Product Trademarks

So, you've just come up with a snappy product name and you've decided you want to trademark it. What should you do next? Is it really as easy as the website at the US Patent and Trademark Office says it is? Can I really do it without a trademark lawyer? These and other questions will be answered in this article.

Once you come up with your product name, you must first find out whether or not that name is already being used for the type of product or service that you wish to use it for. You can do this by doing a web search for the name, searching it through the US Patent and Trademark Office website to see if it's been registered or applied for, or by contracting with a special search company who also check through telephone listings, company names, and has further resources available than either of the previous options. If it's already being used, you will likely have to consult a trademark attorney to find out whether or not your use is different enough from the one already in use, to justify spending your money on trying to promote a name that is going to have to be changed later.

Let's say you can't find any other uses of the name out there. Does this mean you are home free? Well, not quite. If the name you have chosen is merely "descriptive" of the product, such as "Red Rubber Ball" for a rubber ball toy, or "Meaty Dog Food" for a dog food made of meat, it might be great for the consumer, but it is not necessarily a name that the US Patent and Trademark Office will accept as a trademark. A name that is "merely descriptive" is not going to pass muster, and will not be awarded a registration. There are other categories of name that are also not registrable, however they are a bit more complicated, and you really should consult a trademark attorney regarding how best to proceed in those cases.

If your product or service name is not already being used, and is not descriptive, what then? Well, at that point you have a number of choices. You can begin using the name, spending the necessary money to promote it, print it on labels, etc., relying on your "common law" trademark rights, or, if you are only going to be using the name locally you COULD go after a state trademark (check with your particular state for details), or you could then proceed with national trademark registration.

Your "common law" trademark rights are good, and you CAN sue someone for infringement if they were to copy your name for a similar product, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but what happens when you border another state, and the guy just over the way starts using your product name for a similar product? It's rather difficult to limit your "territory" in the days of the Internet and easy transportation. Again, a national trademark would definitely make your life easier. (Please note that you can also register your mark internationally once your company grows to the extent that you are trading overseas. I positively recommend a qualified trademark attorney for international registrations.)

If you decide to go for a national mark, and wish to try to apply on your own, you can go to the US Patent and Trademark Office website at www.uspto.gov and go through the entire application online. In some cases, where the name is very distinctive, and the product is easy to describe and fits neatly into one of the classes for trademarks that you can find on the website, and you can easily send a "specimen" showing that the name is in use in the way you say it is in use, your registration may go through without a hitch and you would receive a registration in approximately 18 months. Then, in most cases, you would be protected against anyone in the United States using your product or service name on a similar product.

Unfortunately, it is not always the case that your application for trademark registration goes through quite this easily. Oftentimes, you will receive what is called an "Office Action" from a Trademark Examiner in the US Patent and Trademark Office asking you to clarify something, rewrite your statement of use, submit a different sample, or asking for more information. Or, your name may be "published for opposition" (a required step in the process) and someone who you didn't find in previous searches turns up to "oppose" your registration. These are cases where you will most likely need the services of a qualified trademark attorney to assist you.

Once you have submitted your application, an attorney can help you with many of the changes that might have to be made to achieve registration status. However, there are mine fields and pitfalls associated here as well. It is entirely possible that you may have made a "fatal error" in the application, and it must all be started over again. If you don't find this out until your first office action, you may have wasted six months or more of time, AND your entire filing fee, just to have to start over again with a lawyer's help. If the problems come up at the time of publication for opposition, this is the point where you're almost entirely through the process. Starting over at this point would likely cost at least a year's worth of effort.

In summary, your product name can be protected either by common law trademark, state trademark, or national trademark. Both common law trademarks and state trademark registrations have serious limitations, but are available. For national registrations via the US Patent and Trademark Office, you CAN do them yourself, but be aware of the pitfalls and possible difficulties involved. Otherwise, consulting a qualified trademark attorney will likely save you significant time, and will probably save you money in the long run.

Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see http://www.mikkibarry.com This article is not meant to be legal advice.

Patent Primer

If you are in the business of thinking up new products or processes, or even if you are just a back-yard tinkerer, consider obtaining patent protection for your inventions.

What a Patent Is - And Is Not

Patents provide their owners with an exclusionary right. They grant the "?right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, ? the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, ?." 35 USC 154(a)(1). A patent is not the exclusive right of the patent owner to make, use, offer for sale, sell, or import the invention or products made by using a patented process; rather it is the right to exclude others from doing so.

A patent is personal property. It can be bought, sold, given away, or licensed. It can be hoarded. The patent owner does not have to practice the invention to keep the protection afforded by the patent.

Types of Patents

Patents come in three basic varieties.

Utility patents are what we usually think of when we think of patents. The utility patent protects "?any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, ?." 35 USC 101. Utility patents protect most inventions. A utility patent usually expires 20 years from the date the patent application was filed, and it is not renewable.

Plant patents protect new plant varieties (except tubers) that can be reliably reproduced asexually and that do not occur in nature. A plant patent expires 20 years from the date the patent application was filed, and it is not renewable.

Design patents protect ornamental designs that serve no useful function on otherwise useful devices. A design patent expires 14 years from the date the patent issues, and it is not renewable.

Why Your Business Needs to Hold At Least One Patent

Patents are valuable commodities. A small company with at least one patent (and preferably a patent portfolio) is almost automatically a more attractive investment for venture capitalists and market investors than is a company that holds no patents. Even banks have been known to take an interest in a patent or a patent portfolio as collateral on a loan. Thus, patent protection can make marketing or research and development significantly easier because funding becomes easier to access.

Patents can become a source of significant income to their owners. Licensing fees paid to patent holders for the right to use the patented technology have turned small companies, or even individuals, into major players within their industries.

Obtaining A Patent

Although the US Patent and Trademark Office (USPTO) accepts patent applications from unrepresented inventors, writing a worthwhile patent application is a skill that is honed with practice. It therefore behooves the inventor or company to hire a registered patent practitioner to develop the patent application in cooperation with the inventor. Patent prosecution (the process of developing the patent application and shepherding it through to issuance as a patent) is a specialty within the legal and scientific/engineering professions.

To obtain a patent, the inventor applies to the USPTO and pays the requisite fees to have the application examined. If the examiner agrees that the invention is novel, useful and non-obvious, and meets the standards for patentability set out in the statutes and regulations that govern patents, then a patent will issue on the invention.

The Patenting Process

When an inventor develops a novel, useful and non-obvious invention, she must reduce that invention to practice before a patent application can be submitted to the patent office. Years ago, "reduction to practice" meant building a model of the invention. Today, the patent application itself can serve as a constructive reduction to practice of the invention, so long as the application tells the reader how to make and use the invention.

Once the invention has been reduced to practice, an application is sent into the USPTO. If desired, this application can have the effect of filing a patent application in approximately 90 countries. This does not actually file the patent application for examination in all of these countries; you must eventually select the countries where you wish to have the application examined and have a patent issued. You may select to have only one country examine the application (if you file in the US, you should select the US), or any combination of all of the countries. You must pay examination fees in each country you select.

The USPTO initially examines the patent application for defects. If a part required by statute or regulation is missing, the USPTO rejects the application entirely. If a part that is needed but not required is missing, then the USPTO grants a filing date but sends the applicant a notice requiring that the defect be cured before the patent issues.

The application is then assigned to a patent examiner, who works with the applicant's representative to determine the exact metes and bounds of the invention. This process is time-consuming, often taking several years to complete. When the examiner is satisfied that the patent application claims the invention properly and the invention is patentable, a patent will issue upon payment of issue fees and correction of any outstanding defects.

