Washington DC Trademark Attorney - Lawyer in Washington DC
CyberLaw PC can help you with your trademark law matters. The law firm can assist you in registering your trademark, advising on a pending trademark trial or litigation, and checking to see if your potential mark is likely to infringe on another. The firm offers numerous other trademark legal services. Contact the firm today to learn more about the trademark services offered. As always, the initial consultation is free with one of our Washington DC Trademark Attorneys.
Continue reading for some general information about various types of trademark issues.
Trademark Opposition and Trademark Cancellation Proceedings
In most instances, a trademark opposition is a proceeding where a current trademark holder, also known as the opposer, objects to a new trademark application filed by a new trademark applicant. The opposer files the opposition because it believes that it will be damaged if the new trademark application is granted. An opposer typically files an opposition proceeding because it feels that the new trademark, if granted, is likely to cause confusion to consumers in the marketplace. Oppositions may also be filed for other reasons. For example, a trademark opposition may be filed by an applicant's competitor if the opposer feels that the applicant's mark is "generic" or "merely descriptive."
A trademark cancellation proceeding is similar to an opposition proceeding, except that a cancellation proceeding involves a mark that has already been granted registration. In a cancellation proceeding, the plaintiff typically seeks to demonstrate that the registered mark is not in use, or that the mark has become generic in the marketplace.
Opposition and cancellation proceedings are similar to traditional litigations before a court of law. Both sides usually employ an attorney. Motions are filed and decided by a neutral third party, the Trademark Trial and Appeal Board. Trial testimony will be taken if the parties proceed to the trial period. While there are differences between traditional litigations and proceedings before the Trademark Trial and Appeal Board, most parties to such proceedings employ an attorney to assist them in their case.
CyberLaw PC has can handle both trademark oppositions and trademark cancellations. Contact the firm to discuss your particular matter at no initial fee with one of our Washington DC Trademark Lawyers.
Defining Trademarks
What is a trademark? A trademark is any word, name, symbol, device or slogan that identifies and distinguishes goods from like goods made or sold by other parties and which helps to indicate the source of the goods in question. You see trademarks every day on cereal boxes, Internet websites, your wireless phone, television ads, and virtually everywhere else in day to day life. A trademark can be a word, symbol, name, sound, color, shape, or even a smell!
A trademark is not the same thing as a patent, which is a protection of ideas and innovation, copyright, which is protection of expressive thought, or a trade secret which is information that is confidential to the company that holds it.
A trademark is established under United States law (Lanham Act, 15 USC 1051 et seq.) when a person or business makes a bona fide intent to use the mark in commerce in conjunction with goods or services. A use in commerce can include many things, such as hanging a sign outside a barber shop, using the mark on letterhead or on a website, or offering goods for sale with a certain label or character.
Certain trademarks are afforded greater protection than other trademarks under federal law. There are five categories under which a mark may fall. A “generic” trademark is the weakest type of mark and a “fanciful” trademark is the strongest.
- Generic: a generic term is one that very generally describes an item or good. For example, “book,” “bus,” “computer” or “airplane” are all generic terms that don’t suggest any particular manufacturer or identity. This type of “mark” does not receive any protection under trademark law.
- Descriptive: a descriptive mark is one that is just that: descriptive. For example, a descriptive mark could be “cold,” “hot,” “soft,” or similar. Trademark protection for such terms is rare. An example might be “Home Box Office.”
- Suggestive: the first category of trademark that is protected under law is a “suggestive” mark. This refers to a mark that suggests certain qualities and characteristics about a product or service, but typically requires more information to explain its exact meaning. An example of a suggestive mark is “Greyhound®” which implies a fast way to get where you plan to travel on the bus service.
- Arbitrary: An arbitrary mark is one that has no meaning relative to particular goods or to any goods, but are otherwise typical English words. The classic and oft-cited example is “Apple Computer®.” The computer and personal electronics company has nothing to do with a piece of fruit. Thus, the use of the word apple is arbitrary to the description of the product.
- Fanciful: the strongest category of trademark refers to terms that would normally have no meaning at all, but are positioned in commerce in conjunction with goods and services. Examples of fanciful marks are “Xerox®” and “Bamzu®.”
Types of Trademark Protection
There are various types of protections afforded to certain marks.
