The Law Office of Diane M. Chubb, Esq.Intellectual Property Law For Your 21st Century Business
A watch service can alert a business as to new uses of marks that may conflict with its mark, or cause potential confusion. A watch service may consist of a periodic review of the U.S. Patent & Trademark Office databases and state trademark databases for new applications, state business records for new business name registrations, or regular searches on Google and other search engines for new uses of a mark.
Once such a potential conflict is located, the business is notified. The business must then decide whether action is warranted.
We offer watch services for clients, depending on what is needed.
Cease and desist letters
When a business uses a name or mark that is similar to that of another business, there is the opportunity for potential confusion. Are the businesses related? Are the actions of one company attributable to another?
If Business A provides a bad product or service, Business B certainly doesn’t want that reputation to harm its business. Further, Business B doesn’t want to be held liable for the actions of Business A either.
When the names or marks create this confusion, the claim is trademark infringement. The use of the confusing mark or name infringes on the rights of another.
A cease and desist letter is a way for one business to put the other on notice that it believes there is trademark infringement. The business will demand the other cease any and all use of the name or mark, and may require the payment of damages.
If you believe that a business is unfairly using your name or mark, we can investigate your rights and prepare the appropriate letters.
Analyzing potential conflicts
There are two key factors in a trademark dispute
- Is there a potential for confusion?
- Who has priority?
1. Determining Confusion:
- How alike are the marks in sound, appearance and meaning? For example, the mark COOL DIGS sounds identical to KUUL DIGS. SMART ID looks nearly identical to SMART*ID.
- Do the respective goods and services overlap? The term ‘clothing’ encompasses shirts, pants, pajamas, socks and hats. Pens and notebooks are certainly related items, frequently used, marketed and sold together. However hotels and cleaning supplies are completely unrelated.
- Parties will disagree as to whether the marks are confusingly similar, and will offer evidence to support their position. Unless a settlement can be reached, the matter may end up before a court or other judicial body.
2. Determining priority:
- Has either party filed a trademark application?
- Who has the first use of the mark?
- What is the mark being used for?
- Where is the mark being used?
These factors will determine who has “priority”, or the superior right to use the mark.
it is possible that the party being asked to cease and desist has the superior rights in a matter.
We have over 20 years of experience in analyzing your rights in a trademark dispute, and determining the best strategy.
Trademark Trial and Appeal Board
Many trademark disputes are resolved through the Trademark Trial and Appeal Board (TTAB). This is a federal judicial body specifically designed to resolve matters when at least one party claims federal trademark rights.
The TTAB is very similar to a court proceeding, whereby opposing parties submit evidence and arguments for a judge to decide. The major difference is that unlike court, there is no live testimony, and thus, no jury.
Although it is possible for a party to represent themselves before the TTAB, it is best to have an attorney involved to ensure that all rights are protected. An attorney can also work to resolve the matter without the need to go through time and cost of an entire proceeding.
We have a proven track record for efficiently and effectively resolving TTAB disputes, with good results for our clients.
COPYRIGHT & DISCLAIMER
*Note: The material provided in this notice is for informational purposes only and not for the purpose of providing legal advice. Use of this material does not create an attorney-client relationship. Please contact an attorney to obtain advice with respect to any particular issue or problem.