Archive for Trademarks, Copyrights/Intellectual Property

The Benefits of Trademark Registration and the Trademark Registration Process

March 5, 2008 at 5:39 am · Filed under Trademarks, Copyrights/Intellectual Property ·Tagged , , , , , , , ,

There are numerous advantages to securing federal registration of a trademark. Perhaps the most important advantage is that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks.

Additional substantive benefits received through federal registration include:

  1. The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
  2. The right to use the ® symbol in connection with the mark, which may deter potential infringers;
  3. Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
  4. The right to sue for infringement in federal courts;
  5. The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
  6. The ability to recover attorney fees in infringement actions; and
  7. The ability to have the customs service block the importation of goods bearing an infringing mark.

Federal registration also makes it easier to prove an allegation of trademark infringement by providing prima facie evidence of trademark ownership and use. The registration can also be used as evidence that the mark does indeed function as a mark and is not confusingly similar to other registered marks.

In terms of the process:

About four months after filing, an examining attorney at the USPTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

A common ground for refusal is likelihood of confusion between the applicant’s mark and a registered mark. Marks which are merely descriptive in relation to the applicant’s goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the USPTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

If the application was based upon the actual use of the mark in commerce prior to approval for publication, the USPTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition was filed.

If, instead, the mark was published based upon the applicant’s statement of having a bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE. The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the USPTO will then issue the registration certificate.

Register your Trademark today! You’ll be glad you did!
How Can MyCorporation.com Help You?
MyCorporation.com offers a full line of document filing services in any state:

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Starting a New Business?…Using a New Trademark?

March 3, 2008 at 6:25 pm · Filed under Trademarks, Copyrights/Intellectual Property, Uncategorized

There are numerous advantages to securing federal registration of a trademark. Perhaps the most important advantage is that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of state common law trademarks.The importance of federal trademark registration may be more well known than the benefits of a thorough and accurate comprehensive trademark search. Substantive benefits received through federal registration include:

  • The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
  • The right to use the ® symbol in connection with the mark, which may deter potential infringers;
  • Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
  • The right to sue for infringement in federal courts;
  • The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
  • The ability to recover attorneys’ fees in infringement actions; and
  • The ability to have the customs service block the importation of goods bearing an infringing mark.

However, before using a trademark in commerce, it is important to confirm that other individuals and/or companies are not already using the mark. You do not want to spend a great deal of time and money developing and marketing a trademark, slogan or new brand, only to discover that a third party has pre-existing rights to the same, or confusingly similar mark.

A comprehensive trademark search can provide you with a great deal of information regarding third party uses of marks that are similar to your proposed marks. The Comprehensive Trademark Search Report provided by MyCorporation.com contains records obtained from County, State, and Federal databases in addition to databases maintained by third party providers (e.g. WHOIS records contained in the Domain Names portion of your Search Report).

When reviewing a trademark search report, it is important to take into consideration a number of factors ? to determine whether the mark you would like to use is “infringing” on or “likely to be confused” with another trademark. In fact, the Ninth Circuit has developed eight factors (the so-called Sleekcraft factors) that must be considered in analyzing the likelihood of confusion: (1) the similarity of the marks; (2) the relatedness of the two companies’ services; (3) the marketing channels used; (4) the strength of plaintiff?s mark; (5) defendant?s intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion into other markets; and ( 8) the degree of care likely to be exercised by the purchasers. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). The factors are similar in each circuit.

If, for example, two marks are substantially similar, and similar goods and services are offered to the public in connection with the trademarks, then this might give you pause in terms of attempting to register the mark. This is not to say that registration is not possible, it just presents a potential hurdle in the trademark registration process.

It is important to understand that a trademark comprehensive search cannot provide you with a definitive “answer” as to whether or not your proposed trademark is available for use and registration. It does, however, arm you with information regarding potential risks associated with the mark. This information can be extremely beneficial in helping you to make an educated business decision in the use and registration of your particular mark. In fact, if your exact trademark is already in use by another entity, you have received MORE THAN your money?s worth by ordering a comprehensive trademark search report. Now, you are faced with making the decision of whether to proceed forward with your desired trademark or to abandon it and select another mark to search.

MANY businesses HAVE NOT registered their trademarks at the Federal level. Thus, the importance of a Comprehensive Trademark Search cannot be overstated. It is extremely important that you search state and county records to protect yourself from future lawsuits and the future possibility of losing your desired trademark.

Once your mark is registered, it is interesting to note that your mark will then appear when third parties undertake a search for a mark that is similar to your mark. This factor weighs in favor of federal registration, but it also demonstrates how the process of trademark searches, applications, and registrations go “full-circle.” A thorough comprehensive search, like that performed by MyCorporation.com, will provide a wealth of information and will save you time and money in the long run!
How Can MyCorporation.com Help You?
MyCorporation.com offers a full line of document filing services in any state:

Although MyCorporation.com is happy to assist you with all of your document filing needs, I strongly urge you to speak with a licensed professional who can provide you with sound advice as to the form of entity that best suits your particular needs.

Good luck in all your business endeavors!

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What’s in a Name?