Patent Considerations

The following is a list of some of the more common problems with obtaining a patent on an otherwise patentable invention. This list is not all-inclusive.

A patent cannot issue in the US if the invention was patented or published in any country, or in public use or on sale in the US, more than one year before the filing date in the US. Ideally, you should therefore submit a patent application to the USPTO before publishing the invention in any country (including on the internet) or putting the invention on public use or sale in the US.

A patent cannot issue in the US if you file for a foreign patent or inventor's certificate more than 12 months before you file your US patent application. If you file a patent application in a foreign country and wish protection in the US, you must file the US application within 12 months of the foreign application.

You cannot file for a patent on an invention that you did not make yourself. That invention may be patentable, but it is patentable to the inventor or inventors only.

You cannot file for a patent once you have publicly abandoned the invention. If you publish that you dedicate your invention to the public, it is no longer patentable.

Most inventions dealing with atomic or nuclear reactions are not patentable.

You should consult a registered patent practitioner with any questions about the patentability of your invention and to see the invention through the patenting process.

You can find more information about patents at www.USPTO.gov.

Disclaimer 1: This article is based on United States law. It makes no pretense to be accurate for any other country.

Disclaimer 2: Nothing in this article creates or is intended to create an attorney-client relationship between any reader and the author http://www.ipattorneyfirm.com.

Trademarks in India: Law & Procedure

Legislation

The Indian law of trademarks is enshrined in the Trade Marks Act, 1999. The Act seeks to provide for the registration of trademarks relating to goods and services in India. The rights granted under the Act, are operative in the whole of india.

What is a Trademark

A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise 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. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.

Classification of Goods and Services*

Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India).

For example, printed matter, newspaper and periodicals are classified in Class 16 while services in the field of publication comes under Class 41. Time Incorporated, USA is the registered proprietor of the trademark ?TIME? in about 150 countries.

Rights conferred by registration

The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement.

Who Can Apply For A Trademark

Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

Trademark Search

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

Filing and Prosecuting Trademark Applications

An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favour of the applicant then the mark is registered and a certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal.

A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

Duration of a Trademark

The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.

Use of the "TM," "SM" and "(R)" Symbols

Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered.

Remedies For Infringement And Passing-Off

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: - ?an action for infringement' in case of a registered trademark and ?an action for passing off*' in the case of an unregistered trademark.

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff?s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.

However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ?priority in adoption prevails over priority in registration`. In many other jurisdictions like Saudi Arabia, Nepal etc. where the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.

*Passing off originated with the tort of deceit. The doctrine is based on the principle that one trader is not to sell his goods under the pretence that they are the goods of another trader. Historically, marketplace has been concerned with guaranteeing consumers the quality of goods that they had come to rely upon in the course of trade. To further that guarantee, the common law developed the tort of passing off, which helped to assure that a person was representing his goods as being his and not the goods of someone else.

Safeguards to be taken by the proprietor of a registered trade mark to protect his rights: -

The proprietor should use and renew the trademark regularly and in time. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action.

The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.

Use Of Trademarks In Foreign Countries

Trademark rights are granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

International trademark protection

There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. However, Paris convention* provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.

It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. For example, Belgium, the Netherlands and Luxembourg have a single trademark registry, commonly referred to as the Benelux Trademark Register. The European Union consisting of 15 countries has adopted its own trademark system, known as the Community Trademark. The African Organization for Intellectual Property (OAPI), a group of African nations, have replaced their national trademark offices with a common trademark office which offers a single trademark registration valid in all of the member states.

Almost all countries have trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves various considerations. Countries where a trademark is currently in use, but prior use of trademark is not recognized, should be the first to be considered for seeking registered protection. If commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The last group of countries should be those have a history of unauthorized registration of other's trademarks.

* Paris Convention is the most basic and important multilateral convention relating to intellectual property, including trademarks, of which India is a member. It defined the meaning and scope of industrial property rights protection and established basic principles and rules.

P.M. George Kutty Attorney at Law of http://www.pmgip.com

Writing - Copyrights and Trademarks Protect You

When most people consider writing a book, they don't think about Trademarks. However, I highly recommend that you leverage your writing for multiple purposes, and that's why registering a Trademark for your concept is a good idea. If you use your writing as the basis for workshops and other products, it's in your best interests to protect your concepts with a Trademark.

To paraphrase the definition of a Trademark given at the official web site www.uspto.gov, a Trademark is a symbol, a word, a phrase, or a design, (or any combination), used to identify and distinguish the unique source of goods. Note that a Service Mark has the same definition as a Trademark, except as related to services instead of products.

You are not required to register a Mark. Instead, you can establish your rights to the Mark with a record of legitimate use of it. However, there are several advantages to owning a Mark that is federally registered. The most notable is your premier position if anyone else should attempt to use your Mark after your official registration date.

Regardless of whether you've made an application to the USPTO for a federally registered Mark, you may use the TM and SM symbols any time you claim Mark rights. However, the federal symbol for registration (encircled "R"), may only be used after the USPTO has received your application, processed it, and officially registered your Mark. One more thing to note: the federal registration symbol can only be used in connection with the goods or services that are specifically listed in the federal documents.

Of course, there is a difference among the purposes of Trademarks, copyrights, and patents. Patents protect a inventions. Copyrights protect original literary or artistic work.

Your work is copyright protected under common law when you create it. And by printing the work with the copyright notification included, you have signified your claim to the work. However, to have it officially recorded, you will want to register it with the Copyright Office. Keep in mind that the government does not enforce the copyright. If someone were to infringe, it would be up to you to protect your rights through a civil suit.

Cover all your bases and use the means available to protect your creation. By registering your copyright and your rights in a Mark, the safeguards are prepared if someone tried to use your work as their own.

As a publisher of the "A Guide To Getting It" book series, Marilyn J. Schwader has made a study of topics related to writing. She is contributing author of articles for Acorn Writing News your premier reso

Trademark Issues in the Mobil Auto Business

There have always been trademark issues and lawsuits in the mobile auto service business. I know this because I own several such businesses. We first noticed a competitor in the Mobile Auto Detailing Business, which had a name "Mobile Auto Services" another "Mobile Oil Change" and still another "Mobile Car Care". Mobil Oil Company was marketing at the time their Gas Station Service Centers as "Mobil Auto-Services" "Mobil Car Care" and "Mobil Auto Care."

Mobile Oil even filed one case against a company in Mobile Alabama, which used the name Mobile in its Auto Service Business. These cases occur more often than you think. Many times infringers do it on purpose to get easier name recognition, while at other times it is just coincidence, either way as the World gets closer together you can bet the problem will become more prevalent and more serious.

If you don't think this is an issue, check out this case with Kellogg's "Tony the Tiger" and Mobil Oil Company's "Tiger Mart." I guess you have to ask yourself "Whoooose Great"

http://www.eura.com/steffen/jura/aktuelles/texte/tony_kellogs_vs_exxon_tiger.htm

Whether or not you agree with the verdicts in these trademark infringement cases, the company with the greatest dollars often is victorious. Speaking of Victorious...Victor's Secrets, an adult store, has won a case where Victoria Secret, a 4 Billion Dollar a year marketer of lingerie, was not entitled to seek a cease and desist from the Proprietor of Victor's Secret, whose real name was Bob or something like that.

