When you are starting a business, it can be overwhelming trying to keep track of everything that you have to do to protect your business and operate legally. From incorporating and getting a business license to make the best tax election and properly protect your intellectual property, it can be hard to determine what is really necessary and prioritize your business’s most urgent needs. One thing that you have likely heard about is trademark protection. And you may wonder when is the best time to get a trademark? Do you need a trademark? Or do you really need copyrights? Do venture capital (VC) firms care about trademarks?  

In this post, we will explore what a trademark is and whether you may benefit from having one. If you have specific questions about your brand or business it is always a good idea to consult with an attorney directly. 

What is a Trademark?

A Trademark provides legal protection for anything that identifies your brand. This may be a word, name, or design, such as a logo. Anything that can be used to identify your brand to consumers can be protected by a trademark. Trademark law recognizes the importance of brand loyalty and the hard work that goes into building a brand. Many people and other companies can take advantage of the goodwill and brand recognition that you have built by copying or closely replicating their products, services, or advertising materials to look like yours, in hopes of tricking consumers. Trademark law exists to keep that from happening. It is important to note that trademarks do not apply to words, art, images, designs, or names that are not connected with a commercial brand. If you are looking to protect a visual or written work, you will benefit from copyright protection as opposed to trademark protection. 

Do I Need a Trademark?

If you have a brand, it is generally advisable to have Trademark protection for it. This protection can apply to products, services, or even your logo. A great amount of time, money, and effort goes into building a brand, so it is fiscally responsible to invest in Trademark protection to ensure that your investment is secure and that other people cannot profit off of your hard work without consequence. If you have plans to start a business or launch a product but have not yet released it into the stream of commerce, you can file an Intent-to-Use Trademark Application which will give you a year from the date of the application to begin selling it. If you have no plans to build a brand or business you will not likely benefit from a trademark, however, there may be other forms of legal protection available that would benefit your venture. The best way to determine what legal protection you need to support your business is to consult with an attorney who can get a sense of what you are trying to accomplish overall and how intellectual property law can support your goals. 

Contact the Carbon Law Group

If you have a small business, brand, or are launching a new product or service, it is important to protect your new venture. Intellectual property is the backbone of most businesses, and few people know where to start when it comes to protecting it. The experienced intellectual property attorneys at the Carbon Law Group are ready to help. Contact the Carbon Law Group today to schedule a free consultation and find out how we can support you and your business. 

The metaverse refers to an immersive digital world where users can interact with different spaces, people, and things using digital avatars. It creates virtual settings that mimic the real world where people can deal with, wear, and touch branded goods and services. In this setting, would the use of a trademark infringe the rights of the trademark owner for those equivalent goods or services in the real world? The question is yet to be answered by the courts, but definitely an important one for trademark owners to consider. Also, as the NFT (“Non-Fungible Token”) industry, which involves digital assets that can be used across different metaverse spaces, continues to flourish, should trademark owners start expanding their trademark filings to secure their trademark rights and presences in the metaverse?

Merriam Webster defines an NFT as a unique digital identifier that cannot be copied, substituted, or subdivided that is recorded in a blockchain and that is used to certify authenticity and ownership. In other words, an NFT is the digital version of a certificate of authenticity, embodied in the blockchain. A trademark can be “any word, phrase, symbol, design, or a combination of these things” that identifies and distinguishes the source of goods or services from competitors in the marketplace. Federal trademark law provides many protections for trademark owners, including the ability to sue for infringement where third-parties use their trademarks in ways that will likely confuse consumers about the source of the goods or services. Therefore, trademark laws protect brand owners, including brands that do businesses in the metaverse and businesses that sell NFTs, who can be protected by their registered trademarks when someone else uses the same or similar name or logo.

Although to most people the metaverse and NFT still represent mysterious new arenas of potential opportunities, there have certainly been signs of the momentum of their rising popularity. Therefore, trademark owners must be mindful of the potential for infringers, many anonymous and foreign-based, to prey on their trademark rights in the metaverse or using NFTs. 

Lately, there has been a trend of blockchain and NFT-related trademark filings by large global companies. For brand owners, particularly those well-known in consumer goods markets around the world, it seems wise to consider securing trademarks in the metaverse space to get their foot in the door, and as a powerful defensive strategy to combat infringers in the metaverse, especially in first-to-file jurisdictions where trademark squatting is prevalent and it is critical to file early. 

