Trademarks – McHale | Slavin – Intellectual Property Law

Trademark Prosecution

A trademark/service mark is any word, symbol, design, slogan, logo, device, etc. that identifies or distinguishes the source of one product or service from another. A mark that identifies the source of a product is called a trademark; a mark that identifies the source of a service, rather than a product, is called a service mark although the term “trademark” or “mark” is commonly used to refer to the identification of both goods and services. Although the most common type of mark consists of a word, logo, or combination of both, a trademark can be anything, as long as it can identify and distinguish a product or service. There are two other types of marks: collective membership marks, which signify membership in an organization; and certification marks, which certify the quality of goods or services to which the mark is attributed.

In the United States, trademark rights accrue from actual use of a mark in interstate commerce, and not from registrations. However, there are distinct advantages to federal registration. First, a federal registration constitutes prima facie evidence and provides a presumption of the validity of the registration, ownership of the mark, and the owner’s exclusive right to use the mark in commerce. Second, a federally registered trademark owner acquires the right to use the ® symbol and provide constructive notice of a claim of ownership to the public. As a consequence, a second party that adopts the mark after it has been registered will not be able to argue that it was adopted in good faith. Under the Lanham Act, the owner of a federally registered trademark may recover defendant’s profits, any damages sustained by the plaintiff and, in extraordinary cases, the costs of the action including attorney fees, in a federal trademark infringement lawsuit. Although an unregistered mark has certain protections under state and federal law, federal registration offers powerful rights against other users of same or similar marks.

Once a proposed trademark has been selected it is important to first determine whether that proposed mark represents a viable trademark for interstate use and federal registration. Conducting a comprehensive search and applying a proper interpretation of the search results is essential, as a main basis for refusal by the U.S. Trademark Office relates to confusion with other similar marks. After a mark has been selected, searched, and determined to be viable for use and registration, the application for registration, in its entirety, is prepared. There are over 40 classifications of trademarks and service marks, and in addition to requiring the claim of a classification, a description of the goods/services must be devised. Once a trademark application is filed, the Trademark Office Examining Attorney will carefully scrutinize the application and proposed trademark. Interaction with the Examining Attorney typically involves complex legal issues and procedural rules. Accurate statements during this interaction is of the utmost importance to avoid either denial of the registration or, to avoid limiting and restricting the scope of the application such that the resulting registration has little to no value in terms of practical trademark protection. Our experienced trademark attorneys will assist you in deciding the overall strength of your mark to ensure your brand enjoys continued success and protection while preventing unnecessary entries in the application record that can lessen the strength and breadth of a registration.

McHale | Slavin has successfully prosecuted thousands of trademarks before the United States Patent and Trademark Office. Our firm understands with the intricacies of trademark practice. Contact us for additional information or to schedule a consultation.

Trademark Litigation

McHale | Slavin has wide experience and success in handling trademark and trade dress litigation in the federal courts, as well as cancellation and opposition proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. The related field of Internet domain name disputes, both in federal court and before administrative tribunals, and an understanding of the critical nuances which often determine the outcome of such disputes, is an area in which we have deep experience.

In addition to preparing detailed litigation budgets, the practical business needs involved in trademark disputes always remain the firm’s primary focus, and, when appropriate, the expeditious end of litigation, including obtaining the benefits of alternative dispute resolution is a critical aspect of these cases from inception. If the controversy involving results in a civil action 15 U.S.C. § 1117 governs damages, providing:

Profits; damages and costs; attorney fees

When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office is established, the plaintiff shall be entitled to recover: (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.

If the court finds that the amount of the recovery based on profits is either inadequate or excessive it has the discretion to enter judgment for such sum as it shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Treble damages for use of counterfeit mark

In assessing damages, the court shall, unless it finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee, that consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark, in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment interest on such amount at an annual interest rate established under 26 U.S.C. § 6621(a)(2), commencing on the date of the service of the claimant’s pleadings setting forth the claim for such entry and ending on the date such entry is made, or for such shorter time as the court deems appropriate.

Statutory damages for use of counterfeit marks

In a case involving the use of a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under 15 U.S.C. § 1117(a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of – (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.

The importance of protecting a business’s valuable goodwill, existing in its marks, and establishing and protecting trade dress rights in products and product related services cannot be underestimated, and our firm’s ability to protect the value of these rights through necessary litigation is one of our most important services. Contact us for additional information or to schedule a consultation.

Trademark Licensing

A trademark license involves the granting of permission from a trademark owner – the licensor – to another party – the licensee – to use the trademark in the marketing of goods and services.

In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a trademark license has its own special set of issues. A large measure of the value of a trademark consists of its “goodwill” i.e., the reputation for quality in connection with the source of the goods and services sold under the mark. A trademark owner can directly receive and control that goodwill where the mark is used in connection with the owner’s goods and services. In the context of a license, however, a licensee is selling the goods and services bearing the owner’s mark. Issues of quality control, avoidance of confusion, and the inuring of goodwill to the owner are of critical importance. A trademark owner must be able to protect the goodwill associated with the mark and the value for the innovation that went into the development of the mark.

McHale & Slavin has extensive experience in the preparation and negotiation of trademark licenses. Contact us for additional information or to schedule a consultation.

