trademark registration

Trademark Basics from the USPTO - Hurdles to Filing a Trademark Application

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How do I protect my brand? It seems like a simple question, but it doesn't always have a simple answer.  One route of protection is through a trademark registration. The U.S. federal trademark application process can be confusing.  Here are a few things the U.S. Patent and Trademark Office believes all applicants need to know before they get started.

The Trademark Application Process is a Legal Proceeding

  • You may file a trademark application without an attorney. But, if you want legal advice you should consider an attorney that practices trademark law.
  • Foreign attorneys and non-attorneys who work for trademark filing companies are not permitted to advise you, help you fill out a form, sign documents for you, or take actions on your application for you.
  • Hiring someone who is not allowed by the USPTO’s rules to represent you can delay your application and jeopardize its validity.
  • You sign a trademark application under "oath." When you sign the application you are saying, "I swear what I state is true."

Your Trademark Application Must Meet Numerous Legal Requirements/Hurdles

  • Is your trademark federally registrable?
  • Can you properly identify your goods or services?
  • Can you identify the proper filing basis for your application?
  • Has your trademark been used in interstate commerce?
  • Who is the actual owner of the trademark?

To help you navigate the trademark process you can search the USPTO website for guidance and read the "Basic Facts About Trademarks" guidebook

More answers to your questions can be found on Texas trademark attorney Tamera Bennett's website here.

Entertainment Law Update Podcast Episode 94 Tamera Bennett and Gordon Firemark

Podcast Episode 94 Tamera Bennett Gordon Firemark Entertainment Law Update

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In this episode of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

 

 

How Can I Protect A Trademark For My T-shirt?

You've just developed a catchy new phrase or word that you want to protect as a trademark. Maybe you went so far to already file a trademark application and received an office action refusing your application. What went wrong?

What Can I Do To Protect The Trademark On My T-Shirt (or other clothing)?

Simply putting a phrase on a t-shirt does not convey to the world that you are using the phrase as a trademark or brand. In fact, if you try to register a phrase as a trademark and the only thing you submit as your evidence of use is a t-shirt with the phrase across the front or back, you will receive an office action denying your trademark application stating your slogan is "merely ornamental" or decorative in nature. 

After the "Slants" Ruling ...

On June 19, 2017 the U.S. Supreme Court ruled the disparagement clause of the U.S. Trademark Act is facially unconstitutional under the First Amendment's Free Speech Clause. These means that trademarks like the "The Slants" for musical groups and t-shirts, or "Dikes on Bikes" for videos will be able to proceed with registrations. The key is using the phrase or word as a trademark and not as ornamental or decorative. Keep reading for tips on proper use of your trademark on clothing.

Size Matters For Trademarks On Clothing

Typically the smaller and more discrete a mark is used on clothing, the more likely the U.S. Trademark Office will consider the use as a trademark. Wording or design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods.

Where Can I Place My Trademark On My Clothing?

The U.S. Trademark Office will be looking for trademarks to be in the neck of shirt or the band of a pair of pants. Also, on hang-tags attached the garment or product packaging.  If you offer your goods for sale on line, then make sure to use the trademark in close relation to the cart for checkout.

Here's a document that provides examples of how to properly place your trademark on clothing.

Why You Can't Trademark The President's Name

why-cant-i-register-a-trademark-with-the-presidents-name #createprotect #trademark

In every election year, we see a flurry of trademark applications filed by individuals that want to profit off a candidate's name. Maybe they are for the candidate, or perhaps against. Either way, filing a trademark application that includes, Trump, Hillary, or Bernie is always a waste of time and money.

Since January 1, 2016 over 100 trademark applications have been filed with the U.S. Patent and Trademark that have some reference to "Donald Trump." The applicants filing the marks are not "the Donald" or any business associated with Trump. Those applications have been or will be denied.

Here's Why You Can't Register A Trademark With The President's Name:

Denied registration for not having permission to use Donald Trump's name or image.

Denied registration for not having permission to use Donald Trump's name or image.

1.  You don't have permission: You need permission to use a person's name in a trademark registration.  You'll get this response in an office action refusing your application: Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.   Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206.  Without written consent, you will not be able to secure a trademark registration.

2.  Most likely you are not using the phrase, slogan, or mark as a trademark: If you decided to produce t-shirts, hats or other clothing using the candidate's (or President's) name or likeness, you may get a refusal that your use is merely ornamental. Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127.  With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. 

Trademark Application Review Process is Bi-Partisan:

Don't worry that some trademark applications may be accepted and other's denied just because the trademark examining attorney is Republican or Democrat. The rules are applied equally. Since 2008 over 150 trademark applications have been filed by people not related to President Obama that contain the word Obama. Those applications have all been denied registration.

Denied for not having consent to use Obama's name. This application was filed by POM Wonderful. You would think they wouldn't have any tried.

Denied for not having consent to use Obama's name. This application was filed by POM Wonderful. You would think they wouldn't have any tried.

7 Questions for Authors to Ask Before Signing a Book Contract

Media and copyright lawyer Tamera Bennett presented 7 Questions for Authors to Ask Before Signing a Book Contract to the students enrolled in the "Author's Job" course presented by Creative Enterprises Studios.

Seven Questions for Authors to Ask Before Signing a Book Contract:

  1. Who owns the copyright in my book?
  2. How do I register a copyright?
  3. What are the options for publishing my book?
  4. What rights will the book publisher want?
  5. What will I get paid?
  6. When will I get paid?
  7. How can I cancel the book contract?

Bonus topics on trademark law and book publishing:

You can view the slide show above.

 

 

Protecting Your Business Trademark - Interview with Texas Trademark Lawyer Tamera Bennett

How Do I Protect My Business Trademark #trademark #intellectualproperty#createprotect Attorney Tamera H. Bennett

Whether you're a big or small business, you need to know how to protect your brand. Texas trademark lawyer Tamera Bennett was interviewed for Insureon to help business owners answer the following questions:

  1. Why do I have to defend my trademark?
  2. How can I protect my business from a trademark lawsuit?
  3. What do I do if my business is accused of trademark infringement?

Click here to read the full article and trademark attorney Tamera Bennett's responses.

When Your Legal Blog Takes On The World

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World dominance wasn't our goal. But, a little blog featuring current issues on trademark, copyright and entertainment law has readers from 128 countries.

One thing trademark lawyer Tamera Bennett enjoys is helping U.S. clients protect their trademarks and copyrights in foreign countries. Most people don't realize that a federal U.S. trademark registration does not extend to Canada, Mexico or other foreign countries.

When your brand is launching outside the United States of America, you need a plan for protecting your trademark in foreign countries. There may be certain benefits to timing the filing of trademark applications in foreign territories based on when you file a trademark application with the U.S. Patent and Trademark Office.

Give Texas trademark lawyer Tamera Bennett a call when you are ready to take on the world.

CLE - Copyright and Trademark Primer- Webcast and Replay

tamera-bennett-dyan-house-copyright-trademark-webcast

REPLAY WEBCAST!
MCLE Credit: 1 hr
Texas MCLE No: 901315062
Registration Fee: $85
Register for Webcast

How do I protect my copyrights and trademarks?

This program covers the basics of copyright and trademark law for the non-IP attorney. It's also perfect for the the business owner who wants to understand brand protection.

The program addresses the most commonly asked questions about copyright and trademarks, including: What are the differences between copyrights and trademarks? How do you get protection for your copyrights and trademarks? What are the advantages of registration? What do I do if I think someone has infringed my work? Am I covered if I just put my work in an envelope and mail it to myself?

Learning Objectives:

  • Understand the differences between copyrights and trademarks
  • Learn how to protect copyrights and trademarks
  • Identify issues relating to infringement - both when you think someone is infringing your rights and what to do when someone has accused you of infringement

Speakers:

Ms. Tamera H. Bennett, Lewisville
Bennett Law Office, PC

Ms. Dyan Michele House, Dallas
Carter Scholer Arnett Hamada & Mockler, PLLC

Register:

Watch in the comfort of your own home or office! If you cannot watch the entire webcast at its scheduled time, register now and watch it when the recording is available after the broadcast. You will have until to March 31, 2016 complete the program at your convenience!

 

4 Legal Tips To Protect My Mobile App

 Image CC2.0  Johan Larsson


 Image CC2.0 Johan Larsson

You've searched every App store out there and know exactly what's missing. You're ready to take that idea out of your head and turn it into a money making venture. Read on for four areas where you can get tripped up in developing and launching your mobile App.

4 Legal tips to protect my mobile app

1. Have a written agreement with the App developer: You need to know if you own the App and the IP in the app. It seems like an easy question, but often when I talk to App developers and folks with App ideas, they don't understand who actually owns the finished App. If you are hiring someone to develop your idea into an App, make sure you have a written agreement spelling out who owns what.  Even more important, make sure you understand that agreement. Your App might include intellectual property including patents, copyrights and trademarks.

If you are hiring someone to develop your idea into an App, make sure you have a written agreement spelling out who owns what. Even more important, make sure you understand that agreement.

2. Have a written privacy policy: The Federal Trade Commission requires a privacy policy; California law, as well as other state's laws, requires a privacy policy and if you plan on launching out of the country, you need to understand those laws, too.

3. Have a unique product name and a trademark application ready: A trademark is a brand identifier that helps your consumers distinguish your product or service from similar products and services in the marketplace. If you've checked the iTunes Store or Google Play lately, you know they are crowded marketplaces and the name of your App has got to stand out and be memorable.

4. Have your App compliant with submission requirements: If your App is misleading to consumers and provides inaccurate descriptions of the App's functionality, it will most likely be rejected by the iTunes Store and Google Play. This will send you back to the drawing board and delay the launch of your App.

New Trademark Filing Fees and New USPTO Website

Watch for info on using the new USPTO website.

The US Patent and Trademark Office launched their new website. The site, dedicated to the filing and prosecution of federal patent and trademark applications, provides a more user-friendly platform for filing documents and researching trademark applications and registrations. Watch the video above for a quick tutorial on the new trademark office website. I will say after further poking around the site, the back-end for searching TEAS and TSDR have not yet been revised.

Effective January 17, 2015, federal trademark application fees were revised into four filing classifications.

  • A paper trademark application is $375.00 per international class.
  • An electronic TEAS RF application is $275.00 per international class.
  • An electronic TEAS Plus application is $225.00 per international class.
  • An electronic TEAS application is $325.00 per international class.

Confused about which electronic application is right for you? Take a look at this video explaining when each application is appropriate.

Or, contact Dallas-area trademark attorney Tamera Bennett with any questions.

 

 

2014 Year In Review - Entertainment Law Update Podcast

Image CC2.0  Ruta N. Medellin

Image CC2.0 Ruta N. Medellin

Click the arrow below to play the Entertainment Law Update Podcast Episode 58

What were the hottest lawsuits and most talked about film, tv, music and entertainment law matters of 2014? Listen to Entertainment Law Update Podcast co-hosts Gordon Firemark and Tamera Bennett to find out.

You'll get a quick overview of the year in Entertainment Law and predictions for 2015.

Thank you to all of our listeners. We appreciate you very much.

Happy New Year!

Top 2014 Entertainment, Trademark & Copyright Law Blog Posts

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