US Trademark Fees Reduced

On January 17, 2015 the United States Patent and Trademark Office (USPTO) will reduce their filing fees.  Specifically, the TEAS (Trademark Electronic Application System) Plus filing fee drops from $275 to $225, the TEAS (now called, the TEAS RF (Reduced Fee)) falls from $325 to $275, and the paper filing (TEAS Regular) goes from $375 to $325.  In addition, the trademark renewal fee drops from $400 to $300 (this filing is due on the the tenth anniversary of a trademark registration, and every ten years thereafter).

The fees are getting reduced because of the Leahy-Smith America Invents Act (AIA) and for the purpose of encouraging individuals to file applications online.  As indicated in the comments of the Federal Register Rules and Regulations, the change will help “increase the volume of end-to-end electronic processing of trademark applications…[and] will make filing for individuals and smaller entities more accessible.”

The main change from the AIA is a reduction in filing and renewal fees, while the requirements for the filings primarily remain in tact.

Filing a TEAS Plus Application = now $225
In order to qualify under a TEAS Plus application the applicant needs to:

1. Provide name, address, and email (and allow the Office to contact you via email);
2. Respond to the Office electronically (through TEAS);
3. Use a description of your goods/services that complies with the Office’s Acceptable Identification of Goods and Services Manual;
4. If the mark identifies a person’s name, a signed authorization from the person to use that name;
5. If including a design, a .jpg of the mark; and
6. If non-english, a translation.
   (There are a few others, but these are the main requirements)

Filing a TEAS RF Application = now $275
This type of application does not require the above clarifications. In addition, you may list the goods/services under your own description. However, an Examining Attorney may require you to be more specific with your description in a future Office action.  This type of filing simply requires the following:

1. Provide name, address, and email (and allow the Office to contact you via email); and
2. Responses regarding the application must be submitted electronically through TEAS

Filing Regular TEAS Application = now $325
Don’t do it. This type of application is submitted via fillable forms that you mail in. Either of the two applications above are better options.  The TEAS Plus or the TEAS RF applications will most likely be processed quicker, you’ll receive notices via email rather than snail mail, and you can respond electronically.  A Regular TEAS filing is antiquated and represents the primary reason behind the reduced fees in the first place. Help America, don’t file a Regular TEAS application.

If you’d like more information regarding the reduced fees the USPTO provides a nice summary page on their website.

If you would like a trademark attorney to handle your registration use OnlineTrademarkAttorneys.com.  You can simply fill out our online form for trademark registration for assistance. Published January 9, 2015 by Brent Sausser.

Low Cost Trademark or Cheap Trademark Services

Low cost trademark services are located all over the internet. We’ll tell you what to look for and who to hire in order to protect you from infringement as well as increase your odds of acquiring a trademark registration.

There are numerous “we’re not a law firm” websites such as, LegalZoom, Legal-Sherpa, etc. These “self-help” services will often display a notice in the footer of the website that reads:

We are not a law firm or a substitute for an attorney or law firm.

This notice means that any and all information shared with these companies is not attorney-client privileged and that the company cannot inform you of specific trademark laws or legal consequences of filing your trademark. Whereas, an attorney can give you the specific legal advice you need to successfully file a trademark application and protect you from unwanted infringement.

See Customer Reviews:
LegalZoom Trademark Review
Legal-Sherpa BBB Trademark Review

Low Cost Trademark – The Most Important Difference

Self-help services can’t offer you legal advice. When using a trademark attorney the attorney will first conduct a comprehensive search. This search is imperative, as it ensures you are the sole owner of the trademark, prevents you from infringing on another business’s trademark, and determines the likelihood of a successful registration of your mark. An attorney will also advise you throughout this process on the appropriate steps in order to fully protect your mark. In addition to providing you search results of similar marks, an attorney can decipher the most important marks and advise you whether the marks will prevent the registration of your mark and whether you are infringing on a currently registered mark. This can save you six months of your life awaiting the rejection from the United States Patent and Trademark Office as well as prevent legal consequences.

