Trademark Registration

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 […]

css.php