In the case of McDonalds, they sue just about everyone with anything even closely resembling their name and they have so much case law now that they usually win everything, you might beat them but it would cost you $190,000 +, as was the most recent case where it went to a very high court and McDonalds won anyway.

We have seen previously in California where Oil Max was taken by a San Diego company and the former Oil Max mobile oil change company changed their name to Oil Maxx, with two X's; unfortunate, but true. In a Trademark case at the Federal Level this would not even be possible, first use has rights, but even a federal trademark must be defended otherwise you lose certain rights to it's use.

Now we see again Where Pitts Stop Mobile Oil Change is using a similar paint scheme to the Pitts Stop for this major C-Store Chain where some offices also have Oil Changing. If they are ever going to be in the same market one company will have to yield if both companies cannot agree, problem being that there is a good chance they will be direct competitors, in which case there could easily be a lawsuit. One company he fixed sites are based in Las Vegas and the other is based in Riverside CA that is fairly close and so far neither company is so big that it matters. In franchising such as in Mobil Service Stations, Brand Name means a lot. So to will it in the future as one or more of these companies might make it to a point where there is a confusion. In a down economy there is also a potential for one or more companies to go out of business thus abandoning any use of such a mark therefore making such an example of this type very irrelevant.

Before you go into an auto business or any business for that matter, check on the use of the names and pay attention, these issues are easy to fix before you start, but once you grow large the costs in loss of brand name recognition if you have to change the name could be in the millions, think about it. I know you will.

Lance Winslow, a retired entrepreneur, adventurer, modern day philosopher and perpetual tourist.

Creative Ways to Wear Your Sterling Silver Pendants

When you think of a sterling silver pendant, you may think of using it exclusively on a necklace. While this is the most obvious and original use, there are a number of ways that you can display your sterling silver pendants with a little creativity.

First and foremost, your sterling silver pendant is a precious metal. It’s durable, hard-wearing and this means you can maximize your wear without compromising the quality of your jewelry. With this in mind, consider using your sterling silver pendant as a charm. If you own a rolo bracelet, you can attach your pendant with a simple jump-ring. If you own any type of bracelet that will accommodate the bail of your pendant by placing it into the clasp, you will have the instant look of a charm bracelet. Best of all, you can easily remove the pendant and place it back on your necklace and this maximizes your jewelry wardrobe in a way that’s truly ‘charming.’

If you have pierced ears, you may also be able to use two identical sterling silver pendants as charms by placing them on hoop earrings. Many bails will easily slide over the tube of a hoop earring, which gives you the instant look of earring charms. The most important aspect of this approach is to make sure that the pendants aren’t so heavy that they pull the earring down or cause you discomfort. For this approach, a lightweight pendant is the best idea and will give you the best results.

When worn traditionally, sterling silver pendants are beautiful. If you want to enjoy the look of a necklace but desire a more updated look, the task is simple. You can created a multi-strand necklace by threading several chains through the bail and wearing them as one necklace. If you’re still in the mood for a different style, consider wearing your sterling silver pendant on a single necklace that measures 16" or 18". You can then frame this ensemble by adding a plain necklace that measures at least 2" longer than the one featuring your pendant. This gives you an updated look that’s sure to be on trend and in style.

In conclusion, your sterling silver pendants can provide you with a stunning look in neck wear and they can also offer you versatile options when it comes to other jewelry items. By changing the look of your collection by simply using each piece to its greatest potential, you are truly getting the best value for your dollar.

Almost Diamonds, a popular online retailer specializing in sterling silver jewelry, has a complete line of items featuring cubic zirconia and genuine gemstones in a variety of styles to choose from. If you are looking to maximize your jewelry collection without minimizing your wallet, consider the affordable option of sterling silver. Not only is this a precious metal that’s designed to last forever, but it also is an economical way to get the look of platinum or white gold without spending a fortune. For more information on sterling silver jewelry and sterling silver pendants, visit Almost Diamonds at http://www.almostdiamonds.com

Pendants - The Best Gift To the Woman in Your Life

Quoting the famous line by Groucho Marx - Behind every successful man is a woman, behind her is his wife”, let us begin by complimenting women for what they are and what they can turn any person into. Right from the stage of birth and infancy, it has been women who have helped each of us come into this beautiful planet, and learn a plethora of actions, thoughts and words.

But sometimes, words fail us when we want to appreciate the commendable capabilities of every woman in this world. Whether it is a sweet homemaker or a 9-6 executive, there is something about each of them which makes them so special, so exquisite. And when you feel words fail you, the best way to express your gratefulness or your appreciation for them is by gifting them something that each of them just love wearing – jewellery.

Every woman is a young girl at heart, who loves to decorate herself with finery of all sorts. She is beautiful, and she knows how to enhance her beauty. And if you really want to impress her or make her feel special, your best bet lies in a pendant. Through Pendants, you can express what you feel for her in the best possible way. You can choose pendants that represent her or a pendant that best expresses your emotions for her.

The best part about gifting pendants to a woman is that you can gift such jewellery to anyone in your life. A pendant can make a very cherished and memorable gift for your Mom. You can gift a pretty little pendant to your best friend – that tells her what a special place she has in your life. Pendants make for ideal gifts when you are going out on a date. And if you have forgotten your marriage anniversary – may God and beautiful pendants save you!

Paul Shane cherishes a hobby of studying and collecting jewellery, to dig out the making and story behind them, especially the rare or exquisite ones, also the Pendants being used for manufacturing the jewellery. He also loves studying consumer behaviour related to jewellery selecting and buying. At present he is associated with a leading group called E-Beads Limited.

Intellectual Property - Trade Mark Infringement - Figurative Community Trademark

In the case of Sportwetten GmbH Gera v the Office for Harmonisation in the Internal Market (?OHIM?) (2005), it was held that the registration of a Community trade mark was not contrary to public policy or public morality.

On 11 January 1999, OHIM published a figurative mark incorporating the word INTERTOPS in respect of Class 42: bookmakers and betting services of all kinds.

Sportwetten GmbH was the proprietor of the trade mark INTERTOPS SPORTWETTEN, registered in Germany in respect of the same types of services.

On 17 May 1999, Sportwetten lodged an application for a declaration of invalidity concerning the INTERTOPS registration. The application was rejected by OHIM and Sportwetten appealed to the Court of First Instance.

Sportwetten contended that:

▪ registration infringed Article 51 of Regulation No 40/94 read together with Article 7 (1) (f) and (2) because the proprietor was not licensed to offer or advertise in Germany the services in respect of which the mark had been registered; and ▪ the INTERTOPS trade mark was contrary to public policy or to accepted principles in Germany and other Member States.

The Court of First Instance dismissed the appeal and confirmed that:

▪ it is the trade mark itself, not the circumstances relating to the conduct of the person applying for registration, that is to be assessed in order to determine whether the mark is contrary to public policy or accepted standards of morality for the purpose of Article 7; ▪ consequently the fact that the INTERTOPS proprietor was prohibited from offering betting services in Germany did not have the effect of rendering the trade mark itself contrary to public policy or principles of morality; and ▪ therefore there was no grounds for which the decision should be annulled and therefore the application for a declaration of invalidity was denied.

