Norton Law Corporation Trademark Assets

Buying Trademark Assets: Does the Seller Really Own Them?

When you buy a business these days, you’re going to want to make sure you’re also purchasing the trademark assets from that business. Any good trademark or business attorney will make sure the intellectual property, including trademarks, copyrights, and patents, are included in any purchase agreement. But beyond that, how can you really be sure that the rights you’re buying are actually owned by the company you’re buying them from? That’s the question we’ll try to answer in this post, with a focus on trademark rights and a few helpful tips for making sure the trademark assets are actually owned by who you think they are.

Of course, my standard disclaimer applies. This post is just for general informational purposes only, and while I’m a lawyer, I’m not your lawyer (unless you’re actually a paying client who has signed a retainer agreement with me and you’re reading this). Any time you enter into any kind of deal to purchase intellectual property from another person or company or a deal to purchase a company itself, always consult an attorney (and an accountant at the very least) before you enter into the transaction.

With that out of the way, you’re probably wondering what’s the deal with trademark assets not actually being owned by the company you think you’re buying them from. There’s a couple of common occurrences I’ve seen that leads to ownership issues.

The first is that the trademarks are actually owned by a subsidiary of the company that’s being purchased instead of the company itself—and for whatever reason, the subsidiary is not part of the deal.

The second is that the company acquired the trademark from someone previously and, due to chain of title issues, the prior owner didn’t actually own the rights to use the trademark. There are others, of course, but those are two of the more common reasons why a company may not own the trademark asset you think you’re purchasing.

So what is a purchaser to do to protect themselves? It starts with a list. You (or your attorney) need to create a list of the intellectual property you think you’re going to be purchasing. This should include the following:

  • Trademarks
  • Service Marks
  • Copyrights
  • Patents
  • Trade Dress
  • Trade Secrets
  • Trade Names
  • Domain Names.

And don’t just include those you think are truly owned by the company you’re buying, but include those that are owned by other companies or individuals and are licensed to the company you’re buying. Unless you’re going to completely overhaul the business, you’re going to want to keep using those licenses after you purchase the business.

Once you have your list of expected intellectual property you’re going to receive from the transaction, you’re going to want to cross reference that with the list the seller provides, since their list will be the most up-to-date. They are the current owner of the business, after all.

If both lists match, you’re sitting pretty knowing that at least both parties are contemplating the same IP being transferred during the sale. If not, you’re going to have to do some digging. It’s always best to find that some intellectual property asset will not be transferred beforehand than it is to go back and fix it later by finding the correct owner and entering into additional agreements (at additional cost, of course) to secure the assets.

Aside from the lists, you (again, your lawyer) will also want to take a look at the current states of the company’s intellectual property dockets. This is incredibly important for trademark, service mark, and patent assets, as successfully managing those types of intellectual property require a near-constant watch on upcoming deadlines.

If there are many assets contemplated as a part of the deal, chances are the seller will have a docketing system in place, and you should view the current one-year summary of the docket to see what deadlines are coming up. You don’t want to be the buyer who purchases a valuable trademark only to suddenly realize upon the deal closing that the deadline for renewal lapsed after the deal closed but before you could properly take up management the mark.

Aside from trademarks, there are other things to watch out for when it comes to other intellectual property assets, but those are issues for another post.

I hope this post was useful to you if you’re considering buying (or selling, I suppose) a business. As I often say, a trademark can be one of the most valuable assets of a company, and you want to make sure you’re getting what you’re bargaining for. If you have any questions or comments, please feel free to contact me or leave a comment below.

Norton Law Corporation Blog Etsy Business Trademarks and Corporate Formation

How to Protect Your Etsy Business

The idea for this post came from a couple of different sources. First of all, I’m getting married in just over a month, and my fiancee and I have been ordering quite a few things from the handmade capitol of the world over the last few months. Secondly, I recently read an article a couple weeks back about Urban Outfitters, H&M, and Forever21 allegedly ripping off the designs from a number of artists on Esty—I’d post the link, but I forgot to save it (and in true lawyer fashion, I also can’t really comment on whether those companies engaged in that kind of activity). So I figured, why not make a post on how shop owner on Etsy can best protect themselves not only from liability, but from other companies leaching off of their great ideas and unique designs.

Now, it should be noted that Etsy’s corporate counsel, Hissan Bajwa, wrote a post a year or so ago about the various types of business entities an Esty shop owner could own, but I feel like he may have left out a few things and wanted to go into a little more detail. Keep in mind that everything in this post is merely general advice, and none of it should be considered legal advice since (for most people reading) I’m not your attorney and I’m not basing any of this article on specific, individualized, facts but merely general observations.

The Best Legal Structure for an Etsy Shop Owner

What the best legal structure is for your business is going to be a question for your own personal business attorney. That’s right, you’ll need to evaluate what you’re selling, whether you’re working with anyone else, and what the taxes will be like depending on the type of structure you’re interested in (and that’s also a good question for a CPA, as most good business attorneys will tell you).

