Navigating the Trademark Seas: The Strategic Use of Design Search Codes

by admin Comment Closed
Example of Design Search Codes Used when Examining a Trademark Application When it comes to trademark law, the way a mark looks can be important. To make sure your trademark is unique and recognizable, it's essential to understand design search codes. These codes are used by trademark examiners when they're looking at your application. They help them evaluate your design elements and decide if your trademark can be registered. Design search codes group visual elements together so that examiners can focus on specific parts of your design. This makes the evaluation process quicker and more efficient. Design search codes also help examiners identify trademarks that might be similar to yours. This is important because it can help them decide if your trademark is too similar to someone else's. Some design search codes focus on keywords and descriptive elements in your design. This helps examiners identify potential conflicts based on the style and meaning of your trademark. Design search codes also help make sure that...
Read More
First-To-File vs. First-To-Use

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

by admin Comment Closed
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...
Read More

Covid-19 MN Executive Order

by admin Comment Closed
The Minnesota Executive Orders regarding the stay at home order and related exemptions can be found here: EO-20-20-FINAL EO 20-23 -Extension of 20-20 Please note that these orders are to be read in conjunction with the federal rules and periodic clarifications by the state.  ...
Read More

Annual Trademark Maintenance

by admin Comment Closed
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...
Read More

TTAB Issues Precedential Opinion Regarding Sanctions Against Petitioner for Fabricated Evidence

by admin Comment Closed
Citing Petitioner's Fraudulent Conduct, TTAB Dismisses Petitioner's Cancellation Petition Alexandria VA (September 11, 2019) – A three judge Trademark Trial and Appeal Board (TTAB) panel ruled in favor of Respondent Srills, LLC in a precedential trademark ruling dismissing a cancellation petition brought by Petitioner Optimal Chemical Inc regarding a series of Srills’ registered trademarks. The Petitioner filed the cancellation proceeding in February of 2016 alleging likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a claim of Petitioner’s alleged prior common law use of the marks. Following an extensive 20 month long review of the factual record as presented in the parties' trial briefs, the Panel found that "... Respondent has established by clear and convincing evidence that Petitioner participated in a pattern of submitting testimony and evidence which is inaccurate, fabricated, altered, and untruthful in order to demonstrate priority of use, an integral element of its claim of likelihood of confusion." Invoking the legal maxim...
Read More

Minnetonka Based UnitedHealth Group Loses Domain Name Battle

by admin Comment Closed
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...
Read More

Copyright Office Introduces Online Group Registration of Photographs

by admin Comment Closed
In recognition of the difficulties facing photographer's to register large volumes of photographs, the U.S. Copyright Office has announced that starting in February (2/20/2018) , they will accept group registrations of photographs via the online registration system (eCO).  Each online application can include up to 750 images from a single copyright owner (not photographer).  The Final Rule published by Copyright Office includes a number of other modifications, as well as a detailed discussion of the reasoning behind these changes. Included in the discussion was this analysis of the needs of photographers: The CVA surveyed 1,744 photographers and asked them to identify the average number of photographs that they take in a single day and over the course of a single month. The vast majority of the respondents—70%—reported that they take fewer than 750 photos on an average day, while another 17% reported that they take between 751 and 1,500 photos on an average day. This presumably represents the average rate for a daily photo...
Read More

Less is More: Copyright Office Changes Deposit Requirement for Musical Compositions.

by admin Comment Closed
Modification of Current Deposit Rules The United States Copyright Office on Tuesday (January 17, 2018) published a modification to the current rules regarding registration of musical compositions.  Under the current rules, registration of compositions that have been published in both print and as part of a sound recording  can be registered by depositing a copy of the recording only.  This modification, changes this rule and requires that the print edition be submitted.  However, if only the recording exists at the time of the application, only the submission of the recording is required. This modification is in line with the requirement that applicants must submit the "Best Edition" of the work. The final rule is available here and goes into effect on February 16, 2018. What Does this Change Mean to Me? Composers should take note that this change may require the submission of a complete set of sheet music if it exists.  The rule and commentary remains somewhat vague as to whether, with less formal compositions, publication...
Read More

Intellectual Property: Start to Finish seminar

by admin Comment Closed
Want to: Build a strong understanding of the various forms of intellectual property protection. Delve into substantive case law and see intellectual property laws at play. Anticipate when the copyright fair use rule is and is not applicable. Pick up trademark application and enforcement best practices. Protect clients' confidential information or trade secrets through solid non-disclosure agreements. Gain helpful strategies for dealing with various patent issues I will be a featured presenter for a National Business Institute online seminar on January 22, 2017 , providing high level overview of trademark basics, registration, and enforcement.  See https://www.nbi-sems.com/ProductDetails/78436ER?ctname=SPKEM for additional information and pricing.  ...
Read More

Is this a Scam? – Invoices to Maintain your Registration

by admin Comment Closed
Is this Invoice from the Patent & Trademark Organization a Scam? If you are asking this, the answer is probably yes. Over the years there has been an ever increasing number of private companies that have taken it upon themselves to offer either non-existent services or services that have no benefit to businesses registering their trademarks. The trademark scam typically starts with a very official looking letter arriving in the mail with a very official name on it like the "Patent & Trademark Agency," Patent & Trademark Organization," or "TPP – Trademark & Patent Publications." The letter mentions a real trademark application and then states that some fee is due to put it on their registry, or to block someone else from registering it on their register. Even if their register or publication exists, it provides no legal protection - it is just a vanity publication. Sometimes these fees are higher than what the person paid for their original application. These documents...
Read More