by Intellectual Property Attorney Bill Honaker, the IP Guy
The New York Times reported that former President Barack Obama and former First Lady Michelle Obama had filed to register the trademark, “Higher Ground,” for their entertainment company. But they were refused.
Hanisya Massey got their first. She registered “Higher Ground” more than ten years earlier. They’re now fighting over who has the right to the trademark. The Obamas have asked that the USPTO to cancel Ms. Massey’s Trademark and register theirs. Ultimately it may end up in an infringement lawsuit, but for now, the fight is at the United States Trademark Office (USPTO).
One of the benefits of Federal Trademark Registration is that the USPTO examines each new application to determine if it conflicts with other registered trademarks. If it does, the USPTO will refuse registration. This is what happened to the Obamas. The USPTO decided that it conflicted with Ms. Massey’s registered trademark.
The Obamas and Ms. Massey tried to work out an agreement that would let them both use and register their trademarks. But discussions broke down according to the article. This resulted in the Obamas trying to cancel Ms. Massey’s registration so they may register theirs. This is known as a cancellation proceeding, and can be requested for a number of reasons, one of which is “lack of use.” That is the basis for the Obamas’ request.
There are six important lessons to be learned from this dispute:
Lesson 1 – Do a Search
You should check the USPTO records when you pick a trademark. The USPTO maintains a record of all applications and registrations. It’s called TESS (Trademark Electronic Search Service). You can find it here. This is a quick way to see if there are potential problems with your trademark.
A quick search of the USPTO records would have shown the Obamas that their “Higher Ground” trademark would have issues with Ms. Massey’s registered trademark. Not all similar, or even identical, marks will be a problem, just those used on goods or services that are similar to yours. The test is whether a consumer would likely be confused as to the source.
In the US, you don’t have to register your trademark to have rights. Because of the importance or your trademark, it is best to consult an expert to make sure you have no issues. The best approach is to have a full search conducted to identify any potential issues. A full search goes beyond the USPTO database, and searches for trademarks that have not been registered, but could pose a problem. So a more extensive search should be done to be sure there are no conflicts.
Even so, a quick search of the USPTO database gives you good preliminary information. If you find a potential problem you may decide to pick something different.
Lesson 2 – Use your trademark
If the United States, you have to continually use your trademark, and prove you’ve used it. If you don’t, you can lose it. When the Obamas couldn’t reach a deal with Ms. Massey, they decided to challenge her registration, alleging that Ms. Massey failed to continually and properly use her trademark. This is known as a cancellation proceeding. If successful, Ms. Massey’s trademark will be canceled clearing the way for the Obamas to register their trademark.
Lesson 3- Keep evidence of use
Ms. Massey will need to prove that she has been continually using her trademark. She will have to submit evidence of use, which will require documentation.
You should be keeping evidence of use. Create a Use File with examples of how you’ve been using your trademark over time. Include, for example, dated screen shots of your trademark use, dated pictures of your product with the trademark on it, advertisements showing products with the trademark on it, sales records showing sales of the product, brochures showing your service mark and describing your services, etc. Proving trademark use can be complex. Not all uses will be acceptable. The USPTO provides guidelines for establishing proper use, but you should consult an expert in trademark law to fully understand what is proper use.
McDonald’s Restaurants in Europe learned about use evidence the hard way. They challenged the Super Macs burger chain when they entered Europe. McDonald’s alleged that Super Macs infringed their “Big Mac” trademark. Super Macs filed to cancel the Big Mac trademark arguing non-use. Surprisingly, Super Macs won. The European Trademark Office held that the evidence submitted by McDonald’s wasn’t enough to show use. Ouch! Don’t make this mistake. You can read more about this in my article How to Keep Your Trademarks Forever.
Lesson 5 – Register your trademark
You get tremendous benefits when you register your trademark. The USPTO helps you police your trademark, and it’s more likely to be located in a search. This is important when others are picking trademarks. If they can find your registered mark, they may decide to pick a different mark to avoid issues like the Obamas are now facing.
Another big benefit is that your Federal Registration extends throughout the United States and its territories. It can be used to block confusingly similar trademarks that are first used after your registration. Other benefits can be found in my article Why Do I Need a Trademark?
Lesson 6 – Police your trademark
Do your own policing. Check the USPTO records to see if others are trying to register marks that may be confused with your trademark. Although the USPTO does this, they sometimes miss marks, or don’t appreciate issues relating to your market and use. Sophisticated trademark owners use watch services to continuously search the USPTO records for any marks of concern.
You can oppose a trademark that has been allowed by the USPTO. Once a trademark is allowed, it’s published for 30 days allowing others to file oppositions to the registration.
Search the web to see if others are using your trademark. You can set up a Google Alerts Service for your trademark. This will automatically send you an e-mail if your mark is being used.
If you catch infringing uses early, it can be easier to stop them. A new user may not be as committed and entrenched, and might decide it’s easier to change names than fight. Who knows, if Ms. Massey had contacted the Obamas earlier, they may not have been in this struggle.
The Takeaway
Trademarks can be a business’ most valuable assets. As long as you use them properly they can last forever. To get the most value from your trademarks, don’t ignore them. Put a system in place to routinely collect evidence of use, watch for others using similar marks, and most importantly, register your valuable marks.
About the Author:
Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.
To get answers to your questions click here to schedule a time to talk, email Bill@IPGuy.com, or give him a call at 248-318-7015.