BLOG

Ahaji Amos 3/19/19 Ahaji Amos 3/19/19

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

Ahaji Amos 3/14/19 Ahaji Amos 3/14/19

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.

Ahaji Amos 2/12/19 Ahaji Amos 2/12/19

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

Schedule a Free Intro Call

AHAJI AMOS, PLLC

ahaji@ahajiamos.com

https://trademarkista.com

Ahaji Amos 2/8/19 Ahaji Amos 2/8/19

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.

Ahaji Amos 9/5/18 Ahaji Amos 9/5/18

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.

Schedule Intro Call