All posts by Kelley Donohue and Radhika "Ronnie" Raju

Trademark Basics, Part Three: Nine Benefits of Federally Registering Your Trademarks

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(L-R): Kelly Donohue and Radhika “Ronnie” Raju,

By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP

In last week’s Part Two of our series on Trademark Basics, we discussed the benefits of conducting a clearance search to try to ensure that the mark you are considering adopting doesn’t infringe on the rights of anyone else. Say the results of your clearance search have come back clean and, according to your trusted legal advisor, you should be able to use your trademark without worrying about being slapped with a demand letter. Why not just use your mark and save yourself the time and money it takes to obtain a federal registration?

Quite simply, federal registration gives you many valuable benefits at an extremely low cost (the filing fee for a trademark application can be as low as $225) and it is the most cost effective way to protect your brand. Here are the top nine reasons you should take the next step and file a trademark application with the Patent and Trademark Office (PTO), along with a quick overview of the registration process. For those of you that have been following our five part series on Trademark Basics, we will divulge the 10th reason for seeking federal registration in our upcoming trademark webinar, the date for which we will be announcing soon.

The Benefits of Federal Registration

Broadcasters have a lot of balls in the air, from finding advertisers to managing on-air personalities to creating content, all while trying to stay within the FCC’s regulatory lines and within budget. So why add seeking federal registration for your trademarks to your to-do list? Here’s why we think it is well worth your effort:

  • Deters Others From Using a Similar Mark. All applications and registrations are publicly available and searchable in the PTO’s electronic database, called TESS. Therefore, your mark will be easy to find when others do even a minimal clearance search. This notice deters others from using or adopting a mark that could be confusingly similar to yours and could fend off problems before they even start.
  • Prevents Registration of Similar Marks. One of the PTO’s functions is to prevent others from registering confusingly similar marks. Once your mark is registered, the PTO will refuse to register any marks that are confusingly similar to yours. This is a wonderful free service that the PTO provides to owners of registered marks.
  • Shows Trademark Savviness. Obtaining a federal registration allows you to use the registered mark symbol, ®, next to your trademark. This shows the world that you are trademark savvy and are serious about protecting your brand.
  • Nationwide Rights. If you file an application and it is granted, you gain the legal presumption that you have the exclusive nationwide right to use your mark as of the application date. While broadcasting is still a local business, establishing nationwide rights remains critical, especially where you have a substantial online presence that extends beyond your local community, syndicate a program nationally, or operate a station whose contours span across more than one state.
  • Cybersquatters. Federal registration of your mark will also make it easier to take action against cybersquatters, as will be discussed in the fifth and final part of this series.
  • Nationwide Notice. A federal registration provides nationwide “constructive” (as opposed to actual) notice that you are the exclusive owner of the mark. This benefit of registration will enhance your ability to enforce your mark against infringing uses. If, for example, you file for and obtain a federal registration for CRANK for radio broadcasting services, an unrelated station that subsequently adopts that same mark anywhere in the US cannot successfully argue that it lacked notice of your use (even if it did not actually know about your mark). Thus, if you want to adopt the CRANK mark at another station you own or license the mark for use by another broadcaster’s station in a different market, a broadcaster who is already using the mark there, but began using the mark after you filed your federal application, will not be able to defend its use on the grounds that it adopted the mark in good faith and without notice of your mark.
  • Federal Jurisdiction. A federal registration allows you to sue infringers in federal court, where judges are often more savvy about trademark matters. Also, in certain cases, it allows you to recover treble damages, meaning the court can award triple the amount of the actual damages and even attorney’s fees if you prevail in the suit.
  • Facilitates Foreign Registration. A federal registration gives you the ability to use your federal registration as a basis for seeking registration in foreign countries, allowing you to protect your brand as you expand into foreign markets. More and more broadcasters are marketing their digital properties (streamed stations, apps, etc.) beyond the U.S. borders, so this benefit should not be overlooked.
  • Helps Stop Counterfeiting. A federal registration of a mark can be recorded with U.S. Customs and Border Protection so that it can stop the importation into the US of counterfeit or infringing goods. This tool is particularly important in the media and entertainment industry, where counterfeiting is rampant and can have a substantial impact on revenues.

Obtaining and Maintaining a Federal Registration

Hopefully, we have convinced you that federally registering your trademarks is a good idea and you are now ready to register. Thankfully, for the most part, the application process is fairly straightforward. The first step is to figure out which kind of application you should file. If you are already using the mark, you would file what is called a “used based” application. If you are still in the planning stages and haven’t yet started using the mark, you would then file what is called an “intent to use” (“ITU”) application.

