BLOG
IP FOR THE BUSINSS LAWYER PRESENTATION
IP Law Overview | Patent Law | Trademark Law | Trade Secret Law | Copyright Law
I recently presented a continuing legal education course that explained patents, trademarks, copyrights and trade secret law to business attorneys. This is a great overview of intellectual property law for all.
Ahaji Amos, PLLC
More Than Your Average IP Boutique
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
I’m on YouTube!
Ahaji Amos, PLLC
Applying for a Trademark: Alpha to Omega
Learn the 8 steps for obtaining a federal trademark registration.
Step 1: Search
It’s a bad idea to invest resources into a trademark that may later need to be scrapped. Before you order those business cards, purchase a url, or order those goods, make sure you are free to use the trademark by obtaining a trademark search. A trademark search should uncover potential conflicts that will curtain your ability to use a trademark. It’s important to use a trademark attorney to conduct the search because trademark law is not widely understood. Did you know that trademark infringement does not require intent, copying, or identical use? Likelihood of confusion can be established between two trademarks that simply rhyme, or for colors that are similar. It’s important to seek out an expert opinion. In fact, searching the Trademark Electronic Search System, or TESS, provides little information because trademark rights are established by use, not registration. Know that your mark is registerable before you use it!
Step 2: Use
Trademark rights are established based on use, not registration. So, you should use the trademark prior to applying for a trademark. Using the trademark means providing a product or service to another across state lines (generally speaking). If you haven’t yet used the trademark, then you may still begin the process of applying for a federal trademark using an intent-to-use trademark application. These types of applications are examined as if the trademark has been used, but will not result in an issued trademark until an affidavit of use is filed (and an appropriate fee is paid).
Step 3: Apply
Applying for a trademark is the next step in the process. Most trademark applications are filed online using the United States Patent and Trademark Office’s online filing system, called the Trademark Electronic Application System, or TEAS. TEAS allows trademark applications to be filed pretty easily by uploading a specimen, image of the trademark, and inputting all other required information. Most applicants pay $225 per class, per mark. The ease of use of TEAS has resulted in more than 480,000 online trademark applications being filed in the USPTO just this year alone! In my experience, most of the applications are not filed correctly. The online interface fools users into thinking that the trademark application process is easy. It is not. An attorney is needed to choose the proper specimen, identify the proper classification of goods or services, and to determine the strength of the mark. Filing a descriptive or generic mark is often a waste of time and money. Submitting a specimen that is not reflective of the goods will also increase costs (e.g. submitting a picture of a t-shirt with a logo on the front, will get your specimen rejected). Using a trademark attorney almost always saves the trademark owner money.
Step 4: Prosecution
It’s surprising how many of my clients hire me thinking that trademarks are simply registered without an examination process. Many believe that if no one has registered their trademark, then they’ll be awarded rights to it. This couldn’t be farther from the truth. Only about 30% of applications are allowed without a refusal. refusals are both substantive and technical. They can be made to the specimen, the alleged use, the goods or services, or to the mark itself. A trademark must be used as a trademark in commerce. A trademark must also not be confusingly similar to an average consumer. These are legal determinations that require the skill of a trademark attorney. Many unrepresented applicants give up when faced with a likelihood of confusion refusal that most trademark attorneys could easily overcome. During the prosecution stage, a USPTO trademark attorney will issue communications called Office Actions, which state the refusals to the application. The applicant is required to respond to each and every allegation. On average about two office actions before dismissal (allowance or final refusal) of the application. Prosecution takes on average about 9-12 months and begins about 2-3 months after filing.
Step 5: Opposition
If a trademark is allowed, it is then published for opposition. Allowed applications are published in the Official Gazette, which is a USPTO publication that contains trademarks for public review. The opposition period lasts 30 days from the date of publication (which usually begins weeks after allowance). During those 30 days, anyone who believes that the registration of the trademark is harmful to them or improper may seek withdrawal of the allowance by filing a notice of opposition. The notice is akin to a civil litigation complaint and sets forth the opposers reasons for believing that a trademark registration should be denied. The opposition process is long, taking on average about 18 months to complete, and includes motions, like summary judgment motions, discovery and the submission of a trial brief. Depositions are not unusual in opposition proceedings.
Step 6: Issuance/Statement of Use
If an opposition is not filed or is unsuccessful, the mark will issue for applications based on use. For applications filed based on an intent to use the trademark, the applicant has up to six months to file a statement of use, demonstrating the use of the trademark. If the applicant fails to file the statement within six months, or request a six-month extension, the application will be abandoned and no trademark registration will issue.
Step 7: Maintenance
After a trademark application issues, the trademark owner must file maintenance documents to avoid abandonment of the trademark. If the registration is abandoned, the registrant must start the entire process again.
Step 8: Monitoring
Trademark owners are required to police their trademarks, which means that they can’s sit idly and allow their trademark rights to be infringed. Professional monitoring is relatively inexpensive (we charge $39/month) and effective at discovering unauthorized uses. All trademark owners should have some sort of active protocol for dealing with potential infringers identified, which includes informing and warning of infringement, as well as judicial enforcement.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
I’m on YouTube!
#trademarks, #womeninip, #trademarkattorney, #trademarkattorneynearme, #blacktrademarkattorney, #femaletrademarkattorney, #blacktrademarkattorney, #trademarkaname, #trademarkalogo, #tess, #howtotrademarkalogo, #trademarkattorneysearch, #trademarkregistration, #costoftrademarkattorney, #napervilletrademarklawyer, #napervilletrademark lawyer, #tmlogo
Supplemental Trademark Registery
Registering a trademark on the United States Patent & Trademark Office Supplemental Registry does not provide the same benefits as registering on the USPTO Primary Registry, but may be the only option for descriptive trademarks.
#law, #lawyer, #legal, #attorney, #lawfirm, #lawyerlife, #lawyers, #trademark, #patent, #motivation, #trademarks, #womeninip, #iplaw, #iplawyers, #womeninbusiness, #mochapreneurs, #business, #work, #office, #entrepreneur #attorneys, #inventor, #ahaji #ahajiamos, #ahajiamospllc, #trademarkattorney, #trademarkattorneynearme, #blacktrademarkattorney, #femaletrademarkattorney, #blacktrademarkattorney, #womentrademarkattorney, #affordabletrademarkattorney, #trademarkattorneyflatfee, #onlinetrademarkattorney, #trademarklawyer, #trademarksearch, #trademark, #trademarkaname, #trademarkalogo, #tess, #howtotrademarkalogo, #trademarkattorneysearch, #trademarkregistration, #costoftrademarkattorney, #napervilletrademarklawyer, #napervilletrademark lawyer, #tmlogo, #trademarktm, #tmtrademark, #why registeratrademark, #rsymbol, #trademarksymbol, #trademarksofletters, #whatisacertificationmark, #whatdoestrademarkregistrationdo, #canIstopsomeonefromusingmyname, #canIstopsomeonefromusingmylogo, #howlongdoesittaketoregister atrademark, #trademarksymbols, #amazonbrandingtrademark, #doamazonrulesallowtrademarkonlogo, #besttrademarklawyer, #trademarklitigation attorney, #trademarklitigationlawfirm, #trademarklitigationlawyer, #toptrademarklitigationfirm, #tmattorney, #trademarkapplicationlawyer, #trademarkapplicationattorney, #trademarkcost, #registeredtrademarkattorney, #registredservicemark, #trademarkbusinessname, #federaltrademarksearch, #wipotrademarksearch, #freetrademarksearch
Trademarks have value; some more than others. Generally speaking, those trademarks that are unique are more valuable than those trademarks that describe the product or service that is associated with the mark.
