Trademark

A Trademark Lawyer’s Guide to Protecting Your Brand

February 10, 2020 by David Klein

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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Related Blog Posts:

No Pimping: Trademark Law Protects the Goodyear Blimp

A Different Kind of Hockey Fight: Does Trademark Law Protect “Play Gloria”?

FUCT?: Trademark Law Ruling Will Protect Certain Immoral and/or Scandalous Marks

No Pimping: Trademark Law Protects the Goodyear Blimp

January 7, 2020 by David Klein

January 7th, 2020

On January 2, 2020, the Goodyear Tire & Rubber Company (“Goodyear”) and the Illinois-based punk rock band, The Pimps, a/k/a The Good Year Pimps (“The Pimps”), entered into a settlement agreement to resolve allegations that The Pimps: (1) had breached a previous settlement agreement entered into between the parties; (2) were infringing on Goodyear’s trademark rights; and (3) had diluted and tarnished the famous GOODYEAR name and mark, the Goodyear winged foot logo and the Goodyear Blimp logo, respectively. This is not the first time that Goodyear has had to use trademark law to prevent The Pimps from using its marks. In 2002, a cease and desist letter was sent to stop The Pimps from using “Goodyear” as part of their band name. Then, in 2007, the parties eventually entered into a settlement agreement after it was learned that The Pimps were continuing to use Goodyear’s trademarks in connection with promoting their performances and in merchandise sales. This settlement agreement was adhered to until 2018, when it was brought to Goodyear’s attention that The Pimps were again using its famous trademarks during performances and to sell merchandise.

How does trademark law prevent a band from using a similar name to that of a tire company?

[Read More]

Tom Brady’s “Tom Terrific” Trademark Application Sacked by Trademark Law

August 29, 2019 by David Klein

August 29, 2019

On May 24, 2019, Tom Brady’s company, TEB Capital Management, INC. (“TEB”), submitted separate intent-to-use trademark applications for “Tom Terrific” (the “Mark”) in connection with international class 025 for T-shirts and shirts, and international class 016 for collectible trading cards, sports trading cards, posters, and printed photographs, respectively. These applications were refused under principles of trademark law for falsely suggesting a connection with former Mets pitcher Tom Seaver, and naming a living individual, other than Tom Brady, who would be associated with the goods. For New York Mets fans, this was an obvious decision, but for the United States Patent and Trademark Office (“USPTO”), there was more nuance involved.

Why were Tom Brady’s “Tom Terrific” applications refused?

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A Different Kind of Hockey Fight: Does Trademark Law Protect “Play Gloria”?

July 18, 2019 by David Klein

July 18, 2019

In April, the St. Louis Blues (the “Blues”) hockey team made an improbable run from being dead-last in the standings in January, to winning the National Hockey League’s (“NHL”) Stanley Cup Final at season’s end. Throughout that run, Laura Branigan’s 1982 disco hit “Gloria” became the Blues signature song used to celebrate a win. Credit to the team’s use of the track can be given to the bar The Jacks NYB (“Jacks”), where five Blues players went to watch a National Football League (“NFL”) playoff game between the Philadelphia Eagles and Chicago Bears. As the Philadelphia Eagles went on to win that night, “Gloria” was played repeatedly at the bar in celebration. The next day, the Blues beat the Philadelphia Flyers (and played the song in the locker room following the win), initiating a 29-9-5 run to end the regular season. As the Blues moved out of the league cellar, Jacks raised money for food, drink and televisions by selling “Play Gloria” t-shirts. And as the Blues advanced into the playoffs, other vendors looked to monetize the “Play Gloria” slogan. Jacks believes that it has been deprived of revenue from these other vendors and has turned to trademark law for compensation. Particularly, on or around May 8, 2019, a trademark-based cease-and-desist letter was sent to Arch Apparel, a St. Louis-based t-shirt company that had seen quick success in selling its “Play Gloria” t-shirts.

Has Arch Apparel infringed upon Jacks’ trademark law rights?

Establishing Rights Under Trademark Law

A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods. In order to register a trademark, the applicant must provide a valid example of how the trademark represents the source of goods in commerce (the “specimen”). The United States Patent and Trademark Office (“USPTO”) distinguishes between a valid specimen and one that is simply ornamental or decorative. In the past, the USPTO has refused trademark applications which include specimens that were slogans displayed on t-shirts on the basis that they did not identify the source of the subject goods and were simply ornamental or decorative in nature.

Turning to the dispute at hand, we understand that Jacks has submitted an application with the USPTO for the “Play Gloria” mark. The application has yet to be assigned to an examining attorney. The specimen offered by Jacks in connection with its trademark application is a t-shirt with the slogan “Play Gloria” emblazoned on its front. It is possible that the examining attorney finds that the specimen is ornamental or decorative and, therefore, not protectable under applicable trademark law.

Other Barriers to Enforcement

The USPTO will also refuse registration for trademarks that merely convey an informational social, political, religious, or similar kind of message, depending on how a term or slogan would be perceived by the relevant public. For example, the application for “Boston Strong” was denied for this reason because sports fans co-opted “Boston Strong” as a rallying cry. Similarly, the USPTO may find “Play Gloria” to be an informational social message that is perceived by the St. Louis community to signify a win and not as a source identifier for Jacks.