For example, lets say you hire a self-help service to file your trademark: you provide them with your trademark information, they enter it into an application, and you submit it to the United States Patent and Trademark Office. Now lets say that your trademark matches another mark that is registered in a similar field. What you have just done is give notice to this registered mark’s owner that you are using an infringing mark. You will most likely receive a Cease & Desist letter from this registration owner advising you to stop using your trademark or suffer legal consequences. If your use constitutes a willful counterfeit mark the trademark owner is statutorily entitled to up to $1,000,000 per counterfeit mark per each type of goods or services. In addition, your trademark will receive a Section 2(d) refusal for likelihood of confusion from the Trademark Office, resulting in the loss of your government filing fee of $275 or $325. All of this could have been avoided with advice from an attorney.

Don’t settle, Increase Your Odds of Obtaining a Trademark Registration

According to a study published in Stanford Technology Law Review, and as reported by the Wall Street Journal, trademark applicants are 50% more likely to receive a registration if they use a trademark attorney. Again, this is correlated to the sound advice a lawyer can give you on whether your mark is registrable.

Cheap Trademark Service – “Attorneys aren’t cheap”

You don’t have to seek a self-help service in order to file a trademark for a low cost. Some trademark attorneys offer low cost trademark services for flat fees. You get the best of both worlds, low cost trademark services AND professional, privileged legal advice regarding your trademark. Thus, instead of seeking a “cheap trademark”, you should seek a low cost flat fee trademark attorney.  If you need more information see our webpage regarding whether you should hire a trademark attorney.

Published September 5, 2014 by Brent Sausser. If you need trademark services or have trademark questions you can contact Brent at the following link: Trademark Registration Attorney.

Washington Redskins Lose Trademarks

Today the Trademark Trial and Appeal Board made history when it decided to cancel six Washington Redskin trademarks as disparaging to Native Americans.  So what does this mean?

Well for starters, this does not mean the Washington Redskins cannot keep using their name.  In the U.S. it is not mandatory that you have a federally registered trademark to have rights to use a name.  This decision also does not mean the Washington Redskins cannot appeal the decision.  The TTAB has indicated it will not enforce the cancellations until after there has been an opportunity for the owners to appeal the decision.  In fact, last time the TTAB tried to cancel the trademarks, a federal judge overturned the decision based on the fact the name was not disparaging at the time of registration.

So what does this TTAB decision mean?  Well if successful, cancellation of the Washington Redskins marks means that the league will have a far more difficult time protecting its mark against unauthorized use in court.  In other words, it does not mean that the league’s owners cannot successfully protect the mark in court; it just means that it will be more difficult to prove in court that it has rights to the name to the exclusion of others.  Ultimately, the famous status of the Washington Redskins mark will probably prevent the unauthorized use of the mark by others without legitimate threats of litigation from the league’s owners.  Thus, it is not advisable to start using the mark without a valid license from the Washington Redskins unless you want a lawsuit on your hands.

At the end of the day, the future of the Washington Redskins name is uncertain.  Although this decision does not prevent use by the league of the name at this time, it does lead the way for future court decisions and/or laws that could force the league to change its name.  You also have to consider from a marketing standpoint that the negative press might also push the team to have no choice to change the name.

Finally, this decision should not undermine the importance of a trademark to a business.  Although the Washington Redskins can still continue use of their name, enforcement of its rights to the name will be an up-hill battle.  Ownership of federally registered trademarks is immensely important to a company and the decision to cancel these six trademarks is no doubt a huge blow to the future of the league’s name.

Curious to see more legal analysis on the Washington Redskin trademark issue?  Visit our past blog post The New Name of the Washington Redskins NFL Team.

For more information about trademarks, or if you need help with a trademark, please visit our website at www.OnlineTrademarkAttorneys.com.

Trademark Opposition – Should I File To Protect My Mark?

Blog Provided by Online Trademark Attorneys.com

The United States Patent and Trademark Office (USPTO) is not perfect. Because of imperfection and the subjectiveness of confusing similarity some similar marks make it through the examination process. You as a trademark owner should protect your interest by pursuing available avenues to prevent those confusingly similar marks from maturing to registration. Trademark opposition filings can prevent the registration of a similar mark and save your brand from consumer confusion.

What is a Trademark Opposition?

An opposition is a legal proceeding whereby one party seeks to prevent the registration of a pending trademark. Any person who believes that he will be damaged by the registration of a mark may file an opposition. This does not limit opposition filings to registration or application owners, but extends to those with common law rights as well.

