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Protecting Your Product Name – When To Do This & How It Works

You have spent countless hours developing your product. You’ve hire professionals like an attorney to help you set up your business structure and spent a chunk of change to receive help from a CPA to set up your financial structure. You’ve hired an employee to help you develop your product and other professionals to help you market your product. By the time you take your product to market you have spent a good amount of time and money to get there. After an exciting launch your first year, you learn that someone else on the other side of the country has developed a semi similar product and sells the product using the same name you came up with. What gives?! This happens more often than you would think.

This office assists with trademark registrations and trademark enforcement. Here’s an example: I once represented a clothing manufacturing company located in the City of San Diego. After being in business several years with their clothing articles, the company’s officers learned of another company in California selling similar clothing articles using the same company name. Luckily in this case, the client had their name registered on a national level with the United States Patent & Trademark Office (USPTO). With such registration, we informed the other company about infringement of the name and its unlawfulness resulting in a change in the competitor’s name. Fortunately this matter was resolved quickly before the infringing company affected the clothing manufacturer’s reputation and good will it had developed with its consumers.  This result was in response to having a proper intellectual property portfolio.

Before you go public with your work you want to know how to protect the clever name you came up with for your new business idea and product, seek out a consultation with an attorney to learn about trademarks.

Trademarks

A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

When To Register

It is recommended to submit a trademark registration application as soon as you develop your trade name. However, you can still register your trade name for protection well after the product has been in commerce.

How It Works

Once your trademark is registered with the USPTO, you’re able to monitor and enforce your registration rights afforded you under the Code of Federal Regulations (37 CFR). Learn more about your trademark registration rights and enforcement rights by speaking with an attorney.

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Points to consider before and after registering a business name or domain name

When a person or set persons start a new business venture, it is an exciting time when you just want to get to work already. I call this the “honeymoon stage” of business. Everyone is collaborating well, ideas are flowing smoothly and depending on your personality, you either start the work immediately because you are motivated and eager, or you take a step back to analyze and consider what needs to get done first.  It is all a happy period of time where you can’t wait to move forward and grow. No one likes to consider the bad stuff that may come about later such as legal problems. Be wise, be that person that does consider such issues to prevent them.

If you have not yet started your business, take a peek at the following recommended points to brainstorm and consider before and after choosing a business name and registering a domain name. If you have started your business and are already growing it, take a moment and review some points that still require your consideration.  These points usually stir up legal problems between businesses at some point in their life cycles if not considered properly.

1. Business Plan. Business plans are roadmaps for a successful business. It generally outlines the route a company needs to take to grow its revenues and profits. If you have time, develop a business plan – even if it is simple – so that you have a living document to refer to.  As you carry on your business, the plans may change, but that is somewhat expected. These are helpful to keep you grounded and focused on your goals. It also serves as a great tool to measure performance per quarter or year.

2. Business Entity.  Consider whether you are going to operate as a sole proprietor or a corporation/LLC. Each one of these options offers different liability shelters and tax benefits that are worth exploring.  Besides performing general online searches about these topics, you best help yourself by seeking a consultation with a business attorney to really help you understand how each option would fit you. Sole proprietorship, corporations, and limited liability companies (LLC’s) are used for different business needs. Analyze your immediate and long-term needs under each business type.  Business entity planning is of even greater importance when dealing with 2 or more business partners. More often then not, partnership issues develop – even with family-owned businesses – where improper planning and document preparation was not in place. Review Buy-Sell Agreements, Shareholder Agreements, and other similar options available to adequately establish your 2+ person business relationships.

3. Business Names. Business names are fun to develop. A business can be named just about whatever it is you want and can be as creative or simple as you desire. However, note that you do not find two companies called “Coca-Cola” or “Pepsi Cola” for a reason. Trademark protections, copyright protections, domain name protections, and state laws exist to limit what you can name our business. As a basic example, if you want to be the next big App developer, you know your space is in the computer and information technology field. You won’t want to use a business name and slogan that is already in commercial use in that same technology field because if you do, it will be a matter of a trademark infringement lawsuit coming your way. Therefore, when doing something as simple as selecting a business name, be sure to perform your due diligence and determine whether anyone else is using that same name at a City, County, State, and Federal level.  Also determine whether they’re using the exact or similar name in your industry.

4. Domain Name Registrations. Before registering for a domain name, perform your due diligence in this step as well by looking for other domains and businesses (both domestically and internationally) already registered. Under business laws, trademark laws, and copyright laws, certain domain names may infringe on an existing business’s rights the minute the domain name becomes registered.  Avoid a trademark infringement claim when choosing a domain name. As a simplified explanation of the standard, if the new domain name causes confusion to the public between the new domain and an existing domain, it is likely an infringing domain. To avoid infringement issues, search the United States Patent & Trademark Office’s website for registered marks, potentially conflicting marks and marks which can cause general confusion.

5. Online Presence. Nowadays, a website acts like an interactive business card. A business website permits the business owner to share information about the business with the world. However, a business owner ought to be cautious with what they publish online and how. To continue with our previous example, if you are the next big App developer developing a gaming app to be marketed towards the public of ages 13+, be aware that there are state and federal laws that require businesses to disclose certain information. For example, a majority of the websites online (especially those for commercial purposes) publish a Privacy Policy, Terms of Service and Statement of Use. Each one is carefully drafted to include the necessary disclosures required of their industry. If you operate a business website and have reason to believe it is used and viewed by minors, you should know about certain regulations applicable to this group such as COPPA, or the Children’s Online Privacy Protection Act. There are a great number of other online regulations that exist. Your use and requirements to address these regulations all depend upon your industry, target market, business practices, state of business formation, and other variables.  Lack of knowledge about these regulations is not an excuse.