Both used-based and ITU applications require a few pieces of information, such as the name and address of the applicant, the mark and a copy of the design (if you are seeking registration of a logo). If the mark is currently in use, you will need to provide the date on which it was first used. Easy enough, right? From here, it gets a bit trickier:

  • Drafting A Description of Goods and Services. First, you will need to identify the goods and services for which you want to register your mark. There is a real art to crafting these descriptions. For use-based applications, you want to cover all of your goods and services accurately and be sure that you can document that the mark has been used to sell or promote each and every one listed. For intent-to-use applications, you must also cover all of your goods and services with which you intend to use your mark, but you also want to leave yourself some wiggle room, in case you expand into areas that you might not have contemplated when you first filed the application. If you have not used the mark for some of them when it comes time to prove use, you can delete them from the application. If you do not include them at the outset, you will not be allowed to add them later. It is extremely important to strike the right balance. If your description of services is too vague or overbroad, your application may be rejected and you will be required to provide a more limited description. Conversely, if it is too narrow, you may find yourself using the mark down the road in ways that are not covered by your registration (in which case you would have to file a new application to cover the new goods or services, an avoidable expense!).
  • Selecting Classes of Goods and Service. Second, you will have to identify in which “classes” your goods and/or services fall. There are forty-four different classes of goods and services and the description you have selected will determine how they are classified. The classes that you use are one of the factors that the PTO uses in determining whether a subsequently filed application for a similar mark should be allowed or denied. Also, you may not realize that different aspects of your business need to be set out separately and registered in separate classes. For example, radio broadcasting services falls under Class 38. But what if you also have a website or you stream online? What if you also offer advertising services under your mark? What if you have a downloadable app? Figuring out which classes in which your mark could comfortably fit can get complicated.
  • Providing a Specimen with the Application. If you are filing a use-based application, you will have to include an example of your mark in use (this is called a “specimen” in trademark terms) for at least one of the goods and/or services listed in each class. Depending on which classes of services you are filing in, a specimen can be anything from a printout of your website to an audio clip of a show to pictures of a t-shirt bearing your station’s logo. No matter what your specimen, it is essential that it reflect the use of the mark as contemplated by your description of goods and/or services. The PTO can reject your application if your specimen does not support your description.
  • Providing a Specimen After the Application is Filed. If your application is based on an intent to use the mark, before the mark can be registered, you will need to make a separate filing, claiming use, providing the date of first use and providing specimens evidencing that you are using the mark. You can submit this filing before the Trademark Office approves your application or within six months of the date assigned after the application is approved. You can also extend the time for filing for an additional six months up to five times. The filing with the claim of use and each request for extension of time will require an additional fee.
  • Responding to PTO Inquiries/Arguments. Once you have filed your application, the PTO reviews your application and may come back to you with questions or requests for more information. Worse yet, they may refuse your mark altogether for various reasons (conflicts with a registered mark, descriptiveness, etc.). You will get six months in which to try to get the Trademark Examiner to withdraw the refusal. If you are successful, the mark gets published in the Trademark Gazette, allowing third parties thirty days in which to oppose your application.
  • Keeping Track of Maintenance Filings. Even after your mark registers, there are routine filing requirements that are critical, such as declarations of use and renewals at the five- and ten-year marks, respectively. While these are very straightforward filings, missing them can cause your registration to lapse. So it is very important to know what these deadlines are and docket them accordingly. If your attorneys prepare and file the application for you, they will docket these deadlines and send you reminders about them when the time draws near.

Is Federal Registration Right for You?

Although federal registration provides the broadest protection, for some trademark owners, it is not necessarily the best option. In most states, state registration provides very little substantive legal protection, although it can provide notice if someone does a state trademark search before adopting a mark and it is less expensive than seeking federal registration. For marks that are only used in an extremely limited geographic territory, state registration may be sufficient. In the radio industry in particular, where different radio stations in different parts of the country use the same slogans, state registration is often the best course of action.

Now that you have invested the time and money to register your marks, how do you make the most of these valuable assets? Next week, we will discuss strategies on how to best manage your trademark portfolio, including conducting a periodic audit of your trademark assets. Until then, Keep Calm and Trademark On!

Note: Part Four of this series will follow in the next MAB News Briefs. Part Two discussed the importance of trademark searches, and can be found here. Part One provided an explanation of what trademarks are and why they are important and is available here.

Reprinted  by permission.