March 2, 2008 at 11:24 pm · Filed under Trademarks, Copyrights/Intellectual Property, Uncategorized ·Tagged , , , ,

In the Internet’s infancy, domain names served merely as a means of locating specific computers on the Internet.  Now, with globalization and commercialization of the Internet, domain names have taken on business identification and trademark significance.  Domain names are now highly visible in the bricks and mortar world, appearing in television, radio, and magazine advertisements, on billboards, and in most company’s advertising materials.  Now that domain names serve a unique advertising and business purpose, confusion may arise when a company’s domain names are not the same as their trademarks, and vice versa. Domain names are distinct from trademarks because domain names are global and unique (a particular string of letters can link to only one site).  On the other hand trademarks may overlap in different industries or different geographical locations.  In the business world, because Internet users often assume a company’s trademark is its domain name, a domain name may become an equally valuable piece of intellectual property, and, like a trademark, a true business asset.  Ultimately, one of the most important means of identifying the goods or services sold by your company will be through its trademarks and corresponding domain name. In fact, your trademark may be the only means for customers to identify your goods or services, and if your trademark is not the same as your domain name, a customer may become confused when searching on the Internet.   Unavailability of a matching domain name could prove devastating to your business. Furthermore, choosing a trademark that is unusable because it conflicts with a prior user of a confusingly similar mark may result in a significant loss of valuable time and money, wasted marketing dollars and goodwill. For these reasons, when considering a trademark and domain name, it is important to take into consideration the following:  Initially, it is important to undertake a comprehensive search of the trademarks.  A comprehensive search typically covers federal trademarks (both applications and registrations), state trademarks, and common law trademarks (marks that have not necessarily been registered on a state or federal database, but are in use).  To the extent that the comprehensive search reveals that your mark is “clean” and available for use, it is important to take all necessary steps to protect your mark, including confirming that the domain name is available for use and registration and filing for trademark protection with the USPTO.  There are numerous advantages to securing federal registration of a trademark. Perhaps the most important advantage is that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks. Federal registration also makes it easier to prove an allegation of trademark infringement by providing prima facie evidence of trademark ownership and use.  Additional benefits of  federal registration include, among other in things: (1) The right to use the ® symbol in connection with the mark, which may deter potential infringers; (2) The right to sue for infringement in federal court and the possibility to recover profits, damages, costs, and attorneys fees in the event of proven infringement; (3) The incontestable status following five years of registration; and (4) Presence of your mark in third party comprehensive searches. Taking these steps to protect your business identity  at the outset will save a great deal of time and money in the future. 

Trademark Protection Checklist


Most attorneys agree that trademark law is a very complex area of law. Personal efforts to tackle trademark issues is not something I endorse unless you have had at least a few years of legal training. Assuming you have not, let’s take a layperson’s approach to understanding and pursuing the trademark process with the information and services provided by MyCorporation.com:Know Your Rights…and the Rights of Others Against You. Learn about your trademark rights…and about the rights of others. The Trademarks Tutorial and FAQ Center at MyCorporation.com is a great place to start.Assess Your Trademark Eligibility. Is Your Mark, Brand Name, Slogan, or Domain Name even eligible for Trademark protection? Review the article entitled “Analyzing Your Trademark” for a comprehensive discussion about important factors that determine whether your trademark can qualify for protection.Register Multiple Domain Names and Variants. Register the word, phrase, or name as a domain name. Also, save on future legal costs by preventing the infringement with a pre-emptive strike: secure MULTIPLE domain names by registering variants such as: • sound-alike words and phrases
• misspellings
• hyphenated versions
• singular and plural forms of the word(s)
• important TLDs (.com, .net, .org, .biz, & .info)
Search Pending and Registered Trademarks. Search the database of Pending & Registered Federal Trademarks.Search UN-registered Trademarks. While Federal Trademark Registration and protection offers valuable benefits, the MAJORITY of trademark owners HAVE NOT registered their trademarks. While not as powerful as a Registered Trademark, these “UN-registered” trademark owners still possess legal rights and may file suit against you if you infringe an “UN-registered” trademark.
To assess whether you are infringing an “UN-Registered” Trademark, you must Search Public Records (NATIONWIDE) for company names, brands, and domain names that are the same as, or similar to, your desired trademark. NOTE: Because the different states and counties do not offer a united, common database of information for these public records, each state (and every county within that state) must be search ONE-BY-ONE.MyCorporation.com offers a Comprehensive Trademark Search Report consisting of records gathered from 49 states and thousands of different counties and municipalities.Register Your Trademark. Submit your Application for Trademark Registration to notify the world and potential competitors that you have secured a filing date and will be prosecuting infringers to the fullest extent of the law.Once you are granted “Registered” status, not only will your company and its brands gain additional credibility and legitimacy, but you will be empowered with an arsenal of legal weapons that can make defending your trademark rights simple and affordable.Regain Control over Domain Names “Held-hostage” by Cyber Squatters. Use the ICANN Uniform Domain-Name Dispute-Resolution Policy to re-claim a domain name from a cyber squatter that is extorting money from you or illegally re-directing YOUR traffic to his/her website. If you are a REGISTERED trademark owner, it’s MUCH easier than you may think!

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