Some Office Actions are quite standard and easily remedied, while others are more substantive and may require legal arguments and evidence to support your position and justify why your mark should be entitled to registration.

This month, we consider some of the most common reasons why the USPTO may issue an Office Action and what you can do to avoid one.

Likelihood of Confusion – Perhaps the most common substantive basis on which the USPTO may refuse registration of a proposed trademark is likelihood of confusion with another mark. If the Examining Attorney finds that a trademark, when used on or in connection with the goods or services identified in the application, so resembles a registered trademark that it is likely to cause confusion among consumers, the mark may not be registered.

In determining likelihood of confusion, the USPTO considers similarities between the marks and the relatedness of the goods or services in the applications. The USPTO considers phonetic equivalents, similarities in appearance, sound and commercial impression, and the nature of the goods or services covered by the relevant applications.

Conducting a comprehensive trademark search before applying for trademark registration may reduce your chances of getting an Office Action based on likelihood of confusion.

Trademark Disclaimers and Descriptive Marks – Generic or descriptive words are not entitled to trademark protection. Trademark law requires trademark applicants to disclaim any portion of their mark that is generic, merely descriptive or deceptively misdescriptive (e.g., the mark BEBO’S SHOES would require a disclaimer of the word “shoes”). If the mark contains descriptive word(s) and there is no disclaimer, the Examining Attorney may issue an Office Action requiring a disclaimer of the descriptive or generic portions of the mark.

The applicant is still entitled to use the generic or descriptive wording as part of their trademark, and the mark will be protected in its entirety, but the applicant will not have exclusive rights to prevent others from using or adopting marks that also contain the generic or descriptive material.

For Office Actions based on descriptiveness, the applicant may submit arguments and evidence showing that the mark does not merely describe the goods or services, or that the mark, over years of continued use and/or marketing, has acquired distinctiveness to serve as a trademark.

Improper Specimen – For trademark applications covering “in use” marks, the USPTO requires a “specimen” showing the mark as it is used in connection with the goods or services specified in the application. The specimen may be hangtags or labels for clothing, product packaging for food or personal care items, or a website screenshot for online services.

If the trademark application does not include a specimen, or if the specimen does not exactly reflect the mark as shown in the application, the USPTO will issue an Office Action requesting a new specimen. As a part of our comprehensive trademark service, our attorneys will advise you on selecting a proper specimen to avoid any delays in your trademark registration process.

These are just a few of the possible reasons why applicants may receive Office Actions. They are not insurmountable and may be overcome with persuasive arguments and/or evidence addressing the issues cited in the Office Action. If you’ve received an Office Action for your trademark application, please contact us for a complimentary consultation, (800) 769-7790. We’re always happy to hear from you.

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Case in point, Blue Ivy Carter, daughter of singer Beyonce and rapper Jay-Z. Not even 6 months old, she’s already the subject of two trademark applications, seeking protection for her name on everything, from cosmetics and fragrances to keychains, mugs, clothing, toys and sporting goods, to marketing, merchandising and entertainment services, just to name a few. Talk about high expectations.

Registering Trademark Names, Living or Famous

This month we consider the trademark rules regulating the names of living and/or famous individuals. It happens every few months. Someone of little or no import becomes immensely famous overnight and there’s an onslaught of applications to the U.S. Patent and Trademark Office (USPTO).

Just days after Blue Ivy’s birth, a crafty entrepreneur from New Jersey applied to register the name for infant and toddler clothing. The USPTO moved quickly to dismiss the application on the basis of false connection with a famous person whose permission was not of record. Similar circumstances surround Linsanity, Knicks guard Jeremy Lin, and just this week, the mother of Trayvon Martin filed applications with her son’s name, so have a few other people.

The USPTO Standard of Review

So what are the rules governing trademark registration for names of famous and/or living individuals? If a mark comprises a name or likeness of a living individual, the individual’s written consent to register the name or likeness must be submitted. USPTO Examiners are required to make a proactive investigation in this regard and inquire whether the trademark name or likeness is that of a specific living individual. If so, the individual’s written consent must be submitted. The purpose of the inquiry is to avoid the unauthorized registration of an individual’s name or likeness. Consent is also required for registration of a pseudonym, stage name or nickname if the name identifies a specific living individual.

The individual whose name or likeness appears in the mark must personally sign a Statement of Consent to register his or her name or likeness.

False Connection and the Right to Privacy

The rules surrounding the names of famous people have to do with, as noted above, suggesting a false connection with that person and his or her right to privacy. The right to privacy protects a person’s control over his or her identity or “persona.” Someone acquires a protectable interest in a name or designation where the name or designation is unmistakably associated with, and points uniquely to, their personality or “persona.”

This was illustrated most recently by Kim Kardashian, who last year sued retailer Old Navy for using a “Kim K” look-a-like in one of its advertisements.

The trademark definition of “person” includes natural persons, living or dead.  Except in the case of deceased individuals, trademark protection extends only as long as there is someone entitled to assert proprietary rights or rights of privacy (e.g., in the case of Trayvon Martin).

To establish that a proposed mark falsely suggest a connection with a person, it must be shown that: (1) the mark is the same as, or a close approximation of, the name or identity of a person; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person; (3) the person named by the mark is not connected with the activities performed by applicant under the mark; and (4) the fame or reputation of the person is such that, when the mark is used with the applicant’s goods or services, a connection with the person would be presumed.

It is worth noting that the law surrounding false connections in trademarks applies even if the trademark is the applicant’s real name. So the USPTO would be able to deny your trademark application even if it comprised your real, legal name. Not so likely in the case of Gwyneth Paltrow. More so if your name is Jennifer Lopez. Of course, the question of whether the goods or services offered in connection with the name are likely to create confusion regarding source or sponsorship also comes into play. So Jennifer Lopez for car tires, possibly okay. Jennifer Lopez for clothing or perfume, not so much.

So there you have it, the basic rules for registering the name of living and/or famous individuals as trademarks. For additional information or for specific inquiries about your trademark, please contact us. We offer free consultations and we’re always happy to hear from you.

With the ease and accessibility of Internet e-commerce, it has become much easier for foreign merchants and manufacturers to sell their goods here in the United States and for U.S. companies to do the same overseas. This naturally gives rise to more competition for the same customers and greater importance on protecting your brand in the marketplace.

So what are some key considerations for a sound brand protection strategy in the global market? Consider the following:

1. Protect Your Trademark In Relevant Markets – For most businesses (especially if you’re reading this), your most relevant market is the United States. International trademark protection may not be required for your business. For others, it may be essential. Ask yourself:

* Will I be conducting business outside the U.S.?
* Will I ever export my product overseas?
* Will I ever manufacture my product overseas?
* Can I afford international IP protection? If so, in what markets would my product most likely be commercially sold?
* What is the likelihood of my product being copied or sold abroad?

If international trademark protection is right for your business, identify the countries or regions in which you will need protection. Patent and trademark rights are territorial, so a U.S. registered trademark does not provide protection in foreign countries. International trademark registration can be costly, so select the markets that are commercially relevant for your business now and in the foreseeable future and start there.

2. Enforce Your Trademark – Registering your trademark with the U.S Patent and Trademark Office is not the final step in protecting your brand name. Quite the opposite, it’s just the begining. Once you have a registered trademark, take advantage of the benefits afforded by registration. Sign up for trademark monitoring services to keep an eye on any newly filed trademark applications that may be eerily similar to yours for related goods or services. The U.S. trademark system offers various means of challenging or opposing a potentially infringing trademark before it gets to registration.

You may also consider recording your trademark with U.S. Customs and Border Protection (CBP). This assists CBP in identifying infringing goods and allows CBP to seize and destroy any infringing goods entering the country.

3. Define Your Rights – When entering into contracts or agreements with foreign manufacturers, suppliers or vendors, explicitly outline your intellectual property rights, including ownership, use, licensing and transfer of such rights, as well as dispute resolution mechanisms.

These are just a few suggestions to keep your trademark and brand name protected in the international marketplace. If you’d like more information about trademark registration or brand protection, including filing your trademark with the CBP or international trademark protection in other countries, please contact one of our Flat Fee Trademark attorneys. We offer free consultations and we’re always happy to hear from you, give us a call at (800) 769-7790 or email us.

See Attorney Gore on MSNBC Your Business below, at the 1:20 mark.

Here’s our checklist of top things to get started in protecting the intangible assets of your company:

1. Register your intellectual property. Let’s say you were fortunate enough to receive an iPhone or a Kindle for Christmas. What’s the first thing you did after opening the box? You logged on to “register your device,” didn’t you? You created a record that the iPhone or Kindle belongs to you and you have proof of ownership through registration.

Intellectual property works exactly the same way. Bolster your legal rights with a federal trademark registration at the U.S. Patent and Trademark Office (USPTO), a registered copyright with the U.S. Copyright Office, or a registered patent from the USPTO. These measures create enforceable rights in your favor if you are ever in the position of defending your right of priority use and/or ownership.

2. Search your brand. Search your company or brand name every so often just to see what shows up, you may be surprised. A low-maintenance way to keep track of things on the Internet that may be of interest to you is to set up a Google Alert for your brand name (Bing may also offer this service). Google will send you daily or weekly alerts of any articles, websites or content containing your designated keyword(s).

3. Maintain consistency. Ensure your brand is represented consistently each and every time it’s used, by you and especially by others. If your logo includes a stylized font, special capitalization or other unique identifiers, be sure it is always used and represented that way. This ensures the strength and consistency of your trademark and will work in your favor in case of possible infringement where someone may not use your exact mark or wording, but something very similar in sound or appearance.

4. Take advantage of legal tools. One of the most common tools for intellectual property protection is a Confidentiality and Non-Circumvention Agreement. It’s a relatively simple document, it can be reworked for various counter-parties, and it provides some measure of enforceable protection when sharing business ideas, concepts and innovations with others. It’s not foolproof, no contract is, but it is a written record of your mutual understanding regarding origination, ownership, confidentiality and financial gain, if any.

These are just a few suggestions to help you keep your Intellectual Property Protection resolution for 2012. If you need any assistance or additional information on these tips, please give us a call, (800) 769-7790. On behalf of the attorneys at Minott Gore, P.A. and FlatFeeTrademark.com, we wish you a very prosperous and well-protected new year!

As a former large firm alumni in Washington D.C., Attorney Minott considered trading in her legal hat to enter the world of entrepreneurship. Fortunately, she realized the issue was not practicing law but rather the nature of her work in a large firm. Serena found a happy medium by establishing her own law firm, Minott Gore, P.A., which she founded with Attorney Keesonga Gore, another large firm alum, in July 2007. Attorneys Minott and Gore set out to build a new kind of law practice,  one focused on high quality, relationship-based representation for small business owners and entrepreneurs.

Serena Minott, a formerly disillusioned big-firm associate, also suggests forging your own path. “I was really tempted to walk away from the law entirely, but I gave it another go because I believed I could build a different kind of practice actually enjoying what I do,” explains the cofounder of Minott Gore, P.A., a Miami-based trademark and corporate firm launched in July 2007. “When you’re an associate, the pace is fast. You turn in your work and move on to something else. Today we represent small-business owners in a very relationship-based practice. Every day I’m excited to go to work because I love talking to and working with clients.

To read the full article, please see the Fall 2011 edition of ABA Perspectives Magazine, or download it here.

Attorneys Minott and Gore started their legal careers at large, multinational law firms in Washington D.C. Attorney Minott worked as an associate at Dewey LeBoeuf, LLP and Attorney Gore worked as an associate at SNR Denton, LLP.  After spending several years at these firms, honing their legal skills, knowledge base and expertise, Attorneys Minott and Gore left to start their own law practice where they could focus more on client relationships and build a meaningful practice serving the needs of small businesses and emerging entrepreneurs. They founded the Law Office of Minott Gore, P.A. in July 2007. The firm’s practice includes all aspects of trademark law, trademark protection and business law. Flat Fee Trademark is a service of Minott Gore, P.A.

Read the full article and find out how our attorneys handle the business of managing a law firm here.

Your brand is huge, and even if it doesn’t seem like it right now, it has the potential to be the most valuable asset in your company. Protecting your trademark is no small undertaking and should not be left to chance. This month, we consider the top 5 reasons why you should work with a trademark attorney in protecting your brand name.

1. Trademark Law Is Complicated. Trademark law is a highly specialized area of the law with specific rules and requirements. Registering a trademark may seem like a straightforward form process, but in truth, trademark law in the United States is subject to specific regulations, unique filing requirements and is strictly enforced by the U.S. Patent and Trademark Office (USPTO). There are many areas for mistakes and simply entering the wrong information could lead to your application being rejected and losing any filing fees paid.

2. Cost Effective. Believe it or not, it can cost less to register your trademark with a trademark attorney than without one. If there are any errors, omissions or conflicting marks when you file your trademark application, the USPTO will issue an Office Action refusing registration of your mark. If the issues are substantive, or in the case of a conflicting trademark, you will likely have to hire a trademark attorney to respond to the Office Action on your behalf. This usually incurs additional fees. Wouldn’t it have been smart to use a trademark attorney from the outset?

3. Better Searches, Better Odds of Success. Trademark attorney searches are much more in-depth and comprehensive than the search that is available on the USPTO website. Trademark attorneys, including the attorneys at Flat Fee Trademark, use paid, proprietary databases to search trademarks. Our searches don’t just include your mark, but also variations of the mark that could result in the USPTO denying your application. You may think you’ve covered all your bases, but if you don’t know what to look for, you will probably miss something. An experienced trademark attorney can help spot potential issues and conflicting marks before submitting your trademark application.

4. Real Live Attorneys. Beware quickie trademark filing companies. Most of these filing services are not staffed by trademark attorneys. They may use a paid attorney spokesman, but they are just document preparers. They cannot provide legal advice and if you receive an Office Action or an Opposition proceeding from a third party challenging your mark, you’ll have to find and hire a real trademark attorney.

5. Avoid Infringement of Other Marks. A trademark attorney can advise you on using and registering your mark in a manner that will reduce the likelihood of infringement of others’ trademarks. In considering trademark registration, it’s important to get your mark registered as soon as possible, but it’s even more important to ensure you have proper rights in the trademark. If someone else is using the same mark or something very similar for related goods or services, you could be sued for trademark infringement. This would be bad. A trademark attorney can provide guidance on proper use of your trademark to avoid liabilities down the road.

So there you have it, the Top 5 reasons to hire a trademark attorney when registering your trademark. If you have any questions about the trademark registration process or trademark law in general, the trademark attorneys at Flat Fee Trademark are available to answer. Please give us a call at (800) 769-7790. We offer free consultations and we’re always happy to hear from you.