Well I have already blown my New Year’s resolution to post something once a month on this blog.  Shame on me.  I have no excuse other than writer’s block.  However, someone recently unlocked the block when she asked what can a trademark lawyer do for her when it looks like anyone can file their own application online through the USPTO website.  True, the PTO has a website that makes filing trademark applications online very easy and in fact they have created a new few structure that is designed to encourage the use of electronic filing.  All would seem well and good and all of us trademark lawyers should go about and learn something else like family law (yuck) or tax law (double yuck).  However, being able to navigate the website and file a trademark application is not the same as being able to proseucte an application.  A PTO Trademark Examiner friend of mine recently told me that she was spending more of her time on the phone with unrepresented applicants trying to explain to them what their problems are.  Of course, one thing neither she, nor any other PTO employee can do, is provide you legal advice.  After all, they represent the government of the United States, not you.  The PTO keeps your fee money whether you get a registration or not.  That’s why you need a private practice trademark attorney to help you navigate the mine fields that often crop up during the prosecution of the application.

One of the first things that needs to be done is to determine if anyone else has filed a trademark application or registration that is going to block you from getting a registration.  If there is, you will waste your money filing an application and you may end up getting a cease and desist letter from the prior registrant.  (See my postings from January).  Trademark attorneys spend years analyzing likelihood of confusion issues.  There are many nuances that go into likelihood of confusion determinations.   Those skilled in the trademark biz understand those nuances and can help you navigate your way through them.  There are also other issues that appear easy but can be fatal to an application.  For example, I don’t know how many times people send me marks to file (especially those that are filed based on intent to use) and then months later send me a specimen that doesn’t match the mark or don’t promote the goods or services that the application identified.  This can range from being fixable to something that is absolutely fatal. 

The bottom line is that just because something looks easy on its face doesn’t necessarily mean that it is easy in fact.  I spent a day last month on vacation in Pensacola, Florida where I went to the Naval Aviation Museum.  The museum has life size fighter jet simulator that you can pay your money and play Top Gun for 10 or 15 minutes.  I only crashed the plane 3 out of 5 times, but if I had been in a real jet I would have been killed three times.  That hardly makes me ready to take the controls of an F-16.  The point of the story is that the simulator seems easy enough to operate at first blush and the fact that I landed safely, albiet sloppily, doesn’t make me a naval pilot so I will leave the flying to someone who knows best how to do it.  That’s why a trademark attorney of your choice can help you go through the trademark process easier and in some cases more economically that the DIY method.   

    For my first Blog topic I thought I would comment on CEASE AND DESIST letters. As an attorney, I have written such letters on behalf of clients and I have had to answer them for clients. Cease and desist letters are tools that trademark and copyright owners use to warn people who they believe are infringing their rights in trademarks or copyrights as the case may be. The main purpose is to put the recipient notice of the owner’s rights and give the recipient a chance to stop the activity before going to all out war in a court of law over the issue. The tone of the letter can be relatively friendly or it can be forceful depending on the egregiousness of the situation. Most often, those who send the cease and desist letters are large, well funded companies that know that the recipient is most likely a smaller business with limited financial resources who they hope will be “scared straight” and change their mark or stop their trademark or copyright infringement without being hauled into court and incurring a ton of money in legal fees for their defense plus encountering the uncertainty that damages, attorneys fees and costs could be assessed against them. Even if the Plaintiff’s damages and attorneys fees are not assessed against the Defendant, the Defendant will still have to incur many thousands of dollars in fees defending themselves and there is still the possibility that an injunction could be issued making the Defendant stop.

Since more of my clients tend to be smaller businesses, I usually end up responding to more cease and desist letters than writing them. Therefore here are some things to remember if you get a “cease and desist” letter:

1. DO NOT IGNORE IT! Sticking your head in the sand won’t make the problem go away. It will usually begat a second, more ominous letter or if the sender is really upset, a lawsuit. Contact the lawyer of your choice, preferably someone who handles trademark and copyright issues most of the time, as soon as possible. You may find out that you have a valid defense, such as common law priority, or the sender may just be flat out wrong about whether you are actually infringing. Keep in mind that they may be banking on you changing your mark without having to go to the trouble or expense of suing you. If you stick up for your rights, then they may think twice about going further with it.

2. CHECK YOUR INSURANCE POLICIES! Many people think that there is no such thing as trademark infringement insurance – but there is and you may unknowingly already have it! If you have it, it would most likely be in a commercial general liability insurance policy. This is the same insurance that covers your business in the event of a fire, storm and claims from customers for personal injuries due to slipping on a banana or something in your business. It is usually contained in a clause called ADVERTISING INJURY. Trademark infringement has been held by courts as a type of advertising injury that such policies should cover. If you own, finance or rent a building or office space, the odds are your lender or landlord requires you to carry such insurance. If you work from your house, then the odds are you don’t have it because most homeowner policies won’t cover business uses of your home. Contact your insurance agent as soon as possible, preferably right after you hang up with your lawyer. Many insurance companies don’t even understand what advertising injury is because they are more accustomed to handling claims involving fires, tornados and banana peel accidents. They will often initially deny the coverage, so they have to be educated on the fact that the policy does cover it. However, such policies also usually require that prompt written notice be given or they won’t cover it even if it would otherwise be covered. In other words, don’t wait until the case goes to trial to contact your insurance company. Start the process early. If you don’t have a commercial liability policy and you get a cease and desist letter, don’t count on getting coverage after you receive the letter. This will essentially be like a “pre-existing condition” and it won’t cover it.

Sending a Cease and Desist Letter - If you own a trademark or copyright and you think a competitor is ripping you off by infringing your intellectual property rights, then send them a cease and desist letter. Failure to enforce your rights can cause you to lose them. Even small businesses should not be afraid to send a cease and desist letter, but before you do, contact a lawyer to get help with it. Having a federal trademark registration can make your claim stronger, but it is not absolutely necessary. Having a federal copyright registration is necessary for copyright infringement especially if you end up having to sue somebody. You need to make sure you have your ducks in a row so that the recipient knows you mean business. A cease and desist letter puts the infringer on notice of your rights and gives you a clear beginning point in time to calculate damages if they ignore you and you have to sue. However, the downside to sending a cease and desist letter is that you need to follow up with further action if the infringing activity is not stopped. If you send a letter and then do nothing for several months or years, you could be barred from any recovery for damages based on the concept of laches. This is like a statute of limitations and the date on your letter gives a clear beginning point to calculate the beginning of the laches period. In short, don’t use the letter as a bluff. If your bluff is called, then it could back to haunt you later.

    It has been quite some time since I have put any updates on the website. There are a number of reasons slash “excuses,” but I have resolved in 2007 to try to put something new and useful regarding trademark or intellectual property law on this website AT LEAST ONCE A MONTH! Blogging has become more popular so I have decided to jump on the blogging bandwagon and create this blog on Trademarkguru.biz. In this space I will offer my comments and observations about some aspect of the law that hopefully will be useful to you. If you have a comment or suggestion for the TM BLOG email me. I would like to have your input. So here goes for my first installment –