When clients approach me with suggestive or descriptive marks, they are often disappointed when I don't share their enthusiasm. The internet is full of marketing experts recommending that service providers or manufacturers brand their products with names that tell the consumer exactly what they will be getting. Marketing experts argue that these types of names are more likely to be remembered by the public. That may be true. What is also true is that names that describe the product are weak trademarks or are not trademarks at all.
Trademarks that merely describe the service or product associated with the mark are placed on the USPTO Supplemental Register. When a trademark is placed on the supplemental register, the owner does not derive the same benefits and protections for the trademark as if it were registered on the USPTO Primary Register. Trademarks listed on the Primary Register are "real" trademarks that receive all of the benefits of federal trademark registration.
The USPTO Supplemental Register includes marks that do not qualify for federal trademark protection because they are not distinctive enough to indicate the source of the product. The common types of marks that end up on the supplement register include those that are geographically descriptive, descriptive in general, and surnames. These marks may at some point, generally, at least after five years of use, become a source indicator, but at the point of filing, they are merely descriptive of the product or service. These marks do not receive the same protections as those listed in the Primary Register. In fact, placement on the Supplemental Register does not indicate ownership of the mark, start the timer for incontestability of the mark, or imply exclusivity of the mark.
So, what's the point of registering a mark on the Supplemental Register?
1. The Federal Registration Symbol may be used when the mark is used with the goods or services identified in the application;
2. Registration on the Supplemental Register allows the trademark owner to seek reciprocal rights in foreign countries; and
3. Providing proper notice of some trademarks rights makes injunctive relief and other remedies available to a trademark owner who successfully sues an infringer (very unlikely).
For all of these reasons, applicants should always fight for registration on the Principal Register. There are legal arguments supporting aquired distinctiveness of even the most descriptive marks, which would make the marks eligible for the Primary Register. Also, what might appear to be descriptive, might actually be suggestive, which is protectable on the Primary Register without a showing of acquired distinctiveness. Try for the Principal Register, if you fail, amend the application to the Supplemental Register.
Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution. This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
The Trademark Is Not Registered, Can I Use it? No.
This blog post answers the question, “No one has a trademark registration…so can I use it?”
Can I Use an Unregistered Trademark Since NoOne Owns It? NO.
Trademarks are not established by registration. They are created by use. Clients often conduct a quick United States Patent and Trademark Office ("USPTO") trademark database search to rightly determine that the word, phrase or logo of interest has not been registered as a federal trademark. After thousands of dollars are spent, the dreaded cease and desist letter arrives informing the new trademark owner that the unregistered mark has been in use by another in the same field. The prior user has superior rights in the trademark, despite the lack of registration. Why? Common law trademark rights are established by use, not registration.
Federal trademark registration provides many advantages for those who secure them. Benefits of federal trademark registration include the following:
1) Being listed on the USPTO website for all to see
2) Being known to USPTO trademark examiners
3) Establishes nationwide use
4) Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration
5) Incontestable trademark status after five years
6) Grants the right to use the ® symbol
7) Grants the right to sue in federal court and, possibly triple damages and attorney fees
8) No need to prove actual damages
9) Provides a basis for foreign registrations
10) Empowers US Customs and Border Protection can block infringing imports
However, registration is not what gives the trademark ownership rights. Common law trademark rights are established upon use. So long as the trademark is being used as a trademark (to designate the source of goods, and not to describe the thing itself), a trademark owner does have common law trademark rights, including the power to prevent others from using the trademark in the same geographic area where the mark is used.
These rights are not as strong as those granted with a federal trademark registration. However, common law trademark rights are significant enough to warrant attention. You don't want to invest in a mark that can't be used in specific geographic regions. And, in the age of the internet, the "geographic region" may be the entire viewing public's region.
For all of these reasons, it's essential for anyone who is working on branding a product or service using a trademark to have a trademark clearance search conducted before the product or service hits the market. If you are interested in a flat fee trademark search, please contact us.
Ahaji Amos, PLLC
More Than Your Average IP Boutique
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
I’m on YouTube!
Ahaji Amos, PLLC
Someone Is Using Your TradeMark...What You Need to Know
Being a trademark owner has benefits, but as with everything, there are limits and trademark owners should be aware of these limits. Junior trademark users may obtain trademark rights using cancelations, oppositions, and concurrent use proceedings.
#trademarklitigation attorney, #trademarklitigationlawfirm
So, you have a federal trademark registration, and you want to stop someone else from using it. That's why you sought out the registration, right? Not so fast. Here are a few things to know.
1. Subsequent Users Still Have Rights
If you successfully obtain a trademark from the U.S. Patent and Trademark Office, you do have the right to stop some others from uses that are confusingly similar. However, those that start using the trademark after you began using, but before you obtained your trademark registration, still have rights that may prevent you from stopping their use. If a party starts using the mark in good faith, and without knowledge of the trademark owner's use, the subsequent user can retain common law trademark rights. The subsequent user rights will be limited to the territory in which they were using the trademark before the trademark owner filed their trademark application, in most cases.
2. Prior Users Still Have Nationwide Rights - Within 5 Years
Your trademark rights are established by use, not registration. So, those that were using the trademark in a particular territory can't be forced to stop using the trademark just because you obtained a federal registration. The prior user will not be restricted to a specific geographic region, as the prior user has national priority over the trademark owner.
Even more, the unregistered prior user can oppose a trademark owner's application and can and should consider opposing or seeking cancelation of the trademark registration. There is no need for the prior user to secure a trademark before requesting cancelation or opposition of the trademark registration. The ability to oppose is limited to the 30-day opposition period after the mark is allowed. A prior user may seek cancelation within five years of the date of registration based on prior use.
3. Prior Users Still Have Limited Rights - After 5 Years
After the fifth year of registration, a trademark owner can seek "incontestable" status by filing an affidavit, which increases the evidentiary value of the registration and limits the grounds available to those who seek to cancel the trademark registration. While an incontestable mark does have superior rights, it can't be used to prevent a prior user from continuing to use the trademark in the geographic location in which they have continued to use the trademark, without interruption. That prior user could block the use of that trademark by the trademark owner in those territories.
Your Takeaway...
A subsequent user cannot challenge a prior user's trademark use via an opposition or cancelation proceeding. So, don't file an opposition or cancelation if you know that the trademark was already in use (one that is confusingly similar to an ordinary consumer in the "marketplace") before you began using the mark. A subsequent user can sue the trademark owner for trademark rights (not recommended). The subsequent user may also file a trademark application requesting limited territorial rights. This is called a concurrent registration.
