How do I trademark my clothing brand?

We work with lots of different types of clients but probably the most popular category of clients are those folks interested in registering their apparel brands.  It makes a lot of sense too.  Apparel is big business and with today’s technology you can have a website with your custom style/sized clothes where another vendor manufactures and ships the clothing to the purchaser.  Easy peasy.  

But registering a trademark for apparel is another thing altogether. There are some serious pitfalls for the inexperience applicants.  In this post we will cover applying for an apparel trademark and the specific issues clients regularly face.

1. Word Mark or Design Mark?
2. Searching the USPTO for Apparel Brands
3. You Are Also a Service Provider
4. The USPTO Rejected My Apparel Specimen!
5. Enforcement

1. Word Mark or Design Mark?

Word marks protect the letters, numbers, or characters of a trademark without any claim to color, font, design, or style.  Generally they are what we recommend client file if feasible.  They’re  Plain Jane.  They are also the most bang for your buck since so long as you continue to use the name, you’re protected for the life of the registration, despite changing logos.  But with apparel, the story is a little different.

Apparel clients are all about style.  Design sense is incredibly important for these clients and the logo on the apparel is generally of the utmost importance.  That’s why we often opt to protect the logo in addition to the word mark.  Design marks protect the logo, which may include the words in that logo.  We generally file the trademarks as black and white with no color claim.  That way the owner can use the logo in different colors on a variety of backgrounds.  So what’s our trademark recommendation for apparel clients?  File a design mark and possibly a word mark.

Read More:

• Converse Sues to Protect Its Famous Shoe Designs
• Can a Fashion Designer Trademark its Apparel?

2. Searching the USPTO for Apparel Brands

All applications at the USPTO fall into one of 45 classes of goods and services.  Apparel is class 25 and it protects everything from shirts to shoes to formalwear.  It’s a huge category.  So when we search the USPTO we are keyed in on 25 but that’s not the only place we need to look.  The USPTO treats apparel and jewelry as highly related.  Jewelry is class 14.  If an apparel brand applies in 25 but there’s a similar brand registered for jewelry in 14 there’s a good chance of a likelihood of confusion office action.  And nobody likes that!  Beyond 25 and 14 you need to also consider class 35. 

Read More:

• How to Perform a Trademark Search
• The Benefits of Using an Attorney to Conduct a Trademark Search

3. You Are Also A Service Provider

If you have an apparel brand you are likely not just a manufacturer, you’re also a service provider and likely to file another application in class 35.  35 includes services like retail and online retail store services.  Many clients who sell apparel also choose to protect their online stores.  Similar to jewelry, if an apparel applicant applies to protect the apparel in 25 but there’s an online store registered for apparel in 35 there’s going to be trouble.  A registration strategy we often employ to save clients money is to file a design mark in 25 for the apparel and a word mark to protect their website in 35.  Best of both worlds while saving legal and government fees.

4. The USPTO Rejected My Apparel Specimen!

We see office actions all the time from clients who incorrectly filed a specimen for their apparel brand.  A specimen is proof that you’re using the trademark.  It’s a bit technical but for most clients a specimen is a picture of the trademark on the product or used in conjunction with the service (usually a website screengrab).  Apparel is a bit trick because the USPTO is very strict about the applied for trademark being used as a “source identifier” as opposed to mere decoration.  Routinely our firm will get a call from a client who received an office action because the USPTO didn’t like their apparel specimen.  The specimen they submitted was a picture of the brand in big font across the front of the shirt.  That’s usually called decoration or ornamentation.  What the USPTO really wants to see is a picture of the trademark placed on the upper left breast pocket area of the shirt just like you’d see on a Ralph Lauren Polo shirt.  Call the USPTO old fashioned!  Or you could snap a picture of the apparel with a hang tag displaying the trademark.  Either way it can be frustrating for clients.  In reality it’s an easy fix for a trademark attorney.