For example, Nike Inc. applied for a suite of new trademark applications in the US for some of its most well-known marks including NIKE, Just Do It, and the AIR JORDAN logo, covering various goods and services in classes 9 and 42, including downloadable virtual goods in class 9 and retail store services featuring virtual goods in class 42. Crocs, Inc. applied for a trademark in classes 9 for downloadable digital media, namely, digital assets, digital collectibles, digital tokens, and non-fungible tokens (NFTs); class 35 for retail store services and online retail services featuring virtual goods…provision of an online marketplace and registry for buyers and sellers of digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs); class 41for entertainment and amusement, namely, provision of online non-downloadable virtual goods for use in virtual environments; and class 42 Providing temporary use of non-downloadable digital media, namely, digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs). NBA Properties, Inc., applied for registration of NBA TOP SHOT for “Downloadable virtual goods, namely, computer programs for the creation and trade of digital collectibles using blockchain-based software technology and smart contracts, featuring players, games, records, statistics, information, photos, images, game footage, highlights, and experiences in the field of basketball.” Opensea, which calls itself “The largest NFT marketplace” filed for trademark registrations in Class 35 for services including “providing an online marketplace for buyers and sellers of crypto collectibles” and in Class 42 for services including “creation of online retail stores for others in the nature of web-based service that allows users to create hosted crypto collectible and blockchain-based non-fungible token stores.” 

As the examples above demonstrated, many businesses have existing trademark registrations for their goods and services, but trademarks specific to the metaverse and NFTs may be getting more and more important now. The United States Patent and Trademark Office (the “USPTO”, as well as other trademark offices around the world) places goods and services into different “classes” under which the trademarks are classified.  Most of these goods and services in “traditional” classes do not cover digital goods and services in the metaverse or NFTs (which the USPTO classifies in classes 9 and 41, amongst others). As a result, it is important that businesses consider filing for relevant trademark applications for their goods/services in the appropriate classes to receive the desirable scope of protection.

It can be argued that existing trademark registrations for physical goods or services may cover the digital goods or services in the metaverse, but there are currently no statutory laws or case law that can confirm such argument yet. There are some newly filed cases, like the lawsuit that Nike filed against StockX’s NFT collection “Vault” that contains Nike’s trademark, and the complaint Hermes filed against Mason Rothschild for its NFT collection “MetaBirkin,” but these cases have not yet been adjudicated by courts. Thus, if your company is thinking of expanding your business into the metaverse or NFTs, it would be worthwhile to consider filing for relevant trademarks in order to be protected against infringement in these new arenas.

Lastly, a word of caution for any trademark owner thinking about expanding their business into the metaverse and NFT industries, be cautious when using any third-party trademarks or copyrighted work in an NFT (be careful when your logo was created by an independent contractor!). If any third-party’s brand name, logo, copyrighted work, or product is used in connection with creating an NFT, written permission (proper license) from the owner must first be obtained, or else you risk putting yourself in legal hot water. 

 

As social media continues to grow and become a part of our daily lives, businesses have taken note and begun using influencer marketing as a valuable tool to reach their target market. An influencer’s personal brand is what makes them unique and stands out from every other social media profile. A brand is an influencer’s voice that allows them to express themselves and connect with their audience. For influencers working on expanding their brand and audience, it is essential to take the proper precautions to protect themselves and their social media profiles.

Growing Your Brand

When influencers are considering developing their brand, they must also consider the audience that will follow them. Potential followers are looking for influencers with whom they have shared values/interests, they identify with or are inspired by, and most importantly, a person who is their authentic self. Influencers that have grown the largest followings online have been able to capitalize on these three factors. 

Part of what makes an influencer’s brand so valuable is their engagement with their audience. When an audience is invested and connects with an influencer personally, they are more likely to engage with their content, brand endorsements, etc. Social media continues to evolve and give users new and creative ways to interact with one another and build a personal connection. In particular, Question and Answer sessions where followers send in questions and the influencer answers are an excellent way for followers to learn more about them and establish a stronger connection. Additionally, vlogging a typical “Day in the Life” and “How to” videos are other great ways for an audience to feel like they are part of an influencer’s daily life and build a genuine connection that extends beyond the app.

