Products and services are identified by brand names, or marks (trademarks for goods, service marks for services) which consumers come to associate with the source of the goods and services.
Marks can take the form of names, slogans, logos, and in some instances even sounds or colors. Marks are protected by federal law and state law, and some of these laws are codified in statutes, others are not, making the field of trademark law more difficult to comprehend.
Marks also fall on a so-called “spectrum of distinctiveness,” which affects the extent of protection is available for them. At one end of the spectrum are marks which are arbitrary and fanciful, such as KODAK®, a word which means nothing in the English language, and thus entitled to great protection. At the other end of the spectrum, terms such as “facial tissue” or “cotton swab” are generic, and thus not protected—while the brand names KLEENEX® and Q-TIP® for them are.
Keleti+Moradian LLP help in all aspects of unfair competition involving business and product identity: selection of marks; securing protection through registration of marks, business names., and internet domain names; and bringing or defending claims of trademark through litigation.
- Branding Marks are valuable assets, which is why businesses spend so much time and money promoting their brands and burnishing their reputations. Memorable branding gives businesses a competitive edge and promotes customer loyalty and repeat sales. There are several considerations in choosing a trademark, such as making sure that the mark is not already in use by a competitor. We help businesses choose marks which are entitled to protection.
- Federal Registration In the United States, there is no obligation to register a mark, however, there are many benefits and advantages to federal registration, so it is highly advisable to do so.
- Application Registration begins with submitting an application to the United States Patent and Trademark Office (USPTO) to register a mark. In addition to application form, one must also submit a drawing containing certain information and a depiction of the mark, as well as an official fee for each of the categories in which the goods and services are classified using an international system of classification. In the U.S., registration is available only to the extent a mark is actually used in connection with goods and services, although one can apply early if there is the intent to use the mark and one begins actual use within a short period after the USPTO has issued a notice of allowance, indicating that the mark is registrable.
- Office Actions The trademark application is reviewed by a USPTO examiner. If there are problems with the application, the USPTO will issue an office action, which is an opportunity to correct the problem or address the examiner’s concern. If, after examination and any office actions, a determination is made that the mark is eligible for registration, it is published for public review and comment. If there is no negative response to the publication, the registration issues.
- Inter Partes Disputes
- Opposition When a mark is published for public comment, holders of competing marks, registered or not, may object to registration by filing opposition proceedings against the applicant, which are adjudicated by the USPTO’s Trademark Trial and Appeal Board (TTAB).
- Cancellation After a mark is registered, holders of competing marks can still challenge the registration to the TTAB, although after the first five years , the grounds on which a registration may be cancelled become more limited.
- Concurrent Use One of the benefits of federal registration is nationwide coverage. However, two or more unrelated parties may register the same mark, with each party having a registration limited to a distinct geographic areas, as long as they can co-exist without causing consumer confusion. An applicant may apply for a concurrent use initially, convert a pending application to one for concurrent use, or commence concurrent use proceedings before the TTAB.
- Appeals If an application for registration is refused, the applicant may appeal to the TTAB. An unsuccessful appeal may be further appealed to the United States Court of Appeals for the Federal Circuit.
- State Registration California is one of the many states with its own trademark registry. State registration of marks does not have all the advantages of federal registration, but for some marks it may be the only registration available; typically this is when the goods or services are not in interstate or foreign commerce, i.e., the mark is used entirely in-state.
- Common Law Trademarks In the United States and other countries whose legal systems are based on English common law, marks are also protected to a certain extent by common law, simply because they are in use as identifiers of the source of origin of the goods or services. California has common-law protection of marks, in addition to state statutes regarding unfair competition. Trademark registration confers certain advantages that are not available through simply using the mark.
- Trade Dress Trade dress refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers, so in that sense it serves as a mark. But the visual appearance of the product itself may also constitute a patentable design if it is original and not functional (see Design Patents). Design patents, however, have limited duration, but the marks used to protect goods (including their non-patented designs), can be protected indefinitely.
- Trade Names A word or group of words may serve as a brand name for a product or service, or it may be the trade name of the company which sells the product . Or may be both. For example, BEST FOODS® and HELLMAN’S® are trademarks for mayonnaise by a company called Unilever (which is a trade name, but not a trademark), while WINDOWS® is the trademark for an operating system of Microsoft Corporation, and MICROSOFT® also is a trademark for various goods and services of that company.
- Fictitious Business Names Individuals and businesses often do business under a name different from their legal given name. For example of an individual, John Smith, a plumber, might do business as “John the Plumber” or “Smith Plumbing and Heating,” which are fictitious business names. If instead of being a sole proprietor of his business, Mr. Smith may have established and own shares in a corporation called John Smith, Inc. If John Smith, Inc. were to do business as “John the Plumber” or “Smith Plumbing and Heating,” these would be fictitious business names of the corporation. There are certain legal formalities which must be followed to do business under a fictitious business name. Trade names which function as marks can be registered, or protected by common law, just as any other mark, provided they meet the necessary level of distinctiveness.
- Trademark Infringement Litigation The use of a counterfeit mark or a confusingly similar mark constitutes infringement, and can cost the owner of the mark lost sales and diminish its reputation. Legal actions for infringement seek to enjoin counterfeiters and imitators, and monetary damages. For more information about intellectual property litigation, click here.
- Internet Domain Names Increasingly, Internet domain names are vital to customers finding companies and brands they trust.
- Domain Name Disputes