The Time Frame

30 Days
Opposition filings are due after the marks are approved for registration. Specifically, the filing is due within 30 days of the publication of the trademark in the USPTO’s online magazine, Trademark Official Gazette.

Additional 30 Days
You can extend the ability to file a trademark opposition by 30 days from the end of the opposition period by filing an extension request. This request must be requested within the opposition period and is granted simply from the request (i.e. no other evidence/declarations need to be presented).

60 More Days
You can also receive a further 60 day extension by showing “good cause”. Good cause can be shown by stating you need additional time to investigate the claim, you need to confer with counsel, or time to seek counsel, among others.

Another 60 Days Please (180 total)
Lastly, you can extend it an additional 60 days beyond the 120 days already requested (30 day initial period + the 90 day extension), 180 days total, by a showing of “extraordinary circumstances”. Extraordinary circumstances are typically shown by a consent from the applicant you plan to oppose (tough to get, unless you’re in negotiations with the other party).

What is the Point?

Simply stated, you want to prevent marks from obtaining registration that could harm your mark. For example, you own the registration for QWERTY SAMPLE for clothing and a mark for QWERTY POPULAR gets approved for clothing. The two names are not exactly identical in their entireties, however, they are similar enough, because of the shared term QWERTY, whereby your consumers would be confused. If you don’t oppose QWERTY POPULAR the mark will eventually become a registered mark. This could pave the way for other marks to use the term QWERTY along with another term to obtain registration. An opposition filed against QWERTY POPULAR would most likely prevent its registration and protect your mark from consumer confusion, thus, preventing other third-parties from piggy backing and using the QWERTY name in relation to clothing.

The moral of the story is an opposition may be as simple as filing the opposition, whereby the applicant fails to respond, and you get the conflicting application withdrawn. Thus, saving you from consumer confusion and protecting your mark.

Published March 12, 2014 by Brent Sausser. If you need opposition services or any other assistance with trademarks you can contact Brent at OnlineTrademarkAttorneys.com.

Trademark My Logo – Identifying Your Business With an Image

Logos play an important role in any business. Logos create a simple recognizable impression that make you look more professional and easily identifiable. An article on eHow.com regarding the importance of logos states, “logos…can be used easily in all types of marketing materials such as direct mail, newspaper and magazine advertising, television and even on the Internet”. In addition, it’s important to point out, that in a world of social media and online marketing, logos will play an important role. For example, have you ever tried to squeeze your entire business name into a twitter icon? A logo fits nicely.  A logo is important for brand awareness, customer reliance, and professionalism.

 

or

You’ve created a logo now what?
Protect it. It’s important that you secure the rights to a logo to ensure no one will obtain a similar mark.  A similar logo can cause consumer confusion and result in the purchase of an inferior product, and as a result the loss of a customer or client, or a diminished reputation. In addition, it’s important you make sure that you don’t use a mark that is confusingly similar to an established business in your field. If their mark is registered and your infringing, the owner may be entitled to statutory damages that can cost you hundreds of thousands of dollars. Get a comprehensive trademark search and file for trademark registration to ensure you’re protected.

How do I search for similar logos?
First, while brainstorming ideas you need to be aware of the recognizable marks within your industry. You can start with a Google search. However, such a search is not comprehensive and will not provide you information regarding marks that have a federal registration. The United States Patent and Trademark Office provides a search tool to find similar marks using design codes. However, the tool requires you to learn esoteric searching techniques and is not user friendly. Lastly, you can use trademark search services. If you use these services make sure to use a trademark attorney so that the legal implications of the search results are explained in detail. Otherwise, you can be left with a search report listing comparable trademarks with no real legal explanation.

My logo includes my business name and a design. What type of trademark should I file?
First and foremost, you should apply for a standard character mark. A standard character trademark does not include any design aspects of your mark. “I spent a lot of money getting a graphic artist to design this mark, and now I’m not suppose to claim it in my trademark?” That’s right. You should first apply for a trademark for the business name itself. This way you can change your font, logo, background, etcetera, to include whatever design you want. For example, five years after you acquire trademark registration a section 8 declaration is due showing that you are still using your mark. If you submit a specimen that doesn’t match your initial registration your mark will be denied for failure to show continuous use. In other words, if you have changed the color, font, background of the mark, the USPTO will reject your section 8 declaration of continuous use for failure to submit a proper specimen. As a result, it’s important to be as broad as possible when acquiring a trademark registration for your business, specifically, you need to protect the name with no claim to any specific design.

