Trademark fees go up…way up

Registered Stamp Showing Copyright Or Trademark

The US Patent and Trademark Office, as of January 14, has changed a number of fees in connection with trademark registration.

Notable is the jump in the fee for filing a paper application for trademark registration. The per-class fee for filing an initial application is now a whopping $600, an increase of $225 over the previous $375. The fee for filing an online application has increased from $325 to $400, a bump of $75.

It has always been more costly to file a paper application as opposed to an electronic one, but now the difference is $200 rather than a mere $50. Why the big difference? According to the USPTO’s website, it is part of “incentivising.” Electronic filing is more efficient and it costs less. Filing online is therefore preferred and encouraged.

Other fees increased

A number of other fees have increased as well. Filing a Statement of Use has doubled in cost, from $100 to $200, and a Request for an Extension of Time for Filing a Statement of Use has gone up $75. There is even an apparently new charge called an Additional Fee for Expedited Service, a “rush” charge. It’s $160.

In addition to providing incentive to file electronically, the increases are also part of an effort to “better align fees with full costs,” according to the government website.

[See Trademark Fee Changes at uspto.gov].

It should be noted that these price increases are in connection with federal trademark registrations only and do not affect trademark registrations at the state level. Most states in the US offer trademark registrations at a much lower cost than what the USPTO charges, though the protection is more limited. In addition, trademark rights also derive from simply using a trademark in connection with goods or services. These are called common law trademark rights, and are limited to the geographical area where the mark is used. To prove common law rights in a trademark, it must be shown that the one claiming ownership of the mark was the first to use the mark in a geographical area.

 

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Trademark law protects a company’s name and reputation

Registered symbol in gold (3d)

A logo can represent a company’s good name

A logo is often one of a company’s most valuable assets. A logo mark may represent the company, its image and reputation, or the reputation of its products or services. Many logos are protected by trademark registration. Many more benefit from trademark protection without registration. Because a mark may be such a valuable asset, many companies have branding guidelines in place to carefully control the use of company logos.

It’s a given that a company’s logo should appear prominently in its signage. But what should a sign maker do if a sign buyer orders sign work featuring logos that it does not own? Should sign companies act as trademark police and require proof of permission before they put a logo on a sign? Most do not. They simply produce the work in good faith, assuming that the sign customer is not infringing by displaying the logo, though many sign shops, when asked to place a national logo on sign work, make an effort to obtain branding guidelines from the sign buyer or the national chain.

Occasionally, a retailer will say, “We didn’t ask permission to use their logo, but we sell their product so it will be okay to use it.” The retailer reasons that he or she is giving their supplier free advertising—and who would object to that? In reality, the use of a protected logo without permission constitutes infringement. And rather than view the display of it as free advertising, the company owning the mark may be more concerned about how it might affect its name and reputation. Why so?

Here is a purely hypothetical example. A siding company believes it would be a selling point to put the Alcoa logo on their signs since they use Alcoa aluminum products. So they order signs with the Alcoa logo on them. Alcoa later contacts the siding company and tells them they are not allowed to display the logo on their signs and to remove it. They explain to the contractor that, while they appreciate his loyal business, his use of the logo without permission is trademark infringement.
Why does Alcoa not view this as free advertising in this fictitious scenario?

Trademark law protects a reputation by preventing confusion

Trademark protection is designed to prevent confusion among consumers. Alcoa may have no desire to be in the siding installation business, but the sign with Alcoa’s logo could give consumers the wrong impression.
And what if the siding company does shoddy work? The improper use of the logo on the sign could conceivably tarnish Alcoa’s reputation or the reputation of its products. It may have taken many years of aggressive marketing for Alcoa to develop a respected name in the aluminum products industry, and protecting this good image may be a high priority for the company. So trademark protection can serve to protect the good name of a brand. Further, if a siding customer is unhappy enough, they may decide to start a lawsuit, even naming Alcoa in the suit, since the Alcoa logo is on the sign.
Consequently, Alcoa avoids this whole bundle of problems by simply not allowing their logo to be used on siding company signs. They may feel that the small amount of advertising the sign gives them is not worth the potential problems.

fairly-good-siding-co05

It’s true that many people, including a well-intentioned siding contractor, may view this as a case of a large corporation using a ‘big stick’ unnecessarily. But that’s because most people don’t realize the potential danger to a trademark of allowing even small infringements to go unchecked. Trademark protection, for it to stay in force, requires watchful management. Trademark protection for a mark may live or die depending on how vigilant the trademark holder is in defending it. The government has put the responsibility for policing infractions squarely on the shoulders of the trademark owner. There are no ‘trademark police’ provided by the US Patent & Trademark Office (USPTO), or any other government agency.

