5 Tips on Trademark Enforcement

Trademarks rank among your brand’s most valuable assets. As a result, it is essential that you do everything in your power to enforce your trademark rights.

Trademarks are intended to validate the source of the products or services that your company provides. Effectively, a trademark communicates to consumers the brand’s identity, helping them to select the right product from the store’s shelves. However, a trademark is even more than that. It signifies the reputation or goodwill that your brand has worked hard to build over the years.

This means that when someone abuses your trademark rights, it’s no small matter. Accordingly, it is essential that you remain vigilant when it comes to protecting your trademarks.

How Is a Trademark Enforced?

Imagine that you have discovered a competitor in your industry that is using a logo that is confusingly similar to yours. You’re worried and outraged, and you’re determined to take immediate action.

If you consult with a trademark attorney, you’ll soon discover that the accepted course of action is to send a cease and desist letter. The letter is addressed to the infringer who may be acting either knowingly or unknowingly. That is, the infringer may be aware of your trademark and purposely infringing on your rights or the infringer may be unaware of your trademark and is consequently unknowingly infringing.

Sending a cease and desist letter frequently is all that is required to convince an infringer that they need to switch marks. What’s really critical here is that the letter be sent on official attorney letterhead. Simply put, a cease and desist letter from an attorney carries a great deal more weight with the infringer than a letter from the trademark owner would. The fact that you have retained the services of a trademark attorney demonstrates your dedication to the integrity of your mark. The infringer will almost certainly take it seriously and take immediate action.

Beyond Cease and Desist Letters

Your attorney may send a cease and desist letter, but it doesn’t always get the reaction that you hope for. It may be that the recipient of the letter doesn’t believe that their mark infringes on your rights. They may hire legal counsel of their own to defend them.

This doesn’t necessarily mean that you’ll soon be engaged in a lawsuit, although that is a possibility. Typically, your attorney and the other party’s attorney will negotiate, looking for ways that the two trademarks can coexist. As they try to hammer out an agreement, which may include the infringer selecting a new trademark, the possibility of litigation remains in the background.

A lawsuit is a last resort, but it can be a useful tool in some situations. This is just one of the reasons why it is wise to work with an attorney whenever you need to enforce your trademarks.

The Danger of Ignoring Trademark Enforcement

One of the best tips for trademark enforcement is to not ignore it. No one but you is going to handle enforcement. A business that is using your mark or one that is confusingly similar definitely does not have an interest in policing your rights. As they sell inferior products, they erode your company’s reputation, causing you to lose sales and customers.

Trademark Monitoring Ensures Better Enforcement

Savvy trademark owners work closely with an intellectual property attorney who can monitor their mark or marks. Basically, this means that your attorney, or a service that he hires, actively monitors trademark applications around the world to determine whether or not anyone is using a mark that might infringe your trademark.

If you want to get serious about enforcing your trademark, then mere registration is not enough. It is essential that you ask an IP professional to monitor the trademark to catch infringers in the act and put a stop to them.

When Do You Need to Enforce Your Trademark?

A company that’s been operating for years and has a registered trademark that is routinely monitored probably knows that potential infringers are lurking everywhere. However, this doesn’t mean that it is necessary to pursue every potential infringer with all available resources. Doing so simply isn’t feasible from business or economic standpoints.

Once again, this is why it’s sensible to work closely with a trademark attorney to enforce your rights. Your attorney can help you to determine whether or not a certain infringing party is worth pursuing.

Several factors may play a part in this decision. For instance, you may decide to enforce a trademark when the infringer is offering the same or highly similar goods that you are. If their mark is confusingly similar to yours, it may be difficult for consumers to figure out if they are buying your products or inferior products from another company. Further, if the infringer is operating in the same countries that you are, the potential for confusion and lost sales multiples.

Work With a Texas Trademark Attorney

Whether you have a trademark that you would like to register or have enforcement concerns, contact the Law Office of Jeff Williams. We help clients pursue federal trademark registration in the U.S. and in jurisdictions around the world. Among our other services are trademark monitoring and enforcing trademark rights. With a full menu of intellectual property services available, our office is prepared to help protect some of your brand’s most valuable assets.

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.

Challenging Trademark Registrations

Obtaining a trademark registration is an important part of intellectual property protection. In the U.S., a registration may be granted to the owner of a unique and distinctive mark that does not appear to infringe on the trademark rights of any other owner.

Trademark Examination

Each trademark application that is filed with the U.S. Patent and Trademark Office is examined by an attorney. The attorney ensures that the application complies with all formalities and meets the minimum requirements for being a trademark. Additionally, the attorney performs a search of existing trademarks to determine whether or not consumers are likely to confuse the proposed mark with an existing mark.

Publication for Opposition

If the application clears all of these hurdles, then it is published. Publication marks the beginning of a 30-day period in which anyone may oppose registration of the mark. When an opposition is made, it most frequently comes from a competitor who feels that their mark is confusingly similar and that the goods and services on which the mark will be used travel in the same trade channels.

