Category Archives: Branding

DECISIONS, DECISIONS

Have a new mark that you want to use?  I discussed in an earlier post that you should conduct a search for other marks that are the same or similar to your intended mark, before the launch.  What happens if your search scores a “hit?”

Move Along – Nothing To See Here

You can just go with another mark, avoiding the other mark entirely.  Whether you should do this before or after answering the following questions sometimes is self-evident.  I would be stupid to launch “Matt’s Coca-Cola Experience” without getting permission from Coca-Cola, for example.

Mother, May I?

You could request permission or consent from the owner of the other mark; this often takes the form of license.  An example would be a franchisee getting a license from the franchisor to use the franchisor’s mark.  Do not count on a competitor from giving you a license, though.

Fight of Flight

Maybe you are free to use your mark, because the competitor’s mark does not apply to your market.  Act with caution – the other’s mark could be strong enough to make it unwise to use a similar mark in another field.

The competitor’s mark may have a fatal weakness that you can exploit.  The competitor may have failed to protect its mark, turning that mark into a toothless, paper tiger.  There are times when it makes sense to launch a legal challenge to such a mark.

Will You Marry Me?

Maybe the other mark is ripe for a purchase.   This can be a win-win when the price is right.

Baby Needs a New Pair of Shoes

You can roll the dice and go forward with your mark without answering any of the questions.  Maybe it will work out or maybe you that decision will backfire.  A finding of intentional infringement can make matters worse if you lose a trademark infringement lawsuit.

A Little Elbow Room, Please

Maybe you find that there are several other similar marks in use, and maybe you determine what you have relatively low legal risk by going ahead with your mark.  Will you have to spend more time and money than you otherwise would to get your mark noticed?  Will the crowded marketplace make it harder for you to get exclusive rights to your mark?  Whether your mark is worth the effort will answer whether you should go with that mark or get a new mark.

As We Bid Adieu

Learning that someone else is using a mark that is the same or similar to your desired mark is not the end of the world.  Getting guidance from a competent professional will be well worth it.  This blog post is not a substitute for that advice.  Please contact us if we can be of help.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2017 Matthew D. Macy

Watch Your Step With Your New Mark

You have a name, slogan, logo, or other mark for your new business or product.  Look first before spending time and money to identify your brand with that mark.  A search beforehand may warn you of another mark that could hinder your use of the new mark.  It is not fun to get a cease-and-desist letter or a lawsuit you could have avoided.

There are services available to conduct searches for you; the costs and efficacy varies.  There are do-it-yourself searches for little to no cost that you can do first.  Here is a sampling of DIY searches:

  • Google and other search engines:  Self-explanatory.
  • Federal Trademark Registrations:  The US Patent & Trademark Office (“USPTO”) handles the federal registration of trademarks under the Lanham Act.  The USPTO database has registered marks, marks that were registered but lost that status, and applications for registration, is available for free via the Web.  You can search the database here.  Try different variations on the name – spacing, punctuation, and non-letter characters can affect the search results.  There also is a way to search for logos and non-verbal marks using keywords and design codes.
  • State Trademarks and Trade Names:  States often have their own trademark registration and trade name databases.  You can search Georgia trademark registrations here and Colorado trademark registrations here.  The registration of a trademark or a trade name could be at the same place, or, like in Georgia, be in separate databases.  Georgia has trade name registrations take place at the county superior court, for example.
  • Records of incorporations, etc.:  A person forming an entity usually has to submit formation paperwork with the appropriate state agency, such as the state secretary of state.  The databases often are searchable online.  You should search the databases for the states where you want to do business.  Here are links to the sites for the Georgia’s Secretary of State’s website and the Colorado Secretary of State’s Web site.
  • Domain names:  A domain name register should give you the ability to conduct an online WHOIS search on a domain name.  A WHOIS search should tell you whether anyone has registered the domain name or whether it is available.
  • Social Media:  Examples of where to search are Facebook, Houzz, and LinkedIn.  There are many more social media sites; how far you should go will vary on the nature of your business.
  • Online phone book: Put in your intended name and something similar to see what pops up.

