Trademarks for Etsy Shops

At Total Trademarks we’re only a stone’s throw away from Etsy Headquarters in Brooklyn, New York. We’ve worked with many local Etsy shop owners to protect their trademarks. Trademark registration provides Etsy shop owners with the following benefits:

1. exclusive rights to use your Etsy shop name

Registration of your Etsy shop name will help prevent others from stealing your name! The USPTO will protect your trademark by refusing to register trademarks that are similar or confusing to potential customers, therefore facilitating your ability to create a strong brand.

2. search visibility

With a trademarked Etsy shop name, customers searching by name are more likely to visit your shop and buy your products. Be visible and distinctive!

3. Deter others from using your Etsy shop name

Trademarking your Etsy shop name creates a publicly searchable record of your trademark registration in the USPTO’s online database. This database is accessible to anyone with an internet connection and it’s easy to conduct a basic search. Many new Etsy sellers will research their store name options in advance to determine if a name is available to use.

4. Enforce your trademark in the Etsy marketplace

The Etsy intellectual property infringement policy provides that Etsy will remove allegedly infringing material from their website. Infringement is easier to prove with a valid trademark registration, so if you want to take the basic actions to protect your Etsy business then trademarking your Etsy shop name is a great place to start.

5. Stand your ground

Securing your trademark will help protect you from trademark infringement actions from other people who might be using a similar name. Many Etsy shop owners take this defensive approach, and enjoy federal protection while not necessarily being proactive about enforcement of their true rights.

Principal vs. Supplemental Trademarks

There are two Federal trademark registers in the United States: The Principal Register and the Supplemental Register. Check out the information below for a brief explanation:

The Principal Register entitles the Registrant to:

·       Online listing of the trademark in the USPTO’s TESS database

·       Priority over subsequent trademark applications filed with the USPTO

·       The right to use the “®” symbol

·       Prima facie evidence of the registrant’s exclusive right to use the mark 

·       A presumption that the registrant is the true owner of the trademark.

·       The right to sue in federal court if the trademark is infringed upon.

·       The possibility to secure incontestable status after five years of registration.

The Supplemental Register also has many benefits including:

·       Online listing of the trademark in the USPTO’s TESS database

·       Priority over subsequent trademark applications filed with the USPTO

·       The right to use the “®” symbol

·       The right to sue in federal court if the trademark is infringed upon.

Why Register on the Supplemental Register?

Eligibility for Principal registration requires that certain criteria are met. For example, the trademarks cannot be descriptive of the underlying products or services, cannot include geographic terms, and cannot include a surname as the main feature of the trademark. However, the Supplemental Register is a great option for trademarks that may be difficult or impossible to register on the Principal Register. Some trademarks that are ineligible for principal registration may still qualify for the Supplemental Register, provided they are currently being used in commerce. A key benefit of the Supplemental Register is that the USPTO will consider the trademark against later applications that are confusingly similar. This benefit alone provides a lot of protection and makes the filing fees worth it in my opinion.

If you have questions about applying for a trademark contact us for a free phone consultation.

Can you Trademark a Jewelry Line?

Yes, you can absolutely trademark a line of jewelry products. We’ve worked with many jewelry designers to secure their company name, logo, and/or tag lines. In the United States, the process of registering a trademark starts by filing an application with the USPTO. This agency reviews the application, evidence, and other information during the trademark prosecution process, which takes about one year and will result in a registration for successful Applicants.

How Does a Trademark Protect my Jewelry?

Trademarking can help to protect the name, logo, and slogans that identify your brand. One key benefit of trademark registration is that a public listing of your trademark will be created in the USPTO’s online trademark database. A trademark search will show that you own the trademark (or have applied for it, if the application is still pending), thus deterring many competitors from attempting to register or use your trademark. The value of this particular benefit alone makes the filing fees worth it in my opinion.

Other benefits to federal trademark registration

·       You will have the exclusive right to use the trademark in the U.S. for Jewelry products

·       Most social media websites will take down pages infringing on your trademark

·       You will have the right to enforce your trademark in federal court, if necessary

·       You may be able to recover money damages if your trademark is infringed upon.

·       Federal trademark registration gives you the right to use the “®” symbol.

When to File a Trademark Application

Trademark applications can be filed in advance, prior to your company producing or selling any jewelry product on an Intent-to-Use basis. We can also file your application once you’re doing business. Trademarks are available on a first come, first served basis, so once you’ve decided on your brand name filing an application as soon as possible will give you the best chance of success.

Contact Us for a Free Phone Consultation if you would like to apply for trademark.

4 Trademark Tips for Amazon Sellers

Here at Total Trademarks we work with many Amazon store owners to secure their trademark rights. Trademarking in a competitive marketplace such as Amazon helps sellers create and maintain a business presence, which is important when consumers have so many options to choose from. Amazon sellers with creative and distinctive trademarks are more likely to be successful for a few reasons:

1. Dominate search results when customers search for your brand

With a distinct and trademarked brand name, customers searching by brand are more likely to visit your store and buy your products. Trademarking your brand name gives you the exclusive right to use the name in association with your specific type of products in the United States.

2. Prevent dilution of your trademark by deterring others from using your name

Trademarking your brand name creates a publicly searchable record of your trademark registration in the USPTO’s TESS database. This database is accessible to anyone with an internet connection and it’s easy to conduct a basic search. Many startups, including new Amazon sellers, will research their branding options in advance to determine if a name is available to use.

3. Convey features of your products with features of your trademark

Many of the best brand names are suggestive of their underlying products (think, NETFLIX). Creating a distinctive mark and securing a federal trademark registration will help to identify and convey your products for new clients who are unfamiliar with your brand.

4. Avoid infringement issues in the Amazon marketplace

We get at least one call every month regarding a trademark infringement issue in the Amazon marketplace. Taking the basic steps to secure your rights in advance will help you to avoid these problems. Prior to submission of a trademark application, we conduct a clearance search to identify other parties using your mark or a variation thereof. This helps to prevent our clients from infringing on another party’s mark. On the other hand, if you’re the party that’s infringed upon you will need a registration to effectively utilize the Amazon trademark infringement resolution process.

If you have question about securing a trademark for your Amazon business contact us for a free phone consultation.

Trademark Disclaimer Refusal | How to Respond

A disclaimer may be required by the USPTO for certain portions of a proposed trademark that contains unregisterable material, such as descriptive words, generic words, laudatory wording, geographic wording or common symbols. This type of refusal is fairly common and the Examining Attorney will notify the applicant by way of an Office Action refusal.

For example, our parent company trademark “THOMAS LAW FIRM PLLC” includes a disclaimer for “LAW FIRM PLLC.” In this scenario, entity designations such as “PLLC” are not registerable and “LAW FIRM” is descriptive of the services that our parent company provides, thus we were fine with adding the disclaimer. Our company still has the exclusive rights to use this combination of words, even with the disclaimer.

Disclaiming a portion of your trademark doesn’t mean that the word has been removed from the mark; it simply means that you cannot prevent others from using the disclaimed portion of the mark.

If a disclaimer request is received the appropriate response depends on the facts of the case. If the disclaimer request is valid and the wording is indeed unregisterable material, then submitting a response to the office action and amending the trademark application to include the disclaimer will often times allow the application to get back on the registration track.

For various reasons however, the applicant may not want to add a disclaimer and in this scenario the appropriate Office Action response would be to submit argument and/or evidence explaining why the disclaimer requirement should not apply. USPTO Examining Attorneys are Attorneys, and not necessarily knowledgable on the goods and services that apply to the applications they examine. Mistakes can happen, and if so the best response is to explain why you are correct (in the most persuasive way possible).

If you have received a trademark office action requiring a disclaimer please contact us for a free phone consultation.

Trademark Requests for Reconsideration

Filing a Request for Reconsideration is an option for trademark applicants that have a received a final office action. A Request for Reconsideration gives the applicant an opportunity to persuade the Examining Attorney to reverse their position by raising new issues or amending the trademark application to avoid the currently cited issues.

The evidence, arguments and information that should be submitted with a Request for Reconsideration depends on the facts of the case. For example, if an application was refused based on a 2(d) conflict and the conflicting application has recently expired, then the applicant would obviously want to submit evidence showing default of the competing trademark registration.

An applicant can also use Requests for Reconsideration to substantiate the evidentiary record for cases that are ripe for appeal to the TTAB.  TTAB Trademark appeal cases are decided upon the evidence on record at the time of appeal, thus filing a request for reconsideration gives the applicant an opportunity to introduce more evidence in anticipation of an appeal. A Notice of Appeal can also be filed concurrently with a Request for Reconsideration, which puts the Examining Attorney on notice that the application will be appealed to the TTAB.

If you have received a final office action please contact us for a free phone consultation. We are experienced in office action response and we’re saved numerous applications that were previously refused.

Trademarks for Restaurants

It’s no secret that the restaurant industry in New York City is extremely competitive. In order to make it here it’s critical for restauranteurs to create a strong brand image by using distinct and creative trademarks.

The purpose of trademarking is to identify and distinguish one’s products or services from other providers in the marketplace. There’s a big difference between David Chang’s Momofuku and the Panda Express and trademarking helps to communicate this fact. Mr. Chang and his Momofuku team are branding experts and their recognizable name and peach logo immediately conveys a sense of deliciousness to patrons who frequent their New York establishments. The Momofuku trademark has also helped Mr. Chang penetrate new markets with offshoots such as the Momofuku Ssam Sauce, which is currently available at Whole Foods Market and other grocery retailers.

Trademarks are important for restaurant startups too. Even if the business has only one location, securing the exclusive rights to the name and logo can help with online business listings, SEO, and other marketing efforts. Trademarking also helps to make an impression in the mind of the customer and therefore keeps them coming back (provided the food and service are good)!

So how do you trademark the name of your new restaurant? Give us a call and we’ll explain the process. We start by doing a preliminary clearance search to see if the name is available for registration and if so we can discuss drafting and submitting a trademark application to the USPTO. The trademark prosecution process takes about 1 year for most trademarks, which involves a thorough review of the application by the USPTO, possible office actions, and a public opposition period. We’re experienced in this process so contact us for a free phone consultation.

How To File an Ex Parte Appeal with the TTAB

Filing an Ex Parte Appeal with the TTAB is an option for trademark applicants who have been refused by a USPTO Examining Attorney in a final office action. The TTAB (Trademark Trial and Appeal Board) is an administrative body within the USPTO that functions like a court. If an application is refused and appealed to the TTAB, a 3-judge panel will review the application and evidence on record and may issue a decision overruling the Examining Attorney’s refusal.

The decision to appeal should only be made if the refusal cannot be resolved informally with the Examining Attorney. In many cases office action refusals can be overcome by submitting evidence in favor of the applicant and/or submitting requests for reconsideration. If possible, this is generally the best strategy due to the time and expense associated with appeals proceedings.

During the appeals process the applicant will be permitted to submit a brief, a response brief to the Examining Attorney’s brief, and may request an oral argument as well. The TTAB will consider these arguments along with the evidence on record and make a decision as to the registerability of the proposed trademark.

If your trademark application has been refused contact us for a free consultation.

Standard Character Trademarks vs. Stylized Trademarks

When filing a trademark application you must choose between standard character format or a stylized/design format. A standard character trademark is basically just a word (aka wordmark) that functions as a trademark, and has no particular font, style, or color. This can be any combination of words, letters or numbers so long as there are no design elements included. In my practice this usually means we are trademarking the name or slogan of a new company. The following example shows our parent company name registered in standard character format:

A stylized trademark (aka logo, design mark, or special form mark) allows the registrant to claim font, style, size or color as actual features of the trademark. Images and graphic elements can also be included in the trademark and this type of registration provides a more specific scope of protection. In the next example, the Thomas Law Firm PLLC “T” Logo appears in blue and our company name appears in a specific black font with a particular arrangement of the words:

Consulting with an experienced trademark attorney can be helpful deciding which type of application to submit. If you can afford it, filing both applications will provide better trademark protection rather than just filing one or the other. We commonly file two applications at once, but if the client’s budget will only allow for one application, we generally recommend filing for the standard character trademark since it provides the broadest amount of protection. Contact us for a free phone consultation to discuss which option is best for you!

Trade Mark Ornamental Refusal | How To Respond

Ornamental office action rejections are a common problem for DIY trade mark applicants. This type of rejection typically occurs when a proposed trade mark is merely a decorative feature of the applicant’s clothing, and therefore does not function as a trade mark to indicate the producer of the clothing.

For example, I often see Legalzoomers submit specimens of use for clothing products that show a proposed trade mark printed largely on the front of a shirt, where graphic designs and decorative features are generally found. This is an obvious mistake and avoiding this type of rejection is a no-brainer for a trade mark attorney.

Consumers generally recognize small designs or discrete wording as trade marks, especially when located on the inner clothing tags, on the pocket or breast area of a shirt, or on retail hang tags affixed to the clothing. Thus, if a trade mark application contains specimens of use along these lines it’s much more likely to be accepted.

There are several options when responding to an ornamental refusal that depend on the facts of the applicant’s situation and the proposed trade mark. Submitting an appropriate substitute specimens of use may be option if the proposed trade mark actually functions as a trade mark to indicate the source of the goods. If the trade mark is not currently functioning as a source indicator, but may become capable of functioning as a source indicator in the future, amending the application for for registration on the supplemental register may be an attractive option.

Amending the application filing basis to a 1(b) intent-to-use application may also be an option if an appropriate specimen of use is not available at the time of filing the office action response with the USPTO.

If you have received an ornamental refusal please contact us for a free phone consultation and we’ll discuss your options.