Lastly, using your social media account as a self-promotion tool to promote your accounts on other social media platforms is another great way to build your following. Major social media platforms such as Instagram, Twitter, and TikTok all fill a unique role in the social media market and allow audiences to be engaged in different ways. Using each platform as a tool for personal brand promotion encourages followers to be active with the influencer on all social media and results in steadier audience growth.

Collaborating with Brands

Influencer marketing has quickly become a useful tool for companies looking to directly impact consumers through a voice they trust. Brands are ultimately looking for influencers that will increase business and drive traffic to their social media profiles. In exchange, an influencer could receive the product, payment, and increased exposure by being featured on the brand’s profiles. 

An influencer’s audience and the content that they post often go hand in hand. When brands are looking for a potential influencer partnership, they will consider whether an influencer’s content, audience, and values reflect their own. This is necessary for brands to consider because when an influencer is working with a brand, they are now acting as a representation of that brand itself.

Another aspect that brands consider when choosing an influencer to partner with is their brand engagement. As discussed, engagement can come in many forms, such as likes, shares, comments, etc. Brands actively seek out influencers that have high engagement levels, regardless of the size of their following. The reasoning for this is because it shows that the influencer’s audience is actively showing interest in their content instead of scrolling to the next post on their timeline. If an influencer has an engaged audience, they are more likely to take the time to learn more about the product/brand that the influencer is endorsing.

Protecting Your Brand

Influencers can protect their brand in a variety of ways. As one continues to build their brand and audience, there is a growing need to protect their hard work. By filing a trademark, influencers can proactively protect their name and likeness from other social media users or companies looking to take advantage of an influencer’s brand without their permission. It is important to note that there is no minimum followers requirement for an influencer’s trademark to be filed. When an influencer files a trademark to protect their brand, they must be doing so because they are seeking to use their name in commerce for goods or services. When doing so, it is crucial that the influencer’s social media handles match those that are in the trademark filing.

As influencer marketing has continued to grow and be used as an asset for businesses to grow their revenue, the Free Trade Commission (FTC) has stepped in to set up new regulations that protect consumers from having their purchasing decisions unfairly influenced. The FTC  is now requiring influencers to give a disclosure any time they are endorsing a product. The disclosure can be expressed in a variety of ways, but it must be done in clear and straightforward language that will be easily understood by an influencer’s audience. The most common way is to include terms such as “advertisement,” “sponsored,” or “ad” into the caption of their post. Additionally, it is highly encouraged to utilize hashtags such as #ad or #sponsored at the end of their message to ensure that their post is in connection with another brand.

To stay up to date with FTC regulations for influencers, please visit. ftc.gov/influencers

This post is the part II of our last blog post “4 Secrets to Building Your Best Brand (Part I).”

In addition to start using your trademark as early as possible to obtain important trademark rights and start selling goods or services across state lines with your trademark to allow it to be regulated by the Trademark Act, here are two more secrets to help you build your best brand!

  • DON’T INFRINGE ON OTHERS’ MARKS

Trademark Infringement means a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees.

For example, situations like these:

When evaluating whether two trademarks are confusingly similar, courts in the U.S. actually look at between nine to thirteen different factors to determine whether there is confusion that will cause trademark infringement. So when lawyers create trademark search reports, we look at those different elements and provide an analysis to prevent our clients from infringing others’ marks.

The two most important factors of this analysis are the following:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
  • The relatedness of the goods or services.

The greater the similarity between marks, the less related the goods or services have to be in order to support a finding of likelihood of confusion. Therefore, if two marks are identical or virtually identical, the respective goods or services need not be as close to finding a likelihood of confusion.

 Other factors of this analysis include: 

  • The similarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
  • The number and nature of similar marks in use on similar goods 
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark  
  • The fame of the prior mark
  • Nature and extent of any actual confusion
  • Concurrent use without evidence of actual confusion: length of time and conditions

Before you apply to register your trademark with the USPTO, you should search the USPTO’s trademark database – Trademark Electronic Search System (TESS) to see if any trademark has already been registered or applied for that is: similar to your trademark, used on related products or for related services, and live.

  • BE THE OWNER OF YOUR MARK

Copyrights are generally owned by the person who created the works of expression. Therefore, if you are not the creator of your trademark you may not be the actual owner of the mark!

If you are not the actual creator of a creative work, then the only way that you can acquire exclusive rights to the work is by having a signed and legally sufficient writing transferring some or all of those rights exclusively to you or your business. If the creative work is created by an employee in the course of his or her employment, the employer owns the copyright. If it is your independent contractor that created the work, then it depends on whether the independent contractor signed a written agreement stating that the work shall be “made for hire,” or enter into an assignment agreement with you.

It is important to note that, under California law, including a work made for hire clause in an independent contractor agreement with an individual will cause the California-based independent contractor to be considered a “statutory employee” under California’s workers’ compensation, unemployment insurance, and disability insurance laws.

Therefore, when you are creating your trademark, make sure you are the exclusive owner of your mark/logo when you hire an independent contractor to create it, by using work for hire agreement or a copyright assignment agreement and don’t forget to address potential worker classification issues!

If you need help with registering a new trademark with the USPTO, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to have a free initial consultation. 

“…branding is the process of attaching an idea to some object, or to a service or organization.”

– Rob Walker

Trademarks are the legal expression of brands. Trademarks are generally words, phrases, logos, and symbols used by producers to identify their goods. However, shapes, sounds, fragrances, and colors may also be registered as trademarks.

Here are four trademark secrets to help you build your best brand: 

  • BE THE FIRST TO USE IT 

Unlike China and European Union countries, United States follows the first-to-use trademark system, under which marks that are actually used in commerce first are assigned trademark rights and given priority in their territory of use. Under first-to-use trademark regimes, being the first to apply for trademark registration does not guarantee priority to the Applicant. Thus, in the U.S., prior use of a mark as a trade name, prior use analogous to trademark or service mark use, can establish proprietary rights.

These proprietary rights are based on common law. A trademark can be established solely through use in commerce in a specific geographical area. Business names, logos, and phrases that are regularly used–even though they have never been federally registered–can all be considered common law trademarks in the U.S. Therefore, the Trademark Act allows for cancellation of Principal Register registrations based on prior use of a confusingly similar mark, by one who “believes that he is or will be damaged by the registration.”  The petitioner of such cancellation only needs to use their mark in some way that creates an association in the minds of consumers between the mark and the petitioner’s goods, which is a lower standard than the “use in commerce” standard required for trademark registration.

Therefore, an important secret to building your best brand is to start using your trademark as early as possible, because prior users are afforded important rights under U.S. trademark law – including common law trademark rights and the priority to cancel a federal trademark registration.

  • SELL ACROSS STATE-LINES

The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S. Congress. Article 1, Section 8, Clause 3 of the U.S. Constitution is what is often referred to as the Commerce Clause, which gives Congress the power “to regulate commerce with foreign nations, and among the several states, and with the Indian tribes.  The importance of selling across state-line is thus created by this need to ensure a trademark registration is within the scope of federal trademark jurisdiction.

The USPTO requires a proper filing basis for all federal trademark registrations. The trademark applicant’s mark must already be used in commerce or registered with a bona fide intent to use the mark in commerce. Intent to use means that you haven’t started using your trademark in interstate commerce, but you have a bona fide intent to do so within the next three to four years. Although you can apply to register your trademark with an intent-to-use basis, you cannot actually register your trademark until you show that you’ve started using it in commerce and you file the proper TEAS form and pay the required additional filing fees. When registering your trademark with the USPTO, you’ll need to provide evidence that you’re using it in commerce. You’ll need to submit a specimen showing how you use your trademark. 

Therefore, another secret to building your best brand that is protected nationally under the federal trademark law is to start selling across state lines and prepare the proper specimens to serve as evidence of your trademark use in interstate commerce. If you are using your trademark in conjunction with the sale of physical items, you may place the trademark directly on the product or on the product’s packaging, displays, tags or labels, etc. Or the trademark must be used on documents associated with the goods in connection with its sale, such as an invoice. On the other hand, if you are using the trademark in conjunction with offering specific services, the trademark must be used in a sufficiently obvious way with the marketing materials (website, pamphlet, ads…) of the services.

