Welcome to Attorney Steve® “Trademark College®” Legal Resource Center. Vondran Legal® understands your brand and is here to help you protect your business by securing trademarks and fighting for your legal rights when a "digital dispute" arises involving your brand and/or your valuable trademarks and domain names.
Today is a great day to MASTER YOUR DOMAIN! Trademark Registration and Cancellation Proceedings in front of the TTAB. Call us at (877) 276-5984 for more information.
VIDEO: Click on the picture above to watch Attorney Steve explain how you can file a federal trademark WITHOUT using an IP lawyer. This is general legal information only and NOT legal advice or a substitute for legal advice. Make sure to SUBSCRIBE to our popular legal channel by clicking on the Red “V” for Victory! We are now over 40,000 subscribers and approaching FIVE MILLION video views. Keep in mind there are risks to filing a trademark without an attorney.
NOTICE: Using our name on a trademark application without consent is not permitted under any circumstances.
2023 Updates: We have helped many clients secure their trademarks for their valuable company assets such as name and logo.
2020 UPDATES: Make sure to watch our video on helpful tips to secure your trademarks on the InventRight channel. This is a great primer aside from the video above.
Search USPTO Trademarks NOW - for registration and renewals
Watch Attorney Steve® Explain the UDRP Domain Dispute Process
VIDEO: Make sure to SUBSCRIBE to join nearly 40,000 others who love our legal information videos. Be smarter than the average bear!!
Trademarks are valuable corporate assets for many companies and it can be for yours as well. All great fortune 500 companies have trademarks, many have MULTIPLE trademarks covering things like:
- Corporate logos
- Jingles ("sound marks")
- Brand names
- Product names
- Online videos
- Audio recordings
- Educational and entertainment services
- Online merchandise (goods)
Click here to learn more about YouTubers and trademarking. Basically, anything that serves as a "source identifier" for your goods or services may be able to seek federal trademark protection.
USPTO Trademark Refusal - Trump case headed to US Supreme Court
Here are a few examples of what I have trademarked for my own firm:
1. My Red "V" logo
2. Slogans - I have two (ex. "The First Name in Legal Services®" | You CLICK we DEFEND®")
3. By own personal brand (nickname) Attorney Steve® which ties into my legal services and Vondran Legal®
4. Trademark College® which promotes my trademark law services including UDRP domain name disputes, RDNH, ACPA and litigation
5. Copyright Watchdog®
5. Litigation Whiteboard® - my popular YouTube channel with nearly 40,000 subscribers and approaching 5 million video views
I am also working on a corporate jingle and a hashtag trademark right now (#AttorneySteve).
We can help your business file for federal trademark protection and help you monitor and protect your trademarks and domain names in the vast digital marketplace. This may include sending cease and desist letters where appropriate and/or filing federal trademark infringement actions or UDRP domain name disputes. This blog talks generally about trademarks and FREQUENTLY ASKED QUESTIONS, and general information including legal services we can provide to help small and medium-sized businesses on up to large nationwide and international companies build and protect their brands.
How to choose domain names that won't lead to Trademark infringement lawsuits or UDRP arbitration
Here is my website to search the USPTO office for existing trademarks
Amazon Sellers use the Brand Registry to protect your trademarks from counterfeiters, infringers and copycats!
Insights into what I call "Trademark Bullies" and Reverse Domain Name Hijackers ("RDNH")
Here is a blog I wrote that gives some insights into tactics you might see, in some cases from an intellectual property law firm or other entity (one of our competitors in the BitTorrent file-sharing defense arena, a law firm from Chicago, Illinois recently was found by a majority WIPO arbitration panel to have engaged in Reverse Domain Name Hijacking in trying to secure one of my domain names that I was using by filing a UDRP complaint with WIPO. We won the case and are now suing Mr. Jeffrey Antonelli and his law firm for the alleged wrongful institution of a civilproceeding. We will keep you updated once we see where the proper jurisdiction for the lawsuit is. We have also sued the Texas law firm of Tristan Robinson and Robinson-Weaver. These parties have maintained they did nothing wrong despite the panel findings.
Watch Attorney Steve® explain the TOP TEN REASONS to get a federally registered Trademark!
VIDEO: Click on the image above to learn why you should obtain a federally registered trademark for your goods, services, trade dress and product packaging. Make sure to SUBSCRIBE to our legal YouTube channel which is closing in on 40,000 SUBSCRIBERS and over FOUR MILLION video views. As we like to say "Be Smarter Than Your Friends."
It's a “digital jungle” out there!
There are literally millions of brands competing online trying to get found (many startups), and trying to grow their online business. But the problem arises when you have individuals, including competitors, pulling all sorts of online stunts designed to harm your brand and cripple your business. Some examples of common digital disputes include:
1. Cybersquatters – people or businesses who buy domain names (with your trademarks in it) holding them for ransom hoping you will buy it off them for a profit. While these domain squatters can be seen as “entrepreneurial” in nature, they can also be seeking outrageous fees for .com domains which can result in feeling like your company is being held “hostage” if they don't pay exorbitant fees to purchase the domain name which encompasses your brand.
2. User-name squatters – with the proliferation of social media accounts (like Facebook, Youtube, Pinterest, Twitter, Instagram, and others) some “entrepreneurs” are signing up on various social media accounts registering accounts with your company's valuable trademarked names and slogans hoping you will buy these accounts of them one day. In essence, they are snapping up account names that involve your trademark. This could require a cease and desist letter, or a trademark lawsuit.
3. Typo-squatters – similarly, there are industrious persons who buy domain names with variations of your trademarks with simple mis-spellings designed to divert your traffic to their website, again, with the hope or expectation that you will pay them off for their purchase of the domain name (an example would be a cybersquatter buying “MicrosostingSoftware.com” and trying to sell that to Microsoft.
4. Competitors who use your trademarks (keywords) in their google pay-per-click-ads or in their WordPress keywords list (or as hashtags on Facebook or Twitter) so that your customers that you worked hard for will end up on their website instead. While not necessarily per se illegal, this is still something to keep an eye on.
5. Competitors engaging in “click fraud“ to try to drive up the price of your google pay-per-click ads;
6. Companies who are using your trademarks and slogans to try to build their business (fake sites);
7. Businesses hijacking your logo (basically tweaking your logo slightly to make their own) and trying to trade off the business goodwill you created;
8. Companies “passing off” products as if they were their own trademarks (selling products on Amazon or eBay that use your logos and trademarks);
9. Competitors launching “suck sites” and “protest sites” that incorporate your federally registered trademarks, sometimes claiming a “parody” defense and often times committing acts of online defamation, disparagement, false light, or brand tarnishment.
10. Nefarious groups who create “phishing” websites designed to imitate and impersonate your brand, and with the intent to sabotage or engage in identity theft by stealing personally-identifying information.
This is a shortlist. Is it a digital jungle out there? You bet it is and your brand and reputation are constantly under attack. Our intellectual property law firm can help you survive and thrive in this hostile internet environment. If you do not have IP brand counsel protecting you in the digital age (whether you are a small and emerging business, an athlete on the rise, an entertainer, or a large organization), you are at a serious disadvantage. We are here to serve as your brand and trademark watchdog.
Our legal services!
Here are some services we provide in the area of copyright, trademark, and domain name law:
- Trademark registration (we can file trademarks or service marks for low flat rate fees)
- Registering your trademarks with the Trademark Clearinghouse to protect your brand from cybersquatters
- Cease and desist letters (we can send them, and we can respond to them)
- UDRP domain name disputes
- Trademark infringement (state and federal lawsuits)
- Respond to USPTO “office action letters“
- Parody defense to trademark infringement / Anti-SLAPP free speech issues
- Trademark cancellation proceedings with TTAB
- Declaratory judgment actions against trademark bullies
- DMCA agent service (to receive takedown notices)
- DMCA takedown bully response
- ITC 337 proceedings
- Trademark oppositions
- Trademark cancellation proceedings
- Dilution cases
If you need help with something that is not on this list, email us at the address on the right sidebar, or call us at (877) 276-5084
What is an “Office Action Letter,” and how do you respond?
VIDEO: Click on the picture above to hear Attorney Steve discuss responding to trademark refusals and denials (often based on “likelihood of consumer confusion”) in office action letters from the USPTO. Make sure to “SUBSCRIBE” to our popular youtube legal channel. As we like to say “be smarter than your friends” (another trademark we will be filing).
What is Trademark vs. a Service Mark?
Companies can get legal protection for either a “trademark” (which is for “goods”) or a “service mark” (which describes your services), or even certification or collective marks (basically third-party companies that provide certifications and memberships).
Regardless, you will be able to obtain the registered “R” in a circle logo that most companies are looking for. This puts all other potential uses on “notice” of your federal nationwide trademark rights. The federal court in Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1051 explained the difference between trademarks and service marks and summed it up nicely: The term ‘ trademark' includes any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods. The term ‘service mark' means any word, name, symbol, device, or any combination thereof used by a person to identify and distinguish the services of one person. For example, I just applied for a service mark to describe my legal services – “The First Name In Legal Services®” This is a slogan I use on my Facebook live broadcasts on my fan page. The more you use it on the internet, the more fans and followers start to recognize your brand.
Can you Trademark a #Hashtag
VIDEO: Click on the image above to watch this important video. Make sure to SUBSCRIBE to join over 20,000 people who love our legal information videos. There really is nothing else quite like it on the internet.
You can apply for a hashtag if it functions as a trademark, if not, you may get this response in an office action letter.
2020 Update: We just obtained a federal trademark registration for a prominent New York City real estate development company. So yes they are doable if done right.
FAILURE TO FUNCTION AS A TRADEMARK
Registration is refused because the applied-for mark, as used on the specimen of record, is used merely as a hashtag and does not function as a trademark or service mark to indicate the source of the applicant's services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019); TMEP §§1202, 1202.18.
Determining whether a term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); TMEP §1202.04.
A “hashtag” is a form of metadata consisting of a word or phrase preceded by the hash symbol or pound sign “#” (e.g., #chicago, #sewing, and #supremecourtdecisions) or by the term “hashtag” (e.g., hashtag skater). TMEP §1202.18. Hashtags are used on social-networking and microblogging sites to identify or search for a keyword or topic of interest, making it easier for users to find messages with a specific theme or content. Id. Searching for that hashtag will yield each message in which it has been used. In re i.am.symbolic, llc, 127 USPQ2d 1627, 1633 (TTAB 2018) (citing https://en.wikipedia.org/wiki/Hashtag (dated 03/20/2017)). Where a hashtag is used as part of an online social media search term, it generally serves no source-indicating function, because it “merely facilitate[s] categorization and searching within online social media.” TMEP §1202.18.
In addition to their use on social-networking sites to identify or search for a keyword or topic of interest, hashtags also serve as an informational message, as explained in In re i.am.symbolic, 127 USPQ2d 1627, 1633 n.7 (TTAB 2018) (internal citation omitted):
Placing the hash character in front of a word is also used “to informally express context around a given message, with no intent to categorize the message for later searching, sharing, or other reasons . . . . This can help express contextual cues or offer more depth to the information that appears with the hashtag.” Hashtags may be “used to express personal feelings and emotions. For example, with ‘It's Monday!! #excited #sarcasm' in which the adjectives are directly indicating the emotions of the speaker.” However, in such a case the hashtag simply emphasizes the sentiment conveyed by the term that follows, similar to the function of an exclamation point, and does not significantly alter the commercial impression of the wording.
In the present case, the specimen shows the applied-for mark used only as a hashtag in that it is used in connection with a profile on the social-networking/microblogging site Twitter®, and thus denotes a means to identify or search for the keyword “ATTORNEY STEVE” in an informational manner.
Therefore, the mark consists only of wording coupled with the hash symbol (#) or term “hashtag,” and, as used on the specimen of record, would be perceived merely as a hashtag for searching online social media, and not as a trademark or service mark for particular services.
Types of Marks / Generic Marks
As one case noted:
The Ninth Circuit “recognize[s] four categories of terms with regard to potential trademark protection:
(4) arbitrary or fanciful terms.”