After you file or along with your standard character trademark application you should file to protect the design elements of your mark. Major companies often correctly file trademarks 1. for the name of the business itself and 2. for the logo itself. For example, Nike owns the trademark for “NIKE” standard character mark as well as the nike swoosh as a logo; Twitter owns the standard character mark “TWITTER” as well as the silhouette of a bird logo; Facebook owns the standard character mark “FACEBOOK” as well as the glossy blue “F” logo, plus many others. These examples all represent the proper way to protect a businesses’ trademarks.
1. File for the standard character mark of your business name itself.
2. File a stylized mark to protect your design elements.

If you need assistance acquiring trademark registration use OnlineTrademarkAttorneys.com. Attorneys making the trademark process simple.

Published October 7, 2013 by Brent Sausser.

Etsy Copyright Infringement Notice — Now What?

As the largest online craft retail store in the world, Etsy.com has become the website for aspiring artists to showcase and sell their handcrafted goods.  With an easy to use and easy on the eye platform, it is no wonder why artists are lining up to join the Etsy community.  But for all the good Etsy does for the underdog artist, many are unaware of the potential legal ramifications they could encounter by using Etsy. This is especially true with copyright infringement.  In fact, Etsy is filled with examples of copyright infringement.  As Pablo Picasso once said, “Good artists copy, great artists steal.”  The problem is, when Picasso said these words he neither anticipated nor did he live in the world we live in today where websites like Etsy have opened up greater opportunity for artists to sue other artists for copyright infringement.

A copyright is a form of intellectual property that gives an owner exclusive right to produce copies of original creative works.  Specifically, it acts to prohibit anyone to reproduce, distribute, display or make derivative works of that artist’s creation without the permission of the copyright owner.  What complicates the issue of copyright infringement is the fine line between infringement and fair use.  The doctrine of fair use is a defense to copyright infringement.  It stands for the idea that a non-copyright owner should be allowed to reproduce and use a copyrighted work under “fair use” circumstances, such as for criticism, comment, news reporting, teaching, scholarship and research.  However, a quick glance at Etsy reveals many of its members are unaware of exactly what fair use of another’s copyright means.

Whether your use of a particular item constitutes copyright infringement is really a question of what type of license you have.  Often times when an artist purchases materials they plan to repurpose, they are given a non-exclusive license allowing them to sell such repurposed items for profit.  There are, however, instances where purchasing materials does not give you the right to sell your repurposed items.  One such example of this is where you buy fabric that contains a University’s logo from your local fabric store.  At first glance, it would seem the ability to purchase this fabric at a nationally recognized chain like Joanne Fabric and Craft Stores would entitle you to repurpose the fabric and sell it to others without the University’s consent.  However, this is not the case and if you look closely at the bolt you purchased the fabric from, you will see licensing information stating you are purchasing the limited right to use the fabric for your personal use.  In other words, by repurposing the fabric and selling the repurposed items on Etsy you are no longer using the fabric for personal use, but for commercial use.  As a result, your use of the fabric would constitute copyright infringement.

Another problem many Etsy users often face are issues of trademark infringement. A trademark differs from a copyright in that a trademark protects the name, terms and symbols that are used to identify of the source of a product.  Trademark infringement can arise in a number of different situations.  Turning again to the fabric example above, use of the University’s logo on a pair of pajama pants would also constitute trademark infringement.  By using the fabric with the University’s logo, such use has the risk that the buyer believes the University has endorsed and stands by the quality of this product.  However, this belief would be false and the use of the fabric would constitutes trademark infringement.

If you are currently using Etsy to sell your artwork or handmade items, chances are you have either received or are aware of the Etsy Copyright Infringement or Trademark Infringement Notice.  It is important that you take these types of notices seriously and to determine what your rights are from someone knowledgable in trademark and copyright laws.  Depending on the allegation, Etsy generally gives you time to remove the item before deciding to shut down your store. However, in some instances where the copyright infringement is flagrant Etsy may not even give you notice of your violation and shut down your store immediately.  For many who rely heavily on their Etsy sales, this is simply not an option.  It is therefore imperative that you know your rights.

If you have received a notice from Etsy informing you that you have infringed on another person’s copyright or trademark and wish to know what your rights are, contact The Law Firm of Sausser & Spurr, LLC for a free consultation.