Trademark Searches

One of the most critical steps in selecting a trademark for use and registration is the trademark search. Often times this step goes overlooked or is underestimated because easily available searches conducted over the Internet may provide clients with the false sense of security that their proposed trademark is available. This may be compounded if an individual navigates the United States Patent and Trademark Office’s website and after “conduct(ing) their own trademark search” concludes that the mark is available. An individual may mistakenly search only for the exact mark sought and rely on that result to their detriment.

Conducting of a proper trademark search is an art only fully understood after extensive interaction with the Trademark Office’s application process. Finding (or not finding) exact matches is only the beginning of the search process, rather than the end. Prior existing registered and pending trademarks capable of interfering with a newly proposed trademark are also those deemed to be “confusingly similar.” The Trademark Office will conduct its own search upon examination of the trademark application and will convey its findings within 5-6 months after the application is submitted. In some cases this time frame is acceptable to learn whether or not a new trademark is viable. However, in other cases, where mass-production of a product is eminent, or the launch date of a service industry is looming, a prior trademark search is beneficial so as to learn the viability of a mark before the Trademark Office conveys its findings.

Our attorneys are experienced in providing the trademark owner with a written legal opinion setting forth reasons why a given proposed mark is viable. With a written legal opinion letter as part of your trademark-launch due-diligence, it is more difficult for you to be labeled a “willful infringer,” in the event of a challenge by another trademark owner. Demonstrating that an infringer is “willful” aids in a challenger obtaining an award of increased damages and reimbursement of attorney fees.

Trademark Oppositions and Cancellations

An entity or an individual who believes that they will be damaged by the registration of a mark on the United States Trademark Office’s Register may file an opposition proceeding or a cancellation proceeding. An opposition proceeding is filed during the prosecution of a trademark application and a cancellation proceeding can be filed after the trademark registration. These proceedings are governed by the U.S. Trademark Trial & Appeal Board (TTAB).

A trademark opposition proceeding is similar to civil litigation wherein the parties participate in a discovery period, a period for summary judgment and a trial period. However, the TTAB does not have a live trial; the trials are essentially conducted on paper using the submissions of the parties and deposition testimony. A cancellation proceeding is similar to an opposition proceeding but seeks the removal of a registered trademark versus a pending application.

Sometimes parties attempt to register a trademark that would conflict with our clients’ branding or business plans. In other cases, our clients desire to use trademarks which were previously registered, but investigation reveals that the trademark owner is no longer using the mark as stated in the trademark registration record or absconded with the mark and filed for registration despite prior usage. Both eventualities require the elimination of the objectionable trademark application or registration. Depending upon the facts and circumstances, objectionable trademark applications and registrations may be eliminated through the employment of opposition and cancellation actions.

The opposition/cancellation practice is a specialized area of quasi-litigation in which a suit is brought against another trademark owner, but instead of a court of law, the suit is heard before the TTAB . The proceeding is governed by the Federal Rules of Evidence and Civil Procedure, as well as the TTAB rules. McHale | Slavin’s attorneys have prosecuted and defended numerous TTAB cases and bring to the practice a keen awareness and ability to navigate favorable resolutions to these matters. Contact us for additional information or to schedule a consultation.

Domain Names

The Internet is an integral part of most clients’ business models, and quality legal representation in areas of electronic content and domain name protections is a critical need.

Domain name governance arises out of several doctrines of law, including the United States “anti-cybersquatting” statutes, the World Intellectual Property Organization rules, the Uniform Dispute Resolution Policy (“UDRP”), and rules established under the Internet Corporation for Assigned Names and Numbers (“ICANN”). Domain name protection works hand-in-hand with trademark protection. Under the Lanham Act, trademark holders have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of another’s trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties.

The following factors are considered in determining whether a domain name has been registered in bad faith:

If the registrant has any trademark or other intellectual property rights in the name
If this is the legal or nickname of the registrant;
The registrant’s prior use of the domain name in connection with the good faith offering of goods and services;
Lawful noncommercial or fair use of the mark in a web site under the domain name;
Intent to divert to a site that could harm the trademark owner’s goodwill – either for commercial gain or with intent to tarnish by creating likelihood of confusion as to source, sponsorship or affiliation, or endorsement of the site;
Offer to sell the domain name without having used, or having an intent to use, it in the bona fide offering of goods or services, or a prior pattern of such conduct;
Intentional provision of misleading contact information in the domain name registration application or the history of such conduct;
Warehousing of multiple domain names known to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services of the parties;
The extent to which a mark is distinctive or famous.

In addition to traditional trademark remedies, plaintiffs may elect statutory damages ranging from $1,000 to $100,000 per domain name. Anti-Cybersquatting Piracy Act (ACPA); Lanham Act.§ 43(d); 15 U.S.C. §1125(d).

McHal & Slavin regularly represents clients in the quasi-judicial arbitration actions established for the redress of domain name conflicts. Under typical circumstances, owners of trademarks and personal names are entitled to bring suit against parties who register, traffic in, or use a domain name that is identical or confusingly similar to the trademark or personal name with a bad faith intention to profit from that mark or name. Persons who have been victimized by bad-faith opportunists that register domain names with the intent of profiting from, or diverting consumers from, the authentic source represented by a given trademark, need legal counsel specializing in this constantly evolving area of law. Contact us for additional information or to schedule a consultation