The question posed by the title of this post is a little facetious, since the federal Patent and Trademark Office (PTO) has an excellent online filing system that has simplified the mechanics of filing trademark applications via the Internet. So theoretically, anyone can file a trademark application with the PTO. But just because any person or business can file a trademark application online does not mean they should file their own trademark application.
On the contrary, the legal issues that underlie an application for a federal trademark registration can be quite complicated and can require a detailed knowledge of trademark law and procedure. So, before you decide that filing a trademark application simply is a matter of filling in a few blanks in the PTO’s online system, see if you understand and can address the following issues:
1. The PTO’s online trademark application process provides for the filing of a TEAS application or a TEAS-Plus application (which is $50 cheaper than the regular TEAS application). Do you know what these forms mean and what you need to do to qualify for use of the TEAS-Plus form? Do you know what rights you may give up if you use the TEAS-Plus form instead of the TEAS form?
2. You have to specify what kind of mark you are applying for – a standard character mark or a special form mark? Do you know which type of trademark you have? Do you know why it might be preferable to file for one form of mark or another?
3. The design or logo you are using as a trademark is in color. Do you know whether you must file for registration of a color mark and, if yes, how to do it. Do you know when and why it might be preferable to seek registration for a black & white mark instead of a color mark?
4. The trademark laws allow for registration on an “actual use” basis or an “intent to use” basis? Do you know the difference between the two? Do you know what kind of use is required to file an “actual use” application? Do you know what the date of first use means/is?
5. You must provide a specimen of use in connection with filing an actual use application. Do you know what kind of specimen you must submit? Do you know what to do if the PTO rejects your specimen?
6. Trademarks are registered according to “International Class.” Do you know what this means? Do you know how to figure out what International Class covers your trademark. Do you know what to do if the goods or services sold using your trademark fall into different classes? What if you started using the trademark with different goods or services on different dates?
The foregoing is just a short list of some of the issues that have to be addressed in filing a federal trademark application – and this list doesn’t even touch on what happens when the PTO sends a written communication (called an “office action”) that identifies possible problems with your applications.
To paraphrase a well-known saying, if you think filing a trademark application is easy and is something you can do yourself, then you don’t know what you don’t know. The bottom line is that trademarks are too valuable for a person or business to screw up the application in order to save a few hundred dollars by trying to do it themselves. We accordingly highly recommend you consult with an experienced trademark professional if you have a trademark for which you want to pursue registration.
Hayley Peterson recently wrote an article for Business Insider telling the tale of some interns who worked for Taco Bell in the 1990s and claimed they came up with the idea for the now wildly-successful Doritos Locos Tacos. Hayley’s article can be found here: http://finance.yahoo.com/news/former-taco-bell-interns-claim-145114531.html
Hayley’s article provides a good real-life context for issues that come up all the time in intellectual property law – who, if anyone, owns the rights to an idea and can someone sue if someone else steals their idea? Fortunately for Taco Bell, it made sure that its interns (and presumably all employees) signed a written agreement giving Taco Bell the rights to the ideas developed by its employees. As one intern candidly admitted, “I’m sure I signed away that anything I pitched to them was their property anyway . . . I would just like someone to recognize that it was a good idea.”
The saga of the interns who supposedly came up with the idea for Doritos Locos Tacos emphasizes what we always advise our clients: it is absolutely essential that all business that are in the “idea business” and/or deal with intellectual property have written agreements in place concerning intellectual property and use of ideas.
We recently came across a very informative article by Anna Sabia on the BDCWire website explaining in a clear and entertaining way how You Tube works and applies copyright policies. The article can be found at this link: http://bdcwire.com/4-steps-to-understand-youtube-copyright-from-the-office-time-machine-creator/
As explained by Ms. Sabia, here’s how You Tube works and deals with copyright issues:
1. The user uploads video content to You Tube.
2. YouTube scans all uploaded content with a content I.D. system to see if it contains any registered copyrighted material. That could be a song, movie clip, logo, or any of the other millions upon millions of registered items. If the system detects any matches, the copyright holder will receive an alert, letting them know the uploaded content may infringe their copyright.
3. Once alerted, the copyright holder has a choice: They can either leave the video up—sometimes choosing to place ads on it—or issue a takedown notice, at which point the video will become one of the many dead links on YouTube. Millions of takedown notices are issued to YouTube every week.
4. If your video is taken down, you can appeal the decision. The copyright holder then has a 30-day window to decide whether they want to press charges for copyright infringement or allow the video to go back up.
As Ms. Sabia explains, in theory, the You Tube process seems fair enough. It protects copyright holders from having their work reused illegally, and that’s great because that’s exactly what copyright laws are designed to do. But this system also inherently assumes that everything uploaded to YouTube that contains copyrighted material is using that material illegally. In fact, there are legal ways YouTubers can use copyrighted items.
The Copyright Office announced on March 24, 2014 that, for the first time in nearly five years, it will adopt a new fee schedule for registration, recordation, special handling, licensing and Freedom of Information Act (FOIA) services. All fee increases will take effect on May 1, 2014.
The major changes to the fee schedule include an increase in online copyright application filing fees from $35 to $55. With the revised schedule, the Copyright Office also created a new online application form to streamline registration of single works created by single authors that are not classified as works made for hire. This new online application has a lower filing fee of $35. To encourage copyright owners to apply online, the fees for filing paper applications will increase from $65 to $85. Renewal fees for works created prior to 1978 have decreased from $115 to $100 and renewal addendums have decreased from $220 to $100 to encourage copyright owners to continue to renew registrations.
The entire new fee schedule can be found on the Copyright Office’s website, located at http://www.copyright.gov/.
Highly recommend this recent posting by Susan Gunelius in the March 28, 2014 edition of Forbes discussing some case studies of how brands protect their trademarks from trademark misuse. The posting can be found here: http://www.forbes.com/sites/work-in-progress/2014/03/28/how-brands-protect-their-reputations-by-combatting-trademark-misuse/
As Susan correctly notes, t only hurt the company that owns the brand and its intellectual property assets, it also hurts consumers. But the good news is that, while trademark misuse is still rampant today, brands have a much better chance of catching violations and stopping them before they do any harm because of the modern technology at their disposal.
Susan makes the interesting argument that trademark misuse is not only a marketing and legal concern but also an ethical problem because in today’s world companies are accountable for protecting not only profits but also the planet and people (i.e., employees, consumers, and the communities where they do business). Consequently, responding to trademark misuse rises to a new level of importance for companies.
Very interesting and thought provoking . . . .
We recently read an excellent article by Steve Olenski in the March 28, 2014 edition of Forbes magazine discussing the six rules that brand owners need to follow for their trademarks. We highly recommend Steve’s article, which can be found at this link: http://www.forbes.com/sites/steveolenski/2014/03/28/6-things-your-brand-needs-to-know-about-trademarks/
As reflected in our prior posts in this blog, Steve’s posts are right on the money. We cannot emphasize that these are the six things that brand owners — and really anyone involved with trademarks — MUST DO:
1. Work with an attorney.
2. Run a trademark search before adopting a trademark.
3. Don’t waste money on weak trademarks.
4. Always use a marking notice with your trademarks.
5. Investigate infringement before sending a cease & desist letter.
6. Keep future expansion possibilities for your trademark in mind.