Intellectual Property

Intellectual Property Law Series: Common Trademark Pitfalls Even the Pros Make

Posted by on Dec 4, 2017 in Intellectual Property

We’ve all heard of trademarks. But, what exactly do they do? And how do you select your trademarks, protect them, and then properly use them in commerce? As we discussed in the previous article, trademarks identify original sources for products and services and ideally help distinguish one source’s goods and services from another source’s goods and services. Trademarks can come in a variety of forms, including logos, taglines, product or service names, colors, scents, etc. As many of you already know, selecting a trademark is not always an easy task. And, properly using your trademark in commerce requires diligence. Avoiding the mistakes below can help you protect your trademarks, wallet, brand, and reputation. 7 Tips to Avoid Common Trademark Pitfalls: 1. Select a distinctive mark. In order for you to distinguish your goods and services from others, your trademark must be distinctive, i.e. not confusingly similar to another’s mark for similar goods or services. If your trademark confuses consumers as to the source of origin of your goods or services, you run the risk of losing your mark and even a lawsuit for infringement. So, make sure your mark is distinctive before you begin to use it in commerce. Trademarks can be: Arbitrary (Apple for computers, Kodak for cameras) or Suggestive (Microsoft for microprocessor software)   However, trademark protection is not afforded to marks that are: Descriptive (Smartphone for smart phones) or Generic (Escalator, Realtor, Dumpster) 2. Conduct a search to see if any others are using your mark or something confusingly similar. Even if your mark is not identical to another’s mark, you could still be at risk. We recommend searching through online search engines like Google and reviewing the U.S. Patent and Trademark Office (“USPTO”) database records. Not all trademarks are registered with the USPTO, but you still need to be cautious of using marks similar to others that already exist. Run the search before registering your trademark or using it in commerce. Example of Confusingly Similar Names but Vastly Different Products 3. Register your mark with the USPTO. Trademark registration gives you the exclusive right to use your mark in all 50 states for the covered goods/services, except for prior users. The registration process can be started based on the intent to use the mark in commerce, even if you haven’t used it yet. After five years of continued use in commerce, a registered mark can become incontestable, meaning that others cannot contest the validity of your mark. 4. Properly mark your trademark. Remember this difference: a common law trademark (a mark that is not registered with the USPTO) is marked with ™, and a mark that is registered with the USPTO is marked with ®. Use the ™ symbol before you file your trademark application with the USPTO and during the pendency of the federal trademark application. Upon receiving a federal registration, switch the ™ symbols to ® symbols. 5. Use your trademark as a proper adjective. The proper adjective describes the generic name of goods or services to which it applies. For example, we stocked up on Q-tips® cotton swabs and Little Debbie® snack cakes. Incorrect: Little Debbie® represents a third of the snack cake market. Correct: Little Debbie® snack cakes represent a third of the snack cake market. The risk of using your mark as a noun instead of an adjective is total loss of your trademark rights. If your mark is used as a noun and becomes a generic term for the goods or services with which it is used, you will lose your exclusive rights to the term and your competitors will be able to...

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Intellectual Property Law Series: Do Trademarks Matter? Yes.

Posted by on Nov 9, 2017 in Intellectual Property

Companies have many assets to protect, such as cash, equipment, inventory, furniture, etc. But, one asset that is often overlooked is intellectual property (IP), such as trademarks, patents, copyrights, and trade secrets. In today’s global economy, it is critical for business owners, executives, inventors, authors, and marketing professionals to identify their IP, take the steps necessary to protect it, and enforce their rights when appropriate. Our team presents this first article of a series that will provide you important reminders and tips for protecting your IP. This first one specifically covers IP assets protected under trademark principles, including the following: Trademarks – identify goods or products Service marks – identify service provided for the benefit of another Trade dress – identifies packaging and product configurations Trade names – identify names under which businesses operate A trademark identifies which person or company is the original source of a product or service and distinguishes it from those made or provided by competitors. Trademarks can take the form of names (Gillette®), brands (Johnson & Johnson’s “Band Aid®”), designs and symbols (Starbuck’s twin-tailed mermaid logo), and slogans (Walmart’s “Save Money. Live Better.”). A service mark identifies a service provided for the benefit of another, such as Unum insurance. Trademarks consisting of color, sound, packaging, and scents are commonly referred to as trade dress like the shape of a Coca-Cola glass bottle and the colors of 7-Eleven’s logo. A trade name is the name under which businesses operate and is usually different from their legal name. When managing your IP, the first step is to always identify your assets. The second step is to protect them. And, not protecting your IP could result in the loss of money (lawsuits, license fees, and settlements), time (fighting to protect your rights), credibility, and even your brand or company identity. The following articles in this series will address mistakes to avoid when managing your trademarks and copyrights. If you have questions about identifying, protecting, or enforcing your IP, please contact us. Interested in learning more about Paul and the Chambliss IP practice? Click to watch Paul’s video in our “UNLEASHED” video...

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Update!—New TN Law Concerning Patent Infringement Allegations

Posted by on Jun 23, 2014 in Intellectual Property, Update!

