Trademarks

What is a common law trademark?

Common Law Trademark Rights

Registering a trademark is not as simple as searching the United States Patent and Trademark Office (USPTO). There is an additional level of research that needs to be conducted to ensure your potential trademark is not subject to common law protections by another business or individual.

You may be asking yourself, “What is a common law trademark?” Well, a common law trademark is established exclusively through the mark’s use in commerce in a specific geographic region or area. The issue of common law trademark typically arises with specific business names, logos, and phrases that are used in a particular jurisdiction or part of the country. It is important to understand that a business claiming common law trademark rights are limited regionally and are not as easily enforced when compared to a trademark that was registered with the USPTO.

Common Law Trademarks vs. Federally Registered Trademarks

As mentioned, a common law trademark is generally obtained by using the mark in association with a business or product. This means, in stark contrast to a federally registered trademark, there is no application process for a common law trademark. In addition, there are typically no fees associated with obtaining a trademark through common law.

It may sound relatively easy to obtain a common law trademark, but it is important to understand that the ease in securing a common law trademark comes at a price – the ability to actually enforce the mark. Specifically, a common law trademark is oftentimes only enforceable within a particular state or possibly a targeted region in the U.S. It generally does not carry the same weight or have the same enforcement authority of a federally registered trademark.

Federal trademarks have inherent advantages over a common law trademark. In many instances, a federally registered trademark will prevail in a dispute involving another business attempting to assert a common law trademark. Nevertheless, in limited circumstances, a common law trademark has prevailed over a federally registered trademark, but only when there is clear evidence that the common law trademark had an earlier, proven first use date that could reasonably challenge the federal trademark’s rights in a specific geographic area.

Avoid Delays and Disputes with a Common Law Trademark

In order to ensure your new trademark does not run into legal issues with an existing common law trademark, you need to retain experienced legal counsel to guide you through the clearance process. This includes conducting an in-depth interest search, engaging in industry-specific directory searches, reviewing business filing searches, and even conducting a domain search. However, even if all of these steps are taken, other common law trademarks may still exist.

Have Questions About Common Law Trademark Rights? Contact The Highly Reputable Omni Legal Group Today

The legal exposure associated with failing to conduct a proper search of a trademark that could be subject to common law rights is why you need to retain the services of a respected and experienced Los Angeles trademark attorney. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

Transferring a Trademark – What You Need to Know

When you own a trademark, it is important to understand that is has value and should be viewed as an asset. In fact, it is possible to buy, sell, or transfer a trademark to a third party. However, there are specific rules and regulations you need to be aware of before moving forward with a trademark transfer. If you fail to adhere to these rules and regulations, it could cause irreparable harm to the value of your trademark.

Trademark Transfer Must Include “Goodwill”

If you are interested in transferring a trademark, the transfer needs to be completed in a “purposeful way” to ensure that the underlying meaning, or “goodwill,” is also transferred. This means you cannot simply license or authorize a company to use your trademark. There needs to be sufficient documentation showing a transfer of the aforementioned “goodwill.”

It is vitally important to complete a trademark transfer properly. Why? Because if a transfer is done improperly, it can create unnecessary delays, confusion, and even a potential break in title that could invalidate the earlier use of the mark and essentially destroy the trademark’s value.

Statement of Rights and Benefits

When you decide to pursue a trademark assignment, it is important to understand that the assignment is not just a transfer of registration. When the transfer is completed, the new owner will have ownership of all rights and benefits associated with that particular mark. This is why a trademark owner needs to make clear that all the rights associated with the trademark will be vested with the new owner, including:

• Enforcement rights;
• Royalty rights; and
• Licensing rights

Hence, the importance of including “transfer of goodwill” in a trademark assignment. Here is an example of the type of legal language that should be included in the transfer agreement:

• All of the property, right, title and interest in the trademark, including all common law rights connected therein together with the registrations therefor for the United States and throughout the world together with the goodwill of the business in connection with which the trademark is used and which is symbolized by the mark transfer to the new owner;
• All income, royalties, and damages due or payable to the Assignor of the Trademark, including damages and payments for past or future infringements and misappropriations of the trademark are transferred to the new owner; and
• All rights to sue for past, present and future infringements or misappropriations of the trademark are transferred to the new owner.