Submitting specimens that will be accepted by the USPTO is not as straightforward a task as it sounds. There are many rules that the specimen must comply to.  For example, it is important to note that advertising material is an acceptable specimen only for services, but not for goods. Moreover, any webpage specimens must include the URL and the date the page was accessed or printed, otherwise, the specimen will be rejected by the USPTO. Additionally, a specimen that shows a trademark used in a purely ornamental or decorative manner is likely not an acceptable specimen. For example, a slogan or logo emblazoned across the front of a t-shirt, hat, or tote bag would not be acceptable because consumers would likely perceive the slogan or logo as merely an ornamental or decorative element rather than as a trademark indicating the source of the shirts, hat, or tote bag. However, consumers may perceive a small word or design on such goods, like a small discrete animal logo on a shirt front pocket, as a trademark.

 

[To be continued in Part II]

 

 

The Trademark Modernization of 2020 (“TMA”) was signed into law on December 27, 2020, as part of the COVID-19 relief and government funding bill. It will be fully implemented and take effect on December 27, 2021. TMA brought some remarkable changes to the United States Trademark Act of 1946, a.k.a. the Lanham Act, that will significantly affect brand owners in the U.S.

TMA Codifies Rules for the “Letters of Protest” Practice

There has been a long-standing yet not well-known practice of the USPTO, called the “letter of protest,” which allows third parties to submit evidence to the USPTO prior to registration, regarding a trademark’s registrability. Before the TMA, the USPTO did not have a formal process in place for submitting or reviewing these letters of protest, and it has resulted in the underutilization of this process. The TMA formalizes this letter of protest process for submitting evidence against pending third-party trademark applications by giving it statutory authority. The letter of protest submissions must identify each legal ground for an examining attorney to refuse registration or issue a requirement, include evidence that supports those grounds, and a concise description for each piece of supporting evidence. Following the passage of the TMA, the USPTO issued rules setting out the letter of protest procedures and a $50.00 fee for these submissions that went into effect on January 2, 2021. TMA requires the USPTO to act on submissions of letters of protest within two months of receipt. 

The codified letter of protest process under the TMA provides third-parties with a simpler and cheaper procedure compared to the traditional opposition procedure, which limits third parties believing that they may be damaged by the federal registration of a mark to file an opposition during a 30-day opposition period occurring just before registration of the mark in question and pay the expensive opposition filing fees (increased to $600.00 per class from $400.00 this year).

  • Takeaway: Any brand owner now may use this simpler and inexpensive formal process to attempt to intervene in a third-party application for a trademark that may conflict with your mark, or that you believe should otherwise be refused registration, by asking the USPTO to consider evidence that it may not otherwise have in the examination record. On the other hand, the letter of protest process may also be disadvantageous to some brand owners by making it more difficult to secure a trademark registration. To help make the most of this new process, brand owners should consider setting up trademark watch services that alert the brand owner to pending applications for marks that may conflict with the brand owner’s mark.

TMA Enables the USPTO to Shorten Office Action Response Deadlines to Anywhere Between 2 Months and 6 Months

In order to free the USPTO trademark register from numerous illegitimate trademark applications that are not actually used in the U.S. commerce, TMA gives the USPTO the authority to set office action response periods that are shorter than the current six-month response time, but not less than 60 days from the Office Action issuance date. If needed, the applicant may request to extend the shortened response deadline to up to six months.

  • Takeaway: Brand owners now must pay special attention to the actual response deadline upon receipt of an Office Action, as we may start seeing much shorter response periods than the six-month response deadline that we are used to.

TMA Creates New Ex Parte Expungement and Reexamination Proceedings as New Methods for Seeking Cancellation of a Third-party Trademark Registration

Before the passage of the TMA, the USPTO permits inter-parte Cancellation proceedings that are similar to court litigation against trademark registrations, which occur before the Trademark Trial and Appeal Board (TTAB). There are a number of grounds on which someone may petition to cancel a third-party registration, including the registration owner’s abandonment or lack of use of the registered mark in interstate commerce.  

TMA provides a new post-registration procedure for ex parte expungement of certain improperly granted registrations. Specifically, it allows anyone to petition the USPTO to expunge a registration, either in whole or in part, where there are specific goods or services listed in the registration for which the trademark has never been used in U.S. commerce. This new procedure must be brought between three to ten years after the registration date.

