Using A Mark You Cannot Trademark-Be Careful

When coming up with a logo or mark, there are plenty of options. Sometimes, people make a choice that cannot be trademarked and this leads to problems.

When you start a business, you probably have visions of huge success. At the same time, it can be difficult to plan for it when you are sitting in your home office or garage and just getting started. Unfortunately, this is when many of the most important steps are required to be taken. One is picking a mark to identify your products or services.

A mark is simply something that identifies your products or services to consumers. Classic examples of this include ?coca cola?, the Nike Swoosh and many others. When you see one of these marks, you immediately identify them with the company and product in question. In legal terms, the mark is indicative of a certain quality of products or services.

When coming up with your mark, you have to be careful. Not everything can be trademarked. For instance, ?Google? is unique and clearly something that can be trademarked. When you see the Google logo, you know it refers to a search engine that allows people to find things on the web. Now, what if Google was instead called ?search engine?? The phrase is already commonly used and associated with other sites providing search functions for consumers. As a result, it cannot be trademarked.

So, why does all of this matter. Try to look into the future for your business. What if you become a huge success? Remember, Microsoft started with a couple of people and so did Google. You could be the next one. That being said, what if you ?go big? with a mark that cannot be trademarked? Other businesses will be able to use your mark! If you want to talk about a business disaster, this is it.

Imagine if Google could not be trademarked. Every other search engine could use the term in their marketing and on their web pages. This would cause massive confusion among consumers. More importantly, those consumers would be diverted to competitors of Google. Do you think that would hurt Google?s bottom line? You bet.

When starting a business, try to use distinct names and logos that are not common place. Get your trademarks. As the business grows, consumers will come to know your mark and identify it with your product or service. This, of course, is the key to getting them to come back and buy from you.

Richard A. Chapo is with SanDiegoBusinessLawFirm.com - providing trademark registration services.

Microsoft Loses Patent Lawsuit

One of the top news stories this week that got virtually no popular press involves the judgment against Microsoft by a small company with a big software patent.

University of California and Eolas Technologies, Inc. hold a patent which Microsoft, according to several judges, violated with its popular Internet Explorer Web browser.

Without going into painful technical detail, the patent involves the "ActiveX" technology enabling Web browsers to display both web pages and content such as streaming audio, Flash, QuickTime video and other "rich" or "dynamic" content.

Despite heated input by the Internet community to invalidate Eolas' patent because of its broad nature, Microsoft lost every appeal and effort to get the patent nullified.

Bottom line: Microsoft faced two choices. First, they could pay the patent owner and keep things moving along, business as usual (much the way Blackberry did recently when a judge found them guilty of patent infringement).

Second choice: Microsoft could avoid future licensing fees by changing their IE browser and removing the offending code.

Which do you think they chose? Ding-ding-ding!

You guessed it, Microsoft chose to avoid paying millions more by simply removing the offending code.

Unfortunately, that decision means a bit of trouble for a few million web designers who use Flash, streaming movies, and more.

Ultimately, the change to IE may force visitors to sites with rich content to click on an object to enable it before they can interact with it.

Not a huge deal. However, time will tell what ultimately happens and the actual impact on sites running rich content.

But before everyone starts screaming that "The sky is falling" and "our websites are broken," let me ask you a question.

Do you really think that companies like Macromedia (makers of Flash) and sites like Google Video will let a few changes in Internet Explorer put them out of business?

I don't think so!

If anything, this change will force companies to step up to the plate and discover ways to serve dynamic content that does not depend on ActiveX.

Sure, it will mean some pain for both content creators and users in the short term, but in the end I honestly believe that, through innovation, we will all end up with a better solution than what currently exists.

In other news today...

** Hollywood Goes Online **

Six major movie studios recently announced their intentions to start selling new-release movies via Internet download from the site MovieLink.com.

But before you jump for joy at watching "Brokeback Mountain" on your pc, understand a couple of facts.

You can't burn the movie to DVD, and the downloadable films carry a price tag of around $15-30, a price comparable or more than a physical DVD you can purchase at Wal-Mart.

As a rabid DVD consumer and enthusiastic computer user (with six in my home office alone), I can tell you right up front, there is no way in @#$%* I'll pay 20 bucks for a movie I can't "veg" out with in front of the TV.

Are they insane?

Until it gets to the point where you can download a new- release movie, burn it to DVD or put it on your iPod, downloadable flicks will remain, at best, a novelty.

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Trademarks - What You Ought to Know

Trademark law affects every business in the United States. Don't assume that your new business name, new product name, slogan or logo has not already been used commercially OR trademarked!

No business name may be used in any one of the following cases, IF there is a conflict or similarity in sound, appearance or meaning & industry:

• A Federally registered trademark anywhere in the U.S., or
• A State registered trademark in any state they do business in, or
• Used within same geographic trade area with "first use" Common-Law protection.

There are over 2,500,000 Trademarks, and over 16,000,000 commercial Common Law trade names in use. ANY existing Federal Trademark, State Trademark or commercial Common Law use takes precedence over your new business or product name, IF there is a conflict or similarity in sound, appearance or meaning & industry.

When you create a new business name, product name, slogan or logo, you will begin to establish your legal rights to your name in the geographic trade area where you do business based on Common-Law usage.

However, the question is: Is your trade name truly available?

It is a company's obligation and it is in their best interest to enforce its marks. Trademark owners have up to six years to find and order businesses to change any infringing trade name.

Infringing trademark companies could face costly attorney bills ($200 to $350 hour), immediate renaming of their company or product, recall of products, forfeiture of profits, re-marketing of the new name, and marketing change-over for a new name, including logo, signs, corporation, forms, checks, packaging, yellow page listings, web site, etc.

Comprehensive research is truly a need for any new business name, new product name, new slogan or new logo.

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 http://www.tmexpress.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.

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.