See Elliott v. Google, Inc., 860 F.3d 1151, 1155 (9th Cir. 2017) (citing Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1146 (9th Cir. 1999)).
On the one end of the spectrum, “[g]eneric terms are not protectable because they do not identify the source of a product.” Id. Descriptive terms enjoy trademark protection only if they acquire “secondary meaning,” which means that they “become distinctive of the trademark applicant's goods in commerce.” Rudolph Int'l, Inc. v. Realys, Inc., 482 F.3d 1195, 1197-98 (9th Cir. 2007) (quoting Filipino Yellow Pages, 198 F.3d at 1147).
“Marks that are suggestive, arbitrary or fanciful can be protected without demonstrating secondary meaning.” Id. at 1198. Where “the disputed term has not been federally registered, and the defendant asserts genericness as a defense, the burden shifts to the plaintiff to show that the mark is nongeneric.” Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005).
What is a Trademark 2(f) registration?
For procedural purposes, a claim of distinctiveness under §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as conceding that the matter to which it pertains is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) ("Where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that the mark is descriptive."); In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1403 (TTAB 2018) (noting that a claim of acquired distinctiveness by applicant to overcome a refusal in a prior registration for the same wording in connection with same services "can be viewed as a concession by Applicant that the wording itself is not inherently distinctive for those services"). For the purposes of establishing that the subject matter is not inherently distinctive, the examining attorney may rely on this concession alone.Once an applicant has claimed that matter has acquired distinctiveness under §2(f), the issue to be determined is not whether the matter is inherently distinctive but, rather, whether it has acquired distinctiveness.
See, e.g., Yamaha Int'l Corp. v. Hoshino Gakki Co. , 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Prof'l Learning Ctrs., Inc., 230 USPQ 70, 71 (TTAB 1986); In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984) .
However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).
What is the USPTO?
The USPTO stands for the United States Patent and Trademark Office. This is the office that approves or rejects federal trademarks and keeps a record of trademark ownership, mostly on the “principle” register.
The Trademark Examiner at the USPTO denied my Trademark, can I appeal the office action letter?
Yes. If you applied for a trademark through a company like Trademarkia or LegalZoom and were denied your trademark, contact our law firm to discuss whether appealing the decision by making new arguments, adding new evidence or bolstering your claim for a trademark is a feasible option. Sometimes by careful use of disclaimer language, you can go back to the USPTO and obtain the trademark or service mark. Sometimes there are other legal issues to address, such as a denial based upon the “likelihood of consumer confusion.” We offer low flat rate fees for this service.
Another Trademark is seeking to be registered that I believe infringes my federal trademark, can I oppose the registration of their trademark or service mark?
Yes. You can oppose another attempted registration of a federal trademark of the registration of another mark that is “confusingly similar” to your trademark. There are also other grounds to challenge the registration of a mark.
Does California have a Trademark office?
Yes, California has a trademark and service mark office. Many states have a legal framework to allow your company to seek “state” protection of your trademark. This, however, does not give you the “federal” (nationwide) protection most businesses want, especially since so many are competing on the internet.
Do I need international Trademarks?
Depending on your company's goals and objectives, international trademark registration might be in your best interest. Contact us to discuss your needs in this area.
What is an ITC Proceeding?
The ITC stands for the United States “International Trade Commission.” This body will hear disputes involving trademark claims, and they are authorized to hear such under 19 USC § 1337 which prohibits unfair practices in import trade including:
“(C) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946.”
Our intellectual property law firm can assist you in ITC proceedings. Here is an overview of ITC proceedings.
What is Trade Dress?
Click here for a quick crash-course on Trade dress protection (with visuals).
Trade dress is a form of trademark and protects things like product design and product packaging. As one federal court put it:
“trade dress involves the total image of a product and “may include features such as size, shape, color, color combinations, texture, or graphics.” Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir.1987). A seller's adoption of a trade dress confusingly similar to a competitor constitutes unfair competition that is actionable under section 43(a) of the Lanham Act. Blau Plumbing, Inc. v. S.O.S. Fix–It, Inc., 781 F.2d 604, 608 (7th Cir.1986). Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because the evaluation of trade dress infringement claims requires the court to focus on the plaintiff's entire selling image, rather than the narrower single facet of the trademark. See Vision Sports, Inc. v. Melville Corp. (9th Cir. 1989) 888 F.2d 609, 613.