On the other hand, a reexamination proceeding may be initiated against a registration any time before the fifth year following the registration date for any registration based on use in commerce. The new trademark reexamination procedure provides a process for challenging registrations based upon a false, but not necessarily fraudulent, declaration of the mark’s use in association with the goods and services identified in the registration. When preparing a trademark application, applicants often include many (or all) of the goods and services that fall within the “class” of goods or services initially selected by the applicant. Trademark applicants often try to include as many goods and services as possible under the same class because their filing fee covers the registration of a mark under the entire class. However, this practice violates the spirit of the law, which requires actual use of the mark in association with each good or service identified in the registration. To rectify the proliferation of overzealous registrations resulting from this practice, TMA’s reexamination procedure allows for the cancellation from the registration, each good or service with which the mark was not being used as of the filing date of the mark’s declaration of use.

For both the Ex Parte Expungement and Reexamination proceedings, the USPTO’s decision to cancel a registration is appealable, and these proceedings may be initiated against registrations that registered before or after enactment of the TMA.

  • Takeaway: It is critical for brand owners to make sure that they actually provide all the goods and services listed in their trademark registrations, or be exposed to the risk of losing part or all of their registrations for lack of use in commerce.

TMA Restores the Rebuttable Presumption of Irreparable Harm for Plaintiffs Seeking Injunctive Relief in Trademark Infringement Cases.

Before TMA, in order for a trademark infringement plaintiff to obtain a court-ordered injunction against a defendant to stop the defendant from continuing to use the disputed mark, the plaintiff must prove several elements, including that the plaintiff will be irreparably harmed without the injunction. In recent years, the federal circuit courts in the United States have been split on whether the irreparable harm element should be presumed in trademark infringement cases where the court has found either infringement (for a permanent injunction) or that the plaintiff is likely to be successful on the merits of its infringement claim (for a preliminary injunction).

The TMA resolves the circuit split by codifying into law that trademark infringement plaintiffs shall be entitled to a rebuttable presumption of irreparable harm without the injunction upon a finding of trademark infringement or likelihood of success on the merits, depending on whether the plaintiff is seeking a permanent or preliminary injunction.

  • Takeaway: Brand owners now have a reduced evidentiary burden for obtaining injunctive relief to protect their trademark rights. A brand owner who proves infringement will enjoy a favorable legal presumption that the harm caused by continued infringement will be irreparable.

If you need help with registering a new trademark with the USPTO, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to schedule a free initial consultation! 

The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, is the nation’s largest federal law enforcement agency that is charged with securing the nation’s borders and facilitating international travel and trade. It plays an underrated role in helping businesses enforce their intellectual property rights. Businesses may work with CBP to protect their intellectual property rights against counterfeiters. CBP has the authority to determine infringement of intellectual property rights at the US border and enforce intellectual property rights by excluding from entry, detaining, and seizing goods that infringe the business’s intellectual property rights such as trademarks, copyrights, and patents. How can CBP help with Intellectual property rights enforcement and fight against counterfeits? Intellectual property rights enforcement is complex and CBP relies on assistance from intellectual property rights owners to effectively carry out its enforcement authority. To obtain full CBP protection against the importation of goods bearing infringing trademarks, trademark owners should record their federally registered trademarks with CBP. Only trademarks registered on the USPTO’s Principal Register are eligible for CBP recordation. Common law trademarks and trademarks registered on the USPTO’s Supplemental Register cannot be recorded with CBP. It is important to record trademarks with CBP because CBP has no authority to prevent the importation of goods bearing a confusingly similar mark if the mark has not been recorded with the CBP. Therefore, even if the goods bear a mark that copies or simulates a mark registered with the USPTO, if the mark has not been recorded with CBP, the goods are not subject to detention or seizure. CBP and Counterfeits A counterfeit mark is a “spurious mark that is identical with, or substantially indistinguishable from,” a federally registered mark. CBP is obligated to seize and seek forfeiture of imported goods deemed to bear a “counterfeit” mark, whether or not the mark is recorded with CBP.  CBP has authority to seize goods bearing counterfeit marks because of the Tariff Act of 1930 and Federal Criminal Code, which provide for criminal penalties, including fines, against persons who intentionally traffic in counterfeit goods. CBP may impose a civil fine against any person who directs, assists financially or otherwise, or aids in the importation of goods bearing a counterfeit mark. Knowledge that the product is counterfeit is not required for civil liability. CBP also maintains the Intellectual Property Rights Search (IPRS) database, which contains information on recorded trademarks (as well as copyrights and trade names) and the IPRS database is available to the public. How can Intellectual Property Owners Effectively Work with the CBP  Here are a few steps intellectual property owners can take to increase the likelihood that CBP will discover and take action against infringements:
  1. Provide CBP with information regarding their trademarks and products (such as by making a product identification training guide and providing product identification training)
  2. Report suspected infringing imports to CBP
  3. Create and implement an intellectual property security plan
Navigating how you can work with the CBP to protect your company or product against counterfeits may seem daunting. It is always helpful to enlist the assistance of a professional intellectual property attorney. We are here to help you fully understand the benefits and details of working the the CBP to protect your intellectual property rights. Find out how Carbon Law Group can help you protect your intellectual property rights by scheduling a meeting with us using this link.  