A concurrent use proceeding requires the applicant to say where and for how long they have used the mark, as well as how the geographic and temporal scope of other's use of the trademark. If the mark is otherwise registerable, it will issue. As with all other trademarks, it will be published for opposition in the Official Gazette for 30 days. If unopposed, notices are sent to the parties concurrently using the mark, who have 40 days to respond.
If there is no objection, a federal registration will issue to the applicant that is limited to a particular type of good or services, in a specific territory. The prior users will be entitled to protection in all areas in which the junior user is unable to establish priority unless the parties agree otherwise (concurrent use agreement).
Being a trademark owner has benefits, but as with everything, there are limits and trademark owners should be aware of these limits.
GOALSETTER SHARK TANK EPISODE!
My client, Goalsetter, pitched on Shark Tank over the weekend. Check out CEO, Tanya, after the second commercial break!
I wanted to update everyone! My client, GoalSetter, was on Shark Tank recently. Check out the episode on ABC.com (just after second commercial break). #goalsetter #womeninbusiness #SavvyBusinessOwner #MakersGonnaMake #Ladypreneur #womenwithambition #goalgetter #femaleceo
Applying for a Trademark on a Business Name
Applying for a trademark on a business name seems straighforward. However, there are common errors made which can be avoided. This article covers how to trademark a business name and how to avoid pitfalls commonly encountered during the trademark registration process. #law, #lawyer, #legal, #attorney, #lawfirm, #lawyerlife, #lawyers, #trademark, #patent, #motivation, #trademarks, #womeninip, #iplaw, #iplawyers, #womeninbusiness, #mochapreneurs, #business, #work, #office, #entrepreneur #attorneys, #inventor, #ahaji #ahajiamos, #ahajiamospllc, #trademarkattorney, #trademarkattorneynearme, #blacktrademarkattorney, #femaletrademarkattorney, #blacktrademarkattorney, #womentrademarkattorney, #affordabletrademarkattorney, #trademarkattorneyflatfee, #onlinetrademarkattorney, #trademarklawyer, #trademarksearch, #trademark, #trademarkaname, #trademarkalogo, #tess, #howtotrademarkalogo, #trademarkattorneysearch, #trademarkregistration, #costoftrademarkattorney, #napervilletrademarklawyer, #napervilletrademark lawyer, #tmlogo, #trademarktm, #tmtrademark, #why registeratrademark, #rsymbol, #trademarksymbol, #trademarksofletters, #whatisacertificationmark, #whatdoestrademarkregistrationdo, #canIstopsomeonefromusingmyname, #canIstopsomeonefromusingmylogo, #howlongdoesittaketoregister atrademark, #trademarksymbols, #amazonbrandingtrademark, #doamazonrulesallowtrademarkonlogo, #besttrademarklawyer, #trademarklitigation attorney, #trademarklitigationlawfirm, #trademarklitigationlawyer, #toptrademarklitigationfirm, #tmattorney, #trademarkapplicationlawyer, #trademarkapplicationattorney, #trademarkcost, #registeredtrademarkattorney, #registredservicemark, #trademarkbusinessname, #federaltrademarksearch, #wipotrademarksearch, #freetrademarksearch
If you are considering applying for federal trademark registration on your business name, there a few things you want to keep in mind, before you start advertising.
Note: Advertising agencies tell everyone to use descriptive business names. If the intent is to use the business name as a trademark and apply for trademark registration in the USPTO, then do not use any words that describe your product or service as your trademark. Descriptive marks are by definition, not trademarks that are capable of federal trademark protection. Trademarks indicate the source of goods or services and do not merely describe the product or service itself, or the attribute of the products or services. Unique marks are the best and easiest trademarks to protect.
1. Check Your State's Business Name Registry
If another entity has registered your business entity name in your state, it doesn't make sense to use that name. Could you successfully apply for a trademark registration? Yes. Will, the trademark application process, cost you a lot more than if you chose an original name? Absolutely. The USPTO Trademark Examining Attorney will conduct a trademark search on your trademark, and that search is not limited to the USPTO TESS system. Since federal trademark registration is based upon use and not registration, a property trademark search will include all state business name registries, as well as domain names, product names and descriptions for online stores, google search results, and even dictionaries. Any conflicting or similar uses will be used to reject your trademark application, and it will be up to the person applying for the trademark registration to explain why the cited uses are not a bar to registration of the logo or name or word that is the subject of the trademark application.
2. Check the USPTO Trademark Electronic Search System (TESS)
Even though trademark registration is not required for a trademark owner to have trademark rights, it's still important to make sure your business name is not already registered in the USPTO. If someone has already registered the mark, why fight for it? It'll be expensive and generally a waste of resources. Just make sure you know how to conduct a proper USPTO TESS search. It's not intuitive to those unfamiliar with trademark law.
3. Search Similar Trademarks
The standard for infringement of a trademark is the likelihood of confusion. That means that merely changing the spelling or pronunciation of a word won't work to shield an applicant from potential trademark infringement. In other words, the USPTO's Examining Trademark Attorney will see and consider "momma" and "mamma" to be identical. "Goodnight" and "good night" are also identical, as are "black" and "blaque." So, any search you conduct should include similar sounding marks as well as marks that are written similarly.
4. Make Sure You Own the Copyright
If you purchased your trademark from a third party on a website like Fiver.com, Etsy.com, or 99Design, you might want to doublecheck to ensure that you own the mark. If that designer has sold the same mark to others in similar industries or that are selling related services or products, you will only be able to rightfully own the trademark if you were the first one to use it. Even then, the subsequent users will have some rights that reduce any rights that you may have should you be allowed to receive a trademark registration. (Don't buy pre-made trademarks or branding packages. It's easy, but you can never own them.)
5. Is Your Business Name a Trademark or a Service Mark?
A business name is considered a trade name and not a trademark, or service mark. Trademark law does not protect business names. Trademarks are words, logos, phrases and the like that indicate source to the public. Trademarks are generally associated with services and products, not business names. To qualify for federal trademark registration, the business name must be used to identify the business' goods are services from those of others, and not merely as the name of the company. Providing a proper trademark specimen will be key.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
I’m on YouTube!
Ahaji Amos, PLLC
#trademarks #womeninip #womeninbusiness #mochapreneurs
THE TRADEMARK OPPOSITION PROCESS
This article walks a reader through the trademark opposition process, including filing a notice for opposition, defending the opposition, the trademark opposition timeline, the trademark opposition process, what to do when your trademark application is opposed, and the grounds for a trademark application opposition.
#ahaji #ahajiamos #ahajiamospllc #filetrademarkopposition #whattodowhensomeonefilesatrademarkopposition #trademarkoppositionlawyer #trademarkoppositionattorney #trademarkcancelationlawyer #trademarkoppositionattorney #whattodowhentrademarkisopposed #howtocancelatrademark #trademarkoppositionperiod #trademarkoppositiontimeline #trademarkoppositionprocess #fileoppositiontotrademark #opposingatrademarkopposition #opposingtrademarkregistration #trademarkoppositionproceeding #showtodefendtrademarkopposition #filinganoticeofopposition #groundsfortrademarkopposition
What is a trademark opposition? What to do if your trademark is opposed?
