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Tag Archives: Trademark

Should You Register Your Trademark?

29 Monday Jan 2018

Posted by Kenan Farrell in Intellectual Property, Trademark

≈ 1 Comment

Tags

Application Filing Fee, Clearance Search, Patent, Thompson CompuMark, Trademark, U.S. Patent and Trademark Office, USPTO

Businesses often inquire whether it’s in their best interest to register their trademarks with the U.S. Patent and Trademark Office (“USPTO”).

The traditional short answer is: “Yes, if at all possible, you should register your trademarks!” This advice has been widely echoed by qualified intellectual property attorneys.

However, the reality of this economy is that small businesses, non-profits and individuals aren’t able to do everything a lawyer says they SHOULD do.  In Oregon and abroad, the bottom line counts now more than ever.  Thousands spent on obtaining a trademark registration are thousands not spent on other aspects of your business, like R&D, Marketing or Payroll.  As such, I often find it helpful to discuss with clients not only what they SHOULD do, but what they CAN do and what they MUST do.

trademark-symbolThe purpose of this post is to give you additional financial information with which you can decide whether to register your trademarks. Some lawyers will tell you it’s “expensive.”  The same lawyers might tell other clients that it’s “not expensive.”  I’ll lay out some real numbers that you can actually put into your budget.

First, keep in mind that registration of  trademarks is not required. Common law rights arise naturally from actual use of a trademark. Generally, the first entity to either use a trademark in commerce or file an intent to use application with the USPTO has the ultimate right to use and registration. However, filing for and receiving a federal trademark registration on the Principal Register provides several advantages:

  • constructive notice to the public of the registrant’s claim of ownership of the mark;
  • a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to bring an action concerning the mark in federal court;
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Optimally, all trademark owners who consider their trademark a valuable business asset (…and if not, why continue using the mark?) would like to obtain these advantages.  But registration is not free.  Here are some of the likely fees (based on the USPTO’s current Fee Schedule, last revised 1/16/18) that you will face before and during the registration procedure:

Clearance Search – Before adopting and using a trademark, it’s advised that a trademark clearance search be performed to determine the availability of the trademark. This will help determine whether there is another user already using the trademark, i.e. having superior rights in the trademark. By performing an initial trademark clearance search, a business can avoid incurring liability for trademark infringement and avoid investing resources in a trademark which could be unusable because it infringes another’s trademark rights. Expect the clearance search to cost $200-400.

A commercial research service like Thomson CompuMark, which conducts the actual search on its many databases, will cost around $700. Add attorney time to review and report on the results.

Application Filing Fee – The official filing fee is $275-$325 per trademark. Your  attorney will charge a fee for the application preparation and filing.

Filing an Amendment to Allege Use/Statement of Use – $100. Both the Amendment to Allege Use and Statement of Use serve a similar function…they alert the USPTO that you are now using the trademark in commerce. This is important for intent-to-use applications where a trademark application is filed prior to actual use because registration cannot be obtained until the trademark has been used in commerce. Your attorney will spend time gathering specimens, and preparing and filing the necessary documents.

Extension of Time for Filing a Statement of Use – $150. It is possible to obtain up to six (6) extensions of time to file a Statement of Use. Each extension is for six (6) months, up to a total of thirty-six (36) months.  Of course, each extension must be accompanied by a fee. There will also be some nominal attorney time to prepare the extension.

Response to Office Action – Office actions are letters from the USPTO that set forth the legal status of a trademark application. Typically, the examining attorney will set forth specific requirements that the applicant must meet before an application can be approved for publication. Believe it or not, there is no filing fee for a Response to Office Action. However, a majority of your attorney’s time in the application procedure will likely be spent reviewing and responding to office actions.

Looking into the future, you’ll want to keep in mind the renewal costs which will be paid after five (5) years. Expect to pay $500+ for each class of goods and services that your trademark protects. For example, if a band wants to protect its band name for both “musical services” and “t-shirts,”  it will be paying filing fees for two separate classes of protection. This applies to filing fees also.

Notwithstanding the renewal costs, and assuming that no extensions, etc. are required, you’re looking at approximately $1000 just in filing fees for one trademark protecting one class of goods and services. On top of these established PTO fees, you’ll be paying your trademark attorney for each document prepared or filing made. Therefore, choosing a trademark attorney who provides excellent service at a lower cost can greatly enhance your bottom line. Also, these are just some of the more common fees you will face in registering your trademark…there may be additional filings/costs associated with a trademark registration, depending on the specifics of your trademark and the strategy of your attorney.

So, should you register your trademark??? The traditional answer still rings true…if fiscally possible, do it. Trademarks are valuable business assets that are typically far greater in value than any costs associated with registration. Always bear in mind that economies rise and fall, but trademark rights can continue indefinitely. Unfortunately, that means that spending less today to protect your trademark rights may allow another party to intervene and lock up important trademark rights for the future.  Also, be sure to consider how licensing opportunities might be affected should you not register your trademarks.