Did you know that color, sound, scent, and hashtags can be protected by trademarks? 

Traditionally, trademarks are words or symbols used to identify the source of a product or service. Most trademarks are word marks such as COCA-COLA; or design marks/logos such as ; and slogans, such as Coca-Cola’s “It’s The Real Thing.”

However, the list of things that can be registered as trademarks under the Lanham Act is actually very broad. There are practically no limitations to the subject matter of registrable marks, so long as the mark is capable of acting as an identifier of source, whether because it is inherently distinctive, or it has acquired distinctiveness and the mark is not functional.

Here is a list of non-traditional trademarks: 

Color Mark

The registrability of a color mark depends on the manner in which the proposed color mark is used. Color takes on the characteristics of the object or surface to which it is applied, and the commercial impression of color will change accordingly. Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. 

Sound and Scent Mark 

A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definite shape or arrangement” and “create in the listener’s mind an association of the sound” with a good or service. Some famous sound trademarks include the iconic ticking of 60 Minutes’ stopwatch that CBS trademarked and the sound of a lightsaber, FYI, is described as “an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound.”

Some scents that are protected by trademarks include the scent of Play-Doh, which is described as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough;” and the “flowery musk scent” in verizon stores.

A trademark applicant that wishes to register a sound or a scent trademark is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter.  For these types of marks, the applicant must submit a detailed description of the mark.

Hashtag Mark

A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#”. Hashtags are often used on social networking sites to identify or facilitate a search for a keyword or topic of interest. 

As hashtags became increasingly more popular on social media, in 2013 the United States Patent and Trademark Office (USPTO) recognized hashtags as registrable trademarks “only if [the mark] functions as an identifier of the source of the applicant’s goods or services.” The addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Some examples of hashtag mark the USPTO has granted registration include: 

#EVERYDAYMADEWELL for “online retail store and retail store services in the fields of clothing, footwear, bags, sunglasses, jewelry, watches, and fashion accessories”

#HOWDOYOUKFC for “restaurant services

#THESELFIE for “photography and videography equipment, namely, remote shutter releases

Unique challenges applicants of non-traditional trademarks face

Federal registration of trademarks generally confers certain benefits to the trademark owner However, non-traditional trademarks face unique challenges that traditional trademarks don’t face in registering with the USPTO. Non-traditional trademarks can take longer and cost more to register and in addition to the distinctiveness and non-functionality hurdles, challenges exist in clearing the marks for registration due to the complexity involved in searching Non-traditional trademarks on TESS; fulfilling technical requirements for registration involved in providing the appropriate drawing and specimens for marks that are not easily depicted on paper; and the unique unpredictability due to a lack of successful precedents to provide guidance. Even if it is registered, a non-traditional trademark may be difficult to enforce. Furthermore, the inherent challenges in searching non-traditional marks make it hard to monitor infringement of the mark. 

If you need help with your non-traditional trademark, contact us today to discuss your trademark protection strategies with an experienced trademark practitioner.

When starting a company, your brand is of your most valuable assets. However, an often overlooked area of creating and launching a brand is trademark protection.

Entrepreneurs often wonder whether it is worth filing for a federal trademark. While you establish some rights the moment you start using a brand, there are significant advantages to registering your name, logo, or packaging design.