Trademark Basics, Part Two: How Trademark Searches Can Keep You Out Of Legal Hot Water

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(L-R): Kelly Donohue and Radhika “Ronnie” Raju,

By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP

In our last article beginning this series on Trademark Basics, we gave an overview of trademark basics and discussed why building up a strong trademark portfolio should be an important part of any media company’s overall business strategy. This week, we will discuss why identifying marks that you may use must be a key feature of your branding strategy. The reason is simple – you don’t want to invest thousands of dollars in a mark – building websites and social media campaigns around it, promoting it on air, creating bumper stickers, calendars, t-shirts, and other swag – only to get slapped with a demand letter from someone claiming that it owns the rights to that mark. That user can potentially force you to cease using the mark on air and online, destroy all physical materials that use the mark and pay damages for your infringing use of the mark. This development could blow a station’s marketing budget in the blink of an eye. Thankfully, this scenario is avoidable by doing some advance sleuthing before committing to a mark. So, what steps can you take to stay out of legal hot water?

There is a common misconception that, once you register a trademark at the federal level, you are “protected” against any claims of infringement. As a result, many companies skip the sleuthing and simply file a federal trademark application when they adopt a new mark. This is a very dangerous practice that could potentially cost you in the end because the application might be rejected by the Trademark Office or opposed by someone with prior rights in the mark. Indeed, even if a mark is federally registered, someone with prior rights has five years in which to challenge your use or registration of the mark. In order to minimize these possibilities, it is critical that, before you settle on a new mark, you conduct a trademark search. Running a search will allow you to see what, if any, other parties may have rights in marks identical or similar to your proposed mark. What does this entail, exactly?

Some searches are simple and can be done by your marketing or operations team – simply log onto the USPTO’s database (called “TESS”) and plug in the proposed mark. This type of search will help you quickly identify any obvious impediments. If a similar or identical mark pops up for the same or similar services, then the sleuthing is over – your proposed mark has been “knocked out” by the registered mark and you must move on to your next mark.

However, the analysis of these searches can get complicated very quickly. What if one or more similar marks are registered for similar services? What if an identical mark is registered, but for somewhat different services? What if the search identifies a mark that differs from your proposed mark by a single word or has the same words in a different order? What if there is a registered mark for the identical services, but an Internet search locates no use of the mark? What if the mark is federally registered, but an Internet search indicates that the mark is only being used in a limited geographic market that is not near your area of proposed use? An experienced trademark lawyer who is familiar with interpreting these results may be needed.

Moreover, even if your proposed mark is “clear” at the federal level, your sleuthing is not yet over. In the US (unlike most other countries), someone who is using a trademark or service mark, but has not registered it, has what are called “common law rights” in the mark. Those rights are limited to the geographic area in which the mark is used and the services are provided. The prior user of an unregistered mark that is similar to yours could preclude you from using your mark in its market, even if you federally register your mark.

As you can see, the simple act of “clearing” a trademark is rarely simple. Many trademark-savvy companies will run a quick preliminary search in-house, but if a mark is not clearly “knocked out,” will turn to counsel to run what is called a “comprehensive search.” These searches, while not totally foolproof, identify similar or identical marks at the federal, state, and common law levels, and can also search business names, domain names and in some cases, marks registered internationally that could lead to a claim of trademark rights in the US. Practiced trademark attorneys vet hundreds of marks per year and can help you assess the level of risk associated with the adoption of a proposed mark by analyzing these search results. They may also identify reputational risks that you may not have considered, e.g., if your proposed mark is being used by an adult-themed website, is slang for something you weren’t aware of (for example, the former SciFi Channel’s “text-friendly” rebranded name “Syfy” also turned out to be slang for syphilis) or otherwise has negative connotations you hadn’t considered. If, however, your mark “clears” a comprehensive search, you can feel fairly confident that you have picked a mark that presents a low risk. Often clients have “fallen in love” with a mark that has some level of risk associated with it, but, if a search is conducted, at least that risk is assumed with eyes wide open and can be factored into the company’s business strategy and legal budget.

The costs of conducting trademark searches are relatively low when compared to both the reputational and the monetary costs associated with rebranding or otherwise defending an infringement claim. So don your best detective hat and get sleuthing! In next week’s Trademark Tuesday installment, we will discuss the benefits of federally registering your marks, and how to go about doing so. There is much more to it that meets the eye! Part three of this series will be in the next MAB News Briefs.

Reprinted  by permission.

