Archive | Trademarks

Trademark Conflict? Found My Trademark Registered for Different Goods or Services

If during preliminary trademark searching you find a mark that is registered at the U.S. Patent and Trademark Office, you may wonder whether that will block your ability to obtain a trademark registration or to use your trademark with your particular goods and services. If the goods or services provided under the registered mark are sufficiently different from the goods or services that you intend to provide under your mark, then there might not be a conflict between the registered mark and your proposed mark.

Trademark rights usually don’t extend to all goods and services. But instead trademark rights extend to the goods and services for which the mark is registered or used and similar goods and services. There is an exception to this rule for famous marks, such as …

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Trademark Registration Renewal Requirements

TrademarkRenewA trademark registration can be maintained indefinitely as long as the required renewal fees are paid, renewal forms are filed, and you continue to use the mark in commerce or have a period of excusable non-use.

First Renewal: Between the 5th and 6th Years
Between the 5th and 6th years after the date of registration, the trademark owner must file a declaration of use or excusable non-use under section 8 of the Lanham Act. A fee must also be paid with this declaration. If this section 8 declaration and fee are not paid, the USPTO will cancel your registration. The USPTO will not send you a reminder notice to pay this fee.

Between the 5th and 6th years after the date of registration the owner may also file a section …

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Obtaining Foreign Trademark Protection through the Madrid International Trademark System

WIPO-MP2The Madrid System provides a means for trademark holders to protect their marks in multiple countries through the filing of one application in a single office, in one language, with one set of fees, in one currency. This post will explain the advantages, disadvantages, process, and example costs when using the Madrid System.

The Madrid System is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to the Madrid Agreement (the Madrid Protocol (MP)).  As of July 2014, 91 countries were members or contracting parties of the MP. While most industrialized countries are members, Canada is not. The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the international registration system of the MP.

The benefit …

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Difference between a Trademark and a Service Mark

Tradmark_or_ServicemarkTrademarks are used to identify a source of goods. Service marks are used to identify a source of services.

If your business provides services to customers, then the names, logos, and other marks used to provide services are considered service marks. For example, when you goto a Marriott hotel, the Marriott mark is being used as a service mark related to the hotel services (e.g. providing hotel rooms for customers). When you rent a hotel room goods are not necessarily sold, instead the service of a place to stay is provided.

If your business sells goods to customers then your names, logos and other marks used to provide goods are considered trademarks. The Coca-Cola mark is being used as a trademark when it is used to sale beverages.

If your …

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Registration Priority: I Have Many Trademarks, Which Should I Register First?

CircleR_RegisteredTMBusinesses often have many trademarks, such as, the business name, product names, service names, logos, slogans, tag lines, etc. The question arises which of those trademarks should be registered and what is the priority order for registering of those trademarks? Trademark registration carries a cost. Therefore, the decision to register is a balancing between the importance of the trademark and the cost of obtaining a trademark registration, when allocating a limited budget for trademark registration. Assuming other factors are equal, the question you should ask with respect to each of your trademarks is: how important is this trademark to my business as compared to other trademarks of my business?

Below is an example priority order for registering trademarks (e.g. a registration priority). The list is a generalized example and …

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Should I Claim Color In My Trademark Application?

FedExIf your trademark or logo includes color, then you may wonder whether your federal trademark application should include a claim of color. If this is your first trademark application, then likely you should not make a claim for color. When no claim of color is made and the trademark is presented in black and white then the registration is presumed to cover the mark when presented in any color.

However, if color in your mark is very important so that you would want the best chance of stopping others using your color scheme with different words/characters, then you may want to make a claim for color in your trademark. For example, Federal Express has a trademark application and various registrations on the mark FedEx with “Fed” claimed in purple and …

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Trademark Clearance Searching, Why Searching USPTO is Not Clearance

TMBefore using a mark or applying for a federal trademark registration, it is usually a good idea to first perform a search to determine if others are using the same or similar trademark to yours. The U.S. grants trademark rights based on use alone and not only on registration. Therefore, searching the USPTO trademark database alone is not sufficient to determine whether your mark is clear for use. As explained below, you need to have performed a comprehensive trademark search to be sure your proposed trademark is clear for use. You can think of trademark searching as insurance against the risk that someone will later assert the use of your mark infringes their prior rights, which may result in legal and name change costs.

The Problem with Not Searching
If …

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What is a Trademark: Usual and Exotic

CircleR_RegisteredTMA trademark includes almost anything that is used by a person or entity to identify a product or service. This includes product names, company names, logos, slogans, service names, slogans, taglines, colors, product packaging, product shapes, symbols, sounds, fragrances, flavors, and domain names. A trademark functions to identify and distinguish goods and services from those manufactured, sold, or provided by others and to indicate the source of the goods or services, even if the source is unknown. Trademark registrations can be renewed forever as long as they are being used with the corresponding goods or services in commerce.

Below are several types of trademarks. First are the standards word and logo marks and the more exotic marks like sounds, product shape, and fragrance, among others, follow. Click here to skip straight

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Invention, Design, & Branding Lessons from Apple’s Lead Designer Jony Ive

JonyIveThe GeniusBehindApplesGreatestProducts

“In a company that was born to innovate, the risk is in not innovating. . .The real risk is to think it is safe to play it safe,” said Jony Ive, the lead industrial designer for Apple.

Jony Ive is the subject of Leander Kehney’s book Jony Ive: The Genius Behind Apple’s Greatest Products . Steve Jobs, deservedly,  gets a lot of attention and credit for the success of Apple products. However, Jony Ive is the man behind many of the decisions about and features of Apple’s products.  The book is not an authorized biography. Yet, it provides insights into the product innovation process and product development process at Apple. It also demonstrates how product design alone can indicate a brand to customers.

Design Alone Can Carry Branding without a

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Words or a Logo or Both in a Trademark Application?

LogoWordCombinedTrademarkApplicationIf your trademark includes words, letters, or numbers, before filing a federal trademark application you need to determine whether you will include any logo or stylistic element(s) as a part of your claimed trademark in the application. This is true because the U.S. Patent & Trademark Office asks you to specify whether or not you are claiming with your mark any font, style, size, color, or graphics. Marks without a claim of any of those style elements are known as standard character marks. Marks with any of those claims are known as special form (styled and/or design) marks.

If your mark is a combination of words or characters with a logo or design elements, it can be, but it is not always the best approach to claim the logo and …

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