Identifying, Securing, and Defending Intellectual Property Rights

Trademarks

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Do you have a product name, company name, logo, slogan, service name, tagline, or domain name, that you wish to protect? Do you need advice in choosing a strong trademark? Do you want to ensure that the goodwill associated with your mark is not diluted by competitors? The Erickson Law Group has experience in selecting, protecting, and enforcing trademarks.

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Registering a federal trademark on the Principal Register at the United States Patent and Trademark Office provides the trademark holder several advantages including:

  • 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 file a lawsuit concerning the mark in federal court;
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Our firm has experience providing trademark infringement opinions. We can negotiate agreements regarding licensing or transfer of trademarks and service marks. The firm advises clients on the interrelation between trademarks and Internet domain names.

We provide the following trademark services:

Trademark Counseling and Procurement. We advise companies on strategies for choosing brand identities that are commercially effective and legally protectable. We formulate trademark strategies to protect almost anything that a business uses to identify or associate its products and services with the company, including: product names, company names, logos, slogans, service names, trade dress, taglines, sounds, colors, and Internet domain names. Some of the services we provide include (1) trademark availability searches and opinions, including infringement opinions, (2) preparing and prosecuting trademark registrations at the United States Patent Office and internationally using the Madrid Protocol and a network of foreign trademark agents, and (3) assessing trade dress rights in product configurations, packaging, and business décor.

Trademark Enforcement. The Erickson Law Group uses multiple avenues for enforcing trademark rights, including (1) cease and desist letters, (2) monitoring the federal register for potentially confusing or infringing marks to ensure that a client’s mark is properly protected and not diluted, (3) representing clients in opposition and cancellation proceedings before the Trademark Trials and Appeals Board, and (4) instituting or defending trademark infringement, dilution, and unfair competition actions in court. Our attorneys also assist clients in the prevention and cessation of counterfeiting, through various means including registration with customs authorities.

Alternative Courses to Registration on the Primary Register.

When your proposed mark is merely discriptive you have at least two alternatives to registering the mark as a word mark on the Primary Register. Merely descriptive marks cannot be registered without proof of secondary meaning—i.e. proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce. Trademark Manual of Examining Procedure (TMEP) § 1212 (2008). A mark is considered merely descriptive if it “describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” Id. at § 1209.01(b).

Trademark a Logo

When you encounter a situation where your mark may be considered only descriptive, seeking registration of a logo containing the mark may be your best option. A word or character mark claims the use of the words or characters in any form. A design mark (logo) generally claims the words as specifically depicted with the accompanying design elements.

Registering a logo as a trademark grants you rights to the graphical presentation of the logo as a whole. However, you do not receive exclusive rights to the words used in the logo. Logos are not as strong because they only cover the particular logo. Yet they are easier to register. However, if the logo is changed, the owner will need to file another application to cover the new logo.

While registering the logo does not grant exclusive rights to the words used in the logo, the registration still has a deterrent effect. This effect occurs when another party or the Trademark Office searches the trademark database. The search returns results for word marks as well as the literal words and characters in logo (design) marks. Depending on the circumstances, the words or combination of characters in a logo mark may serve as basis for the Trademark Office to refuse registration to third parties attempting to register similar word marks or design (logo) marks that contain the words in your logo.

Registration on the Supplemental Register

Another approach is to place your word mark on the Supplemental Register until acquired distinctiveness or secondary meaning can be shown. The description below explains the difference between the Primary Register and the Supplemental Register. After a period of time on the Supplemental Register and with a showing of certain additional evidence, the applicant may apply to place the mark on the Primary Register.

A mark that is merely descriptive of the goods or services cannot be registered on the Principal Register, absent a showing of acquired distinctiveness. TMEP § 1209.01 (2008). However, merely descriptive marks may be registered on the Supplemental Register. Id.

Primary Register. Registration on the Principle Register is preferred. Registration on the Principle Register acts as prima facie evidence of (1) the registrant’s ownership of the mark, (2) the validity of the mark and its registration, and (3) an exclusive right to use the mark in commerce under specified circumstances. Trademark registration also operates to provide constructive notice to all parties that the trademark is the exclusive property of the trademark owner. Primary registration provides the trademark holder nationwide protection. Last, registration provides the registrant with broader remedies when enforcing rights in federal court.

Supplemental Register. Registration on the Supplemental Register does not provide the benefits of the Principle Register. It does provide the following benefits: (1) the right to file an infringement action in federal court, (2) the Patent and Trademark Office may use it to deny registration of a later filed similar mark, and (3) the registrant can later apply to have the mark registered on the Principal Register. This later application for registration on the Principal Register may be allowed when the applicant demonstrates that the mark has acquired distinctiveness or “secondary meaning.”

Acquired distinctiveness. Acquired distinctiveness or “secondary meaning” requires proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce. This proof can include: affidavits, declarations, depositions or other appropriate evidence showing the duration, extent and nature of (1) the applicant’s use of a mark in commerce, (2) advertising expenditures in connection with such use, (3) letters or statements from the trade and/or public, or (4) other appropriate evidence tending to show that the mark distinguishes the goods or services. Also, proof of acquired distinctiveness may be supported by “A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for five years before the date when the claim of distinctiveness is made” TMEP § 1212.

If the Trademark Office ultimately finds your mark is merely descriptive and refuses registration, we can register it on the Supplemental Register. Then, after the mark has acquired distinctiveness, we can attempt registration on the Primary Register.