Who has Standing to Oppose or Cancel My Trademark?

The first question in any trademark opposition or cancellation proceeding is likely a question of whether the opposer (for opposition proceedings) or petitioner (for cancellation proceedings) has standing to pursue the action. The rules for establishing standing, meaning a sufficient interest in the mark to litigate, are relatively easy to establish and are generally considered a rather low burden.

To establish standing to oppose the registration of a mark or to cancel a mark, a party must plead that it has a “real interest” in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ, 1023, 1025-26 (Fed. Cir. 1999). To plead a ‘real interest’ in the case, opposer must allege a ‘direct and personal stake’ in the outcome of the proceeding, and the allegations in support of its belief of damage must have a reasonable basis in fact.” Petroleos Mexicanos v. Intermix S.A., 97 U.S.P.Q.2d 1403 (T.T.A.B. 2010) (quoting Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999)).

The purpose of standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPWQ 185, 187 (CCPA 1982). This is a low threshold. Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 U.S.P.Q.2d 1112, n.8, 2009 WL 691309 (T.T.A.B. 2009). The issue is not whether the opposer owns the mark or is entitled to register it, but merely whether it is likely that he would be somehow damaged if a registration were granted to the applicant.” Wilson v. Delaunay, 245 F.2d 877, 114 U.S.P.Q. 339 (C.C.P.A. 1957). “All that is necessary…is that the ‘person’ bringing the opposition establish conditions and circumstances from which damages to it from the opposed mark can be assumed.” FBI v. Societe: “M. Bril & Co.,” 172 U.S.P.Q. 310 (T.T.A.B. 1971); 3 McCarthy on Trademarks and Unfair Competition § 20:7 (4th ed.).

While the Lanham Act provides a relatively low standard for standing, it remains the first question that must be addressed in trademark opposition and cancellation proceedings.

For more information, contact Revision Legal’s trademark attorneys through the forms on this page or call 855-473-8474.

What is a Trademark Cancellation Proceeding?

A trademark cancellation proceeding is an administrative proceeding, similar to a civil federal lawsuit, before the Trademark Trial and Appeal Board (TTAB) in which one party requests that a registered trademark be cancelled.

In other words, a mark that has successfully made its way through the trademark registration process still remains subject to cancellation by a party with proper grounds. To read more about the proper grounds for a cancellation proceeding, click here.

Who Can File a Petition to Cancel?

Any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125 (c) of the Lanham Act, by the registration of a mark on the principal register, may file a petition to cancel. To learn more about the concept of standing, click here.

The person or business filing the Petition to Cancel is called the Petitioner while the other party is generally referred to as the Registrant.

What is Contained in a Petition to Cancel?

The Petition to Cancel is similar to a Complaint in federal or state court. Specifically, it contains a caption of the parties involved followed by numbered paragraphs which state the factual background, the grounds for cancellation, and the request for relief.

What is the Procedure in a Trademark Cancellation Proceeding?

The procedures to litigation opposition and cancellation proceedings are substantially similar and are explained here.

What is the Outcome of an Trademark Cancellation Proceeding?

If the petitioner prevails, the registrant’s federal registration is cancelled. If the Registrant prevails, his or her registration continues. There are no money damages at stake; rather, the only issues at play are the registration rights of the marks in question.

The parties should remember that settlement is always an option. Many times, the finality of settlement is a preferable outcome for all involved. Typically, settlement in a trademark cancellation proceeding is accomplished through the use of a “concurrent use” agreement. That agreement sets the rules for each party to use their own marks.

For more information about trademark cancellation proceedings, contact Revision Legal’s team of experienced trademark attorneys through our contact form, or by calling 855-473-8474.

Editors note: this post was originally published in March, 2015. It has been updated for accuracy and comprehensiveness. 

Why Businesses Need an Internet Attorney

There are very few businesses in existence today that can function without the Internet or an Internet attorney. The new technologies involving digital communications and the way they are utilized by business are constantly changing. With this emerging technology comes the need for laws to regulate the activities of companies conducting business online and around the world.

The Internet introduced new methods for companies to conduct business but also created several new challenges that demand legal solutions and explanations. For example, computers can store large amounts of data, which can become a problem if this information gets into the wrong hands.

It is important for businesses to understand cyberspace law. Hiring an Internet attorney who is qualified to keep companies in compliance with internet business law is a critical step in protecting those companies from individuals involved in fraudulent online activities. Cyber laws govern legal issues involving data protection and privacy, cybercrime, electronic commerce, and intellectual property.

Banks, government agencies, hospitals, and all other business big and small are concerned about the issues that cyber laws can address. Cyber threats are real and complex. Accidental cyber threats may occur, as well as intentional attacks to hurt the flow of business. Perpetrators can be recreational hackers or international terrorists. For this reason, there are laws in place to protect businesses and persecute offenders. A business internet attorney can help you navigate these complicated areas of the law and protect your business from threats unseen, but very much real.

E-Commerce is Booming

E-commerce, or business transactions that take place over the internet, is growing every day. With this growth comes the dire need to regulate business transactions that take place in cyberspace. Large companies, small firms, entrepreneurs, and startup companies all need to stay abreast of the laws governing their actions over the internet.

