You have selected your new trademark, service mark or business name and have paid marketing and advertising professionals handsomely for their services.  You have also spent money for air time, print media, catalogs and brochures to advertise the benefits of your new products and proudly displayed your trademark.  When you finally speak to a trademark attorney to protect your trademark rights, you receive bad news: your trademark is not protectable or enforceable and your competitors can freely use your mark to describe and sell their products.   

The “Rooibos” trademark case illustrates why your trademark attorney should be involved in the early stages of trademark or business name selection.  “Rooibos” was used on tea products and was registered with the U.S. Patent and Trademark Office (“PTO”) for many years and was purchased by an unsuspecting business.  After numerous costly court battles in an attempt to protect and enforce the trademark, the registration was cancelled because “Rooibos” is the generic name for the plant used to make the tea products.  To decrease the possibility of making such a costly mistake, we suggest that, at the very least, these guidelines be followed: 

1.                  Consult With a Trademark Attorney.  It is very important that you consult with a trademark attorney that has extensive trademark registration experience in the early stages of the process.  You should not assume that an attorney is experienced in trademark law.  One thing you can do is to look them up on the PTO’s web page, www.uspto.gov, to make sure that they have previously registered numerous trademarks.   

2.                  Strong Trademark.  The trademark attorney will be able to help you navigate through the trademark strength spectrum to select a strong, protectable trademark.  It is best to select a trademark from categories (a) through (c) listed below, with (a) and (b) being the easiest to register and protect. 

a.       Fanciful Trademark - Strong.  A fanciful trademark is a made up word that only functions as a trademark or service mark.  Pepsi® and Xerox® did not exist in any language before they were chosen as trademarks for drinks and copy machines. 

b.      Arbitrary Trademark - Strong.  An arbitrary trademark is a word that exists but has no meaning when used on the product itself.  “Apple,” when used on computers is a strong trademark because it doesn’t describe a quality or characteristic of the computer. 

c.       Suggestive Trademark - Strong.  A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services.  Greyhound® for bus services is a suggestive trademark because a customer has to use imagination to conclude that the bus travels as fast as a greyhound dog. 

d.      Descriptive Trademark - Not Strong.  A descriptive trademark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service.  While it is tempting to select a descriptive mark because of the ease in recognition of the goods or services provided, they are only protectable if used and advertised over a period of time so that consumers associate the mark with the good or service with which it is used.  Honey-Baked® for hams and No Spot® for a car wash system were initially deemed descriptive of the products and services. 

e.       Generic - Weak and Unprotectable.  Generic terms or common words for the products or services cannot function as a trademark because it would prevent others from rightfully using the common name for the product or service that they make.  Super Glue, after a costly court battle, was deemed generic when used on a strong, rapid setting glue and not entitled to trademark protection.   

3.                  Trademark Search - No Conflicting Trademarks.  Once you have selected a few strong trademark candidates, the next step is to clear the trademarks by searching registration records to make sure there are no previous trademark right holders that would prevent your use.  There are many traps for the unwary, for example, a previously registered trademark does not have to be identical to your proposed trademark to prevent your use.  Blue Shield® and Red Shield, for example, have been held to be confusingly similar and the courts ordered that Red Shield not be used for insurance services. 

4.                  Domain Name Availability.  In today’s technological world, you have to make sure that the .com extension is available for your trademark.  Don’t use hyphens in your domain name because that will send your traffic and customers to another site.  Also, don’t misspell common words because that will unintentionally direct your traffic and customers to another site.  You should also register the .net and .org extensions for your trademark to reduce the possibility of cybersquatters registering your domain name with those extensions. 

5.                  Register Your Trademark.  You need to properly and quickly register your trademark with the PTO in order to receive the most protection for your investment and to develop the valuable asset that you have just added to your business.  Your experienced trademark attorney will be able to properly register your trademarks and avoid many common pitfalls in the application process. 

Your trademark or service mark is a valuable asset in that it establishes goodwill with your customers.  It is critical that you ensure the trademark you select is one that you can register and protect.  If you need assistance in selecting and protecting your trademark, please contact Mr. Milord Keshishian by e-mail at milord@milordlaw.com or call (310) 446-8970.  Mr. Keshishian is an attorney focusing exclusively on intellectual property law and has extensive experience in all aspects of trademark, patent, copyright, trade secret, unfair competition and domain name law.  Further information can be found at www.milordlaw.com.  This article is for informational purposes only and does not establish an attorney-client relationship. 

© 2006, Milord Keshishian 

Bruce Springsteen may be known as “The Boss,” but he is not The Boss when it comes to controlling his trademark as a domain name. The famous rock ‘n’ roll singer lost his www.brucespringsteen.com domain name arbitration dispute to a notorious cybersquatter partly because he had never registered his name as a trademark with the United States Patent and Trademark Office (“USPTO”). If it can happen to Springsteen, it can happen to you. Here are seven reasons why you should become and remain The Boss of your trademarks by filing for federal registration.

(1) Valuable Asset. In today’s Internet economy, trademarks are a valuable asset for companies of any size and federally registering your trademarks with the United States Patent and Trademark Office (“USPTO”) grants you valuable national rights to the trademarks. Coca-Cola® is consistently ranked as one of the world’s most valuable trademarks with annual revenue generating capacity in the billions of dollars.

(2) Nationwide Priority. By registering your trademarks federally, you preserve the right to expand your business into geographic regions of the country where you have not previously conducted business. If you do not have a federal registration and you have only used your trademark in, for example, California and Nevada, another person that later files an application for registration of the same trademark — even after you had started use thereof — can prevent your use of the trademark in any other states other than California and Nevada.

(3) Tool Against Cybersquatters. If a cybersquatter is infringing on your trademark by registering it as a domain name, federal registration of your trademark is one of the elements considered in legal proceedings to determine the rightful owner of the domain name. In addition, federal registration allows a hold to be placed on the domain name until the ownership dispute is determined through arbitration or by a court, thus preventing the erosion of the goodwill and value in your trademarks. In a matter handled by our office, because our client held federal trademark registrations, we were able to force a cybersquatter to relinquish an infringing domain name without incurring litigation expenses.

(4) Advantages in Court. Having a federally registered trademark provides the advantage of a legal presumption that you are the owner of the trademark, that the trademark is valid, and that you have the exclusive right to use the trademark nationally. The federal registration certificate provides a “stamp of approval” in the mind of a judge or jury that you are the rightful owner of the trademark. Furthermore, a federal registration provides the right to sue in federal court assuring oversight by judges that are more familiar with trademark matters than those in the state courts.

(5) Enhanced Remedies for Infringement. A federal registration provides notice and acts as a deterrent to potential infringers that you are the exclusive owner of the trademark. A federal registration allows for tripling of the actual damages suffered by the owner, plus attorneys’ fees if someone infringes on your trademark.

(6) Prevent Importation. A registered trademark may be filed with U.S. Customs Service to prevent importation and allows for seizure of infringing foreign goods.

(7) Incontestable Trademark. After five years of continuous use and registration on the principal register, certain grounds for cancellation of a registered trademark are foreclosed, thereby saving you tremendous litigation expenses. In another case handled by our office in which we represented the owner of an unregistered trademark that had been in use for over five years, the client was forced to expend litigation resources defending attacks on the validity of its trademark which would have been foreclosed by the five year registration.
The nominal costs involved in federally registering your trademarks are clearly outweighed by the significant financial and legal advantages afforded to you. In order to be The Boss of your trademarks, you should apply to register them as soon as possible.

Milord Keshishian
Milord Keshishian is an attorney protecting his clients’ businesses, inventions and investments by pursuing patent, trademark and copyright protection therefore. Mr. Keshishian also has extensive experience in litigating patent, trademark, trade secret, domain name and unfair competition matters, as well as counseling clients in transactional matters surrounding technology acquisitions and other ventures.  For further information, please visit www.milordlaw.com or send e-mail to milord@milordlaw.com.  
 

Business owners always ask me, what is the best way for me to advertise my business on BurbankGlendale.com?  Here is my advice to current and future businesses interested in increasing their visibility and “ad value”. 

First of all, what do I mean by “ad value”?  “Ad value” refers to the effectiveness of your overall advertising campaign with BurbankGlendale.com. For example, Business A and Business B are both paying the same amount of money for the same service provided by BurbankGlendale.com.  Business A follows the steps outlined below and increases his “ad value”, Business B has not even looked at his listing since his initial sign-up.  Business A has a higher ’ad value’ and hence a higher customer response from BurbankGlendale.com then Business B.

It’s simple to tweak your ad to increase your ad value. Just follow the steps outlined below.  You can visit your advertiser login section at http://www.members.burbankglendale.com/ to make the necessary changes.

1:  Make sure all of your contact information is correct.  If your customers can’t reach you, you can’t sell to them. You can do a business directory search to find your business.

2:  Do you have all 6 of your pictures loaded and updated?

3:  If you are offering a discount or a promotion, it needs to be clear and explain what the customer has to do to redeem it.  If they need to print out the page and bring it in, make sure you specify that.

4:  The special comments section should have all of the important information you would like customers to know.  It should include a hook, something that sets your business apart from everyone else in the directory.

5:  We provide a one page website for any BurbankGlendale.com advertising business that wants one.  From my experience only a hand full of businesses actually provide us with text necessary for their website. If we have constructed a one page website for you, take a look at it and let us know if there are text changes that need to be made. 

Unfortunately this is the only section of your advertisement that can not be changed by you.  You can email your request to info@burbankglendale.com.  Be sure to specify your business and contact name.

6:  Tracking is an important element of a successful ad campaign.  Each business needs to know where their customers are coming from:  Referrals, Friends, Repeat Customers or Advertising (New Customers).  You will be surprised if you track your customers for one month.  It will give you a valuable insight into your operation and at the same time dissolve some of the myth that “…I don’t need advertising…”

If you take the steps above you should be able to increase your “ad value” and effectively reach new customers on BurbankGlendale.com. As always if you have any questions or concerns please contact us.

Please post any additional tips that might help to build more success for our business partners/advertisers.

Thank you for your time,

Eduard Arakelyan
Marketing Director
BurbankGlendale.com

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