If my company does some business in the US, but is located in Canada, can we secure a US trademark for out company name? (already have the Canadian one)

~ Victoria, BC, Canada

Yes. Foreign companies may apply for US trademarks. When doing so, you will want to designate a domestic representative in the US. The domestic representative is the agent that can accept notice for any legal proceedings involving the rights.

Alternately, if you do business in many countries, you may wish to file in the US using the Madrid protocol. Canada does not participate in this particular treaty, but, there can be advantages to filing for a European Community trademark and then using this trademark as the basis for a madrid protocol application in the US.

Finally, if your Canadian application was filed less than side months ago, your US trademark application may be able to claim priority to the Canadian trademark application (and receive the benefit of the earlier filing date).

Good luck with your international trademark applications.

Can a Canadian company recieve a US trademark? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

**Why to some large companies use tm instead of ® ? **

For example, Skype uses ™ instead of ®.

~ London

This is the point of my website: how small companies use intellectual property differs from large companies. Skype (a large company) has to comply with the laws of many nations, small business generally operate in a single country and need only comply with that single country’s laws. More importantly, this website is about United States laws.

Large Companies

Large companies may be directing their advertising to purchasers in several nations. Large companies frequently have a presence (offices, equipment, employees) in several nations. Your example, Skype, is clearly one of those companies. So, Skype must comply with the trademark laws of all of those nations. Those laws are likely different; the status of their trademark registrations in each of those nations may be different. As a result, the use of the ™ symbol may be more convenient and consistent for them.

Small Companies

Small companies generally sell (most) of their goods in their home country. They usually have a single (or maybe a couple related) trademarks. They are usually only worried about their home country’s law (they are rarely present in foreign countries, except on vacation/holiday). So, they they can more readily use the ® symbol.

This website

Of course, I am a US attorney, and, I write about US law. If you are in London, England (rather than London, Ohio, or London, Kentucky), then your rules (while similar) are different. It is worthwhile to have a solicitor (the UK word for “lawyer”) review your trademarks and how you are doing your marking.

Why do some large companies use tm instead of ® ? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

In responding to trademark Office Action, can you make changes to goods and services description?

Applied for a trademark, was declined due to “likelihood of confusion”. Am preparing Response to Office Action and need to know if I can make slight adjustment to the description of the services I will be offering.

~ Oklahoma

A trademark’s goods and services description can be amended to limit or clarify the goods or services. However, an amendment can not be made to broaden the scope of the description.

See the following original sources for additional information:

TMEP 1402.06 Amendments Permitted to Clarify or Limit Identification

It can be wise to consult with the Trademark Examining Attorney prior to amending the trademark goods and services description. The Trademark Examiner may or may not agree that your change is broadening or limiting.

The purpose of the goods and services description is to provide nationwide constructive notice. So, the goods and services description provides an important role in this constructive notice. For more information, please see TMEP 201.02.

Can you change a trademark’s goods and services description? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Can I legally use the TM symbol before I apply for a trademark registration?

Placement and use of the TM symbol

On this page: 1. choosing the correct trademark symbol, 2. placing the tm symbol, 3. understanding the tm symbol and 4. inserting ™ into a document.

Choosing which symbol to use: ™ or ® symbol

There are two symbols commonly used to mark trademarks; they are: ® and ™.

Your business can use the ™ symbol whenever it wishes to claim a trademark. You do not need to file any paperwork or receive permission to use the ™ symbol. Use of the ™ symbol can put the competition on notice that the business considers a mark its trademark.

The ® symbol may ONLY be used AFTER the US Government grants a Federal registration certificate. The ® symbol may not be used while the Federal application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate.

Understanding TM symbol purpose: Notify competitors

Even though a trademark symbol is not required, always use the correct trademark symbol with your trademark. Your competitors will be put on notice of your trademark. Then, they can respect your intellectual property. Likewise, you can prevent your customers from becoming confused by always respecting the trademarks of others, whether they use the ® or ™ symbol.

Placing the ™ or ® symbol

When using your trademark, place it prominently, so people will notice it immediately. When using your trademark within a body of text, use bold, italic, UPPERCASE, or a different font. Make your trademark look different from other, surrounding words. Try to use your trademark as an adjective and not as a noun. For example, “Be hip, show style, wear NIKE^® shoes”.

Either symbol is usually placed to the upper right of the word, logo or other mark. Sometimes companies list the trademarks used in the material along with the owner in the footer of their website or the bottom of a printed page. For example, “Coca-Cola^® and the contour bottle are registered trademarks of The Coca-Cola Company.” Remember, do not claim that your trademark is registered (or use the ® symbol) unless it has actually completed registered with the US Trademark office (www.uspto.gov). Only marks that have been filed, approved and granted the ribbon-original registration certificate by the US Trademark Office may claim to be registered in the US.

