Category: Trademark

  • TM attorney’s brand naming ideas

    Is this a good trademark?

    Well, I get that question a lot as an IP attorney. I have been working on trademark cases for about ten years now. In fact, one of the first things I did as a newly minted attorney in Chicago was to file a response to an office action rejecting a trademark application by YS bee farms.

    Ever since, I’ve been working with small and large businesses to get their trademarks registered or help them enforce or defend their trademark rights in courts. These clients are more or less established businesses.

    Then, Amazon Brand Registry happened, and everyone wants a registered trademark now. Literally, everyone. I get an email from an individual who wants to aspire to become a successful Amazon seller every now and then. Unfortunately, these online retail newbies often ask the wrong questions:

    • How much does it cost to get a registered trademark?

    Well, it depends, if you want just something with ®, it would only cost you $250, seriously. If you want something of value, it can go way up.

    • Are there any requirements to get a registered trademark?

    Well, ironically, the answer is a trademark. You’re registering a trademark you already have! (With an exception of ITU, of course.)

    The question you should ask

    A business experienced in retail always come with brand/name candidates instead of a product label already printed out. They ask me questions like:

    • “Can we use any of them?”
    • “What do you think is the best?”
    • “Are there any conflicting marks out there?

    And the ultimate question: “is this a good one?”

    These are all really good questions. Also, I hear them so often. When it comes to a certain mark there are always specifics that do not apply to other cases. However, there are repeating themes that are sort of universal. I want to discuss some of the universal tips.

    Use TESS

    Your brand name should be remembered. To achieve that, often you resort to tapping into your own memory and experience. Then, you come up with something familiar.

    Now, familiarity is the enemy of a distinctive mark. You don’t want to pick something that has been used by another for many years. In fact, if there is likelihood of confusion between the old mark and your mark, you will be legally barred from using or registering the name.

    TESS is an acronym of Trademark Electronic Search System. It’s a free and powerful tool. You can simply type up your candidate to see if there’s any identical trademarks that are registered, applied-for registration, or cancelled of registration.

    I mentioned likelihood of confusion, which means you should also avoid similar marks. To find similar marks, you can do advanced searches on TESS as well. Advanced search needs some knowledge and practice. But, there are some easy things you can start right away.

    Use $ signs to expand your search.

    Let’s say your brand name candidate is “Aweriginal”. You can try “Awe$” or “$riginal”, which will return anything starting with awe- and ending with -riginal, respectively.

    The dollar sign works fine in the non-advanced search option, “Basic Word Mark Search (New User)”.

    Narrow it down to your market.

    Well, the internet made all trademarks essentially nationwide. In other words, I’m not talking about the geographical market. On the other hand, you can still have identical trademarks used by independent entities. For example, you may use “Aweriginal” for your grocery store while “Aweriginal” has been used for decades by someone else for a beauty salon service.

    Although there is no clear cut answer to what types of good/service can be said to be distinctive (or in different markets), you can more often than not rely on international classes. To narrow your search to a specific international class, you should use “Structured Search”.

    Searching for anything with “awe-” in advertising and business category only.

    In doing so, you can eliminate a lot of candidates that are too similar to already existing marks.

    Use common sense

    If your brand name reminds of someone else other than you, it’s not a good name. If your name tricks a customer into a belief that they are buying from someone else, it goes against the very idea of trademark: it should tell consumers where the good/service comes from.

    Similarly, if your brand name simply tells what the good/service is, it’s not a good name. It should tell where it comes from, but not what it is.

    Tips for good naming

    I digress. This article is actually about how to give a good name. All I said so far is how to avoid bad names.

    So, here are some hacks.

    Tweak spellings

    This is probably all too familiar. Our example “Awerigional” is indeed a tweak of “original” using awe- instead of “o”.

    Use suffixes

    If you are fond of a certain word or common name, you can add suffixes to it for extra distinctiveness. If I were to use my name “Jeon” for a trademark, I would soon realize there are more than 500,000 people with the same name in South Korea alone.

    However, Jeonish, Jeonastic, and Jeonity are all pretty distinctive and easy to remember names if you’re already familiar with the “Jeon” name.

    Make it simple

    A catchphrase is very attractive, but it does not go far legally. It’s not to say that you can’t have a phrase registered as a trademark. In fact, it’s often easier to have a phrase registered than a word.

