What if someone counterfeits my trademark?

If someone counterfeits marks, that is knowingly using an identical mark, there may be:

(a) criminal penalties,

(b) seizure of the goods,

(3) pre-judgment interest,

(4) treble damages.

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How are damages calculated?

If your trademark has been infringed, you may sue to recover:

(1) Actual damages, including lost profits, and injury to reputation. (While the Court has the discretion to double or triple this award if it deems it appropriate in the interests of justice, such awards are not frequently made.) or;

(2) Defendant’s profits (plaintiff need only prove defendant’s gross sales, which will be awarded in their entirety unless defendant proves deductions for costs),

(3) Attorney’s fees, plus

(4) Post-Judgment Interest

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If I can’t copy the name, might I imitate the ‘look and feel’?

The trademark laws may protect distinctive elements of design, decorative or non-functional aspects of a business under the concept of “trade dress”. The United States Supreme Court has dealt with this issue on several occasions. Protection is indeed available but the protectable trade dress must be “nonfunctional” and must have achieved “secondary meaning.” These concepts are often difficult to apply, which is why advice from a trademark lawyer on the particular facts you have in mind is so important.

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What about foreign applications?

If you expect your product to have international legs, you need to discuss this with a trademark attorney immediately, ideally BEFORE your suppliers and sales force and agencies know about it. No matter how deeply they are sworn to secrecy the word may leak. The danger is that competitors may file for your marks to prevent you from marketing abroad AND in the U.S.

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How do you save money and avoid problems long term?

By not being penny wise and pound foolish. Trademark law is clearly an area where it pays to spend the money and do it right the first time. Move fast! Get the search and filing done on an expedited basis, particularly if you feel the name has “magic” to it. Your competitors have similar ideas and they may be moving faster. Have a backup mark ready.

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Do you really have to search?

Yes. Increasingly the case law is indicating that failure to “adequately search” will leave the “innocent” infringer liable to pay over profits and perhaps even pay punitive damages and attorney’s fees.

Searches cannot be definitive, because there may be small users that are not turned up by the usual search methods. Also the U.S. Trademark Office is behind as a bureaucratic matter in processing new applications, so that there is always a gap between the time the application is filed and the time it first reaches a database where it will turn up in a search (6-10 weeks or more). (In order to provide improved service to trademark applicants, registrants, and the general public, the Patent and Trademark Office has implemented a pilot program called the “Trademark Assistance Center.”)

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How to search a trademark?

You can try to search for a trademark on your own to see if any obvious problem pops up as a first step, but if you expect your business or product to become major, and the name will be important to you, you’ll want to retain an experienced trademark lawyer to do it the right way.

If you wish to proceed on your own, the sources you should check include:

(1) Lexis, Dialog or other computer services which provide on-line searching

(2) The Federal Trademark Register, a book, published yearly, which lists all federally registered trademarks (as of the book’s publication date – which means the information is rather stale). Such a search will not pick up the second word of combination marks, nor common law marks. Computer searches are more up-to-date and useful

(3) All telephone books in your area and in major cities. Using a CD-ROM of business names is more up to date and comprehensive

(4) Trade journals from your industry

(5) Trade Associations, which sometimes maintain lists of trademarks in their industry. For example, Pharmaceutical Manufacturers Assn., Tobacco Merchants Assn.

(6) State and local assumed name certificates and doing business as filings.

(7) Corporate registers in your state and the other 49 states. Please note partnerships, LLPs, LLCs may be listed on separate registers and a corporate name search may not turn up all company names which are registered.

(8) Do a full search using a professional search organizations and an experienced trademark attorney. Such an attorney or organization will search for Federal register and trade journals, telephone books and other “common law” sources. You should also consider searching state trademark registrations and corporate names on the records of each of the fifty states. An experienced trademark attorney is necessary to give you a reliable opinion on just how strong an obstacle may be. There are many ways around an obstacle, and whether or not you can beat a mark which is close, requires an experienced opinion.

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Can you register a trademark that shows up in the USPTO database as “cancelled”?

Yes.

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What does the government charge for trademark registration filings?

Effective as of February 1, 2007, the filing fees are as follows:

(1) Application for Trademark (Servicemark) Registration, per class: $325.

(2) Extension for filing Statement of Use, per class: $150.

(3) Application for renewal, per class: $400.

(4) Petition for cancellation, per class: $300.

(5) Notice of opposition, per class: $300.

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What is the procedure for registration in the U.S.?

Application for trademark registration occurs before an administrative tribunal. The Trademark Office examines your application and permits it to go forward or denies it. If you lose your arguments for registration, you may then appeal that adverse decision to the Trademark Trial & Appeal Board. After you clear the examination hurdle your mark is published in the Official Gazette for Opposition. Third parties may then engage in a trial like proceeding (an Opposition) to prevent the registration of a mark.

However, these are all “administrative” proceedings which affect only registration and not use in the market place. You must go into Federal Court to get an injunction to stop an infringer’s use. Victory in the Trademark Office does not accomplish this.

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