Monday, June 7, 2010

Trademark Yourself Part II

By Samuel Lewis Published in The Business of Photography
Trademark Yourself Part II
In the first part of this article, we addressed some of the key reasons why a photographer should make use of trademarks and how to use and clear that trademark. In this conclusion, we'll go over how to acquire your trademark and the registration process.

Acquiring Trademark Rights And Deciding Whether To Register

Trademark law varies from country to country. While trademark rights may be acquired through mere registration in some countries, the United States takes a different approach in that trademark rights are generally acquired only through use. In fact, since "common-law" rights arise from the proper use of a trademark, many businesses end up acquiring rights in a trademark without even realizing that they have done so.

Wedding photographer Shannon Norton, owner of the Lehi, Utah-based studio Model Bride Photography, discovered that she had acquired common-law rights after receiving a call from the owner of the trademark "MODELBRIDE" demanding that Norton rename her business. "The owner [of MODELBRIDE] wanted to be the only website to come up when someone performed a Google search," says Norton. Ultimately, Norton was able to establish that she had common-law trademark rights, which effectively ended the confrontation.

While common-law rights may be sufficient for some, there are several significant advantages to obtaining a federal registration. These advantages include the following.

• Presumptions. Since federally registered trademarks go through an examination process, a trademark registration carries with it certain presumptions, including the presumption that the trademark has acquired secondary meaning (which means that it's able to identify a given source of goods or services). These presumptions become particularly important when you seek to enforce your trademark rights. For example, with the presumption of secondary meaning, a trademark owner bears the burden of proving that his or her trademark has secondary meaning (the cost of proving secondary meaning far outweighs the cost of registration and related maintenance fees that must be paid for a federally registered trademark).

• Constructive Notice. A federal trademark registration provides constructive notice to anyone else anywhere in the country seeking to use the same or confusingly similar trademark. As a related benefit, registered trademarks are included in the database used by trademark examiners when considering new trademark applications to determine if the new trademark is confusingly similar to any existing trademarks.

• Remedies. The owner of a federally registered trademark may also recover greater damages in an action for infringement (which can be as much as three times the infringer's profits or damages).

• The Right To Use The Registration Symbol. Only owners of federally registered trademarks are permitted to use the registration symbol (®) with their trademarks.

There's one partial exception to the general rule that U.S. trademark rights are acquired through use, and that is what's referred to as an "intent to use" (ITU) trademark application. The ITU application affords a business that has a good-faith intent to begin using a trademark the opportunity to formally clear the mark for registration and to establish priority over those who would seek to later adopt the same or a confusingly similar mark. Ultimately, however, the ITU application still requires proof of actual use of the trademark before the USPTO will issue a trademark registration.

At this point, you may be asking whether pursuing a federal trademark registration is worthwhile. To answer this question, you should consider whether:

1) you're using a trademark to identify your studio or business;

2) you're devoting money and resources to advertising and promoting the studio or business identified by the mark;

3) your services implicate interstate commerce (although this last question can be complex, if you're advertising and/or working outside of your local area, or if your work is being published outside of your local area, odds are that your services implicate interstate commerce).

If you've answered "yes" to each of these questions, then you're likely to find that the application and maintenance fees are insignificant compared to the ability to protect the investment you've made, and will continue to make, in advertising and promoting your studio or business. If you ever find yourself in a position where a competitor is trying to benefit from the advertising and marketing that you've done, you'll be thankful that you made the investment of formalizing your trademark rights.

Contrary to the common misconception, you don't have to be involved in franchising in order to make formal trademark protection worthwhile.

The Registration Process And Trademark Maintenance

Once you've made the decision to register your trademark, the process is fairly straightforward. As you may expect, in this day and age when just about everything is available online, the application can be completed and filed online, too.

Before working on your trademark application, you'll need to prepare a JPEG or PDF file containing a specimen showing your use of the trademark. For the average photo studio or photographer's business, this may be as simple as a flyer or advertising for the studio or business showing how the trademark is used. If the trademark you want to register incorporates any sort of design—anything beyond words comprised of basic letters—then you'll also need to prepare a JPEG or PDF file containing the trademark by itself. You'll need these files to complete various sections of the application.

When selecting the online form to file, you want to select the application for registration on the "Principal Register." You should avoid the form for registration on the "Supplemental Register," as that generally exists for trademarks that aren't entitled to be registered on the "Principal Register."

The application fees for trademarks are based upon the number of classes of goods or services included in the application. Various types of goods or services are divided into different classes. Classes 1 through 34 relate to goods, while classes 35 through 45 relate to services. The most likely classification for photo studios or a photographer's business is services in class 41; in certain cases, the description of services can be as simple as "photography services." The application fees for a trademark are $325 per class of goods or services ($375 per class if you file the paper application instead of using the online registration system). If you have all of the materials that you'll need to file your trademark application and are comfortable functioning in the electronic (as opposed to paper) world, you can take advantage of the simplified TEAS Plus application, which costs $275 per class of goods or services. If you use the simplified TEAS Plus application, you'll be required to select the description of goods or services from a preset list, which will include "photography services."

At some point after the application is filed, the application will be assigned to a trademark examiner who will review the application to ensure that it's complete and to determine whether it's confusingly similar to any registered trademarks or pending trademark applications. If the examiner determines that there are problems with the application, the examiner will begin what's referred to as an "Office Action," in which the examiner will formally identify problems, and the applicant will have the opportunity to respond. In some cases, such as where the only impediment to registration are minor problems with the application, the examiner will conduct the proceeding informally (sometimes even over the telephone).

After filing her application for a trademark registration for "CARA MIA STUDIO®", Diamond Bar, Calif., photographer Silvia Boozell received a call from a trademark examiner. Since the term "Studio" is descriptive, the examiner explained that Boozell couldn't claim exclusive rights to the term. After Boozell agreed to amend the application, the trademark examiner entered an Examiner's Amendment containing the necessary disclaimer for the term "Studio."

Once the examiner clears the application, there's still one more critical step before the registration issues: publication. All trademarks approved for registration are published in the USPTO's official publication, the Official Gazette. Once published—the phrase commonly used by the USPTO is "published for opposition"—other trademark owners and businesses have 30 days in which to seek to challenge your application. If there's no challenge within 30 days, the registration for your trademark will issue, and you'll receive the formal registration certificate from the USPTO.

The key pitfall associated with the process of obtaining a federal registration is the time it can take for the registration to issue. If everything goes smoothly, the entire process can take anywhere from eight to 12 months. The good news is that once your trademark is registered, the registration is good for 10 years and is renewable for successive terms. The time requirements for the preparation and filing of renewals and other related filings are trivial in comparison.

In order to keep the registration active after it issues, a trademark owner is required to periodically file certain documents and pay certain fees. Between the fifth and sixth years after the registration issues, trademark owners are required to file an affidavit confirming that the trademark owner is still using the trademark. The fee for filing the affidavit is currently $100 per class. If the trademark owner wants to renew the registration, the owner must file a renewal application together with the appropriate fee between the ninth and 10th year after the registration issues.

Postregistration Considerations

Once you obtain a trademark registration, you should use the registration symbol ® with your trademark. Doing so will help ensure that competing businesses have actual knowledge of your registration. However, you should also take care to use the trademark properly. This means only using the registration symbol when you use the trademark as an adjective, rather than as a noun.

It's also important to police your trademark. In some respects, a trademark registration is effectively a "hunting license:" While the registration gives you a right to prevent others from using the same or confusingly similar trademark, you must still attempt to find the infringers, and once discovered, make the effort to prevent continuing infringement of your trademark rights. This may also involve turning instances of infringement over to your local trademark lawyer, who may be able to resolve the matter through a well-drafted letter or who may be left with no option but to pursue litigation in order to enforce your trademark rights.

An Ounce Of Prevention

Some photographers may ultimately decide that the cost of formalizing and enforcing trademark rights outweighs the benefits. Others will view enforcing trademark rights as a means of safeguarding the investment they have made in marketing and developing a reputation in the industry.

Even in difficult economic times, the costs involved in registering your trademark are relatively minor next to the time, effort and money that you'll invest in marketing your business. Don't wait until after a competitor has opened up shop around the corner to begin to protect the investment you've made in branding, advertising and marketing your business.

Samuel Lewis is a Board Certified Intellectual Property law specialist and partner at Feldman Gale, P.A. in Miami, Fla., and a professional photographer who has covered sporting events for a quarter century. He can be reached at This email address is being protected from spambots. You need JavaScript enabled to view it. or This email address is being protected from spambots. You need JavaScript enabled to view it..
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