Under 15 U.S.C. § 1125(a), to bring a valid claim for trade dress infringement a plaintiff must sufficiently establish that:
(1) the trade dress is nonfunctional;
(2) the trade dress has acquired a secondary meaning;
(3) there is a substantial likelihood of confusion between the plaintiff's and defendant's products.” Art Attacks, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1145 (9th Cir. 2009).
A common example of trade dress protection would be Kentucky Fried Chicken and the colors they use to market their retail restaurant outlets. You can tell it is a KFC store even when you are hundreds of yards away.
Click here to learn more about Trade Dress for product design and packaging.
Is a domain name protected by Trademark?
A domain name is an internet address. In most cases, a domain name is not subject to qualifying to be registered as a trademark. There have, however, been instances when a domain name could be registered as a federal trademark with the USPTO.
How is a Trademark infringement action different than a UDRP domain name arbitration proceeding?
A trademark infringement action would likely be brought in federal court, while a UDRP is a “domain name dispute” and is normally heard before an arbitrator such as WIPO or National Arbitration Forum. In a UDRP domain arbitration, there are no damages or attorney fees awarded. Click here to see our VIDEOS on UDRP disputes [UDRP Part 1] [UDRP Part 2] [UDRP Part 3] [UDRP Part 4].
Can I get a trademark on my logos for my company?
Yes. Sometimes a trademark holder will file for trademark protection adding a logo to their trademark. Sometimes you want to get a “standard” mark first and do the “logo mark” second – two different trademark applications. That way you can mix and match your name logo (ex. Nike) along with your logo (the swoosh logo”) and mix and match those as may be needed for your marketing and advertising purposes. Call us to discuss.
What is the difference between the TM and the “R” mark?
The “tm” means you are claiming state or common law rights. Once you get the federal registration, you may start using the “R” with a circle around it symbol (®). Federal protection grants broader legal rights.
I got a cease and desist letter from another company telling me I have to shut my business down, what do I do?
There are a lot of “trademark bullies” out there. Again, it is a digital jungle and some trademark holders overdo it in regard to policing their brand. If you are feeling bullied by a trademark owner (ex. on a Etsy site, or selling on Amazon.com or eBay), contact us to review your case. There is a list of known trademark bullies. While the trademark bully label does not mean they are doing anything illegal per se, it often suggests these companies can be “over the top” in protecting their brands and maybe sending demand letters to cease and desist where no legal rights truly exist. We can review these types of cases and let you know what your legal rights are, and we can help companies legitimately protect and enforce their trademarks.
What do you have to prove to find someone guilty of trademark infringement?
When a court is looking at whether or not there is a “trademark infringement” they will be looking to see if there is a “likelihood of consumer confusion.” Likewise, the USPTO trademark examining attorney will review new trademark applications to see if there is a likelihood of consumer confusion with another existing trademark.
The landmark case in this area of law is the Sleekcraft case which discussed the factors the court (and examiner) will look to in making this determination:
“The likelihood of confusion is the central element of trademark infringement, and the issue can be recast as the determination of whether “the similarity of the marks is likely to confuse customers about the source of the products. Official Airline Guides v. Goss, 6 F.3d 1385, 1391 (9th Cir.1993) (quoting E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.1992)). We have developed eight factors, the so-called Sleekcraft factors, to guide the determination of a likelihood of confusion. 599 F.2d at 348. Applied to this case, they are:
(1) the similarity of the marks;
(2) the relatedness of the two companies' services;
(3) the marketing channel used;
(4) the strength of GoTo's mark;
(5) Disney's intent in selecting its mark;
(6) evidence of actual confusion;
(7) the likelihood of expansion into other markets;
(8) the degree of care likely to be exercised by purchasers.” No one factor is controlling. Each factor is examined and weighed. See GoTo.com, Inc. v. Walt Disney Co. (9th Cir. 2000) 202 F.3d 1199, 1205. Confusing similarity is another way of stating the ‘likelihood of confusion' See AMF Inc. v. Sleekcraft Boats (9th Cir. 1979) 599 F.2d 341, 350 abrogated by Mattel, Inc. v. Walking Mountain Productions (9th Cir. 2003) 353 F.3d 792.