Published August 26, 2013 by Alex Spurr.

Cost of a Trademark / How Much is a Trademark

*Please see an update to the costs in our new blog post: US Trademark Fees Reduced*

Often, there is a misconception that filing for a U.S. trademark can cost thousands. The reality: you can file a trademark for as little as $275. However, there are some decisions you need to make along the way that can increase this cost, but can also increase your odds of landing a registration.

Filing for Trademark Registration Yourself
The United States Patent and Trademark Office (USPTO) allows individuals to apply for trademarks online. This is quite an improvement from the days of paper filings through Certified Mail. The first steps for trademark owners are deciding whether to file a TEAS (Trademark Electronic Application System) or TEAS Plus application, as well as whether to file a section 1(a) actual use or 1(b) intent to use application. Here’s where two roads diverge into different trademark costs.

Filing a TEAS Plus Application = $275
In order to qualify under a TEAS Plus application the applicant needs to:
1. Provide name, address, and email (and allow the Office to contact you via email);
2. Use a description of your goods/services that complies with the Office’s Acceptable Identification of Goods and Services Manual;
3. If the mark identifies a person’s name, a signed authorization from the person to use that name;
4. If including a design, a .jpg of the mark; and
5. If non-english, a translation.
(There are a few others, but these are the main requirements)

Filing a TEAS Application = $325
This type of application does not require the above clarifications. In addition, you may list the goods/services under your own description. However, an Examining Attorney may require you to be more specific with your description in a future Office action.

Section 1(a) Actual Use Application or 1(b) Intent to Use Application
After you decide to file a TEAS or TEAS Plus application, the USPTO will ask you to clarify your filing basis. Actual use means you have already used the name in commerce. If you have already used the name you will file for a 1(a) basis if you have not used the mark you file the application as 1(b). A 1(a) application will not cost you more than the filing fee of $275 or $325. A 1(b) application will cost you an additional $100 to file a Statement of Use or Amendment to Allege Use, which is simply a statement of use and proof of use of your mark.

1(a) = $275 or $325 (depending on TEAS or TEAS Plus)
1(b) = $375 or $425 (filing fee + additional filing requirement and depending on TEAS or TEAS Plus)

Using an Attorney to Help you File
According to a study published in Stanford Technology Law Review, and as reported by the Wall Street Journal, trademark applicants are 50% more likely to receive a registration if they use a trademark attorney. With OnlineTrademarkAttorneys.com you can get a comprehensive trademark search as well as trademark registration for $475 + Govt. fees.

Without a comprehensive trademark search prior to filing you leave yourself open to a rejection from the USPTO (losing your $275 or $325 to the USPTO), a waste of the time in which your trademark was pending (which can be up to seven months), as well as your potential infringement of a conflicting mark. The median price for trademark litigation in 2011 excluding damages was $384,000. As a result, a trademark search is necessary prior to filing.

Paying an attorney to handle your trademark can prevent unintentional infringement, a waste of time, as well as a loss of your USPTO filing fees. In addition, using an attorney increases your odds of obtaining trademark registration.

*Please see an update to the costs in our new blog post: US Trademark Fees Reduced*

If you would like a trademark attorney to handle your registration use OnlineTrademarkAttorneys.com.

Published July 26, 2013 by Brent Sausser.

What is a Common Law Trademark?

Provided by OnlineTrademarkAttorneys.com

A common misconception in trademark law is the belief trademark rights in the United States requires the mark to be formally registered with the United States Patent and Trademark Office (“USPTO”).  This is not the case.  Instead, U.S. trademark law is based on a first-use system and trademark rights can be established simply by continuous use of the mark in connection with goods or services.  Federal registration is, therefore, not a prerequisite to trademark rights in the U.S.

So what does this mean for you and your business?  Assuming the name does not infringe on an already registered trademark, this means once you start using your mark in connection with your goods or services you have a common law trademark.  Simply put, all you need to do is use the mark to have common law trademark rights.  This is true even if someone subsequently files for federal registration of the same name.  With that said, a common law trademark is not a replacement for a federally registered trademark.  In fact, there are several important reasons why you should still register your trademark with the USPTO.