    However, when it comes to trademark protection, it should not just protect against identical copycats but also against similar rip-offs. As phrases often convey a meaning, your competitors can easily claim that they’re just using the phrase for the meaning.

    So, “it’s so deli-cious” is never be a good name for your delicatessen however tempting.

    Use it properly

    My final advice has nothing to do with naming. Nonetheless, if you’re using a good name the wrong way, it would be shame.

    Don’t refer your product/service by just the trademark. For example, don’t call your specialty raisin bread Aweriginal. It should be Awriginal raisin bread. It’s true even if no other bread in your bakery is called Awriginal.

  • What Do I Need for Trademark Registration?

    What Do I Need for Trademark Registration?

    To register a trademark, you need to either (1) have used a mark (could be a brand name, a company logo, or even a unique color) in association with your good or service or (2) have a bona fide intent to use it.

    How does this translate in plain English?

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  • DO NOT PAY WTP!

    DO NOT PAY WTP!

    Many clients reported that they received an unsolicited service invoice from Service BPM 326634 at 8345 NW 66 ST #2000 33166-7896 Miami, which looks like this:

    WTP invoice sample

    It has nothing to do with your U.S. trademark registration, and you are advised to ignore and discard it.

    If you have questions regarding trademark protection in other countries than the U.S., please contact your attorney.

  • USPTO TEAS—What is a disclaimer?

    USPTO TEAS—What is a disclaimer?

    The USPTO has helpful videos and TEAS instructions to help out trademark applicants, but how disclaimer affects your legal rights and potential to be initially rejected for registration via office action?

    Let’s talk about the disclaimer in terms of registrability and trademark owner’s right.

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  • How to Avoid Trademark Refusal

    How to Avoid Trademark Refusal

    Just google trademark registration, and you will see a bunch of under-$100 trademark services online. How is it possible? There is a hidden cost of trademark registration: your mandatory response to the USPTO’s initial conclusion that your mark is not registerable. (See Possible Grounds for Refusal of a Mark | USPTO) By the way, this type of office actions are quite common.

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  • When should you DIY TM application?

    When should you DIY TM application?

    The USPTO provides ample resources to guide first-time DIY-ers through the trademark application and registration process. However, it does not give you much regarding when and how you should decide to seek expert help. Here comes a seasoned IP attorney’s take on “when should you go the DIY route.”

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  • Promotional Phrases as Trademark

    Promotional Phrases as Trademark

    Nowadays, in addition to “maker” and “brand”, “product name” is increasingly used as a trademark. There are simply so many product types and variations. Take a look at an example below:

    GREEN CLEAN is a product name of a cleanser from Farmacy Beauty. My impress is that it is something that naturally cleans your skin. It feels natural because of the word GREEN, and I can assume it is a cleansing product because of the word CLEAN.

    Well, this type of phrases well serve the purpose of explaining what the product is in addition to telling it apart from competitors’. However, because of the former, there’s limited protection.

    Descriptive phrases

    When your product name simply describes what it is, this cannot be registered on Principal Register but instead you may place it on Supplemental Register, which kind of serves as a waiting list to be registered on Principal Register.

    GREEN CLEAN is no different as belows.

    Why people or companies bother to register their marks on Supplemental Register? It still is a register, and it affords you the right to put ® symbol next to your product name. Other than that, it's a great stepping stone to later register on Principal Register.

    Tough luck if…

    You may be denied of registration altogether on both principal and supplemental register if your description is deceptive. For example, if you want to use the surname Obama for your book club, the USPTO would certainly refuse to register a name such as OBAMA BOOK CLUB.

    When the description might deceive consumers or defraud them, it simply is not a trademarkable name.

    In reality, though, you will face more issues with characteristics and features of your product or service. For example, let’s say you name your clothing brand SILK THE EXTRA ORDINARY. Then, the USPTO might want to confirm if your clothing is actually made of silk.

    Not a ban

    You can definitely use SILK for your soy milk product.

    Using a descriptive word in a non-descriptive way is actually a great way to create something distinctive without much creativity.

    Of course there are other ways. For example, SILKY may convey a similar meaning while avoiding deception. EXTRA ORDINARILY SILKY may not trigger the same rejection as SILK THE EXTRA ORDINARY though it’s very similar.

