Trademark Attorneys

A trademark protects a word, phrase, symbol, or design, or a combination of words, phrases, logos, or designs that identifies and distinguishes the source of the goods of one business from another. You would likely place your trademark on a product or its packaging. A trade dress is the overall look of the product, not just a name or logo. A brand also affords protection a trade dress does not. For example, the ability to prevent the importation of confusingly similar goods, constructive notice of ownership, incontestable status, and prima facie evidence of validity and ownership.

Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act. It encompasses the “total image and overall appearance” of a product, not just the packaging. It includes the totality of the elements, including size, shape, color or color combinations, texture, and graphics. Trade dress can be the design of a product (the product shape or configuration), the product packaging, the color of a product or product packaging, or even the flavor of a product.

A trade dress claim can also allow for treble damages upon a finding that the offending mark was intentionally used as a counterfeit - “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." In addition, a preliminary injunction may be available if and only if the moving party can demonstrate irreparable harm.

Trade dress may be registered on the Principal Register or Supplemental Register of the United States Patent and Trademark Office (USPTO) if it is inherently distinctive and is not de jure functional. "[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source."

The USPTO will consider the following criteria in determining the inherent distinctiveness of a mark:

• "Common" basic shape or design.
• Unique or unusual in the field in which it is used.
• Mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or decoration for the goods.
• Capable of creating a commercial impression distinct from the accompanying words. De jure functionality means the product has a particular shape “because it works better in this shape." If the mark is not inherently distinctive, it may still be registered on the Supplemental Register as long as it is not de jure functional.

Read more about trademarks and trade dress here.

There are many factors to consider when choosing and protecting your business name. If you currently do or are planning to do business internationally, be aware of the intellectual property laws in each country in which you plan to do business.

Registering your trademark in Country A does not automatically mean you are protected in Country B. In fact, without further action, you probably are not protected. Likewise, you may be able to operate under a name like ABC Imports in Country A, but using the same name in Country B could infringe on an already existing trademarked name. So how do you ensure no one infringes on your rights and you don’t infringe on anyone else’s rights when doing business internationally? It isn't easy, but due diligence and understanding the basics go a long way.

The World Intellectual Property Organization (WIPO) provides one of the best comprehensive overviews of trademark law and the international laws that govern them. For those that don’t know, WIPO is an agency within the U.N. structure with 187 member countries. It administers approximately 15 treaties and conventions related to intellectual property. Together, they provide minimum standards of protection, provide for consolidated registration systems, and govern the international classification systems for the countries that have signed them.

International registration is NOT automatic. You must first register your mark, either your name or your company’s name, in your home country (the U.S.) to protect your business name. There are advantages and disadvantages to how you register your trademark. Next, you must complete and apply for international registration, and on it, indicate which other countries you would like to include. You can add additional countries later if you expand your business.

All international applications must include a copy of the mark and a list of goods and services you seek to cover. The list of goods and services should be classified using the International Classification of Goods and Services. For all you techies out there, the USPTO office provides electronic access to the relevant forms here.

The Madrid Agreement and Protocol are just two of the relevant treaties, and trademarks are just one area of intellectual property law applicable to international business owners. In addition, it is essential to remember not every country is a member of WIPO, and even those that are may not be parties to every agreement. Therefore, a proper analysis of intellectual property laws is country-specific.

Intellectual property is a complicated area when dealing with one country. It is even more complex when dealing with multiple countries. Let an experienced trademark law attorney from Whitcomb Selinsky, PC help you protect your rights.

One of the most common ways our law firm helps individuals is by correcting mistakes made during trademark filing. If not correctly remedied, some of these errors can potentially create problems for the mark holder. The United States Patent and Trademark Office has particularly complex laws regarding how trademarks should be filed and not every brand if filed correctly.

To ensure a trademark is properly filed, individuals interested in filing a trademark should consider retaining the assistance of a skilled law firm and legal counsel.