The biggest problem with a common law trademark is the rights conferred to you are substantially more limited than the rights you would have if you federally registered your mark.  One reason for this is because rights from a common law trademark are limited to the geographical area in which you sell or offer your goods or services.  This means that if you have only conducted business in the New England area, your rights to the mark would not extend to other parts of the country.  Although there are instances where a name can acquire national common law trademark rights, this is very rare and difficult to achieve.  Conversely, by successfully registering your mark with the USPTO you automatically acquire nationwide rights to the registered mark.  Assuming another person does not already have common law rights in the name, this would then allow you to preclude any subsequent person from using the name in relation to the goods or services you provide anywhere in the country.

Another reason federal registration is important is it places everyone on notice of your exclusive right to use the mark as it relates to your goods or services.  This is important because it will allow you to prevent any subsequent person from acquiring common law rights in the mark after you have registered the name.  Given the global economy we live in today, this is particularly important because it is becoming easier for people to reach a large population base to sell their particular goods and services.  As a result, the potential for consumer confusion is a much greater threat to businesses than it was twenty years ago.

Finally, federally registering your mark is also beneficial because it helps to impede another person filing suit against you for trademark infringement.  Recently, there have been many cases of small companies with valid common law rights to a mark being sued by big companies who now wish to use the name and have acquired federal registration of the mark.  Although these small companies theoretically have common law trademark rights to their name, the risk of a lawsuit does not outweigh changing their name.  This is because trademark infringement lawsuits easily will run a company more than $200,000 in legal fees, an expense most businesses cannot afford.  As a result they have no choice but to stop using their name and opt for another name.

These are just some of the benefits of acquiring federal registration.  To see more benefits of federally registering your mark, please visit the USPTO Website.  If you have a mark and are interested in more information regarding trademark registration with the USPTO, please visit Online Trademark Attorneys.

Published July 2, 2013 by Alex Spurr.

Band Trademark Registration – A Band Name is a Brand Name.

No substitute exists for a federally registered trademark. Some websites claim to protect your band’s name by listing you in a “band directory” or “band registry” and “establishing ‘prior use'”. You can get the same prior use from a free myspace or reverbnation page. However, neither is sufficient for trademark protection.

A band name is a brand name. Protect it. A band name is a word that identifies and distinguishes the source of service (live performances) or goods (sound recordings) of one party from another. As a result, a band name is registrable subject matter with the United States Patent and Trademark Office (USPTO). Trademark registration separates the kids from the adults. I’m not going to lecture about how you need to obtain trademark registration, because you know you do. There is a lot of material already on the internet detailing the importance of a trademark. I’m going to offer you some helpful hints and interesting facts regarding band name trademarks.

How to search for other band names
This is an important first step often overlooked. The USPTO offers a free basic search tool, which is just that, basic. You should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name “the Lamineers” for your band. If you enter this in to the USPTO search bar you get zero results – “Yay!”. I’m sure the Lumineers won’t have an issue. Again, it is a basic tool not a comprehensive search. Attorneys have access to trademark databases that are not available to the general public through database subscription services. There is no trademark search equivalent to a legal opinion letter and search report from an attorney. However, when you don’t have the $299 for a trademark attorney search, you should at least search Google, Bing, Myspace, Reverbnation, Secretary of State websites for business filings and state trademarks, and any other place you’d expect to find a band.

Bands’ trademark disputes
One Direction (U.S.)
Their song “What Makes You Beautiful” was nominated for two MTV VMA awards. They acquired trademark registration for their name and then came to an “amicable agreement” to release the rights to their name to the British version of One Direction. The U.S. band now goes by “Uncharted Shores”.
The Postal Service
You may be familiar with their song, “Such Great Heights”. After applying for U.S. trademark registration this band received a cease and desist letter from the United States Postal Service. The two eventually came to an agreement where the USPS granted the band a free license to use the name as long as they provided a notice regarding the trademark in their future albums and the USPS agreed to sell the band’s CD on their website.
Linkin Park
Originally called Hybrid Theory, however, the band Hybrid forced them to change their name.
Led Zeppelin
Jimmy Page was initially in a band called The Yardbirds, when he splintered off to form his own band The New Yardbirds, his original band took issue. He changed the name to Led Zeppelin. A name inspired by a comment by two of the Who members that their band would go down like a “lead balloon”.
Pearl Jam
The Eddie Vedder lead group initially went by Mookie Blaylock (the name of the All-Star basketball player). Concerns with trademark issues forced them to change their name. Ever wonder why an album with 14 songs was named Ten? Well, it’s a jersey number they admire. They still hold Mookie Blaylock close to their hearts.
The Raconteurs
They go by the name The Saboteurs in Australia. In a bold move the Raconteurs adopted a new name after they received an unreasonable counter offer to acquire the rights to the name from the Queensland Australian group, The Raconteurs.