Trademark attorney Erik Pelton, in a recent blog, gives this advice:

Deal with any potential infringements quickly. The more investments of time and money someone puts into using a name [illegally], the more attached to it they become and the more complicated getting them to stop is likely to be.

Erik M. Pelton, Dec 22 blog entry     Pelton is not only a patent and trademark lawyer, but also a former examiner for the USPTO.

Can you trademark a color?

 

colorsplash3

 

Yes, US trademark protection can be obtained for a color or color combination, though it is not commonplace.

United Parcel Service, for example, owns brown as a color mark in the transportation and delivery industry (reg. no. 2901090). This doesn’t mean that no other company can use the same brown. But it does mean that no other company in the field of transportation and delivery can use brown—for delivery trucks or other trade dress.

The purpose of trademark protection is to prevent confusion among consumers. When a brown delivery truck pulls up and a driver in a brown uniform gets out, most people assume it’s UPS, not Fedex or another delivery service. The brown color has become so associated in the minds of customers with UPS that it has become a distinguishing mark for the company, though it has not always been so. That’s why early efforts by UPS to register brown as a trademark were not successful. It took time, and aggressive marketing, for brown to acquire meaning for UPS. In trademark law, when a mark acquires meaning that it did not have in the first place, it is said to acquire “secondary meaning.” This acquired secondary meaning has allowed UPS to apply for and receive trademark registration for brown.

Similarly, Owens Corning has been granted several trademark registrations for the color pink for insulation, adhesive tape and other construction-related products (reg. nos. 1439132, 2090588, 2380445, 2380742, 3165001). 3M has a trademark for canary yellow for PostIt notes, and in the telecommunications industry, T Mobile has a trademark for magenta.

To qualify for trademark protection, a color cannot be “functional.” That is, the color cannot be essential to the use or purpose of the product or service. This is why Deere and Company was denied a trademark registration for green in the early 1980s. There are many makers of farm and garden equipment. Should only one of them be allowed to paint their tractors green? It seems reasonable that green, the color most commonly associated with plants, gardens and farms should not be owned exclusively by one farm equipment company. It would seem to be an unfair advantage in the marketplace. On the other hand, specific combinations of green and yellow for specific applications have been registered by Deere. A green tractor body with yellow wheels, for example. Or a green harvester with a yellow stripe. multiple2

 

Links:

Blog article by Susan Perera   The struggle of Deere and Co. to trademark color.

Chinese court awards trademark victory to John Deere  This decision marks the first instance in China of a trademark litigation based on colors. The infringer was a heavy equipment company based in Beijing. Deere was given injunctive relief and awarded 450,000 yuan in damages.

 

A paper by Belinda J. Scrimenti for the American Bar Association Section of Intellectual Property Law’s 27th Annual Intellectual Property Law Conference in Arlington, Virginia. The pdf found on this page contains a short, but fascinating, history of trademark litigation regarding colors.

 

 

 

 

 

 

 

 

 

clipart by Freepik.com

 

 

A trademark registration is not always about protecting a logo design.

trademark-symbol

Often, in the  US, a trademark registration is for the wording only rather than the design of a logo. The terminology used for this type of mark on a US Trademark application is “standard character mark.”

A registration for the design of a logo would be a separate application. What is the difference between the  two types of registration? Which is better?

Standard Character Mark

A registration for a standard character mark covers all variations of the wording that you want to protect. It covers the wording in any letter style and any color or size. That means it covers the wording if it’s part of a logo design, too. In other words, a standard character registration is more comprehensive than a registration that is for only the design of a logo, because it covers all forms of the wording (including its use as a domain name).

A design mark

On the other hand, a trademark registration for the design of a logo applies only to the exact design as it appears in the drawing that you send with the application. So, what happens if you want to change the design later, or add or remove a word? You will have a problem, because you will be required to apply for a new trademark registration. In effect, then, a registration for a standard character mark may be stronger, more versatile, than a registration for a design mark.

Why not register the wording of a logo as a trademark and its design as a copyright? Because, so often, a logo does not qualify for copyright protection in the US.  [see related post:  Can logos receive copyright protection?]

