I’m applying for a TM now. In the meantime, what, if any, symbol can I use in my marketing material BEFORE the TM is issued?

~ san diego, ca

By convention, you can use the ™ symbol, or a superscripted TM. The (r) and ® (pronounced circle r) can only be used after registration is complete. Please consider carefully reading the following article, or have your marketing material reviewed by an attorney.

How to use the ™ symbol

With many trademarks selected by small business, they tend to be somewhat descriptive (rather than suggestive) so proper marking can be essential to place competitors on notice of your claim to trademark rights.

Good luck with your trademark application.

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What symbol can I use BEFORE the trademark is issued? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I have used a surname since I was 10 years old. I am now pursuing a music career under that last name. The name is trademarked. Because of this can I not use the name?

~ Texas

This is a good question. It depends. For example, what is sold with the trademark, and for how long? Are you 14 or 50, and how long have you played professional? Likely, you will need an attorney to help you answer the question. The attorney will need to know more. For instance:

1. How old are you now?
2. Why did your name change?
3. When did you first start playing professionally, what name were you using then?
4. When was the trademark registered, and, what is the trademark registrations goods and services?

From these questions, likely, the attorney would ask even more questions. Once the attorney understood your situation, the attorney would compare your situation to not just the law, but also, the cases that have been decided interpreting that law. From there, the lawyer could give you advice on what to do next.

Let’s make some assumptions to see how this would work. Let’s pretend that you are 13 years old, you changed your last name (with your parent’s consent?) to match your favorite rock star’s last name, and let’s say that the trademark belongs to the rock star for live musical entertainment. While you might have some right to change your name, these facts would suggest that trademark infringement is likely.

On the other hand, let’s assume these facts. Let’s pretend that you are 55 years old and have been playing professionally for 40 years. Then, let’s pretend the trademark is for a tax accounting firm, which happens to be the last name of one of the partners, and that the tax accounting firm was formed and the trademark filed 3 years ago. In this case, it would be likely that no trademark infringement would occur.

Of course, in real life, questions are not this easy. Here are two cases that show how trademark decisions are sometimes made when they involve the last name of famous celebrities.

First is a case involves Gene Simmons (of rock and roll fame: KISS). In this case, the trademark application was for SIMMONS COMICS GROUP, who was selling comic books. The trademark registration was refused, not because Gene Simmons was famous, but, because the trademark was descriptive.

The second case involves Twiggy, a famous international model from the 1960s. In this case, the TTAB cancelled a registration for TWIGGY, which was used to sell clothing and apparel. The TTAB reasoned that the international model still had enough fame that purchasers would assume that the the clothing was connected with her, and, that this would create a false connection under section 2(a).

Finally, this last case also talks a bit about the last name Miller when used with restaurant services when compared to the famous MILLER brand of beer. In Re Twenty Three East Adams Street Corp .

So, how to apply any of this information to your specific situation is how a lawyer might help you with your decision to use your last name in your music career.

Good luck in your music career!

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Can I use my last name in my music career if it’s trademarked? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Can I use a trademark for a writing business?

I am starting my own business here in Wisconsin hopefully expanding nationally as well. I would be grant writing for non-profit organizations by contracting out my services. As I pick out my business name is there a trademark I can use to make it pop out.

~ Wisconsin

Yes. Trademarks can be used for for services (like grant writing for others). For example, this entry is in the Trademark identification manual

Class 35 Writing of grant proposals for non-profit organizations, educational institutions and other community organizations

via http://tess2.uspto.gov/netacgi/nph-brs?sect2=THESOFF&sect3=PLURON&pg1=ALL&s1=grant+&l=MAX&sect1=IDMLICON&sect4=HITOFF&op1=AND&d=TIDM&p=1&u=%2Fnetahtml%2Ftidm.html&r=0&f=S

However, please know, the drafting of the goods and services description creates the legal boundaries for your trademark: too narrow, and you may not have the protection you desire; too broad, and your trademark may be challenged later in court.

If you need help picking the name to make it pop, try a branding expert, not a trademark attorney.

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Is it necessary to hire an attorney to submit a TM registration application or is it something a lay person could do?

We’re a startup and just released our first product. We want to protect our logo (both design and words) but our budget is very small. I’ve done some research and taken a look at the application form. There are some areas that will require some heavy thought…but it doesn’t seem too difficult. Am I correct in assuming that I can take this on myself?

~ California

No. You are not required to hire an attorney. Here is a quote from the US Trademark Office website:

Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.

via http://www.uspto.gov/trademarks/basics/private_attorney.jsp

There is also the Trademark Assistance Center at the US Trademark Office. This is a phone number and email address that you can use to talk to the US Trademark Office. They provide (technical) information about the Trademark Registration Process. They can be reached at please e-mail TrademarkAssistanceCenter@uspto.gov, or telephone 1-800-786-9199.

Finally, a trademark attorney will help you with your trademark beyond the US Registration. For example, if a client has retained me to register the mark, then, the first step of enforcement of the trademark rights is simpler, because I already have the required documentation. For example, some states have additional beneficial trademark laws. Arizona allows for statutory damages in trademark disputes. A trademark attorney would be aware of these other rights and responsibilities.

Good luck with your trademark registration.