The opposition process provides an opportunity for the two sides to negotiate and perhaps arrive at an amicable resolution. For instance, the applicant may agree to eliminate a particular good or service from their description. However, if the two parties cannot arrive at an agreement, then a period for collecting discovery and evidence will ensue. Occasionally, these matters go to trial, with both sides arguing for their right to use the mark.

Petition for Cancellation

Opposing a trademark application after publication is a relatively common occurrence. Less commonly, a trademark registration may be challenged after it has already been established.

The Lanham Act enables parties to challenge a registration under certain circumstances. Any party that believes it may be damaged by the mark is empowered to challenge it. In this case, the challenging party will have to file a petition with the USPTO for cancellation of the mark from the Principal Register. Such a petition must comply with certain time periods such as:

  • The petition is made no more than five years from the publication date of the application
  • Whenever the mark in question becomes generic, is abandoned or is determined to be fraudulent
  • Whenever a certification mark is not being used within the limits of its certification

The Trademark Trial and Appeal Board, or TTAB, is the department that is responsible for deciding whether or not an application can proceed to registration after an opposition or if an existing registration can remain on the Principal Register once it has been challenged.

In the case of an application, the TTAB may elect not to allow the mark in question to proceed to registration. An existing registration may be cancelled or the TTAB may place restrictions on the use of the mark. On the other hand, the TTAB may choose to proceed with registration or maintain the registration of an existing mark.

Who Can Challenge a Trademark Registration?

Many people assume that only the owner of a similar trademark may oppose or petition to cancel someone else’s trademark. The reality is that even consumers who do not own a trademark may participate in this process.

TTAB reinforced this concept with their decision regarding United Trademark Holdings, Inc.’s application to register the mark RAPUNZEL. A law professor opposed the registration of the mark, arguing that the registration would “constrain the marketplace” and raise prices for dolls manufactured by other companies and sold under the name Rapunzel. The applicant for the mark argued that the opposer lacked standing, but TTAB disagreed. Their conclusion was that “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer.” Going on, they stated that the consumer has a “real interest” in keeping generic terms off of the Principal Register.

Free Consultation

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.

Trademark Enforcement: It’s Not Black and White

Imitation may be the sincerest form of flattery, but when that imitation involves the use of your proprietary intellectual property, then you are likely to feel far more angered than flattered.

That’s because a successful branding effort is incredibly valuable. When consumers see a recognizable brand name, they feel a connection. Hopefully, it’s a positive one that includes associations with reliability, functionality, comfort, stylishness or other affirmative attributes.

Building a brand is rarely an accident. Typically, a great deal of ingenuity and grit are involved. This is in addition to the considerable expenditure of money to properly promote and sell the brand.
Enter the Imitators

When a brand enjoys success, it is all-but inevitable that copycats will ensue. These copycats may sell a similar product under a very similar brand name. This also is no accident. The copycat is hoping to capitalize on the goodwill embodied by the trusted brand name. They reason that enough consumers will be confused that they will choose their product over the original.

Erosion of a Brand Name

Unsurprisingly, this can become a major headache for the owner of the original brand. With an imitator out there, it’s only a matter of time before consumers start mistaking the copycat for the original. Chances are good that the copycat’s wares are inferior to those offered by the originator. How long will it be before the negative impression engendered by the imitator begins to tarnish the sterling reputation of the real brand name?

Is Trademark Enforcement Necessary?

The efforts of many copycats go nowhere or their efforts are so insignificant that they are a mere nuisance. However, there are cases where imitators become well known and start to cause real, measurable damage. How does the owner of a brand determine whether or not it’s worthwhile to enforce their trademark rights against an infringer?

The first step is determining how strong the trademark is. A more arbitrary and unique trademark is a better one than a mark that is generic. For instance, essentially made-up words like Pepsi, Exxon and Kodak are all excellent examples of strong trademarks. They are arbitrary in that they don’t immediately suggest the products they sell. A trademark that is merely descriptive of the goods is going to be much harder to enforce. However, if your trademark is arbitrary and unique, it will be easier to enforce.

Registration May Help with Trademark Enforcement

Another good indicator of your ability to enforce your trademark is whether or not it is registered. A U.S. trademark registration makes your mark enforceable in all 50 states. A state registration protects your mark within that state. Common law rights are available to people who hold an unregistered trademark, but they can be limited in scope and make enforcement complicated.

If the competitor is going to be operating in the same geographic area in which the original owner has any trademark rights, then it may be easier to fight the imitator. Overlapping geographic locations will spark consumer confusion, raising questions of unfair competition as well. Alternatively, if each trademark owner is sticking to a specific and remote geographic location, then enforcement action may not be necessary. The owners may agree to avoid each other’s areas, and never the twain shall meet.

Being vigilant for your trademark rights may be critical to your company’s success. However, this does not mean that every potential case of trademark infringement is worth pursuing with all means at the company’s disposal. Doing so would be distracting and expensive. Instead, all enforcement actions should be considered on an individual basis and with the guidance of an intellectual property attorney. Some instances of potential infringement are absolutely worth pursuing with every available means. However, it may be business reasonable to choose to ignore some potential infringers while seeking amicable agreements with others. This mitigates costs and risks without diluting the goodwill associated with the trademark at issue.