As the year is drawing to a close, I wanted to let you know about the following pricing changes that are being made for 2019 (both for my services as well as YourTrademarkAttorney.com). Beginning January 1, the fee for a federal trademark search will increase to $300, and the fee for preparing and filing a U.S. trademark application will increase to $800 (which still includes the cost of the government filing fee).
These changes were decided upon after careful consideration and discussion. This is the first time that we have increased the prices of these services since YourTrademarkAttorney.com was founded nearly 10 years ago.
We believe that our model of up-front, no-surprises, flat-fee pricing is best for small businesses. And these increases will allow us to continue providing our clients with high-quality personalized services. Thank you!
There are many reasons why St. Louis and Chicago make for good Midwestern rival cities. There’s the Cardinals/Cubs baseball rivalry. There is also the Blackhawks/Blues rivalry (which is really just the reverse of the Cardinals/Cubs). These two cities have been major economic competitors, as well. But most people are not aware of the more recent BILLY GOAT trademark rivalry. This was started when Chicago’s Billy Goat Tavern filed a trademark infringement lawsuit against St. Louis’ Billy Goat Chip Co., and is still going on.
The Billy Goat Tavern is a chain of restaurants in the Chicago area that have been operating since the 1930s. The Tavern is most famous for being the inspiration behind a recurring sketch on Saturday Night Live. You may remember it as the “cheeburger cheeburger” sketch starring John Belushi. The owners of the restaurant have a trademark registration for BILLY GOAT for “tavern and restaurant services” that was filed back in 1981.
On the other hand, the Billy Goat Chip Co. is a much newer business. They make and sell potato chips in recognizable little paper bags. They also own a trademark registration, which is for THE BILLY GOAT CHIP COMPANY for “potato chips.” They filed the application that preceded this registration in 2009, and claimed that their first use of the name with potato chips was also in 2009.
Issues and Current Status
The Billy Goat Tavern filed the trademark infringement lawsuit against The Billy Goat Chip Co. back in 2017. It claimed that it had prior rights to the BILLY GOAT name based on its use and earlier trademark registration. It also claimed that customers were confused over The Billy Goat Chip Co.’s use of BILLY GOAT in connection with its chips. Finally, it alleged that it was already selling food products under the BILLY GOAT name, and intended to add potato chips to its offerings, as well.
In response to the lawsuit, The Billy Goat Chip Co. made several arguments and even filed a counter-claim attempting to get a judgment that The Billy Goat Tavern cannot claim trademark rights to the BILLY GOAT name. First, the Billy Goat Chip Co. said that its use of THE BILLY GOAT CHIP COMPANY would not confuse consumers. It also argued that The Billy Goat Tavern did not have exclusive rights to the name BILLY GOAT because there are other food service companies that also use BILLY GOAT in their names. Finally, they argued that The Billy Goat Tavern had improperly used the ® symbol on food products for which it did not have a trademark registration.
The Billy Goat Chip Co. tried to have the lawsuit dismissed. However, a judge recently denied the motion, and the suit will move forward. It will be interesting to see how this plays out over the coming months (and, more realistically, years).
Is a Trademark Infringer “Getting Your Goat?”
When you think that you have found someone infringing your trademark, it is important to speak with an experienced attorney before making any accusations. Otherwise, you might end up being the goat. And when starting a new business you need to make sure the name that you want to use is available. If not, you may be running your business with a big “chip” on your shoulder. Okay, enough with the bad puns. If you need assistance, please call me at (314) 479-3668, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
This blog focuses on the legal aspects of choosing and securing a trademark. But picking a name also comes with several practical questions. One of the most important of these is determining when to purchase domain names. After all, you can end up infringing when you purchase someone else’s trademark as a domain. You also want to make sure that no one else comes along and takes a domain with your trademark. Here are some best practices when it comes to purchasing domains, with an eye toward trademark law.
Trademark Search Before You Purchase Domain Names
There is a ton of money made through buying and selling domain names. New businesses want to find a memorable domain that is tied to their brand. They purchase domain names that are memorable and will help potential customers to find them without relying on search engines. Many people buy up available domains that they think may have value to someone someday. This is called “domain prospecting.” It is legal for people to do this, and they often make good money on the sale of their domains.
On the other hand, you have probably heard of “cybersquatters.” These are people that purchase domain names that they know (or should know) correspond to someone else’s trademark. Businesses can take legal action against cybersquatters to retrieve infringing domains from the squatters.
In order to avoid becoming a cybersquatter yourself, you should perform a trademark search before purchasing a domain name. This is no different from the normal process that you should take before adopting a trademark. You should perform a knockout search yourself, then have a trademark attorney perform a comprehensive federal trademark search before purchasing the domain. Not only will this help you make sure that you do not pick an infringing name, but that you also do not buy a domain name that might cause confusion with an existing brand.
Purchase Domain Names Before Filing a Trademark Application
While you should avoid purchasing domain names before doing your research, you also want to avoid the opposite problem: buying too late. Filing a trademark application before you purchase domain names can also cause problems. The Trademark Office’s database is public record. This allows cybersquatters to look at applications that have been filed recently. They can then search for related domain names and steal them out from under applicants. In order to avoid this issue, purchase your domain names prior to filing a trademark application. Otherwise, you may have to choose between a less-than-optimal domain, costly litigation, or paying off the cybersquatters to get the domain that you want.
Make Sure to Purchase All Relevant Domain Names
As more websites go up and people purchase domains ending in .com, there has been a push for other domain types. Now it is more common to see domains ending in .net, .org, or .biz. These are potential sources of confusion that you want to prevent by purchasing a group of similar domains. For example, if my trademark is ABC and I buy ABC.com, I should also be sure to get ABC.net, ABC.org, and other variants. That way someone does not set up a site with a similar name right next door. You may also purchase similar names, like the plural or singular version of your name. For example, I own both IRegisterTrademark.com and IRegisterTrademarks.com. Protecting variations may also prevent similar headaches later on.
Need to Check Out Your Domain Before Buying?
It is always a good idea to perform a trademark search before adopting a name. You definitely want to look into a name before you buy and develop a website around a domain, too. For assistance with researching your name, please call me at (314) 479-3668, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
While we most often think of trademarks as names, logos, or slogans, there are many other types as well. A scent trademark is exceedingly rare, but does exist. You might think that they would be more common. After all, you frequently hear that scent strongly tied to memory. However, it is difficult to register a scent trademark for several reasons. Hasbro recently met the standards for registration of the smell of Play-Doh. Let’s take a look at the law regarding registration of smells, along with the Play-Doh smell registration, and other scent trademark registrations.
Scent Trademark Registration
There are several requirements that a scent must meet before it can be registered as a trademark. First, the scent has to be non-functional. This means that it cannot be a feature of the product. For example, you cannot register the unique scent of an air freshener, because the scent is the purpose of the air freshener. Additionally, you must present a lot of evidence to show that a scent functions as a trademark.
The fact is, most applicants will not meet the requirements for registration of a scent trademark. It is especially difficult to obtain such a registration on the Principal Register. The use of a scent must be so widespread that for the most part only large companies can be successful with these applications. Enter Hasbro.
The Play-Doh Scent Registration
Hasbro filed its trademark application for the Play-Doh smell in February 2017, and received its registration this month. During the application process, it had to make an argument to the Trademark Office that the smell of its product functioned as a trademark. It also had to come up with a way to describe the smell for its application. Hasbro described the smell as: “a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” Do you think that this accurately describes the smell?
Other Scent Registrations
Hasbro had a strong case for registration of its Play-Doh scent trademark on the Principal Register. Other businesses have faced more of an uphill battle, though. Here are some interesting registrations for smells that ended up on the Supplemental Register:
Registration No. 3,332,910for “toothbrushes impregnated with the scent of strawberry.” Of course, this registration states that the toothbrushes have a strawberry smell. Would you want to brush with a strawberry-scented toothbrush?
Registration No. 4,113,191for “retail store services featuring sandals and flip flop sandals, and related accessories, namely, beach balls, insulated bottle and can covers, key chains, decals, tossing disc toys, lip balm, pens and water bottles” scented like coconut. The smell of coconuts makes sense for a store that seems to have everything that you need for a day at the beach.
Registration No. 4,144,511 for “musical instruments, namely, ukeleles” scented like a pina colada. This is another tropical-themed product paired with a tropical scent. Now if only I had some lessons and/or talent.
Registration No. 4618936 for “retail store services featuring communication products and services and consumer electronics; demonstration of products” with a “flowery musk scent.” Verizon owns this registration, and wanted to set themselves apart by having a distinctive smell to their stores.
Most of the scent marks on the Supplemental Register are creative attempts to strengthen the brand of products or services. But the Play-Doh scent trademark was probably completely accidental. The scent became a trademark because of the popularity of the product, not because it was specifically designed to acquire distinctiveness. Hopefully you enjoyed reading about this post, and will think about it the next time you come across some Play-Doh!
Does Handling Your Own Trademark Matter Smell Like Trouble?
If you think that you might be over your head trying to perform a trademark search, or filing your own application, please call me at (314) 479-3668, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
One frequent question I get is whether someone can (or should) own a trademark as an individual, or whether they need a corporation, LLC, or other business entity. When applying to register your trademark, this is a question that you will need to answer. There are some good reasons why you should create a business entity that will own your trademark. This post will review some of these reasons and explain your options when filing a trademark application.
