Minuscule Symbols With a Sizable Message

In a society where both new and long-standing brand names and products are available, consumers are accustomed to seeing the tiny symbols used in to the upper-right of a product name to indicate a protected name, logo, or tagline, and yet it can be unclear as to what each of the marks truly indicate.

® – The encircled R is reserved for those names, products, and taglines that have a bona fide Trademark Registration. While use of this symbol is not required by law, this symbol communicates to the public that the mark, and goods/services associated with it, are protected and that the owner has a legal foundation on which to bring a claim against infringers of the mark. Placing the circle R to the upper-right of a Trademark is a simple way of communicating to the public “Have Trademark, will sue”.  

™ – While it is common to see this symbol, it is not restricted to use by owners of a registered Trademark. This symbol can be used without any federal registration, yet by the same token, the symbol indicates no federal legal protections to enforce against infringement. Those who might consider using this symbol may include applicants of a Trademark registration that is pending, and has not yet been approved.

© – This symbol does not apply to Trademark protection at all, but is instead used to indicate Copyright protection. Although not required to be shown on work titles, it is always a good idea to give notice that the work is under Copyright protection, and that the owner can take action against violations of the copyright.

Behrends Legal is ready to help you determine which mark you should be using with your work and your brand, and to file your Trademark Application to ensure your brand has all the rights it deserves!

970-578-9455

Office@behrendslegal.com

Should Your Trademark Have a Price Tag?

Why are Trademarks Valuable?

Your Trademark is the brand identity of your business, products, and services. Your customers begin to associate your Trademark with the level of quality you offer to your customers, and the reputation you have worked steadily to build. Though at Behrends Legal, we recommend filing for a Trademark as early as a possible, your brand reputation may take years to grow, and is an investment of itself. When it comes time to merge, sell, or agree to license the brand you have built, your Trademark encompasses all that you have built into your business reputation, – symbolically, and financially.

How Do I Know What My Trademark is Worth?

Estimating the value of your Trademark can be somewhat tricky as with all intellectual property valuations. Putting a price on the future earning potential of your business brand is a complex process based on estimations, and partially, on the summation of both the past and present financial standing of the business. Because selling a Trademark as an individual asset of the company has become a common business practice, a few approaches have been formed to help guide the valuation approach.

  1. Cost Valuation: the amount of financial investment that would be needed to replace the Trademark with a new one. This approach ultimately produces a valuation price based the popularity of the brand.
  2. Market Valuation: with this approach, the value of the Trademark is estimated by comparing the Trademark with other companies that produce similar products and services as the business being evaluated.
  3. Income Valuation: this approach is based on the cash flow trends of the business throughout the life of the Trademark and brand usage. Trademark valuation is often bundled together with other licensing rights in the business transaction.

Understanding that your business Trademark is a valuable asset as you prepare to sell, or license your Trademark, is essential to maximize on the reputation of the brand you have built, and the investment you have made.

Call us today at Behrends Legal to get started on your Trademark Registration!

(970) 578-9455

info@behrendslegal.com

Are You Culpable for Trademark Infringement?

If you advertise, post, share, compare, promote, or influence products or services, this question may be at the forefront of your legal concerns. The progression of social media as a prominent marketplace and advertising medium has created new concerns regarding the legalities of trademark protection and trademark infringement.

Should I be worried about using trademarks that don’t belong to me in my advertising and posting?

As is so often the answer – it depends on your intentions. Using a Trademark owned by someone else for the purpose of deceiving consumers into thinking your product is created by the same source as another brand is infringement of the trademark owner’s rights, and is prohibited. However, there are a limited set of circumstances where using a Trademark belonging to another person/entity is not considered infringement.

How Can I Use the Trademarks of Others Without Infringing Their Trademark Rights?

Under the Lanham Act[1], the circumstances in which someone may use another’s Trademark, are called Nominative Use, of Fair Use, and include:

         1.Comparitive advertising that is an opinion, such as ‘Brand A is better than Brand Z’.

         2. Compatible use is allowed when a product is shown to be compatible or functional with another product, such as demonstrating that a cell phone case is compatible with a major brand cell phone.

       3. Other instances where use of another’s Trademark is permitted include legitimate sponsorship by the other brand (often permitted through contract agreement), and when the use is for parody (caution is still strongly recommended).

In nominative use cases, the law is concerned with avoiding consumer confusion by giving credit to the brand that invested in the original Trademark, and by properly attributing the source of the goods or services through identification, and often, permission to use the mark.   

In nominative use cases, the law is concerned with avoiding consumer confusion by giving credit to the brand that invested in the original Trademark, and properly attributing the source of the goods through identification.

When In Doubt, Obtain Permission

If you find your intended usage falls into a grey area, or doesn’t fit neatly into one of the categories above, err on the side of caution and obtain permission to use the mark. At Behrends Legal, we are big believers in preventative law, or taking action now, to prevent or limit the potential for litigation later, before acting or posting is a wise move.

Please feel free to reach out to us at Behrends Legal to make a plan to protect your business as you advertise your brand!

This is a post about common trademark concerns and should not to be taken as legal advice. Nor does the reading of this post create an attorney-client relationship. If you have legal questions, please reach out to us at Behrends Legal today for a consultation.