    Another example is COPY CALF for artificial leather goods. Although it is not made of CALF, the addition of COPY made it not deceptive.

    It was an obvious play on the expression “copy cat” and suggested to purchasers that the goods were imitations of items made of calf skin.

    A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962).

    Last words

    As always, trademark law looks at the perception of consumers, and therefore it’s very subjective. So, you can simply look at a wording to figure out if it’s a good trademark. You should take account of the market/industry, target consumers, and product features together with the wording itself.

  • Amazon Brand Registry related FAQ

    Amazon Brand Registry related FAQ

    Amazon Brand Registry is one of the strongest Amazon selling tools as a seller can control the entirety of Amazon listings for all products associated with a brand. It’s a free service for a seller who owns a UPSTO registered trademark.

    As Amazon Brand Registry is a private program ran and controlled solely by Amazon, Amazon can do whatever it wants regarding the program including registration requirements.

    Hence, you should take a note the following materials are only provided as an anecdote of an attorney who only indirectly experienced enrollment in Amazon Brand Registry through his clients.

    What is Amazon Brand Registry?

    What are requirements to participate in Amazon Brand Registry?

    What is Amazon Brand Registry Beta?

    Can you use Amazon Brand Registry as soon as you have U.S. Serial Number?

    Should I give a chance to Amazon IP Accelerator program?

    Why do I need to register my mark/brand/logo with the USPTO?

    What is Amazon Brand Registry?

    Amazon Brand Registry is an Amazon’s own program that offers its sellers an ability to control, edit, and possibly remove listings related to the sellers’ registered trademark.

    Go to Amazon’s Brand Services page to get more info.

    What are requirements to participate in Amazon Brand Registry?

    The answer used to be simple. In the beginning, Amazon only allowed “registered” trademarks, meaning you need to first have your trademark registered with the USPTO before you enroll in Brand Registry.

    The problem was that when you file a trademark application with the USPTO, the following happens:

    • At least four months for the USPTO to examine your mark
    • At least a month for notice to the public via publication
    • At least two months for processing and waiting for USPTO actions

    In sum, the trademark registration process takes at least seven months, which means an Amazon seller who launched a new brand would not be eligible to enroll in Brand Registry for a significant period of time.

    That brought Amazon to recently start a pilot program Brand Registry Beta that allows sellers in the U.S. and India to apply for Brand Registry as soon as they file an application.

    What is Amazon Brand Registry Beta?

    It’s an invitation-only pilot program that allows you can request an enrollment of your brand with a pending trademark application.

    According to its introduction page, the requirements are

    1. a pending trademark application with the USPTO or the Indian counterpart,
    2. you have an Amazon seller or vendor account, and
    3. you have no trademark currently enrolled in Amazon Brand Registry.

    If you met the aforementioned requirements, you need to fill out a form to be waitlisted. The form asks you the followings:

    • Trademark office where your trademark is pending registration
    • The number of your trademark application (serial number for US trademarks and trademark application number for India trademarks)
    • First name
    • Last name
    • Email (valid email addresses only)
    • Company name
    • Brand name
    • If you have a seller central account please provide your merchant token. If you have a vendor central account please provide the email associated with your vendor central account

    Can you use Amazon Brand Registry as soon as you have U.S. Serial Number?

    A U.S. Serial Number is immediately available when you file a trademark application with the USPTO via TEAS. However, we don’t know yet how soon you can use tools available through Amazon Brand Registry.

    When we have statistically meaningful data as to how long the process takes, I will post here.

    last update on 9/24/2020 by Young Jeon, Esq.

    If you can’t meet the Amazon Brand Registry Beta requirements, you can alternatively consider Amazon IP Accelerator program. The IP Accelerator program has affiliated law firms that offer trademark services and allows you to file a trademark application with one of the law firms and to apply for Brand Registry with the U.S. Serial Number.

    IPfever does not participate in Amazon IP Accelerator program, but you can go to the program’s webpage via this link.

    We already analyzed the program’s worth in a previous post, but if you need Brand Registry before your trademark gets registered, this is probably your last resort.

    Should I give a chance to Amazon IP Accelerator program?

    My belief, and also the USPTO’s, is that any U.S. licensed attorney can handle trademark registration, if a sufficient time is given. The key issue is how competent and responsible the lawyer is for your case. It can vary from an attorney to another within a firm.

    However, Amazon probably requires the law firms to maintain the quality of the trademark applications, meaning a vast majority of the application should eventually render registration. This gives an incentive to law firms to reduce the likelihood of an Office Action, which gives many clients a reason to abandon their application due to the cost.

    If so, the IP Accelerator law firms should be a better choice than many unethical trademark service companies, especially non-attorney service providers of dubious legality, who often blindly files a high likelihood of refusal application without forewarnings to make money.

    The best method is to contact a law firm, preferably talk to an attorney, and ask trademark questions first. For example, if what you are hearing is nothing but a recommendation to get Brand Search or Brand Review service, then you might want to try another law firm.

    Of course, you can’t never know if a trademark is safe to use, sure to be registered, and so on. Even with Brand Search and Review, it’s never 100%. On the other hand, a competent attorney can provide a general but very helpful overview of your trademark instantly upon hearing about the mark and associated goods/services.

    Why do I need to register my mark/brand/logo with the USPTO?

    I tend to start a free trademark consultation with a saying, you have a right to a trademark when you use it. There are exceptional circumstances such as Intent-to-Use application under which you can file a trademark application before you start to use the trademark. Nonetheless, trademark registration offers registration of an existing rights related to trademark, servicemark, collective mark, and trade dress.

    The registration scheme offers a pre-screening of the alleged rights, including if there are any conflicting marks, and provide notice to the public. This helps businesses can operate with certain expectations that their trademark will be protected. As an incentive, the registered trademarks are given certain enforcement options and heightened legal status.

    That does not mean, you don’t have a right to stop others from misappropriating your trademarks by using confusing names, marks, or logos.

    It is true that federal trademark registration is almost always recommended unless you deal exclusively with a set of preexisting clients. However, it is also recommended that you should do your marker research and find a distinctive name or logo for your product/service. And when you feel ready, you proceed with the registration process in consideration of your business plan and budget.

    On the other hand, if you want to pre-register a name or logo even long before you start actually using the name or logo, let alone your business, then you can always file an ITU application that can hold a name or logo for registration upon your actual use for up to 3 years. ITU applications involve less risk because the trademark examination will be completed before you start using it, so you can more confidently file it yourself.

  • Change Address on TM registration, DIY

    Change Address on TM registration, DIY

    Businesses move. And their trademarks should come along. Unfortunately, changing your address on your trademark registration(s) (also in your application(s) if it has not been registered) is not as straightforward as changing your profile on Facebook.

    First, understand what you’re doing.

    You actually have quite a list of addresses on your trademark registration/application.

    1. Owner’s (domicile) address (or principal place of business)
    2. Owner’s mailing address (USPTO permits you to have a different mailing address than your address over privacy concern; only mailing address is made public)
    3. Address of your Domestic Representative (Domestic Representative acts like a registered agent for a business. i.e. service of process can be made on a Domestic Representative)
    4. Correspondence address (this is either your mailing address or your attorney’s address)

    If you’re shaking your head in disbelief, maybe you shouldn’t do this yourself.

    Next, you need to find an appropriate form.

    You can find any TEAS forms here or on your MyUSPTO portal. But here’s a shortcut: Change Address or Representation (CAR) Form.

    If you don’t have a USPTO.gov account (MyUSPTO), you need to create one. It’s pretty much like creating an account on any website. So, I won’t go into details.

    Let’s fill out the form.

    Page 1

    You might find this first page familiar if you have filed a trademark application yourself.

    A noticeable difference is that you can enter multiple serial/registration numbers at a time. Yes, that means you can change your address on multiple registrations/applications in a single filing. How convenient!

    Put down your serial/registration number in the blank and hit .

    Page 2

    Now, it shows your mark and your information. Make sure you are looking at your registration/application.

    Then, you have this prompt.

    It’s actually asking who you are to this registration/application. You need to be the Owner or the Attorney of Record to make any change of address. Here, we’re assuming you’re doing it DIY, so Owner it is.

    When you press the Owner button, you might see the following message.

    You see this warning because you had an attorney file the application on your behalf. If so, you must “REVOKE” the authority of a currently appointed attorney to do this address change yourself. If revoked, the attorney will be out of picture in regard to the registration/application. Select “Yes” for the “REVOKE” question.

