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What is false advertising?

Advertising is considered false when the things such as origin or description or representation of a fact are false or misleading during promotion or advertisement. False or misleading means that it is likely to cause confusion or deceive. False advertising can apply to a claims about a person’s own goods or services or to a claims about a competitor. For a false advertising claim it must be shown that a false or misleading statement was made in regards to advertising or promoting goods and there was deception that would likely influence a consumer’s purchase and cause injury. If both parties are competitors then there should not be easy to demonstrate that injury is possible, however if they are noncompetitors then probable injury may be tougher to prove. A possible defense to a false advertising claim is “puffing.” This is the idea that advertising usually involves exaggeration and that is acceptable to a certain extent and does not necessarily make the claim false. Before making claims make sure they are properly vetted and cannot be misconstrued.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Dilution Law

Dilution is when another trademark would infringe on your trademark’s reputation or identity. This can occur even without a finding of likelihood of confusion. The goal of dilution law is to prevent damage to a trademark owner based on the name. The two main forms of dilution are blurring and tarnishment. Blurring occurs when a trademark would weaken the standing of a registered trademark by “blurring” the mental image consumers and others have when they think of the registered mark. This has the potential to diminish the mark’s uniqueness. Tarnishment is when a registered trademark could be linked to other products which would harm the way the mark is perceived. An example could be low quality or unsavory goods. The goods do not need to be related to tarnishment. There are many other factors to be considered as well such as fame of the mark and recognition, distinctiveness, and degree of similarity.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Counterfeit Products

A counterfeit is a form of infringement where someone using a spurious mark that is either identical or indistinguishable from a registered trademark. There are criminal penalties, which can include hefty fines and even imprisonment, and civil remedies for counterfeiting. Counterfeit goods and even facilities and equipment used to counterfeit may be subject to seizure. For a mark to be found counterfeit it would have to be have been used on the same goods or services as the registered mark. Something may be found to be a counterfeit even if the infringing party did not know the mark was registered. Other factors include the point of view of the average person and whether or not the intention was to deceive purchasers. It is also very important to note that counterfeit may even be found with the original mark if it is found to be used in a way that deceives the public. Take steps to ensure that not only you, but those you have allowed to use your trademark are using it properly.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Reverse Confusion

One possible outcome of a likelihood of confusion fight is reverse confusion. Reverse confusion is when the infringing newer trademark is more well-known than the senior trademark. This can happen if the younger mark was the subject of an advertising campaign and potential customers are more likely to recognize it than the older mark. This finding can of course be detrimental for the owner of the older mark as consumers may pass when purchasing their goods because they think the older mark is the infringer. Reverse confusion may also be bad for the younger mark if it is found that they used or advertised the new mark with disregard for the older mark’s status. This bad faith move can result in damages. Reverse confusion can add complications and risks for both sides. Like regular likelihood of confusion, it is best avoided through careful searching and selection of a trademark prior to filing.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Purchaser Sophistication

One factor that is taken into account when determining likelihood of confusion is how sophisticated and knowledgeable the customers purchasing your goods or services are. The more sophisticated they are the less likely they would be to confuse conflicting trademarks. This is something that should be considered as you begin your new trademark application. If you are selling goods or services to professionals rather than the general public the sophistication may be considered high. If you are only selling to the general public, then it may be low. Ordinary purchasers are less likely to have as much specific knowledge in regards to what they are purchasing and a professional is more likely to discriminate between trademarks. The amount of attention a potential purchaser will pay when considering. Will they think about the various products available or just grab what they see first? Is this in an impulse purchase or would it involve careful consideration? These are all important questions when analyzing a conflicting mark this is for similar goods and services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Intent and Trademarks

Your intentions can come into play when trademark infringement is being determined. What would be looked at is if you were actually intending to compete with the conflicting mark or if you were attempting to deceive possible customers. To determine this, things such as similarity of trade dress like packaging or colors and font used for the text can be analyzed. It is also always important to demonstrate that you were operating with good faith. Good faith can be shown by ensuring a complete and thorough search for conflicting marks was done, you did not believe there was a conflict, and that the mark you selected accurately reflects your goods or services. Bad faith may be found if styles and other elements were copied or there is no credible reason to adopt such a trademark. Before filing make sure you are operating with good faith and not trying to infringe on the rights of another trademark owner.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Proximity of the goods to a conflicting mark

When determining whether or not your trademark is likely to be confused with a possibly conflicting mark one of the most important thing to look at is if the goods are related. The closer the goods are to each other the higher the chance of likelihood of confusion being raised by the examiner. An important question is would an average person purchasing these goods be likely to think these items came from the same source? This question is tough because in today’s society the average consumer would expect companies to make a plethora of goods even if they are seemingly unrelated. Factors that should be taken into account include the place where the products are sold, price, whether the goods can be used together, and even the possible dangerous consequences of confusion such as in the case for medicine. If your goods or services are similar or closely related to those of a conflicting mark, then you may want to consider an alternative name.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Is my trademark similar to another?