6. Online Agreements. Do you know the difference between “browser wrap” and “click wrap?” These are two ways in which an online website visitor agrees to an agreement on your website.

7. Monitoring and Enforcement. Once you register your business name and/or trademark name you then have to monitor for infringement. Unless you enforce your rights to your business name and domain, you may wind up diluting the value of your business and losing your rights.

The above summarizes some points to review before and after moving forward with a new business. However, there are many other points to consider both during and after these stages. A lot of points are purely based on the type of business you plan. Business attorneys experienced in helping sole proprietors and business partners in different industries can be beneficial to you. Consider a consultation for representation with these initial matters. Business attorneys can also help you in the long run with various business transactions. See more and request a consultation.

 

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Washington Redskins Appeal the Trademark Office’s Decision to Cancel Their Trademark

On June 18, 2014 the U.S. trademark office (specifically, the Trademark Trial and Appeal Board (TTAB)) found the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services.  Consequently, the trademark name would be cancelled unless an appeal was presented.  On August 5, 2015, the Redskins filed an appeal to fight for its name. See the official publication about its finding below. Find a good article exploring reasons why the Washington Redskins continue to fight for its trademark registration, below.

Original United States Patent and Trademark Office Publication: (June 18, 2014)

Trademark Trial and Appeal Board (TTAB) Decision in Blackhorse v. Pro Football, Inc.
(TTAB Cancellation No. 92046185)
Find the full decision and other resources at http://www.uspto.gov/news/DCfootballtrademark.jsp
June 18, 2014
The Blackhorse v. Pro Football, Inc. decision of the Trademark Trial and Appeal Board (TTAB or “Board”) today resolved the joint petition filed at the U.S. Patent and Trademark Office (USPTO) by five Native Americans, who sought cancellation of six federal registrations for trademarks that include the term “Redskins.”
The TTAB — an independent administrative tribunal within the USPTO — has determined, based on the evidence presented by the parties and on applicable law, that the Blackhorse petitioners carried their burden of proof. By a preponderance of the evidence, the petitioners established that the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the cancellation proceeding were issued. Thus, in accordance with applicable law, the federal registrations for the “Redskins” trademarks involved in this proceeding must be cancelled.
Pro Football. Inc., the respondent and owner of the involved registrations, had asserted as a defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for so
long, and been the subject of significant investment. But the TTAB found the defense inapplicable as to the petitioners in this case. This decision by the TTAB does not necessarily put an end to the larger dispute between the parties , as Pro Football, Inc. may seek review by a federal court of today’s decision. The registrations will remain “on the federal register of marks” and not be listed in the USPTO’s records as “cancelled” until after any judicial review is completed.
What this decision means: if the cancellation of the registrations for the trademarks involved in this case is not appealed or if affirmed following possible review by a federal court, Pro Football, Inc., as record  owner of the involved registrations will lose the legal benefits conferred by federal registration of the marks. These benefits of federal registration include:
  • the legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
  • the ability to use the federal registration ® symbol, and;
  • the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
What this decision does not mean: this decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case.
  • Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
  • The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used.
  • The mark owner may still have rights in the mark based on use, known as “common law” rights-and those use-based rights may continue to exist even if a federal registration is cancelled.
What is the Trademark Trial and Appeal Board and what does it do?
  • The TTAB is an independent administrative tribunal within the USPTO. It is authorized to determine a party’s right to register a trademark with the federal government or, if the party already owns a registration, its right to maintain it. The Board is not authorized to determine whether a party has the right to use a trademark, just whether it has the right to register it. (And thus obtain the additional legal benefits thereof, as outlined, above.)
What is a TTAB cancellation proceeding?
  • A cancellation is a TTAB proceeding in which a party seeks to cancel an existing registration of a mark.
  • Under the law, a person (including any legal entity) who believes he will be damaged by the continuing registration of a mark may file a petition with the TTAB to cancel the registration, asserting one or more grounds for cancellation.
  • Most USPTO cancellation proceedings assert grounds for cancellation under Section 2 of the Trademark Act, 15 U.S.C. § 1052, which specifiesa variety of types of terms or marks that Congress has determined to be ineligible for federal registration, including those that are determined, as in this case, to disparage an individual or group.
Can a registration that has been on the register for a long time, like the ones involved in this case, be the subject of a cancellation proceeding? Why?
  • Yes. According to federal trademark law, a long-standing registration can be the subject of a cancellation proceeding at any time, if an appropriate ground for cancellation is asserted.
  • A claim that a registered trademark was disparaging of an individual or group at the time it was originally registered is one such example of a claim that can be appropriately brought at any time, regardless of the age of the registration.
What are the options for appealing this TTAB decision?
  • A party dissatisfied with the Board’s decision has two options to seek further judicial review of it.
    • The party can file an appeal to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.; or
    • The party can file a civil action in district court.
      • Any civil action would be filed in the U.S. District Court for the Eastern District of Virginia, which has jurisdiction over civil actions seeking review of TTAB cancellation proceedings. (Before 2011, the district court in the District of Columbia had jurisdiction over such actions, but Congress changed that provision of the Trademark statute when making various amendments to the Patent statute.)

Article About Appeals (September 9, 2015):