Read More:

• How to Find a Good Trademark Specimen

5. Enforcement

Congrats, you received a trademark registration for apparel. Now what?  Your trademark rights are limited only by how strong or weak the trademark is.  For a really unique trademark the sky is the limit.  If there’s multiple people using similar brand names tread carefully before you send a take down notice Amazon or social media.  You don’t want to run the risk of challenging the use of someone else’s unregistered rights.  They may decide to try and cancel your trademark.  Our advice is to always speak with a trademark attorney to ensure your rights are senior and superior to the junior infringer.

Read More:

• Justice Explained: Trademark Infringement & Defenses

That’s A Lot! But Mighty Marks^® Can Help

Our online trademarking service helps startups and small businesses obtain federal trademark registrations.

Learn more at www.mightymarks.com.

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Image: Unsplash.com
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

Anticybersquatting Consumer Protection Act (ACPA) – Strong Medicine for Trademark Trolls

The Anticybersquatting Consumer Protection Act exists to protect and give a remedy to owners of trademarks whose rights are being violated by a third party.  Often referred to as “trademark trolls” these third parties may be liable to the owner of the trademark if with “a bad faith intent to profit from that mark… registers, traffics in or uses a domain name” that creates a likelihood of confusion to the owners’ registered trademarks.  Unfortunately these domain holdups are far too common and present real business issues for legitimate trademark owners.

Here’s how the holdup games works and how you can prevent it.  Generally speaking you likely just started a new business or launched a new product.  You’ve generated some digital press, people are visiting your website, and you’re making money.  Your customers are taking note of your success but so are domain pirates.  One such “enterprising” individual registers a similar domain name to yours.  They may have even copied some of your website’s images or text.  You probably don’t even know they exist until a customer tells you they stumbled on a possibly fake site looking for yours.  Alternatively the trademark troll emailed you to let you know they coincidentally own a similar domain as yours.  Huh… what a coincidence!

So what can you do to prevent or mitigate this behavior?  First you need to be smart about your IP.  Before you go to market secure any trademarks with an intent-to-use trademark.  Second, you need to lock down and register any similar website domains that a trademark troll could profit from.  Common misspellings and pluralization are common methods used by the domain pirates.  Third, do not respond to the baiting email.  Contact your trademark attorney for a strategy discussion.

Your trademark attorney can advise you about what steps should be taken next.  While monetary damages and possibly attorney’s fees are available under the ACPA you’re more likely to receive a court order canceling the offending parties domain registration.  Contact Mighty Marks for a free consultation

 

Trademark Law 101: Everything You Need to Know About Trademark Registrations

Understanding how to protect your brand and avoid infringing trademarks owned by other businesses can be complicated at times. But, for every startup and small businesses out there, understanding trademark law is critical to building a successful brand.

In this post we will cover a lot of ground and focus on the six topics below.

1. Trademark Law
2. Don’t Pick a Generic or Descriptive Mark
3. Researching Trademarks
4. Trademark Applications
5. Post-Application Filings
6. Post-Registration Filings

1. Trademark Law

A trademark is a name, slogan, or other mark that serves as a source identifier. That means consumers can purchase a good or service and rely on the trademark attached to it as an identification of who is selling that good or service.

To get trademark rights, you first need to use your mark in commerce. Once you use your mark in commerce, you gain a “common law” trademark that you can enforce in court. Of course, it is always a good idea to register your trademark with the United States Patent & Trademark Office for better protection. For example, a federal registration can help you protect your mark throughout the entire country rather than just in the geographical areas in which you are using your mark.

Read More:

• What Everyone Ought to Know About Trademark Law
• How to Get Trademark Protection Before Use in Commerce
• 5 Keys to Protect Your Trademark

2. Don’t Pick a Generic or Descriptive Mark

When picking your name, be sure to pick something that is not generic or descriptive. That’s because generic and descriptive marks cannot be protected. As an example, if you want to open a barbecue restaurant, don’t call it BBQ Shack because you will not be allowed to own those words in connection to the sale of barbecue. If you could, other companies would be prohibited from using those words to describe their business.

Read More:

• What is a Descriptive Trademark
• From Arbitrary to Generic – The Trademark Protection Spectrum

3. Researching Trademarks

Before you use a mark in commerce (and certainly before you file a trademark application) you should do some research to see if anyone else is using the mark in association with similar goods or services. That’s because, generally speaking, the first person to use a mark will be deemed the owner of that mark.