Let’s Talk Sole Proprietors

With that said, I’ve been shopping on Etsy for a long time, and I know that for most of the seller out there, who are working part time crafting their wares, a sole proprietorship is fine. You’re doing business as yourself (or under an assumed name, for which you’ll need a “Doing Business As” DBA recorded pursuant to your county’s rules), and as a result, if you run a shop on Etsy, you’re already a sole proprietor. From a tax perspective, you and your business are one in the same, and from a liability perspective, you’re also one in the same—which an lead to you being held personally liable for any lawsuits that may pop up against your business. Do keep in mind that you may be able to protect yourself with liability insurance, but be sure you really know what your policy says.

In short, a sole proprietorship structure is easy to run (all the money just goes to you), easy to maintain (you don’t need any specific filings or documentation except for a DBA), easy to form (automatic as soon as you start doing business), but you need to watch out for the liability problems or you could get seriously burned (you’re personally liable for everything done in the name of your business).

So, in an incredibly general way, I’m going to say that for most Esty sellers, a sole proprietorship is all you need—especially if you’re just starting out and don’t want to invest a bunch of money into a business you’re not sure is going to work—unless you’re selling items that could injure someone, including vintage items, food products, beauty and grooming products, certain types of furniture, or anything that could injure someone.

Partnerships Are Just…Meh

Now, the question when you decide to start working your business with another is whether to form a partnership or one of the more “sophisticated” business structures like a corporation or a limited liability company (LLC). This might just be personal preference talking, but I’m not a fan of the partnership structure unless it’s absolutely necessary (which does happen in very specific circumstances which are way, way outside the scope of this article). Essentially, you and another person enter into a business partnership, at which point I always recommend a partnership agreement—seriously, if you’re partnered with someone and you don’t have a partnership agreement, call an attorney and get one drafted now, this very instant, I’m not kidding—when you start operating the business together.

A partnership is kind of like a sole proprietorship, but for two people. Same as before, they’re easy to run (just split that money as stated in your partnership agreement, or equally if you don’t have a partnership agreement), easy to maintain (again, just file for a DBA and that’s all you’ll need provided you and your partner are still getting along), easy to form (just start doing business with someone else), and as with the sole proprietorship, easy to get totally screwed if someone sues the partnership. And why you may ask? Because in a partnership, both partners are on the hook for the entire amount of any liability the partnership incurs. So if your partnership is sued, and your partner can’t or won’t help pay, you’re going to be stuck holding the bag (though in all fairness, you can try and get the money from her later).

My feeling about partnerships for Etsy store owners is this: if you’re doing enough business that you’re in need of a business partner, skip the partnership, spend the money and form a corporation or an LLC.

Better Liability Protection Comes at the Price of a Corporation or LLC

We come to the last two types of businesses for Etsy shop owners: the corporation and the LLC. Now, there’s only one type of LLC (unless you count LLPs, which are like LLCs and partnerships mashed up and only used in limited circumstances), but there’s a whole slew of corporation types, from C-Corp to S-Corp to B-Corp. We’re going to talk about a few pros and cons of all of them, but a somewhat more detailed study, you may want to check out my other articles on corporations and LLCs.

For a lot of small business owners, the biggest issue I run into with corporations and LLCs is that entrepreneurs don’t like to pay for them. Most of the time, as long as you do yourself a favor and stay away from the non-lawyer legal service providers you see advertised on TV, you’re going to have to shell out around $500 to $1000 to get a corporation or an LLC formed after attorney fees and filing fees with the state you choose to incorporate in. For some business owners, especially Etsy sellers who are just getting started, that’s quite a chunk of change, and you’re probably wondering what you get for that.

What you get for that is a lot more liability protection in case something goes wrong and your business gets sued. This means that if the business is sued, you’re most likely going to be protected. It also means that you have to keep up with a lot more busywork to keep your business going. Extra documents will need to be drafted, meetings will need to be held, a separate set of taxes will need to be done, and so on. But all of that comes with the big perk that if your business is sued, you and your family aren’t going to have to pay for the damages out of pocket if you lose—your business is solely responsible. And because of that big benefit of a corporation or LLC, if you’re selling products that run a higher risk of hurting someone, do yourself a favor and talk to a business attorney (most of us are free to consult with) about whether you should go the corporation route.

On top of the liability protection, some of the corporation types also give you extra benefits. For smaller businesses, I say stay away from the C-Corp structure unless you’re interested in securing some kind of venture capital investment. However, an S-Corp can help you save money on taxes, and a B-Corp can help you save money on certain supplies and other necessaries to keep your business running since having a (Certified) B-Corp shows the world that your businesses takes social responsibility seriously.

Protect Your Handmade Items from the Prying Eyes of the Big Companies

While the first part of this post dealt with how to protect yourself in the face of liability, the second part of this article will deal with how to protect your products from “theft” by the competition. At the outset, it’s important to know that not everything can be protected and a full on, proper protection scheme will cost you a lot more than you’re probably making selling your products on Etsy, but I’ll give you a few hints and tips on how to protect your products without breaking the bank.

