The Four Items Most People Get Wrong in a Trademark Application

Many business owners believe they can save money by doing a Federal trademark application. But what they do not know are the pitfalls in filing the application themselves.

1. Incorrect Trademark. Yes, this might seem very basic – but many times, business owners register what they think their mark is instead of registering the mark that the business is using.

2. Incorrect Owner. People and corporations are different legal entities. Very often, a small business owner puts himself or herself as the owner of the trademark when it is the corporation who owns and uses the trademark.

3. Incorrect Date of First Use. What is the date of first use? It is the date that the trademark was used on any material related to the goods or services your company sells.

4. Incorrect Description of the Goods and Services. As a part of filing for a Federal trademark, the application must list the goods and services that a mark represents. This list must be complete. If the mark is not used in conjunction with any of the goods or services listed, then the registration is open to attack.

If any of these items in a trademark application is incorrect, then the trademark application or registration is subject to cancellation.

Fraud Upon the United States Patent and Trademark Office can be triggered by even an innocent mistake. If a trademark application is fraudulent, the trademark application or registration can be cancelled.

See an attorney to discuss all aspects of a trademark application – from what the mark really is, to who the owner is, to the first date of use, to the goods and services it represents.

Anthony M. Verna III, Esq.

Law Offices of Anthony Verna

law@nyctrademarks.com

(917)348-0108

Would you like to see this as a PDF to save and print? http://nyctrademarks.com/temp/wrong.pdf

Happy New Year

Happy New Year, everyone.

I wish everyone a healthy and prosperous 2010.

This year marks new milestones for me, too. I have left Weiss Imbesi PLLC. Of course, I want to thank them for the time that I spent with them. It was fruitful.

Right now, I am forming a partnership with a wonderful attorney - but since there is nothing official, I am working as a solo attorney. I am still handling my clients' matters - and they have seen that there has been no stoppage of work.

Do you have a trademark or copyright issue? Does your company have a social media policy? Does your company have a blog? Talk to me about how to do it all - correctly.

Did you receive a copy of my Intellectual Property Self Survey? It has a $600 value - and I am still giving it to my readers at no charge.

You can still find me at http://nyctrademarks.com and http://nyccopyrights.com - that does not change.

I am still on Facebook at http://facebook.com/anthonyvernalaw - that will not change.

I am still on Twitter at http://twitter.com/avernalaw - that will not change.

Happy New Year!

Music - now and then

This was a good week.

I hope it was a good week for everyone else.

Now that Friday is almost ending, I hope everyone has some kind of relaxing weekend plans. Even if that means just letting your brain rest after a long week of work. (I know many of you out there had that.)

Can I share some music with you? I have been listening to and digging Raul Midon a lot lately. Yes, certainly, the classics of my playlist are R.E.M., Paul Simon, Tori Amos, The Clarks, Charlotte Martin, and Marvin Gaye. They still go round and round in my head, but Raul Midon has been taking up more and more space. Besides his being an amazing guitarist, I love the ups and downs that his songs record. It is always a personal journey through his lyrics, and his music mixes pop, rock, jazz, r&b, and latin beats.

Check him out. I know you will love it.

***

Speaking of music, there is a ticking time bomb in copyright law - that is the ability for musicians and composers to recapture their copyrights in music they make.

Music has always been treated as an exception to the Work-for-Hire provisions of copyright law.

This means that musicians are going to be recapturing their copyrights in about 2013. So, bands will be taking their music and selling their music directly. Yes, for all the musicians out there reading this who are not signed to a major label, you are already doing this. In fact, is this not what all businesses do? We sell our goods and services ourselves.

But, in exchange for keeping only a percentage, the major labels have better reach in sales and publicity than just the musician would.

So now those recording labels will have. . . a lot less music to sell.

Will the law change? Will record labels survive without these big back catalogues from the 1970s? It looks like they will have to churn out more current content that consumers can buy.

Do you have a copyright question? Call us at 212-201-5473.

***

Two years ago, ICANN (the international organization) started to test the ability to have Internet domain names be in alphabets outside of the usual Roman characters.

ICANN will begin to take applications for domain names to be in other languages and alphabets starting on November 16th. The first domains will appear live next year.

What does this mean from a trademark perspective?

It means a lot more websites to protect from trademark infringement and trademark dilution.

Let me give you an example. Your company has a website. Your company probably has several different forms of the website (for example, http://coca-cola.com and http://coke.com lead to the same place). If it does not, it should.

What happens if Chinese characters sound similar to "Coca-Cola"? Will the company want to buy all those domain names? Will the company want to police all those domain names for cybersquatting issues.

Can your company afford not to? http://nyctrademarks.com
***

If you are new to the list, do not forget to hit "reply" in your inbox and ask about your free copy of our Intellectual Property Self Survey, it is a $600 value which we will give to readers at no charge. Start a dialogue with us about your trademarks and copyrights.

Do not forget to read up on our Intellectual Property Security System. We can speak to you about it.

Do you have a question about copyrights or trademarks? Call us! 212-201-5473

Protect yourself. It's cold outside.