New Owner Responsibilities

Once the trademark transfer is complete, all legal responsibilities now fall upon the new owner, or owners. This includes taking steps to ensure there is no confusion with any other trademark, that trademark renewals are filed in a timely manner, and any alleged misuse of the trademark are monitored to ensure the quality assurance associated with the trademark.

Have Questions About Buying Selling, or Transferring Your Trademark? Contact an Experienced Trademark Lawyer in Los Angeles Today

As noted above, there are a myriad of issues to consider when deciding whether it makes sense to buy, sell, or transfer a trademark. The complexities associated with these transactions are why it is in your best interest to retain the services of a respected and experienced trademark lawyer such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

How can trademark renewal scams be avoided?

Trademark Renewal Scams

If you have a registered trademark, it is important to be cognizant of scams associated with the trademark renewal process. It is quite common for trademark owners to suddenly receive a random notice claiming that your mark is up for renewal and request substantial payment in order to file the necessary paperwork. This scam notice can be quite sophisticated and often includes a professional-looking header, domain reference, and accurate information regarding your trademark. Do not make the mistake of trying to comply with this “notice.”

This type of scam letter offering trademark-related services are becoming more common due to the availability of the United States Patent and Trade Office’s public database and search tool.  To avoid becoming the victim to one of these fraudulent notices, here are some helpful tips:

• Renewal Notice from a Random Third Party

Generally, all official trademark correspondence is sent through the attorney of record on your trademark. This means the USPTO will use the law firm listed on your trademark as the first point of contact for all official trademark communications. As a result, if you receive a renewal notice from a random company or individual, exercise extreme caution and skepticism toward the correspondence.

• Fake Websites and Non-Existent Mailing Addresses

Fraudulent renewal notice letters can be identified by checking the website and mailing address listed on the letter. In many instances, the letter will feature a fake website and/or a non-existent mailing address.

Legitimate correspondence concerning your trademark can be identified by a “@uspto.gov” email address or physical mailers exclusively from the USPTO in Alexandria, Virginia. Additionally, the only official website of the USPTO is uspto.gov. Letters that contain alternate websites or international addresses should be viewed with significant skepticism.

• Early Renewal Notice

It is important to know that trademark renewals occur at specific time internals:

• Five years after the date of registration;
• Between the ninth and tenth anniversary of the registration; and
• Every ten years thereafter.

Having an existing understanding of the trademark renewal process prior to receiving a scam letter can help you identify the correspondence as fraudulent quickly and efficiently. If you are already aware that your trademark is not up for renewal for another two years, it is much easier to dismiss the letter.

Other Types of Trademark Scams

Not all scam trademark notices are related to renewals. For example, you could receive a letter at any point during your trademark’s lifetime, regardless of a renewal deadline. The correspondence might mention a different filing, such as a statement of use or office action response, but it is still just as important to regard the notice with skepticism and confirm its legitimacy with a trademark attorney prior to taking any action.

Have Questions? Contact Omni Legal Group Today

If you are suspicious of correspondence you have received regarding your trademark, it is in your best interest to consult with a highly experienced trademark lawyer in Los Angeles such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

The Importance of Conducting a Comprehensive Trademark Search

Before filing a trademark application, there is an important step that needs to be taken to ensure the application will not be subjected to a quick denial. That step is conducting a comprehensive trademark search.

Conducting a comprehensive search is necessary because failing to do so could risk your application being denied by the United States Patent and Trademark Office (USPTO). Some trademark applicants mistakenly believe their chances of securing a trademark will be a breeze because they completed a quick search of the USPTO database and did not discover any conflicting or problematic trademarks. In reality, the USPTO often denies applications based on similarity, the potential for confusion, or for a host of other reasons that may not become evident when conducting a cursory search.