There are a variety of ways trademark filing errors are made. When filing a trademark, it is always a wise idea to be aware of the most common types of mistakes, including:

Be specific when filing: Trademark applications require filers to describe the goods or services offered by a company. While the Patent and Trademark Office provides a list of preapproved descriptions for trademarks, individuals should make sure an accurate description is chosen and write a more specific description if needed.

File the proper type of application: Individuals can file different applications based on how a trademark will be used. If an individual has not begun to use a trademark, the individual should consider filing an “intent to use” application.

Know what language to avoid: There are specific phrases individuals should avoid using when filing a trademark. For example, individuals should avoid using the words “including” or “includes.” Individuals should also avoid using “descriptive” or “generic” words when filing for a trademark because these words have a greater chance of being rejected by the trademark and patent office.

State the proper owner: When filing for a trademark, individuals should clearly state who owns the trademark's rights. For example, if a company is the owner of the mark, the filer should ensure the filing application date is set after the date of incorporation for the company.

To demonstrate trademark confusion has occurred under the appropriate federal law, courts analyze the existence of eight factors. An individual or business alleging trademark infringement need not prove all of the following eight elements, but these factors will prove influential:

• Actual amount of confusion that has occurred between the marks
• Alleged infringer’s reasons for infringing on the mark
• Prior owner’s potential expansion into the domain of the other
• Proximity of the products or companies that use the mark
• Quality of the alleged infringer’s product
• Similarity of uses between the two trademarks
• Sophisticated consumers who might be confused by the mark
• Strength of the mark that has been infringed
  
  
  

To avoid costly litigation, trademark holders should remember to follow some critical advice in registering a mark. This advice includes the following:

Perform research: Many states offer tools for individuals to perform searches of business names. When searching for similar business names, individuals should never forget to search for similarly sounding and similarly spelled business names and use any synonyms. If you plan on doing business in other states, it is also a good idea to perform a similar search in those states.

Stay away from misleading trademarks: Infringement actions are often only successful if a trademark is found to be intentionally misleading. As a result, trademark holders should analyze the intention behind selecting a verbal mark.

When in doubt, consult with an attorney: Many individuals and companies benefit from talking to an experienced attorney before deciding on a trademark. A skilled trademark or intellectual property attorney can help an individual select a “safe” trademark and introduce ideas to safeguard the mark from potential infringement.

Often once clients learn about the limited purpose of intent-to-use (ITU) applications, they ask what the benefits of these applications are for them. One advantage is these applications allow the Trademark Office to review an application before the applicant has invested significant money in packaging, marketing, and other items involved with the mark.

Also, individuals who file ITU applications are not required to provide evidence of using the mark in the commerce part of the application. If the U.S. Patent and Trademark Office does grant an ITU application, an individual has up to 30 months to use the mark in commerce.

Another advantage is the filing dates will serve as the date of an individual’s first use of the trademark, provided the individual later uses the trademark and follows other applicable federal regulations. Having this early filing date considered the mark's first use can prove highly advantageous if conflicts arise with other rival trademarks.

Trademark owners who apply for intent-to-use (ITU) applications risk losing trademark rights if the identification of goods and services with ITUs is broader than the actual intended use of the trademark. 

Trademark applications can be filed under several types. Still, the two most common filing bases have a bona fide intent to use a trademark and the actual use of a trademark in interstate commerce.

ITUs must be filed by a party entitled to use the mark in commerce on the application filing date. The application must include a verified statement the applicant has a bona fide intention to use the mark commerce. Applicants need to understand they cannot claim trademark ownership merely because an ITU application is filed.

Instead, the trademark must be used in commerce. Applicants often do not realize that intent to use applications allows an individual or company to reserve rights to a trademark before it begins to be used as a mark. As a result of these requirements, an applicant cannot file an application because they have an idea for a trademark or the applicant believes a trademark would make a good name.