It has been a busy, busy two weeks here. Yes, the Yankees won the World Series, defeating my Phillies 4 games to 2. I also did go to Game Four with my father and my sister. Family baseball fun in. . . November. We all wore lots of layers of clothing.

It was cold and chilly with the wind whipping around the upper tiers of Citizens Bank Park. (I drove to Philadelphia for the weekend.) It was a wonderful game, with Phillies third baseman Pedro Feliz hitting a game-tying home run in the bottom of the 8th inning. In the top of the 9th inning, Phillies' pitcher Brad Lidge had the game in hand, had two outs, had two strikes to Johnny Damon, who was able to get on base. Then he stole second. Then he stole third on the exact same play.

It was disheartening, but I went to a World Series game and I went with family and had a lot of fun. It was cold and you had to protect your skin with lots of layers of clothes.

***

Speaking of protecting yourself, many clients ask me about filing copyrights. I do file copyrights. Remember, when a work falls under copyright law, the creator of the work has a copyright in the work. No lawsuit can be filed without registering the copyright in the work, however. Also remember that damages that can be recovered go down when the copyright is not filed before infringement happens.

As for the filing copyrights, there are two mistakes that many people and businesses make when filing the copyrights themselves:

1. Filing separate works as collections.
2. Not understanding who the copyright owner is.

The main issue I find in copyright registrations is that a lot of people file many different works in one copyright registration. This is most common in the photography industry, where it is easy to collect photographs.

The problem? When a copyright represents many different works, then the copyright really represents a collection. Infringement upon a collection is weaker than infringement upon an entire work. So, make sure that you file each work (no matter what medium the work is on - be it canvas, film, or digital).

Another problem is understanding who the copyright owner is. The creator of a work that falls under copyright law is the copyright owner. The only exception to this is when a work-for-hire agreement is made and signed (it MUST be a written agreement). Make sure that the correct owner is listed in the registration (and make sure that the creator is listed, too, but just as a creator).

Copyright questions? Call us at 212-201-5473 or send an e-mail to law@nyctrademarks.com for more information

***

I have not been making a big deal of the Shepard Fairey copyright case or the revelations that Fairey himself has changed his story on the witness stand. But his lawyers are still on the case. Permit me to yawn. Ultimately, this case will turn on the work - not testimony from people. Whether or not the original Associated Press photograph was the inspiration for the "Hope" poster that Fairey made is not the issue - the issue is whether the poster is transformative enough.

***

Google is still fighting to claim the ANDROID trademark.

***

Yahoo settles a lawsuit that Mary Kay filed for allowing unauthorized Mary Kay resellers to advertise on Yahoo.

***

Lil' Wayne is sued for copyright infringement. This sounds like it has been said before.


Copyright law questions? Trademark law questions? Call 212-201-5473 to speak to Anthony Verna or send e-mail to law@nyctrademarks.com for more information.

A Text Will Lead You

Good evening!

My Phillies are in the World Series. AGAIN! The Angels just defeated the Yankees to force a return to New York - my current home. But you never give up your teams. So I stay with my Phillies, and we have lots of Philadelphians here in New York making it big in the big city, so I never have home that far away.

***

Another week means it is time for another announcement. Text "avernalaw" to 50500 and you will receive my electronic business card. Do it right now if you are in the United States. In the "to" space, the number is 50500. The entire message is "avernalaw."

(Cellular phone company charges may apply.)

Do not forget to become a fan on Facebook at http://www.facebook.com/anthonyvernalaw.

***

There has been a great response to last week's announcement to the Intellectual Property Security System and to the Intellectual Property Self Survey - which helps with the first step in the system: Review.

Once again, if you have not asked for it, ask for the survey. It is a $600 value, which will go to you - my loyal readers - at no charge. It will help your company re-focus its intellectual property efforts. Send an e-mail to law@nyctrademarks and ask for the Intellectual Property Self Survey for your company.

What is great is that in the last week, I have received clients who are trying to focus on step two: Registration. You must register in order to receive all the benefits that the law provides.

***

We have all seen the "Hope" poster, with President Obama as the subject, that was created by Shepard Fairey. During the trial, Fariey admitted that he lied when he said he did not use the Associated Press' photograph as the inspiration for the photograph. Now the art world is up in arms about it.

I do not want a client who will lie to the press and then change his or her story when on the stand. It does not help the case one bit. Certainly, juries will not look happily upon a witness who changes his or her story - especially when that witness is one of the parties of the case.

I do want to look at this logically. This blog has tackled Fair Use before and I want to emphasize this: Fair Use is all about the work. It does not matter if Fairey used the original Associated Press' picture as inspiration or not. George Harrison was found to infringe a song even though he did not know he was writing a new song based upon the original work. If Fairey knows or does not know, the legality of the "Hope" poster does not change.

The original picture and the new poster are so similar that - purposefully or not - the picture has to be the inspiration for the new poster. The legal question is if the new work has transformed the original work so much that the inspiration was fairly used.

And that question is still very difficult to answer.

You must follow the system.

Good day, everyone!

I was in Los Angeles last week for a seminar, and as soon as I returned to Newark, NJ, the cold weather hit me.

(Though I was staying in Santa Monica, where it is colder because of the ocean.)

Last night was fun, as my Phillies played - and won - in the first game of the National League Championship Series. Today's game is a 4 PM Eastern start, so it looks like baseball fans have to cut the work day short to watch the early game. That's the conundrum for baseball - the 8 PM playoff games end late, but the early games do start early. So, what is baseball to do? It, so far, has been putting the Yankees-Angels game late - New York and L.A. - as it knows the Yankees get ratings. But it still inconveniences a lot of people who are fans of the Phillies and Dodgers (especially a 1 PM Pacific start on a weekday).

Lots of my clients have conundrums, too.

• What do I do when my trademark is registered?
• Do I need to continue with the trademark opposition proceeding that has been filed against me?
• Do I need to register? (You already know my thoughts on this from being loyal readers.)

It's here where I'd like to introduce a few new items:
1) The Intellectual Property Security System. There are four simple steps to the system - Review, Search, Register and Monitor. I can lead you through all these steps to help you and your company protect its intellectual property better. Call me at 212-736-0007 x4 and ask me about the Intellectual Property Security System.

2) A part of the system is our Intellectual Property Self Review kit. It's a fantastic kit that is developed for companies to help re-focus and understand their intellectual property. Companies, with the review kit, will be able to clearly understand what intellectual property they have and the importance to register each piece of intellectual property. This is a kit with a $600 value - it is what we sell it for - but because you are all loyal readers of the blog and newsletter, I am willing to give it to you at no charge. Just let me know that you read the blog or newsletter. Call me at 212-736-0007 x4 and ask me about your free copy of the Intellectual Property Self Review Kit. We'll mail it out to you.

*****

Do not forget to become a fan on Facebook: http://www.facebook.com/anthonyvernalaw

Do not forget to follow me on Twitter: http://twitter.com/avernalaw

*****

Recently, a judge in New Jersey ruled for a company in a trademark infringement lawsuit and awarded $570,000. What that tells me is that there is an importance for the last step in the Intellectual Property Security System - Monitoring. Many companies believe that it is acceptable to register the IP and go on with life. In fact, that is only a part of the solution.

Intellectual Property owners must monitor their marks in order to see how it is being used in our large, complex modern world. Is it on the Internet? Is someone speaking poorly of those marks? Is someone co-opting your mark? If you are not monitoring your trademarks, you do not know and you miss out on the ability to enforce the rights you are given by registering your mark that is in use.

*****

In the Republic of Ireland, the Church of Scientology lost a trademark battle to a company called Prosperity Recruitment, which is an advertising recruitment agency.

I find it funny because of one of the quotations: Prosperity Director, Gary Mullan said: “It is amusing that an Irish recruitment company’s services could be considered to be a close match to the goods and ’services’ described by the Scientologists”.

Continuing the Theme on Thursday

We'll review the basics in a webinar on Thursday at 12:30 PM!

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Host: Anthony Verna

Call Title: Trademark and Copyright Law for Small Business
Call Date: Thursday, September 17, 2009
Call Time: 12:30 PM Eastern
Confirmation Number: 25417784
Primary Dial-In: 800-749-9945
Passcode: 7413 501#

You will need to dial in to hear and click the link at the time of the meeting to see the web portion.

To join the web conference: http://web.meetme.net/r.aspx?p=2&a=70542541778473
For a current list of alternate numbers: http://web.meetme.net/r.aspx?p=6&a=70542541778473

Click here to add to your Outlook or iCalendar!

Copyright Event this Week

The FCC and the Copyright Alliance (a non-profit group aimed at helping to protect artists' rights under copyright law) are combining for a workshop in person and online.

On Thursday, September 17th, 2009, The Role of Content in the Broadband Ecosystem will take place. Its website is: http://www.broadband.gov/ws_bb_ecosystem.html

The event is fully interactive - notice that the FCC is now on Twitter - and questions will be accepted from the room and from the web.

This workshop will address issues pertaining to online content and its role in the broadband ecosystem. Questions to be addressed include:

• How does the illegal copying of online content impact job creation in sectors of the economy that produce digital content?
• What measures should be taken to address piracy and other mechanisms for illegal delivery of content? What agencies should have jurisdiction?
• What are the tradeoffs between content protection and innovation in industries other than content?
• Are there business and regulatory models that preserve innovation, increase consumer choice, and deliver economic returns to content owners?
• What are other countries doing to protect content online and to encourage the availability of content that may help drive broadband adoption? What are the best practices in these areas?
• Do measures to address piracy have the potential to raise barriers to market entry by, for instance, making it more difficult to market their products?

I hope you are able to join this event.

***

Do not forget that you can find me on Facebook at http://facebook.com/anthonyvernalaw and on Twitter at http://twitter.com/avernalaw for more daily discussions on trademark and copyright law.