Remember GIGO (garbage-in-garbage-out) when searching.  The more varied are your searches, the more reliable are your results.  Examples of variation include spelling the mark correctly and incorrectly, spelling out non-word elements and visa versa (e.g., “plus” and “+”), using different phonics (e.g., “phone” and “fone”), altering the spacing between words, and so on.

Each database has its limitations.  Georgia’s trademark registration database, for example, will not show any pending applications.  It can take a week or so for new federal trademark applications to show on the USPTO database.  Even with that in mind, the search results can guide on whether a more in-depth search makes sense, where you can proceed with peace of mind, whether you should proceed with caution, or whether you should change your mark.

Stay tuned for a discussion of options if you get a “hit” on any of your searches.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

This article has links to websites owned and operated by third parties.  Use those links at your own risk.  The author including those links is not an endorsement by the author or the author’s firm of those third parties, of the content of those sites, or of the security of those sites.

© 2016 Matthew D. Macy

NO ® FOR THE LIKES OF YOU!

A federal trademark registration gives the owner of the mark many benefits.  Not everything can be registered, however, even if you can use the mark in the marketplace.  One limitation is a ban in Section 2(a) of the Lanham Act on registering “scandalous” or “disparaging” marks.  A “scandalous mark” is one that involves immoral or scandalous matters.  A “disparaging mark” consists of something that may disparage persons, institutions, beliefs, or national symbols, or bring any of them into contempt or disrepute.

People have argued over what fits within those definitions, with uneven results.  Who wins those arguments can decide whether the application to register fails, or whether a currently registered mark loses its registration status.  Just ask the Washington Redskins what it is like to have a mark lose registration status because of Section 2(a).

A band of Asian-Americans called the “The Slants” went and upset the Section 2(a) apple cart even more.  A member of the band filed an application with the US Patent & Trademark Office (“USPTO”) to register “The Slants” as a trademark.  The USPTO rejected the application, citing Section 2(a), because “slant” is used as a racial slur aimed at Asians.  The band member appealed, eventually getting his case before the full panel of the Federal Circuit Court of Appeals.  In 2015, the Federal Circuit sided with the band member, finding that the ban on registering scandalous or disparaging marks to be unconstitutional.  There is a request pending before the US Supreme Court to hear the case.

While we wait for the US Supreme Court to decide whether to take the case, and to rule if it does take the case, the USPTO instructed its trademark examiners to put on hold any application to register a mark that has scandalous or disparaging content.  The owner of a mark still can apply, but the application will be put on hold.  If Section 2(a) survives the recent court challenge, the owner still can argue that the mark falls outside the ban in Section 2(a).  Others have made similar arguments, with some winning and others losing.

The owner of that kind of mark should have a discussion with a knowledgeable trademark attorney to decide when and whether to apply to register.

For those who want to read more, you can find the Federal Circuit’s full panel decision here and read an NPR article about “The Slants” here.

This post provides general information only.  This post is not intended as legal advice or to create an attorney-client relationship.  Do not rely on this post as legal advice.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2016 Matthew D. Macy

Naked Licenses Can Strip Your Trademark Bare

Tim the Troll had a brilliant idea. He was doing well by charging tolls to cross a bridge he sat under. Travelers expected they would have to pay a premium when Tim put up his “Troll Bridge” sign. Tim successfully registered the trademark “Troll Bridge.” He then licensed “Troll Bridge” to anyone who wanted to pay the license fee. Tim did not care what the licensees did with the name, so long as Tim got his payments on time. The gold flowed into Tim’s pockets.

The good times soon ended, unfortunately. Billy Goats Gruff, Ltd., started offering travelers its “Troll Bridge Protection” service. Tim sued Billy Goats Gruff for trademark infringement. Billy Goats Gruff’s defenses included an argument that Tim the Troll lost his exclusive rights to “Troll Bridge” because he issued naked licenses. The court agreed and Tim lost his exclusive rights to “Troll Bridge.” The loss ended Tim’s lucrative licensing deals.

A naked license is easy to create. All it takes is a trademark owner allowing someone to use the mark with little to no control over how that person uses the mark. A trademark owner can avoid a naked license by: (1) having a written license agreement; (2) include quality and use controls in the agreement; and (3) enforcing those controls.

The owner also should avoid naked licenses when allowing a related company to use the mark. For example, a company that allows a subsidiary to use the trademark should have a written licensing agreement with quality and use controls that are enforced.

