Dealing with cease-desist letters (Part One)

Here's another fun hypothetical, trademark fans!*

Let's say you've been doing business for a few years selling scented candles and you own the registered mark "MOOD" for those goods.  You're feeling pretty good - in a pretty good mood - because your candle sales are going well.  Then, one day, IT COMES.  In a certified envelope from the U.S. postal service (and usually nowadays with a copy by email): the CEASE-DESIST LETTER!

You open the letter and read it, and are astonished to learn that a company located in (let's just say) France claims that they have prior rights to the MOOD trademark.  Already, you have the feeling that this letter is going to ruin your day.

Reading further, you learn that the French company "owns registrations for the MOOD mark in the United States and thirty five countries worldwide" and " through such extensive use of the mark has established invaluable good will in the mark" and further that your use of the mark "is likely to cause consumer confusion" and is in violation of various trademark laws.

Finally you get to the part where the writer of the letter, usually an attorney for the French company, demands you cease all use of your mark and otherwise comply with the demands set forth in this letter within ten days, or else they will have no choice but to advise their client to take such legal actions as may be necessary to protect their rights to the MOOD trademark.  

It sounds very bad.  But before you panic, there are a couple of things you want to look at.  First, do they mention in the letter what sort of products or services the French company sells under its MOOD mark?  If not, and the mark is not famous like Coca-Cola or McDonald's, this should tweak your antennae.  If they mentioned their trademark registration numbers, go to the USPTO web site and look at their trademark registrations.  Sometimes what you will find may surprise you.  For instance in this hypothetical, suppose you went to the USPTO site and found that the French company did in fact own several registrations for the trademark MOOD, but the goods identified in all of these registrations are specially designed nuts and bolts for use in submarines.  In that case it looks like you can go ahead and make a sandwich and get on with your day.  Because owning MOOD for nuts and bolts used in submarines would not (at least on the planet I live on) give you the right to prevent another entity from selling scented candles under the MOOD mark.  But before you tuck into that sandwich make a note to yourself to call your trademark attorney after lunch to have them review the cease-desist letter, research the claims and respond to the sender.  If their claims are weak or highly questionable, a strong response pointing out the weakness of their claims is usually enough to send them packing. 

Alternately, in the event that the French company owns the MOOD mark for aromatherapy products, which arguably are related goods to scented candles, your TM attorney will be able to advise you how best to proceed to minimize problems.

This is NOT legal advice, of course, and the writings on this blog are provided solely for the amusement of the readers.  Consult your attorney before taking or omitting to take any action (except you may breathe prior to consulting your attorney).





*Actually there are no trademark fans, but I just wanted to say that. There are however, certain types of fans that are sold under registered trademarks.  So that is pretty cool. 

Dealing with USPTO Office Action Letters - confusing extraneous information

So you filed a trademark application without using a lawyer (oops!) and now you've received an "office action" from the USPTO.  At first when you read it, it may sound like a bunch of boiler plate, and that's because it is - at least, a good part of it. 

There are certain bits of prose that seem to find their way into a good many office actions that are probably intended to assist the trademark applicant in formulating a response - but often these pearls from the USPTO can be downright confusing to the uninitiated. 

One of my favorites is when the office action requires an amendment to the identification of goods or services, because the original listing as filed included something that was arguably ambiguous.  The examining attorney will often helpfully include a suggested amended ID of goods/services that would be acceptable to the USPTO, but following that helpful suggestion there is often a bunch of mumbo- jumbo about requirements for adding classes of goods and services, including requirements for specimens and filing bases.  This may be appropriate where the examining attorney's suggested amended ID of goods would necessitate adding classes to the application, but where the suggested amended ID would not lead to the addition of another class of goods, this information cannot be anything but confusing.

The take-away:   Read your office action carefully, and don't let extraneous information boggle your mind.  And of course, your best bet may be to call a TM attorney to prepare and file the response on your behalf.  We spend a good portion of our lives reading these things!