A thorough trademark search will include steps necessary to determine whether the trademark is being used in commerce and examining trademarks already in use in the marketplace. There are three searches that could be performed to have an accurate assessment of the risk surrounding your potential trademark:

• Federal search
• State search
• Common law

A federal trademark search, commonly referred to as a USPTO database search, examines the register of existing trademarks for any marks that may conflict with yours. The software or search engine used will examine different factors, including:

• Spelling
• Pronunciation
• Foreign language equivalents
• Goods and services offered under the mark

Federal trademark searches can be quite intricate and in-depth. As a result, it is quite common for a thorough search to take multiple hours to complete properly.

Once the federal trademark search is complete, the next step is conducting a state trademark search. This search will examine the trademark databases in each state across the country. This is necessary because many small businesses tend to file on the state-level for trademarks, especially those regionally situated that do not feel the need to go through the federal trademark registration process. Despite the lack of a federal registration, these marks still carry trademark rights, especially through prior use in commerce. It is also necessary because state registrants can enforce their rights should they feel threatened by your application for a similar trademark.

Finally, a common law trademark search can be conducted. This type of search is somewhat unique in that it attempts to find unregistered, but similar, marks that may have been used prior to your mark. Even though the user of that mark may not have a federal or state registration, they still have obtained certain trademark rights through their use of the mark and could present an issue for your application to move forward in the process.

Benefits of Hiring a Trademark Lawyer in Los Angeles

If you want to ensure your trademark search is sufficiently thorough and detailed, you should retain the services of an experienced trademark lawyer. A trademark lawyer has access to powerful search engines capable of searching for trademarks due to appearance, phonetic similarities, and other characteristics. In addition, once an attorney completes a search, they will typically draft a letter or summary analyzing the results to help you assess whether it makes sense to move forward.

Have Questions? Contact an Omni Legal Group Today

As you can see, a thorough trademark search is essential, especially for start-ups and fledgling brands. If you are interested in having a comprehensive search done on your behalf, contact the highly reputable Omni Legal Group for expert guidance and research, to properly help you take the next step in your business. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Does Trademark Protection Last Forever?

Trademarks are an important part of a business. They are the best way to protect the identity of the source of particular products or services. They also help consumers easily recognize a specific company as the manufacturer or source of a product and encourage customer loyalty.

Once a trademark is registered, it is protected from use and misuse by others, and it acquires characteristics similar to other types of property. These important protections lead many trademark owners to ask – how long exactly does a trademark last?

As a general rule, a trademark owner should anticipate having enforceable protections so long as the mark is being used in commerce. However, the amount of time a trademark is enforceable depends primarily on the laws where the trademark was registered.

Duration of Trademark Protections in the U.S.

If you registered your trademark in the United States, there is a chance that you could enjoy federal protection indefinitely. The key is to ensure your trademark is renewed properly. In the U.S., trademark renewal is required every ten years. In addition, there needs to be an indication that your trademark is being actively used between the fifth and sixth year after it was registered. If your mark is still actively used within this period, the registration can be renewed when you reach the 10-year anniversary of the registration.

To properly renew your trademark, the owner is obligated to file specific maintenance documents that are required by the United States Patent Trademark Office (USPTO) within the adequate time frames. In this manner, the trademark owner needs to satisfy the legal requirements for the trademark to be renewed.

Maintenance Filing Necessary for a Trademark Renewal

Below is a list of the required maintenance filings to ensure you can extend the protections of your trademark. If you fail to supply these requirements, you expose yourself to the risk of losing your trademark rights. The necessary maintenance files include:

• A Declaration of Use (also referred to as a Section 8 Affidavit) – this document confirms that you are still using the trademark as it was originally issued.
• A Declaration of Incontestability (also referred to as a Section 15 Affidavit) – this document states that your trademark cannot be challenged.
• An Application for Renewal (also referred to as a Section 9 Affidavit) – this document needs to be filed as you are approaching the 10-year anniversary of the registration. This document serves to confirm that you are still using the mark as it was initially issued and confers ten additional years to your initial registration.

