NexTrend Legal

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About NexTrend Legal

The trademark law firm of NexTrend Legal and its trademark attorneys offer a range of trademark legal services including, but not limited to, trademark registration, trademark filing, trademark search, trademark monitoring, trademark infringement, and responding to USPTO office actions.
More information about our trademark attorneys can be found at our About Us page.

Avoiding Illegal Trademark Assignment

Trademark ownership may be one of the most lucrative and recognizable assets for any major company. Even still, a trademark’s life is incredibly fragile as any improper mishandling or illegal trademark assignment can completely invalidate the mark. Another important distinction that must be made between trademarks and other financial assets: trademarks require monitoring and care to maintain their value and legitimacy. An illegal trademark assignment often results as a lack of care for the upkeep of a trademark  and may even be considered an assignment-in-gross.

Assignment-in-Gross Doctrine

This lesser-known legal principle instructs that all transfers of trademark ownership must include other related business assets and must be done in genuine goodwill. These business assets may include company shares, trade secrets, management or other financial assets. In turn, it is prohibited to execute a bare transfer during trademark assignment as a mark alone possess no discrete worth.  Any trademark transfer completed without adhering to this guideline will be considered an illegal trademark transfer under the Lanham Trademark Act, 15 U.S.C. §1060.

Understanding whether a trademark assignment was done under genuine goodwill is a more difficult matter to measure. One way that courts will most commonly assess this condition is through a substantial similarity test. This judicial test examines both the quality and description of the goods and services before and after the transfer. Uniformity in the description of goods and services prevents a trademark assignment from intentionally misleading or confusing consumers. The guidelines for consistent quality of goods and services, however, can be quite exacting at times. In fact, some courts have observed that even nuanced differences in quality can cause a mark to fail the substantial similarity test.  In the landmark 1920 Supreme Court case of Coca-Cola Co. v. Koke Co. of America, for instance, an assignee using a pepper-flavored beverage […]

How to Brand Your App

As mobile device applications are now comprising a multi-billion dollar industry, mobile marketing has now become a cutting-edge business tool and a premier branding resource. Smartphones are now the top form of communication. In fact, consumers spend close to 90% of the time on their smart phones using mobile applications.  Many researchers also predict increased surges in the number of people with access to smartphones and the amount of time spent on smartphones and smart devices in the coming years.  All these findings make app development and mobile marketing techniques that much more valuable. Here are three helpful tips we think can help professionals and business owners welcome the mobile marketing frontier to better brand their marks.
1. Know Your Market
The wake of social media marketing can be intimidating for any promising entrepreneur or growing business as mobile market behaviors seem to be constantly readjusting. Fortunately, there is an abundance of resources available to business owners to help you understand and respond to shifting market patterns. One easy tactic for businesses to understand their market is to search for how consumers are discussing their good or service on different social media platforms. Some industries may need to wish to appeal to broad markets on Facebook or Pinterest, while other businesses may aim to target younger audiences on platforms like Twitter or Tumblr. Experimenting with different social media outlets and connecting with clients through through social media can be an excellent way for businesses to understand the interests, values and quirks of their audience. Surveys, polls, and live-feed videos can also be a helpful tool for businesses to directly connect consumers with their brand. Some companies may even interact with related businesses or competitors to study their marketing tactics and better understand the […]

Basic Trademark Information

This post and the video above are designed to look at some of the basic information surrounding a federal trademark. Including what a trademark protects, why you should obtain a federal trademark, a comparison of a trademark to a patent or copyright, and how our trademark attorneys can help you in the process of obtaining a federal trademark.

Some of the initial questions our clients ask us is, “what is a trademark and how is it different from a patent and a copyright?” While these forms of intellectual property rights can be similar in some aspects, they all protect a very distinct and different property right. A trademark protects a business name, company slogan or tagline, symbol, logo, design, and more. Protection arises as long as the trademark is used in commerce to distinguish products or services from one source, from the products or services from another source. Patents are technical and scientific in nature. They protect new inventions, like new products or a new process/way of producing something. Copyrights are used to protect artistic works, typically in the form of books, movies, music and paintings.

To use an example that showcases how each of these forms of intellectual property can work alongside of each other, imagine you just invented a new television. You would want to obtain a patent to protect the new television itself. Then, you would want to obtain a federal trademark registration to protect the brand name of your television. Lastly, you would want a copyright registration for the commercial or other advertising you would plan to use to sell your television.

The next question our clients ask is, “why would I want a federal trademark registration?” When you use a product or a service, you instantly expect a […]

Can You Trademark A Sound?

As part of our “Can You Trademark” series, we will look at a wide range of topics that entrepreneurs and businesses may be interested in obtaining a federal trademark registration for. This series is merely designed as a broad overview of if it is possible to trademark the topic for the blog. To suggest our next topic, tweet @nextrendlegal, or post to our Facebook wall with a topic you would like to know if it is possible to trademark!