Trademark THIS

As a trademark attorney, you hear a lot of interesting stories.  Some are more interesting than others.   But one thing I constantly hear from people is the word "trademark" used as a verb.  Some examples might be:
"I want to trademark my business name" or "Yes, but my competitor hasn't trademarked it."
When people say this, they invariably are using the word "trademark" as a shorthand way of saying "register the mark."  That's OK.  The problem is that many people are under the misconception that unless the mark has been registered, no rights have been established.  I want to clear up that little misconception right now.
You can own trademark rights in a word, phrase or image -- or even a sound or smell -- that you use to market your goods or services.  If you stamp your skateboards with the made-up word PHRUNG, then you are establishing trademark rights to PHRUNG by selling the skateboards that are so marked.  If you file an application with the USPTO to register PHRUNG for skateboards, you can fortify the rights you have already established by obtaining federal trademark registration. 
Suppose you had been selling your PHRUNG skateboards for a couple of years, mostly though an on-line store, but you had never filed an application to register PHRUNG with the USPTO.  Now suppose your arch-nemesis, who has never sold a skateboard, decided he wanted to own the PHRUNG name for skateboards, and after searching the records of the USPTO he discovers that you have not registered the mark.  Can your arch-nemesis now apply to register PHRUNG for skateboards and pre-empt you from selling PHRUNG skateboards?  NO!
As long as you know about your arch-nemesis' trademark application, you can oppose it on grounds of likelihood of confusion and priority based on your use of the PHRUNG mark on skateboards prior to the date he filed his trademark application.  Assuming you can prove that, it should be enough for his trademark application to be refused. 
Even if your arch-nemesis was able to get PHRUNG registered because you were not paying attention to trademark application filings at the USPTO, his ownership of a federal trademark registration would still be subject to whatever rights you had already established to the PHRUNG mark prior to the time he filed his trademark application.  If, prior to the filing date of your arch-nemesis' trademark application, you were selling PHRUNG skateboards nationwide, except say in Arizona, then your arch-nemesis, despite his ownership of a federal registration, would not have grounds to force you to stop using the PHRUNG mark for skateboards anywhere other than Arizona. 
Are we clear on this now?  You get your trademark rights from use.  You enhance your trademark rights by registration.
What about intent-to-use applications, you say?  We will have to save that discussion for another day.

The Navy Responds (SEAL TEAM 6 Trademark Update 1)

In what may be a response to Disney's filing of three applications to register the phrase SEAL TEAM 6, the Navy, on May 23rd, filed its own application for SEAL TEAM as a collective membership mark for indicating membership in an organization of the Department of the Navy that develops and executes military missions involving special operations strategy, doctrine, and tactics. Although Disney filed its applications first, it would appear that in any trademark battle the Navy would have a strong argument that Disney's use of the SEAL TEAM 6 mark would cause consumers to mistakenly assume there is a connection between Disney and the Navy, or that the Navy has licensed use of the mark to Disney or otherwise is sponsoring Disney's use of the mark. Thus, I think if push comes to shove, the Navy will come out on top.

It is interesting to note that Disney is not the only one interested in claiming trademark rights to the SEAL TEAM 6 name. M. Z. Berger & Co., Inc. of New York filed an application on May 16th for the phrase SEAL TEAM 6 for "Clocks; Jewelry; Watches;" also on May 16th, RESCO Instruments of Coronado CA filed an application to register the term SEAL TEAM 6 for "Chronographs as watches, Dials for clock-and-watch-making, Straps for wristwatches, Watch bands, Watch cases, Watch straps, Watches, Wristwatches;" on May 20th Justice is Done, LLC of Carson City, NV filed an application to register SEAL TEAM 6 for "commemorative coins; key rings of precious metals; cufflinks; jewelry; wall plaques made of precious metal;" and John Brokaw of Richmond, CA filed an application to register SEAL TEAM RAIDER 6 for "Action figure toys" on May 17th.