Consequently, many trademarks are protected by two trademark registrations, one for the wording and one for the design. You may even see two registrations just for the design (one in color and one in black and white). If you want to apply for only one trademark registration to save money, an attorney may advise registering a standard character mark rather than a design mark. There are more infringements related to words than to designs. Sometimes, though, a particular word mark may be considered “weak,” so that protecting the design may take on greater importance. Again, the advice of a trademark attorney can be valuable.

The ideal, of course, is to protect both wording and design by separate registrations, though it’s more costly.

 

Links:

USPAT page explaining character mark versus designed mark   This link is to a government page and has some illustrations.

Law 4 Small Business   This post is by attorney David Ferrance from 2015. Clear and succinct explanation of character mark versus design mark.

Words or Logo or Both?   A more involved explanation from the blog of attorney Eric Waltmire.

 

Trade name vs Trademark. What’s the difference?

 question mark

What is a trade name? Is it protected like a trademark? Can another business use the same trade name as yours?

What is a trade name?

In the US, a trade name is the name of a business or company, whether the business is a sole proprietorship, a partnership or a corporation. A trade name is, generally, not protectable as a trademark unless it is actually used to distinguish and identify the goods or services of a company.

Can a name be both a trade name and a trademark? Yes. Many are. For example, the name Sony, when used on a company letterhead, functions as a trade name. When it is used on TV sets sold in stores it is a trademark.

Can a trade name be protected? Yes, it may be protected under state statutes or principles of unfair competition. But it is not protected as a trademark unless it identifies goods or services.

Is it possible for a company to have a trade name that they cannot use as a trademark? Yes, because it is possible for a chosen trade name to be an infringement of an existing trademark already owned by another company. But what if the trade name I choose for my company has been registered through a government agency, and the registration was approved? How could it be an infringement of someone else’s trademark? Moreover, if the name is already owned as a trademark by another company, how could the state possibly approve it for my trade name? The possibility of this happening highlights a common myth regarding “trade name clearance.” The myth is that trade name clearance equals trademark clearance. It doesn’t. They are not the same.

Trade name registration

If I start a business I may use my personal name for the business or I may choose a fictitious name—fictitious because it’s not my real name. This is my business name or commercial name, my trade name, also known as a DBA (Doing Business As) name. I may register this name through the county clerk’s office in the county where I do business or I may register it through the state. Or, I may hire an accountant to incorporate my business and he or she will file my corporate trade name with the state. This filing process often involves a “name clearance” through which the state or local government agency approves my chosen name for the business.

What is the purpose of this name filing with the government? It’s mainly to inform the government, especially those agencies that levy taxes, of the existence of my business. It also can, at least theoretically, prevent me from taking the same name as an existing company, which could be viewed as unfair competition. But this name clearance is by no means exhaustive. Note this comment on the website of Sterne Kessler Goldstein Fox, a law firm in Washington, DC: “The chosen [trade] name is generally accepted by the state agency unless the register already contains a registration for the same name for another company. In general, the agency does not analyze whether a proposed name is similar to a previously registered name prior to registering it as a business name. The agency typically looks only for exact matches within the states registry (and differences in names can be as minor as the use of Corp. versus Inc.). In some cases a state may even allow companies with the same name to register in the state.” [italics added]

By contrast, a trademark search can be far more extensive. A trademark search is not a matter of simply looking for names that are the same, but will look for names that could be confused with each other. That’s why a search will not just look at the names, but will analyze the products or services represented by the names, and how they are sold. The standard for trademark infringement is whether there is a likelihood for confusion. A likelihood of confusion could exist even if the names are not exactly the same. Further, trademarks may actually use the same terms if there is no chance of consumer confusion (for example, Ace hardware and Ace bandages).

Trademark clearance includes checking not only the trademark registry of the US Patent & Trademark Office, but since each state has a trademark registration process, it will also include a search of the trademark registries in all 50 states. If the product or service is to be offered outside the US, a trademark search will include the registries of other countries as well. A thorough search will also include a search of trademarks in the US that may not be registered (trademark rights are acquired through use, not registration).

In understanding the difference between trade names and trademarks, it can be helpful to note that the two terms normally function as different parts of speech: a trade name is a noun, while a trademark is an adjective. For example, Sony Corporation is a trade name when it refers to the company. Coca-Cola Bottling Company is also a trade name. But when used with goods (Sony televisions, Coca-Cola products) these terms are trademarks and function as adjectives.