You should look for anyone using an identical mark or any mark that is confusingly similar to your mark because trademark protection extends to any mark that might confuse consumers. Further, your search should mostly focus on other marks being used on similar goods and services to your goods and services. That’s because trademark rights are specific to a type of good or service (think Delta Airlines v. Delta Faucets).

Once you have confirmed that no one else is using the mark you want to use, you can move on to an application.

Read More:

• How to Perform a Trademark Search
• The Benefits of Using an Attorney to Conduct a Trademark Search

4. Trademark Applications

When you are ready to file your application with the USPTO, you can do so online. While anyone can file for an application, using an attorney is highly recommend (read more on that here). The application process includes completing the form, identifying the goods or services you will sell under your mark, submitting a specimen showing your use of the mark in commerce, paying the application fee, and submitting your application.

We’ve covered all of those topics a lot on this blog. Read more about them at the links below.

Read More:

• Why Your Startup Should Apply for a Federal Trademark
• Understanding the USPTO Trademark Filing Options
• How Much Does a Trademark Application Cost
• How to Find a Good Trademark Specimen
• Trademark Application Timeframes
• How to Find & Hire a Trademark Attorney

5. Appealing a Denial

After you file your trademark, you may receive various correspondence from the USPTO (and you’ll probably get some spam too). Some of those communications will be simple requests to disclaim a portion of your mark (meaning you won’t claim protection for that word) or to correct your identification of your goods or services.

Unfortunately, your application may be denied. If that happens, you should read out post What You Should Do If Your Trademark Application Is Denied. Sometimes you can overcome the denial, sometimes you can’t.

If you don’t appeal the denial, or if your denial is not overturned on appeal, your application will be deemed “abandoned.”

Read More:

• Trademark Application Timeframes
• What You Should Do If Your Trademark Application Is Denied

6. Post-Registration Filings

If your application is approved, you will receive a federal trademark registration certificate. But don’t forget to keep up with post-registration filings. The most important filings occur five years after your registration date, ten years after your registration, and every ten years thereafter. We’ve covered this on our blog before and you can read more at the links below.

Read More:

• How Long Does A Trademark Registration Last
• How to Keep Your Trademark Application Alive

That’s A Lot! But Mighty Marks^® Can Help

Our online trademarking service helps startups and small businesses obtain federal trademark registrations.

Learn more at www.mightymarks.com.

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Image: Adobe/Rawpixel.com
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

How Much Does a Trademark Application Cost?

A common question many startups and small business owners ask is how much will it cost them to get a trademark registration with the United States Patent and Trademark Office (the USPTO).

Generally speaking, most applicants will spend several hundred dollars on the application, plus additional fees for lawyers and search companies. In this post we will break that down.

USPTO Application Fee

Depending on which application you file, you will likely pay $250 or $350 The cheapest option, $250, is only available if you use the USPTO’s online application process and agree to use a pre-approved goods/services description. In most situations, you will be able to do that.

Keep in mind, however, that if you file an Intent to Use Application (sometimes called a 1(b) application), then you must pay an additional $100 at a later date when you file your Statement of Use (evidence showing actual use of your mark in commerce).

Trademark Search Fees

Although you can perform your own trademark search, you are usually better off using professional help to make sure you have superior rights in the mark you want to register. Sometimes the attorney helping you file the application has the tools necessary to perform the search. But other times they will recommend a third party perform the search. In either event, it is likely to cost you at least $700 to obtain a professional trademark search and sometimes a lot more depending on what you want to search.

Although it can be expensive, performing a search is a good idea because it can prevent a lot of headaches down the road if you try to protect a mark which someone else is already claiming.

Trademark Attorney Fees

You will also likely want to hire an attorney to assist with your search and your application. There are many benefits to hiring an attorney to help. First, an attorney can help you decide whether you can even protect your mark in the first place (because some marks cannot be registered). Second, they know the ins and outs of the application and can increase your odds of getting the application approved. Third, they understand what to look for in a trademark search and might spot something you might miss. Fourth, if your application is denied, you will absolutely want legal assistance to respond to the denial and having an attorney assist you from the start will be better than bringing in an attorney later. And there are more benefits, but that’s for another post.