Trademark renewals - if you FORGET you may LOSE all your rights!
How to renew your Trademarks WITHOUT a lawyer
What is the legal test for infringement of a trademark?
PODCAST: Click on the image above to watch this podcast that discusses the 9 factors federal courts will look at in the 9th Circuit (per the Sleekcraft case) to determine whether or not there has been an infringement. Here is also some case law that discusses:
"To establish trademark infringement, a plaintiff must demonstrate that
(1) its mark is valid;
(2) it is the senior mark;
(3) the defendant's mark is likely to cause confusion in the marketplace.
See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046 (9th Cir.1999).
To establish common law trademark rights in the absence of federal registration, a plaintiff must plead and prove that it is the senior user of the mark with sufficient market penetration to preclude the defendant from using the mark in a specific geographic market. See Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) (“To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.”); Credit One Corp. v. Credit One Fin., Inc., 661 F.Supp.2d 1134, 1138 (C.D. Cal. 2009)
(“A party asserting common law rights must not only establish that it is the senior user, it must also show that it has ‘legally sufficient market penetration' in a certain geographic market to establish those trademark rights.”)
Is a trademark case a Federal Case?
A trademark lawsuit can be filed in state or federal court. Often, where there is a Lanham Act violation (ex. false designation of origin), and the Defendant may try to “remove the state court case to federal court” (under diversity or federal question jurisdiction). We can help when “removal” becomes an issue in your case. Watch our federal court removal VIDEO here.
What does a trademark certificate look like?
What are the damages and remedies for a trademark infringement case?
The general damages a Plaintiff will normally seek in a trademark infringement action are:
- Defendant's profits (minus deductible expenses)
- Damages sustained by the plaintiff
- The injunction to prevent further infringement (See discussion below)
- Lost future profits
- Injury to reputation and goodwill
- Trebling of damages and profits, (in bad-faith cases)
- Costs of action
- Destruction of infringing goods
- Attorney fees, where the case is “exceptional” (ex. where there is bad-faith conduct by the defendant or counterfeit goods).
APRIL 2020 UPDATE: In a recent the United States Supreme Court case, the court held that defendant's profits are recoverable under 1125 even absent a showing of "willful infringement." See Romag Fasteners, Inc. v. Fossil, Inc., et al.
Attorney Steve® discusses the #1 Trademark Problem – NOT searching your trademarks before trying to register with USPTO.
VIDEO: Watch this video from our popular Facebook channel. Make sure to LIKE and FOLLOW us to stay up on your IP law.
Watch Attorney Steve® explain Trademark Infringement Damages
VIDEO: Click on the image above to watch this video. Make sure to SUBSCRIBE to our growing legal channel. We are now approaching 50,000 subscribers.
Will a business and intellectual property law firm take my trademark infringement case on a contingency fee basis?
There are limited circumstances where we would consider taking all or part of your case on a contingency fee basis. Contact us to discuss our flexible fee arrangements. In most cases, we charge a flat rate legal fee for trademark-related services.
Can you get an injunction to stop a competitor from infringing your trademark?
Yes. Under the right circumstances, as this federal trademark case points out, a party can seek a federal court injunction to stop infringing conduct of another company. Here is the general legal test:
“A plaintiff is entitled to a preliminary injunction in a trademark case when he demonstrates either:
(1) a combination of probable success on the merits and the possibility of irreparable injury
(2) the existence of serious questions going to the merits and that the balance of hardships tips sharply in his favor.” Sardi's Restaurant Corp. v. Sardie, 755 F.2d 719, 723 (9th Cir.1985).