Trademark Ownership
Trademark ownership can be complicated for a band. Make sure you have an agreement detailing the owners of your intellectual property. Such agreements can be incorporated into the formation of an LLC. For example, the LLC can own your trademark, making each member of the LLC an owner. In your articles of incorporation (an agreement filed with the LLC) include what happens if a member disassociates herself from the group/LLC. Make it clear who owns the intellectual property (the current members). Also, include provisions to return the disassociated member’s share back to the LLC.

Bands should acquire trademark registration to protect their investment. After all, why would you want to pump money into marketing a name that isn’t owned by you. It’s like peddling a bike without a chain.

If you need trademark assistance OnlineTrademarkAttorneys.com provides attorney assistance at an affordable rate. Get a trademark registered for $475 plus Govt. fee. Lastly, one of my favorite sports talk shows always opens up the debate of who is the best drummer that ever existed – that’s why I’ve included a poll below (to settle this matter).

Published June 20, 2013 by Brent Sausser.

Intent to Use Applications – Trademark Reservations, Table for One

So you’ve come up with the perfect name for your future goods or services. Now what?

The Search
You should first conduct a comprehensive trademark search to identify whether other uses of your mark exist. Some key entrepreneur friendly websites offer misguided advice: Entrepreneurship.com suggests that research is key, then states, “do a basic trademark search”. Forbes and SBA.gov offer the sound advice, “check for trademarks”, however, they both follow that with a link to the USPTO trademark search tool. The USPTO provides this search as a basic “knock out” tool. However, you should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name NIE KEY for shoes. If you enter this in to the USPTO search bar you get zero results – “Yay!”. Again, it is a basic tool not a comprehensive search. The median price for trademark litigation in 2011 excluding damages was $384,000. A basic trademark search is treacherous waters, conduct the real thing if you truly intend to use the mark.

The Application
The two most common types of applications filed with the Trademark Office are based on Section 1(a)(actual use) or 1(b)(intent to use). If you have not used the name but plan on using the name in the future you should file an intent to use application. This application costs the same as an actual use application at the time of filing. However, it will cost you an additional $100 to file an Amendment to Allege Use or a Statement of Use once you begin using the name in association with your goods or services. In addition, you can file five six month extensions for $150 each after the Notice of Allowance issues. In other words, you can possibly reserve the name for three years after you receive a Notice of Allowance. You have to show “good cause” for extensions 2-5. For example, good cause would be building a plant for product manufacturing, working through research and development for a product, eccetera.

Reserving Your Trademark
No one calls it a trademark reservation, but that is exactly what you are doing. In order to rightfully file an intent to use application you have to have a “bona fide intention…to use” the mark in commerce. If you do not, your application is void ab initio (from the beginning). That means that you can’t think of some really cool name, file the trademark application, and sit on the name waiting for a potential buyer. This is why trademark trolls do not exist. After you have obtained registration you can claim the filing date as your date of first use even though you didn’t use the mark until after you filed. That’s the benefit of an intent to use application, you reserve the name. For example, let’s say you file an intent to use application January 1st and Company B files an actual use application January 2nd. We also have to assume here Company B’s date of first use is also January 2nd. You start using the trademark in July, file a statement of use, and successfully acquire a registered mark. Even though you started using the trademark in July, you have superior rights to Company B who started using the trademark in January. As a result Company B will be refused federal registration on a likelihood of confusion basis.

Filing an Amendment to Allege Use or a Statement of Use
An Amendment to Allege Use or a Statement of Use always accompanies an intent to use application. You file the Amendment to Allege Use before publication or you file the Statement of Use after Notice of Allowance. Do not file between these notices, because this is the “black out period“. The filing of either of the above will require a declaration (stating you’re using the mark) as well as a specimen (an image of your trademark in use in commerce). Once these are filed, and the application is approved, you are on your way to registration.

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Published June 6, 2013 by Brent Sausser.