Once the United States Patent and Trademark Office approves a federal trademark application, the trademark is published for opposition. Publication is accomplished by listing the trademark in the Official Gazette, a weekly USPTO publication. The trademark appears in the Official Gazette for 30 days, but this "opposition window" may be extended if a party files a request to extend the time.
Notice of Opposition
If a party, or group of parties, feels that registration of the trademark will be harmful to them, they may file a Notice of Opposition during the opposition window. A Notice of Opposition is nearly identical to a federal court complaint. The filer, or "opposer," must set forth a fact supporting each element of its claims. The opposer must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.
Grounds for Trademark Opposition
Typical grounds for opposition include the likelihood of confusion, priority (opposer was the first to use the mark), the trademark is descriptive of the goods or services claimed, the mark is not distinctive, or the mark has become a common descriptive name of an article or substance. Other, less asserted grounds for opposition include, abandonment of the trademark through non-use, fraudulent or illegal registration, applicant is precluded from the registration via court order, the trademark includes a government insignia, the trademark contains immoral, deceptive or scandalous matter, and the mark identifies a living individual without that person's consent. Many of the same grounds can also be asserted in a trademark cancelation proceeding.
Answer - Defending A Trademark When Notice of Opposition is Filed
Once the Notice of Opposition is filed, the owner of the trademark being opposed has 40 days to file an Answer. The Answer must either admit or deny every allegation in the Notice of Opposition. The Answer must also include any affirmative defenses or counterclaims the applicant wishes to assert. An affirmative defense acknowledges an apparent right held by opposer but relies on some new matter by which opposer's rights are defeated. As such, an applicant must be careful about asserting such defenses. A counterclaim is a claim that an applicant has against the opposer that arises out of the same occurrence or transaction that is the subject of the opposition. A counterclaim can include a request to cancel or restrict one or more of the registration on which opposer relies. If a counterclaim is asserted, the applicant must remember to pay the fee associated with the request for cancelation.
What's Next
The opposer has the opportunity to reply to the Answer, and the opposition moves on to discovery and a lengthy opposition schedule, which does not typically includes several motions that are filed by both parties.
Here's a sample opposition schedule:
Time to Answer 11/28/2018
Deadline for Discovery Conference 12/27/2018
Discovery Opens 12/27/2018
Initial Disclosures Due 1/27/2019
Expert Disclosures Due 5/26/2020
Discovery Closes 6/26/2020
Plaintiff's Pretrial Disclosures Due 7/10/2020
Plaintiff's 30-day Trial Period Ends 8/24/2020
Defendant's Pretrial Disclosures Due 9/8/2020
Defendant's 30-day Trial Period Ends 10/23/2020
Plaintiff's Rebuttal Disclosures Due 11/7/2020
Plaintiff's 15-day Rebuttal Period Ends 12/7/2020
Plaintiff's Opening Brief Due 2/5/2021
Defendant's Brief Due 3/6/2021
Plaintiff's Reply Brief Due 3/21/2021
Request for Oral Hearing (option) Due 3/31/2021
Oppositions can be complicated, expensive and lengthy.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
I’m on YouTube!
Ahaji Amos, PLLC
#law #lawyer #legal #attorney #lawfirm #lawyerlife #lawyers #trademark #patent #motivation #trademarks #womeninip #iplaw #iplawyers #womeninbusiness #mochapreneurs #business #work #office #entrepreneur #attorneys #inventor #ahaji #ahajiamos #ahajiamospllc #filetrademarkopposition #whattodowhensomeonefilesatrademarkopposition #trademarkoppositionlawyer #trademarkoppositionattorney #trademarkcancelationlawyer #trademarkoppositionattorney #whattodowhentrademarkisopposed #howtocancelatrademark #trademarkoppositionperiod #trademarkoppositiontimeline #trademarkoppositionprocess #fileoppositiontotrademark #opposingatrademarkopposition #opposingtrademarkregistration #trademarkoppositionproceeding #showtodefendtrademarkopposition #filinganoticeofopposition #groundsfortrademarkopposition
WHAT IS AN ACCEPTABLE TRADEMARK SPECIMEN
This post discusses many of the common specimen rejections for trademark applications.
If you have applied for federal trademark registration, United States Patent and Trademark Office ("USPTO") will require specimens that demonstrate trademark use associated with the goods or services identified in your trademark registration application. The widespread misunderstanding of what is bona fide trademark use leads to frustration when providing proof of trademark use (specimen), which is necessary to obtain and maintain a federal trademark. This post is meant to address the most common issues with trademark specimens.
First, the specimen must demonstrate how the trademark is used in interstate commerce. That means the specimen must show how the trademark is used in association with a good or service that has been sold between citizens of different states, the U.S. and a foreign country or U.S. territory, or another type of commerce regulated by Commerce.
Second, The USPTO wants to see that the trademark is being used as a trademark, not as a design. A trademark is a source indicator for goods or services. As such, an applicant should provide a specimen that shows the use of the trademark where a consumer would typically look to find the source of a good. The trademark does not necessarily need to be affixed upon the good but must be used in a manner that distinguishes the supplier of the source of the good from others.
1. MUST SHOW TRADEMARK USE, NOT JUST USE
If a user generally looks at the packaging that's where the trademark should be placed.
Examples:
a diamond ring would not have a trademark on it; the box would display the trademark
a t-shirt displays a design on its front; the origin is indicated either on the inside collar or the lower cuff because that's where you would look to see who either designed it or distributed it (If Hanes is inside the collar, they made the shirt)
2. TRADEMARK is a TRADE NAME
A trademark can't be merely a trade name. It must be associated with a good or service, not just the name of a company or a vocation.
Example:
An envelope showing the trade name on the return address is not an acceptable specimen because there is an assumption that the trademark is the name of the business.
3. LACK OF PROMINENCE OF MARK
A trademark specimen should never show the use of the trademark where the trademark is written in the same manner as the remainder of the sentence because the USPTO will consider prominence in determining trademark use.
Example:
Trademark use is not indicated when the trademark is buried in the middle of the text describing the goods in bold font, because the other matter was also in bold font.
A mark may appear more prominent when the specimen:
presents the mark in larger font size or different stylization or color than the surrounding text;
places the mark at the beginning of a line or sentence;
positions the mark next to a picture or description of the goods; or
uses the "TM" designation with the applied-for mark (however, the designation alone does not transform a mark into a trademark if other considerations indicate it does not function as a trademark).
4. SPECIMEN SHOWS DIFFERENT TRADEMARK
The specimen must depict the trademark identically to how it is represented in the trademark application. Identically. The same. If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark. Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce. If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen. If removal of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing.
Example:
Trademark drawing shows, "ALL THE KING’S MEN," and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce.
5. DON'T USE ® ON A SPECIMEN
™ is the proper designation for common law trademarks. A trademark owner may only use ® once a federal trademark registration is actually issued and may only be used for the goods or services listed in the federal trademark registration.
Examples:
Using ® in association with a mark first filed on an intent-to-use application that is currently in use. ™ should be used until the trademark is registered on the Primary Registry.