Individual vs. Business Entity Ownership
It is possible for either an individual or business entity to register a trademark. However, your business should own its trademark and corresponding trademark registration for a couple reasons. First, a trademark is a major asset for any business. If you decide to sell the business, you can bet that the buyer will want to own the trademark and registration. In fact, your business will be worth much more if it owns registrations for its associated trademarks.
Also, your business entity may protect you from individual liability (like with a limited liability company). This means that if someone sues you for trademark infringement, only your business assets would be at stake, not your personal assets. Obviously, protection from individual liability is something that you will want to have.
Assignment to a Business Entity
Although having a business entity own your trademark registration is ideal in most cases, clients frequently want to file their application before they set up their business. Especially when they want to file their trademark application on an Intent to Use Basis. That’s okay! This is very common, and there is an easy way to handle it.
If your business entity has not been created before you are ready to file your application, you can file under your name as an individual. Then, once you receive your registration, you can file a trademark assignment. You can assign your rights in the trademark as an individual to your business. This is a relatively straightforward process. Once completed, your business will be the owner of the trademark and corresponding registration!
Are You Ready to File Your Application or Assign a Trademark Registration to Your Business?
If you are not sure who the owner of your trademark application should be, you should speak with a trademark attorney. You also would want to work with an attorney on drafting a trademark assignment if you are ready to assign a registration to your business. For help with either of these items, please call me at (314) 479-3668, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
If you are looking for a trademark attorney, you will notice that they offer several types of trademark search services. The most common searches are: common law, state, and federal. While my practice focuses on the latter, today I want to discuss the common law trademark search.
What Is the Common Law Trademark Search?
To understand the common law trademark search, you first need to understand the difference between common law and federal trademark rights. Basically, you can acquire trademark rights in a name/logo/slogan/etc. just by using that trademark in commerce. These are called common law trademark rights. However, you get many important benefits by registering your trademark with the U.S. Patent & Trademark Office. One key difference is that common law rights only extend to the geographic area where you are using your trademark in commerce. Getting a federal registration expands those rights across the United States. That is just one of several advantages to federal registration of your trademark.
With that bit of background information out of the way, we can now discuss the common law trademark search. The search is really just what it sounds like. While a federal trademark search looks at the records of the Trademark Office to try and find pending applications/existing registrations for similar marks, a common law search looks for trademarks that have not necessarily been registered. So how can you find common law users? The Internet has made that a lot easier. Both attorneys and businesses use it to look for common law users. You want to use Google, Facebook, Twitter, and other popular sites where businesses list themselves in order to have potential customers find them.
Should I Hire an Attorney?
While most of my blog posts support hiring a trademark attorney, this one is an exception. I do not provide common law trademark search services to my clients, for reasons I will get into in a moment. But I do recognize that there are many attorneys and trademark DIY services that offer a common law search. Here are my thoughts on the subject:
In 2018, most businesses have an online presence of some kind. They are using the Internet to connect with potential clients and customers. They may have a social media presence, an online store, or reviews from previous customers. It usually only takes a quick Google search of their trademark to locate them, because they want to be found by potential customers. That is why I do not see the common law trademark search as an area where trademark attorneys can provide a lot of value to their clients. While you could hire me to do so, my Google search will be very similar to your own search, but at a much higher cost.
Keep in mind, a Google search will not reveal all common law users. Some small businesses still operate on word of mouth, and may have zero online presence. You probably won’t find these users with your search. However, in those cases, an attorney’s common law trademark search is not likely to be helpful either. Of course, if you find a similar trademark being used, an attorney can provide helpful insight on whether that mark is confusingly similar to your own. But overall, I still think that this is a search you can perform on your own.
Federal Registration and Common Law Trademarks
Let’s say that you want to register the name XYZ for a clothing store, but you find another XYZ clothing store online. How does that impact your ability to use and register the XYZ name? First, remember that common law rights are restricted to the geographic area where the name is being used. So if you’re in Toledo, and the other XYZ is a single retail store in San Diego, then you are probably OK. There can be multiple common law users in different geographic areas.
Sure, but how does that affect your ability to register the XYZ name? The Trademark Office does not reject applications based on the previous common law rights of others. If no one has registered a similar name for similar products/services, then the Trademark Office will approve your application. There is some risk here, though. If the other XYZ used the name first, they could oppose your application or try to cancel your registration on that basis. It can be very expensive to do so, though.
If you successfully register your trademark, it can eventually become “incontestable.” That means that it cannot be cancelled for several reasons, including on the basis that someone else had prior common law rights. The registration becomes incontestable five years after registration. Once that happens, common law users are locked into the area where they used the mark before it was registered. The registrant then reserves the rights to the mark in the rest of the United States. You can see how that makes early registration very important.