Final practical note: Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. It’s free and reinforces good habits among those wearing the “marketing” hat.

City of Portland Defends its Historic Sign in Federal Court

21 Tuesday Jul 2015

Posted by John Taggart in District of Oregon, Intellectual Property, Litigation, Oregon, Portland, Trademark

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Tags

Declaratory Judgment, Declaratory Judgment of Non-Infringement, Declaratory Judgment of Unenforceability, Marco A. Hernandez, Portland, Portland Sign, Trademark, Trademark Infringement

The City of Portland bought the famous Portland Oregon sign – commonly known as the “White Stag” sign or the “Made in Oregon” sign – Portland's state trademark registration in the signin 2010. The following year, in July 2011, the city registered its trademark with the state of Oregon. It appears that the City started charging license fees for commercial use of images of the famous sign around January 2013. Vintage Roadside is an Oregon company that aims “to bring back to light the authentic advertising graphics and logos of [] bygone businesses” by giving “people the opportunity to indulge in one of life’s great pleasures: the gift shop souvenir!” Vintage Roadside also runs an Etsy store that sells photographs of vintage roadside attractions.

According to the Complaint, the City of Portland’s attorneys contacted Vintage Roadside and asserted that their photograph violated the City’s trademark in the sign. Vintage Roadside filed a preemptive lawsuit, seeking a declaratory judgment, in the Multnomah County Circuit. Plaintiff alleges both that the City’s state trademark is unenforceable and that Plaintiff is not infringing and has not infringed any enforceable trademark relating to the sign. The City has removed the case to federal court. The heart of Plaintiff’s argument is that the City of Portland incorrectly filed its Vintage Roadside Etsy Screenshottrademark application. The recitation of services in the state trademark registration (as shown above, and on p. 9 of the Complaint below) is awkward. The only good or service listed on the application is, “The sign is a visual icon associated with Portland, and is seen all over the world when major events come to Portland.” In the space available to explain the mode or manner in which the mark is used, the City of Portland simply wrote, “An historical landmark of Portland, Oregon.” Vintage Roadside is alleging that the City of Portland was not using the mark in connection with the sale of goods and services and falsely certified that the mark was in use.

More updates to come as the case progresses…

Vintage Roadside LLC v. City of Portland

Court Case Number: 3:15-cv-01346
File Date: Monday, July 20, 2015
Plaintiff: Vintage Roadside LLC
Plaintiff Counsel: Robert A. Swider of Swider Haver LLP
Defendant: City of Portland
Defendant Counsel: J. Scott Moede and Simon Whang of Portland City Attorney’s Office; Shawn J. Kolitch of Kolisch Hartwell, PC
Cause: Unenforceability of Trademark, Non-Infringement of Trademark
Court: District of Oregon
Judge: Judge Marco A. Hernandez

View this document on Scribd

Oregon’s Kettle Foods, Nike Jordan are ‘Hottest Brands’

05 Wednesday Jan 2011

Posted by Kenan Farrell in Oregon, Trademark

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Tags

Jet Blue, Kettle Foods, Pepto Bismol, Trademark

Two of Advertising Age’s “Hottest Brands of the Year” are linked to Oregon companies, the industry publication announced recently.

Salem-based Kettle Foods and Nike’s Jordan brand were singled out for the annual acknowledgement, which singled out 40 brands for success in 2009 — everything from Pepto Bismol to airline Jet Blue.

Kettle earned its nod for record growth and marketing innovation, for which the company credited its long-standing public relations firm, Maxwell PR.

“As our primary marketing engine public relations has done the heavy lifting for Kettle Brand,” Michelle Hunt, vice president of marketing for Kettle Foods, said in a statement. “With a limited budget and the bar set high, Maxwell has continued to keep the brand fresh and our fans engaged – and it’s paid off with significant and sustained growth.”

Keith Houlemard, president of Beaverton-based Nike’s Jordan brand, was singled out for his leadership of the business unit.

Since deciding to drop Nike’s trademark Swoosh from its sneakers more than a decade ago, the brand has grown to dominate the high-end basketball market, Ad Age reported.

Source: Portland Business Journal

Google denied Nexus One trademark registration

19 Friday Mar 2010

Posted by Kenan Farrell in Intellectual Property, Oregon, Trademark

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Tags

Integra Telecom, Nexus One, Trademark

It’s been a rough day for Google’s Android phone, the Nexus One. Initial sales have been far weaker than the iPhone saw when it first came out of the gate. Now it’s being reported that the U.S. Patent and Trademark Office has rejected its application for a trademark on the name Nexus One.