Copyright Protection

In Star Athletica, L.L.C. v. Varsity Brands, Inc., the U.S. Supreme Court ruled that design elements of clothing may be copyrighted if the design could be copyrighted separately from the applicable item of clothing. Copyrights are extended to original works of authorship with a minimal degree of creativity. As such, it is possible that Jack’s “Play Gloria” design is protectable under copyright law.

Status of the Dispute

Despite receiving a cease-and-desist letter, it seems that Arch Apparel has decided to continue selling its “Play Gloria” t-shirts. In doing so, it can be assumed that Arch Apparel believes that Jacks does not have any protectable trademark rights to (or copyright interests in) “Play Gloria” t-shirts.

As this interesting dispute demonstrates, if a third party is infringing on your trademark rights, or accusing you of infringement, it is important to consult with a seasoned trademark attorney who can explain your options. If you are more interested in learning more about trademark law, or if you are involved in a trademark dispute, please email us at info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided for 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 legal advice of an experienced attorney.

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FUCT?: Trademark Law Ruling Will Protect Certain Immoral and/or Scandalous Marks

June 27, 2019 by David Klein

June 27, 2019

On June 24, 2019, in a 6-3 decision, the United States Supreme Court ruled that barring the registration of the trademark “Fuct” would infringe upon the applicant’s First Amendment rights. In 2011, Mr. Erik Brunetti (“Applicant”) applied to register the word mark “Fuct,” an acronym that (he maintains) was derived from the phrase FRIENDS U CAN’T TRUST, for use on various articles of clothing. During the initial filing process with the United States Patent and Trademark Office (“USPTO”), the Examining Attorney refused registration because he found that Fuct was the phonetic equivalent of the word “Fucked” and, therefore, an “immoral or scandalous” mark that was not eligible for registration. On appeal, the Examining Attorney’s refusal was affirmed by the Trademark Trial and Appeal Board (“TTAB”). The Applicant then challenged the TTAB’s trademark law ruling in the Court of Appeals for the Federal Circuit on First Amendment grounds. The Federal Circuit reversed the TTAB’s decision and certiorari was granted.

Why is it unconstitutional to refuse the registration of certain immoral or scandalous trademarks?

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Common Law Trademark Rights in “Florida Avenue”

May 1, 2019 by David Klein

May 1, 2019

common-law-trademark — Common Law Trademark Rights

In Tampa, Florida, two local proprietors are negotiating over the use of “Florida Avenue” in their respective branding. Florida Avenue Brewing Company was the first to use the geographic location in its name and believes that Florida Avenue Eats, located only a mile and a half down the street, will cause consumers to be confused that they are patronizing an establishment associated with Florida Avenue Brewing Company, when in actuality, they are not. Beyond the legal arguments involving the common law trademark rights to “Florida Avenue,” the community has weighed in on whether they think that Florida Avenue Brewing Company has the right to prevent other companies from using “Florida Avenue” in their product/service names.

Does Florida Avenue Brewing Company have trademark rights that it can enforce against Florida Avenue Eats? And, if so, should Florida Avenue Brewing Company enforce those rights when viewed in the court of popular opinion?

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Important BOOKING.COM Decision – Trademark Lawyers Take Note

April 11, 2019 by David Klein

April 11, 2019

trademark-lawyer — Trademark Lawyers Take Note

In February 2019, the US Court of Appeals for the Fourth Circuit affirmed the district court’s summary judgment ruling that found that BOOKING.COM was not generic, but a descriptive mark with acquired distinctiveness. Trademark lawyers are intrigued by the fact that, as pointed out in Judge James Wynn’s dissenting opinion, the decision departs from most prior rulings in “.com” cases, where generic Secondary Level Domains (“SLD”) combined with Top Level Domains (“TLD”) do not generally add up to protectable marks (for example, LAWYERS.COM and MATTRESS.COM).

How did the Fourth Circuit determine that the mark BOOKING.COM was descriptive?

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Girl Scouts Involved in Trademark Law Dispute with Rebranded Boy Scouts

November 9, 2018 by David Klein

November 9, 2018

On November 6, 2018, the Girl Scouts of the United States of America (“GSUSA”) filed a complaint against the Boy Scouts of America (“BSA”) in the Southern District of New York for trademark infringement, unfair competition and trademark dilution. GSUSA has been in operation for over 106 years and is currently serving about 2 million active members. In contrast, BSA’s membership has been dwindling. Currently serving 2.28 million members, BSA is at less than half of its peak membership level reached in the 1970s. In an attempt to increase enrollment, BSA has rebranded, announcing that it would accept girls into its Cub Scouts program starting in 2019. In its complaint, GSUSA submits that BSA may not, under federal and New York trademark law, use “SCOUT,” “SCOUTS” and “SCOUTING,” in relation to offering youth development programs to girls.

Why is GSUSA bringing this lawsuit? [Read More]