So Long, Farewell

Today marks my last day at the Chaney Law Firm. I've accepted a position at the University of Arkansas for Medical Sciences (UAMS) in Little Rock. I'll be working in the Biomedical Research facility in the Office of Research Regulatory Affairs, which assists the UAMS research community.

I'm very excited — I've long been interested in the convergence of law, medicine, and technology. My favorite class at W&L School of Law was Professor Timothy Jost's Medical Technology and the Law. It's the only class where I actually referred to my law school notes while handling a case. Here at the Chaney Law Firm we focus on medical technology tools (see the sidebar at right/bottom) that help our clients get well and prove the extent of their injuries. I hope this move will allow me to continue helping even more Arkansans receive the very best of medical treatment.

With my move, the Chaney Law Firm will no longer be handling patent and trademark matters. If that's why you've come to our site, give the firm a call and we can steer you to someone who can help meet your needs.

Thanks to Dad, Mom, Hilary, Taylor, and all our wonderful staff for making the last 6+ years great. It's been a joy to be able to walk to work and see my folks on a daily basis, and I appreciate their support as I move towards a new chapter. Maybe they'll even let me come back and guest post every once in a while.

One love.

The wrong way to pick a brand name

In looking back at the firm blog, it looks like I took a full summer vacation from writing here. Truth be told, I've got an interesting new project that's been keeping me busy. Stay tuned for exciting news next month...

Here in south Arkansas, we certainly appreciate a good fish fry or crawfish boil. We've all seen various Louisiana-based products on the shelves, from hot sauce to crawfish boil to fish fry. Here are a few examples:

The hot sauces shown above are all Louisiana-style hot sauces (primarily vinegar and red peppers). You can see from the labels that these producers draw attention to the association with Louisiana and New Orleans. 

Products that use a geographic location in their name (like Louisiana) are considered descriptive. Descriptive is a term of art in the trademark world. A descriptive term can't serve as a trademark unless consumers associate the term with a particular source for the product.

Enter the company that makes Louisiana Fish Fry Products. This company filed a trademark application for their name and logo that appears on their products. The U.S. Patent & Trademark Office rejected the application, finding that the words LOUISIANA FISH FRY PRODUCTS was either highly descriptive or outright generic for the types of products being sold by the company. The company appealed to the Trademark Trials & Appeal Board and lost, and then appealed to the federal appeals court responsible for handling (relatively rare) trademark application appeals. Both the TTAB and the federal court agreed with the examiner's finding that the term LOUISIANA FISH FRY PRODUCTS wasn't capable of signifying source.

The problem for the company is that it will be very difficult to stop imitators from using the company's brand name because it is so descriptive of Louisiana-style food products. A brand name you can't protect isn't much of a brand name.

So, what's the lesson to take away from the Louisiana fish fry case? You need to be careful in selecting the brand name for your products. You want to select a name that's capable of distinguishing your products or services in the marketplace. These types of names can either be arbitrary, like APPLE for computers, or suggestive, like NOBURST for winterization antifreeze. In my opinion, suggestive marks are the best of both worlds, because through imagination, thought, or perception, the consumer reaches a conclusion as to the nature of the goods or services being offered.

How do you come up with your product names?

U.S. Supreme Court issues trademark decision - Check out our decision highlight hashtag

The U.S. Supreme Court issued a decision today in B&B Hardware v. Hargis, the second trademark decision from the high court this term. The issue in the case was whether the Trademark Trial and Appeals Board (TTAB) decision finding a likelihood of confusion between two trademarks had a preclusive effect in a federal court lawsuit that was going on at the same time. The TTAB decision involved the same two parties and the same issue, so the Supreme Court ruled the TTAB's decision should have been considered conclusive by the federal court.

I'll embed the tweets a little later. In the meantime, if you want to check out the tweet stream from my reading of the decision, the hashtag is #BBHardwarevHargis. As usual, it's probably easiest to start at the bottom.

Be sure to give us a follow on Twitter (chaneylawfirm) and Facebook (chaneylaw). Thanks for reading.

Nine Things You Need to Know about Trademark Registrations — Part III

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is last part in a three-part series about federal trademark registrations.

7. Treat Your Trademark Like a Business Asset. Your trademark is a business asset, which gives it qualities that are important to income, business valuation, and estate planning considerations.

• Personal Property. Trademarks are considered personal property, like cars or jewelry, and can be bought and sold like other personal property.
• Business Valuation. You may wish to list your trademark registration as a business asset on your balance sheet. Trademark registrations typically fall under the “goodwill” business asset, and federal registrations increase the value of goodwill substantially due to the strengthening of the brand associated with the trademark. Your trademark lawyer will be able to help if you need a formal appraisal of your trademark for business purposes.
• Income Generation. Some trademark owners choose to create intellectual property holding companies for trademarks and other intellectual property. These holding companies license intellectual property rights to others (which may or may not include companies with common ownership). Holding companies can be useful in generating a royalty stream associated with your intellectual property. You should consult with an accountant to determine if a holding company is an appropriate method for you to generate income that receives preferable tax treatment. Most trademark lawyers can help you set up holding companies and the associated license and transfer documents necessary to convey trademark registrations.
• Estate Planning. If you own your trademark rights individually, the trademark will be treated like any other divisible asset, such as a bank account. There are downsides to a lack of estate planning for individually-owned trademarks, including the fact that every heir could have the right to sell, license, or otherwise encumber the trademark to the detriment of all other devisees. For this reason, a solid plan needs to be in place for individually-owned trademarks. 

8. Changes in Ownership or Address. If ownership of the trademark changes (either by sale or restructuring), the USPTO should be formally notified by recording the paperwork. Likewise, if your address changes, the USPTO needs to be updated so it will send any notices relating to the registration to the proper address.

9. Be Wary of Official-Looking Paperwork. Many unscrupulous companies send solicitations to trademark registrants on official-looking letterhead, or in official-looking emails, for worthless services. This is a large enough problem that the USPTO has a page dedicated to non-USPTO solicitations on its website at http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations (last visited March 1, 2015). You should not send money to anyone concerning your trademark without consulting a trademark lawyer first. 

That concludes our three-part series on trademark registrations. Thanks for reading!

Nine Things You Need to Know about Trademark Registrations — Part II

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is Part II in a three-part series about federal trademark registrations.

4. Marking Using the ® Symbol. Once you get a federal registration, you should begin using the mark with one of the three following registration notices: the ‘‘®’’ symbol, ‘‘Registered in U. S. Patent and Trademark Office,’’ or ‘‘Reg. U.S. Pat. & Tm. Off.’’ Failure to do so will prevent you from recovering damages in a trademark infringement lawsuit from an infringer prior to his or her receipt of actual notice of your registration.

5. Rights Conferred by Registration. The registration of a mark is conclusive evidence of (1) the validity of the registered mark, (2) registration of the mark, (3) your ownership of the mark and (4) your exclusive right to use the mark in commerce. Although the mark is registered, it may be challenged during the initial five years of the term by anyone who believes that he or she will be damaged by your registration. Further, it can be challenged at any time if the mark becomes a generic name, if you abandon the mark by failing to use it, or if an opposer can successfully argue that the registration was otherwise illegal or fraudulent.

6. Duty of Enforcement. You have a duty to enforce your trademark rights against others who use your trademark, or a confusingly similar mark, in commerce. If you do not enforce your trademark rights against others in a timely fashion, you may lose the right to enforce the mark against those infringers. Furthermore, if the mark becomes generic, you will lose the right to enforce it against anyone. 

• Immediately notify your trademark lawyer if you learn of other marks that are similar to yours and that may cause confusion with consumers or that may dilute the strength of your mark.
• Monitoring. Your trademark lawyer should be able to arrange a monitoring service to watch for uses of or applications for other trademarks that may be similar to yours so you can timely enforce your rights.

 We'll conclude our three-part series on trademark registrations next week. Thanks for reading.