Using ® for a trademark that has issued for winery services on wine products. Trademark registrations are limited to the goods identified in the trademark application.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
Ahaji Amos is an attorney at Ahaji Amos, PLLC, and consultant at the Series A Institute. The Series A Institute positions early-stage women and minority-led companies for equity financing through education. Series A multi-day workshops convene start-up businesses, with a focus on women and minority-led start-ups, for training sessions, roundtables, and networking events to assist them in positioning their companies for alternative financing. Through workshop sponsorship opportunities, we provide agencies and established businesses the chance to develop new business contacts, leads, and partnerships, to enhance brand awareness and recognition, to support local start-ups and to fulfill small and minority business commitments. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
#law #lawyer #legal #attorney #lawfirm #lawyerlife #lawyers #trademark #patent #motivation #trademarks #womeninip #iplaw #iplawyers #womeninbusiness #mochapreneurs #business #work #office #entrepreneur #attorneys #inventor #ahaji #ahajiamos #ahajiamospllc
Ahaji Amos, PLLC
ahaji@ahajiamos.com
https://trademarkista.com
5 Tips: Getting Your Domain Name
You’ve poured your resources into developing a brand and now want to build a website. When you go to register your brand name as a domain name you find that it’s already taken. Before you invest in rebranding, here are five tips for getting the domain name you want.
You’ve poured your resources into developing a brand and now want to build a website. When you go to register your brand name as a domain name you find that it’s already taken. Before you invest in rebranding, here are five tips for getting the domain name you want.
1. Buy It!
You could always buy the domain name you want if the registrant is willing to sell it to you. There are ways to get a domain name back from someone that has in bad faith registered it. But, the reality is that sometimes just paying for it is the best option. There are companies that buy domain names that include familiar names or phrases hoping one day that the domain name's value increases netting the registrant a profit. Other times, the domain name was registered with good intentions. In those cases, maybe the owner isn't using it and has no plans to use it. There are tons of websites out there that have been abandoned but remain visible for months. The domain dispute resolution procedures are focused on bad faith registrants. They are timely and costly. Before any of the methods discussed below are implemented, it's vital to contact the registrant to see if they are willing to sell it. Domain names are bought, sold, and auctioned on sites like eBay and GreatDomains.com. If the registrant is willing to sell the domain to you at a reasonable rate, you could avoid filing and legal fees, which may, in the end, be greater that the registrant's selling price. If you aren't getting a callback, employ an attorney to help out. The cost to negotiate the sale of a domain will be less than the cost to go after the registrant. If negotiations fail, you still have options.
2. File a Federal Trademark Infringement Lawsuit
Trademark rights are determined based on first-use. If you are the first user of the words or phrases making up the domain name, you have trademark rights to them, which the Lanham Act protects. If you take the registrant to court and win, the domain name is transferred, and you'll be awarded money damages for lost profit. Lawsuits could cost anywhere from nothing in the case of a contingency fee agreement to several thousand dollars, and take 2-3 years to reach a resolution.
3. File a Cybersquatting Lawsuit
If the registrant has acted in bath faith, it is also possible to file a lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"). Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who has a bad faith intent to profit from the mark, registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, identical or confusingly similar to or dilutive of a famous mark, or is
a trademark related to the Red Cross or the Olympics. The ACPA is broader in scope than what is available in trademark infringement cases because it does not include an exemption for fair use or any other speech protected under the First Amendment, which is an exception to trademark infringement. Cases filed under the ACPA take 2-3 years on average to come to a resolution and have costs similar to trademark infringement cases. Cybersquatting claims are filed along with trademark infringement claims. Cybersquatters found liable under the ACPA are not subject to injunctions and do not pay money damages.
4. Uniform Domain Name Dispute Resolution Policy
The Uniform Domain Name Dispute Policy ("UDRP") is a process administered by the Internet Corporation for Assigned Names and Numbers ("ICANN") for the resolution of disputes regarding the registration of internet domain names. ICANN has the power to transfer a domain from a bad faith user to another who has good faith rights to the domain but does not have the authority to award money damages.
A person who has legitimate rights to a trademark that is confusingly similar to a registered domain name can file a complaint under the UDRP if they can establish three things. First, the domain name must be confusingly similar to the complainant's trademark. Second, Complainant must have legitimate rights to the trademark. Federal trademark registration is substantial evidence of legitimate rights. Where a federal trademark doesn't exist, the complainant's rarely see success under the policy. Third, the complainant must show that the domain registrant has no legitimate interest in the domain name other than to make a profit from selling it. This "bad faith" element is proven by evidence showing the intent of her registration was for resale, the intent of the registration was to block the trademark owner from registering the domain name, whether the registrant is a competitor, or has some competing interest, and intent to confuse the public.
The UDRP process is complicated enough to require an attorney, takes 6-9 months to complete, which is much shorter than litigation, and generally, costs about $1,000 in legal fees. This procedure can be filed regardless of whether a lawsuit is filed in federal court. And, if a trademark owner isn't successful, she can always file a lawsuit and try again.
5. Sue Under the Trademark Anti-Dilution Act
There is another option. You can sue under the Trademark Dilution Revision Act of 2006 ("TDR"). Under the TDR, domain registrants may be ordered to pay money damages to trademark owners where dilution of the trademark was likely by a member of the general public, rather than one in a niche market. Trademark owners can go after registrants whose domains are not confusingly similar but dilute the overall distinctiveness of the trademark at issue. The TDR is not a common cause of action for trademark owners because it's only available for famous marks whose owners are diligent at registering both their trademarks and desired domain names. TDR lawsuits take 2-3 years on average to reach a resolution and are on par in cost to similar trademark-related litigation.
Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution. This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
Ahaji Amos, PLLC
ahaji@ahajiamos.com
https://trademarkista.com
ACCEPTABLE TRADEMARK SPECIMENS: 101
This post explains the types of specimens acceptable to the United States Patent and Trademark Office.
If you have applied for a federal trademark registration the United States Patent and Trademark Office ("USPTO") will require specimens that demonstrate current trademark use associated with the goods or services identified in your trademark registration application. The widespread misunderstanding of bona fide trademark use leads to frustration when providing proof of trademark use (specimen), which is necessary to both obtain and maintain a federal trademark. This post is meant to address the most common issues with trademark specimens.
INTERSTATE COMMERCE
First, the specimen must demonstrate how the trademark is used in interstate commerce. That means the specimen must show how the trademark is used in association with a good or service that has been sold between citizens of different states, the U.S. and a foreign country or U.S. territory, or another type of commerce regulated by Commerce.
TRADEMARK USE
Second, The USPTO wants to see that the trademark is being used as a trademark, not as a design. A trademark is a source indicator for goods or services. As such, an applicant should provide a specimen that shows the use of the trademark where a consumer would typically look to find the source of a good. The trademark does not necessarily need to be affixed upon the good but must be used in a manner that distinguishes the supplier of the source of the good from others.
ONE SPECIMEN PER CLASS
Lastly, one specimen must be submitted for EACH class sought in the trademark application.