Figuring out whether or not your trademark is similar to another is not as easy as one might think, but it is very important to consider before attempting to gain registration. Taking your trademark and looking at it side-by-side with another will not answer this question because more than just appearance is taken into account. Sound and meaning are also very important aspects. In addition, it is important to remember that trademarks will be judged as a whole and not by their individual components. Other things to take into account are the market place your product will be sold in and whether or not your goods are similar to those of the other trademark. When judging marks for similarity remember that those purchasing your products will not have perfect memory of the trademarks and thus more prone to be confused than you. Certain similarities may be acceptable such as if the mark is overall weak or the similarities have to do with generic portions which have been disclaimed. In certain cases, packaging or some other form of distinct presentation may make a difference, but not always.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Likelihood of confusion

One very common trademark application issue is likelihood of confusion with another registered or pending trademark. Depending on the specifics of the cited mark or marks, an Office Action containing likelihood of confusion can be a major obstacle in the way of registration. The main thing the examiner will look at is whether a consumer is likely to confuse or mistake your trademark for another. In determining this the examiner will look at the text, logo, appearance, sound, and entirety of your mark’s commercial impression. It is important to note that such confusion must be probable, not just possible. Other factors that play a part in determining likelihood of confusion include the strength and distinctiveness of the cited mark, relation of goods/services, consumer sophistication, third-party use, quality of goods, advertising and sales, and other relevant evidence. There are other options to deal with likelihood of confusion such as negotiating a co-existence agreement with the owner of the cited mark. Likelihood of confusion is one of the tougher issues to deal with and at the end of the day it all may come down to examiner’s opinion. Before fighting it is important to consider all possibilities and outcomes.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Incontestability

Registration is only the first step in fully securing your trademark. It is possible to add another level of protection to your trademark by obtaining incontestable status. Your trademark is eligible for this status if you have used your trademark continuously for five years after registration. To obtain this you must file a section 15 affidavit of incontestability.  Why would a trademark owner want this? Incontestability provides the exclusive right for you to use your trademark and if questions arise it can be used to show that your trademark’s registration is conclusive evidence of your ownership. The affidavit will also shield your trademark from being contested as descriptive. Incontestable status can also help when it comes to fighting those attempting to infringe on your rights. Incontestable status will not help if you engaged in fraud to obtain your mark or the status. In addition, it is important to maintain proper maintenance of your mark even if it is incontestable as it can still be abandoned.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Proper trademark maintenance

You spent time, effort, and money getting your trademark. Do not let this be for nothing. You must maintain your trademark to ensure your rights remain intact. You must not only use your trademark continuously, but also demonstrate this to the USPTO. You must file a section 8 affidavit of use between the fifth and sixth year after registration. In this affidavit you must attest that you have been using your trademark in commerce for five years continuously on all items in your application and contain a specimen showing this. If you are not using it on some of the items, then they must be disclaimed. You must also file a section 8 affidavit along with a section 9 renewal application between the ninth and tenth year after registration and every ten years after. In addition, a section 15 declaration of incontestability may be filed any time after the five-year mark. This declaration is not mandatory, but will bolster the protection for your trademark. Many choose to file this at the same time as the first section 8 affidavit.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

An overview of the Madrid Protocol

Your trademark grants you protection in the country you filed it in, but what if you want to do business or expand your market into other countries? There are ways to expand your trademark’s protections. Established in 1989, the Madrid Protocol was an international treaty which established an international trademark registration filing system. The system is administered by the World Intellectual Property Organization (WIPO). The system allows applicants to register in other member countries through a single application. Obtaining an international registration through this system affords the same benefits and protections as a national registration. First a request for extension of protection is filed in the home country. Once reviewed it is sent to WIPO for another review before being sent to the designated countries. If no issues are raised by this point, then it will be sent back to the home country and published for opposition. International protection can be invaluable protection if you are planning on expanding your business abroad.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Letters of protest

A letter or protest is a filing made by a third party against a proposed trademark which they believe should not move to registration. These letters are filed with the Director of Trademark Examining Group. This is generally done if a party believes registration will cause likelihood of confusion with one of their existing trademarks or if the proposed trademark is generic. Such a letter has to contain evidence which demonstrates that the protest is valid. If this is filed prior to publication, then a determination will be made as to whether the examining attorney may use it during their considerations. If filed after publication, then a determination will be made as to whether there was an error during examination and if jurisdiction should be restored to the examiner. If you are the one opposing a proposed trademark it is important to file an extension of time to oppose as merely filing a letter of protest will not halt the process. Letters of protest are a great way to protect your trademark, however receiving one for a mark you are attempting to register can cause difficulties and delays.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Filing an appeal

Do you disagree with the examining attorney’s assessment of your application and still wish to fight for your trademark? If the refusal issued by the examiner was a second refusal or a final refusal, then you have the option to file an appeal with the Trademark Trial and Appeal Board if you so choose. An appeal must be filed and fees paid within six months from the date of the refusal. You will then have sixty days file an appeal brief. After doing so the examiner will then also have sixty days to file a response. It is important to note that during the appeal process the examiner may not raise any new refusals. After the examiner has issued his response you will have twenty days to respond. If at this point you are still refused and want to continue fighting, then a request for reconsideration may be filed. This must be done within one month. If success is not found here, then the only option is to proceed to federal court.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a Disclaimer?