Common Law Trademarks: “common law” is law derived from English and American judges and others who decided how law would work before there were legislatures that made laws. You may have a common law mark if you use your trademark in commerce without registering it with state or federal government. Even if you have not registered your mark, you may be able to protect it if you can show that you used the mark in commerce before the alleged infringer did. CyberLaw can assist you in proving your case in these often difficult matters.
Usually, common law trademarks are limited in scope to the geographic area in which they are used. For example, if you used the name “Joe’s Jolly Pizza” in Maine, you would likely not be able to stop another owner from using the same name in Arizona because the infringement is not in your local area.
Common law trademarks are often marked with the signals “TM” or “SM” to designate that the owner seeks to protect those marks.
State Registered Marks: while marks registered with States also have more limited protection than other types of safeguards, it is generally to a business’s benefit to register their marks in states in which they markets their services. While the protection is generally the same, the registration with the State gives the trademark owner greater proof of ownership compared to common law methods.
Federal Trademarks: most firms that are national or worldwide (or who want to be) should register their trademark with the United States Patent and Trademark office (USPTO). There are numerous advantages to a federally registered trademark. First, such registration gives everyone in the nation notice of your ownership, which protects you if another firm later attempts to infringe on your mark. Another related benefit of federal registration is the presumption of validity and ownership by virtue of holding an approved federally registered mark. This presumption means that you have national priority for the mark in the face of any challengers. You can tell when a mark is federally registered when you see the symbol: ®.
Foreign Trademarks: if your business is in other nations, it is in your interest to register that mark with those other countries. Countries offering registered trademark protection include, but are not necessarily limited to, Argentina, Australia, Austria, Canada, Denmark, France, Germany, Hong Kong, Italy, Japan, Lebanon, New Zealand, Norway, Portugal, Singapore, South Korea, Spain, Sweden, Switzerland, Taiwan and the United Kingdom. While international protections vary, most are similar to protections offered by the United States. International registration does have numerous pitfalls, however, and it is in your best interest to obtain counsel to help you navigate the path.
Protecting and Registering Trademarks
In considering trademark registration remember that the strongest trademarks are used very extensively by the owner. The mark should be on your letterhead, business cards, e-mail signatures, and anywhere else it may be appropriately used. A mark is strongest when it is recognized by most people in your marketplace, whether it be local, national, or worldwide. As discussed above, your mark should be as strong as possible, while still allowing you to market effectively. Finally, you should be aware of similar marks that are already in existence. You cannot later allege that a mark is closely related when the mark was in existence at the time of your filing.
Protection: Once a trademark is registered the registrant cannot simply rest on its laurels. Trademark registrants have a duty to make good-faith efforts to protect their marks. This includes actively searching for infringers and otherwise putting the public on notice of your work.
Consistency: Finally, be consistent with the style, font type, lettering, color and related features. A mark that is constant flux cannot be sufficiently unique to maintain it’s copyright protection. Major changes in a mark must be protected anew.
Trademark Infringement
Trademark infringement can happen in many ways. Not matter what the circumstance, there is typically no trademark infringement unless a mark is used by someone other than the proper owner in a way that is likely to cause mistake, confusion or to deceive others as to the actual identity of the source of the goods or services.
When considering whether trademark infringement exists, courts consider a number of factors, including the overlap of markets, the good or bad faith “intent” of the alleged infringer, and how similar the marks may be to one another. Factors considered in evaluating infringement include:
Even when a mark holder alleges that another person has infringed upon their mark, an alleged infringer may defend themselves with three primary defenses:
- Parody: parodies of trademarks are usually acceptable as long as the parody is not directly tied to commercial use.
- Fair Use: much like copyright, if an alleged infringer is using a mark in good faith and there is little possibility of consumer confusion.
- Nominative Use: using the trademark to help identify the product is another type of “fair use” that is a defense for alleged violators. For example, referring to the product in a survey or newspaper article to help the listener more clearly identify the product or service at issue.
Enforcing Trademarks
What can be done about a business or individual infringing on your trademarks? The firm can assist you in evaluating the many options available for enforcing your rights to exclusively use your mark.
Enforcement actions include opposing registration of a competing mark in domestic and foreign trademark offices, directly contacting and working with the infringer and trademark litigation. The plan of action and process for protecting your marks can be quite confusing, even for experienced attorneys. If you need assistance in enforcing your rights to your mark, CyberLaw strongly recommends that you get in touch with the firm today to discuss your enforcement options.
|
