Intellectual Property Trademarks   The Trademark Group at Vascoe Valdes LLP Vascoe Valdes LLP's trademark practice is staffed by lawyers and legal assistants, some of whom spend all or nearly all of their time working in the trademark field. We are responsible for countless marks of our clients, having trademark portfolios ranging in size from one U.S. registration to companies having many U.S. and foreign registrations. Domestic Trademark Practice Searching/Selection. Perhaps the most important aspect of trademark practice is proper searching and selection of trademarks. We work closely with our clients and their marketing groups or advertising agencies to assure that the most distinctive, and thus protectable, trademarks are selected. We pride ourselves on our fast turnaround for preliminary knockout searches and, because of the volume of our trademark work, we receive (and pass on to our clients) significant discounts from our outside search vendors. Registration. Vascoe Valdes LLP has lawyers knowledgeable in all aspects of U.S. trademark registration practice, including the filing of use-based, intent-to-use, and section 44 applications, concurrent use registrations, divisional applications, and applications to the Supplemental and Principal Registers. In addition, we have broad-based knowledge of Trademark Trial and Appeal Board proceedings (both opposition and cancellation proceedings), which occasionally are necessary in order to successfully register a particular mark. Proper Use and Watching. Once a registration is obtained or a mark is adopted, we work closely with our clients to assure that adequate trademark use guidelines are developed and followed by our clients and their licensees, to ensure that the broadest available protection can be enforced against future infringers, if the need arises. In addition, we can assist in setting up trademark watching systems to allow our clients to continuously look for any potential infringers of their marks. We are experienced at implementing both domestic and worldwide watch services. Enforcement. If and when our client's trademarks are infringed, we stand ready with lawyers in our intellectual property litigation practice group to protect our client's carefully developed trademark rights. From our graphics department capable of creating all types of two-dimensional, broadcast quality animation, document imaging and digital video mixing capabilities, Vascoe Valdes LLP is better equipped than most firms to handle trademark litigation. Docketing. Whether you have only one trademark registration in the U.S. or hundreds of registrations throughout the world, you can appreciate the importance of keeping track of the renewal and maintenance deadlines associated with each trademark registration or pending application. To assist with maintaining a secure grasp on this multitude of deadlines, we have devoted substantial resources, working with our own in-house computer programmers, to maintain our intellectual property docketing system. This system is intended to minimize the lawyer-time required to maintain the docket, while generating useful reports and reminders on all deadlines. This docket system itself adds substantial value to our trademark services. International Trademark Practice Over the past decade, the U.S. economy has become increasingly international. Vascoe Valdes LLP's trademark practice reflects that trend. We have developed our own network of foreign associates, most of whom themselves specialize in trademark law within their respective countries. By working directly with hand-picked associates, we have eliminated the need for a "clearing house" foreign firm, often used by smaller U.S. practitioners to locate foreign associates. The result is a noticeable cost savings, reduced delay and reduced chance for miscommunication.   Searching and Screening There are three reasons to perform a search before adopting your trademark: To reduce the risk of an unexpected objection to your use of a mark, To permit you to assess the breadth of your potential trademark rights, and To decide whether you could federally register your trademark. In most instances, the best approach is to first do a preliminary trademark search of the U.S. Patent and Trademark Office database. While this database has its blind spots, and you should search all possible spellings for your mark (symbol, simbol, simbowl, etc.), doing a preliminary search can eliminate marks that are taken without the expense of a full search. WARNING: A preliminary search should not be used to determine the availability of a mark, but rather should only be used to eliminate a potential mark from further consideration. In other words, a preliminary search can only answer the question, Would a full search for this mark be a waste of money? The next step is to order and review a full trademark search, if no clear blocks to your proposed mark are identified in the preliminary search. We receive a volume discount from our trademark search company and pass that on to our clients. Evaluating a full search is where we can bring our experience to bear. We will review the trademark search and give our opinion about whether your proposed mark is available and can be federally registered. In addition, we will assess the breadth of enforceable rights, or equity potential, that your proposed mark holds. For a cost estimate or to order a search, call us at (281) 486-7700. International trademark searching. Both preliminary and full searches are available for more than 200 countries throughout the world. International preliminary searches. Preliminary searches of phonetically identical marks are affordable and can be obtained for limited geographic regions or worldwide within 72 hours. For a cost estimate or to order a search, call us at (281) 486-7700. Full searches and availability opinions in foreign countries. These searches can be obtained in any country of particular interest or where a preliminary search reveals sources of risk, through our network of foreign trademark associates. For a cost estimate or to order a search, call us at (281) 486-7700.   U.S. Registration Is a U.S. trademark registration necessary to enforce your rights? No. Trademark rights in the United States arise from using a trademark, not from registration. If you are making proper trademark use of your mark, you can successfully sue for an injunction or damages, even in federal court, based solely upon your earlier use of that mark. These are called common law trademark rights, which are limited in their geographic scope. In order to assert your common law trademark rights, you must be able to show that you were the first to offer and sold your goods and services in the geographic area of the infringing activity you seek to stop. Is a state trademark registration worth pursuing? Each of the 50 states operates a trademark office within the secretary of state office. However, because state registrations generally grant no rights that you do not already possess under common law, the value of a state trademark registration is limited. Because no examination is made by state authorities to assess whether there are any existing state or federal registrations that are confusingly similar to the mark sought to be registered with the state, infringing marks can co-exist on a state trademark register. State registrations often create a false sense of ownership. If you have further questions about a state registration, contact a competent trademark attorney in your state. Owning a U.S. registration does provide certain advantages: Nationwide Priority Date. The filing of a U.S. registration application establishes a nationwide priority date that can far pre-date the date you first begin to use a mark. Presumption of Validity and Ownership. Owning a registration creates a presumption that the trademark is valid, that you are the owner, and that you have the exclusive right to use the mark in commerce. Constructive Notice. Registration gives constructive notice to all third parties that you own the registered mark, thus eliminating any defense of good faith adoption after the registration date. Easily Searched. Registered marks are easily searched, reducing the chances that a competitor will unknowingly adopt a closely similar mark. Customs Service Protection. A registered mark can be recorded with the U.S. Customs Service and used to deny entry into the U.S. of any infringing products. Incontestability. After five years, a registration may become “incontestable,” eliminating a number of defenses that might otherwise be available to an infringer, including the defense that your mark is descriptive. Delaying Costs of Filing in Other Countries. Most countries permit U.S. applicants to assert the filing date of their U.S. trademark application as a priority date for their foreign application, provided the foreign application is filed within six months of the U.S. filing date. Essentially, this allows U.S. applicants to postpone the expense of foreign trademark filings for up to six months, without any loss of priority date. Why bother to seek a U.S. registration? Ask yourself these questions and then contact us at (281) 486-7700. Do you care if someone else were to adopt your trademark in a far-off part of the United States? If the answer is no, you are only concerned with infringers in your local geographic area, and the advantages of filing a U.S. registration may not outweigh the costs. Can you imagine spending several thousand dollars or more enforcing your trademark rights against a third party, either now or some time in the future? If not, consider saving the money you would spend on a full trademark search, and rely on your common law trademark rights rather than seeking a federal registration. If you are just beginning to use a mark, conducting a good search may be more crucial than owning a U.S. registration. Are you currently making nationwide use of your mark, or will you be doing so very soon (say within the next few weeks)? If not, filing a U.S. application will allow you to secure a nationwide priority date immediately and will grant you nationwide rights that can be enforced once your registration issues. Are you worried about competition from foreign-made, counterfeit goods? If so, the benefits of U.S. Custom Service Protection make pursuing a registration worthwhile. What is involved in the registration process? To obtain a federal trademark registration, an application must be filed, along with a filing fee per class. It takes about twelve to eighteen months from the date of filing to obtain a U.S. registration, but your priority date relates back to the date of filing. During the twelve months, your application must clear two hurdles: Pre-publication Examination. A trademark attorney within the U.S. Patent and Trademark Office (PTO) will be assigned to examine your application to confirm that it meets all of the statutory requirements, that the goods and services you are (or will be) selling under the mark are specifically described, that your mark is sufficiently distinctive and not descriptive, and that there are no confusingly similar, earlier-filed applications or existing registrations that conflict with your application. Publication. Once the examining attorney in the PTO accepts your application for publication, it is published in the Official Gazette, a government publication monitored by many trademark owners. Any third party may oppose your application within thirty days of publication, if they believe they would be injured by your application registering. Usually, this means they own an earlier registration or have earlier common law rights. Assuming no opposition is filed, your application will either be allowed (meaning you filed an intent-to-use application and all you must do is prove that you have begun use of the mark and a registration certificate will issue), or a registration certificate will be sent to you. If an opposition is filed, an administrative litigation (called an Opposition Proceeding) is commenced.  What does it cost to file a U.S. trademark application? The cost varies depending on the complexity of your application, whether you are filing an intent-to-use application or an actual use-based application, the types of goods or services for which you seek registration and the nature of your mark. We will give you a specific cost estimate for your application. Just call us at (281) 486-7700.   Worldwide Trademark Registrations The rules are very different abroad. In most countries (generally those that were not historically colonies of England), trademark rights are acquired by registration, not by use. This is very different than in the U.S., where trademark rights arise simply from offering goods or services under the mark. Consequently, foreign trademark protection requires better planning. Trademark law is not standardized or centrally administered throughout the world. Each foreign country has its own trademark laws and trademark office which registers marks. Therefore, a trademark must be separately protected in each country. Selecting and searching worldwide trademarks. Watch out for unintended foreign language meanings to any marks you are considering for use in foreign countries. As is the case with U.S. trademark practice, it is usually wise to carefully search for conflicting trademarks before adopting or registering a mark abroad. Today such worldwide searches can be performed in less than 72 hours and at a reasonable cost. A comprehensive search and written opinion interpreting that search can be obtained from a trademark specialist in any country. Call us at (281) 486-7700 for cost estimates. Develop a multi-tiered trademark registration plan. Outside the U.S., the United Kingdom and some former British colonies, trademark use alone seldom yields enforceable trademark rights. In most foreign countries, it is the act of registering a trademark, not using a mark, that establishes trademark rights. For that reason, foreign trademark registration should be the early focus of any trademark protection program. U.S. exporters should register their trademarks in those foreign markets where the U.S. company fills orders for customers or where the U.S. company is planning to expand distribution of its goods abroad. Think of it as planting the flag. With more than 200 countries maintaining their own trademark offices in the world today, most companies must prioritize their registration efforts and first plant their flag where it is most important to do so. To maximize the effectiveness of those efforts and to manage the expenses associated with foreign trademark registration, U.S. exporters should first be concerned about protecting their trademarks in those countries in which the U.S. exporters goods are or soon will be distributed. For companies exporting into numerous countries, protection efforts may need to proceed in stages to control costs, starting in the countries representing the exporters’ biggest markets or potential markets. Next, U.S. exporters should concern themselves with the foreign countries where they have vendors or suppliers. Later, U.S. exporters should address those countries particularly known to have trademark counterfeiting or pirating problems. In making a plan, U.S. exporters should get advice on the available alternatives for protecting U.S. trademarks in those countries. For example, many countries in Western Europe provide regional trademark protection through the Community Trade Mark or CTM. Established on April 1, 1996, the CTM is part of a uniform trademark law that covers the fifteen countries in the European Union, also known as the EU. The CTM registration system does not replace the national trademark laws of the EU member countries. Rather, the CTM is a top layer of trademark law that allows a trademark to be registered in one place and become effective in all EU countries. For companies with foreign subsidiaries formed under the laws of a country that is a signatory to the Madrid Protocol (and there are many), consider filing an international registration at the World Intellectual Property Office (WIPO) in Geneva, Switzerland, as permitted by the Madrid Protocol. Such an approach can, with a single filing, secure a priority date in other Madrid Protocol signatory countries that have been designated by the applicant. However, because this system also requires that national registrations be later filed to enforce these rights, the Madrid system may not provide cost savings in the long run. File applications as soon as possible. Once a search has been performed, a U.S. exporter should file its registration applications as soon as possible. Prompt filing of foreign trademark applications is important because filing establishes the priority of the trademark. Thus, even if the registration is issued four years after the application is filed, the priority date is the date of filing. Also remember that the filing date of an identical U.S. application can be asserted as the priority date of most foreign applications if the foreign application is made within six months of the U.S. filing. Prompt foreign registration becomes urgent as a U.S. trademark brand notoriety increases. Trademark pirates file speculative foreign registration applications on up-and-coming U.S. brands hoping that one day the U.S. company will seek to sell its goods in that foreign country. Unless the U.S. exporter has already filed an application to register its trademark in the country, the U.S. company will have to either purchase the foreign rights to its own trademark or license its use where the pirate holds the registration. Generally, foreign trademark applications can be filed within one to three weeks, depending upon the country involved. Often applications can be filed even more quickly and proper powers of attorney or specimen samples of the mark can be provided later. Document your use in each foreign country. Trademark rights take maintenance. They can be lost, even if the mark is registered. The rules differ by country, but the general rule is that failing to use a trademark in connection with the intended goods or services for three years (or in some countries five years) will cause the trademark registration to become vulnerable to cancellation for non-use. U.S. exporters who succeed in obtaining foreign registrations for their U.S. trademarks should find out from their lawyers what it takes to maintain those registrations and avoid any lapse for non-use. Consistently enforce your foreign rights. Even if it’s used and registered, a trademark can lose its value (and even its strength) through infringement. Trademark rights are lost also when the quality and nature of the goods sold under the mark are not inspected and controlled by the trademark owner or when someone else is allowed to use the identical or confusingly similar trademark for the same or related goods or services. To prevent that trademark loss, know who is using the trademark and how. The key to simplifying trademark policing is to define the boundaries of the your trademark rights, both in terms of the similarity of goods, the marks that will be tolerated as non-infringing, and the geographic scope of those rights. We think of it as defining our client trademark ranch. A well defined trademark ranch helps identify trademark violators quickly and is essential to consistent enforcement. So push your trademark lawyer to articulate the likely boundaries to your trademark rights. Once that boundary is clarified, any licensee who abuses the trademark, or any third party who uses a mark that is too similar without authorization, and thus trespasses within the trademark ranch, can be stopped before the distinctiveness and the value of your mark is jeopardized. A useful tool in watching the ranch for trespassers is a worldwide trademark watching service. Whenever a suspect mark is published in one of more than 200 trademark registries around the world, the watching service will sound an alarm, alerting the trademark owner to the problem, usually in time to oppose the pending registration application and take other legal action. The use of such a watch service probably would have alerted Pro Golf to the troublesome third-party registration of FIRST FLIGHT on sports clothing and bags.   Proper Trademark Use What are the basic rules for using a trademark properly? DO NOT use a mark as noun. Always use a mark as an adjective followed by a noun. For example, KLEENEX tissue. DO distinguish the trademark portion of the phrase from other text by using all capitals, quotations, different fonts or colors, or at least by using initial caps. For example, a SCHWINN bicycle. The fact that you are claiming trademark rights to a product name can be further underscored by placing a small TM following the mark. Only those with federally registered marks are entitled to use the ® notation. DO NOT use a trademark in a possessive form, unless the mark itself is possessive. For example, JOHNSON baby oil. DO NOT pluralize a trademark. Instead, the common noun should be pluralized. For example, two SCHWINN bicycles rather than two SCHWINNS. DO NOT use trademarks as verbs. Xerox, for example, runs ads pointing out that even Xerox cannot xerox. DO use your trademark on your goods or their immediate packaging. A trademark must be affixed to the goods or their immediate packaging (shrinkwrap hang cards, hang tags, printed on the product itself, jewel box labels, corrugated boxes, name plates, etc.). Use of a trademark on stationery, advertising materials, packing lists, assembly instructions and the like is NOT sufficient. There are some major exceptions to this rule: If sales are made by use of an Internet web site, a direct mail catalog, sample book, or other point of sale display, use of the mark in these contexts can yield trademark rights provided: (i) there is a photograph or drawing of the goods (ii) the mark is used in close proximity to the picture, and (iii) there is a means of placing an order provided, such as an order form or e-commerce capability. If your trademark is used to offer services, not goods, then obviously affixing the mark is not possible. In that case, use of your mark in an advertisement of your services is sufficient. Which trademark notice is proper, TM, SM or ®? Use of ®. If your trademark is fully registered with the U.S. Patent and Trademark Office, you should always use the ® superscript. We often work directly with clients and their ad agencies to modify this practice on specific ad copy to reduce the cluttering effect of such notices. The U.S. Trademark Act requires such actual notice of the registered status of your mark in order to recover damages. There are other forms of notice that are acceptable (such as Registered in U.S. Patent and Trademark Office, Reg. U.S. Pat. & Tm. Off., or ABC is a registered trademark of the ABC Corporation). Use of "TM" or "SM". Anyone claiming trademark rights in a word or logo that is not registered for the goods may use the TM or SM superscripts. TM should be used as a notice for a mark used on goods and SM should be used as a notice in advertisements offering services under a mark (a service mark).   Watch Services We offer various domestic and worldwide watch packages to give you an early warning of potentially infringing trademark applications, domain name registrations, or even registrations filed by your competitors. Policing your rights after you search and adopt your mark is essential to maintaining the equity in your trademark. Watch services allow you to guard the perimeter of your trademark ranch without a heavy administrative burden. We can help you decide which watch service accomplishes your objectives most inexpensively; just call us at (281) 486-7700. We work with leading trademark search companies to provide a wide array of watch products. The services cost far less than you might think and are a great way of policing your rights. For more information, call us at (281) 486-7700.   Cost-Saving Tips Conduct your own preliminary trademark searches, using the web-based tools we link to in our site to see whether there are any clear blocks to the adoption of your proposed mark. Use us to conduct a full search. We can efficiently review the results, forward it to you electronically or in hard copy, and interpret the results for you. Use one person as the trademark contact person for outside trademark counsel. Often we find that a lack of coordination between different divisions or project teams at our clients can result in duplicated searching, applications, and repeated explanations.