A recent study conducted by Compumark, a leading research agency, in 2016 revealed that eighty percent of C-level executives report that trademark infringement (TMI) is on the rise but only 20 percent of these executives have plans in place to actively watch more than three-quarters of their marks.
The study also revealed that trademark law related litigation in the field is particularly common with more than half of the executives indicating that their organization had initiated legal action against third parties who had infringed on their brand. The number of trademarks being filed is expected to increase which will likely result in increased trademark litigation.
As a result, it is a particularly wise idea for companies to make sure that their trademark is properly secured. Fortunately, knowledgeable legal counsel can often prove to be beneficial in securing a trademark. TMI often results in profit losses for a company, so TMI must be viewed as is a very serious event. If you are a trademark holder who has experience trademark infringement, it is often a wise idea to retain the assistance of a seasoned trademark or intellectual property trademark attorney in Colorado.
To demonstrate that 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:
To avoid costly litigation, trademark holders should remember to follow some important advice in registering a mark. This advice includes the following:
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: 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 packaging in which a product is sold, the color of a product or of the packaging in which a product is sold, or even the flavor of a product.
Trade dress is different from a trademark. A trademark protects a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. You would likely place your trademark on a product itself or on its packaging; trade dress is the overall look of the product, not just a name or logo. A trademark also affords protection that trade dress does not, e.g., the ability to prevent importation of confusingly similar goods, constructive notice of ownership, incontestable status, and prima facie evidence of validity and ownership.
A trade dress claim can also allow for treble damages, upon a finding that the offending mark was intentionally used as a counterfeit, i.e., “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 whether a mark is inherently distinctive:
One of the most common ways our law firm helps individuals is by correcting mistakes that were made in Trademark Filing. If not properly remedied, some of these errors have the potential to create problems for the mark holder.The United States Patent and Trademark Office has particularly complex laws regarding how trademarks should be filed. Due to these complicated laws, statistics for the first quarter of 2017 reveal that not every trademark is properly filed.
In order to ensure that a trademark is properly filed, individuals who are interested in filing a trademark should consider retaining the assistance of a skilled attorney like the legal counsel at WSM.
There are a variety of ways in which 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, which include the following:
It' s important to know the risk of 'Intent to Use Applications' in trademark law. Trademark owners who apply for “intent-to-use (ITU) applications” are at risk of losing trademark rights if the identification of goods and services with the intent to use application are broader than the actual intended use of the trademark. A recent case emphasized that applying for a larger application than is actually used is not always a wise idea.
This case, Kelly Services v. Creative Harbor, emphasized that potential plans for use of a trademark will be excluded from registration when challenged. Instead, the application must be able to demonstrate that more than an intention to reserve a right in the trademark exists. In “ITU” applications for a trademark like in this case, individuals often require the assistance of particularly skilled legal counsel.
Trademark applications can be filed under several types of basis, but the two most common filing bases are having a bona fide intent to use a trademark as well as actual use of a trademark in the course of interstate commerce.
Intent to use applications must be filed by a party entitled to use the mark in commerce on the application filing date and the application must include a verified statement that applicant has a bona fide intention to use the mark commerce. It is important for applicants to understand that they cannot claim ownership of a trademark merely because an intent to use application is filed.
Instead, the trademark must actually be used in commerce. Applicants often do not realize that intent to use applications merely allow 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 merely because it has an idea for a trademark or because an applicant believes that a trademark would make a good name.
Often once clients learn about the limited purpose of ITU applications, they ask what the benefits of these applications are. One advantage of intent to use applications is that 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 the use of the mark in commerce part of the application. If the Trademark Office does grant an ITU application, an individual has up to 30 months to use the mark in commerce.
Another advantage of intent to use applications is that filing dates will serve as the date of an individual’s first use of the trademark provided that the individual later uses the trademark and follows other applicable federal regulations. Having this early filing date considered the first use of the mark can prove extremely advantageous in the event that conflicts arise with other rival trademarks.
Trademark law is a unique area of law that requires particular knowledge. Fortunately, the legal counsel at Whitcomb, Selinsky, PC can help individuals respond to these types of cases. Our attorneys know how to ask the right questions about trademark ownership to prevent small mistakes from eventually turning into larger errors.
From start to finish, our firm will remain dedicated to making sure that your trademark case resolves in a positive manner. Call our Denver office at (303) 534-1958 or complete a convenient online form to get a hold of our team today.