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A Trademark Lawyer’s Guide to Protecting Your Brand

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February 10th, 2020

Whether you are a sole proprietor looking to start a business, or a business that has been operating for years, it is important to know how to protect your brand and how to avoid violating the trademark rights of others. Over the years we have blogged about various trademark disputes and what you should know before filing a federal trademark application with the United States Patent and Trademark Office (“USPTO”). Hiring a trademark lawyer to advise you concerning your trademark rights can help build a stronger brand and prevent future disputes with third parties. 

What can a trademark lawyer do for you?

The Trademark Registration Process

A trademark is a word, phrase, symbol, or design, or combination thereof, that identifies and distinguishes the source of goods/services. Prior to federal registration, common law trademark rights vest in the geographic area that the particular trademark is used in. In order to be granted both broad and statutory protection for a mark, trademark owners must apply for registration with the USPTO. Application fees range from $225 to $400 per class of goods/services applied for. If the trademark applicant has not used the mark in commerce yet, but has a good faith intention to do so in the future, the applicant should file an intent-to-use application. Once the application has been received by the USPTO, it takes approximately three (3) months before it is assigned to an Examining Attorney. After the Examining Attorney reviews the application, she/he will notify the applicant of any errors or reasons for refusal, by and through what is known as an Office Action. Common reasons for refusal include situations where a mark is deemed merely descriptive or generic, or a likelihood of confusion with a similar registered mark exists. If the Examining Attorney does not issue an Office Action, the application will be published in the USPTO’s Official Gazette, providing the public with a 30-day period in which to file an opposition to registration of the subject mark. If there is no opposition, the USPTO will issue a registration certificate roughly 11 weeks after publication. In total, if there are no issues with the trademark application, it will take approximately nine (9) months for the mark to proceed to registration. 

Employing a Trademark Lawyer

Applicants located in the United States are not required to hire a trademark lawyer to assist them with the application process. However, foreign-based applicants are required to have a licensed United States attorney represent them in trademark matters before the USPTO. Notwithstanding the foregoing, hiring a trademark lawyer is always recommended for assisting applicants before and after the trademark application process has been completed, specifically in the following areas:

  • Providing a comprehensive search for existing common law, state and federal trademarks that may bar registration on a likelihood of confusion basis;
  • Identification of the correct class of goods/services, accompanied by a valid specimen showing use of the mark in commerce; 
  • Preparing and filing the trademark application;
  • Responding to any Office Actions;
  • In the event that an opposition is filed, representation before the Trademark Trial and Appeal Board (“TTAB”); and
  • Policing and enforcement of trademark rights.

If you are interested in learning more about trademark law, or if you have received a trademark office action or cease and desist letter from a competing brand, please email us at info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided from informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney. 

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LendEDU to Settle Alleged FTC Marketing Law Violations

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February 7th, 2020

In response to an administrative complaint filed by the Federal Trade Commission (“FTC”), Shop Tutors d/b/a LendEDU (“LendEDU”) has agreed to enter into a settlement agreement to address allegations that it violated federal marketing law.  Specifically, the FTC alleged that LendEDU violated Section 5 of the FTC Act by misleading prospective customers into believing that its website featured objective rankings of financial products and services, when, in fact, the rankings actually consisted of paid advertising.  On February 3, 2020, FTC Commissioner Rebecca Kelly Slaughter issued a statement in which she expressed concern over an “increasingly common online trend” in which “purportedly neutral rankings and recommendations . . . actually reflect paid product placement.”  

What marketing law issues does the LendEDU settlement address?   

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Changes Coming to New York Telemarketing Law

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February 4th, 2020

On March 1, 2020, New York’s “Nuisance Call Act” will go into effect, bringing significant change to the State’s existing telemarketing law. The legislation, which was signed into law by Governor Andrew Cuomo on December 2, 2019, is intended to close a loophole in New York’s Do Not Call Law, which originally took effect in 2001. 

How Does the Act Change New York Telemarketing Law?

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Bachelor Contestants Embroiled in Fantasy Sports Law Controversy

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January 31, 2020

Reality television recently helped turn the public’s attention to the world of fantasy sports law.  Following significant backlash concerning the circumstances of her first-place finish in the Millionaire Maker contest, former Bachelor contestant Jade Roper Tolbert was stripped of a $1 million prize awarded to her by fantasy sports operator DraftKings.  DraftKings released a statement via Twitter that after an internal investigation, it had decided to update the standings for the contest and declared a new winner. 

Why did DraftKings change the standings of its fantasy sports contest? 

[Read More]

Proposed Gambling Law Revision Aimed at Protecting Washington State Gaming Industry

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January 30th, 2020

This month, the Washington State Senate and House of Representatives each released separate proposed bills – House Bill 2720 and Senate Bill 6568 – aimed at changing Washington’s gambling law.  In response to the Ninth Circuit’s 2018 decision in Kater v. Churchill Downs Inc., Washington State’s legislature is attempting to redefine what constitutes “illegal gambling games” within the meaning of the State’s Recovery of Money Lost at Gambling Act (“RMGLA”). Through this proposed measure, the Legislature hopes to prevent Washington’s booming gaming industry from leaving the State.

How would this gambling law change protect Washington State’s burgeoning gaming industry?

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California Data Broker Registration Requirements

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January 16th, 2020

In September 2019, the California State Legislature passed Assembly Bill No. 1202 (“A.B. 1202”), amending the California Consumer Privacy Act (“CCPA”). The amendment requires qualified businesses to register as data brokers with the California Attorney General on or before January 31, 2020. A.B. 1202 defines “Data Broker” as “a business that knowingly collects and sells to third parties the personal information of a consumer with whom the business does not have a direct relationship.” (emphasis supplied).  A.B. 1202 carves out exemptions from the data broker registration requirement for most entities subject to regulation under the federal Fair Credit Reporting Act, the Gramm-Leach-Bliley Act, and the Insurance Information and Privacy Protection Act, respectively.  

Who is a Data Broker and what are the data broker registration requirements?

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Cruise Company Defendants Settle FTC-Alleged TSR Violations

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January 14th, 2020

A call center and three (3) individuals associated with a telemarketing effort on behalf of Grand Bahama Cruise Line LLC (“GBCL”) recently settled alleged violations of the Telemarketing Sales Rule (“TSR”) with the Federal Trade Commission (“FTC”).  The FTC intends to litigate this matter against the remaining seven (7) defendants in federal court, including GBCL.  The FTC’s complaint alleges that GBCL and the other defendants committed TSR violations by placing millions of telemarketing calls offering free cruises to telephone numbers listed on the National Do Not Call Registry (“DNC Registry”). 

What are the Alleged TSR Violations? 

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CCPA Law: The Private Right of Action

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January 14th, 2020

As readers of this blog know, the California Consumer Privacy Act (“CCPA”) recently went into effect on January 1, 2020. While the California Attorney General will not bring enforcement actions prior to July 1, 2020, the CCPA’s private right of action is now in full effect. This private right of action provides California consumers with a powerful tool to seek redress if their personal information is accessed as a result of a data breach. Of course, this also means that companies that do business in California may face massive civil liability if their systems are the subject of a breach. 

Who can sue under the CCPA Law, and when?

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