Need Assistance With Obtaining Your Federal Trademark Registration?
If you want to avoid getting “locked in” with your common law trademark rights, I would be happy to assist you by performing a comprehensive federal trademark search or by preparing and filing your application. Please call me at (314) 479-3668, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
There are so many faux-legal trademark services out there that it is hard to keep count. In the past, I have written about LegalZoom and Trademarkia. In this post, I want to talk about Trademark Engine. Trademark Engine claims to simplify the process for trademark registration. But instead, they will charge you for services that you can actually do yourself. And of course, they will do so without providing you with the legal advice that you really need. Basically, this screenshot tells you everything you need to know about the quality of Trademark Engine’s services:
Trademark Engine Search Services
As you can see from the example above, Trademark Engine’s search is not great to say the least. They offer both a free trademark search (as I used above) and some “comprehensive” searches. The free trademark search feature is terribly flawed. First, like in the example above, it misses obvious conflicts! But there are other problems, too. When I did a search for Burger King, several familiar results appeared:
However, as you can see, next to each hit was a large bright orange/red button for filing an application! If it’s a potential conflict, why would you make it so easy to apply?? I’m sure that there have been thousands of users that mistakenly filed, thinking this meant that they should apply to register their name. This free search feature is a poor replacement for the TESS search function on the Trademark Office’s website (which is also free!).
Their “comprehensive” search services also carry the same problems that you find with LegalZoom and Trademarkia. First, the search will only look for potential conflicts with other marks, not potential problems with the mark itself. It does not tell you if your mark might be refused registration for one of many other reasons, including: genericness, descriptiveness, primarily a surname, geographically descriptive, deceptively misdescriptive… and the list goes on and on.
Next, Trademark Engine will only provide you with a list of conflicts, not a legal opinion. As I have explained before, you want to hire an attorney that will give you a legal opinion on the availability of your mark. Not hundreds or thousands of pages of potential conflicts that you then have to sort through yourself, and judge whether you think any of them are actual problems for you. Their search services do not provide you with any value, and cost about the same as many attorneys would charge!
The $99 Trademark Application
Trademark Engine’s big marketing tool is the $99 trademark application. That number does not include the government filing fee of course, which is generally $275. But that $99 rate looks much better than calling it a $374 total cost, right? Well, looks can be deceiving. The real question you should be asking yourself is “what am I getting for that $99?”
If I were to charge you $99 for services, I would call that a “legal fee,” because I would be providing you with legal services. Trademark Engine doesn’t call this fee anything, because it’s not a legal fee. You could also interpret that to mean that they aren’t actually adding value to the process, and you would be right. Instead, you are paying $99 for an online form that you can fill out. That information will go into your trademark application. But that’s also exactly what you get if you fill out your application directly on the Trademark Office’s website.
The application on USPTO.gov will ask you the same questions. It’s actually more helpful because it details many requirements that you won’t get through the Trademark Engine form. If you’re not going to get legal advice and assistance either way, why pay $99 to fill out an online form that you could have completed yourself?
Dealing With Office Actions
Most applications will receive a response from the Trademark Office, called an office action. The office action may raise one of many issues, which will need to be addressed before your application can proceed. Well, if you’ve paid $99 to Trademark Engine for your application, this response would have to be covered, right?
Well at this point, Trademark Engine is beyond the scope of what they can help you with. Therefore, they advise that “you may want to hire counsel at that point.” Gee, thanks! Also, many office actions raise administrative issues that are relatively easy to address. But Trademark Engine isn’t going to help you with those, either. So when those come up, as they do in most cases, you’ll have the options of trying to navigate those issues yourself or hiring an attorney. At that point, how good of a value was Trademark Engine really?
Overall, like other “do it yourself” online trademark services, Trademark Engine does not provide you with any additional service that you cannot do yourself. Their offerings get you to pay for things you could have done on your own for free. And that is why I would say you are better off doing things yourself than paying a middle-man service like them.
On the other hand, paying an attorney will provide you with real value. An experienced trademark attorney will prepare and file your trademark application for you. When they do that, they will ask the right questions to make sure that your registration isn’t subject to cancellation like it may be if you file yourself or through Trademark Engine. They can also help you respond to office actions. Some attorneys include such responses in the initial application fees. They can also answer your legal questions, which no one at Trademark Engine is licensed to do. Trying to save money on a service like this may end up costing you more initially, and certainly risks far bigger costs in the long run.
Want to Skip These Types of Headaches?
Investing in your brand is an important step for your business. You want to make sure that it is handled with care, unlike my search results saying that NIKE is available for trademark registration. When you are ready to work with a real professional, please call me at (314) 479-3668, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.