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

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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

Avoid Making This Costly Mistake When Taking Your Brand To The Global Marketplace

WHY CONSIDER INTERNATIONAL TRADEMARK?

As companies expand into the international arena, a whole new set of rules apply to protecting your business brand. Building your reputation for quality, and service are only half of the value of your brand – your brand recognition should be protected as a company asset by filing for trademark registration to maintain the rights in your brand name. Do not make the mistake of leave your brand unprotected in the global marketplace.

Companies who should invest in an international registration include those seeking to expand now or in the future, those with current business operations in other countries (manufacturing, distributing, offices, etc), and those with significant revenue generation from other countries.

WHEN SHOULD AN INTERNATIONAL TRADEMARK FILING BE CONSIDERED?

In the global market, trademarks are only protected if they are registered in that particular country. Filing for trademark registration in the US does not automatically extend protection of your mark to other countries, which means that if you discover a business using your company name, logo, tagline, or packaging in another country, your company has no legal basis to pursue infringement proceedings in that country. Using a centralized system, such as the Madrid Protocol, allows trademark owners to register one application while applying to multiple member countries at once. Although not all countries are members to the Madrid Treaty, a 120+ country membership certainly makes the Madrid registration a worthy consideration.

One of the key benefits of filing an international trademark include claiming rights in the mark immediately upon registration. The Madrid system operates on a first-to-file system, rather than a first-to-use systems as exists in the US. Once obtaining an international trademark registration, the mark is registered for 10 years, and should be renewed in a timely manner to maintain rights in the mark. Registration of the mark can be expanded to additional countries, if the owner wishes to increase the market regions.

Please reach out if you are considering the registration of your trademark in the international arena – we can help you through this process!

info@behrendslegal.com

970-578-9455

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

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

PURSUE GROWTH

More than ever before, tradenames and trademarks are your business identity in the global market. Your business name ensures that potential investors and clients are choosing a product of quality; your product! Choosing a tradename is thoughtful process that helps reflect your vision for the product/service, and your commitment to maintaining quality. We welcome international brands at Behrends Legal law firm, and we are excited to help you file a U.S. Trademark, or an International Trademark. Please reach out to us for more information on filing your international brand in the U.S and abroad.

You may be a U.S. based company seeking to file an international trademark in other countries. We are here to help you! The trademark filing process depends on which country you are filing in, and for many European countries, only one filing may be needed. Contact us to share your goals, and we’ll help you create a plan to file the Trademark registrations you need!