So what will they charge? It depends. Some will charge you over $3,000, while many will charge you less depending on the work load involved. For example, at mightymarks.com we charge a $1,495 fixed fee to provide counsel, research, an opinion, and to draft the application.

The Total Cost

In the end, if you obtain a professional search and get legal help, you will likely spend between $1,745 to $1,995 to get your application drafted and filed. But also note that if the application is denied, most attorneys will charge extra for time spent handling an appeal (if you appeal).

Want to Get Started?

If you want to file a federal trademark application, we can help! Just head over to mightymarks.com to learn more.

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Image: Adobe/gustavofrazao
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

How Long Does My Trademark Registration Last

If you’ve obtained a federal trademark registration with the United States Patent & Trademark Office (or USPTO for short) you may be wondering how long your registration lasts and how long you can protect your trademark.

Well, there is good news here. Unlike copyright law and patent law, which have time limits on protection (usually 75 years after the death of the creator for copyrights and 20 years for patents), trademark protection can extend indefinitely if you stay current on filings. That’s because you can protect your registration for so long as you are using the mark in commerce, provided it doesn’t become generic.

Assuming you are still using the mark in commerce, the key is to stay current on your filings. Here’s what you need to do.

5 years after registration

To keep your registration alive, make sure you file your Section 8 Declaration of Use between the 5th and 6th year after your registration. You’ll have to include a new specimen of use to prove to the USPTO that you are still using the mark in commerce.

You can file a Section 15 Declaration of Incontestability. This filing allows you to claim “Incontestability” status for your mark which gives you a legal presumption that your registration is valid (among other benefits). That can be really helpful if you find yourself in court as a plaintiff or a defendant.

Since these two filings occur at the same time, the USPTO has a combined Sections 8/15 form you can file to save time.

These are critical filings because, if you fail to make them, you can lose your mark. There are some grace periods in which you can file the documents after the deadline, but you really should strive to timely file the documents to avoid headaches.

10 years after registration

Five years later (10 years after the registration) you have to renew your registration. Specifically, you file this between the 9th and 10th years following the registration. Here you use a Section 9 renewal form. Also at this time, you must file another Section 8 Declaration of Use to prove that you are still using the mark in commerce.

Just like the filings above, the USPTO maintains a combined form, the Sections 8/9 form to help you save time.

And also like above, if you fail to timely file these forms, there is a grace period. But you are better off filing it all on time.

20+ years after registration

Ten years later (20 years after the registration) you have to repeat that last process. You file another Section 9 form and another Section 8 form, or just use the combined 8/9 form. You must do this every 10 years to maintain the trademark registration.

Need help with your USPTO filings?

Let us know because we can help!

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Image: Adobe/raywoo
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

Car-Freshener Corporation Wins Trademark Infringement Lawsuit

Last month we covered the Car-Freshener Corporation’s trademark infringement lawsuit against Exotica Fresheners Company.

Car-Freshener Corp claimed that Exotica designed their products to look like Car-Freshener’s products, that consumers would be confused and tricked into purchasing Exotica’s products rather than Car-Freshener’s products, and further, that because Exotica’s products were an inferior, additional damage to Car-Freshener was being caused.

This case came down to a debate over “Trade Dress” and ultimately the jury found in favor of the plaintiff, Car-Freshener.

“Trade Dress”

Trade dress, a subset of trademark law, contemplates the design of a product including its packaging. And much like other forms of trademarks, it can be protected under federal law. However, it must still serve as a source identifier. That is, it must allow the consuming public to see the trade dress (the packaging) and identify what company is producing and selling that good. Therefore, it must be either inherently distinctive or it must acquire secondary meaning (see this post for more).

One exception to protecting trade dress, however, is that you cannot protect functional aspects of packaging using trade dress. Functionality can only be protected under other forms of intellectual property, namely patent law.

