This is part of a continuing series of posts about how to keep it legal while blogging.
There’s a new message in your inbox from someone you don’t know. The message is titled “Trademark Infringement.” It looks like spam but you are not sure. You open it and promptly have a panic attack.
I am the owner of ____, the name and the trademark. You do need
permission to use this name. I am sure this is probably an oversight, but
please do change the name on your website by ____ to avoid
legal action, as this is a trademarked name. Please let me
know if you have any questions. Thank you for your cooperation.
What is a trademark? Our guest blogger today, Sarah Dares, shares with you the ins and outs of trademark infringement.
Welcome Sarah to La Phemme Phoodie!
Lots of people throw around legal terms without knowing their real meaning and some of the worst are from a group of protections known as Intellectual Property. IP includes Trademarks, Patents, Copyrights, and Trade Secrets. Each area offers different types of protection for different things, but can be easily confused. Generally, patents provide a limited term of protection for inventions, copyrights protect works of authorship, and trade secrets protect whatever it is the owner wants to keep secret.
“Trademark” is used to refer to almost any kind of mark used on goods and services, although “service mark” can be used for the second type. Trademarks identify the source of goods or services, distinguishing them, and indicating value and image. They can be a word, phrase, design, or a combination of those elements.
Federal registration is not necessary for protection, but does offer several advantages. Registered trademarks are considered incontestable after 5 years of registration, can be used for registration in a foreign country, can be protected nation-wide, and, most importantly, allow the owner to use the ® symbol. All other, non-federally registered trademarks can use TM or SM depending on whether the mark is for goods or services.
Trademark rights can only be acquired by using them – meaning, you will not be able to protect a mark without proving use. So, no, you cannot file an application for “Blue Ivy Bottles” in the hopes that Beyoncé and Jay Z send a check your way. Trademarks do not expire, so long as they are still being used in commerce.
Once an application is filed, you can expect it to be examined in about 6-10 months. The examiner will then either allow it to proceed to publication, or issue an office action. The office action might require clarification of the goods or services, or reject the application based on similar marks. The applicant can then respond to the examiner with amendments or arguments. You could do this by yourself, but it’s highly recommended that you use an attorney for this process – yes, attorneys charge by the hour, but it will be money well spent.
Once the application publishes, other parties can examine it and raise their own objections to its registration. The applicant is able to respond to these as well.
The process can be confusing, but the US Patent and Trademark Office offers a wealth of educational materials – these are your tax dollars at work, so use them!
*Sarah Galbraith is a food-loving, photo-taking, world-traveling, city-living, fashion-fascinated, Intellectual Property attorney from Philadelphia.Disclosure: While Sarah is a lawyer, she is not offering legal advice. Posts on legal matters are intended to provide legal information and do not create an attorney/client relationship.
Are you dealing with trademark infringement issues? Were you able to resolve it without litigation?