Also, every industry has a preferred type of protection, wether it’s copyright, patent, trademark, or trade secret, so I’ll be touching on all types of protection.

Don’t Copy Me…I Have a Copyright

Copyright protection is automatic for things that qualify for it. That’s right, you don’t need to file any paperwork, pay any fees, or anything like that if your items qualify for copyright protection. However, obtaining a copyright for many types of products is simply impossible, and if you want to go after someone for money damages who has copied your work, you’re going to have needed to register your copyrighted item with the Copyright Office arm of the Library of Congress.

So here’s how copyrights come to be. They need to meet two main requirements: originality and fixation in a tangible medium. First, something needs to be original to be copyrighted. It doesn’t have to be super original, just mostly original. Second, it needs to be fixed in a tangible medium. Say what? That just means it has to be more than just an idea, it has to be “touchable” for lack of a better word. There’s also a third requirement: the item can’t be functional.

With the requirements out of the way, let’s talk about a few items currently on Etsy’s front page that may be able to qualify for copyright protection. Jewelry, clothing and accessories, photographs, paintings, furniture, and eyewear. That’s a pretty wide range of products, all of which may be available for copyright protection provided any individual item from a group of items like that is able to meet the requirements for a copyright.

If You’re Trading Goods, You Need a Trademark

Trademark protection is another great way to keep the big companies at bay and protect your products. First things first, I’m a trademark attorney, so I always recommend that if you’re serious about your business, you really need to spend the few hundred dollars to trademark your company’s name. You don’t have to spend extra to trademark a logo or a slogan, but do yourself a favor and trademark the name of your company to give you that extra leverage to fend off competitors who may try to leach off your success. And even if you’re not worried about that, at least have a qualified attorney perform a trademark search to make sure you’re not infringing on the trademark of another. Seriously, I’ve seen it happen before, and a few hundred dollars now can save you tens of thousands later.

With that out of the way, trademarks are designed to protect brands and make sure consumers know where any given item is coming from. Most notably, business owners register trademarks for the name, logo and any slogans used by the business, along with the names they use to brand their products. However, beyond that, certain characteristics of the products themselves may be eligible for trademark protection under what’s known as trade dress. Trade dress extends trademark protection to the decorative, non-functional, non-essential portions of a product, which makes it an excellent way to protect certain types of products. Here’s a few examples of where trademark protection may be applicable: watches, clocks, clothing, jewelry, eyewear, and accessories.

Patents are Patently Expensive

Patents are the third category of intellectual property protection, and to be perfectly honest, they’re way beyond what you’ll likely need as an Etsy shop owner. They’re usually incredibly expensive and take a long time to obtain, and I really don’t recommend patents for most small businesses.

Keep Your Recipes a Secret, a Trade Secret

The final type of protection for your products is trade secret protection. Purveyors of food products, beauty products, and other consumables, its time to listen up. Trade secrets protect the recipes and formulas you use to create your products, but they can also be used to protect things like customer lists, supplier lists, and pretty much anything that makes you different from your competition. The catch? You need to keep your trade secrets a secret. Don’t tell anyone you don’t need to. Make those you do tell sign a non-disclosure agreement. And if you write any of your trade secrets down, keep them under lock and key and only let others see them on a need to know basis.

A Quick Conclusion to a Long Article

At over 2400 words, I think this is the longest article I’ve written on my site, but there was a lot of information to cover and I hope you’ve learned a thing or two about how to protect yourself and your Etsy business. A few things to keep in mind in parting.

Sole proprietorship is probably fine for many Etsy shop owners, but not all, so call an attorney if only for a quick (free chat) about business structures if you’re worried about liability or interested in taking advantage of the perks of a corporation or LLC.

Copyright and trademark protection may be available for your products, but don’t just assume. As far as trademark protection goes, take a look at the (growing) database of common trademark questions for some quick answers on whether your product may be trademarkable. And if you have a product or service to add, let me know and I’ll give you credit for it.

Whether you’re a sole proprietor using a DBA or a full-fledged corporation, trademark your business name, or at least spend the money on a professional trademark search to make sure you’re not infringing on the trademarks of another.

And that wraps it up. Good luck in your endeavor on Etsy and I hope your business continues to grow into a huge success. And if you’re already a shop owner on Etsy, feel free to share your shop in the comments below.

Norton Law Corporation Trademark Infringement Fair Use

Using Another’s Trademark. Infringement or Fair Use?

I’m often asked whether a person’s use of a trademark is considered trademark infringement or if it the use is acceptable as fair use. The usual answer is…wait for it…it depends. That’s right, just like most legal questions, trademark infringement is often a variety of shades of grey without any clear cut black and white answer. As a result, whether something is considered trademark infringement is very, very fact specific, as you’ll soon find out. In short, unless you’re using the mark (or something incredibly similar to it) of another company to sell exactly the same product they are, then the answer to whether something is trademark infringement will remain the lawyer’s favorite answer: it depends.

Now, because this post is going to contain a bit of law and legal discussion, I’m going to need to bolster the standard disclaimer I have on the footer of every page on this site. The information contained in this post is not an acceptable substitute for hiring your own knowledgable trademark attorney to do a full-fledged analysis of the facts unique to your situation. If you try to analyze your use yourself, you have a very high risk of getting it wrong, getting sued, and owing a lot of money to the original trademark holder. I don’t want that to happen. You don’t want that to happen. So contact a trademark attorney if you are concerned about infringement.

With that out of the way, the common definition for fair use is a very straightforward one, and it comes to us straight from the Lanham Act (that’s the trademark law). Under that definition, fair use is the use of a name, term, or device, otherwise than as a mark, of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services made or sold by a party, or their geographic origin. That’s a more readable version of 15 U.S.C. § 1115(b)(5) if you’re interested in checking the statute itself. In other words, you can use another company’s trademark to describe your own goods or services, but not as a trademark. Pretty straightforward, right?

Ready for an example? Fender, the guitar maker, has a very old trademark for their guitars and other musical instruments. However, if you own an auto body shop, you can still advertise that you can fix a car’s fender. It’s not trademark infringement because you’re using “fender” to describe your own services—fender repair in this case—and you’re not using it to confuse customers into thinking you’re making and selling musical instruments.

But there’s a second type of fair use in the trademark world, known as nominative fair use. This type of fair use is very similar to the type of fair use we see with copyrights. In essence, nominative fair use means you can use another company’s trademark for things like parody, news reporting, commentary, and comparative advertising. However, here is where the grey areas of the law start to appear. Something about all of this being based on case law instead of statute that tends to cause a lot of grey areas. There’s a variety of tests for determining whether something is nominative fair use or whether it’s just plain trademark infringement. Here’s a few:

  1. Is the product or service being advertised/commented on/parodied not readily identifiable without using the trademark?
  2. How much of the trademark is being used? More than necessary?
  3. Is the use of the trademark suggesting some kind of endorsement or sponsorship by the trademark owner? Disclaimers used to show no affiliation?
  4. Is the mark being used in a misleading way?

It seems that one of the common ways a lot of businesses try to get around the trademark infringement argument is to just slap a disclaimer on the use that specifies there’s no relationship between the user and the trademark owner. However, while that may score a couple of extra points towards the nominative fair use, it’s often still not enough. Especially when we all really know that nobody reads disclaimers, terms of use, privacy policies, or any of that other boring stuff on a website.

So let’s take an example from real life. A few years ago, Tiffany, the jewelry maker, sued eBay, the online auction site, for (vicarious) trademark infringement. They claimed that because sellers on eBay were selling counterfeit Tiffany items and that eBay was advertising sellers were selling Tiffany items meant that eBay was liable for trademark infringement. The court in the case ruled eBay’s use was protected as a nominative fair use. Why? Because eBay was merely describing that there were Tiffany products available on their website, nothing suggested that eBay and Tiffany were affiliated (as if they were in an authorized distributorship arrangement), and eBay did not know in advance which items being listed were counterfeit. eBay, it should be mentioned, also seems to take a number of steps to remove any counterfeit items from its listings. As a result, eBay was found not liable for trademark infringement. Here’s the case citation if you’re interested: 600 F.3d 93 (2d Cir. 2010).

Oh, and before you decide to use another’s trademark on your website or in your advertisements, be sure to run it by your trademark attorney first. At least you can use the argument (if you get sued) that the trademark infringement wasn’t willful.

Norton Law Corporation Trademark Attorney Trademark Available

How to Find Out if a Trademark is Available

One of the most common questions I’m asked about trademarks is how to find out if a trademark is available. Unfortunately, it’s a question I’m often asked too late in the process and not before my clients begin using their marks with their brands. Usually the client is already using the mark and they’re just now going to register it. But every so often, I’ll get a call from an enlightened client (who must have been reading one of my blog posts) about trademark availability before they actually start using the mark.

So the process for determining whether a trademark is available is a fairly straightforward one. All you need is a trademark search or two. Simple enough, right?

Not so fast. Trademark searches can be tedious. If you’ve never seen the interface for the United States Patent and Trademark Office’s (USPTO) trademark search, known as TESS, you should take a look and then come back here. It’s nothing like Google and daunting is a good word to describe it. Issues with design and functionality aside, TESS is a good starting point for people looking to see if their trademarks are available for use.

Let’s do an example search for something interesting. Say you’re interested in wristwatches and you want to develop your own brand. You’re about to launch a new Kickstarter campaign to help you crowdfund your venture, which you’re going to call OhhMega, but before you do you realize you’d better see if any other watch makers are currently using the same mark as you. So you start with a Google search to determine if anyone’s already using that word. Nope, just some kid on Twitter who hasn’t posted for about four years now. Then, because you’ve read other posts on the importance of trademark searching, you head over to TESS to do a quick search for an exact match of your brand’s name. We trademark attorneys call these kinds of exact match searches “knockout searches.”

You don’t have a logo yet, so you select the option for a Basic Word Mark Search for new users since you don’t know anything about how to use operators in the search or anything like that. You just want to find out if OhhMega is currently registered. A few keystrokes later, and you see that TESS returned no results. Not surprising since OhhMega is a really weird way to spell omega. Congratulations, your very basic search is complete.

But as any good watch enthusiast knows, there is a watch brand out there called Omega. They’re very famous, have some impeccable designs, and have been around in one form or another for about a century—but I digress. In fact, they have a rather old trademark, Registration Number 0025036, dating back to 1894, along with a slew of other marks registered for their specific models and changes to the look of their logo. As you can see from our example above, your knockout search would not have been able to discover even such a well known, famous mark. And that’s why you need more than just a knockout search to determine if your trademark is available.

Now, as a trademark attorney, I’m apt to tell you to that you really need to hire a trademark professional to conduct this search for you. And even if I wasn’t a trademark attorney, I would still tell you the same thing. The truth is that trademark searches are incredibly important, and can mean the difference not just between getting your trademark registered or not, but the difference between finding yourself faced with a demand letter to rebrand your business or face a very costly trademark infringement suit. That’s why a proper trademark search to determine the availability of your mark includes not just a knockout search through TESS, but a full-on trademark search through TESS, a search through the state trademark databases, a search through the World Intellectual Property Organization’s database of international trademarks, and a search through common law trademarks (those trademarks that are used by local businesses, online or whatnot, but are not registered with any governmental organizations—and yes, they may still have rights even though they never bothered to register their marks). And for all of those searches, you’ll need to conduct it using other phonetically similar searches, which, in the case of the OhhMega watch company, would mean searching for Omega since they sound the same even though they’re spelled differently.

So as you can see from our little example, a knockout search is not enough. A quick googling (yes, I’m helping to perpetuate genericide on Google’s trademark) is not enough. A comprehensive clearance search is what you need if you’re serious about your brand and you want to make sure your trademark is available before you begin using it. Ultimately, the few hundred dollars you spend now on a trademark search conducted by a professional is well worth it when compared to the possibility of facing hundreds of thousands of dollars in liability for trademark infringement or tens of thousands to millions of dollars in rebranding.

However, one thing a trademark search cannot tell you is whether you should go ahead and register your trademark if there is a problem with the search. Maybe the search came up with a result that’s very similar to yours but is currently being used in a completely different market. For example, you’re selling telephones and the current user is making mattresses. Or maybe the search found something that looks like it’s not being used but is still a live mark with the USPTO. When these kinds of issues arise, it’s time to sit down for a nice chat with your trademark attorney for a discussion on how to proceed, as the answer to whether you’ll be able to register your trademark at that point will depend on a mix of sound legal advice and savvy business judgment.

Why You Need to Record Your Trademark With US Customs and Border Protection (CBP)

At the risk of sounding sensationalist, if you run a business with products that are easily counterfeited, you need to record your registered trademark with the US  Customs and Border Protection (CBP), lest you suddenly find your business is being drowned out by fakes, copies, and products that, while looking similar to yours, do not carry the same quality and pedigree that your company’s goods do. Oh, and you also do not make any money off of them because the counterfeiters are instead.

You’re probably asking yourself why you’ve never heard of the CBP trademark registry. Simply enough, it’s because the CBP registry is not very well known. If you’re a service provider, you probably don’t need to know about it—and you can stop reading this article at around 100 words in—but if you’re in the business of making a product, especially consumer focused products, the CBP database can actually be of incredible import. But first, a few facts about the CBP trademark registry. It was set up as a way for the CBP to record the trademarks and copyrights of intellectual property owners who were concerned about counterfeit goods flowing through America’s borders. When your trademark or copyright is recorded with the CBP, they start looking out for those goods as they come in through Canada and Mexico, as well as across the Pacific and Atlantic. Once they find counterfeit items, they can exercise a number of actions, including seizure, destruction, and monetary sanctions—but more on those later.

So, you’re selling goods, say, high end watches in the $5,000 to $15,000 range. You’ve spent a lot of time and effort developing the movements, the unique design, the branding, and the overall image for the type of lifestyle you’re selling. You’ve partnered with an excellent trademark attorney from the very beginning to help you develop your brand cohesively, and you’ve registered your trademarks for the company name, any of the unique names of the individual watches, any logos, and maybe even the trade dress for your uniquely designed watches themselves. At this point, you’ve already completed the first step in recording your trademark with the CBP—registering your trademark. You see, the CBP has to go through a lot of different products when they cross the border, and while it would be great for them to be able to check all of them for trademark violations, they have to cap it somewhere or the manpower necessary would be prohibitive. As a result, in order to record your trademark or copyright with the CBP, you need to make sure it is validly registered with the United States Patent and Trademark Office (USPTO). That’s your first step: trademark registration. Or, if you’re interested in protecting your copyrights with help from the CBP, you need to make sure that you register your copyrights with the US Copyright Office.

Benefits of Recording with the CBP

Now that you know the first step for recording your trademark with the CBP, let’s discuss some of the perks of doing so. There are four major benefits:

  1. The CBP will be able to monitor and seize any merchandise with any counterfeit marks that are similar or identical to the trademarks you have recorded with them.
  2. The CBP will be able to issue monetary fines/sanctions against anyone or any business who tries to bring counterfeit goods with your trademarks into the United States.
  3. The CBP will be able to contact the US Attorney’s Office in order to initiate criminal prosecution of counterfeiters.
  4. The CBP will be able to raid counterfeit production facilities both nationally and internationally depending on the scale of the counterfeiting operation.

If you’re faced with an influx of counterfeit goods steering sales away from your own products or you are afraid that as your brand grows, you’ll have problems curtailing counterfeiters later on, these are some very powerful weapons the CBP provides trademark and copyright holders. Effectively, by recording your trademark with the CBP, you can not only shut down the local importers and merchants who sell your goods in shady back alleys and low end swap meets, but you can even stop the flow of goods entering the United States or prevent them from being manufactured at all.

What is the Enforcement Process Like?

The enforcement process for trademarks and copyrights registered with the CBP is very simple. Once you have recorded your trademark or copyright with the CBP, they will contact the intellectual property owner (or the law firm you’ve listed as your attorney of record) to provide them with all of the necessary information regarding a seizure. Essentially, they will give you a description of the merchandise, the quantity of the items they’ve seized, who has been manufacturing these items, and who has been importing them into the United States. The CBP may, in some situations, even provide you with with a sample of the infringing counterfeit merchandise so that you can go after the manufacturers and importers with a civil case for trademark or copyright infringement, if you so choose. As you can see, the process is generally very simple with the CBP only contacting you (or your attorney) when they’ve detected a suspected counterfeiter.

How Much Does Recordation Cost?

Recordation with the CBP is very inexpensive—but more than the very low fees charged by the US Copyright Office for registering a copyright. As of this writing, the fee is only $190 per copyright and $190 per mark per international class for a trademark (if you don’t know what that means, please contact me). The form is fairly straightforward and everything can be done online. To be perfectly honest, you don’t even need an attorney to do it. But if you’d like to hire me, I’m always happy to help at a very reasonable flat fee with discounts for clients who have hired my office to register their trademarks.

There is one thing to keep an eye out for, if you’re going to register with the CBP. Around the time you successfully register a trademark, many people are contacted by third party organizations claiming to be working for or related to the CBP or some other governmental organization. They always send letters. These letters look very official, often bearing some kind of official seal or something along those lines—they are not from any official organization. Instead, they are designed to trick new trademark owners into believing they are not taking advantage of all of their registration rights. As such, they charge often exorbitant fees for services that shouldn’t cost more than a few hundred dollars. I’ve seen examples of letters that charge as much as $1,500 to register a trademark on the CBP. Do not fall for these scams, and if you’re going to hire someone to assist you with recording your trademark or copyright with the CBP, use someone you trust.

Ultimately, recording with the CBP is a very valuable tool for trademark and copyright owners who are looking to protect their products from counterfeiters. It is a service offered by the government at a reasonable fee that provides many great perks to intellectual proper rights holders. If you need more information or you’re interested in pursuing a registered trademark, a registered copyright, or a recorded trademark or copyright, please don’t hesitate to contact me. And, if you’ve dealt with counterfeiters before (either with the help of the CBP or on your own in civil court), please leave your story in the comments below.

How to Defend Against a Trademark Opposition

Step one: Hire a trademark attorney. Step two: Relax and let them do the work for you. Most people don’t even know the TTAB exists. That’s the abbreviation for the Trademark Trial and Appeal Board, by the way.

All kidding aside, a trademark opposition is a big deal if you’re trying to register a trademark for a brand you’ve spent a lot of time building up into something great. Unfortunately, all it takes is one company, one person even, to oppose your trademark—leaving you feeling like you have no chance at getting that registration you’ve spent so much time (and money) on. And, to make matters worse, there are a lot of companies out there (I’m not going to name names, but they know who they are), who believe it is in their best interests (it’s not) to oppose every single mark that uses even the tiniest smidgen of their branding, regardless of the products or services that mark is being registered for. Regardless, the important thing to keep in mind with a trademark opposition, is that it all comes down to one simple question: Should the USPTO allow your trademark to register? The answer to that hinges on a variety of other questions, such as whether there is priority of use or likelihood of confusion, but that is the big question that needs to be answered.

But enough about how terrible you feel now that someone has decided to oppose your mark’s registration. It’s time to move on to what you actually need to do.  And if we’re being perfectly honest here, you really do need to hire a trademark attorney to defend against the opposition if you want to continue with the registration process. After all, they’ve done this before and they’re going to know how to best go about beating even the biggest multinational company who is threatening the registration of your trademark. However, before you go out and hire trademark counsel, you need to consider whether it is worth your while given your budget and how much you’ve invested in your mark.

Consider the Costs

For starters, you’re going to want to consider the following costs:

  • How much money have you spent on advertising where you’ve used the mark, and how long have you been using the mark? If you’ve spent a lot—certainly enough to establish your brand as a leader in your chosen market—or you have been using the mark for many years to the same effect, an opposition will probably be the right course of action, regardless of the price. If you’ve spent very little and you’ve been using the mark for a couple of years, have a talk with your trademark attorney (many offer free consultations) to discuss what the costs are going to be and what the likelihood of success is. If you haven’t begun using the mark yet, you should still talk to a trademark attorney, but most will probably tell you the same thing: just change the mark to something else and abandon your filing.
  • How much you have to spend to rebrand? Again, if you have a huge following for your brand, this may be expensive, and the cost of hiring trademark counsel to defend against an opposition may be less than having to inform your customers of the rebranding. Even more significantly, consider the non-customers who know your brand as it currently is, and how much confusion it may cause to change branding in their minds.
  • How broad will your rebranding have to be? If you just have to change one product and its associated website, the cost may be fairly insignificant. However, if you have to change your entire corporate identity, including your company’s websites, business cards, and letterhead, as well as your products’ packaging, labels, signs, and displays, you’re looking at a substantial cost.
  • How much will you have to spend on new trademark applications? Shameless self-promotion time: if you’re applying for trademark registration with Norton Law Corporation, our fees are only $395 per mark plus government fees. And we offer deals if you’re registering more than three marks at once.
  • And last but not least, how much will your attorney cost? There’s still a lot of attorneys out there who bill by the hour for trademark opposition work. However, I (and many other trademark attorneys) offer flat fees depending on the scope of our representation. You should also ask your attorney about whether they think accelerating the case is a possibility, as the TTAB provides what’s known as Accelerated Case Resolution (ACR) which greatly truncates the timetable for relatively straightforward cases while providing excellent cost savings. All parties have to agree to ACR, however, so keep in mind that what you and your attorney may hope happens may not necessarily be what the opposing party will agree to.

May the Odds be Ever in Your Favor

Once you’ve determined the cost of defending outweighs the cost of rebranding, your attorney will evaluate your case on the merits. Essentially, this means the attorney will review whether your mark should register and how to best structure the arguments necessary to win against your opposer. Of particular importance here, as I mentioned earlier in this post, is the likelihood of confusion aspect. After all, that’s generally the most common reason for oppositions—the opposer believes that your mark, were it to register, is too similar to their mark so as to confuse the public as to where the goods or services actually originated from.

Who is Your Opposer?

If you have a strong legal standing on the merits, it really doesn’t matter who your opposer is. Big company or small business, if the merits are in your favor, you stand a very good chance at winning. However, a good trademark attorney evaluates exactly who the opposer is, what seems to motivate them, and how best to solve the problem without forcing their client to spend huge amounts of money on the opposition. Major corporations dedicate a portion of their budgets to trademark monitoring and policing, and they’re primarily a results-driven group, hoping that your company will just kind of roll over and die on them so they can get an easy win. Of course, this also means that even though they have very large budgets to spend on trademark opposition and trademark policing in general, they’re really only going to want to tap into their resources if someone is directly in competition and obviously using a mark that will fairly obviously confuse the public or rides on the coattails of the brand they’ve worked hard to establish. So regardless of the opposing company’s size, settlement may be a possibility that could work in your benefit, allowing you to continue using your mark as you and been (and being able to register it for your chosen classes).

Cost-Benefit Analysis

Ultimately, the biggest question is whether the costs of defending against the trademark opposition are outweighed by the benefits of seeing that mark registered. It’s a case-by-case evaluation, and worth a chat with a friendly trademark attorney.

I’ve Just Received a USPTO Office Action! What Should I Do?

An Office action can be a scary thing for a would-be trademark owner. You think the registration process is going along fine when all of a sudden, you get this letter from the USPTO, the United States Patent and Trademark Office. Inside, much to your dismay, is not a registration certificate for your trademark, but a letter detailing exactly why the USPTO has refused to register your mark.

Before we get into any information about Office actions, a few words about this post. This is designed as an incredibly basic overview of what a USPTO Office action is, what you should do if you receive one, and the deadline for response. The details of the two types of Office actions—procedural and technical—are reserved for another post, as are what you should do if the USPTO’s examining attorney denies your application even after you feel you’ve responded to the Office action with sufficiency. Here, we’re just going over the very basics of an Office action and what you need to do about it in very general terms.

So what exactly is a USPTO Office action? Well, it is essentially a letter that outlines the procedural or technical shortcomings that have prevented the USPTO from continuing with the registration process for you trademark. These can happen to anyone, regardless of whether you have hired a trademark attorney to help you with the registration process, or whether you’ve decided to go it alone and submit the application yourself. Sometimes, the deficiency in the application can be so minor that the examining attorney at the USPTO may just call you (or your attorney) to see if they can fix the problem over the phone. However, any type of major shortcoming in the application will warrant the USPTO actually sending you a letter Office action.

Now, if you receive an Office action, you need to keep in mind that you’re suddenly put on a very strict schedule for response. As with everything else with the USPTO, dates are of the utmost importance—first use in commerce, renewals, and of course, Office action response dates. As a result, you need to keep in mind that you have six months to respond to an Office action. If you take longer than the six month window to respond, your application will be deemed abandoned and you’ll have to start all over with the registration process—fees and all. While there is a two month grace period beyond the six month window, you really need to make sure you make it within the six month deadline, as that should be plenty of time to respond.

After you receive an Office action in the mail, and you’ve read this post, the only question that remains is whether you should try to respond to the USPTO Office action on your own, or enlist the help of a trademark attorney.

Image Courtesy: anieto2k

2 Simple Ways to Protect Your Trademarks

If you’ve looked at any other pages about trademarks on our site, you’ll know we say the same thing over and over again. Trademarks are perhaps the most important asset your business has. Yet time and time again we hear from business owners that just aren’t willing or aren’t able to keep up with protecting their trademarks from infringement or dilution. Hopefully this post will introduce those business owners to a couple of great ways to protect their trademarks without having to sacrifice their spare time—if they have any—or was their money needlessly.

Monitor Your Trademarks for Infringers and Diluters

Trademarks are susceptible to two major forms of attack from other businesses, and the general public. These are commonly known as infringement and dilution. The details of each are too broad for this post, but in general, infringement means the violation of your rights as a trademark holder and dilution means, well, the dilution or tarnishing of the trademarked brand. Nevertheless, you want to avoid both from happening to your mark.

But how do you stop trademark infringement and trademark dilution? Before you do anything, you’re going to have to find out where the attacks are coming from. And in order to find out who’s attacking your mark, you need to monitor what other similar businesses are doing. After all, in general, it will be these similar businesses who are most likely to start chiseling away at your trademark rights.

While the easiest way to monitor your trademark is to find a great trademark monitoring service, you can also watch your trademark yourself. The route you choose depends on whether your time or your money is more valuable.

In any event, if you decide you want to monitor your trademarks yourself, there are a few free tools available that can help you out. The first is the, widely regarded as very user unfriendly, trademark search through the United States Patent and Trademark Office (USPTO). TESS, as it is commonly known, allows you to search through the USPTO’s trademark registry with a variety of options. How often you choose to search is completely up to you, but the general recommendation is usually once a month.

The next tool at your disposal is to track social media and domain name registrations. See what people are talking about. Check out newly registered usernames that sound incredibly similar to your best-selling product. Should only take an hour. Or three. Or ten. Luckily, there is a tool out there that can help speed things up a bit. KnowEm, a social media and username search engine (with a very rudimentary trademark search function) can help you keep track of who is using what username on social networking sites as well as which domain names have been registered. This kind of information can go a long way to helping you sort out who may be trying to plunder your trademark.

Finally, we have the good old search engine search. Google, Bing, Yahoo, whatever your favorite search engine is, use it. Conduct a search every so often to make sure your mark isn’t turning up in places you don’t want it to. You can even use Google Alerts to notify you when new content with your trademark—or something highly similar to it—appears in Google’s search results.

Hire An Attorney Before You Send Out That Cease & Desist Letter

The cease and desist letter. Favorite document of all those who think they’ve found a trademark infringer. Sent to intimidate those who may be violating a business’s trademark into submission. But are they really all they’re cracked up to be?

Imagine this scenario. You think you’ve found an infringer. You’re absolutely livid that this guy is totally ripping off the name of your product you’ve worked years to perfect and spent hundreds of thousands of dollars to produce and market. So you decide to draft a cease and desist letter to tell this guy to put a stop to his actions. In your haste, you adopt a pugilistic tone in hopes of making him shake in his boots. You send it off, and a few weeks later you get a response from the guy’s attorney. He’s responded to your cease and desist letter with one of his own—except this time he’s telling you his client has a senior trademark and he wants you to stop selling your product and change its name to something that’s not infringing on his trademark.

Yeah. That’s not a situation you want to find yourself in. But it happens to some business owners. They think they’ve found an infringer. They send off the letter. And whoops, it turns out they were wrong and now they either have to stop selling their product or they decide to fight a long and expensive trademark infringement suit.

And it can all be so easily avoided in two easy ways. First, keep your cool and don’t send off a cease and desist letter to every person you think is infringing or diluting your trademark. Second, contact a trademark attorney if you think you’ve found someone negatively impacting your trademark rights. At the very least, a cool head and a second pair of (well trained) eyes can go a long way to make sure you don’t inadvertently get yourself into trouble by acting too hastily.

Image courtesy: Steve A Johnson