The Arguments

While Car-Freshener Corp. made the arguments outlined above, the defendant, Exotica, claimed that its palm tree was sufficiently different from the pine tree used by Car-Freshener Corp. and that they used similar colors for the same scents because they were the industry standard. Exotica also claimed that they have used yellow packaging off and on for years without complaint from Car-Freshener Corp. In the end, Exotica claimed that it was just a coincidence that the products looked similar.

The Jury Verdict

The jury, weighing whether Exotica’s products were so similar to Car-Freshener Corp’s as to cause consumer confusion, found in favor of the plaintiff, Car-Freshener Corp. They also awarded over $50,000 in damages to Car-Freshener Corp.

This is not overly surprising given the numerous similarities between the two products. They were both trees of about the same size. They used similar colors for the different fragrancies. And they were sold in clear packaging with a yellow cardboard top containing red and green elements.

What’s Next

Unless they appeal, Exotica will be required to change their packaging to avoid future infringement. Of course, you likely won’t see much of a change on your local store shelf because Exotica is actually a fairly small company. In fact, while Car-Freshener’s sales exceed $100 Million per year, Exotica’s sales are only about $100,000 per year.

Of course, that doesn’t mean Exotica wasn’t worth suing. To the contrary, Car-Freshener can use this case to protect their brand and also to scare off other infringers and would-be infringers.

Questions about your trademark rights?

If you want to protect your trademark, contact us! We help startups and small business file trademark applications with the USPTO all the time.

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Image: Court Case
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

Spam Following Trademark Application

You’ve filed your trademark application with the United States Patent & Trademark Office (USPTO) and all of a sudden you start getting emails and physical mail regarding your trademark and you might start to wonder how you are supposed to keep up with all of the filings and fees.

Well, the good news is you don’t have to keep up with all of those mailings. The bad news is, it is mostly spam.

Here’s what you need to know.

Information in Your Application is NOT Confidential

Your application will be publicly available. Anyone can access the USPTO’s database and read your application and mine your application for your information. As a result, many companies in the U.S. and abroad have discovered they can automate the process and collect your contact information as soon as your application is filed. As a result, they know who you are, where you operate, and more importantly, they know information about the trademark you are seeking to register.

Mailings You Might Get

Pretty quickly after submitting an application, you may receive one or more of a number of different types of emails or physical mailings. These mailings will offer a wide range of services from legal services to trademark monitoring services, recording services with other agencies, and recording services with foreign offices. Some of these are valuable services you may want to purchase. But many of them are not valuable and you should not purchase them.

They Are Probably Not Official

Although the mailings may look like official USPTO documents, they are probably not. For instance, many will include names including “United States,” “Registration Office,” “Agency,” or the like and further, many will use formats that look like official USPTO documents. They will probably also have unique information about your application like the mark, the serial number, the application date, and your contact information. But remember, all of that is public so just because that information is on a mailing, it doesn’t make it official.

How To Spot Official Documents

Here’s the good news. Official documents and communications from the USPTO will always come from one of two places. First, if physical, the documents will come from the “United States Patent and Trademark Office” in Alexandria, Virginia. And second, if by email, the documents will come from an official “@uspto.gov” domain.

If the documents arrive from any other source, you can almost certainly conclude they are not official.

What If You Were Duped?

From time to time people make mistakes and send money to one of these third-parties by mistake. If this happens to you, you should seek a refund from the third party and, more importantly, notify the USPTO and also the Federal Trade Commission. You might also consider contacting a state official in your state regarding the misleading business practice.

The Best Course of Action

Without a doubt, we think the smartest thing you can do is seek help from a competent trademark attorney. He or she can help you with your application (which is a big deal itself) and also with determining what communications you should take seriously after you file your application.

And of course, if you want to file a federal trademark application with the USPTO, we recommend you check out MightyMarks.com where we can help you unleash the power of a federal trademark.

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Image: Adobe/d.c.photography
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

Alleged Trademark Infringement Hanging In Your Car

Trademarks are everywhere. Even hanging from your car’s rear-view mirror. And business owners everywhere can learn a thing or two in a recent lawsuit filed to protect trademarks associated with little tree car-fresheners.

In One Corner: The Car-Freshener Corporation

You’ve probably never heard of them, but you’ve likely seen and maybe even used their product.

The Car-Freshner Corporation has made little tree car-fresheners for years. The fresheners are shaped like a pine tree, have the company’s name written at an angle in the middle, and are sold in a cellophane package with a yellow card top. The company claims that the public associates its products with “the concepts of freshness, cleanliness, and pleasing scents.”

And they have three federal trademark registrations with the United States Patent and Trademark Office. The first two are word marks (“Car-Freshner” and “Magic Tree”) and the third is a design mark for the tree design with a white box in the middle for their logo. All three are in connection to “absorbent bodies impregnated with perfumed air deodorant” and date back to first use dates in the 50’s and 60’s.

In the Other Corner: Exotica Fresheners Company

If you prefer palm trees and coconuts over pine trees, then maybe you’ve heard of the Exotica Fresheners Company.

This company also makes air fresheners for cars. Their fresheners are shaped like a palm tree and contain coconuts, and like the Car-Freshener’s products have the company’s name written at an angle in the middle and are sold in cellophane packaging with a yellow card top.

Unlike the Car-Freshener Corporation, the Exotica Fresheners Company does not have a federal trademark registration. In fact, they applied for a trademark for “Pine Tree” with the USPTO but were denied registration and failed to appeal.

Round 1

The Car-Freshener Corporation filed a trademark infringement suit against Exotica claiming consumers were likely to be confused and deceived and likely to mistakenly purchase Exotica’s products when they intended to purchase Car-Freshener’s products. Car-Freshener further claimed that Exotica’s products were likely to “falsely mislead consumers into believing” that Exotica’s products were “affiliated or connected with or are approved” by Car-Freshener.

And in opening statements to the jury, Car-Freshener alleged that Exotica knowingly designed its products to look like Car-Freshener’s products. And further, that Exotica’s products were of an inferior quality when compared to Car-Freshener’s products.

Exotica argued that there is no evidence of consumer confusion.

What’s Next

Interestingly, disputes between these two companies is nothing new. In fact, they have been involved in numerous disputes dating back to at least 1995 over trademark matters. And in this current trial, the outcome is not certain.

As we have covered on this blog before (Justice Explained: Trademark Infringement & Defenses & The Nine Factors a Court Considers When Deciding “Likelihood of Confusion”) Car-Fresheners will have to show that Exotica’s products are likely to cause consumer confusion. That is, that the public is likely to purchase the palm tree air freshener mistakenly thinking they are buying a product from Car-Freshener.

While the products are similar, it is not clear if they are so similar as to meet that threshold. The jury will most likely review the nine factors (see the post above) to come to a determination in this case. And the outcome will be interesting.

Hopefully we will get a verdict soon. And when we do, we will tell you what happened and why here on the Mighty Marks® blog.

Don’t miss our updates! Connect with us on Twitter & Facebook to stay in touch.

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Image: Court Case
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

Pinterest Loses Trademark Battle In Court

A trademark lawsuit beginning in 2013 may finally be at a conclusion, resulting in Pinterest losing some ability to prevent other businesses from using the word “pin” online to save links, images, and other works.

The lessons stemming from this case are helpful to business owners everywhere. Here’s how it went down.

The Parties.

Pintrips operates a website that allows users to save travel items on other websites for later viewing on the Pintrips website. Users do this using a “pin” button that is imbedded on third party websites.

Pinterest, on the other hand, operates the widely popular website allowing users to “pin” creative items into boards on the Pinterest website. Much the same as Pintrips, users do this with a “pin it” button on third party websites.

Pinterest filed suit against Pintrips in 2013.

Pinterest is the owner of multiple Pinterest trademark registrations and at least one Pin trademark registration. As a result, it brought suit against Pintrips in 2013 seeking to prevent Pintrips from using its blue pin button to save travel information on the Pintrips website.

Complicating Pintrips business further, the USPTO denied the company’s trademark application for “pin” pending resolution of the lawsuit.