It is very common for Office Actions from the USPTO to contain a requirement for a disclaimer. A disclaimer is a part of a trademark which you are unable to register. This does not mean that your mark will not register or be protected, nor does it mean the disclaimed portions will be ignored when comparing your mark to those which may conflict with it. It only means that a portion of what you are trying to claim will only be protected as it relates to your entire mark. In other words, your exclusive rights for the disclaimed portion only apply to the context of the entire mark and not by itself. This will not impact your rights as far as your entire mark is concerned. Disclaimers are usually necessary for generic words, descriptive terms, or ornamental designs. Do not fret if the Office Action issued by the examiner has a disclaimer requirement. Disclaiming necessary parts of your trademark is very routine procedure and many registered marks have parts which are disclaimed.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Claiming Distinctiveness

Substantive rejections based on things like descriptiveness are common and can be difficult to fight, especially for someone who is not an attorney.  When other avenues have failed one possibility is to claim distinctiveness under section 2(f). What this claim means is that your trademark has become distinct through your use and that it will be recognized by those you do business with. This is usually only recommended if you have been using your trademark continuously for at least five years. Although if you have not been using your trademark for this period there are other ways to prove your trademark has acquired distinctiveness such as by demonstrating you have spent a lot on advertising, have made many sales, or have client or retailer testimonial showing they recognize your trademark. Claiming distinctiveness is not the only way to overcome certain issues with your trademark application, but it is worth considering if this option is for you.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Overcoming Rejections

The specific strategies to overcome the many different grounds for rejection vary. One good place to start can be to call and speak with the examiner that issued the Office Action against your application. Sometimes minor issues can even be resolved this way. Even if they cannot be solved with a phone call, hopefully the examiner can give you a better sense as to what the issues are and how to proceed. Many applicants elect to hire a licensed attorneys specializing in intellectual property. The issues contained in Office Actions generally require attention to specific details and instructions pertinent to the application itself (procedural issues) or a thoughtful well-crafted response to issues with the mark itself (substantive). In either case having an experienced private attorney review your Office Action and file your response can help prevent future issues and delays. Do not risk losing your trademark by trying to respond when you do not understand the issues or what the examiner is looking for.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Why was my application rejected?

There are many reasons why your application could have received a rejection from the USPTO examining attorney. Rejections are issued as an Office Action which you may have the chances to respond to. Issues with your specimen, the drawing, or the description and classification of your goods/services are very common grounds for rejection. You also could have simply forgot something such as your signature or the necessary dates. The issues mentioned so far are usually procedural, meaning they are based on your application and not on the nature of the mark. Rejections based on the nature of the mark are more substantive issues. Such issues include your mark being merely descriptive, geographically descriptive, a surname, or likely to be confused with a registered mark or a prior pending application. Substantive issues are generally harder to correct than procedural issues as time and though must be putting into crafting a full adequate response as to why you disagree with the examiner’s assessment. Rejection can also occur if the examiner does not feel your desired trademark can function as a trademark such as when it is only an ornamental design, functional design, or is part of a background design and does not create a separate commercial impression.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Office Actions

All applications filed with the USPTO undergo review by an attorney examiner. The examiner’s job is to ensure that there are no procedural issues with your application and that the trademark you are seeking to obtain is eligible to register. If the examiner finds an issue with your application, they will issue an Office Action. Once issued you will have six months from that date it was issued to respond to all the issues it contains. If you do not respond to an Office Action within six months, then your application will be abandoned. Once abounded you have two months from the date of abandonment to file a petition of revival. If you respond to some, but not all, of the issued then the examiner will issue another Final Office Action meaning you have one last chance to comply with all the issues raised or else the application will be abandoned. Your only other option is to appeal to the Trademark Trial and Appeal Board (TTAB). Check the status of your trademark application regularly to make sure there was no Office Action issued. When responding make sure to respond to all issues raised by the examiner.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Filing your application online

The USPTO strongly encourages electronic filings. This is something you should take advantage of as paper filings generally have higher fees and take longer. The Trademark Electronic Application System (TEAS) offers reduced fees and the possibility of even lower rates if your application is eligible for TEASPlus. If you are eligible it is important to follow all the requirements and details carefully as failure to strictly adhere to them could lead to having to losing eligibility and having to pay the full amount. Electronic filing also gives you immediate confirmation and a record that your filings were completed. This can be important as the deadline for your application approaches. It also allows you to receive and respond to USPTO inquires or office actions quicker than if you filed through paper only. Electronic filings will also save you and your business money on postage. Filing your trademark application online is an easy way to save time, money, and obtain protection for your trademark as quickly as possible.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.