Trademarks, you can’t live with them, without protecting them. Imagine how much money has been invested in developing the most popular trademarks like Coca Cola or Apple. Millions and millions of dollars.
Recently, Intellectual Property Law Partner Peter Koziol and I met with a client who was operating a business with a catchy trademark, but there were a few issues. First, it was not registered yet. Ok, no problem, it can be registered, right? Well, maybe, it depends. More about that later.
Second, the mark is not really very creative, it is a little “descriptive” of the goods it sells. So, is that a problem? Yes, it can be. If it is descriptive it will have a harder time being registered with the United States Patent & Trademark Office. It will also have less protection in the courts. In the spectrum of what will get the most protection, to the least, a mark that does not suggest the good being sold, like Starbucks and coffee, will be given more protection than Fresh Bananas at a supermarket. One mark is a unique name that has no connection to any coffee product and the other is just a description of what is being sold.
Third, there are other names out there that are similar and are registered. Are they exactly the same, no. But the issue is not whether they are exactly the same. The issue is whether the newer mark is “likely to cause confusion” in the market place.
Fourth, the other marks that are registered predate the client’s first use of their mark. Great. Now what? Well, the fact that a similar mark exists and has been in use before the client’s mark is not a good thing. As a result, the first used mark has priority over the client’s mark. The mark with priority can stop the later used mark through a court injunction.
There are a few questions that should be asked to determine if that is the end of the story. Is the prior used mark still being used? A place to start is to do a Google search and see if the mark is currently being used. In this case, it looked like there were no hits on Google that showed that the business was still using the mark. That may be a good sign. But it is not the end of the story. There is no guaranty that if you use your mark, that it will end up in a Google search.
Another option is to inquire with counsel listed on the registration with the USPTO who registered the prior mark to see if the mark is still being used. If the attorney advises that the business failed and the mark is not being used anymore, that is great. But this strategy is a little dangerous because the attorney may notify their client that someone was poking around as to the mark. If they are still using the mark, they are now alerted to this subsequent potentially infringing mark.
What about if the client’s mark has been used before the date stated by the prior mark. That is a good fact. The client’s mark may be able to obtain some trademark protection in their geographic area. It may even establish a basis to try to cancel the registered mark. But this is an uphill battle and you will have to marshal the proof to establish this prior use.
Some think this should trigger a cease and desist to the other owner of the other mark. This should be done with caution, especially if the other owner is out of the state. In Jim Croce’s words “you don’t tug on Superman’s cape”, you do not send a cease and desist letter to a foreign state because it may trigger the filing of a declaratory judgment in the foreign state based upon the threat that the other mark is infringing on your client’s mark.
For more information on protecting your trademarks, call Eric N. Assouline, Esq.
ASSOULINE & BERLOWE – The BUSINESS LAW Firm
With offices in Miami, Ft. Lauderdale, and Boca Raton
ERIC N. ASSOULINE, ESQ.
Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law
Miami · Ft. Lauderdale · Boca Raton