Pintrips attorneys argued that the words “pin” and “pinning” are simply part of internet terminology. They claimed that saying “pin” was much like saying “trash” in reference to a computer’s trash folder. Further, they argued it would be unreasonable to allow large corporations to “seize control” of commonly used terms that are a part of “everyday culture.”

The court agreed with Pintrips.

In tossing out Pinterest’s lawsuit, the court stated that “no reasonable weighing of the evidence presented at trial could lead to the conclusion that Pintrips used the term pin as a way to identify, distinguish, or indicate the source of its goods or services…. In fact, any attempt to distinguish Pintrips by use of its pin button would be futile, given that the words pin and pinning have been used to describe the same feature by many of the most popular and well-known software and internet products since well before Pintrips’s creation.”

The court also agreed with Pintrips’ argument that “pin” is just part of internet terminology saying that it was similar to early software designers using “real-world metaphors such as folders, files, desktops and bulletin boards to describe new technological functions.”

The lessons for your business.

This case and the loss for Pinterest is a great example you should keep in mind when creating your branding. Rather than trying to use generic terms to describe your features, try to be more original. Use arbitrary terms whenever possible if you really want to ensure you can protect your branding with trademark law. Descriptive terms may be easier to market, but arbitrary terms are easier to protect.

Want to learn more?

You should subscribe to our quarterly newsletter, Mighty Updates, to stay current with trademark news and legal issues.

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Image: Pinterest Logo
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

What you should do if you receive a cease and desist letter.

If someone thinks you are infringing their trademark, they may send you a cease and desist letter prior to suing you for trademark infringement. Receiving one of these letters can leave you confused and/or mad. However, it is important that you take the letter seriously and carefully consider what to do next because you don’t want to end up in a trademark infringement lawsuit.

Below are four options you have when you receive such a letter.

Option One: Do nothing.

Your first option is the simplest option: do nothing. You can ignore the letter and take the risk of what happens next. Sometimes the other party will just forget about you. More often, they will send you a second or third letter. And if you still don’t respond they may seek more forceful actions against you including filing a lawsuit for trademark infringement against you in federal court.

And even if your actions don’t constitute trademark infringement, the other party can still sue you. Assuming you are not committing infringement, you might be able to win the lawsuit. But being a party to the suit won’t be fun and it can cost you a small fortune.

For that reason, you should always do something when you receive such a letter.

Most often, your best course of action will be to speak to a trademark attorney about whether your actions do or do not constitute trademark infringement. Your trademark attorney can then advise you on possibly taking one of the three routes described below.

Option Two: Negotiate.

If you agree you are committing trademark infringement, then you can try to negotiate your way out. Often times the other party will be friendly with you if you were an innocent infringer. You can ask for time to phase out your use and adopt a new name and you can sign an agreement with the other party to avoid financial damages and subsequent lawsuits.

And in some situations you can negotiate some kind of trademark license agreement or an agreement not to enter the other party’s geographical region.

If you don’t think you are committing trademark infringement, then you can negotiate a settlement or, more likely, respond as outlined below.

Option Three: Respond.

Your attorney can help you draft a proper response. If you are alleging you are not committing trademark infringement, then you need to ensure your response clearly explains why you believe you are not infringing. Citing cases or case law about how your mark is not confusingly similar to the other mark, or showing examples of why the other mark is weak, are ways you can go about arguing your case to the other party. Alternatively, if you have been using your mark longer than the other party, you may allege that as a basis of non-infringement.

And if you are really confident you are right and are concerned the other party will drag the dispute on forever, you can file a lawsuit.

Option Four: File a Lawsuit.

This is an extreme option but it can certainly be beneficial to certain trademark owners. You and your trademark attorney can file a lawsuit to seek a “declaratory judgment” of non-infringement. In short, you are asking a court to compare your mark to the other mark and rule that your use of your mark does not constitute trademark infringement.

What You Should Do

Regardless which route you want to take, you should always seek competent advice from a trademark attorney. He or she can advise you on your rights, your likelihood of success, and more. Without their experience, you may find yourself in more trouble than you need to be in.

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Image: Adobe/Andrey Popov
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.