In recent years, state legislatures have attempted to pass legislation regarding patent law – an area that the U.S. Constitution states is exclusively governed by federal law. The stated goal behind many of these laws is to protect businesses from costs associated with defending “bad faith” patent infringement allegations (i.e. to protect from alleged “patent trolls”). Some argue that these laws are constitutional because they are more akin to consumer protection act legislation and do not necessarily overlap or interfere with federal law. In Tennessee, the legislature recently passed such a bill to protect small businesses from costs associated with defending “bad faith” assertions of patent infringement. Public Chapter 879 went into effect May 1 of this year, and states that a person or company cannot send a written or electronic demand letter stating that another person or company is infringing upon their patent when: (i) the threat is made in conjunction with continual past threats where no litigation was filed; (ii) the letter falsely claims that litigation was filed; or (iii) the claims in the letter “lack a reasonable basis in fact or law.” Certain organizations and claims are exempted from the statute; but ultimately, if you are seeking to enforce a patent or are receiving letters claiming that you are infringing upon a patent, you may want to consult with an attorney about this new law (codified at T.C.A. § 29-40-101 through 104). The consequences of ignoring the new law – which include the possibility of attorneys’ fee and punitive damage awards – could be...

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Update! — Fee Changes at Patent and Trademark Office

Posted by on Feb 5, 2014 in Intellectual Property, Update!

The U.S. Patent and Trademark Office recently implemented a number of fee changes that will affect patent applicants and patent owners. Filing fees for patent applications have significantly increased, as have certain other patent prosecution fees. Issue fees, on the other hand, have been slightly decreased. Another change was eliminating the separate fee paid for publication of certain patent applications. U.S. patent applications for which a corresponding application is filed in another country are always published, but applications for which there is no corresponding foreign application are published at the option of the applicant. Publication does provide a limited benefit to applicants whose patents are subsequently issued with claims substantially the same as those published; however, until recently, there was a significant fee charged for publication. Patent owners whose applications have been published with issued claims substantially the same as those published, are entitled to recover a reasonable royalty from infringers who begin infringing prior to the issue of the patent, for the period from commencement of the infringement after publication until the patent issues. Such patent owners are also entitled to recover at least a reasonable royalty from infringers for infringement occurring after the patent issues. Some courts have held, however, that in order to recover a reasonable royalty from an infringer whose infringement began after publication but before issue of the patent, the patent owner had to prove that the infringer possessed a copy of the published application. Because this requirement, along with the requirement that the issued claims substantially mirror the published claims, limits the availability of the remedy for pre-issue infringement, some patent owners have elected to avoid publication of their U.S. application when no foreign application was filed, in order to avoid paying the publication fee. Now, with the publication fee having been eliminated, the only reason to choose not to publish your U.S. patent application is if you believe that the invention can be maintained as a trade secret if the patent application is not allowed. Because inventions directed to machines and other devices cannot be kept secret once the invention is placed on the market, there is no longer any downside to publishing U.S. patent applications directed to such inventions. Please contact any attorney should you have any further questions or if you are wondering how or whether to patent your...

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App Development: Privacy Issues to Consider

Posted by on Dec 13, 2013 in Intellectual Property, Limiting Liability

If your company is developing an app, or having an app developed for it, there are key issues concerning privacy that your company should keep in mind. Apps can often require or facilitate access to personal information about end users which is typically regarded as private and subject to protective laws or regulations. Some apps gradually collect personal information about the end user as the end user navigates the app. Such information can include: financial account information health information location data personally identifiable information (e.g. name and address) There has been greater focus of the Federal Trade Commission (FTC) on privacy issues in mobile devices and apps. Therefore, to help avoid liability or harm to your company’s reputation as a result of privacy breaches, at the initial stages of the app development process and throughout your operations, your company should understand the types of personal information would be shared or accessed as a result of an end user navigating your company’s app. It’s never too early to consider privacy issues–especially if your app facilitates or requires access to information which is highly regulated, (e.g. financial, health or children information). If your company is developing and app or having an app developed, please contact an attorney who can help you minimize risk with respect to privacy...

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Trademarks 101 PART 5 — Avoiding Mistakes in the Trademark Process by Assessing the Likelihood of Confusion

Posted by on Nov 7, 2013 in Intellectual Property

So, startups and entrepreneurs, you think your trademark situation is totally cool because you conducted a full trademark search, right? Wrong. Well, at least not necessarily… Sometimes even a full trademark search isn’t enough because it often doesn’t reveal important details about the actual use of a trademark in the marketplace. In order to assess the likelihood of confusion and the level of risk associated with a third party’s trademark that may potentially conflict with yours, you should determine the nature and extent of any potentially conflicting trademark’s use. “Likelihood of confusion” is the crucial test in trademark infringement and unfair competition claims. Although there is some variation among our circuit courts of appeal, there are similar factors that are generally considered when assessing the likelihood of confusion with a potentially conflicting third-party trademark. Some important factors to assess with regard to a potentially conflicting mark’s use are: The length of time the third party mark has been in use The goods or services for which the mark is used The representative consumer of the good or service The price point of the good or service Finally, one other important factor to assess is the third party’s history of trademark enforcement—If the third party has a history of active litigation regarding trademark infringement or unfair competition, you may really want to think twice before pursuing a mark that could potentially conflict or be confused with that mark. Because basic internet searches may not be sufficient to determine the information needed to fully assess the use of a third party’s mark, it may be advisable to engage a trademark investigator to do the job—those do exist. And, as always, please consult a trademark attorney if you’re interested in protecting your image or brand or you find this discussion murky and...

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