In short, yes you can trademark a sound.

The Lanham Act, states that a trademark is “any word, name, symbol, or device, or any combination thereof, used in commerce to distinguish his or her goods, from those manufactured by others to indicate the source of the goods.” Thus, federal trademark law does not specifically prohibit a sound from obtaining federal trademark registration, rather, it likely falls under the term “device.”

However, sound trademarks must meet extremely strict requirements. While there are not many sound mark registrations with the USPTO, nor many cases litigating infringement of sound marks, In re General Electric Broadcasting Co. gave one of the initial rulings on the strict requirements, stating a sound must be “so inherently different or distinctive that it attaches to the subliminal mind of the listener, to be awakened when heard, and to be associated with the source…” Further, the Trademark Trial and Appeal Board (TTAB) has stated there is an alternative spectrum of distinctiveness when dealing with sounds compared to traditional word marks. The spectrum for sounds is the distinction between “unique, different, or distinctive” and sounds that are “commonplace.” While these are really the only guidelines to be followed when analyzing the strength of a sound mark, it can be summarized as follows, if […]

Common Issues Encountered during Federal Trademark Registration

Part 1 of 6
Part 1: Trademark Priority and Trademark Distinctiveness
United States Trademark Law is unlike trademark law in foreign countries. Sometimes it can seem like federal trademark law is contrary to common sense. In this six part series, we look at some of the common issues that occur during a United States Patent and Trademark Office (USPTO) Federal Trademark Registration, some of which can be fatal to a pending application.
(1) Trademark Priority
While it may seem that trademark priority is simple to understand, a priority battle between two trademarks can be costly and complicated. First, U.S. trademark rights are based on use of a mark in commerce, not registration. In other words, the first person to obtain a federal registration of a trademark with the USPTO does not guarantee that owner an absolute priority or exclusivity over that mark. Under common law (law generated by judges instead of statutes) the date a trademark was first used in commerce has priority to use that mark in the geographic area the mark is being used. One of the biggest benefits in obtaining a USPTO trademark registration is that a federally registered trademark carries a presumption of nationwide priority of use, as of the date of filing a federal trademark application. Complications over priority battles typically arise when determining who has priority between two confusingly similar trademarks and one is a common law trademark, and the other is in the process of obtaining a federal trademark registration.

Say Bobby begins using a common law trademark on 1/1/15 in the Southeastern United States. Krystal files a federal trademark application with the USPTO, for a confusingly similar trademark on 2/1/15, which later becomes registered. At some point in the future, Bobby and […]

Can You Trademark A Hashtag?

As part of our “Can You Trademark” series, we will look at a wide range of topics that entrepreneurs and businesses may be interested in obtaining a federal trademark registration for. This series is merely designed as a broad overview of if it is possible to trademark the topic for the blog. To suggest our next topic, tweet @nextrendlegal, or post to our Facebook wall with a topic you would like to know if it is possible to trademark!

With recent news regarding reality star Kris Jenner seeking a federal trademark registration for #ProudMama, we wanted to kick start our “Can You Trademark” series with a look at whether you can trademark a hashtag (#).

Hashtags are generally used in social media as a system to tag the topic of a social media post. This practice is mostly associated with an individual’s Twitter account, in order to quickly communicate the topic of any given “Tweet.” In order to gain federal trademark protection, any word, symbol, phrase, or design must be used in commerce and be able to identify a single source of the goods or services used in connection with the mark. Because a hashtag’s main purpose is to facilitate categorization of topics and searching conducted through social media, a hashtag on its own does not function as a source identifier. However, if a hashtag functions as an identifier of the source of an applicant’s goods, then that hashtag can be registered as a federal trademark, as long as the mark as a whole is not considered a generic trademark  or a merely descriptive trademark.

When thinking about trademark protection of a hashtag, simply using the “#” to reference a marketing campaign or index a message placed on social media, will not work to […]

Trademark Infringement and Genericide

A generic trademark is the name of a product/service/brand name which is the actual name for the product/service/brand name. Examples include: APPLE for apples, or LAW FIRM for a law firm. A generic term that could even obtain secondary meaning will not help that term become eligible for trademark protection. The rationale behind this prohibition is that to allow a single business, entrepreneur or inventor, the exclusive right to the generic term would give them a monopoly and an unfair competitive advantage over other businesses. Imagine the first person to register APPLE being able to prevent all other apple pickers or fruit stands from using the term APPLE to sell apples.

Registered trademarks can become generic. This is a process called trademark genericide. Genericide occurs when the meaning of a registered trademark becomes associated with the category, or “genus,” of the product. As a result, the trademark can no longer identify and distinguish the source of the product that bears the now generic term. Some examples of genericide include: THERMOS, ASPIRIN and VELCRO.