A trademark owner owes the duty to protect the trademark. A court will not protect a trademark when the owner gives out naked licenses or otherwise fails to protect the mark. Tim the Troll may have kept his exclusive rights to “Troll Bridge” had he heeded that warning.

Got a trademark? Do not strip its protections by giving naked licenses.

This post provides general information only. This post is not intended to create an attorney-client relationship or to be legal advice about your situation. Laws change and your situation may be different. You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2015 Macy Law Firm, PC

Rated ® Blog

            Branding is big. It is so big that if you listen to some pundits, every business owner should eat heaping bowls of Brand Flakes every morning. Your mark, be it a trademark, service mark, or trade name, is a part of the branding process. Your mark can be the logo, name, or phrase that you want your customers or clients to associate with your goods or services. Even law firms, like the MACY-LOGO-color.png, use logos.

Be Unique – Just Like Everyone Else

            Creating the name or design is just the start. Before running with your creation, look around for anyone using the same thing or something similar. The search can include using Google and other search engines, running searches on online phone directories, a search with the state agency that registers entity names or state-level trade names or trademarks (often available online), and search trademark filings with the United States Patent & Trademark Office (www.uspto.gov). You can hire someone to do the search or you can do it yourself; be thorough either way. Getting sued or having your stuff seized for allegedly infringing on Company X’s mark would not be fun.

            Did you find someone else using the same or similar mark?  It may make sense to create something new.  What if you want to use your first design anyway?  That could be risky because lawsuits for infringing on an unregistered or registered mark can be costly – more so if you lose.  Your evaluation of the risk may include whether the other person’s mark no longer qualifies for legal protection.  That could happen if the other person abandoned his mark, the other person’s mark now is generic (“kerosene” is an example), or the other person has otherwise failed to protect his mark.  Those are hazards you should avoid with your own mark.

No Squatters Allowed

            Using a mark is necessary to build its strength.  You want customers and clients to have a positive association between your mark and your goods or services.  For example:

  • “I need to speak with a lawyer.” – MACY-LOGO-color.png !
  • “The lawyer needs to be high quality.” – MACY-LOGO-color.png !
  • “I want the lawyer to wash my windows.” – [crickets chirping]

         Use is necessary if you want to get a federal registration of the mark.  You can file to register the mark if you are not using it at the time, but you will have a six-month period to start using the mark.  You can get extensions, up to a total of three years, if necessary.  Eventually, though, you will have to use the mark in commerce to get the registration.  You also will have to use the mark to keep the registration.

          Whether and how the mark is used, and how customers perceive the mark, often are contested in lawsuits over unregistered and registered marks.  The law likely will offer little to no protection to an unused mark.

Why Register if the Law Can Protect Unregistered Marks

            The law may protect an unregistered mark to an extent.  Why should you register a mark?  There are benefits to registering a mark.  A state trademark registration may give you certain benefits within that state.  A federal registration offers benefits that can extend nationwide, and a non-exhaustive list of benefits include:

  • Putting the public on notice that you own the mark.
  • A presumption in your favor that you own the mark and have an exclusive right to use that mark with certain goods or services.
  • Access to filing a claim in federal court.

Protect the One You Love

            Registered or unregistered, protecting your mark is a necessity.  Protecting your mark involves monitoring the quality of the goods or services bearing the mark, not abandoning the mark, avoiding having the mark become generic, and watching for others who may infringe on your mark.

          The need to protect remains if you license the mark because an owner who licenses his mark still has to monitor how the licensee uses the mark.  A naked license is a good way to put a mark at risk.  A naked license has inadequate or no quality control provisions.  Get your mind out of the gutter.

           Choosing not to protect your mark puts at risk the time and money you spent on the mark. In other words, this could happen to your mark if you do not protect it: Trashing (r)

Wrap It Up – I Have To Get Back to Building My Brand

          A strong mark is an asset – just ask Coca-Cola. A strong mark can increase the value of your business. None of that will happen unless you are willing to devote the resources necessary to build and protect the mark.

This post provides general information only and is not intended to create an attorney-client relationship or to be legal advice about a specific situation. Laws change and your situation may be different. You should consult with a licensed attorney for legal advice specific to your circumstances.