a baseball pitcher in the Hall of Fame, protested that the “Tom Terrific” moniker really belonged to him.

It seems that the USPTO was in agreement with the public on this one. They denied Brady’s applications based on the fact that the “TOM TERRIFIC” name was already closely associated with Seaver and had been for decades. Officials at the USPTO believed that if Brady were to introduce a line of goods associated with the TOM TERRIFIC mark that consumers would be confused as to whether the mark referred to Brady or Seaver.

Trademark Law

However, in view of Brady’s remarks in response to the furor, it appears that he didn’t understand U.S. trademark law in the first place. It seems that the reason that Brady filed the trademark applications was to prevent others from using the moniker in connection with him because he doesn’t like it.

In other words, Brady filed the trademark applications, stating under penalty of perjury that he and his company intended to use the marks in interstate commerce in connection with the identified goods, when he actually had no intention of doing so. Brady may have simply been annoyed when his team and people on social media referred to him as “Tom Terrific.” Seeking to stop such use, he had his legal and business team file trademark applications.

Unfortunately for Brady, that’s just not how trademark law works. The only way to obtain a federal trademark registration in the U.S. is by using the mark in interstate commerce and then demonstrating that use to the USPTO. If Brady never had a bona fide intent to use the mark in interstate commerce but instead wanted to prevent others from using a certain name, how could he ever expect to obtain a registration?

The answer may be that Brady did not consult with intellectual property attorneys before filing his applications. Intellectual property is a specific area of the law that not every lawyer is qualified to practice. Without focused education, training and experience, attorneys are not prepared to guide their clients through the process of obtaining a U.S. trademark.

Consulting with a trademark attorney would have saved Brady a great deal of time, money and embarrassment. Anyone interested in obtaining a federal registration of a trademark is encouraged to consult with an intellectual property attorney.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.

Patent vs copyright vs trademark


People who are unfamiliar with the various forms of intellectual property protection often use terms like “patent,” “trademark” and “copyright” almost interchangeably. In reality, these are three distinct forms of protection, each of which is designed to defend your rights to a specific type of intellectual property.

Understanding the difference is critical when you want to ensure that you have the right to fully defend your intellectual property. An intellectual property attorney can provide customized guidance and advice in your unique situation. Nonetheless, it is possible to describe here the three major forms of intellectual property protection.


What Is a Patent?

A patent protects a new invention, which may be a machine, a product, a process or a chemical composition. It is possible to obtain a patent on the design or appearance of an item just as it is possible to patent a new plant species.

A patent does not grant the holder the right to manufacture or sell their invention. Instead, it gives them the right to exclude others from using their proprietary innovation. Thus, if a patent holder notices that a competitor is selling a product that infringes on their patent rights, the patent holder may sue the alleged infringer.

Patents are only valid for a finite period of time. An invention is protected by a utility patent, which is valid for 20 years from the filing date of the patent application. A design patent is valid for only 14 years from its filing date.

While the patent is in force, it is possible for the owner to license it to others who may manufacture, sell or otherwise use the patented subject matter. Patent owners also may sell their rights to another party.

What Is a Trademark?

Trademarks may take many forms, including a single word or an entire phrase. A trademark registration also may cover a design, symbol or a combination of text and a design.

The strongest trademarks are unique and distinctive. Their primary purpose is to identify the source of the goods or services on which they are used. For example, when people see the famous Nike “swoosh” on a pair of shoes, they are immediately able to identify the footwear as coming from Nike.

In the U.S., trademarks are registered for particular goods and services that the owner must identify in their application for registration. Use of the mark in connection with the goods or services must begin in U.S. commerce before a registration can be obtained.

Accordingly, a company or individual may apply for a trademark registration that covers a wide variety of goods and services such as restaurant services, t-shirts and music performances. Before a registration can be obtained, the owner must demonstrate that the mark is actually being used on all of these goods and services. If they decide not to use their trademark on t-shirts, then these goods must be deleted from the application before the mark can proceed to registration.

U.S. trademarks are renewable in perpetuity for 10-year periods. Every 10 years, the owner must submit fees and proof that the mark is still being used in commerce.

What Is a Copyright?

A copyright is used to protect any work of original authorship. While most people understand that a book is copyrighted, they may be more surprised to learn that a painting, sculpture, choreographic work, photograph, movie or software code also may be protected with a copyright.

Copyright protection is automatic in the U.S. As soon as a creative expression is captured in some tangible form, it is copyrighted. However, it is further possible to register the material with the U.S. Copyright Office. Doing so provides the owner with additional means of protecting their original work.

This means that the author has control over reproductions of their work as well as any derivative works. Any public performance or display of their work may only be pursued with the author’s permission. Failure to obtain such permission may lead to litigation.

Typically, the term of a registered copyright is the lifetime of the work’s author plus an additional 70 years.

Which Type of IP Protection Should You Pursue?

If you are an inventor, innovator or entrepreneur, then you may need to pursue one or more forms of IP protection. A software developer could copyright the code on a new program, obtain a trademark registration for the software’s name and get a patent on a process within the program.

Working with a qualified intellectual property attorney is the best way to ensure that your rights are sufficiently protected by patents, trademarks and copyrights.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.