Is trademark infringement really wrong?

When a company takes legal action over a perceived trademark infringement, it is sometimes accused of being a bully.

A pub in the St. Louis area began selling a drink with a name similar to a Starbucks drink name. So Starbucks sent a cease-and desist letter to the owner. In the world of intellectual property, a cease-and-desist letter is a routine first step in defending a trademark against infringement. These types of letters are sent all the time and are rarely newsworthy.

The sending of the Starbucks letter, however, was picked up by news media and the result was a little storm of bad publicity, with Starbucks being accused of heavy-handedly overreacting. Public sentiment favored the pub owner and the account read like a David and Goliath story.

My first reaction was, “but, trademark infringement is wrong, isn’t it?” My next thought was, “wait a minute, who is overreacting here?” A cease-and-desist letter is not heavy-handed. It’s a warning shot, the smallest warning shot possible, really. It is intended to stop an infringement at its earliest stage, to nip it in the bud, before costly litigation becomes necessary.

As I learned in intellectual property class at the community college, if a company does not vigorously defend its trademarks against even small infringements, it can have a harder time defending them later from more significant threats. Failure to defend a trademark in the early stages of infringement can weaken a trademark suit later in court.

But Americans love an underdog. A little guy is often perceived as the good guy and a big corporation is seen as the bad guy for no other reason than size. It’s a well-worn Hollywood stereotype: small is good, big is bad. The bigger, the badder.

On the other hand, might this little hoo-ha over a Starbucks trademark be more than just an example of the underdog effect at work? Could it also be an indication that many do not view intellectual property as legitimate property? And that infringement is not really wrong? I suspect so.

The truth is, intellectual property, be it a trademark or a copyright, is property in every sense of the word. It can be bought, sold or leased. It can be bequeathed, inherited, left in a will. In some cases it can have great value. It is worthy of protection, just like any piece of property that has value.

If someone broke into the offices of a large real estate company and stole a dozen “For Sale” signs, who would blame the company for prosecuting the thief? Would the company be accused of being a bully, of overreacting? Yet, to a company like ReMax Real Estate its trademarks are far more valuable than a few yard signs. That’s why it is known for aggressively pursuing infringers. A trademark may be one of a company’s most valuable assets. It has been estimated that the Coca-Cola logo is worth 70 billion dollars. Is it any wonder that a company would take measures to protect such a valuable asset?

I believe that many people do not fully appreciate that intellectual property really is property. A house or land, even a car is easier for them to think of as property, because you can see and touch these things. The loss of these is often difficult to recover from financially.

For a business, the loss of valued trademarks could inflict irreparable damage. It is no wonder that for certain types of willful trademark infringement in the US, the penalties can be in the millions of dollars.

 

 

Is a typestyle protected by copyright?

No, it isn’t. At least, not in the United States. On the other hand, a font IS protected by copyright.

Does this seem confusing? If so, it’s because so many people use the term “font” to refer to a “typestyle” or “typeface.” The two terms are really not interchangeable.

A typeface, or typestyle, is a set of letters, including numbers, punctuation and assorted glyphs, that all share similar design characteristics. They may have similar shapes, strokes, serifs and other details. In printed form, they all look to be part of the same family due to their design. In the United States, a letterstyle  does not qualify for copyright registration.

So what is a font? Though many people use the word ‘font’ as a synonym for letterstyle, it is really what is used to produce letters in a form that can be viewed. A font is a piece of software, a program really, that allows a computer to command a printer (or router, or laser engraver, or embroidery machine) to produce the letters in physical form. Originally, a font was a set of metal type pieces in a particular size and typestyle for loading onto a printing press. To create a complete font of type was labor-intensive and expensive. Nowadays, a font is generally composed of unique digital code. This code is protected by copyright, and it cannot be copied without permission from the copyright owner.

Additionally, font names can be protected by trademark law, just like brand names. This is why you can buy a font (actually, a license to use the font) for your computer for printing letters that look exactly like Helvetica, but they are called something else. Someone owns the Helvetica font, the name and the underlying software, and that’s not the license you bought. You bought a license to use a differently programmed piece of software with a different name. But what you print looks just like Helvetica letters, because the Helvetica font owners don’t own what the letters look like, the design.

Of course, this is US law. The laws on fonts and typestyles may  and does vary in other countries.

Helvetica       Helvetica

Helvetica   Swiss