However, placement in other nearby or adjacent areas, like sub-scripted, may work well and could look better. The goal is for competitors to see the notification of your trademark claim.

Three ™ or ® placement techniques

There are usually three good ways to notify competitors. They are:

1. Placement of the ™ or ® symbol right near the trademark, every time it is used.
2. Placement of ™ or ® or * (asterisk) or † or (dagger) or ‡ (double dagger) symbol right near the first use of the trademark. Then provide a footnote that describes the trademark.
3. Setting of all trademark words with bold, italic, UPPERCASE, or a different font, so they are clearly different from surround text. Then provide a footnote that describes the trademark.

A footnote description might read like this for federally registered marks, when the most prominent use of the trademark is marked with a dagger.

† NIKE and the swoosh logo are registered trademarks of Nike Inc.

Or a footnote description might read like this for marks not federally registered, and, when the trademark is set off from other words with bold and UPPERCASE.

NIKE and the swoosh logo are trademarks of Nike Inc.

Inserting the ® or ™ symbol into your document

Your word processor has an “insert symbol” function or “Special Character” function in the Edit or Insert menu. These functions let you find all sorts of symbols including the ® or ™ symbol. However, I find copy and paste to be faster. That is, you can copy and paste the symbol right from this webpage into your document.

Why you almost never see the ℠ symbol

The ℠ symbol means “service mark”, which indicates services (rather than goods). However, because the abbreviation SM has another, derogatory meaning, it is rarely used. The ™ symbol works identically, and, should be preferred.

How to use the ® and TM Symbol by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Does the font matter for the ® registered trademark symbol?

~ Evansville, IN

The purpose of the ® (registered trademark symbol) is to provide notice. If the symbol cannot be read, that it is not providing notice. Select a font that allows the registered trademark symbol to be readable and legible. Most fonts include the registered trademark symboll, so you should not need to change fonts for the symbol.

Ultimately, the usage of your trademark on your product packaging should be reviewed by your trademark attorney.

Does the font matter for the ® registered trademark symbol? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

A trademark has all words disclaimed; can I use the disclaimed words in my product name? A company has a supplemental trademark. All of the words in their trademark name are disclaimed. The trademark is descriptive, but not at first glance. Will I be able to use these disclaimed word for my product name within the same trademark category? The product name uses the term WATER and two other separate words added before these disclaimed words?

So, basically, (without giving any names away) there is the registered supplemental trademark with the full trademark name disclaimed. I would like to use the disclaimed words for my product name and add two words in front and attach the word “water” to the disclaimed name. It would look something like this (x being a variable for a word): x x water

I’ve talked to 4 different lawyers (2 from one firm and 2 from another firm) and both firms share opposite opinions. So I am trying to figure out what to do in this case.

~ New York

The lawyers that you talked to have a huge advantage — they know the facts and I do not.

Trademark Legal Research

The situation that you describe is an uncommon (rare) situation. For a trademark lawyer to provide an opinion, it can be helpful to do legal research. This legal research would look for cases that have been similarly decided where the facts are the similar. Some of the facts that would be important to know would be:

1. How does your trademark compare to the non-disclaimed matter in the prior trademark?
2. What are the goods and/or services used in connection with the trademark?
3. Who are the customers?
4. What are the circumstances surrounding the sale?
5. What are the channels of trade?
6. What evidence has been presented in the prior trademarks record?
7. What other evidence is available about the fame or extent of use of the prior trademark?
8. What legal actions have been undertaken to enforce the prior trademark?

Each of these questions leads to more questions. Eventually, your trademark attorney can form a clear picture of the other company’s use of the prior trademark. Using these facts, your trademark lawyer can find similar cases that can help decide whether or how to use your product name. Clearer facts leads to clearer legal research, which leads to clearer legal opinion. Of course, this investigation and legal research might be expensive, and, even if you do legal research, different attorneys can still come to different opinions and conclusions.

Balancing business needs against legal costs: A business approach.

There is a business approach that might help you be cost effective. It is simple really. You just need the answer two questions.

1. If you start using your product name, how much will it cost you to change to a new product name later?
2. How much will the trademark legal research and opinion cost?

Here is how it works. If you apply for a trademark, the Trademark Examiner has to decide whether to allow your application. In other words, the Trademark Examiner will have to do at least some legal research and will need to decide wether to allow your trademark application. The Trademark Examiner’s decision is not binding upon the the prior trademark owner, but, the Trademark Examiner is an attorney that has a good understanding of trademark law. For complex trademark applications, they generally get discussed with managers, who are more senior and seasoned trademark attorneys.