Any form of business online can be considered e-commerce. It can involve Business to Business (B2B), Business to Consumer (B2C) or Consumer to Consumer (C2C) transactions. Examples of e-commerce transactions may include:

  • Online shopping: Buying and selling goods or services on the Internet
  • Electronic payments: Paying for products online
  • Internet banking: Conducting banking transactions online
  • Online ticketing: Purchasing tickets for travel, sporting venues, or hotels
  • Mobile commerce: Transacting business while utilizing mobile devices with access to the Internet

There are many legal issues that can arise during an e-commerce business transaction that may include:

  • Liability of Internet providers: Internet service providers may be liable when online internet problems happen during a contract formation.
  • Security and digital signatures: Digital signatures provide authentication of individuals involved in an e-commerce transaction.
  • Contract formation and development: Legal concerns may arise when developing an electronic contract.

The Internet has created new opportunities that impact our economy and business growth, but it has also opened the door to fraudulent activities that can hurt your business and your bottom line. Some of these illegal activities may include the following.

Data Breaches

Data breaches can range from hackers entering a corporate network system to an unauthorized staff member viewing sensitive or personal information about another employee. There are several laws and regulations dictating how sensitive information should be handled and the consequences for not following legal procedures. If a person who is not authorized to view sensitive material does just that, the company responsible for keeping the information confidential has experienced a data breach. If the data breach causes identify theft or other violations, the company may face fines as well as civil or criminal charges.

Cybersquatting

Companies need to be familiar with a strange term – cybersquatting. It can affect your business and impact your domain name. Cybersquatting occurs when a person uses, purchases, registers, or traffics a domain name that is similar to another individual’s trademark or name. Cybersquatting is also known as reverse domain hijacking, and it is illegal. Often, the culprit may purchase a domain with the purpose of reselling that domain to the highest bidder. In some cases, the offender will try to sell the domain name back to the firm or individual who owns the trademarked name just to make a profit.

If an individual or company has been a victim of cybersquatting, they are protected by the  Anticybersquatting Consumer Protection Act (ACPA) of 1999. This law gives you the right to sue. ACPA states that “trademark holders now have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of another’s trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties.” ACPA discusses the circumstances that suggest “bad faith intent.” To find out more about ACPA and how it protects the rights of trademark holders, click here. If a judge rules in the trademark holder’s favor, the perpetrator of cybersquatting could face fines up to $100,000. An Internet attorney can explain ACPA and how the law impacts your specific situation.

Trademark Infringement

Trademark infringement is becoming a growing problem. According to the United States Patent & Trademark Office (USPTO), “Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” A trademark owner who suspects that his or her trademark has been infringed upon may file a civil action in state or federal court. If proven, the remedies may include:

  • A court injunction that orders the offender to stop using the mark in question
  • An order mandating the destruction or removal of infringing articles
  • Monetary relief, which includes any profits made by the infringement and damages to the plaintiff.
  • An order that requires a defendant to pay the attorney fees of the plaintiff

Internet Attorney

As people continue to use the internet for business purposes, more laws are being put in place to protect companies from cybercrimes, fraud, and other online violations. These laws are redefining how companies and individuals access and use the Internet as well as maintain online privacy. Companies need to hire an Internet attorney who can interpret these laws.

Contact the professionals at Revision Legal to help you with these complex issues relating to your online business. We can be reached by using the form on this page or by calling us at 855-473-8474.

Is Someone Illegally Using Your Trademark? The 8 Factor Trademark Infringement Test

A court will apply the “likelihood of confusion” test in a trademark infringement suit. This is actually an umbrella term for several tests employed by the various federal circuits. However, most courts use a group of similar factors to assess confusion. The court will analyze and weigh each factor to determine if a consumer, in the marketplace context, is likely to be confused by the two marks. For this reason, the test is highly fact-intensive and each factor may be accorded different treatment depending on the case. Here is a look into the eight-factor test applied by the 6th Circuit.

THE 8-FACTOR TRADEMARK INFRINGEMENT TEST

1. STRENGTH OF THE SENIOR MARK

The senior trademark is the one that was registered first or used first. The more distinctive is the senior mark, the more protected it is. A court will measure distinctiveness along the following spectrum:

A). Generic

  • Definition: Words or symbols that describe the product itself, rather than distinguish between competing versions of the product. A trademark can be rendered generic if consumers begin to use the mark as the generic name of the entire product group (like “aspirin”)
  • Strength: Never distinctive
  • Example: E-mail (no trademark)

B). Descriptive

  • Definition: Words or symbols that merely describe the ingredients, qualities, features, purpose or characteristics of a product.
  • Strength: Distinctive only if the mark has acquired secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the product, consumers recognize the mark as having a unique source. Registered marks with incontestable status will be presumed to be at least descriptive with secondary meaning.
  • Example: Windows (trademarked because it has a secondary meaning)

C). Suggestive

  • Definition: Suggestive trademarks suggest qualities of the underlying product, such that it requires imagination, thought, and perception to determine the nature of the product in question.
  • Strength: Inherently distinctive
  • Example: Playstation (trademarked because it suggests that it is a videogame device)

D). Arbitrary

  • Definition: Arbitrary terms are names that exist in popular vocabulary, but have no logical relationship to the products for which they are used. Whether a word is arbitrary or not has everything to do with the context in which it is used. The pairing of the mark with the particular category of product should appear to be random.
  • Strength: Inherently distinctive
  • Example: Apple (trademarked because computers bear no relation to the actual fruit)

E). Fanciful

  • Definition: Terms that are invented for the sole purpose of serving as trademark and have no possible association with the product for which it is used.
  • Strength: Inherently distinctive. Infringers of these marks are hard pressed to provide any explanation for their use the mark, leaving the impression that the real reason was a blatant attempt to trade off the goodwill generated by the owner of the trademark.
  • Example: Xerox (trademarked because the word has no meaning outside of this context)

2. RELATEDNESS OF THE PRODUCTS

Relatedness does not mean that the products are in the same broad industry. Rather, it means that the two products have the potential to be connected in the mind of the consumer. Each case typically fits into one of the following three categories (and the weight given to the factor will change accordingly):

  • If the products compete directly then confusion is likely if the marks are sufficiently similar.
  • If the products are somewhat related but not competitive, then confusion will turn on other factors.
  • If the products are totally unrelated then confusion is unlikely.

3. SIMILARITY OF THE MARKS

This is a factor that the courts usually accord greater weight. The court will look at the pronunciation, appearance, and verbal translation of conflicting marks. It will look to see if the given mark would confuse the public when viewed in isolation. Also, the mark will be viewed in its entirety, not by its individual features.

4. EVIDENCE OF ACTUAL CONFUSION

The existence of actual confusion is direct evidence that the products in their actual market context have similarities sufficient to create confusion. This factor will only be weighted heavily when there is evidence of past confusion or when the particular circumstances indicate such evidence should have been available. Nevertheless, isolated instances of actual confusion after a significant period of time of concurrent sales or extensive advertising do not always indicate an increased likelihood of confusion and may even suggest the opposite.

5. MARKETING CHANNELS USED

A court will assess the similarity of the marks in light of the way they are encountered in the marketplace and the circumstances surrounding their purchase. Evidence may include the relevant market the two products are sold in, the type of business the marks are used for, the methods of advertisement employed by the two parties, and the location that the respective products can be found at stores.

6. LIKELY DEGREE OF PURCHASER CARE

Generally, when analyzing this factor in a trademark infringement test, a court will apply the standard of the typical buyer exercising ordinary caution. However, if a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the product at issue, a higher standard is proper. Similarly, when products are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. The ultimate significance of a given degree of care, however, often will depend upon its relationship with the other seven factors.

7. THE INTENT OF DEFENDANT IN SELECTING THE MARK

If a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity. Intent is relevant because purposeful copying indicates that the alleged infringer believes that his copying may divert some business from the senior user. Direct evidence of intentional copying is not necessary to prove intent. Rather, the use of a contested mark with knowledge of the protected mark at issue can support a finding of intentional copying.

8. LIKELIHOOD OF EXPANSION OF THE PRODUCT LINES

A strong possibility that either party will expand his business to compete with the other or be marketed to the same consumers will weigh in favor of finding that the present use is infringing. A geographic expansion or an increase in the types of products offered can be relevant. A finding that the parties will not expand their markets significantly, however, does not address the ultimate issue of likelihood of confusion. Thus, an affirmative finding will provide a strong indication that the parties’ simultaneous use of the marks is likely to lead to confusion, while a negative finding is not a strong indication to the contrary.

 

Why Updating The Electronic Communications Privacy Act Poses Difficulties

The privacy of electronic communications is provided for under the Electronic Communications Privacy Act. There are limited circumstances in which ISPs may disclose the contents of electronic and stored digital communications. But the law is unclear as to what happens when data is transmitted into and stored in other countries with data security laws that are at odds with the electronic communications privacy laws of the U.S. In such circumstances, when can the content of private electronic communications and stored data be disclosed by ISPs?

The Electronic Communications Privacy Act

Keeping in line with America’s long-standing belief that personal papers should be kept private (i.e., away from the eyes of the government), the Electronic Communications Privacy Act (ECPA) is a collection of privacy laws created in 1986 that are meant to protect electronic communications from being disclosed by the ISPs that handle them. The ECPA is comprised of three parts, each protecting a different aspect of privacy of electronic communications and data storage:

  • The Wiretap Act: The Wiretap Act is a set of laws designed to protect the privacy of electronic communications during their transmission. The Wiretap Act protects the privacy of the content of the electronic communication, which can be thought of as the body of the communication, akin to the body of a letter sent by post.
  • The Stored Communications Act: The Stored Communications Act (SCA) protects the privacy of electronic communications while they are being stored, e.g., on servers or on a computer.
  • The Pen Register Act: The Pen Register Act is designed to provide privacy protection of non-content aspects of electronic communications during transmission. Non-content aspects of an electronic communication are akin to information you might find on a postal envelop (i.e., information related to where the electronic communication is coming from and its intended destination).  

Modern Issues That are Unclear Under the ECPA

For the most part, the Electronic Communications Privacy Act, specifically by means of the Wiretap Act and the SCA, prohibits ISPs from accessing the content of electronic communications that they handle, except for limited circumstances under which it is permissible for ISPs to disclose the contents of private electronic communications to law enforcement or the government. Such disclosures are commonly made by ISPs for the purposes of assisting law enforcement with criminal investigations.  

Since the creation of the ECPA predates modern internet technology, many issues have arisen when it comes to trying to apply such old law to new advances in internet technology. For many years technology companies and ISPs have been lobbying for the modernization of the ECPA to better reflect the current state of technology and its capabilities, such as the easy transmission of electronic communications to servers and other data storage facilities that are located in a foreign country.