Here are nine advantages to filing for and obtaining federal trademark protection on the Principal Trademark Register:

  1. Prima facie evidence of validity and the registrant’s ownership of the mark.
  2. Constructive nationwide use of the mark.
  3. Federal court subject matter jurisdiction over infringement and other trademark claims without a showing of diversity or minimum amount in controversy.
  4. Statutory remedies for federal trademark infringement claims, including, under certain circumstances:
    • treble damages; and
    • recovery of attorneys’ fees and costs.
  5. Constructive notice of ownership, which eliminates the defenses of good faith use and innocent adoption.
  6. The right to use ® and other notices of federal registration.
  7. After five years the registration may, subject to limited exceptions, become incontestable and be deemed conclusive evidence of the owner’s exclusive rights to use the mark.
  8. A registration may be recorded with US Customs to stop the importation of infringing, counterfeit, and gray market goods.
  9. A registration may provide a basis for registering the mark in foreign countries.

Not all trademarks will qualify for the Principal Register. However, understanding your options and the best ways to register and protect your brand is a worthwhile investment. Contact us today to discuss your brand protection strategies with an experienced trademark practitioner.

Every year, about ten to eleven thousand trademark attorneys and service providers converge on a major city to network, exchange ideas, and review the previous years’ developments in the world of trademarks. It is an exciting time for a trademark practitioner.
 
I had the good fortune of attending this years’ INTA convention in Seattle, Washington. It was four days of shaking hands, meeting new colleagues, and enjoying the several social events taking place each evening. I must say, of the various specialties in law, trademark lawyers know how to have a good time.
 
Every INTA is different for a variety of reasons. The location makes a huge impact on how you will attend the event. This year, given the conference was on the same coast as me, I had little reason not to attend. In the past, I have made it a point to attend many panel discussions and “lunch and learns,” where we break out into small groups to discuss timely topics in trademark law such as “Protecting Well-Known Marks,” “Protecting Domain Names,” and more. The most popular panel, however, takes place on the last day of the conference and is hosted by Ted Davis and John Welch, all-stars in the world of trademarks. Mr. Welch always makes his review entertaining, with the crowd in stitches many times throughout his presentation. Some of the key takeaways from this year were:
 
  • The number of 2(d) likelihood of confusion reversals granted by the Trademark Trial and Appeal Board was minuscule
  • Perhaps the most discussed decision was the Matal v Tam case which ruled that the prohibition under section 2(a) of the Lanham Act of the federal registration of potentially disparaging trademarks and service marks violated the Free Speech Clause of the First Amendment because the viewpoint was discriminatory and therefore subject to strict scrutiny.
  • The TTAB affirmed its refusal to register KLEER ADHESIVES for adhesives and mortar on the basis that the applicant’s goods were not transparent
  • In a case involving Dr. Dre, or Andre Young, the TTAB dismissed his opposition to Dr. Drai, an OBGYN and Media Personality citing there was no evidence of confusion between the marks and that the goods and services were unique enough to not cause confusion in the marketplace
The above highlights are but a few of the important decisions that change the way trademark practitioners must view and evaluate trademarks going forward.
 
Beyond a great review of current trademark decisions and meeting wonderful colleagues, we had a great time taking in the beautiful sights of Seattle.
 
For more information on how to create a strong brand and ensure it is protected, please email us at [email protected] or schedule an appointment to chat today!
 
P.S. I cannot forget to thank the awesome team at AltLegal for hosting me this year. If you are looking for a new docketing system for your practice, I highly recommend them. Yes, full disclosure, I am a recent investor, but I have been a big fan of what they are doing long before I decided to invest.

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Carbon Law Group, APLC

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Los Angeles, CA 90017

Carbon Law Group, P.C.

840 Apollo Street, Suite 100,

El Segundo, CA 90245

Carbon Law Group, P.C.

2500 Broadway Building F, Suite F-125,

Santa Monica, CA 90404

Carbon Law Group, P.C.

4195 Chino Hills Parkway #1135

Chino Hills CA 91709

(323) 543-4453

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Carbon Law Group PC| Attorneys of Law | 1001 Wilshire Boulevard PMB 2083

Phone: (323) 543-4453 | Fax: (323) 488-9784 | Email:[email protected]

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