EXAMPLES:
Examples of Suitable Trademark Specimens:
labels and tags (shirt tag or collar)
stamps (bottom of plate)
stencils (skateboards stenciled with the manufacturer)
cd/DVD/videotape/audiotapes (sound marks)
commercial packaging (jewelry)
website pages (online commerce, services)
displays, including electronic (services)
banners (services)
shelf-talkers (displayed near goods being described)
window displays (services)
menus (restaurants)
infomercials (goods or services offered on tv)
point of sale web-page (showing a clear means for purchasing goods or ordering services)
scratch n' sniff stickers (smell marks)
manuals (included with goods)
Unacceptable specimens:
any specimen with (you must wait until the trademark issues, allowance is not enough)
flyers
business cards
email addresses
street addresses
"contact us" buttons
copy of drawing/trademark alone
package inserts
invoices
announcements
order forms
bills of lading
leaflets
brochures
printed advertising material
circulars
press releases
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
AHAJI AMOS, PLLC
ahaji@ahajiamos.com
https://trademarkista.com
TRADEMARK OPPOSITIONS AND CANCELATIONS
This article details the 8 steps involved in trademark prosecution, including those that occur after the trademark has been allowed, but before the trademark has been registered by the United States Patent and Trademark Office.
There are several steps to the trademark process that go beyond a Notice of Allowance from the US Patent and Trademark Office.
Here are the 8 trademark prosecution steps:
1. Trademark search
2. Identify appropriate goods or services
3. File Trademark Application
4. Prosecution of Trademark (Negotiations between the USPTO and application regarding the registerability of the trademark)
5. Allowance granted by USPTO Trademark Attorney
6. 30-Day opposition period
7. Submission of Statement of Use to USPTO
8. Registration of Trademark
Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution. This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
From Food Truck Guy to Franshisor
Creating a franchise is not as difficult as you think.
My goal as an attorney is not solely to keep clients out of trouble and minimize risk. I try to help clients see and experience their full potential. I recently met two guys who own and operate a food truck business. I'll refer to them as the food truck guys. When I met them, they explained that they had four food trucks in operation in the city in which they both live, and were excited because they had just accepted a deal with an investor that would expand the company to another city.
The investor had proposed to run and operate four additional trucks in another city, using the same truck design, logo, business model, and products. The food truck guys would teach the investor how to run the business, provide information on where to purchase supplies, and allow him to design his truck, uniforms, and advertising materials the same as the food truck guys had done. The investor would expand the brand presence from one coast to the other. And, he would provide all of the capital needed for the expansion. This was something that the food truck guys had dreamed of, but couldn't bring to fruition because of a lack of capital and infrastructure. What the food truck guys saw as an exciting new opportunity set off my alarm bells.
So, you are franchising? That's great! Blank stare. "Uh, No. He's going to own the truck; he just wants to use our name and truck design." Is he paying you a royalty? "He wants to be a partner." How much of a partner? "He's talking about half." Half! "We'll, he's putting up the money for the extra trucks." Are you going to license your trademarks to him? "Yes. But, we haven't filed for them yet." What's to stop him from just running the new trucks without you?
Based on the local success of the food truck guys, I have no doubt that the investor was going to do exactly what he proposed; i.e., use the goodwill, following, and tested business model developed by the food truck guys for his benefit. I also have no doubt that the investor had no intention of being an actual partner, i.e. to share in the losses and the profits. My guess is that once he learned the ropes, he'd disappear off the food truck guy's radar and benefit from their years of hard work.
The food truck guys failed to recognize that they were franchising without the opportunities inherent in the franchise structure for a franchisor. A franchise business is one in which the owners, or "franchisors," sell the rights to their business logos, name, and model to third parties, owned by independent, third party operators, called "franchisees." Becoming a franchisor could be extremely lucrative.
Franchisors can generate revenue from various sources.
Initial Franchise Fees. Most franchise companies require a new franchisee to pay a one-time up-front fee to become a franchisee. This fee can be as little as $10,000 to $15,000 or as high as the sky--in some cases well over $100,000. The average or typical initial franchise fee for a single unit is about $20,000 to $35,000.
Royalty Payments. A standard royalty percentage in a franchise is 5 to 6 percent of gross revenue, but could also be a set amount, say $5000 per month.
Marketing Fees. Franchises often require participation in a joint advertising or marketing fund. Participation costs 1-5% of gross sales volume.
Supply Chain Management Fees. Franchisors must control the quality of their brand. As such, they have complete control of the franchisee's supply chain. All products, supplies, tools, and sometimes real estate, must be purchased directly from the franchisor, who in turn benefits from economies of scale that are only partially passed on to the franchisor. Buying, 100,000 apples is much less expensive per unit than purchasing 100 apples. The franchisor can take his savings and split the difference with individual franchisees who could never buy at the same rate.
Leasing Fees. Many franchisors retain ownership of land or equipment used by the franchise, which is required to lease the land or equipment from the franchisor perpetually. The franchisee pays rent to the franchisor for as long as they own the franchisor, while the franchisor benefits from the increasing value of the land or equipment.
To advance from food truck owners to franchisors, the truck guys could avoid the partnership and make more money by taking the following steps:
1. Develop a Great Business Model. Figure out what works and what doesn't work for the company. Work out the kinks in distribution, marketing, supply chain, sales, advertising, etc. You should have at least a couple profitable locations (or trucks) before you consider franchising.
2. Create a Marketable Brand. Create a consistent brand that the public associates with your product or service. Use logos, taglines, colors, interior design, and words to develop a recognizable brand and image. Make sure that brand is translatable and can be replicated.
3. Own Your Brand. Protect every aspect of your brand. Colors, phrases, words, the look, and feel of your interior design and marketing, logos, and unique sounds can all be protected using intellectual property laws. Copyrights are used to protect unique expressions that are fixed in tangible media (websites, marketing pieces, manuals, books, etc.) A trademark is a word, phrase, symbol, and design that identifies and distinguishes the source of goods of one party from those of others (logo, business name, product name, trade dress). A service mark is a word, phrase, symbol, and design that identifies and distinguishes the source of a service rather than goods (business name, product name). Design patents protect ornamental, non-functional designs. Trade secrets are formed by adhering to statutory guidelines for keeping valuable information out of the public (suppliers, distributors, customer information, business model, marketing strategy and contacts).
4. Get Your Finances in Order. You will have to disclose all of your financial information to the Federal Trade Commission (FTC) to properly register as a franchisor. Make sure you have not co-mingled your business and professional finances and that you've kept clean and detailed financial records. Franchisees will want to know what to expect when they buy into your concept.
5. Develop a Franchise Model. Determine your required fees and which portions of the supply chain you as the franchisor will control. Think about and be able to articulate how you will market to potential franchisees, as well as to the consumer. Do you know what type of background, experience, and net worth will be necessary to ensure a successful independent franchise business?
6. Become a Franchisor. Complete the Franchise Disclosure Document (FDD) to register your new franchise with the FTC, and begin negotiating with each state for the right to operate your franchise in that state. Completing the FDD is a daunting process and will require an attorney.
7. Build Your Team. Build a team of professionals to operate your franchise
5 REASONS WHY YOUR PITCH FELL FLAT
Here are the five common reasons why most pitches to angel investors fail to convey a likelihood of success, which is necessary to get the start-ups the funding they need.