Under the ECPA, the rules for when ISPs can access private electronic communications depend on the classification of the service provider and how long the data has been stored. It is unclear under the ECPA whether an ISP is permitted to disclose the contents of an electronic communication that is stored on a server in another country. While the U.S. courts are generally of the opinion that ISPs and technology companies are required to comply with U.S. search warrants that indicate that the content of electronic communications be disclosed for criminal investigation purposes, a recent division in the courts has brought this practice into question.

The Challenges to Updating the ECPA

There are many challenges to be faced if Congress does want to update the ECPA. For starters, the update to the ECPA would either have to be compatible with the privacy laws in effect in other countries, where electronic communications may be stored, or have to address how ISPs can access private electronic communications stored abroad in compliance with a U.S. search warrant while in violation of the other country’s privacy laws. At present, ISPs that have been issued a U.S. search warrant to access data stored in a foreign country that has strong privacy laws are faced with the Hobson’s choice of which country’s laws to violate – fail to comply with the U.S. search warrant or violate the privacy laws of the foreign country where the data is stored. The current state of the ECPA puts ISPs in an untenable position.

Furthermore, consideration must be given to what such an update to the ECPA would mean for electronic communication privacy all over the world. The effect of such an update to the ECPA would condone the extraterritorial application of a U.S. search warrant, making it clear that data that is stored in foreign countries is not out of the reach of the U.S. government. Under this precedent could foreign countries apply a similar approach to demand access to data that is stored in the United States?

ISPs and cloud-based storage providers that store electronic communication data abroad live in uncertain times under the Electronic Communications Privacy Act, and while updates to the law is something that the U.S. Congress has been puttering about for many years now, there is no clear, definitive path to change anywhere in the near future. If you have questions about your technology company’s rights and obligations under the ECPA or any subpart of the ECPA, feel free to contact one of the lawyers at Revision Legal today to discuss your particular privacy law concerns. The Wiretap Act and the Stored Communications Act can be complicated, but compliance with these privacy laws is necessary. Contact us using the form on this page or call us at 855-473-8474.

trademark first use in commerce

Supreme Court Rules On Disparaging Trademarks

For decades, the USPTO has denied registration to trademarks that are disparaging and offensive to specific racial or ethnic groups under the disparagement clause of the Lanham Act. The United States Supreme Court recently weighed in on the long-running debate that has surrounded the federal registerability of disparaging trademarks based on ethnic slurs. While there is little question that disparaging trademarks based on ethnic slurs are offensive, to say the least, many legal minds have argued that the law prohibiting the federal registration of disparaging trademarks infringes on freedom of speech protected by the First Amendment of the U.S. Constitution.

In the case before the Supreme Court, Matal v. Tam, an American dance rock band comprised of all Asian members sought federal trademark protection from the USPTO for the band name “The Slants,” a name which draws on the fact that all the members of the band are Asian ethnicity, despite the common knowledge that the term is known as a derogatory or disparaging term to refer to Asian people. The USPTO denied the trademark registration on the grounds that the mark was offensive and disparaging.

It was argued on the one hand that denial of registration to offensive and disparaging marks is in essence government censorship. On the other hand, it was contended that if the USPTO were to allow registration of offensive and disparaging trademarks based on ethnic slurs that the government would effectively be endorsing or condoning hate speech.

However, the Supreme Court Justices reasoned that disparaging trademarks are not the intellectual byproduct of the government, rather trademark applicant’s dream up the trademarks and simply apply for registration with the government (i.e., registered trademarks are not government speech). The Justices took the position that speech, in the form of disparaging trademarks, should not be banned on the ground that it expresses ideas that some find offensive. The Justices’ decision effectively stands for the premise that offensive trademarks are protected speech.

Reasons Why Trademark Registration Will Not be Permitted

15 U.S. Code Section 1052 of the Lanhan Act specifically defines subject matter on which a trademark registration will not be granted and other reasons why a trademark registration may be denied. These include:

  • Trademarks That Resemble Other Registered Trademarks:

    A trademark registration will not be granted for any trademark that resembles another trademark that has already been registered with the USPTO for a particular category of goods or services, i.e., the applicant mark and the registered mark are nearly identical and are both intended for use in the same category of goods or services.

  • Trademark That is Confusingly Similar to an Existing Registered Trademark:

    A trademark registration will not be granted for any trademark that is confusingly similar to an existing registered trademark for use in a particular category of goods or services.

  • Flags and Coat of Arms:

    Trademark registration is not granted by the USPTO for any trademark that comprises a flag or coat of arms. This prohibition similarly applies to any trademark containing an insignia of the United States or any state or municipality. Nor can federal trademark registration be obtained for any trademark that includes a flag or coat of arms for any foreign nation or any simulation thereof.

  • Name, Portrait, or Signature of a Living Person:

    Federal trademark registration will not be granted for a trademark comprising a name, portrait, or signature of any living individual unless that living individual has provided written consent. A federal trademark registration will not be granted for trademarks comprising the name, signature, or portrait of a deceased president so long as his widow is living, unless the widow has provided written consent.

  • Trademarks That Falsely Suggest a Connection:

    Registration is denied to trademark applications that falsely suggests a connection between the good or service that uses the mark and a living or dead person, an institution that has no true affiliation with the trademark, or unjustifiably draws on associations with beliefs or national symbols.