So, if you want to avoid the cost of legal research (for example, because the cost to change the name is low), you can apply (assuming that you otherwise meet the filing requirements). If you receive a trademark rejection, then you will have the option to do your own legal research to try to persuade the trademark examiner. If the Trademark Examiner approves your trademark, the public (including the prior trademark owner) will have 30 days to object to your trademark application. Keep in mind, however, even a granted trademark that uses your product name does not mean that the prior trademark owner cannot complain or bring legal action at a latter time.

On the other hand, if the cost of changing the product name will be high (for example, compared to the cost of doing legal research), you can seek the opinion of one or more trademark attorneys. If you are depending on the trademark attorney’s work, you would be wise to request a written opinion. If different attorneys have different opinions, the written opinions should help you determine who has the more persuasive position.

Good luck with naming your new product.

A trademark has all words disclaimed; can I use the disclaimed words in my product name? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

If someone has a U.S. patent and has no interest for International patent rights, can I patent it in Europe?

~ Minnesota

Probably not. The way you have phrased your questions, I assume that you did not invent the subject matter of the patent. Rather, it sounds like you might have learned about the invention some other way. In most countries (for example, the U.S.), a prerequisite to filing a patent is that the inventor must take an oath. Said another way, the inventor is required to declare (under penalty of perjury) that the inventor conceived the invention. If you have not done this, than you cannot apply for a patent. While the laws of each country vary, you will likely need to provide such an oath in the European Union and member countries.

Even if you did conceive the invention, I am assuming (from your phrasing) that you may not have conceived the invention first. In some countries (and in the US soon — our law is changing due to the American Inventors Act), you must also be the first to file for a patent application. When applying in more than one country, it is usually required to claim priority to the patent application in the foreign country. There are strict deadlines for filing patent applications that claim priority to foreign patent applications.

In this case, I strongly recommend that you contact a patent attorney. Your patent attorney will need to hear your complete story. Likely, they can give you an opinion about patentability based upon who has conceived the invention, your relationship to the inventor of the patent, the dates of patent application, the dates of patent publication and/or patent grants.

Good luck with your patent application.

If someone else has a U.S. patent, but no international patent, can I patent in Europe? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

How can I find a list of patents that a patent attorney wrote?

~ Arizona

Researching your patent attorney’s past work is a good idea. You can find a list of previous patents written by the attorney by searching a patent database. Also, you can email the patent attorney and ask for a list. In some cases, attorneys may not provide a list. Even though the patent documents are public, that does not mean that the patents are easy to find. Some states may consider providing a client’s public documents (without permission from the client) a violation of the attorney’s duty to confidentiality (because the documents are otherwise difficult to find).

Searching Patent Attorney by name and address.

The easiest way to search for patents by attorney name is using Google Patents. Here is an example search:

http://www.google.com/search?tbo=p&tbm=pts&hl=en&q=andrew+lahser&num=10

However, Google Patent is not always as current as the US Patent Office databases. To search the US Patent Office databases you have to perform two queries, one for Patent Publications and one for Utility Patents:

http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch-adv.html&r=0&p=1&f=S&l=50&Query=andrew+and+lahser&d=PG01



http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch-adv.htm&r=0&p=1&f=S&l=50&Query=lrep%2F%28alahser%29&d=PTXT

If the attorney that you are searching about has a name that is not unique (like Smith or Jones), then you can include a portion of the attorney’s street address or city name in the search. However, mailing address can change over time, of course.

What if I do not find anything

If you do not find very much or anything at all, that does not mean that the attorney did not write any patents. It means that the attorney’s name was not included on the published patent or patent grant. The patent attorney names listed on the patent are the patent attorneys of record when the patent if finally granted, which is not always the same as the patent attorney the wrote the application.

For example, some law firms prefer to put the names of only senior attorneys on the patents (rather than the junior attorneys that did the actual writing). Sometimes, a patent attorney’s name will appear on a patent, but the patent attorney did not write the patent, for example, they patent attorney could have taken over from another attorney or from an inventor the filed pro se.

Finally, many small businesses will choose to keep their patent applications secret until the patent is granted. A secret patent application is not required to be published until the patent is actually granted. So, many of these patents will never be available to the public.

Good luck researching your patent attorney.

How do I list the patents written by a patent attorney? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Is Copyright enough or do I need a Trademark?

I am starting a genealogical research and publishing company. I will heavily emphasis publishing initially. I heard that I have copyright automatically on my ebooks/website. I can take the extra step of registering for official copyright on these e-books. However, I am conceded because digital works are easy to copy and easy to steal. I am considering using company logo as a watermark on the pages of ebooks, to make it easier to spot online. Do I need to take the extra step of trademarking my name/logo.

~ New York

Hi,

Copyrights and Trademarks do very different things. Copyrights protect the effort and creativity that is used to produce a work. Anyone who is willing to work independently can produce another work with the same ideas. In other words, copyrights protect your effort and creativity, not your ideas.