The name “Nexus One” was ruled too close to Portland, Oregon-based Integra Telecom‘s own registered trademark for its Nexus fixed bandwidth integrated voice and internet T1 product.

For the full story, check out ReadWriteWeb.

Copyright and Trademark Issues For Blogs

21 Monday Sep 2009

Posted by Kenan Farrell in Copyright, Intellectual Property, Oregon, Trademark

≈ Leave a comment

Tags

Copyright, Intellectual Property, Trademark

This post begins a series dealing specifically with the legal issues that bloggers should be thinking about. First up are intellectual property issues, helping you understand your rights to link to information or graphics from other sources, quote from articles and blogs, or otherwise use someone else’s copyrighted works. It will also discuss the appropriate use of trademarks in blogs (both your marks and those of others).

I. Overview of Intellectual Property

What is copyright?

Copyright gives a creative person control over the use of an original work of authorship. A copyright owner has the exclusive right to reproduce a work, prepare derivative works, distribute copies or perform a work publicly. In the world of bloggers, original works of authorship can include text, images, audio or video creations (and a whole host of other things).

What is trademark?

A trademark is a distinctive sign or indicator used to identify that the products or services with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.

So think:

Pepsi®, McDonalds®, Apple®

Or:

pepsi logo mcdonalds apple logo

When you either hear/read the word mark or see the logo mark, you immediately associate that trademark with a particular product or service. Obviously, these are examples of very strong trademarks.

II. Copyright

Copyright issues start to come into play when you publish material created by others on your blog or, conversely, when someone else republishes material that you posted on your blog or website.

Copyright law applies to the reposting of text, images, audio and video. If you’re posting somebody else’s original work, you’re likely violating one of the exclusive rights mentioned above. But as you, me and anyone else on the Internet knows, people are copy/pasting, hyperlinking and cross-referencing all over the world, all the time. Are they all liable for copyright infringement? Luckily, the Copyright Act has a built-in exception called “fair use” that allows you to use other people’s copyrighted works for certain, enumerated purposes. These include criticism, comment, news reporting, teaching, scholarship or research. So, for example, if you are commenting on or criticizing an item that someone else has posted, and use a quote from that source, that’s probably fair use.

The following factors are considered in a fair use analysis:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

Keep in mind that the law favors “transformative” use. In other words, if you’re reposting another person’s original work, it’s more likely to be fair use if you’re using that work in a different manner or for a different purpose than the original. While you may borrow directly from another source, adding your own commentary and content is better than strict copying. Likewise, it’s better to repost only a small portion of someone else’s work than the work in its entirety.

bloggerdilemma

If you feel that you’ve gone too far in your copying, you probably have. Consider whether you’re able to share the same information but in a different way (i.e. your own words). If you can’t, that’s strong evidence it’s a fair use. Don’t worry if you’re confused…this is a gray area in copyright law that isn’t totally clear to anyone at the moment. If you have specific questions about your use of someone else’s creative works or someone else is using your works, contact a copyright professional (who should be well-versed on legal developments and what typically constitutes fair use) to provide a more detailed analysis.

Barneyª: Sharing is Caring DVD Box ArtAlso, on a practical note, if you’re using someone else’s text or images and they contact you to ask you to remove them, you probably just want to go ahead and do it. After all, there are lots of different ways to express an idea and usually hundreds of equally wonderful pictures to adorn your blog. On the other side, if you find someone else using your text or images, take a deep breath before contacting them and remember what Barney says about sharing:

III. Trademark

Let’s talk first about your own trademarks. Often you’ll have spent good time and money developing and protecting your trademarks. It would be a shame to lose your rights through improper use. Proper use enhances a mark’s ability to identify the origin of products or services, and minimizes the likelihood that a mark will become generic, or be abandoned unintentionally. Make sure you always use a proper trademark notice (™ for common law rights, ® if you’ve obtained registration) and remember to use your trademark as an adjective. Escalator was once a registered trademark but rights were lost when everyone started using the term as a noun to describe just any ol’ moving stairway. The mark no longer brought to mind its owner as the single origin of the product.

It’s probably just as common that you’ll post someone else’s trademark…I know this blog, as a news and information source, posts 3rd-party trademarks fairly regularly. This is typically permissible, because while trademark law prevents you from using someone else’s trademark to sell your competing products, it doesn’t stop you from using the trademark to refer to the trademark owner or its products. That is called “nominative fair use,” and is permitted if using the trademark is necessary to identify the products, services, or company you’re talking about, and you don’t use the mark to suggest the company endorses you. Again, bloggers get by on an exception to the rule…we are living in a gray legal realm. Consult a trademark professional if you’re concerned about your use of somebody else’s trademark.

trademarknotice

The next post in the series will discuss defamation. The post will explore your options when somebody has posted something false and damaging about you, including some common defenses. Until next time, sticks and stones, my friends!

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