What does it mean for a contract to be not enforceable because of a lack of consideration?
Answer: In order for a contract to be enforceable, the mutual promises of the parties must be supported by “consideration”. Considerations means each party gives something of value to the other. The reason that the courts and legislatures generally require some form of consideration is to insure that the promises being made are not merely a casual statement, and accident, or gratuitous – in short – to make sure the people making the agreement really mean it. Consideration looks at whether the parties have assumed an obligation on the condition of an act or forbearance of another. Except in cases of employment matters, Minnesota courts generally do not look at the adequacy of the consideration being offered – only whether some consideration has been exchanged. For written agreements, the court presumes valid consideration. While adequacy of consideration is not usually analyzed, vague or indefinite terms of consideration (including other conditions of the agreement) may invalidate an agreement, unless it is clear from the subsequent actions.
In contracts related to copyrights and trademarks, this mean that things like royalties might be subject to discontinuance if the only thing that it does is to grant a right to use the IP and it turns out the licensor in fact does not have the rights in the first place (assuming the licensor did not know that the rights were invalid). However, if the contract also goes on to provide that the licensor will discontinue use of the rights for their own use, this forbearance may be enough to be deemed adequate consideration to enforce the contract.
Consideration is important as a part of any contract. When setting up a licensing arrangement it’s important that you evaluate what the parties are exchanging.
What are the benefits of a federal trademark registration?
Answer: There are many benefits of a federal trademark registration, both direct and indirect. Direct benefits are numerous and include:
- National protection of the mark;
- Ability to obtain injunctions stopping infringers;
- Ability to use the registration to apply for foreign trademark registrations;
- Greater access to the federal court system;
- Assistance from the United States Custom in stopping counterfeit and infringing goods from importation; and
- Attorneys fees when proper notice has been attached to the goods or services. I
In addition to these considerations, trademark registration provides indirect benefits in the form of being able to point to it when protecting marks used for social media accounts, protect against improper use in search engines, ability to obtain new domains in sunrise periods, and providing great leverage in UDRP and URS disputes against cyber-squatters.
Why Provide these Benefits
Providing these benefits serve two primary functions. By granting these rights to trademark owners the government helps to incentivise business owners by helping to protect the goodwill embodied in their brands. This in turn helps protect consumers by letting them know that when they buy a product, that the product originated from the brand owner and not an impostor. This ability to build a portfolio of valuable business assets has obvious benefits to any business owner.
Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.
I filed a trademark application recently and suddenly I have been receiving papers from all these companies saying that I owe more money to finalize my trademark. Is this some kind of trademark registration scam?
Answer: In December (2016) the Department of Justice announced that two men had pled guilty of a scamming owners of US trademark applicants. Through there company called the Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO), the men, Artashes Darbinyan and Orbel Hakobyan, stole approximately $1.66 million from registrants and applicants of U.S. trademarks through a trademark registration scam by sending fraudulent solicitation for additional filing fees.
The USPTO worked with California law enforcement in this case and takes a number of steps to fight solicitations from companies fraudulently promising to protect trademarks. These questionable solicitations have been growing problem, both nationally and globally over the years. To help combat this, the USPTO has taken a number of steps.
1) Each Office Action regarding an application includes a warning and a link to the USPTO Non-USPTO Solicitations page.
2) A bright orange paper with a warning is sent along with every registration.
3) the USPTO maintains a list of non-USPTO solicitations on our Non-USPTO Solicitations page that the public can use to check against and they encourage the public to contact them with new solicitations so that the list can continually be updated.
Similar scams involve organizations contacting registrants claiming to represent foreign trademark offices, claiming that someone is attempting to register their trademark in their country’s registry. They then offer to register the mark in that country for you to prevent to claim jumper from moving in.
A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking. The USPTO continues to provide its ongoing full support to U.S. law enforcement officials working on this issue.
Attorney Ken Kunkle was recently quoted for an article in the Washington Post about potential conflicts of interest involving President Trump’s trademark portfolio. For a complete read see: Airplanes, golf courses, trademarks and more: Trump’s government will oversee his businesses .
Am I protected with a common law trademark – without federal registration?
Q: I recently started professionally my photographs in the US. I registered the copyright for photos and have decided on new name for my company. I think the name is pretty distinctive and I am not aware of anyone else selling a similar product by the same name. Do I have to register my company name as a trademark to prevent others from using it or can I rely on the laws concerning common law trademarks?
A: Kenneth’s answer: Since your mark is not registered you are limited to the common law trademark rights. Common Law Trademarks are generally limited in scope to the geographic area where the mark is known (think of a restaurant where everyone has heard of it in one town, but is unknown in another). Common law trademarks can be enforced (but not as well and as easily as registered marks) in both state and federal courts. In short, it depends on your long term business objectives. While registration may not be required for everyone, deciding what’s right requires actual consultation with people knowledgeable about trademarks.
Links for Common Law Trademarks
While some folks might think trademarks can be a little scary, I know that they can also be a little fun.
|G&S: Processed cereal-based food to be used as a breakfast food, snack food or ingredient for making other foods.Serial (no pun intended) 85120586 and 85120583|
|G & S: Beer.Serial: 86110135Yes – a stumbling disheveled guy is your image for beer – why didn’t this get rejected as merely descriptive?|
|G & S: Books in the field of children’s literature.Serial: 86271191Whenever I put my child to bed, I always like to talk about monsters too – keeps her quiet when I tell her how she will get eaten-up if she asks for a glass of water.|
|G & S: Parlour games.Serial: 86222077What the heck is a Haint you ask? Well I had to look it up too – God bless American entrepreneurship.http://www.haintinabox.com/|
|G&S: Magazines featuring women modeling in horror-themed pictorials for entertainment purposes.Serial: 86506372And Playboy decided to get out of the nudie business – perhaps they just weren’t putting enough dripping blood on them?|
|G & S: Clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies.Serial: 85803000My first reaction was “How did this get by Major League Baseball??”, then I noticed that they have filed a pending cancellation action (http://ttabvue.uspto.gov/ttabvue/v?qs=85803000)|
|86446861G & S: Sporting Goods, namely, skateboards.AAARRGGHHH – Happy Face Vampire|
|86392542G & S: Repair of computers, cell phones, and tablets.I can live with that. Sometimes my computer feels a little brain dead.|
|86396002G & S: Firearms.I particularly like the description on this one. “The mark consists of a vampire skull with bullet hole.” Don’t they know it take stake to the heart – zombies need to be shot in the head.
See How to Kill A Vampire (http://www.gods-and-monsters.com/how-to-kill-a-vampire.html)
|86331944G & S: LED (light emitting diode) lighting fixtures.Really? Shouldn’t the light be used for killing Vampires (see above)|
How long has Trump been planning this?
Apparently Mr. Trump decided he liked the sound of “Make America Great Again” as far back as 2012, when he first filed an application for the phrase with the Trademark Office (Serial 85783371). However, in the application he seems to be anticipating using it for a Political Action Committee, rather than for his own candidacy. The required list of services he listed were as follows:
- Political action committee services, namely, promoting public awareness of political issues. (IC 035)
- Fundraising in the field of politics. (CIC 036)
However he was apparently not ready to use it back then, as he did not finalize the registration until earlier this year – about a month before he formally announced.
Trademark Issue #1
- Bumper stickers; decorative decals for vehicle windows; stickers; advertising signs of papers; advertising signs of cardboard; placards and banners of paper or cardboard; printed publications, namely, pamphlets providing information regarding Donald J. Trump as a political candidate; posters; pens
- Clothing, namely,sweatshirts, T-shirts, tank tops, long sleeve shirts; headwear, namely, caps and hats; baby clothing, namely, one piece garments; children’s clothing, namely, t-shirts
- Campaign buttons, and
- interestingly a series of items referencing “Political campaign services”.
This last items underscores an interesting question. Why include this if he already had the rights for “Political action committee services” – while I won’t pretend to know, the answer may lie in the fact that a Political Action Committee recently popped up using the same name which begs the question that if the trademark is Trump’s – he is either coordinating with the PAC, or he needs to police it and demand they change the name in order to preserve his rights.
Trademark Issue #2
On August 5, 2015, a another party filed an application for “Make America Great Again” for
- All purpose sport bags; Backpacks; Duffel bags; Knapsacks; Tote bags; Umbrellas and
- Footwear; Hats; Jackets; Pants; Shirts; Short-sleeved or long-sleeved t-shirts; Shorts; Socks; Sweat shirts; Swim wear
This application was filed as an intent to use application, while Trump’s August 13 application alleged prior usage as of 4/12/2015. Trump’s second August 13 application however, listed the identical items “All purpose sport bags; Backpacks; Duffel bags; Knapsacks; Tote bags; Umbrellas” as being as intent to use. So what? – you might ask. Strictly speaking, this would normally mean that the other filer would have priority over any claim has on exclusive rights to the phrase for the purposes of items like these., but the fact that he has now filed an application for identical goods hints that he will oppose the issuance of other applicant.
I also think it is safe to say that Mr. Trump plans to use this application to try and stop anyone from using the phrase on any merchandise from now on. Ebay is Awash in items already . The real question will be if he can be successful in enforcing the mark for these items (See trademarking a phrase for tee-shirts).
Because cats make everything more entertaining. (search using (03.01.04)[DD] and (2)[MD]). A sample of 10 recent applications for cat related trademarks for your viewing pleasure.
1. Content Kitty (such a peaceful face)
2. Lethal Kitty (HiYA!!)
3. Hello Kitty (one of many recently filed applications)
4. Butt Kitty (Ok – this one creeps me out a little)
5. Knitted Kitty (this one is for “knitted underwear” -’nuff said -cool design)
6. Hipster Kitty (jeez – everyone knows cats prefer the chevron)
7. Creepy Kitty (with dog overlord)
8. Masked Kitty (what possible advantage would a cat have trying to pretend he’s a dog?)
9. Anthropomorphic Kitty (why no shoes on the hands??)
10. Plain old Cute Kitty (just because)
What do UPS, Tiffany and Co., and Owens Corning have in common? The mere sight of the color of their product (Pullman Brown, Robin’s Egg Blue, and Pink) brings to mind who they are without ever having to place a logo or word on their products. These marks demonstrate how real people shop for goods and services and how trademarks are about providing a potential consumer resources to identify the source of the goods and services they are purchasing – while preventing others from using those identifiers to create consumer confusion.
The leading case involving color as a trademark is Qualitex Co. V. Jacobson Prods. Co. (514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995)), which noted that a color can sometimes serve as a trademark by itself “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” The Court went on to provide that if the color serves a “function” then it by definition is not protected by trademark law. Function is broken out into “utilitarian” and “aesthetic” functionality – this is largely a nod to the availability of other areas of intellectual property such as patents (dealing in realm of utility), and copyright (entwined with issues of aesthetics) which are designed for these uses. What is left is color used as a source identifier – clearly within the scope of trademarks.
Courts, however, recognize that such use is limited and has potential to be damaging to many industries if overused, and as a result have taken the position that color by itself is not inherently distinctive, and as a result most color-only marks will have had to acquire distinctiveness through actual use. This means that new users of a color, wishing to register color-only marks are limited to filing applications on the supplemental register until such time that they can show the mark has acquired distinctiveness.
Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.