BLOG

Ahaji Amos 4/16/19 Ahaji Amos 4/16/19

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.

Watch Presentation

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 4/6/19 Ahaji Amos 4/6/19

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).

Schedule Intro Call

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.

I’m on YouTube!

#trademarks, #womeninip, #trademarkattorney, #trademarkattorneynearme, #blacktrademarkattorney, #femaletrademarkattorney, #blacktrademarkattorney, #trademarkaname, #trademarkalogo, #tess, #howtotrademarkalogo, #trademarkattorneysearch, #trademarkregistration, #costoftrademarkattorney, #napervilletrademarklawyer, #napervilletrademark lawyer, #tmlogo

Ahaji Amos 3/26/19 Ahaji Amos 3/26/19

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.

SCHEDULE MY FREE CONSULTATION

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.

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

I’m on YouTube!

Ahaji Amos, PLLC

Ahaji Amos 3/11/19 Ahaji Amos 3/11/19

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

Take me to the GoalSetter Episode

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

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.

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.

Schedule Intro Call

Ahaji Amos, PLLC

ahaji@ahajiamos.com

https://trademarkista.com

Ahaji Amos 2/18/19 Ahaji Amos 2/18/19

TRADEMARK CANCELATION V OPPOSITION

This article explains the differences between TTAB trademark oppositions and cancelations.

Once the United States Patent and Trademark Office (“USPTO”) approves a federal trademark application, the trademark is published for opposition. The trademark appears in the Official Gazette for a 30-day opposition window. 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 seeking withdrawal of the trademark registration by the USPTO.

Even after the opposition window has closed, a party who believes they may be harmed by a trademark registration may have the trademark registration canceled, either fully or partially. I'm often asked to help determine whether an opposition or cancellation should be initiated. While the proceedings are similar, there are differences between other than the limited opposition window.

Both an opposition and a cancellation proceeding are adversarial proceedings initiated in the United States Patent and Trademark Office's Trademark Trial and Appeal Board ("TTAB") that seek to nullify and trademark registration or application for registration. Both require a Notice of Opposition/Cancelation that is nearly identical to a federal court complaint. The filer must set forth a fact supporting each element of its claims and must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.

Typical grounds for both a cancellation and an 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 include, abandonment of the trademark through non-use, fraudulent or illegal registration, the 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.

If a registration is five or more years old, however, certain grounds for cancellation are not available. See below for grounds for cancellation:

Within 5 Years of Registration

likelihood of confusion;
a merely descriptive, merely geographically descriptive mark, or a mark that is merely a surname;
a mark that falsely identifies the source of goods or services;
non-use or lack of bona fide intent to use for intent to use applications;
abandonment of a mark of at least 3 years;
fraud;
dilution

5 or More Years of Registration

mark has become the name of the good or service (generic);
abandonment;
functional mark;
abandonment;
fraud;
lack of control over the trademark;
misrepresentation of goods or services;
disparaging;
immorality or scandalous mark

Schedule a Free Intro Call

#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

I’m on YouTube!

Ahaji Amos, PLLC

ahaji@ahajiamos.com

Ahaji Amos 8/22/18 Ahaji Amos 8/22/18

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.