First-To-File vs. First-To-Use

First-To-File vs. First-To-Use

First-To-File Trademarks In the United States, the right to use a trademark is based on the rights of the first party to use a mark. Under common law rights this means that if a restaurant opens on one end of the block, another restaurant can't open at the other end and call itself the same name. Allowing that would cause confusion and potentially harm consumers who would have difficulty knowing which restaurant is which. The same holds true for trademarks that are registered. The right to use and exclude others is based not on who is first-to-file, but on who uses it first. Racing to register a trademark. First-to-File This is not the way it is in every country, in fact in most countries a person can lose the right to use a mark in that country merely because they did not register it before someone else - even if they were using it in that country before...
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Annual Trademark Maintenance

Managing your Trademarks in 2020 With the start of a new year, it is an excellent time to take a look at your trademarks and, like other valuable business assets, make sure they are in order and working hard to help your business to  to grow. Here are a few ideas of what to consider. Organize Examples of Use One way to help yourself in the event others challenge your trademark is to provide examples of your use of the mark over time. An excellent task to take up at the beginning of the year is to review your marketing from the prior year and to print (or create PDFs) of prominent uses of the mark. When doing so, it is advisable also to note where the use found and when it was made public. You can create this archive by just creating a paper folder or folders online. Check for Consistency A key to good trademark health is a consistency of use. Take a...
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Minnetonka Based UnitedHealth Group Loses Domain Name Battle

Optum, Inc. v. Paul Mellen / Mellen Marketing Claim Number: FA1712001762046 Optum, Inc., a subsidiary of Minnetonka based UnitedHealth Group recently filed claims against Mellen Marketing who had registered the domains <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org>.  Optum's attorney (Kenneth L. Wilton of Seyfarth Shaw LLP, California) based their claim, in part, on an allegation that Mellen had specifically targeted Optum and had repeatedly offered to sell the domains  for two-million dollars.  Mellon responded by alleging that the domains were registered in relation to a prior business he was engaged in, and that Optum first approached him about purchasing the domains.  The Panel deciding the matter found that Optum didn't began using the HEALTHSAFE ID Mark in commerce until October 1, 2016, and Mellon registered the domains  on March 22, 2016. The ICANN Uniform Dispute Resolution Policy (UDRP) requires that a complainant prove three elements to obtain an order that a domain name should be cancelled or transferred: the domain name registered by Respondent is...
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Halloween Trademarks 2017 Edition

Halloween Trademarks 2017 Edition

While no one asked for it - here it is - 2017 Edition of Spooky Trademarks.  SHRED BUNDY - Tasteless on so many levels   LIFE AND DEATH - That's just weird - listed services sound very sophisticated though - "Consultation and advice regarding musical selections and arrangements for sound recordings and live performances"   UNDEAD BETTYS - Roller Derby rocks!!!!!!    SN87504276 - I just like this one due to the cinematographic nature of the description of the image, which I find kinda scary: The mark consists of seven figures around a four-sided table; six of the figures are animals (from upper right proceeding clockwise: donkey, horse, boar, goat, duck, and lion); between the duck and the lion is a female human (an ale wife/barmaid) wearing a headscarf and holding two tankards that she is bringing to the table; she wears a long apron; on the far side of the table a lion wears a doublet which tied around his waist using a rope belt; the doublet...
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Related Goods & Likelihood of Confusion

Related Goods & Likelihood of Confusion

What are "Related Goods" for the purpose of evaluating Likelihood of Confusion? Answer The leading case on evaluating likelihood of confusion is the 1973 case E. I. DuPont DeNemours & Co.   In it, the Court sets out a series of factors  to be evaluated when determining likelihood of confusion under § 2(d) of the Lanham Act.  One of these factors looks to see if the two marks are used on "related goods" or services or if their marketing activities would result in consumer confusion. If the goods are not related at all, or they are NOT marketed in a way where potential consumers would incorrectly create an assumption that they come from the same source, then, even if the marks are identical, confusion is not likely. When evaluating whether goods are related goods and precluded from registration, courts have repeatedly noted that the question of relatedness requires a showing that the goods are connected in the minds of the consumer. They, in...
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Benefits of a Federal Trademark Registration – FAQ

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...
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Trademark Registration Scam – FAQ

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...
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Common Law Trademarks – FAQ

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...
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10 Trademarks Just in Time for Halloween

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. 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...
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Trump’s Trademark Issues

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 Subsequently, on August 13th two new filings  (86724115 , 86724213) were 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...
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