If you require further information contact us at enquiries@rtcoopers.com or Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php

? RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Full service commercial law firm based in the City of London intangible property, intellectual properties, intellectual property, intellectual property law, intellectual property escrow, intellectual property laws, intellectual property attorney, intellectual property definition, intellectual property issues. intellectual property agreement, managing intellectual property, intellectual property attorneys, world intellectual property, intellectual property litigation, intellectual property contract, trademark, copyrights, infringement, copyright, copyright law, copyright protection, copyright laws, trademark search, copyright notice, copyright infringement, trademark symbol, trademark law, trademark attorneys, trademark lawyers, legal patent, patents law, patent laws, patent lawyers, trademark laws, legal trademark, patent law, european patent law, patent infringement law, biotechnology patent law, uk patent law, trademark infringement law

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Warning: Your Domain Name Could Infringe On Trademark Rights!

If you have or are about to purchase a domain name, YOU could be in trouble and you don't even know it yet...

See, what the domain sellers won't tell you is that the domain name you are purchasing or have purchased can possibly infringe on trademark rights and you can lose that domain name or even worse.

Trademark and servicemark laws apply not only off-line but on-line as well and they even apply to domain names.

Now, a trademark generally applies to goods where as a servicemark applies to services. For the purpose of this article I will refer to trademarks as the same rules apply.

A trademark can be a word, name, symbol, or device and it is used to distinguish and indentify the goods and services from one person or company from that of another.

The purpose of a trademark is to prevent confusion in the eyes of the consumer relating to particular goods and services. Basically, they are in place to prevent unfair competition.

So with that said, just because you purchased a particular domain name it does not necessarily mean you have exclusive rights to it.

If there is a trademark in your domain name, the mark owner has a legal right to send you a "cease and desist" letter and possibly take that domain name away from you.

If you don't believe a word I've said so far then I offer myself as proof because it happened to me. I recently lost one of my domain names under this exact same circumstance.

For legal reasons I can't tell you the domain name as I agreed to make no further references to it, but there were two words in my domain name that were associated with a trademark.

Now, I wasn't aware of this when I purchased the domain name. And I definitely wasn't aware of trademark laws.

Don't be ignorant on the subject like I was. You can avoid any potential problems by educating yourself and thereby preventing the samething from happening to you.

Don't make the same mistake that I did!

Do your research before you buy a domain name and make sure there is NO trademark associated with that name.

There are trademark search engines where you can type in a word or a phrase and it will tell you if it is a trademark.

You can visit the United States Patent And Trademark Office (USPTO) website to do a trademark search:

http://www.uspto.gov/

Now, in my case I chose not to fight the trademark dispute and gave up my domain name voluntarily. I felt it just wasn't worth the time, money and headaches to launch a fight over this.

If this should ever happen to you, you do have rights and there are proper channels to go through to settle the dispute. Contact a lawyer who specializes in this field.

And don't even think for one minute that this sort of thing can't happen to you. Trust me. If you have a trademark in your domain name it is only a matter of time before you get that letter in the mail like I did.

There are numerous cases all over the internet concerning disputes over trademark and domain names.

Don't you be one of them...

If you would like more information on the subject of trademarks and domain names then I highly recommend you visit this website:

http://www.chillingeffects.org/domain

This article and any links associated with it are for informational purposes only and not intended as legal advice. As always, speak to an attorney who specializes in this field in the event of a dispute.

Al Martinovic is the publisher of the Millenium Marketers Newsletter where you will find powerful concepts, killer strategies, useful tips and no bull business advice: http://www.milleniummarketers.com

Trademark Your Business - Lessons Learned

Small business owners learn many lessons the hard way - through the school of hard knocks. I recently experienced my own tough lesson concerning the importance trademarking my business name. Like many solo-entrepreneurs on a tight budget, the thought of trademarking my business name was not high on my priority list. Had I placed more importance on it, I might have saved myself some anxious moments, not to mention a few hundred dollars in attorney fees!

As a member of a couple different virtual assistant membership organizations, I often look with interest at other VA's business names and website URL's. One day I noticed a new member announcement for one of the groups and saw a listing for VA Office Solutions. Now this one hit a little too close to home for me - after all, my business name is VA Office Solution. I also noticed that she had a domain name to match.

Have you figured out my first mistake yet? I could have kicked myself for not purchasing the domain name, http://www.vaofficesolutions.com, which is so close to my own domain name of www.vaofficesolution.com. After all, even some of my own clients inadvertently add an "s" to the end of my business name in correspondence. I certainly didn't want people to look for my business on the Internet, and mistakenly find this other website! This could potentially be very confusing for both of us, especially considering we both operate similar businesses and conduct our business virtually, working with people all over the country.

Well the first thing I did was a little research on this domain name. I was able to find the owner and saw that the name had only recently been purchased, and had only been purchased for a one year period. This indicated to me that this was a new business, and she had only just started using this name.

Then next step was to get some legal advice. I had met an attorney who specializes in trademark law at a networking event so I gave her a call and asked to meet with her. I learned that I definitely had a good case, as I'd been using the trademark since 2001. Even though I had not formally registered the trademark with the USPTO (U.S. Patent and Trademark Office), I still had first use of the trademark, which gives me certain rights.

After meeting with the attorney, I decided that my first step should be filing my trademark with the USPTO (http://www.uspto.gov). Now this is something that I could do myself, without paying an attorney, but taking into consideration my own time constraints and her expertise, I decided to let her handle it for me. Also, since there would need to be a letter drafted to the trademark infringer after my trademark had been filed, I just felt more comfortable letting my attorney draft a letter that would be effective enough to get the infringer to stop using the trademark and take the website down.

So how did it all end? Well I got my trademark registered and we sent the letter to the trademark infringer. She agreed to stop using the trademark and took the website down. All in all, the entire process took about three months. I feel very lucky though, as I was able to find this infringer very soon after she opened her doors for business. By getting it done quickly, it should not have been devastating to her business and did not have an apparent affect on my business.

So what should you consider when deciding if you should trademark your business name? First you should conduct some research to make sure you're not infringing on someone else's trademark. You may be forced to stop using it if that's the case. If you decide to trademark your business name, then you must be prepared to enforce your mark. If you allow others to use the mark, then you can face abandonment and risk losing your own trademark. You should also consider the domain name issue. Do not make the mistake I did and let someone else snatch up a domain name that matches your trademark.

Be sure to visit the U.S. Patent and Trademark office at http://www.uspto.gov, and then visit my attorney Heidi Pliam's trademark website, Trademark Edge, at http://www.trademarkedge.com. And if you're looking for a good trademark attorney, be sure to give Heidi a call! Her contact information is on the website.

Jean Hanson is a Certified Professional Virtual Assistant. Discover how partnering with a virtual assistant will give you more time to do the things you love to do! Visit her at http://www.vaofficesolution.com. Jean is also the author of the eBook, Virtualize Your Business - http://www.virtualizeyourbiz.com

Understanding Trademarks And Copyrights

If youve put a substantial amount of work into your business, then you will want to protect the fruits of your labor. If you don't want your competitors to be able to take what youve done and exploit it, youre going to need to take some steps to protect yourself.

1. What's In A Name?

Your business name is the first thing that your customers will see - it has to, therefore, be memorable and easily identifyable. If your customers know your name, then youve already won the first step to getting them to trust you and recommend you to others. You can register a trademark to protect that - a logo or word that distinguishes you from your competition. Coca-Cola, for example, is a trademark of the Coca-Cola Company - if I start selling my own drink and calling it Coca-Cola, or even something like Cocoa-Cooler, then they can sue and force me to stop.

2. More About Trademarks

A trademark doesn't stop with just the name of your business, but can also be obtained for the products you sell. If you have, for example, the blendmaster 5000, you can trademark the name blendmaster. Trademarks can not be obtained for common words. For example, Apple computer doesn't own the word apple. If you are going to get a trademark, however, be sure it's worth it, because they will cost several hundred dollars.