People should understand that there may be trademark liability consequences stemming from using a trademark that uniquely identifies another person or institution. Does SEAL TEAM 6 uniquely identify an organization within the U.S. Navy? How would you decide?

Looming battle for SEAL TEAM 6 trademark ahead?

After a national tragedy, years of dogged intelligence gathering and a heroic mission by the Navy seals, some people apparently just want to make a buck out of the story of Osama’s Bin Laden’s demise. It should not come as a surprise that five new trademark applications for TEAM 6 or SEAL TEAM 6 have been filed since news broke of the President’s gutsy call and the successful and daring raid on Osama bin Laden’s compound in Abbottabad. I knew as soon as the news broke that some folks must already be planning the motion picture.

On May 3rd, three applications to register SEAL TEAM 6 were filed by Disney Enterprises, Inc. of Burbank, California. These applications cover clothing, footwear and headwear; toys, games and playthings; gymnastic and sporting articles (except clothing); hand-held units for playing electronic games other than those adapted for use with an external display screen or monitor; Christmas stockings; Christmas tree ornaments and decorations; snow globes; and entertainment and education services. I don’t know about you, but I sure would love a SEAL TEAM 6 Christmas stocking chock full of toys, games and playthings - and what could be nicer or more festive than SEAL TEAM 6 Christmas tree ornaments and decorations – to bring out the peaceful and joyous good-will-toward-man feeling of the holiday? A tree decorated with SEAL TEAM SIX ornaments would go very nicely while listening to Haydn’s Messiah or the Nutcracker. I think Disney is going to have a really big success with this.

But there is competition. On May 6th, The Outdoor Recreation Group, of Los Angeles, California, filed an application to register the mark TEAM 6 for backpacks, duffle bags, gun cases, shooting accessories, cases; and clothing, namely, jackets, pants and shirts. Do you think Disney might oppose the Outdoor Recreation Group’s application on the basis of priority and likelihood of confusion? It seems that Disney might win in an opposition against Outdoor’s application so far as the clothing goes, but Outdoor might prevail when it comes to the gun cases and shooting accessories – I don’t know that there is a strong related goods argument here – although maybe Disney wins because its application covers “sporting articles.” But anyway, some holiday season soon, you might – if you’re very lucky, find yourself seated near your tree decorated tastefully with Disney Enterprises SEAL TEAM 6 ornaments, opening a Disney SEAL TEAM 6 stocking stuffed with Outdoor Recreation Group’s TEAM 6 brand shooting accessories! This is perhaps too much to hope for, but still one can dream.

But wait – there’s more! On May 10th , MetroGames US, Inc. (A Delaware corporation with an address in Mountain View, California) filed an application to register TEAM 6 for Entertainment services, namely, providing on-line computer games. Disney has applied to register SEAL TEAM 6 for, among other things, games. It is possible that Disney may oppose MetroGames’ application, arguing that TEAM 6 for on line computer games is likely to cause consumer confusion with Disney’s use of SEAL TEAM 6 for games. But personally, I hope not. The more, the merrier. After all, what could be better after finding the TEAM 6 shooting accessories in the SEAL TEAM 6 stocking than going online to play some TEAM 6 computer games. I wonder what’s next – will a fast food chain introduce the SEAL TEAM 6 BURGER? Or better yet – a national sandwich chain might jump on the bandwagon and introduce the SEAL TEAM 6 Hero. I have to wonder how the actual SEALs – or for that matter the Navy - will feel about Disney owning the SEAL TEAM 6 trademark. Could be some interesting trademark battles ahead.

Proceed with Caution

Read my article "Proceed with Caution" about trademark enforcement strategy, published in the May issue of Intellectual Property Magazine. A copy of the article is accessible on my web site at www.tmwlaw.com.

Winds of Change in U.S. Patent Law

Read my article about changes in U.S. patent law in the March 2011 issue of Intellectual Property Magazine - you can find it on my my website at www.tmwlaw.com.