Tag Archives: trademark registration

Expand Your Brand


TM So you want to apply for a federal trademark to protect your brand. How does it work?  Does it cover all use of the brand?  These are a sampling of the questions I receive from entrepreneur’s and business owners looking to protect their brands.  Securing a federal trademark is a complicated but worthwhile process.  The Intellectual Property attorneys at Assouline & Berlowe take the time to explain the process to the brand owner so they understand what to expect and how to maximize their protection.

When applying for a federal trademark, you must pick the class of goods/services that your brand covers based on your existing use, or expected use, of the brand in commerce. For example, you own and operate a retail space where apparel is sold and you want to protect the brand name of the retail space (the name of the store).  You may want to seek protection in a services based trademark class for the bran associated with the retail space.  If the apparel sold at the retail space, the products, use the same brand, you may want to seek protection in a second product based class for the applicable apparel.  You can seek federal trademark protection in multiple classes of goods/services in the same application.  Generally, the scope of your federal protection is limited to the class of good/services in your federal trademark registration. Common law rights are handled differently.

In a recently released opinion, the Eleventh Circuit Court of Appeals held that a federal trademark registrant’s services based brand had extended protection related to goods. Savannah College of Art & Design, Inc. v Sportswear, Inc., 2017 U.S. App. LEXIS 19168 (11th Cir. Oct. 3, 2017).  The Court relied on a prior trademark case that extended protection of federally registered service marks to goods, despite little rational as to the basis for the expansion.  The Sportswear case stated that a federal registered service mark does not have to register that mark for goods to “establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing of that mark on goods.” Id. at *15.  The registrant still needs to show the alleged infringer’s use of its brand is creating consumer confusion as to the source or origin of the brand. Notably, the Court did not discuss the “natural zone of expansion” doctrine, which can be used be extend a trademark owner’s rights into a new product line that is a natural expansion of their prior use.

While the Sportswear case helps trademark owners for services assert their rights for related goods, the optimal method of protection is registering the brand in the class from the outset.  As a trademark applicant, you can seek registration based on your actual use of the brand in a services field, while also applying for the same brand in a goods classes based upon your bona intent to use the brand in business in the future.  A well thought out branding strategy may include preserving your rights in a field that you plan to expand into.  While the trademark cannot register until you begin use of the brand in the applicable class, you can effectively preserve your place in line for up to three years (extending use in 6 month intervals) while you are preparing to use the brand in commerce.  Utilizing a trademark attorney helps you develop a branding strategy to maximize your protection now and for the future.  Don’t forget, a trademark is an asset and can have immense value. Just ask Apple and Google, whose brands are estimated to be worth $170B and $101B by Forbes, respectively.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.  Follow him on Twitter @InventionAtty.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation


213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com


LinkedIn  ||  Twitter

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Leave a comment

Filed under Business Litigation, Intellectual Property, IP Litigation, trademark

On your tradeMARK get SET GONE!

Miami Litigation Law Firm Sign - Assouline   Berlowe (00104683)

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.


With offices in Miami, Ft. Lauderdale, and Boca Raton



Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law

Miami · Ft. Lauderdale · Boca Raton

Super Lawyers
Eric N. Assouline
Business Litigation

Leave a comment

Filed under Business Litigation, Intellectual Property, IP Litigation