3. Extention Of Trademark

A trademark can be given away and usually only applies in the country where you registered it. Also, your right to use the mark will only last a set amount of years, usually a decade.

4. What Is Copyright?

A copyright is like a trademark, except it costs nothing. The moment you write, draw, or record anything, you have copyright by creation. If someone else tries to copy it without your permission, you can sue. This article you are reading right now, for example, has copyright, although the author (me) has chosen to give away certain parts of it for free. This applies to other things as well, music, graphics, etc. Please note that microchips fall under a unique classification of copyright law and the rules are not the same. Usually, copyright lasts for fifty years after your death.

If you want to give people permission to freely use and redistribute something youve made (like this article, for example), then you have the legal right to do this. You can even give up your copyright on a piece of work altogether, simply by writing on it that you no longer want to own the copyright. It's that simple. Chances are, however, that youll want more protection, not less.

For more great trademark related articles and resources check out http://www.homebusinessuniversity.info

Trademarks - What is a Conflict? What is a Strong Similarity?

Comprehensive trademark research consists of several layers:

• Researching comprehensive databases, such as Lexis-Nexis or Dialog
• Looking for similarities, such as synonyms, word placement & spelling variations
• Consultation with a trademark attorney if Conflicts or Strong Similarities arise

The hardest matter to determine is what's going to be a potential problem for you and what isn't. Once that is ascertained, further research into the company or companies is needed.

First, let's discuss the difference between conflicts and strong similarities.

What is a Conflict? Determining a conflict is very simple - it's any mark that is EXACTLY like yours. If the name AND the goods/services are EXACTLY the same, then it's a Conflict.

What is a Strong Similarity? These are harder to determine and require analysis. A Strong Similarity is a name that is similar enough in Sound, Appearance or Meaning to be confusingly similar to the average consumer. Here are some examples to aid you:

1. Joe has a pending Federal trademark for his auto detailing service called It's in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance and Joe's pending Federal application.
2. Mary has a Federally registered trademark for her clothing line, Scary Mary's Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary's Federal registration.
3. Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.
4. Lorena's online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names.

Naturally, there will be exceptions to every situation. For instance, similar trademarks (in name and goods/services) can coexist peacefully if both parties are comfortable with one another's existence. This can happen if trade areas do not cross (e.g. located on opposite coasts), if they appeal to different consumers (e.g. one sells to private industry while the other sells to the general public), etc.

Two important notes:

1) It's crucial that comprehensive research be conducted in order to decide if the name is truly available or not. Free preliminary sites found on the web are a great place to start but please be aware that this is merely scratching the surface of what's out there.

2) Determining what is a conflict or a strong similarity requires experience and it is very easy to over or under-react to marks you've found. If you're vacillating about any marks, contact a trademark research firm or an attorney for further consultation.

Now, once those similar marks have been found and determined, the next step is to check into them to determine whether or not there would be a likelihood of confusion between the two companies when used in commerce.

How to get started with your competitive check:

1. For Federal trademarks: check the current status of the application by going to USPTO Check Status site and entering the serial number in the appropriate box
2. Do a web search for the trademark name AND for the owner name.
3. Call information to find phone numbers and contact information for each company.
4. Contact each of the similarities to find out specifically what they do and what their business area is.

Specific questions to ask:

• What services do you provide? / What exactly does your product do?
• I notice you are located in _________, are you currently doing business outside that area?
• Do you have a web page that describes your business? Do you have a brochure that you could send or fax me?

It is best to not let on who you are - simply act like an interested consumer.

Once you've checked the status of the application & contacted the companies directly, the next step is to discuss the findings with a trademark attorney. S/he will assist you in determining your next steps.

* No claim is made to the ownership, knowledge or liability of the above personal and/or company names. The above examples are merely for informational purposes and should only be seen as such.

Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.

An Introduction to Trademarks

In marketing, there is a particular strategy known as branding. In many ways, trademarks are designed to protect your brand from use by others.

An Introduction to Trademarks

A trademark is a form of intellectual property. Intellectual property is owned by the person or business creating it. With practically all forms of intellectual property, however, you have to take steps to formally notify the world of your property and protect it.

A trademark is a distinctive mark used to identify a product, company, service or device. When you think about it, you are very familiar with trademarks. At the risk of being sued to the high heavens, the following are trademarks: Coca Cola, Pepsi, Google, EBay and Toyota. Each of these words mean something to you and are readily identifiable with a product or service in your mind. When you think of EBay, you immediately think of an online auction site that was originally created so the owner's girlfriend could trade Pez dispensers [true]. When you think of Toyota, you think of cars. This is the power of brand recognition and trademarks are used to protect them.

A trademark is a powerful thing when it comes to the law. If you obtain a trademark, it is binding nationwide and others are not allowed to infringe upon it in an effort to swipe your customers or confuse the public. With your mark, you can sue to stop the infringement and recover monetary damages suffered. Basically, a trademark is a hammer for stopping nefarious conduct cold.

To obtain a trademark, you must have patience, patience and more patience. The mark is obtained through the Patent and Trademark Office. It is a very slow process. You or your attorney do a search to make sure are not in conflict with any previous marks. You then file an application and begin waiting. Within 8 weeks, the Patent and Trademark Office will send you a notification indicating they acknowledge receiving your application. Just receiving it! You will then wait another 6 months or so to hear if the application is accepted. Often you will receive correspondence asking for clarification or raising a problem. You then provide a response and wait. Months will pass. Eventually, the back and forth will come to final result. If your trademark application is accepted, it will be published and you are protected. The process is so lengthy that it is not uncommon for it take well over a year for the application to be approved. In short, you are going to need a lot of patience.

While obtaining a trademark can take forever, it is well worth the effort. Once you have it, you can keep competitors and others from using the trademarked term you worked so hard to establish. Gerard Simington is with FindAnAttorneyForMe.com - an online trademark attorney directory

Trademarks and Proprietary Rights in Franchise Systems

One of the things that a franchisor has to offer a potential franchisee is their brand name. A strong brand name means the built-in potential customers for the franchisee and his franchise outlet. Each franchisor must stipulate how their trademarks and proprietary information within the confidential operations manual will be used during the term of the franchise. It is far better in my opinion to be upfront with this issue into address it in the franchise agreement prior to the signing or exchanging of any monies for the franchise business. It is for this reason that I developed a clause to put into our franchise agreement, which was a little different than most other franchisors. Below is a copy of that clause;

3.11.1 Proprietary Rights

Franchisee acknowledges the exclusive right, title and interest of Franchisor in and to the Marks. Franchisee agrees that the Service Marks, Confidential Operations Manual, and System are Franchisor?s sole and exclusive property. Nothing in this Agreement or any other agreement will give Franchisee or others any right, title, or interest whatsoever in or to the Service Marks, Confidential Operations Manual, or System as it exists or as it is developed. Franchisee?s license to use the Service Marks is non-exclusive. Franchisor, in its sole discretion, may operate under the Service Marks and may grant licenses to others to use the Service Marks on any terms and conditions Franchisor deems appropriate. Franchisor may make reasonable efforts to protect Franchisee?s rights to use the Service Marks. In those states and nations where applicable, Franchisee agrees to execute on request all documents necessary to record Franchisee as a registered user of the Service Marks.