I recently had the honor of being a business coach at the 2017 Black Enterprise Entrepreneurial Summit. A few smart, young and driven men and women competed to win $10,000 to fund their start-ups. I sat at a table filled with capital; two bankers, two angel investors, and one successful entrepreneur who had lost that very same competition just a few years back. We watched each entrepreneur try to sell their product to the best of their ability in about a minute. Only sixty seconds was allowed. No props, no samples, no demonstrations. Just the presenter and his or her words.
A few were successful; many fell flat. What all of the presenters had in common was enthusiasm, great ideas, and good products. Most of the pitches lacked essential information that most investors need to hear when deciding to put their money on the line. Here are the five common reasons why most pitches to angel investors fail to convey a likelihood of success, which is necessary to get the start-ups the funding they need.
1. YOUR PITCH IS A COMMERICAL
There's no other way to say it. A pitch is not a commercial. A pitch is a concise description of a business idea to an investor. The key part of that definition is that the audience is an investor, not a consumer. Consumers need to be sold on the product. Investors need to like the product, but be sold on the profitability of the product. So, your pitch should speak briefly about the product. My rule of thumb is that for a ten-minute pitch, two minutes should be devoted to describing the product itself. A few minutes should be directed at the market and to how your products fit into it that market or disrupts it. The remainder of your time should be in showing the investor how they will profit from your invention.
2. YOU DIDN'T TELL US THAT YOU OWNED IT
I'm an intellectual property attorney, so I'm sensitive about a start-ups' ownership rights to their prized product. I've listened to countless excited and motivated entrepreneurs that have invested all of their savings and time into what they see as the next big thing but have failed to ensure that someone else doesn't already own it. About two seconds after I believe I understand what the product or service is, I begin a rudimentary clearance search. A clearance search looks for any intellectual property rights that could be infringed by the use or sale of the product or service. About 50% of the time, I find that the bright new idea being pitched isn't so bright and new; it's already owned by someone else. Many inventors patent their ideas but never commercialize them. Many don't know that once a patent issues, the patent holder has the right to stop anyone from making, using, or selling the product or process. Commercialization is not necessary. My next step is raising my hand to ask the presenter if they have protected their idea and how it differs from the protected product or service. Prepared presenters anticipate these questions and include the answers to those questions during their pitch. Once the investor asks, uncertainty has inevitably already been introduced into the investor's mind. If you don't have any intellectual property protection, tell the investor in one sentence why it's not necessary before they ask.
3. YOU LOVE YOUR BUSINESS, TOO MUCH
Many first-time start-up leaders try to impress investors with how passionate they are about their new product or service. While that's wonderful, please know that most investors don't care. What investors care about is how they will get their money back, plus a profit. How does that happen? You exit. Investors want to exit the business in about five years. Start-up CEO's that are overly enthusiastic about the product or service, and not the profits it might generate, convey a message that they will never want to exit. If you don't exit, the investor may never get the financial reward they seek. Wise presenters will express enthusiasm about the product or service, and even more enthusiasm about their ability to have a successful exit. They know, to whom they will divest, how they are going to get before that person or company, and how they fit into that company's portfolio. If your start-up has a new hair care product, and an investor asks if you have connections at P&G or Unilever, you should understand that they are asking if you've thought about your exit. Your exit strategy should come closer to the beginning of your pitch, than the end of it. If your pitch doesn't include the word "exit," you've made a mistake.
4. YOU DON'T KNOW YOUR NUMBERS
You must know your numbers. Talented presenters can get the most import figures in two to three sentences. The most important figures are: 1. how much it costs to produce the product or service (and if the investment will lower the cost); 2. how many widgets you've sold, or services you have provided; 3. how profitable you are (you don't have to show a profit to get funded); 4. when you expect to be profitable; 5. how much money are you raising and what are you going to do with it (specifically). Whoever is pitching on behalf of the company should know the numbers, saying that you aren't the numbers guy during your pitch won't fly.
5. YOU DIDN'T SHOW US THAT YOU UNDERSTOOD THE MARKET
More and more people want to found the next Uber, crowding the market for start-up funding. If others have pitched similar ideas, it will behoove the presenter to explain why her widget is different from all others out there. Conduct a SWOT analysis and summarize it for the investor. Describe the consumer, and how to market to the consumer (specifically). Tell us how large the marketplace is and what your target demographic group is. Then, say how much of that market you think you can reach and specifically how you will market to that target group. An investor does not want to be told that your going to do social media marketing. Your pitch should be more detailed, "We will conduct a targeted Facebook campaign, directed to single women 20-35, within incomes of $50,000 or more, than live in urban areas with populations exceeding 500,000."
Most start-ups get one chance to pitch to an investor, investment group, or fund. If your pitch has any of the flaws discussed above, you aren't likely to get funded. So, make sure you get it right the first time.
Ahaji Amos is an attorney at Ahaji Amos, PLLC, and consultant at the Series A Institute. The Series A Institute positions early-stage women and minority-led companies for equity financing through education. Series A multi-day workshops convene start-up businesses, with a focus on women and minority-led start-ups, for training sessions, roundtables, and networking events to assist them in positioning their companies for alternative financing. Through workshop sponsorship opportunities, we provide agencies and established businesses the chance to develop new business contacts, leads, and partnerships, to enhance brand awareness and recognition, to support local start-ups and to fulfill small and minority business commitments. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
5 REASONS TO REGISTER THE TRADEMARK ON YOUR BUSINESS NAME
Here are five reasons why entrepreneurs should register their trademarks with the United States Patent and Trademark Office (“USPTO”) as soon as possible.
In the age of social media, most new business owners quickly become experts at branding. Savvy marketers know how to develop a unique name, logo, and style that can direct customers towards their brand. Significant resources are used to establish a social media following across more and more platforms including Facebook, Instagram, and Snapchat. Despite launching carefully planned and costly marketing campaigns, many new business owners delay registering their trademarks, which leaves their new ventures vulnerable to losses and less valuable to investors in many ways. Here are five reasons why entrepreneurs should register their trademarks with the United States Patent and Trademark Office (“USPTO”) as soon as possible.
1. KNOW YOU ARE NOT INFRINGING ANOTHER'S MARK
When you file a trademark application, the USPTO vigorously examines it. The USPTO has unbelievable access to information. I'm often told by potential clients that they've already done a search, only to learn that they have no idea that the standard for trademark infringement is confusingly "similar," not the "same." That means that you need to search for marks in different languages, similar sounding marks, similar prefixes/suffixes, alternative spellings, oddball abbreviation, word/number substitutions, combined terms, etc. Good trademark searches are quite involved. If the USPTO issues your trademark registration, you can safely assume (and there's a legal presumption) that your use of the trademark won't' infringe another's right to that mark. There is also a 6-month publication period after issuance wherein those that believe they have rights to the mark could oppose it. Getting through the opposition period, as well as the examination serves as good evidence that your use of the trademark is both legal and non-infringing. Without this stamp of approval, you are taking a gamble that you have rights to the trademark. If you are right, great. If you are wrong, you'll have to spend money defending yourself against the rightful trademark owner, and you'll have to spend lots of money rebranding, which ultimately confuses your customer base, which had associated you with your trademark. Also, you'll likely be ordered to give up all profits earned by the use of the unregistered mark; and pay other damages, including punitive damages, fines, and attorney's' fees. For that reason, investors are less likely to invest in companies that don't hold registered trademarks.