To establish a trademark infringement claim under section 32 of the Lanham Act or an unfair competition claim under section 43(a) of the Lanham Act, Brookfield must establish that West Coast is using a mark confusingly similar to a valid, protectable trademark of Brookfield's. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979). See also Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1046.”
If you believe you may need an injunction, or are responding to an injunction lawsuit, call us to discuss.
A Trademark can allow you to open an Amazon store and get into the brand registry
We help clients secure trademarks. Once you file for a federal trademark, Amazon will send you an email (to your attorney if you hired one) with an authorization code. Once you have this, you should be able to move forward and open your storefront.
Here is what the email might look like:
Hello from Amazon Brand Registry Support,
Subject: Action Required: Request from Amazon Brand Registry
We are writing you to validate the identity of an individual seeking to enroll XXXXXXX in the Amazon Brand Registry. You are listed as the registered trademark contact for XXXXXXX.
Amazon Brand Registry helps rights owners protect registered trademarks on Amazon and create a more accurate and trusted experience for customers. As the gatekeeper for the brand XXXXX, your role is very important.
Enrollment in Amazon Brand Registry gives rights owners access to powerful tools including proprietary text and image search in addition to the increased authority over product listings that have your brand name. For more details, see https://services.amazon.com/brand-registry.html.
We are unable to give you the applicant's name, but we asked them to contact you. To give the applicant approval to enroll XXXXXXX in Amazon Brand Registry, provide them with the verification code listed below. If you do not want to grant access, do not provide the code. After the brand is enrolled with the correct rights owner, they can enroll additional users with limited or customized roles.
Verification code: XXXXXXXXXXXXX
Amazon Brand Registry Support
What is the Trademark Trial and Appeal Board ("TTAB")
The Board has jurisdiction over four types of inter-partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.
An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may, upon payment of the prescribed fee, file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, under Trademark Act § 12(a), in the Official Gazette of the USPTO.
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark on the Principal or the Supplemental Register. "Any person who believes that he would be damaged by the registration of a mark" may, upon payment of the prescribed fee, file a petition to cancel thereto, but the petition to cancel may only be filed after the issuance of the registration.
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations that are in conflict), is entitled to registration. The proceeding is declared by the Office only on a petition to the Director showing extraordinary circumstances therefore, that is, the party who filed the petition would be unduly prejudiced without interference.
A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed by the Board, ordinarily as to the geographic scope of the applicant's mark or the goods and/or services on or in connection with which the mark is used.
Trademark Law Resources
6. USPTO TMEP manual (trademark examiner review procedures). This is what they look at as a legal guide in deciding whether or not to grant your trademark.
Contact a California Trademark IP Law FIRM
We help clients with federal copyright and federal trademark and domain name issues NATIONWIDE (Trademark law registration is a federal matter). This can include the following types of services (some cases may require a local counsel, for example, STATE trademark law issues):
- Trademark registration
- Respond to USPTO office action letters
- ITC section 337 cases
- Cease and Desist letters (issuing and responding)
- Subpoena response (see our great videos: a. overview of subpoena and b. motion to quash)
- Responding to office action letters
- Trademark cancellation proceedings
- ACPA cybersquatting and reverse cybersquatting cases
- Licensing Trademarks for Merchandising rights
- Registration with the Trademark Clearinghouse (take charge over infringing domain names)
- Dilution of famous marks
- Reverse domain name hijacking ("RDNH")
- UDRP domain disputes (WIPO and NAF)
- Counterfeit trademarks (Plaintiff and Defense) - ex. Apple Infringement
- Trademark opposition proceeding
- IPRR registration of trade marks, trade secrets, patents, and copyrights with Customs and Border Protection
- Apple counterfeit cases
- Federal court litigation (we have appeared in nearly 200 federal court cases)
- ADR (mediation and arbitration)
Contact our Trademark IP Law Firm
We have offices in California (San Francisco | Santa Monica | San Diego | Newport Beach) and Arizona (Phoenix on Camelback).
We offer tenacious legal representation and flexible fee arrangements to make having experienced legal representation accessible, and affordable. We have been in business since 2004 and have stellar 5-Star Client reviews.
We can be reached at (877) 276-5084 or email us through our contact form.
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