FAQ – Am I protected under trademark law, without federal registration?

I recently started selling a product throughout the US.  I have registered the copyright for photos and designed some unique product packaging that included the brand name I came up with.  I think it pretty distinctive and I am not aware of anyone else selling a similar product by the same name.   Do I have to register my trademark to prevent others from using it?

Kenneth’s answer:  Since your mark is not registered you are limited to the common law trademark rights, which 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 trademark rights like this 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.

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10 Trademarks Just in Time for Halloween

While some folks might think trademarks can be a little scary, I know that they can also be a little fun.

10-Trademarks-Just-in-Time-for-Halloween-.jpgG&S: Processed cereal-based food to be used as a 10-Trademarks-Just-in-Time-for-Halloween-.jpgbreakfast food, snack food or ingredient for making other foods.Serial (no pun intended) 85120586 and 85120583 
G & S: Beer.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 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.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 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.
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & 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.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86506372And Playboy decided to get out of the nudie business – perhaps they just weren’t putting enough dripping blood on them?
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & 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)
10-Trademarks-Just-in-Time-for-Halloween-.jpg86446861G & S: Sporting Goods, namely, skateboards.AAARRGGHHH – Happy Face Vampire
8639254210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Repair of computers, cell phones, and tablets.I can live with that.  Sometimes my computer feels a little brain dead.
8639600210-Trademarks-Just-in-Time-for-Halloween-.jpgG & 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)

8633194410-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: LED (light emitting diode) lighting fixtures.Really?  Shouldn’t the light be used for killing Vampires (see above)

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Trump’s Trademark Issues

How long has Trump been planning this?

MAGAApparently 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

Subsequently, on August 13th two new filings  (86724115 , 86724213were made by him for the phrase and include an exhaustive list of such items as  

  • 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).



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Ten Cute Cat Trademarks

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)

Mark Image

Serial Number: 86468722 Description of Mark The mark consists of the face of a cat.


2.  Lethal Kitty (HiYA!!)

Mark Image

Serial: 86330685 Description: The mark consists of a stylized standing white cat with yellow eyes and wearing gray pants, gray shoes, and a blue jacket that has white trim, two visible white buttons and a white Chinese language symbol. The cat is standing upon a black oval.


3.  Hello Kitty (one of many recently filed applications)

Mark Image

Serial: 86582292 Description: The mark consists of the face of a kitty.


4. Butt Kitty (Ok –  this one creeps me out a little)

Mark Image

Serial: 86468165 Description: The mark consists of a feminine cat facing {walking} away, with tail up exposing a heart shape on the butt.


5. Knitted Kitty (this one is for “knitted underwear” -’nuff said -cool design)

Mark Image

Serial: 86426751 Goods: Knitted underwear.


6. Hipster Kitty (jeez – everyone knows cats prefer the chevron)

Mark Image

Serial: 86543982 Description: The mark consists of the stylized image of a cat’s head with a mustache.


7. Creepy Kitty (with dog overlord)

Mark Image

Serial: 86484950 Description: The mark consists of Cat having a primarily orange-brown fur coat and white chest laying in front of a seated dog having a primarily grayish-tan and brown fur coat and black nose, where both the cat and dog are depicted with large human-like smiling mouths with red lips and bright upper and lower white teeth showing, and a radiating sparkle emanating from the upper right-hand corner of each mouth.


8. Masked Kitty (what possible advantage would a cat have trying to pretend he’s a dog?)

Mark Image

Serial: 86420033 Description: The mark consists of a stylized cat wearing a dog mask.


9. Anthropomorphic Kitty (why no shoes on the hands??)

Mark Image

Serial: 86057456 Description: The mark consists of stylized image of a kitten wearing a dress and tennis shoes.


10.  Plain old Cute Kitty (just because)

Mark Image

Serial: 86056395 Description: he mark consists of a pictorial representation of a kitten in a woman’s hands. There is a purple arc to the left of the kitten. The kitten’s fur is white, black and gray. The kitten’s nose is pink and its eyes are blue and black. The woman’s hands are shades of tan. Both the kitten and hands have white highlights. The area between the kitten and the purple arc is white.


content kitty

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Color-only Trademarks

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.

abstract2The 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.

Interested in applying for a color-only mark?  Please call for a complementary review of your claim.

Additional Resources


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I have a great idea for a tee-shirt!!!

I have a great idea for a tee-shirt – can I register it as a trademark???

Short answer – probably not.  The main issue with whether a slogan or word  operates as trademark is how it is used.   This is especially true of tee-shirts.

If the mark / slogan is just printed on a shirt – no protection – the Trademark Office deems that as being “merely ornamental” (there is an exception when the mark is also used for other products or business name).  However if the mark / slogan is also used to identify the tee-shirt company, it may serve as a trademark and be registered (i.e. it is a “source identifier”) – the only caveat is that you would need to show it being used in that manner rather than just emblazoned on the front.  Showing the mark this way can be done be showing the phrase on things like the name of an online store, packaging, an inside-tag, or a hang-tag.

So “Peanuts for Everyone” emblazoned on the front of a shirt – likely not a trademark.  PEANUTS FOR EVERYONE brand tee shirts, with slogans like “Peanuts for Everyone” on the front – trademark.

With that said, if “Peanuts for Everyone” is included in a design on the shirt; that particular design may have copyright protection, but the phrase by itself is unlikely to retain the protection.