Trademarks, while usually owned by business, actually protect the consumer. The trademark prevents the consumer from becoming confused about who is providing them with stuff, like genealogical research services or books providing genealogical information. In other words, trademarks protect your relationship with your customer.

It sounds like both trademarks and copyrights could be important to your new business. For example, while you do have an automatic copyright, usually the costs of a copyright lawsuit are significantly higher if you have not registered with the US Copyright prior to the infringing acts. If your industry is prone to digital theft or counterfeiting, a trademark can be very useful, because websites that operate using your domain name may be prone to action under the UDRP (Uniform Dispute Resolution Process). And this list could continue for some time…

Since your business (publishing and genealogical research) relies heavily on Intellectual Property rights, I suggest meeting with an intellectual property lawyer at least for an initial consultation. Be sure to bring along a copy of your business plan, samples of the works that you will publish, and any legal forms that you might have found, for example, your publishing contract.

Good luck with your new research and publishing company.

Is Copyright enough or do I need a Trademark? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I have had my business name for 15 years another company trademarked it in 2011 am I toast?

I secured my company web address in 2000 which clearly identifies my company in my industry. My web address format is as follows:
www.*********usa.com
with the asterisks being my company name. Another company trademarked the name (the asterisks) in 2011. We are in a similar industry. Should they have had the responsibility to search this before naming themselves or am I just out of luck? They have very deep pockets I do not.

~ U.S.A.

You are not toast, not yet anyway. However, you should speak to an attorney as soon as possible.

I need to make a few assumptions to provide some information. First, I am assuming that you are in the USA and so is the other company. Next, I assume that the other company applied for (and received) the trademark as the US Trademark Office.

Foremost, in the US, there is no legal requirement that a trademark search be performed prior to applying for a trademark. The US Trademark Office does a search before granting a US trademark. This search is limited to the US Trademark Office’s records. If you are not registered, the US Trademark Office will not consider any other trademark rights that you have, because they do not know about them. Many trademark applicants choose to search, because, it is efficient to do so. It is not unusual to limit this search to just the US Trademark Office database.

On the other hand, it is required that the applicant sign an affidavit that says that the rights they are requesting do not infringe on the rights of another. So, if you have evidence that the other company knew about you prior to filling their trademark application, this is evidence that you should provide to your attorney. Think about checking your records, for example, did anyone from their corporate network ever visit your website? Have your sales people met each other at conferences? Did you ever exchange business cards with them?

Depending on how you used your business name, there is a good chance that you have common law trademark rights. These rights occur automatically, for example, if you intended that your customers find you using the business name. The specific nature of the rights might vary somewhat from one state to the next. To prove that you have these rights, you must have evidence of your sales and how you used your business name. However, assuming that you have common law trademark rights going back 15 years, your rights could have seniority over the rights in the US Trademark granted in 2011. You may be able to petition the US trademark office for cancellation of their registration, and subsequently have your business name registered.

Of course, you want to carefully investigate. Perhaps they have been using this name for 20 years, and, you have not known about them.

I recommend working with an attorney for trademark cancellation proceedings. However, if your pockets are not deep, like any legal proceeding, you may be able to represent yourself. On the US Trademark Office website, you can learn more about trademark cancellation proceedings by searching for TTAB (Trademark Trial and Appeal Board).

Finally, you may also want to consider action in your state’s court as an alternative to a trademark cancellation proceeding.

For 15 years, I used my business name; another company trademarked the name in 2011. Am I toast? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

What is Pro Se?

~ Phoenix, Arizona

Pro Se is a legal term. It means to appear before a court by yourself, without the help of an attorney. It is also used for quasi-judicial appearances, such as, appearing before the US Patent & Trademark Office without an attorney.

There are a few benefits to appearing pro se. The benefits include:

• No attorney cost.
• Tell your story in your own voice.
• May not be available if you have incorporated.

There are a few disadvantages:

• Impossible to be objective with yourself.
• Significantly more time and energy to prepare.
• Must know the statutes, procedures, and local rules.
• Cannot approach the court (or an opposing party) without going through your attorney.

In some cases, pro se individuals can lessen the disadvantages by using limited services from an attorney; this is sometimes called unbundled services. A limited representation may limit the scope or work (and thereby, the attorney fees) for the client in variety of ways, for example, to review a important documents prior to filing, to help create a strategy, to prepare for a deposition, etc. However, the scope of a limited representation probably cannot include any appearance before the court, because, after appearing before a court, the court must give the attorney permission to exit the proceeding.

At the time of this writing, as I presently understand the US Patent & Trademark Office’s ethical cannons, US Patent Attorneys are not permitted to help pro se inventors on a limited basis. In other words, if a US Patent Attorney helps an pro se inventor, then, the patent attorney must also appear before the US Patent & Trademark Office.

What is Pro Se? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer