Trademark LawTrademark Infringement on the Rise

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 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 attorney.


Elements of Trademark Infringement

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:

  • The actual amount of confusion that has occurred between the marks.
  • The alleged infringer’s reasons for infringing on the mark.
  • The prior owner’s potential expansion into the domain of the other.
  • The proximity of the products or companies that use the mark.
  • The quality of the alleged infringer’s product.
  • The similarity of uses between the two trademarks.
  • The sophisticated of consumers who might be confused by the mark.
  • The strength of the mark that has been infringed.

How to Protect Your Business' Name Protection in a Global Market

Protecting Your Business Name Can Be Much More Difficult in a Global Market

  • There are many factors to consider when choosing and protecting your business name.  As discussed in an earlier post, trademarks are one of those factors.  If you currently do or are planning to do business internationally, you need to 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 that you are protected in Country B.  In fact, without further action, you probably aren’t.  Likewise, you may be able to operate under a name like ABC Imports in Country A, but use of the same name in Country B could infringe on an already existing trademarked name.  How do you ensure that no one infringes on your rights and that you don’t infringe on anyone else’s rights when doing business internationally?  It is not easy, but due diligence and understanding the basics go a long way.

Information Provided by WIPO

  • WIPO, the World Intellectual Property Organization, provides one of the best comprehensive overviews of trademark law, as well as the international laws that govern them.  For those that don’t know, WIPO is an agency within the UN structure with 187 member countries.  It administers approximately 15 treaties and conventions related to intellectual property, which together provide minimum standards of protection, provide for consolidated registration systems, and govern the international classification systems for the countries that have signed them.
  • One of these treaties is the Madrid Agreement and the related Madrid Protocol.  There are differences, but for simplicity, they will be discussed jointly today.  The Agreement and Protocol provide a system for international trademark registration.  This provides an alternative in protecting your business name in each and every country in which you are operating, which could be very expensive and time consuming.  The Agreement and Protocol, which have a combined 74 member countries, allow an individual or company in a member country to apply for “international registration.”


Take Steps to Register Internationally

  • International registration is NOT automatic.  You must first register your mark in your home country (the U.S.) if you are interested in protecting your business name.  You can register it in either your name or your company’s name.  There are advantages and disadvantages to both.  Next, you must complete and file an application for international registration, and on it indicate which other member countries you would like to include.  You can add additional countries at a later date 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.  It is notable that 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 that is relevant to international business owners.  It is important to remember that not every country is a member of WIPO, and even those that are may not be parties to every agreement.  Thus, 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 complicated when dealing with multiple countries.  Let an experienced international law attorney from Whitcomb Law, P.C. help you protect your rights.


Steps to Avoid Being Accused of Infringement

To avoid costly litigation, trademark holders should remember to follow some important 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 always remember to search for similarly sounding and similarly spelled business names as well as the use of any synonyms. If mark holders plan on doing business in other states, it is also often a good idea to perform similar searches in the states where an individual plans to do business.
  • Stay Away from Misleading Trademarks. Infringement actions are often only successful if a trademark is found to be intentionally misleading. As a result, mark holders should analyze the intention behind the decision to select a verbal mark.
  • When In Doubt, Consult with an Attorney. Many individuals and companies benefit from talking to an experienced lawyer before deciding on a trademark. A skilled trademark or intellectual property attorney can help an individual select a “safe” trademark as well as introduce ideas about how to safeguard the mark from potential infringement.


What is the Difference Between Trademark and Trade Dress?

Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act.[1] 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.


What is the difference?

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.[2]

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.”[3] In addition, a preliminary injunction may be available if and only if the moving party can demonstrate irreparable harm.[4]

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."[5]. The USPTO will consider the following criteria in determining whether a mark is inherently distinctive: 

  1. a "common" basic shape or design;
  2. unique or unusual in the field in which it is used;
  3. a 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 ornamentation for the goods;
  4. capable of creating a commercial impression distinct from the accompanying words.[6] De jure functionality means that the product has a particular shape “because it works better in this shape.”[7] 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. Need legal counsel to better understand your trademark? Our attorneys can help. Reach out to us through our contact page, or by clicking on the button below.


How to Avoid Common Errors in Trademark Filing

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.


Common Mistakes Made in Filing

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:

  • Be Specific When Filing. Trademark applications require filers to describe the goods or services offered by a company. While the Patent and Trademark Office offers a list of preapproved descriptions for trademarks, individuals should both make sure that an accurate description is chosen and write a more specific description if circumstances merit doing so.
  • File the Proper Type of Application. Individuals can file different types of 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 certain phrases that individuals should avoid using when filing a trademark. For example, individuals should avoid using the words “including” or “includes” because this type of language lacks specificity. 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 make sure to clearly state who owns the rights to the trademark. If a company is the owner of the mark, the filer should make sure that the date of the filing application is set after the date of incorporation for the company.


Understanding Intent to Use Applications

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.


The Filing of ITU Applications

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.


The Advantage of ITU Applications

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.


How a Seasoned Trademark Lawyer Can Help

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.