 

Trademark Basics for Media Companies, Part One: What Trademarks Are and Why They Matter

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(L-R): Kelly Donohue and Radhika “Ronnie” Raju,

By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP

In today’s digital economy, trademarks are often the most valuable assets that a business owns. For example, in 2015, Google’s trademark portfolio was estimated to be worth $76 billion, which constituted almost one third of the entire value of the company. Microsoft clocked in at $67 billion, with Verizon close behind at almost $60 billion. While you may not hit 11-digit figures like these intellectual property behemoths, a smart trademark strategy can put you on the right course. This blog is the first of a five-part series that will help you understand trademarks and how they function, so that you can maximize the value of your own trademark portfolio. We’ll run the other four articles in the weeks to come. So keep reading!

So, what is a trademark? A trademark identifies products or services as coming from a particular source. Although a trademark is usually a word, a phrase or a design, it can also consist of or incorporate features such as color, smell, taste, shape (product configuration), touch, motion and sound. But not all trademarks are created equal. A strong mark can preclude the use by others of somewhat similar marks for goods and services that may not be directly competitive. In contrast, a weak mark may only be entitled to protection against the use of an identical mark for the same goods and services. How do you select a trademark that will most effectively help you build your brand?

The equation is simple: the more distinctive the mark as applied to a type of goods or services, the stronger it is and the easier it is to register and protect. There are five categories in which trademarks can be classified, listed below from strongest to weakest:

  • Fanciful or coined marks are terms that are made up and have no meaning other than as a trademark. These are the strongest kind of mark and offer the broadest scope of protection. Examples of fanciful marks include KODAK for film, EXXON for gasoline and VIACOM for broadcasting services. The disadvantage to a fanciful mark is that it takes more marketing resources to help consumers remember and associate the mark with a particular company and create brand awareness.
  • Arbitrary marks are common words that are found in the dictionary, but do not have any connection with the goods or services that they brand. Famous arbitrary marks include APPLE for computers, LOTUS for software and FOX for television broadcasting services. As with fanciful or coined marks, arbitrary marks receive a broad scope of protection.
  • Suggestive marks suggest some feature or advantage of a particular product or service, but do not immediately describe the goods or services. It requires some thought or imagination for the consumer to reach a conclusion as to the goods or services. Examples include COPPERTONE for suntan lotion and GREYHOUND for providing transportation by bus.
  • Descriptive marks immediately convey some aspect of the goods or services. Examples include PARK N’FLY for airport parking lot services and YOUR #1 ROCK STATION for radio broadcasting services. Descriptive marks are entitled to no protection unless the owner of the mark can show “acquired distinctiveness,” which we wrote about here in connection with questions as to whether the podcast SERIAL could trademark its name. This showing can be made in a number of ways, such as a consumer survey, establishing exclusive use of the mark for at least five years and detailing the extensive advertising efforts that have been undertaken to create brand awareness among consumers.
  • Generic terms are words that are the common name of a particular category of goods or services, such as APPLE for apples or NEWS STATION for broadcasting services. Generic terms are incapable of functioning as trademarks and can neither be registered nor appropriated to the use of one owner. Sometimes previously strong trademarks become generic due to an inadequate protection strategy of the owner. If consumers come to understand the trademark to be the name of the product itself as opposed to identifying an exclusive source of the products, the mark essentially dies. Examples of this include aspirin for acetylsalicylic acid and escalator for a moving staircase.

Now that you have a better understanding of what trademarks are, why are they so important? In today’s world, where attention spans are reduced to the size of a Twitter feed, companies now more than ever need the ability to catch the consumer’s eye and cut through the crowded marketplace. A good branding strategy can help you convey a range of information, from price point to target audience to the types of goods and services you are offering. Likewise, it can help boost your online presence – having a consistent, thoughtful branding strategy across your media platforms and social media feeds can help your customers find you quickly. Finally, a good brand can lead to new licensing opportunities and revenue streams.

So, when you are choosing a mark, make sure that it is distinctive and strong, or otherwise be prepared to spend time and money convincing the Trademark Office or a court that it is protectable (and potentially fending off potential third-party uses of the mark; after all, if it is descriptive, others may feel that they can use it freely!). Consider how you use the mark online, on your website, social media, etc. to make sure you are branding across all of your online properties consistently. And finally, make sure you are keeping track of your trademarks, as these are valuable assets that can grow in value over time (like real property, they can be bought, sold, licensed, used as collateral, etc.). Also, make sure to have a trademark attorney conduct a clearance search before you start using the mark, to ensure that no third parties are already using and/or have already registered the mark. The last thing you want is do is to spend valuable time and money plastering your new mark all over your media outlets (commercials, websites, flyers, etc.) only to find that someone else had first dibs on the mark, forcing you to re-brand and go back to Square One. We will help you avoid this pitfall in our next installment, Trademark Basics, Part Two: How Trademark Searches Can Keep You Out of Legal Hot Water.

Reprinted  by permission.