Franchisee will immediately notify Franchisor of any infringement of, or challenge to, their use of the Service Marks. Franchisor will have sole discretion to take or not to take action, as Franchisor deems appropriate. If Franchisor undertakes the defense or prosecution of any litigation involving Franchisee or any litigation involving the Service Marks, Franchisee agree to execute any and all documents and to do all acts and things, that in the opinion of Franchisor?s counsel are necessary or advisable to carry out the defense or prosecution. This may be done either in Franchisor?s name or in Franchisee?s name, as Franchisor will elect. Franchisee will modify or discontinue use of any franchise names or Service Marks, or will use one or more substitute names or marks, if Franchisor so directs in writing at any time.

Franchisor?s sole obligation in this event will be to reimburse Franchisee for their tangible costs in complying with Franchisor?s direction (i.e., cost of changing signs, stationery, etc.). Under no circumstances will Franchisor be liable to Franchisee for any other damages, costs, losses, rights, or detriments related to any modification, discontinuance, or substitution. All obligations or requirements imposed upon Franchisee relating to the Service Marks will apply with equal force to any modified or substituted names or marks.

Franchisee will not contest, directly or indirectly: Franchisor?s ownership, title, right, or interest in the Service Marks, the Confidential Operations Manual, the Confidential Marketing Manuals or the System; or Franchisor?s exclusive right to register, use, or license others to use the Service Marks, Confidential Operations Manual, the Confidential Marketing Manuals and System. Franchisee will not advertise or use the Service Marks without following Franchisor?s then current guidelines and requirements. These may include, but will not be limited to, the placement of appropriate (C) or (R) copyright and registration marks, or the designations TM or SM, where applicable.

Any and all goodwill associated with the Service Marks, as existing or as developed, including any goodwill that might be deemed to have arisen through Franchisee?s activities, will accrue directly and exclusively to the Franchisor?s benefit, except as otherwise provided by applicable law. Franchisee appoints Franchisor as their agent and attorney-in-fact to amend or cancel any Registered User or Business Name filings obtained by Franchisee or on Franchisee?s behalf that involve or pertain to the Service Marks.

Franchisee acknowledges and agrees at all times and in all respects that Franchisor?s trademarks, trade names, service marks, patents, copyrights and all goodwill (local, regional and national) are the Franchisor?s sole and exclusive property. Franchisee also acknowledges that Franchisee has only a license to use such rights and marks according to the provisions of this Franchise Agreement and in strict accordance with the standards, specifications and procedures as outlined in the Confidential Operations Manual. Franchisee will not take any action contesting or impairing the exclusive right, title and interest of the Franchisor?s in any trademarks, trade names, service marks, patents and copyrights. Franchisee will not represent that Franchisee has any ownership rights in the Marks and Franchisee acknowledges that use of the Marks will not create in its favor any right, title or interest in or to the Marks, but that all uses will inure to the benefit of the Franchisor. Neither Franchisee nor any officer, director, agent or employee of Franchisee shall in any way register or attempt to register the Marks, whether within or outside the Marketing Area, with any government or any other authority, nor dispute or impugn the validity of the Marks, any registration or application to register any of the Marks, Franchisor?s rights to the Marks, or Franchisor?s rights to use Marks or grant licenses to others to use the Marks.

Franchisee must affix and change trademark notices and indications of registration when and as instructed by Franchisor. Franchisee must assist Franchisor to the extent reasonable requested in obtaining or maintaining any registration of any of the Marks to the extent reasonably requested, including by providing advertising samples.

It behooves all franchisors to make an audit of their brand-name ended their proprietary information and decide how best to protect its value. It is advised to discuss this at length, as it is money well spent with a competent, knowledgeable and experienced franchise attorney to best strategize ways to protect your franchisee company and its proprietary information. Do consider this in 2006.

Lance Winslow, a retired entrepreneur, adventurer, modern day philosopher and perpetual tourist.

Trademark: Do I Need One for My Business Name and Logo?

Wondering if a trademark is important to you as a business owner? Let's start with the basics. A trademark is a word, phrase, symbol, or logo that distinguishes and identifies the source of goods of one company or person from another. For example, the name Kraft is trademarked, as is Nike's "swoosh" logo.

The list of what constitutes a trademark is long. A trademark can also be granted to unique packaging such as the shape of Coca-cola's bottle, building designs, color, sound, and even fragrance. Service marks receive the same legal protection, but are used to distinguish services instead of products.

Your business can acquire trade or service marks through the consistent use of a mark. The symbols TM and SM demonstrate the owner treats the mark as a trademark or service mark. There is no requirement to federally register at the trademark office. You are still protected under intellectual property laws. However, if another party uses your mark it can be more difficult to prove your ownership.

To register online with the United States Patent and Trademark Office (USPTO), go to www.uspto.gov. There is a registration fee for each name, logo, and slogan. Federal registration ensures another party is not already using your mark. A registered trademark gives you exclusive rights to use a mark with your particular goods or services. The USPTO can only register trademarks for marks that are used across state lines. A website customers can access in other areas can satisfy this requirement. Otherwise, you will only be able to apply for a state trademark.

Only a mark registered and approved by the USPTO can use the ? symbol. Since the application process can take many months to complete, use the TM or SM symbol in the meantime to establish your intention to use the mark as a trademark. Make sure you keep records as to when your mark was first used in commerce and regulate the use of your mark in the marketplace.

Wendy Maynard, your friendly marketing maven, is the owner of Kinesis. Kinesis specializes in marketing, graphic and website design, and business writing. Visit http://www.kinesisinc.com/resources/articles.html for more articles and free marketing wisdom.

Want to harness the power of kinetic marketing? Sign up for Kinesis Quickies, a free bi-monthly marketing e-newsletter: http://www.news.kinesisinc.com

Overview of Trademark Law

Trademark law gives companies the exclusive right to use a given name or design, called a ?mark,? for the purpose of identifying the source the of that company?s goods or services. Trademark law is an incentive-based system. Because it gives companies the exclusive right to use a mark in connection with certain goods or services, the company can create a brand that is recognizable by the consuming public. That trademark would be associated with and incorporated into every advertisement the company runs for its goods or services. Repetition of those advertisements containing the trademark causes consumers to associate the mark with the goods and, with enough repetition, consumers buy the goods.

A brief, but related, digression. We all know that if you see a product advertised frequently enough, the product will sell. You might even be one of the people who buys the product. The thinking process by which you reached the decision to buy the product is not an intellectual, logical process. It?s a function of the way the human mind works. Continually hearing a repeated message makes the message more familiar, more real, and, eventually, more true. As the adage says, ?even the boldest lie becomes the truth if you scream it loud enough and long enough.? I call this the ?Lie = Truth? Adage. Sadly, I frequently encounter the ?Lie = Truth? Adage in litigation. I also know of some politicians and terrorist masterminds who are experts at exploiting this fact of human nature.

Back to trademarks. The advertising departments at most companies know the ?Lie = Truth? Adage can be very successful in advertising. The cynic would pump his fist in the air yell ?Down with the corporations, and power to the people! All the corporations care about is taking our money at all costs!? While we can point to some recent examples that might make it challenging to argue against this viewpoint, as to the overwhelming, vast majority of companies, that view simply cannot be supported.

Trademark law creates very strong incentives for companies to make the highest quality product possible and to advertise their merits and attributes accurately. Aside from the fact that companies invest anywhere from tens of thousands to millions of dollars into their trademark(s), all it takes is one bad product line to tarnish a companies image in the mind of the consumers who buy their products. Both of these factors hit companies where it hurts them most: in the pocketbook. So, while companies clearly have to perform a balancing act of creating a high quality product, keeping costs down, and pulling in as many purchasers as possible, they have very strong incentives to create a quality product that they will associate with their trademark.

To be eligible for any level of trademark protection, a mark must be ?distinctive? and not merely ?descriptive? of the goods or services. Whether a mark is distinctive and ?how? distinctive or strong the mark is can be determined by a sliding scale. Marks can be (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Whether a particular mark is protected by trademark law depends on the strength category into which it falls.

A fanciful mark is one that is invented for the sole purpose of being a trademark. For example, EXXON is a fanciful mark. It is a word that does not exist in the English language and was created only for the purpose of identifying the oil and gas company.

An arbitrary mark is typically an existing word that is arbitrarily applied to a product or service that has nothing to do with the word. For example, the mark APPLE as applied to sales of computers.

A suggestive mark is a mark that suggests a quality or characteristic of the goods or services. Suggestive marks require some level of imagination to bridge the connection between the mark and the product. For example, the mark PENGUIN as applied to refrigerators.

A descriptive mark is a word that merely describes a quality or characteristic of a product. Descriptive marks are not entitled to trademark protection unless they have obtained ?secondary meaning? under the trademark law. An example of a descriptive mark would be LIGHT to identify a lightweight notebook computer.

A generic mark simply identifies by name a particular product. Generic marks are never entitled to trademark protection. An example of a descriptive mark would be MODEM in connection with modem sales. If trademark protection were allowed in this instance, the company could essentially remove the word ?modem? from the English language.

Henry J. Fasthoff, IV
Principal & General Counsel
HoustonBusiness.com

Trademark Law - The Protection of Famous Trademarks

Famous trademarks are awarded significant protection under the Canadian Trademarks Act. The trademarks act protects the owners of trademarks from others who would use a confusingly similar trademark. Section 6 of the act defines what constitutes confusion. In particular, section 6 states that the use of a trademark causes confusion with another trademark if the use is likely to lead to the inference that the wares or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person or business, whether or not the wares or services are of the same general class. Hence, trademarks which are quite famous, can theoretically be protected against others who would use similar trademarks for completely different products or services. This has lead some to speculate that famous trademarks can be enforced beyond the scope of their original trademark registrations. Hence, the trademark registrations for the famous trademark VIRGIN, used by the Virgin group of companies, could theoretically be enforced against any person or company who used the trademark VIRGIN for virtually any product or service.

The supreme court of Canada in the recent case of Mattel Inc. V. 3894207 Canada Inc. has clarified the law concerning the issue of confusion as applied to famous trademarks. The case involved a numbered company which operated a chain of restaurants in the Montreal area under the trademark BARBIE'S. The numbered company filed a trademark application in order to protect its trademark. The application was approved by the trademarks office, but later opposed by Mattel Inc. on the basis that the mark was allegedly confusing with Mattel's registered trademark BARBIE. The opponent, Mattel, brought forward survey evidence which demonstrated that, in the mind of the people surveyed, that there might possibly be a link between the applicant's restaurant and the opponents trademark. Despite Mattel's evidence, the opposition board rejected Mattel's position. Mattel appealed to the Federal Court. The Opposition board's decision was confirmed by the Federal Court and then again by the Federal Court of Appeal. Mattel appealed yet again to the Supreme Court of Canada.

The Supreme court dealt with two principal issues, namely the nature of confusion and the nature of the evidence used to find confusion. On the issue of confusion, the court accepted Mattel's contention that the BARBIE trademark was famous. Indeed, the justices agreed with Mattel's contention that the BARBIE trademark had reached the status of a cultural icon. Nevertheless, in the court's opinion, the mark was famous only with respect to dolls and not with respect to restaurant services. While the court concluded that resemblance of the wares/services is not a requirement for a finding of confusion, a significant difference in the nature of wares/services used in association with two trademarks was an important consideration in determining confusion. Simply because the BARBIE trademark was famous with respect to dolls, that fame, in itself, did not render the mark famous in other areas such as restaurant services. In effect, the court held that since the "doll" business and the restaurant business appealed to different tastes and largely different clienteles, there was no likelihood of confusion between the two trademarks. As to the issue of the survey evidence introduced by Mattel, the court dismissed it as irrelevant. The court noted that the test is one of likelihood of confusion, i.e. that there must be a finding that the two marks are likely to be confused. The court noted that the survey asked the question "Do you believe that the company that makes BARBIE dolls might have anything to do with this sign or logo". The survey asked a question addressing the issue of possible confusion, not likely confusion. The court seemed to leave open the door for the possible relevance of this type of survey evidence, provided of course the wording of the question resulted in a clear test of likelihood of confusion. Of course, evidence of actual confusion would have been highly relevant; however, no such evidence was submitted.

While this case does seem to limit the scope of protection afforded to famous trademarks, the case did leave the door open to marks whose fame was such that confusion could be found even if the competing mark was used for very different wares/services. Indeed, the court sited the example of the VIRGIN trademark, which has been used with a diverse nature of wares and services including soft drinks, music, games, resorts, cellular phones, clothing, books, cosmetics, credit cards and even air lines. The fame of the VIRGIN trademark may be of such breadth that using a similar mark for an unrelated service or product may result in a likelihood of confusion. In essence, since the VIRGIN trademark is famous in such a variety of different areas, it is possible that the average consumer might be confused if confronted with a similar trademark in a line of business not presently occupied by Richard Branson's group of companies.

Elias Borges is a lawyer and a registered patent & trademark agent with Borges & Rolle LLP in Toronto, Canada. patent lawyer

The Trademark Dilution Revision Act of 2006 and Your Online Business

Creating the right trademark that distinguishes your product or service from others is the key to a successful business both online and off. However, one recent legislative enactment is worthy of note, as it might influence your decision in choosing the next name or graphic for your online business. ?

Like its predecessor, the Federal Trademark Dilution Revision Act of 2006 ("Act"), signed into law in mid-October by President Bush, provides remedies for owners of "famous" trademarks (e.g. trademarks that are widely recognized by the general consuming public in the U.S. as a designation of source of goods or services of the trademark owner). Plaintiffs can file an action for dilution and obtain injunctive relief by showing their trademark has been "diluted" by the unauthorized use of another.

The Act provides for the cause of action known as "dilution." Dilution is a relatively new addition to trademark law that allows a plaintiff to recover from another's unauthorized use of his trademark where such use degraded or diminished the uniqueness and/or distinctiveness of his famous trademark.

Usually dilution is referenced together with the concepts of blurring and tarnishment. The revised Act specifically cites "dilution by blurring" and "dilution by tarnishment" as new causes of action in themselves. In all its forms lies the dangerous misperception that dilution claims require a showing of consumer confusion. Dilution claims, including blurring and tarnishment, require no showing or likelihood of confusion. ?

The revised Act is especially relevant to the online business owner in the initial stages of choosing a trademark name or graphic. Under the new cause of action for "dilution by blurring" you may run into problems simply by choosing a trademark that is similar to a famous trademark that causes the famous mark to lose its distinctiveness. Regardless if you adopted your trademark in good faith with no intention of piggy-backing off of the goodwill of a famous name brand, you may be sued for dilution by blurring. Similarly, under the new cause of action for "dilution by tarnishment" you may encounter problems by choosing a name similar to a famous brand if your use causes the famous trademark to suffer loss to its reputation.

It is particularly important to note that the new causes of action for dilution, dilution by blurring and dilution by tarnishment apply a "likelihood" of dilution rather than an actual dilution standard. This means that a plaintiff need only allege that your use is likely to cause or may potentially cause damage to their reputation or to the distinctiveness of their trademark. This new standard wields great power to owners of famous trademarks and could prove potentially lethal to the unsavvy online business owner or entrepreneur.

However, this new power is not absolute and will likely have little effect on comparative marketing and advertising both online and off. Under the revised Act, it is not actionable to compare your goods with that of a famous brand. It is also not actionable to parody a famous brand or trademarked product. For online marketers, this is important, as the Act preserved the traditional free-market idea of comparative advertising. Thankfully Congress recognized and appreciated the benefits of comparative advertising, maintaining its integrity in the revised Act.

From the recent Google decision and this revised Act by Congress, one can glean that although the strings are drawing tighter around the ever-expanding World Wide Web, it remains open to free-market competition and entrepeneurism. However, as trademark law evolves through judicial opinions and legislative enactments, it is always the best advice to consult an experienced intellectual property attorney before setting your branded product or service out into the world through the ether or otherwise.?

This article was written by Gemma E. Hoffman, a graduate of the Franklin Pierce Law School, specializing in intellectual property law.? Gemma writes select pieces regarding intellectual property for the law firm of Goldstein and Clegg, LLC, a Massachusetts Trademark and copyright law firm. ?

Creating the right trademark that distinguishes your product or service from others is the key to a successful business both online and off. However, one recent legislative enactment is worthy of note, as it might influence your decision in choosing the next name or graphic for your online business.

What are Trademarks and Why You Need to Take Them Seriously

What is a Trademark

A trademark can be any word, slogan, design, symbol, or even a color, smell, product configuration or a combination of these, used to identify the source of origin of particular goods and services. The trademark serves as a source identifier of your goods and services, to distinguish it from the goods and services of others. For example, Nike has a registered trademark with the United States Patent and Trademark Office ("USPTO"). Their mark is used to distinguish their goods and services over other shoe companies. Nike actually owns several trademarks, including design marks as well, such as their swoosh symbol.

Here is another example, remember when Paris Hilton was saying "that's hot" everywhere She applied for a trademark application with the USPTO. If it ultimately gets issued, it doesn't mean that no one else can ever say that phrase. Ms. Hilton's trademark attorney has filed the slogan only in connection with particular specified goods and services. Therefore, if the mark does ultimately issue, she will have federal rights to prevent others from using the mark in connection with the same or similar goods and services she registered the mark with.

Why You Need to Conduct a Trademark Search and File an Application

You are ready to launch a new product, or you are about to start a new business and you have a great name you've been wanting to use for years. But can you Here is a typical scenario: Company A opens its doors (a physical store and online) choosing a name without conducting a trademark search. Company A starts promoting its name by investing in advertisements (print and online such as Google adwords). Months go by and Company A is doing quite well financially, has invested a lot money in advertising and marketing, and its page ranking in Google went up considerable for its desired terms (after spending a ton of money to search engine optimization marketing firms). Then one day, Company A receives a cease and desist letter from Company B's attorney similar to this:

Company B is the owner of United States Federal Trademark Registration No. XX and other trademark registrations pertaining to this mark. Company B uses this mark in the United States in conjunction with its goods and services. Company B legally owns the trademark upon which your online store, products, and advertisement are infringing.

Company B believes that you are intentionally trading on the goodwill of Company B by using a trademark that is confusingly similar to Company B's Trademark and that your use of the Trademark does, or is intended to confuse or mislead customers seeking Company B's products or services. This activity is actionable under federal law and causes you to be liable to Company B in every state in which you have made sales or done business. Your activities are unlawful and constitute unfair competition, intentional trademark infringement and dilution, false designation of origin and/or cybersquatting.

Federal Law provides numerous legal remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, monetary damages, claim to a defendant's profits...

So now what You are thinking it can only be a bad dream, I can't stop using the name I've been using all this time. Think again. Although you may be able to fight or settle in order to prevent your name from being taken away, it typically takes time and a lot of money. This is the sad scenario many business owners face when the neglect to take into account intellectual property rights of others.

Rather than being a victim to bad business practices, the proper way to proceed is to obtain a trademark search on each and every name you intend to use in connection with the goods and services your business is promoting. A competent trademark attorney can conduct the search and analyze the results to advise you whether or not you should use the name. If the name appears to be clear, then it is advisable to proceed with your own application for a trademark in order to serve as a defense and to be used offensively against would be trademark infringers.

Upon issuance of your federally registered trademark, you have the following significant benefits:

* Nationwide constructive notice of trademark ownership

* Evidence of and a presumption of ownership

* Federal court jurisdiction (should you have to sue to prevent infringement)

* Federal registration can be used to obtain foreign registration

* The registration may also be filed with U.S. Customs Service to prevent importation of foreign goods that infringe on the trademark

Trademark Issues on the Internet

What about domain name disputes; use of trademarks in Google adwords advertising or banner advertisements; cybersquatting; how about parody or criticism websites like www.starbucked.com; trademark issues with pop up ads; etc. These are all issues that occur everyday online and are costing business owners millions. Each issue can be resolved in different ways, either by the use of cease and desist letters; negotiations and settlement; a traditional trademark infringement lawsuit in either federal or state court; an Anticybersquatting Consumer Protection Act (ACPA) lawsuit; or an Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding.

 2006 Michael N. Cohen, Esq. No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author. Michael N. Cohen, Esq. is a licensed patent attorney and is the principal of the Law Office of Michael N. Cohen, P.C., located in Beverly Hills, California. Mr. Cohen can be contacted at http://www.patentlawip.com or 310-288-4500.

Trademark a Name - How to Register a Trademark

So, you finally settled on the perfect name for your product or service - it describes the business without being overly descriptive, it tells your customers exactly what you want them to know and it's catchy. That's fantastic! Finding just the right name is vitally important to the success of any product line or service.

Is it required that I register my trademark?

No, not at all. However, registering your trademark, specifically your Federal trademark, does provide you with several advantages:

• The right to use the circle-R symbol as notice to the public about your Federal trademark
• The exclusive rights to the name within your industry across the country
• Establishing brand identity

But what if someone else already came up with that name?

While the name may be unique and distinctive to you, there is a possibility that another party already has prior trademark or common-law rights to the name for your industry. Before you invest time, money and effort into your name, do some research. The first places to check are right at your fingertips - the World Wide Web - and they're free!

Preliminary Search Sites:

• The Trademarks section on the USPTO Web Site
• Your Secretary of State to see if they have a searchable database of names. You can find a listing of all states here
• Major search engines - put your product name in quotes to find exact matches; use keywords with your product name to find relevant hits
• Yellow pages

However, please be aware that this is merely scratching the surface of what's out there. Only comprehensive research will tell you if the name is truly available. But, these links are free & a great place to start, so try them first. If the name appears to be available, then you can move on to getting comprehensive research done by a private company or an attorney.

Ok, so the name is clear; now what?

To register your trademark, you have 2 options - file for a Federal or a State trademark. If you are only going to sell your product or services in 1 state, then a State trademark is the way to go. The trademark form can be acquired through the Secretary of State (see link above). If you are OR will be selling your products or services in at least 2 states, then you're able to file for a Federal trademark. The form can be completed online at the USPTO (see link above).

While anyone has the ability to go online to access these forms,it's strongly recommended to hire a private company or an attorney for the preparation and/or filing of the trademark application.To ensure a successful filing, it's best to leave it in the hands of those with experience.

You found the perfect name - now, make sure it's truly yours!

Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.