2. PROTECTION FROM CYBERSQUATTING
Cybersquatting occurs when a company or individual registers a trademark or a domain name with no real intention of using it. When squatters get wind of your great new product or business, they register your URL, and in some cases, register the trademark, placing you in a position of having to buy the URL or license use of that trademark from them at an unreasonable rate. What's even worse, is that the good will you've developed is diminished because would-be consumers are being pulled away to websites and companies that are not affiliated with you or your product. Can you get your URL and trademark back? Possibly (there is a procedure available through the Uniform Domain Name Dispute Resolution Policy (“UDRP”)). But, you'll have to spend money and waste a lot of time to do so. Possession is nine-tenths of the law. And, the procedures for doing this could take up to nine months. While you are dealing with the troll/cybersquatter, your customers are looking elsewhere. While there are procedures in place to prevent the practice under the UDRP, as well as the registration of domain names using a trademark owned by others, even in the absence of trademark registration, trademark owners are required to prove legal rights to the trademark. Trademark registration serves as strong proof of the trademark owner's rights. Without registration, the trademark owner carries a much more severe burden of evidence, to the point that the failure to have registered the mark often results in a loss of the UDRP case. In such instances, it is up to the trademark owner to show that consumers understand that the domain name is associated in the minds of the consumers as referring to the source of that mark, meaning the trademark owner and its products or services. This standard is pretty high and often is impossible to prove.
3. TRADEMARKS ARE VALUABLE ASSETS
Registered trademarks are assets. They can be bought, sold, licensed, and used a security for a debt. For a new business, trademarks can be the most valuable assets, as they help to establish the goodwill that is the cornerstone of a successful start-up. Further, like most assets, registered trademarks may appreciate over time, becoming increasingly valuable as the business continues to grow. Just think of how valuable these trademarks have become over the years: Walt Disney, Apple, Nike Swoosh, Michael Jordan.
4. REGISTRATION IS NECESSARY FOR ENFORCEMENT
It's true that the mere use of a trademark provides its owner's limited common law trademark protection. However, to enforce your trademark in a federal court of law, registration of the trademark is necessary. Litigating federal trademark cases in federal court assures oversight by judges that are more familiar with trademark matters than those in the state courts. Also, having a federally registered trademark provides the advantage of a legal presumption that you are the owner of the trademark, that the trademark is valid, and that you have the exclusive right to use the trademark nationally. The federal registration certificate provides a “stamp of approval” in the mind of a judge or jury that you are the rightful owner of the trademark.
5. REGISTRATION PREVENTS OTHERS FROM USING YOUR MARK FOREVER
Registering your trademark give you the right to stop all others from using your trademark and any other trademark that is confusingly similar to it for as long as the mark is being used and maintenance fees are being paid. By registering your trademarks federally, you preserve the right to expand your business into geographic regions of the country where you have not previously conducted business. If you do not have a federal registration and you have only used your trademark in, for example, Illinois and North Carolina, another person that later files an application for federal registration of the same trademark -- even after you had started use thereof -- can prevent your use of the trademark in any other state. Moreover, five years after federal registration, trademarks become incontestable, which provides an abundance of protection during trademark infringement litigation. Further, trademark registration is inexpensive. The application fee can be as low as $225 per class, and most reputable attorneys charge under $1,000 to take care of the filing for you. And, unlike copyrights and patents, they never expire so long as you use them.
Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution. This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
Don't Apply for a Trademark If...
Trademark rights are often lost after a federal registration is granted. This article details common pitfalls to which novice trademark owners succum that result in a loss of trademar rights.
1. You Ignore Infringement.
Trademark owners have an affirmative duty to police their marks. When a trademark owner fails to do so, trademark rights are lost, even if the trademark owner has obtained a federal trademark registration. Would be infringers use this defense when a trademark owner sends a cease and desist but fails to follow through with litigation threats stated in the letter. The cease and desist shows knowledge of the infringement and lack of action, which indicates an acquiescence, or assurance to the infringer that the trademark owner will not assert its trademark rights against them.
2. You Don't Act Quickly.
Trademark owners must ensure that there are no uses of their trademark by others that might be likely to confuse consumers as to the source of the goods or services bearing the trademark. Trademark owners who are aware of infringing uses and delay taking action against those infringers fail at their duty to police and lose the ability to go after any infringer. What's worse for many trademark owners is that the obligation to police is so powerful, that an infringer need not prove actual knowledge of its infringing use by the trademark owner. An infringing trademark use is protected if the potential infringer can show that the trademark owner should have known of the infringing trademark use. Actual knowledge need not be shown. (Obviously, there are exceptions to this, and every rule.)
3. You Aren't Using It.
Usage, not registration establishes trademark rights. (In many cases, rights exist without a federal registration, but enforcement is impossible without it.) If you register a trademark then stop using it, you lose it. It's just that simple. If another entity comes along and starts using the trademark and you seek to prevent them, abandonment is a valid defense. Token usage does not count. Most courts deem three years of non-use as abandonment, but there is no set period. The courts will look at the state of the mark's goodwill and the owner's intent to determine if a lapse in use is enough to constitute abandonment and loss of the owner's trademark rights.
4. You Don't Control Licensees.
When a trademark owner licenses use of its mark through licensing deals, franchising agreements, and the like, there is still a duty to exercise control of the mark. The trademark owner must control the nature and quality of the goods or services sold under the mark. Licensing agreements must specify the measures to be taken by the trademark owner, even after the license is executed. I see lots of armchair trademark attorneys drafting trademark licenses that fail to discuss the owner's continued control over the mark within the license agreement. These license agreements are "naked licenses," which often result in a complete loss of the trademark owner's trademark rights in the licensed mark, which will bar any equitable relief for the trademark owner in the event of a breach of that license.
5. You Lied When you Applied.
If you lied to the USPTO during your trademark application process, your federal registration is invalid. If you sue someone for infringing the mark, all good attorneys will review the prosecution history and seek cancelation of the mark for fraud if any false statement was made. The applicant will also be barred from reapplying for a federal registration on the mark.
6. The Name of the Good has Become the Trademark.
A trademark is a distinctive word, phrase, smell, sound, image, or the like that indicates the origin of the good. If a copy is a Xerox, then xerox is not a trademark, the holder of a federal registration does not own it and can't stop others from using it. There are ways to try to get it back, but it's best to have a solid plan in place so that a trademark doesn't become generic in the first place.
Ahaji Amos, PLLC represents entrepreneurs and small businesses in all matters, including trademark prosecution, litigation, and post-issuance matters, including oppositions and cancelation proceedings. She may be reached by visiting www.ahajiamos.com or ahaji@ahajiamos.com.
This blog post is not meant to provide legal advice. Readers should seek independent legal counsel regarding answers to legal questions. No attorney-client relationship is established between Ahaji Amos, PLLC and the reader of this post, or any other content on this website. An attorney-client relationship is only established upon the execution of an engagement letter between Ahaji Amos, PLLC and its client.