  • Trademarks That are Merely Descriptive or Deceptively Misdescriptive:

    Any trademark application that is merely descriptive of a good or service will be denied registration (e.g., CREAMY as a trademark for use with ice cream is merely descriptive of ice cream). Similarly, any trademark that is misleading or deceptive, will be denied registration (e.g., HEALTHFUL as a trademark for deep-fried corn dogs).

  • Marks That are Immoral, Deceptive, or Scandalous: 

Trademark registration is denied for trademarks that are shocking to the sense of truth, decency, or propriety. Marks that are offensive, disreputable, disgraceful, and immoral are also denied registration. Vulgar, or profane, i.e., scandalous, trademark applications are denied federal trademark registration, as well.

A trademark is a useful intellectual property right that protects a word, company name, brand, or logo that is closely associated in the mind of the consumer with a specific good or service available in commerce. The purpose of a trademark is to help consumers distinguish the goods of the trademark holder from the goods of another. A trademark can be federally protected by registering the trademark with the United States Patent and Trademark Office (USPTO). As a general rule, trademark registration is granted for a mark that is used in commerce with a particular category of goods or services so long as the mark is not already in use by another, and the mark is not confusingly similar to another mark that is already used in commerce. There are other reasons why a trademark might be refused federal registration by the USPTO.

Trademark registration can be important to building and protecting your brand. If your trademark tends to be in the realm of offensive or disparaging, this recent update to trademark law could have an impact on your ability to obtain federal registration of your mark from the USPTO. If you have any questions or concerns about obtaining trademark protection at either the state or federal level, you can always reach out to an experienced trademark attorney at Revision Legal. Please feel free to contact us using the form on this page or by calling us at 855-473-8474.

4 Common Reasons for a Trademark Registration Refusal

When someone applies for a federal trademark registration with the United States Patent and Trademark Office (USPTO), it is possible for the trademark registration application to be refused. While this is often disappointing, it is possible to appeal a trademark registration refusal. An experienced trademark registration lawyer will be able to help you understand your trademark registration grounds for refusal and can help you try to overcome the refusal, either by providing evidence of secondary meaning associated with your trademark, or through the appeals process.

Most Common Grounds for Trademark Registration Refusal

There are several possible grounds for trademark registration refusal, which include:

  • Likelihood of confusion with an existing registered trademark.
  • The trademark is merely descriptive.
  • The trademark is deceptively misdescriptive.
  • The trademark is primarily merely a surname.

Likelihood of Confusion With an Existing Registered Trademark

One of the most common grounds for a trademark registration refusal is likelihood of confusion with an existing registered trademark. When a trademark application is filed with the USPTO, a trademark examiner reviews the applicant’s mark and intended field of use for the mark (i.e., the particular category of goods or services that the mark will be used in) and compares it to the realm of existing  registered trademarks in similar and related fields of use. If the trademark examiner finds that the applicant’s trademark is confusingly similar to an existing registered trademark that is used with a similar or related type of good or service, the examiner will issue a refusal.

The confusion between the two marks could stem from similar-sounding trademarks, trademarks that are similar in appearance, or trademarks that are too similar in their meaning. Misspellings of an existing registered mark, phonetic equivalents of an existing registered mark, unique stylization of an existing registered mark, or foreign word versions of an existing registered mark are all scenarios that are often considered confusingly similar and pose a likelihood of confusion.

Another way that two marks can be confusingly similar is if they have a similar overall commercial impression in the mind of consumers. If the consumer were to look at one of the marks, and then look at the conflicting second mark (i.e., the applicant’s mark), and the consumer would be confused because the overall impressions of the two marks are substantially similar, then the registration on the trademark on the second conflicting mark would likely be refused.

Two trademarks are only considered to run the risk of a likelihood of confusion in the mind of the consumer if the to trademarks are used in a similar or related category of goods or services. For instance, the two trademark DOMINO’S for a pizza eatery and pizza delivery service and the trademark DOMINO for granulated sugar do not run the risk of likelihood of confusion because the two categories of goods or services where each of these marks are used, respectively, are very different from one another.

In addition to being compared to existing registered trademarks, an applicant’s trademark will also be compared to other earlier-filed pending trademark applications. While refusals are only made against existing registered trademarks, the trademark examiner will notify the applicant of the existence of the earlier-filed pending trademark application that is confusingly similar to the applicant’s current trademark application.

The Trademark is Merely Descriptive

A trademark that is merely descriptive of the product or good that it is associated with will usually be refused trademark registration. More precisely, even if the descriptive trademark is directed towards a specific quality, characteristic, ingredient, feature, function, or purpose of the good or service associated with the mark, if the mark is only directed to describing anyone of these, it will not be enough to be distinctive in the minds of consumers.

The Trademark is Deceptively Mis-descriptive

If a trademark is used to deceptively misdescribe an ingredient, feature, characteristic, or some other aspect of a good or service that could reasonably be perceived by a consumer to be true (although it is not an accurate description), the trademark registration will be refused. A trademark should not be used to trick or deceive consumers into thinking that a good or service is something that it is not.  

The Trademark is Primarily Merely a Surname

From time to time a trademark applicant will try to obtain trademark registration on a trademark that is also a surname (i.e., a person’s last name). Examples could include “McMillan’s” for a craft beer, “Carol Readers” for book publishing services, or “Stevens” for a fast food restaurant. However if the purchasing public will consider the trademark to only be reference to a surname,  then the trademark examiner will likely refuse registration.

In situations where two surnames are combined, the USPTO might be persuaded to permit registration of the mark. Similarly, if the surname is fairly unique, the USPTO may allow the surname to be registered as a trademark.

For more common surnames, secondary meaning of the surname as a trademark is often required to overcome a refusal of registration. If the trademark applicant can show that the surname trademark has developed secondary meaning by its association with the product or service it is used with, it could be possible to obtain a trademark registration after all. Many surnames have successfully been trademarked, including:

  • MCDONALD’S
  • FORD
  • DISNEY
  • DEL MONTE
  • JOHNSON & JOHNSON
  • DELL
  • MOTT’S

There are other substantive bases for refusal of a trademark registration but the above identified grounds for refusal are the most commonly encountered by trademark applicants.

When Your Trademark Application has Been Refused

Based on the particular details of your situation, it may be possible to provide either evidence of secondary meaning for your trademark to show that your mark is distinct in the minds of consumers, or you could appeal the refusal. An experienced trademark attorney will be able to  explain your trademark registration refusal to you and can advise you on how best to proceed.  

Contact the trusted New York trademark attorneys at Revision Legal today to discuss your particular trademark concerns. We can be reached by either using the form on this page or by calling us at 855-473-8474.

hacking statistics

2017 Security Breaches: Frequency and Severity on the Rise

We are only six months into 2017, and we can already tell that it is going to be a bumper year with regard to instances of data security breaches. Looking back at the hacking statistics from 2015 and 2016, we should not be surprised at the number of security breaches that have already happened in 2017. Nor should we be surprised about how rapidly cybersecurity attackers are evolving their techniques to affect more computers and devices than ever before. Hackers’ reaches will only keep expanding as time goes on.

Reflecting on Hacking Statistics From 2015 and 2016

Data from the two previous years clearly indicates a pattern in which cyber security breaches are occurring ever more frequently. In 2015, for instance, there were more than 177,866,236 personal records exposed via 780 data security breaches, according to the ITRC Data Breach Reports. In 2015, hacks occurred in every single state in the US, and the breakdown of the breached targets by type of entity is as follows:

  • Businesses were the target of 40% of the security breaches (312 breaches).
  • Medical and Healthcare entities made up 35.4% of data breach targets (276 breaches).
  • Government or military targets made up 8.1% of cybersecurity breaches (63 breaches).
  • Educational institutions accounted for 7.4% of data breaches (58 breaches).

In 2016, hackers not only logged an uptick of 38% in their use of phishing type security attacks according to Key findings from the Global State of Information Security® Survey 2017 by PricewaterhouseCoopers, but it also became well-known that hackers were finding devices to target beyond computer systems and networks. Unsecure wireless medical devices, mobile devices, and even cloud architecture all came under attack in 2016. With security breaches arising on multiple fronts, companies, healthcare systems, governmental and educational entities, and individuals started to realize how real the threat of cyber security attacks was. In order to combat attacks, people began to increase their use of data security protection measures in 2016:

  • 52% of individuals, businesses and entities utilized intrusion detection tools.
  • 51% actively monitor and analyze security information for their vulnerable systems.
  • 48% conduct vulnerability assessments.
  • 47% utilize security information and event management tools.
  • 47% regularly conduct cyber security threat assessments of their systems.
  • 45% are subscribed to a threat intelligence service.
  • 44% engage in data system penetration testing.

List of 2017 High-Profile Breaches

So far this year there have been many high-profile data security breaches potentially affecting millions of individuals’ payment card (e.g., credit cards and debit card) information, personal identifying information (e.g., first and last name, Social Security numbers, address, birthday, etc.), and medical records.

  • Chipotle Payment System Hack: Between March 24 and April 1, malware was at work inside Chipotle’s payment system collecting payment card informations from customers. According to news reports, virtually all of Chipotle’s customers who visited a Chipotle Mexican Grill restaurant during this timeframe were potentially exposed.
  • Hackers Set Off Emergency Weather Sirens in Dallas: On April 7, hackers accessed and set off all 156 emergency weather siren system in Dallas, Texas. The incident started at 11:45pm local time and lasted for 90 minutes, affecting 1.3 million residents of the city.
  • Gmail Phishing Scheme: Hackers collected login credentials for more than 1 million Gmail accounts with a phishing campaign. The phishing email appeared to be from a close email contact containing an attachment. Once the recipient clicked on the attachment, a fake and practically identical Gmail login page appeared prompting the recipient to log into his or her Gmail account.
  • The IRS Under Assault: The IRS was hacked twice already this year. In the first data breach, which occurred in February, some 464,000 Social Security numbers were stolen and of those, at least 100,000 were used to successfully access a user’s E-file PIN. In the second data breach, which was reported in April, more than 100,000 student taxpayers had their personal information stolen due to a security breach of an online tool that is used by students to apply for financial aid for school.

The Biggest, Baddest Hacks of 2017 So Far

Hackers in 2017 have been ambitious, to say the least. This year there has been a marked increase in the scale of cyber attacks, with multiple successful cyberattacks made on a global scale. At the beginning of May, hackers launched a global cyberattack on multiple entities around the world, according to the New York Times. Using a piece of stolen malicious software originally created by the National Security Agency, hackers took down computer systems around the world. Russia’s Interior Ministry was knocked off-line, as were multiple health systems across the UK, leaving the affected hospital systems to turn away patients because the facilities could not function without access to their computer systems. Overall, computer systems in 74 countries were impacted, with Russia, Ukraine, India and Taiwan suffering the most from the cyberattack.

In another cyberattack that affected the entire world, thousands of Microsoft Windows computers across the globe where hijacked by the WannaCry ransomware cryptoworm. The WannaCry malware held user files hostage by encrypting the content of the files and demanded a Bitcoin ransom before the files would be unlocked/unencrypted. More than 200,000 computers in 150 countries were affected by the WannaCry malware. Some of the most well-known victims of the cyberattack include FedEx, Britain’s National Health Service, and Spanish telecom giant Telefonica.

Take Steps to Protect Your Business From Cyber Security Breaches

Cyber security breaches are a real threat, whether it is to your business, the institution that you work for, or to your own personal computer system and devices. When you are hacked, or information that was entrusted to you was potentially accessed in a data security breach, you need to act quickly to understand your rights and obligations concerning notification of potential victims. You should retain the assistance of an experienced cyber security attorney like the professionals at Revision Legal. Contact us today using the form on this page or by calling us at 855-473-8474.

Photo Credit to Flickr user Jim Kaskade.

Editors note: this was originally published in December, 2016. It has been updated for clarity and comprehensiveness.

How Startups Can Protect Their IP Rights

For businesses that are just starting out, intellectual property (IP) rights can be immensely valuable. Your IP rights could be the business asset that sets your company apart from your competitors. Equally important to growing a fledgling startup is entering into strategic and valuable business relationships with mature companies that can offer synergistic benefits for the startup.

IP and business relationships are so important to a new startup’s goals of achieving growth and ultimately business success, it is important to take steps to protect your startup’s IP when entering into new business relationships.

Start by Speaking With an Experienced Intellectual Property Attorney

Protecting your startup’s IP rights when entering into new business relationships starts by having a conversation with an experienced intellectual property attorney. The legal options that are available to your startup depend on your specific circumstances, and the concepts might seem overly complex at first.

When it comes to protecting your startup’s valuable IP assets it is imperative to have a firm understanding of how the agreement you are planning work, what specific rights and responsibilities you have under the terms of your agreement, and what protections are afforded to you and your startup under the agreement.

An experienced business lawyer can help by explaining your options to you, and how each one works, which empowers you to make the best decisions possible while protecting your startup’s IP rights.

There are a number of useful business agreements that a startup can use to grow through partnership with another company. Below is a brief discussion of the four main types of business agreements that involve intellectual property rights and are commonly encountered by startups entering into business relationships with other companies.

These four main types of business agreements include: IP licensing agreements, technology licensing agreements, joint venture agreement, and collaborative R&D agreements.

Using IP Licensing to Protect Your Startup’s IP Rights.

Entering into a licensing agreement with a new business partner concerning your startup’s IP is a good way to protect your invaluable IP assets, and the deal could potentially result in licensing revenues for your startup. IP licensing is the most commonly used mechanism by which startups protect their patents, trade secrets, trademarks, copyrights, etc., when entering into a collaboration or partnership with another company or entity.

IP licensing agreements afford the startup a lot of control over who can use their IP assets, how those assets can be used, and for how long they may be used. Licensing agreements can be versatile and put a definitive end date to when the license expires and are often difficult to extend, forcing the parties to renegotiate a new IP licensing agreement.

Entering into a Technology Licensing Agreement

Sometimes it makes sense to enter into a technology licensing agreement by which the startup either gains access to another party’s technology or grants another party access to its own technology. Technology licensing is a common tool used by companies in the technology sector to gain access to useful and innovative technologies, such as proprietary hardware, software, or technological processes.

In addition to being granted permission to use the technology, licensees are usually also granted access to guidance or instruction on how to use the technology. The parties agree to mutually acceptable terms of how the technology will be used and royalty rates, and will also include a license to use the respective IP rights associated with the technology.

Entering into a Joint Venture

Sometimes in business it makes sense to enter into a long-term partnership with another company. This is called a joint venture. Joint ventures are a common tool used by larger companies that are interested in the work that a startup is doing. Larger companies often use joint ventures with startups to expand their business into new markets and new product areas.

Each party to the joint venture brings with it its own intellectual property rights and from those intellectual property rights new intellectual property rights are likely to be created as the joint venture sets to work creating new products. A joint venture agreement should detail which parties are contributing IP rights to the joint venture, how those rights are to be used, and how any future IP rights generated by the combined efforts of the joint venture will be shared.

Participating in a Collaborative Research and Development Agreement

For some startups, the best collaborative approach for engaging in a specific new endeavor is to partner with a larger company via a collaborative research agreement. An agreement to collaborate in the development of a new product or technology is a narrow form of a joint venture.

The purpose of such agreements is to develop a new product or technology and then to share in the revenue generated by the commercialization of the new product or technology. It is common for the startup to contribute substantially to the research and development of the product or technology while the larger company often bankrolls and provides resources and support for the research project, but other arrangements are also possible.

Business Contracts Play an Important Role in Protecting IP

Business contracts are supremely important in business, especially when a startup is looking to join forces with a larger, more experienced business partner. An experienced business lawyer who has a solid understanding of intellectual property rights and licensing will be able to advise your startup on any agreements you may be considering.

When You are Concerned That Your Trade Secret has Been Misappropriated

Business partnerships can have immense value to a startup, but when valuable intellectual property rights are at stake, it is critically important for the startup to make sure that the business agreements it is entering into provide specific protection for the startup’s IP rights. It is always a good idea to have a skilled business lawyer review any business agreement before you sign to make sure that your rights are protected. Please do not hesitate to contact the professionals at Revision Legal today by using the form on this page or calling us at 855-473-8474.

The Importance of Non-Compete Agreements

It is a common business practice for employers to require their employees to sign a non-compete agreement as part of the terms of their employment. Use of non-compete agreements are a particularly popular practice in situations where the employee will have access to sensitive or confidential business information as part of their routine job duties. While it may be impossible to prevent someone from leaving a particular job, non-compete agreements can be used to prevent the former-employee from working for a competing company.

What is a Non-Compete Agreement?

A non-compete agreement is a legally binding agreement between the employer and the employee that prevents the employee from competing with his or her employer after the employment relationship has terminated for a set period of time in a specific geographical region. The purpose of a non-compete agreement is to discourage and/or prevent an employee from leaving a position with an employer and taking a new position with a competitor in which he or she can utilize any valuable information gleaned while working the previous job.

Non-compete agreements help employers to protect a company’s goodwill and trade secret information and are also often used as an effective tool for retaining talented employees from making a move to a competitor, which enables the company to benefit longer from its investment in training valuable employees. One thing that non-compete agreements cannot do is put limitations on an employee’s right to earn a living once he or she leaves an employer. The courts do not look kindly on non-compete agreements that place unreasonable restrictions on an employee’s ability to earn a living once leaving a job.

What Needs to be Included in Non-Compete Agreements?

In order for a non-compete agreement to be legally valid the agreement must:

  • Be for the purpose of protecting a legitimate business interests of the employer (such as retaining valuable clients or customers or valuable business information),
  • Be reasonable in scope, time (i.e., duration), and geographical restriction (i.e., the non-compete agreement is only enforceable within a set number of miles from where the employer is located), and
  • Be supported by consideration (i.e., money or some other benefit to the employee) when the agreement is signed by the employee.

Employers that are considering using non-compete agreements with their employees need to consider to what degree non-compete agreements will help protect the company. If there is a real risk that key employees can make off with confidential business information and take that information to a competitor, then the adoption of a non-compete agreement might be a smart move for protecting legitimate interests of the company. But it is also important for companies to realize that some employees pose very little risk in terms of loss of confidential information and may not necessarily need a non-compete agreement, especially if those employees are never exposed to confidential business information.

Reasonableness is Key for Non-Compete Agreements

What the non-compete agreement prevents the employee from doing, for how long, and in what geographical region must be reasonable for the non-compete agreement to be upheld by the court if it is ever disputed by the employee. What is considered reasonable for these specific terms depends on the particular industry, type of business, and whether enforcement of the non-compete agreement would cause detriment to the public.

By way of example, it would be unreasonable to require an employee to sign a non-compete agreement that lasts indefinitely or that is applicable to the entire United States because these restrictions unfairly and unreasonably place restraints on employees’ ability to earn a living once terminating their employment relationships with their former employers. In another example, a non-compete agreement for a highly specialized doctor might be unenforceable if enforcing the non-compete agreement would deprive the public of access to the much-needed specialized doctor.

When the court finds a non-compete agreement to be unreasonable in terms of scope, time or geography, the court may exercise discretion by either modifying the non-compete agreement to narrow the scope, duration, or geographical restrictions, or the court could choose to hold the non-compete agreement unenforceable in its entirety.

The Rules Concerning Non-Compete Agreements Vary From State to State

There are no broad federal rules that cover how non-compete agreements work. Rather, the rules that govern non-compete agreements vary from state to state. Some employers are surprised to find out that one state is receptive to non-compete agreements while other states are strongly opposed to their use. This can be a particularly significant problem if the employer expands the company into a new state without conducting thorough legal research on the employment laws of the state and taking the temperature of general perception of non-compete agreements by the state’s courts before making the move.

Non-compete agreements can be a good way to establish expectations and ground rules for employees at the outset of their employment. A non-compete agreement can clarify expectations that employees who leave their employment situations with the company are expected to also leave behind company information, data and property when they go.  

Striking a Balance and Setting Expectations

You need your company’s non-compete agreements to be valid and enforceable. Preparing a legally valid non-compete agreement for incorporation into your employment agreements and hiring paperwork can be challenging because it requires striking a balance between protecting your company’s legitimate business interests and not preventing the employee from pursuing a living once the employer-employee relationship is terminated. You need to protect your business interests and rights without creating a risk of future litigation by way of a non-compete agreement that is overly restrictive.

Business attorneys can help prepare a non-compete agreements that are right for your business. Your lawyer can also help you if you have concerns that an employee has breached a non-compete agreement. Revision Legal has helped business owners prepare non-compete agreements and other business contracts as needed. Please feel free to o contact our office at Revision Legal today by using the form on this page or calling us at 855-473-8474 if you need assistance preparing or enforcing a non-compete agreement.