In September, out of the U.S. District Court of the Southern District of New York, a federal judge ruled on a lawsuit brought by Tiffany & Co. against Costco Wholesale Corporation. Costco was using the terms TIFFANY and TIFFANY SETTING, as a description when selling some of their engagement rings. Tiffany & Co. owns multiple trademark registrations for these terms and brought suit on the basis of trademark infringement, unfair competition, trademark dilution, among other multiple claims. Costco responded by filing a counterclaim, arguing that TIFFANY and TIFFANY SETTING has become generic for a ring setting with six prongs. Thus, the public now associates the term TIFFANY simply as a six pronged solitaire diamond ring, and not […]

A Likelihood of Confusion Cease and Desist Order

Many people get their coffee, or latte, or expresso from Starbucks every morning or around 2:00pm each day. But Starbucks does not only serve coffee, the company is also active in enforcing the benefits of a its federal trademark registration and protecting itself from potential trademark infringement.

Starbucks, the massive Seattle based coffee company worth about $16.447 billion in 2014, sent the owner of a small town brewery outside of St. Louis, Missouri, a cease and desist letter to prevent them from infringing a Starbucks trademark. The trademark in question, FRAPPUCCINO.

The owner of a Pub and Brewery, combined the flavors of two beers, and one customer posted to a beer website that it taste like a “Frappicino.” Starbucks took notice of this and sent the brewery owner a letter telling him that his “Frappicino” beer would cause confusion among consumers in regards to Starbucks’ FRAPPUCCINO trademark. Starbucks’ attorney argued that while the beer’ name sounds phonetically identically to the Starbucks mark, even though it was misspelled by one letter. Because of this, Starbucks requested the brewery owner to stop all use of “Frappicino,” notify the beer owner to remove the website post containing “Frappicino,” and to agree to not use any Starbucks trademarks in the future and to agree to not use any trademarks that would cause confusion or dilution with Starbucks’ trademarks. This is a very helpful example of multiple topics that can arise during the trademark selection process.

First, the benefits of federal trademark registration. With the federal registration of FRAPPUCCINO, Starbucks has several trademark benefits that arise solely through their registration. Starbucks has a nationwide priority to use FRAPPUCCINO as of the date of the initial application, the right to prevent a subsequent user from using a confusingly similar trademark. If a trademark dilution or infringement lawsuit were […]

Can You Trademark Cannabis Based Products?

As the cannabis industry in the United States grows and becomes more acceptable, medically and recreationally, our trademark attorneys are getting many inquires as to whether a business or individual can you register a trademark for marijuana products?

Especially in states were marijuana is legalized for recreational use, entrepreneurs looking to make millions from marijuana products, see the lack of protection for their intellectual property as a huge obstacle in the materialization of profits. A perfect example of this is Denver Relief, a pot dispensary business that won a quality competition for its “Bio-Diesel” strain. Soon after, competitors all around the city started using the name “Bio Diesel” with lower-quality strains.

The lack of trademark protection for intellectual property in the cannabis industry is creating hurdles for entrepreneurs and investors in this growing industry. The reason marijuana-based products have yet to be recognized by trademark law is because cannabis is listed as a Schedule One substance on the federal list of controlled substances. Therefore, the USPTO cannot issue trademarks for marijuana-based products. This is a huge issue for businesses in this industry.Aaron Houston, a strategist for Weedmaps, a listings and review site for marijuana dispensaries around the U.S., said he hears from clients regularly that they have developed a new strain of marijuana only to have a competitor immediately copy it. This sort of unfair competition is what trademark law protects against. But because the industry is novel and cannabis is a Schedule One substance, companies cannot turn to the USPTO for protection.

The cannabis industry is worth approximately $1.53 billion and is expected to reach $10.2 billion in the next five years. The growing rate of legalization throughout the country needs to be accounted for in understanding […]

Famous Jameis – Trademark Protection and Branding

“Famous Jameis” is betting on the future by cashing out on his nickname. Jameis Winston, potential No. 1 overall NFL draft pick, has filed to trademark “Famous Jameis.” This nickname was given to him during his time at Florida State, where he won the Heisman Trophy and only lost one game as a starter in 2013. Winston’s trademark attorney noted they have taken steps to protect Winston’s intellectual property rights. He also commented that this is a long-term investment they “hope to utilize down the line.”

His attorney filed the trademark application on February 5, 2015. Whether he will cash out on his investment will depend on his performance and future in the NFL. For instance, Johnny Manziel, winner of the Heisman Trophy in 2012, filed for 10 different trademarks, including his nickname, “Johnny Football,” but his less than impressive performance this past season has made his brand less desirable as a commodity.

The success of a brand largely depends on the public’s perception of it. The first stop on your way to the bank filing for trademark protection with the USPTO and look forward to the profitable future.

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