Austin Patent & Trademark Attorney
Frequently Asked Questions
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What is a trademark?
A trademark is any word, logo, color sound, smell or even product appearance that consumers associate with a particular source of a good or service. In many cases, brands are trademarks. For example, consumers may associate the word “Nike” with shoes. This is both a brand and a registered trademark.
What is the difference between a trademark and a service mark?
A trademark relates to goods, whereas a service mark indicates services. For example, Rolex is a registered trademark for watches. McDonalds is a registered service mark for restaurant services. Both can be federally registered.
Should we perform a trademark search?
Yes. It is highly advisable to have a trademark search performed by a competent trademark professional. Performing a trademark search can tell you initially whether a particular trademark will be capable of being registered. Also, in many cases a proper comprehensive search can prevent legal headaches by allowing an applicant to assess exposure to litigation threats. A trademark search will cost some money, but it will cost far less than having to fight allegations of trademark infringement in court or having to have products recalled from the market. A trademark search is not a guaranty that you will avoid all litigation, but it is a good idea and can help prevent many of the most commonplace problems associated with registration and use of a trademark.
Can we file trademarks without a lawyer?
You can, but that doesn’t mean it’s a good idea. The trademark process may seem simple at first, but if it is not done correctly you may face delays, rejections, and additional expense when you have to retain a lawyer later. Trademark examiners are attorneys, and the reality is that they prefer to deal with other attorneys who are familiar with the profession.
Can logos be trademarked?
Absolutely. In many cases it is a logo that becomes first associated with a product or service—sometimes even before a word or business name. Trademark applications can be filed for logos by themselves or with word marks.
We received a cease and desist letter about a trademark. What should we do?
You should call a competent trademark attorney familiar with litigation immediately. It is not advisable to contact the person or law firm that sent you the letter to try and work it out yourself. Anything you say can and will most likely be used against you in a civil court of law. It is very important to study the merits of the allegations before responding to such a threat.
Is an assumed name the same as a trademark?
No it is not. An assumed name or D/B/A is a document given by a local county for a particular business. While it is possible that an assumed name may function as a trademark, this is not always the case. An assumed name is simply a name associated with a business in a locality. Importantly, an assumed name will not usually provide protections outside of the county in which it was registered. If you want federal protections for a good or service associated with a business, then you need to file a federal trademark. A state trademark may also be filed to provide protections broader than a D/B/A.
What are the major issues in trademark litigation?
The main issue in trademark litigation is “likelihood of confusion” of potential consumers. If one business’ product/service name could be confused with the business of another, then there may be a trademark infringement issue. Courts vary across the country, but most consider factors of confusion that include:(1) the similarity of the marks in question; (2) similarity of the goods or services; (3) the identity of the consumers; (4) the channels of advertising of the respective litigants; and (5) intent. These factors will all affect whether liability exists for trademark infringement.
Other than liability, the major issues in trademark infringement litigation are damages, and the scope of any injunctions that may issue to stop an infringer’s activity. In some cases where imported products are involved, seizures of infringing goods can also come into play and the US Customs Service may get involved.
If you have a question about trademark litigation, do not hesitate to contact our attorneys for a free consultation.
What are the damages available for trademark infringement?
There are a variety of damages models available in trademark cases, but they can range from 1) plaintiff recovering lost profits; 2) stripping the defendants of profits made from infringing sales; 3) Reasonable royalty damages; 4) Damage enhancements for bad-faith conduct; and 5) attorney fees in certain cases. One particularly egregious form of trademark infringement is counterfeiting, which can yield additional damage models and even criminal penalties in some cases.
What are common law trademark rights and what is the benefit of filing a federal registration if they exist?
A business can have common law rights to any mark that it has used in connection with a good or service, even without a registration. However, it may be more difficult to prove common law rights than if a plaintiff had a registered federal trademark. Common law trademark rights will require a plaintiff to prove that consumers actually associate a “distinctive” trademark or service mark with a particular business, and they will also be restricted geographically to the zone where the plaintiff can show it has established the association with consumers. A federal registration, on the other hand, will cover the entire United States and will carry a presumption of validity.
Can packaging or product shape be trademarked?
Yes. “Trade dress” is a type of trademark that covers look and appearance of a product or its packaging. A decorative aspect of a product that is not strictly the result of the function of the product can be a trademark. For example, the fluted shape of a classic Coca-Cola bottle could qualify as a trade dress. Also, product packaging can often serve as a trademark. Colors schemes may be uniquely associated with one particular product line and serve a brand function. For example, Kawasaki dirt bikes are often green, whereas Hondas are often red.
What are opposition and cancellation proceedings?
A business or person that believes it will be hurt by registration of a trademark may object to a registration by filing an opposition proceeding. These challenges frequently come up when more than one business claims rights to a similar name. In these proceedings, major issues are (1) similarity of the respective uses of a trademark and also (2) priority of use – in other words who made first use of the trademark in interstate commerce. An opposition proceeding is a litigation proceeding by nature, so the parties will have an opportunity to send document requests, gather evidence, and put on evidence during a trial period for the relevant issues in the case.
A cancellation proceeding is somewhat similar to an opposition proceeding because it takes place at the trademark trial and appeal Board (TTA B), however, a cancellation Proceeding is filed subsequent to a trademarking registering.
It is not uncommon for opposition or cancellation proceedings to occur in parallel with litigation in federal court. Both the TTAB and federal courts have power to cancel trademark registrations, however, only the federal courts have power to award damages. Sometimes a trademark litigation will start as a cancellation or opposition proceeding and then move into Federal court. It is not uncommon for the TTAB to suspend proceedings once a federal lawsuit has been initiated. If you have a question about an opposition or cancellation proceeding, do not hesitate to contact our attorneys for a free consultation.
What is the difference between a counterfeit and a trademark infringement?
Counterfeit” is a legal term to define a particularly bad form of trademark or copyright infringement. The term is generally used to describe goods that are “fake.” In the case of trademarked goods, a counterfeit mark is one that is exact or identical to the actual trademark. This could be fake watches, purses or even fake drugs. The term counterfeit is also used in copyright litigation to refer to blatant fake goods, such as pirated software, copycat art work or movies. Counterfeit litigation can involve enhanced civil penalties and damage remedies, but also can sometimes lead into criminal prosecutions.
Trademark infringement, on the other hand, can refer to marks that are placed on goods that are arguably similar and likely to cause confusion among the consuming public. Trademark infringement is usually handled as a civil cause of action.
Can noncitizens file trademarks in the United States?
Yes. Also, it is possible for business entities that are not actual persons to own trademarks.
Do U.S. trademarks enjoy any protections outside of the United States?
The United States trademark only covers the United States. However, it is possible to use a United States Trademark application as a basis for a Madrid Protocol trademark application. By filing a single international application, it is possible to obtain protections in multiple countries that are members of the Madrid Protocol Treaty. The International Bureau of the World Intellectual Property Organization (“WIPO”) in Geneva Switzerland runs the international registration system.
If you have an intellectual property matter that you would like to discuss with the attorneys of Buche & Associates P.C., please do not hesitate to contact us for a free consultation.