Ramifications

If you fail to provide the necessary maintenance documents to the USPTO, your trademark could be cancelled. To prevent this from happening, you need to keep an active registration by filing maintenance documents when it is required by law. This is incredibly important because if your trademark registration is cancelled, it cannot be reinstated. You would need to apply for a trademark registration again. While the USPTO does provide a six month grace period to renew your trademark registration, an extra fee will need to be paid.

Overseas Trademark Protection

Unfortunately, registration of a trademark in the U.S. does not provide international protection. Indeed, a trademark registered in the U.S. confers protections in the U.S. only. If you would like to secure trademark protection in other countries, you have two options to consider. First, you could apply for a trademark in your country of choice, where you want the mark to be protected. Second, you could apply for protection through a Madrid Protocol application, European Union, or other regional trademark.

Have Questions About the Protections Afforded by a Trademark? Contact an Experienced Trademark Lawyer in Los Angeles Today

If you are interested in applying for a trademark, or currently have a trademark that you believe needs to be renewed, take action by contacting an experienced trademark attorney at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation with one of our highly experienced trademark attorneys, please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

When Does Registered Trademark Protection Begin?

When Does Registered Trademark Protection Begin?

If you have successfully filed a trademark application with the United States Patent and Trademark Office (USPTO), you may be wondering, “When will the trademark protections actually begin? Is it automatic after applying?” The answer is that it depends on how your trademark is being used.

• Trademark Utilized in Commerce

If you are currently using your trademark in interstate commerce, you initially incurred rights at the outset of this use. Trademark rights arise from actual use of the mark. Indeed, trademark registration is not required for ownership of an enforceable mark.

However, there are multiple advantages to having a registered trademark. Primarily, registration includes the exclusive right to use the mark on or in connection with the goods/services listed in the registration, as well as, the presumption of nationwide ownership. Federal registration also provides notice to the public of your claim of ownership of the mark.

Despite the advantages of registration, it could take between seven months to one year to actually claim registered status. For example, if everything goes smoothly with your trademark application, the USPTO will eventually publish your trademark in the Trademark Official Gazette. The process does not end there.

Immediately following publication, the USPTO provides a 30-day window for other companies and/or individuals to file objections to your trademark. If an objection is raised, it will protract the registration process and prevent you from actually enforcing your registered mark until the objection is resolved. If, on the other hand, no objections are raised, your trademark application will mature into an official federal trademark registration. Once this maturation period occurs, you will have all of the legal rights that associated with the registered mark.

• Trademark Not Currently Used in Commerce

If you register a trademark that you intend to be used in commerce, but is not actually used in commerce currently, you may need to wait between eight months and nearly three years before you have trademark registration status.

There is a separate submission protocol for trademarks not currently used in commerce. Businesses utilize this protocol in an effort to get a head start on the registration process and, most importantly, it is desirable for your brand to be safeguarded by federal trademark law as soon as possible.

• Allowance Process

The allowance process is highly similar for trademarks currently in use in commerce and those which the owner has an intention to use. If the mark is approved after the publication period, the USPTO will issue a Notice of Allowance (NOA). An NOA is not an official registration, Instead, it indicates you have survived the 30-day opposition period and that the mark is entitled to registration. If the mark is not currently being used in commerce, you will be required to file a Statement of Use (SOU) within the required timeframe. You can further prolong this process by filing extension requests for up to 30 months.

Have Questions About the Trademark Registration Process? Speak to an Experienced Trademark Lawyer in Los Angeles Today

If you are interested in applying for a federal trademark in the United States, or you currently have a trademark that you believe is being infringed by another individual or company, now is the time to take action. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation with one of our highly experienced Los Angeles trademark attorneys please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.