P: 970-578-9455

E: rachel@behrendslegal.com


[1] See 15 USC 1125 (c)(3) Fair Use Doctrine

To The Small Business Owners

This year has been a challenge unlike any other year for American businesses with unexpected closures lasting for uncertain lengths of time, fluctuating regulations, and the unknowns awaiting for business this year. Small businesses are the backbone of America, however, where the spirit of American entrepreneurship is borne and resides – that venture risk that requires the entrepreneur to be part organizer, part rebel, and 200% hard worker. A 2019 study showed that U.S. Small Businesses make up a sturdy 55% of the American Workforce, with a total of over 30 Billion small businesses registered in the U.S.[1] That’s no small number. Of those small businesses, 3.7 million were considered microbusinesses, or those that employ 10 people or less.

With small businesses being the wheels of the economy and innovation in our country, the work and contribution small businesses make should never be taken for granted. It is your business that keeps your community employed, your business that meets the need for the goods and services in demand by consumers, and your business that keeps an economy moving forward even under the hardship of a pandemic. Press on, Entrepreneurs, and keep the following in mind:

PLAN TO ADAPT

As you look to the coming months, possessing the foresight to know what your customers need will align your business to maintain and grow. Set your business up to be fully operational, as much as possible, despite varying regulations that affect in-person transactions.

  • Paperless tools: make it easy for clients to receive, sign, and save your transactional documents securely from their own devices from anywhere.
  • Offer new products: your customer’s needs have changed, to a degree, just as your business needs have changed. Ask/study what your customers need and find creative ways to provide solutions for them.
  • Don’t wait for customers to come to you: with so many store and shoppe closures, find ways to ramp up your delivery to the customers to keep your products in their hands affordably and conveniently.

CREATE BRAND VISIBILITY

More than ever, your online advertising matters. Ecommerce has surged with the temporary closure of so many businesses, and as your business adapts and grows in these new times, your name should be in the forefront of customer’s minds.

  • Trademark your business & product name: ensure that you can protect the reputation for quality you have built, and claim your advertising rights by filing for trademark registration of your products, services, and brand.
  • Promote your brand name: if you aren’t already investing in online advertising, now is the time to begin. If you already advertise online, find new and creative ways to reach your customers. Be available, and be communicative.

PLAN FOR THE FUTURE WISELY AND WITH OPTIMISM

Continue to plan for the future, even with uncertainties ahead. You may have to deviate significantly from your business plan, or completely write a new business plan, however, keep your goals in mind and continue to work towards them.

  • Know your financials: though it can be a formidable task, know your business numbers well and plan/adjust accordingly.
  • Be a voice of Strength: Find ways to maintain your optimism, surround yourself with positive people, and encourage your employees, staff, and customers.

At Behrends Legal, we look forward to helping you file your trademark, form your business entities, draft the business documents you need, and more, to help you as you prepare to guide and grow your business through the coming months. Stay safe and stay Small Business Strong.


[1] 55 Staggering Small Business Statistics & Facts for 2020https://websitebuilder.org/small-business-statistics/#:~:text=%2055%20Staggering%20Small%20Business%20Statistics%20%26%20Facts,Only%203%25%20use%20their%20home%20equity%2C…%20More%20

What is an Office Action from the USPTO?

One of the most discouraging events of filing for a Trademark is receiving an Office Action letters from the USPTO for refusal to register the trademark. This is also sometimes known as a “2(d) Refusal” for its refusal on the basis of the Trademark Act 2(d). While it is disheartening to receive an Office Action refusing to register your trademark, it often need not be the end of the story.

Determine the Cause for Refusal

When drafting the Office Action, the USPTO Examining Attorney is required to establish the legal basis and foundation for their refusal. Read your Office Action to determine the cause for the refusal. If the Office Action lists information that is incomplete to file the Trademark application, sometimes, all that is needed is for you, the Applicant, to make corrections to your application and fill in the missing basic information. However, sometimes Trademark Applications are rejected via an Office Action 2(d) refusal.

Responding to an Office Action 2d refusal can be more involved, and it is advisable to seek legal counsel. The most common basis for refusal is “likelihood of confusion” with another existing mark. This is generally based on the trademark names, or a similarity between the goods and services of the two trademarks.

While it is disheartening to receive an Office Action refusing to register your trademark, it often need not be the end of the story.

Respond to the Office Action with Legal Arguments and Mind the Deadlines

Filing a response to an Office Action is similar, in some ways, to filing a court appeal. A well-drafted response to the USPTO should include legal arguments that establish the reasons why your mark is unique and can coexist with other existing trademarks on the trademark Principal Register. The Response will also answer all of the Examining Attorney’s arguments. It is crucial to be mindful of the response deadline as failure to respond by the deadline results in the mark being labelled “abandoned” by the USPTO.

Although no one wants to receive an Office Action letter from the USPTO refusing registration of their trademark, there are options available to Applicants to make efforts to overcome the refusal. We can help at Behrends Legal today! Feel free to contact us. Our flat fees keep things simple for you!

We look forward to discussing your Office Action matter, and creating a plan uniquely tailored to you!  

P: 970-578-9455

E: rachel@behrendslegal.com