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Are you required to hire a trademark attorney to submit a TM registration application? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Do we change our band name or fight trademark holder?

I’m part of a rock band that was created in 2003 in New Orlando. In 2004 a guy sent harassing emails to us that he has claim to the band name. By this time we had our second album released. He would send death threats to the band, fans and establishments that we played. We filed police and FBI reports on him in the state of Arkansa. After our 3rd album, we discovered that he trademarked the name in 2007. My band and it’s releases are recognized by Billboard, AllMusicGuide, ArtistDirect and other reputable music catalogs. Our opposer has recently gone to jail for harassment and he also has no recognition or product attached to the trademark. We have our fourth album being finished. Do we change our name or fight his claim to the name?

~ Louisiana

Hi Louisiana,

Wow. Success brings copycats and people who desire to trade on your name. Options here include:

1. a TTAB trademark cancellation proceeding
2. a lawsuit to address the variety of issues
3. ignoring his trademark
4. changing your name

Which action to take will depend on doing the appropriate research into the facts that you know, the facts you can prove, and a review of the trademark record at the US trademark office. In the end, given the very personal nature of “death threats”, I think you need to consult with an attorney and do a little soul searching about what is best. Think not just about your legal rights, but the real threat this guy poses.

On one hand, you do not want to hurt your ability to make a living, on the other hand, you do not want to stop living. Perhaps you should also consider a security guard when he gets out of jail?

Good luck!

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Do we change our band name or fight trademark holder? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Swiss® Made Chocolate – is the whole sentence trademarked?

On Lindt chocolate is seen the text “Swiss(R) made Chocolate”. Now how can “Swiss” be a registered trademark? Or is the whole sentence “Swiss made chocolate” trademarked? And / Or the general question: in a multi-word trademark, where is the (R) put? Just a curious question from an inquisitive chocolate lover.

~ Sweden

Hi Sweden,

The best way to figure out what is claimed as a trademark is to review the public legal documents. Here is how you might find them.

To start, the (R) stands for ® (pronounced, “circle R” ). In the US, the use of the ® is only permitted after registration with the US Trademark Office. So, if we search the US Trademark Office database, we will likely find the registration. The name of the US Trademark Office database is TESS. http://www.uspto.gov/trademarks/index.jsp Here is an appropriate search string for the advanced search:

swiss[bi] and chocolate[gs]

A review of the returned records finds several of interest. Here is just one of many trademarks on SWISS for chocolate:

Registration Number: 1570455 Mark (words only): SWISS Description: CHOCOLATE AND PRODUCTS MADE FROM CHOCOLATE, NAMELY CHOCOLATES WITH OR WITHOUT ADDITION OF FILLINGS OR FLAVORING INGREDIENTS SUCH AS FRUIT, NUTS, CEREALS, NOUGAT, ALCOHOLIC BEVERAGES AND THE LIKE; CHOCOLATE BARS; BISCUITS, WAFERS AND CANDIES CONTAINING CHOCOLATE; CHOCOLATE COUVERTURE AND COATING CHOCOLATE First Use Date: 1945-00-00

via http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=73741210

Have fun with your new trademark searching skills.

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Didn’t get our pending trademark and now the company that did stole the words off of our site verbatim!

So we had filed our trademark and received a notice that we needed to change the name because it was too close to a trademark that was pending. We changed the name slightly and re-filed. We were told that if the first trademark that was pending were to fall through, we would get ours.

Unfortunately -the first did not fall through. But after our site was up and running, they took all of our information on our site (literally word for word) and started their site. They have slightly different products (but the same “idea”) and took VERBATIM what it says on our site.

Now they have the trademark – but our site is far more popular and successful. Furthermore, they took the information right off of our site! How can we protect ourselves?

~ New York

Hi New York,

I am going to make some assumptions. First, I assume that you are applying for a US Federal Trademark Registration (and not a state registration). The US Trademark Office does not send notices that names need to change. The US Trademark Office will refuse registration based on likelihood of confusion, however, similarity is just one part of that analysis. Refusal of registration is not the same as an order to change a name — the US Trademark Office does not have that power, only a court of general jurisdiction would have that power.

The next assumption is that you are not using a lawyer. You said, that you “changed the name slightly” and re-filed. If a trademark is refused for “likelihood of confusion” than a slight change would not be likely to change the analysis. So, it is not clear why you “changed the mark slightly and refiled.” Did someone tell you that a slight change would overcome the refusal?

To be fair, it seems that you do not understand even the basic principal of trademark law: Trademarks prevent customers from becoming confused about who is providing them with stuff (where the stuff can even be information from a website).

So, given these assumptions, I am going to further assume that you want to continue to represent yourself. You need to visit your local law library. You need to read about at least the following:

1. trademark likelihood of confusion
2. trademark common law rights
3. trademark priority contests
4. copyright benefits of federal registration
5. copyright DMCA act
6. copyright elements of infringement

There are likely also other areas related to unfair competition or intellectual property that will also apply to your situation. The law librarian will likely be very helpful for identifying a legal treatise that will help you understand these issues. It will be unlikely that you will be able to learn enough about these issues from an online legal source to represent yourself effectively.

Finally, I would be remiss if I did not recommend that you talk to a lawyer.

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My competitor obtained my trademark and verbatim stole words from my website. What do I do? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer