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

Why Register?

The web seminars that I have been doing have been nothing less than fantastic.

One question that someone always asks is, "Why should I register my trademarks or copyrights?"

There are a few reasons for registering.

1. Public notice. In both a trademark and a copyright registration certificate, the owner of the intellectual property is listed. Trademark certificates are filed with the United States Patent and Trademark Office. Copyright certificates are filed with the Library of Congress.
2. Public descriptions. In a trademark certificate, the goods and services are listed. In a copyright certificate, a brief description of the work is filed, along with two copies of the work itself. The owner of the intellectual property is also listed.
3. Geography. All registrations are good in all fifty states and all territories of the United States.
   
4. Barriers to lawsuits. If a trademark is not registered, it is considered a common law trademark. The goods/services and geography of the mark must be argued in court if there is infringement. No infringement lawsuit can be filed on a copyright that is not registered. Should there be infringement before registration of a copyright, the copyright owner loses damages (statutory damages up to $150,000 and attorney's fees) and is only allowed to collect actual damages for the copyright infringement.
5. The power of federal law to help with damages in any intellectual property lawsuit comes only with registration.
   
6. Ease of cataloging. This is a thought that not many people have. If a mark or work is registered, then there is a number. Should the mark or work be sold or licensed, then it is easy to state in a contract what the number is and what the property is.

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People also ask me for examples in different industries. Here are a few.

• Syrup manufacturers are gearing up for a trademark dispute: http://www.nola.com/news/index.ssf/2009/06/snowball_wars.html
• Tony LaRussa (manager of the St. Louis Cardinals) and Twitter settle their trademark dispute: http://www.stltoday.com/blogzone/bird-land/bird-land/2009/06/tony-la-russa-and-twitter-settle-lawsuit/
• Intel and Psion settle their trademark dispute: http://jkontherun.com/2009/06/01/psion-intel-settle-netbook-trademark-infringement-case/
• The Naked Cowboy (owner of many trademarks) sues a station for trademark infringement: http://tinyurl.com/lldt3l

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New Webinar on Thursday afternoon!

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!

Title: Copyright and Trademark Law for Small Businesses

Date: Thursday, June 11, 2009

Time: 3:00 PM - 4:00 PM EDT

After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/268310634

Names Will Never Hurt Me

Good afternoon!

It's a wonderful spring day here in New York City. That means that there is a lot of strange intellectual property and entertainment law issues popping up. Let's take a look at a few of them.

If your business in the United Arab Emirates, "Dubai" can no longer be a part of the trademark. This is the first time I heard about a certain place being banned as a trademark. My guess is that there are too many companies with "Dubai" in the mark, rendering it almost meaningless as a trademark. This reminds me of two issues with trademark law here in the United States: 1) Having the name of a place in a trademark is difficult to register and 2) There are a few words or phrases that are not allowed to be a part of any trademark in the United States.

1) Having the name of a geographic location in an American trademark paints you into a corner. The first corner is if the goods/services come from that location - then the mark becomes descriptive of the goods/services. The second corner is if the goods/services do not come from that location - then the mark is misleading. If a client comes to me with a mark that has a geographic location, then I have to counsel that client accordingly.

2) There are some explicit words that cannot be used in a trademark. Today, that can be found as 36 U.S.C. §220501, which bans the use of the word the word "OLYMPIC" and other related words the United States Olympic Committee "owns" in non-USOC trademarks. Also, let me quote 15 U.S.C. §1052 here for other words that cannot be used in a trademark. A mark cannot "[consist] of or [comprise] immoral, deceptive, or scandalous matter...." So, if a mark has one of the seven words you cannot say on television, it will not get far in the registration process.

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Rapper Lil 'Wayne has been sued for using a song sample in one of his songs. Now, he is trying to go after the producer of the song for indemnification of those royalties and damages due to the infringement. He seems to have this problem again and again and it makes me wonder why nobody is making the clearances more quickly.

It is a simple process (though the paperwork does get to be plentiful when there are multiple samples that an artist has on an album), so I do not understand why those managing his music and his career cannot get the clearances once the recordings are made.


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When registering an Internet domain name, if a trademark is to be used, the domain name must be registered in "good faith." I am fairly sure that the owner of goldmansachs666.com is not a domain name in good faith.

If this situation does not fit into the domain names rules, then I certainly believe it falls under trademark dilution, which I have discussed before in this blog.

Housework. And sex keeps selling (but you knew that).

I did receive a few e-mails about the last entry, so a mailbag will be the next entry to everyone on the mailing list.

In the meanwhile, the blog (oh, how I hate that word) did receive a few accolades and I would like to acknowledge them now.

LexisNexis recognized this blog in its Trademark and Copyright Law Centers. Just look for this blog in the "Top Blog" page just off the centers' main web pages.

The ABA Journal's website has included this blog in its listings.

This blog can also be found on Justia.com's listing of blogs.

Thank you everyone.

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There are some sexy trademark battles, after all.

Victoria's Secret is fighting Sexy Hair Concepts LLC over - yes - the word sexy. The Trademark Trial and Appeal Board ruled that Victoria's Secret's use of the trademark "So Sexy" for its own hair care line causes consumer confusion with Sexy Hair Concepts LLC, which uses the word "sexy" in its own family of trademarks for haircare.

Victoria's Secret has asked a federal court to review the decision because of a study showing that there is not a distinctive association between the word "sexy" and haircare products with Sexy Hair Concepts LLC.

I am in the wrong market (being male, I think, eliminates me from using any hair care products described as "sexy"), but Sexy Hair Concepts does seem to have created a multi-million dollar business (its own briefs filed with the Trademark Trial and Appeal Board state that the company's sales went from $15 million in 2001 to $23 million in 2003).

So, the company has established a trademark that is not descriptive ("sexy" does not describe something intrinsic to hair products - only how the company hopes that the consumer's hair looks after using the products), has strong sales and many advertising campaigns to tie the phrase "Sexy Hair" to its company. Doesn't it - effectively - have the rights to the word "sexy" in hair care?

The goods are similar (hair care products). They are sold in similar channels (with other hair care products). The marks are similar enough (they both have the same main, dominant word - "sexy"). These are the basic reasons that the TTAB upheld the "Sexy Hair" family of marks to stand as strong marks, but Victoria's Secret "So Sexy" marks in the same industry are not allowed.

I do not expect a federal court to overturn this decision.

For all the readers, since the next post will be a mailbag, can you think of a time when the same trademark exists in more than one product?

Wintry Mix

Good afternoon, everyone. I am recovering from Toy Fair last week and another winter illness that hit me this weekend. I hope everyone is in good health!

The College Board is suing a company called Karen Dillard's College Prep that has its own review courses for the SAT and PSAT, claiming that some of the questions in the review course are active questions on the SAT and PSAT. Those claims would mean that KDCP is infringing the College Board's copyright on those questions.

This reminded me of PMBR (now partnered with Kaplan), one of the companies that has a review course for the bar exam. PMBR's specialty is aiding in getting a better score on the Multistate Bar Exam, the multiple choice test that is a part of most states' bar exams. PMBR finally lost a case in 2006 in which copyright infringement was alleged by the National Conference of Bar Examiners, who writes the Multistate Bar Exam. PMBR was fined almost $12 million. Wow.

The standardized-review-test industry is in a difficult position. If a company exists, it has to have a mix of its own questions (which may or may not be good enough) and questions that have been used on exams (they're good enough because they were on exams). If I remember correctly - and I can find no outside source to confirm this - one of the founders of PMBR claimed to have a photographic memory (do any lawyers who took this course remember those claims) and that PMBR had been sued before for copyright infringement (but no success were in those suits). It's a tough balance, having to rely upon a template in an industry that comes from another.

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An attorney is trying to register a trademark. That's not unusual. His mark? "Cyberlaw." Seriously.

I find this to be rather egregious. After all, I took a class in law school called Cyberlaw that was a mix of law and technology. It's easy to find a Wikipedia page on the topic. Even though the word was registered as a trademark in 1995, it expired in 2000 and today it must be considered a generic term that's not right for a trademark registration in legal services.


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I look forward to reading more about the case a man filed in Maryland, claiming that the Baltimore Ravens used the logo he created. The Ravens have claimed that they never saw the logo and then changed their logo when they were made aware of the possibly infringing logo.