    Also, you might see the 2. “UPDATE” question above as the first question if you did not provide your email address in the registration/application. The USPTO now requires an email address information for every trademark registration, so if you haven’t done this, you must provide one now. Thus, select “Yes” for the “UPDATE” question. You see I’m referring the questions not by numbers but by keywords. The questions, in fact, may be presented in different orders.

    Furthermore, there could be a different set of questions at times. But I won’t go into further details. You need to “REVOKE” the power of attorney before you file anything with the USPTO yourself, but in so doing, you might also need to make some other changes or updates if necessary. But don’t worry, the form is pretty smart, if you, for example, do not revoke the power of attorney, the form will not let you proceed when you click .

    Following pages

    Depending on how many “Yes” you had on the Page 2, you would encounter many more pages for the necessary changes/updates. However, the address you want to change will appear in section as below.

    You see Mailing Address (top third) and Domicile Address (very bottom). If you want to have a separate mailing address to hide your actual address from the public, insert the address you want to receive your mail in Mailing Address field, and then uncheck the box next to Domicile Address as shown below.

    Then, you can type in your address in the blank field. Alternatively, if you don’t mind making your address public or don’t have a separate mailing address, then you should put down your address next to Mailing Address and leave the box next to Domicile Address (shown above) checked.

    Last page

    Now, you need to sign the form and Validate.

    I will assume you want to “Sign directly” here. Simply, select Owner/Holder as shown below.

    Then, fill out the bottom table. Remember, the USPTO recognizes your electronic signature only if it meets certain formality. I suggest you just fill the Signature box with your full name enclosed with / on each side.

    On the above shown, replace “your name” with an actual name of yours. If Tom Cruise was the Owner, it would look like:

    Don’t forget the slashes, and fill out the Signatory’s Position. In most cases, you can simply write down Owner, but as aforementioned, you may be an employee of an business entity Owner. In this case, you can write down your job title. I doubt a company would have a Temporary Worker to do this, but if that is the case, the supervisor should sign the form not the Temporary Worker.

    You’re now set to Validate the form.

    The rest will be breeze. Unlike when you filed a trademark application, this submission does not require fees. So, as soon as you submit the form, you’re done.

    Congrats! You’ve made the address change on your registration/application yourself.

  • Amazon IP Accelerator Program

    Amazon IP Accelerator Program

    Amazon’s IP Accelerator Program (hereinafter “IPAP”) allows sellers to use Amazon Brand Registry as soon as they file for a trademark application with the USPTO. Typically, registration takes 6-9 months, so this is an exciting program for Amazon sellers.

    Are the maximum service fees set by Amazon fair?

    Assuming that the law firms participating in the IPAP charge the maximum fees set by the program, we compared the service charges as below:

    As you can see, the cost savings in non-flat fee structure is significant. Nevertheless, because most Amazon sellers do not have their own lawyers who can do trademark prosecution at a competitive rate, they prefer to find one with a flat fee structure.

    Unfortunately, the flat fees set by the IPAP, or advertised online, do not tell the whole story. Even if reviewed, researched and filed by a professional, a trademark application can be still subject to an office action (“OA”) by the USPTO for various reasons. When the time comes, service providers who set their flat fees too low will try to recoup their actual cost. Note, office actions must be responded in writing however simple or trivial they might be. This really opens the door for unethical conducts by service providers.

    IPfever attorneys handle OA as it should be. If it involves a simple amendment to the identification of goods and services, the cost may be as low as $20. There are attorneys charge flat fees for OA, which do not make any sense because while some OA might require an extensive legal argument to overcome, others may be resolved with a simple email to the examiner.

    Every attorney at IPfever wants to be your long-lasting partner (not a one-time trademark application service provider), and our fee structure as well as the workflow prevent attorneys from taking advantage of clients’ unfamiliarity with the process. That explains the unbelievably low cost associated with an average case at IPfever. In fact, most trademark cases are quite straightforward.

    Request your free consultation today and talk to an attorney.

    • You can find out what you need or expect for trademark registration.
    • You can ask any general question such as if your mark can be registered or used, how much it would cost for you trademark, and so on.
    • Even if you eventually retain the attorney, anything offered during the free consultation stays free.