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Category archives for “Trademarks”

Trademark Letters of Protest: The Early Bird Gets the Worm

April 5th, 2012

Consumers don’t just buy products – they buy brands. Brand loyalty means that protecting ones trademarks is vital to a successful business. If a competitor registers a mark that is confusingly similar to one of your company’s registered marks, one clear way to challenge the registration is to wait until the mark is published for opposition and then file a Notice of Opposition with the United States Trademark Trial and Appeal Board. But you can also jump into the fray earlier, before the mark is published for opposition, by sending a Letter of Protest to the United States Patent and Trademark Office (USPTO). The Letter of Protest is a request for the attorney reviewing the proposed mark to consider certain information, which must be provided with the Letter of Protest, when deciding whether the mark should move forward in the registration process or not. If the USPTO believes the evidence provided has merit, the evidence, but not the cover letter itself, will be provided to the reviewing attorney. Thus, it is important that a broad, factually accurate, and objectively persuasive set of evidence is provided. The Letter of Protest may raise any grounds for rejection that are available to the examining attorney. The most popular issues raised tend to be likelihood of confusion with a registered mark, descriptiveness of the proposed mark, and arguments that the proposed mark is generic.

While a Letter of Protest can be filed after a proposed mark is published for opposition, the deadline is thirty days after the proposed mark’s publication. Additionally, the standard of review for examining the evidence provided increases after the proposed mark is published. If a Letter of Protest is filed prior to publication of the proposed mark, the USPTO reviews the evidence to see if it is relevant and supports a reasonable ground for denying registration of the proposed mark. But a Letter of Protest submitted after publication of the proposed mark will be reviewed to see if the evidence supports a prima facie case for refusal, meaning a case for refusal that is self-evident. This standard of review is much higher and more difficult to meet. Thus, if you are going to file a Letter of Protest, it is important to do so early in the examination process. The attorneys at Strike & Techel have filed successful Letters of Protest on behalf of clients before. Please feel free to contact one of our attorneys if you are interested in such a filing or need other trademark assistance.

Trademark Scams: Don’t Trust Unknown Correspondence

February 29th, 2012

Protecting your trademark is a key part of your business. And scam artists know that. Because trademark filings are public information, the United States Patent and Trademark Office (“USPTO”) databases and the Official Gazette, which is published weekly by the USPTO, are often mined by hucksters looking to earn a quick buck. Scams include requesting payment to be added to an alternate unofficial trademark registry or to secure foreign domain name rights, e.g. trademark.cn. The communications are often marketed with graphics like the American flag and variations on the USPTO name, such as USTRO or USTPA. Fraudulent companies often send frenetic correspondence regarding the need to renew a mark or face abandonment months before actual renewals become due, and hence months before valid correspondence from your law firm handling the trademark application would be received. If you receive any such correspondence, please read it carefully and contact the attorney handling your trademark affairs to avoid being fleeced by such frauds. Additional information from the USPTO about such scams is available here.

Barry Strike Quoted in ABA Journal on Trademark Issues

August 9th, 2011

Partner Barry Strike, who handles numerous trademark issues for clients in the alcoholic beverage industry, was quoted in the ABA Journal’s article on the popular beer Collaboration Not Litigation. Click here to read the full article. If you have alcoholic beverage trademark questions, please feel free to contact Barry Strike at barry@strikeandtechel.com.

Bottle Design: Trademark versus Patent?

July 19th, 2011

Distinctiveness: It’s a core product feature. After putting in the time and money it takes to make your product distinguishable in the marketplace, how do you protect that investment? Alcoholic beverage producers are likely familiar with the concept of trademarks, which are used to identify products and protect consumers from being confused about the source of goods or services. Trademark rights exist for as long as the marks are used in commerce. They do not have to be registered with the United States Patent and Trademark Office, but registration is highly advisable to provide notice to others interested in the mark that it is already being used in commerce. Trademark laws also protect “trade dress,” meaning features of a product or a product’s packaging that are distinctive and not required for functionality, but rather are used to identify the product in the marketplace as being made by a certain producer. For example the color green in a stop light is functional and could not be protected by trade dress, while the color green used on a product bottle may be protectable under trademark law.

Patents, on the other hand, must be registered in order to secure protection in the market, and the protection exists for a certain time period even if the item or design registered is not used in commerce. A design patent protects the ornamental design for a functional item—such as a unique bottle design that is not explicitly tied to the overall functionality of the item. Depending on the uniqueness and importance of the bottle design, it may be worth the time and capital required to fully prosecute a design patent. Obtaining a design patent requires proof that the design is (a) novel, (b) useful, and (c) not obvious. While the shapes, sizes, and colors that are used to create an association in consumers’ minds between a product itself and the product’s manufacturer may be protectable as trade dress, they may also be protectable, for a limited period of time, by a design patent. For example, the distinctive curved bottle for Coca-Cola was once covered by a design patent. The design patent expired; however, the bottle is still protected under trademark law as trade dress. The process for prosecuting a patent is lengthy and often costly, but if a bottle design is a key product element, it might be worth investigating.