A quick summary of where we left off. A doctor creates a new product with a distinctive trademark. He registers it with the United States Trademark Office. He approaches a big box store that is interested. But a few weeks later, they launch their own product with his trademark.
We talked about option’s including filing a lawsuit. The potential damages for trademark infringement are (1) actual damages, (2) the infringer’s profits, and (3) attorney’s fees and costs. The infringer’s profits were likely high since the product was selling out at various stores. We are also entitled to our damages.
“What are your sales?”, I asked.
“I haven’t sold anything.”, he said.
“Well, where have you been offering the product for sale?”
“I haven’t offered it for sale. I am still trying to line up a company to make the product.”
“But you filed a statement with the Trademark Office stating that you had used the trademark, how did you use it?”
“I bought packaging and put the trademark on the box.”
Not good, a disaster.
You don’t know what you don’t know!
Use in trademark law is complicated. For example, one way to show trademark use is to place your trademark on your product and offer it for sale to consumers. An example of this is the Apple logo that appears on my computer. It is on the packaging, and the product.
If it is a service, offering the service to others with the trademark and a description of the services provided is acceptable. For example, IPGuy is my trademark/service mark and I use it on my website IPGUY.com. I show the trademark on the website with the services that I provide, speaking and writing about Intellectual Property.
The steps to get a trademark registered are:
- Prepare and file an application for registration.
- A Trademark Examiner examines the application.
- If objections are raised, you must answer them.
- If the application is allowed, you must submit a sample of use and an affidavit alleging use.
This last step is critical, complicated and can be very confusing because use is a legal term that doesn’t mean any use. The Doctor used his trademark, but not in a way to support trademark use before the Trademark Office.
The Trademark Office requires three elements to prove trademark use on a product.
- You must use the trademark on the product or near it.
- Place the product in front of consumers.
- Make it possible for consumers to purchase the product.
These requirements are typically met when you put a label on a product and offer it for sale to customers. The Doctor didn’t use his mark as a trademark, because he never offered it to customers.
Use of your trademark on your website can create additional issues. Let’s assume the Doctor put a picture of his packaging on his website. It still wouldn’t be considered use because the Trademark Office requires a way to purchase the product on the website.
A service mark can also create problems. The use must describe the services that you state in your application. IPGuy is my service mark. To show use I must describe the services that I provide under that mark in close relation to the mark. I do this on my website where I describe that I am a speaker, author and provide IP education services.
The doctor’s alleged use was wrong, and his registered trademark was obtained through an improper allegation. It could be cancelled. If we sued the big box, they would learn that the trademark had not been used and cancel the trademark.
Even more troubling is that the big box store has superior rights. They used the mark first. In the United States the first to use a trademark has superior trademark rights even though it isn’t registered. Because of the lack of use by the doctor, the big box store became the trademark owner.
Sometimes what seems easy can have unknown traps and devastating consequences. Filing your own trademark application is a prime example. You risk doing something wrong, the value of your strong trademark and the cost of your time. Trademarks can be one of your most valuable assets. Don’t risk that asset for a few hundred dollars. When you think about the consequences, hiring a professional is very cost effective.
Have questions about trademarks, patents, copyrights, trade secrets, or other types of Intellectual Property? Let’s talk and assess your IP today.
Click here to schedule a time to talk or give me a call at 248-318-7015.
by Intellectual Property Attorney Bill Honaker, the IP Guy