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You Own Devices Act proposed

You Own Devices Act

Congressman Blake  (R-TX) recently reintroduced to committee H.R.862, You Own Devices Act (YODA), to amend title 17, United States Code.  If enacted, the bill will provide that the first sale doctrine applies to any computer program that enables a machine or other product to operate.  https://www.govtrack.us/congress/bills/113/hr5586/text  Expect opposition to come from

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Copyright Office Releases Comprehensive Music Licensing Study

LOC NewsNet Issue 567
February 5, 2015

Copyright Office Releases Comprehensive Music Licensing Study

The U.S. Copyright Office has released a comprehensive study, “Copyright and the Music Marketplace,” detailing the aging music licensing framework as well as the ever-evolving needs of those who create and invest in music in the twenty-first century. In addition to providing an exhaustive review of the existing system, the report makes a number of recommendations that would bring both clarity and relief to songwriters, artists, publishers, record labels, and digital delivery services.

“Few would dispute that music is culturally essential and economically important to the world we live in,” said Maria A. Pallante, Register of Copyrights, “but the reality is that both music creators and the innovators who support them are increasingly doing business in legal quicksand. As this report makes clear, this state of affairs neither furthers the copyright law nor befits a nation as creative as the United States.”

There is broad consensus across the music industry on a number of key points: (1) creators should be fairly compensated; (2) the licensing process should be more efficient; (3) market participants should have access to authoritative data to identify and license sound recordings and musical works; and (4) payment and usage information should be transparently available to rightsholders. But there is less agreement as to how best to move forward.

The Copyright Office’s recommendations address almost every aspect of the music landscape, including the existing statutory licenses, the role of performing rights organizations, terrestrial performance rights for sound recordings, federal protection for pre-1972 sound recordings, access to music ownership data, and the concerns of songwriters and recording artists. These recommendations present a series of balanced tradeoffs designed to create a more rational music licensing system for all.

The full report and executive summary are available on the Copyright Office’s website at http://copyright.gov/docs/musiclicensingstudy/.

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Copyright Office Announces Public Roundtable Discussions for Music Licensing Study

From the United States Copyright Office

NewsNet 542
May 5, 2014

The U.S. Copyright Office will hold a series of public roundtables to gather input for its music licensing study. The roundtables will take place in Nashville, Tennessee on June 4 and 5, 2014, in Los Angeles, California, on June 16 and 17, 2014, and in New York, New York, on June 23 and 24, 2014. The roundtables will offer an opportunity for interested parties to comment on the music licensing issues set forth in the Notice of Inquiry issued by the Office on March 17, 2014. Those seeking to participate in the roundtables should complete and submit the online form. Requests to participate must be received by the Copyright Office by May 20, 2014.

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Pied Piper’s Trademark Problems

On a recent episode of HBO’s new show Silicon Valley, the hapless coders find themselves in a bind when they realize that the “placeholder” company name “Pied Piper, Inc.” was already in use by Pied Piper Irrigation, another California company. The problem is that they received a check from a venture capitalist in the name of the Pied Piper Inc. – humorous situations then ensue as the protagonist tries solve the problem – and then, I began ranting at the television to the chagrin of my wife.

Why, you might ask, does this drive me crazy? Not because it is a common and overused plot point, but more notable because it gets both state registration laws and trademark laws completely wrong by muddling the laws of business registrations and trademarks.

Someone already registered my business’ trade name – what do I? A trade name is the name used to identify the business. States have varying restrictions on registration of similar names when forming a new business – primarily, they need to see that the name (along with the designated business form – inc, corporation, limited liability, etc) is not already in use. This means that while an exact match of something like “Pied Piper, Inc.” will not be allowed, other variations might be. So in some states “Pied Piper, Corp”, “Pied Piper Holdings, Inc”, or even “Pied Piper 2, Inc. will likely be acceptable for registration of a different business. Some states even allow it to go as far as “Pied Piper Inc.” vs “Pied Piper Incorporated”. As an example, there is currently an active company registered in California with the name Pied Piper, Inc.” – there is also “The Pied Piper Exterminators, Inc.”, “Pied Piper Players, Inc.”, and “Pied Piper Play Center” – there are also suspended businesses using similar variation on the theme. Simply put, the standard of what variation of name is acceptable is not that high and the problem for the boys in Silicon Valley aren’t real in regard to the business trade name. In the TV show the issue came up because the protagonists had received a check made out in the name they had been using as a placeholder; the reality is that most banks aren’t concerned with minor variations in the corporate name and “Pied Piper IP Holding Company”, will most likely be able to cash a check made out simply to Pied Piper, Inc.

But that other company is using my trademark. On Silicon Valley, the episode moves forward to discover that the company trademark PIED PIPER is the company name of a nearby irrigation company. My response — so what? Trademarks are not simply the name associated with any business, but rather a name associated with specific goods or services. Is there any likelihood that someone buying software using the mystery algorithm that is the core of the tech companies’ product is going to confuse that it originated from the irrigation company services? – not likely. Both companies can simultaneously use the mark PIED PIPER without any concern of trademark infringement, because there is little likelihood of confusion by consumers.

But my trademark has to be the same as my trade name. Nope – not true – while the two are often related, there is no rule that says they have to be the same. The best example for this is Doctor’s Association, Inc. Who is Doctor’s Association? – well you probably know them better by their SUBWAY trademark. What this means is that our newly minted entrepreneurs can register whatever business name they want, and still operate under the trademark PIED PIPER, and there is no need for them to go and purchase the name from the cranky irrigation company owner.

So what is the take away here? – don’t take legal advice from TV sitcoms – then again I hope you already knew that. By the way, it is a funny show.

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