Bench & Bar

MAR 2018

The Bench & Bar magazine is published to provide members of the KBA with information that will increase their knowledge of the law, improve the practice of law, and assist in improving the quality of legal services for the citizenry.

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19 BENCH & BAR | are being used in commerce, which allows other commercial entrants to develop their own branding unimpeded. According to the USPTO: 5 A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or point-of-sale displays associated with the goods (includ- ing webpage displays), and (2) the goods are actually being sold or transported in commerce. A mark is in use in commerce with ser- vices when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the ser- vices are actually being rendered in commerce. While this makes sense when viewing com- merce as a whole, this typically confuses individual business owners, who wonder how they might develop branding to the point of actually selling the product in question if they have not yet been able to protect themselves via trademark filing. e trademark law offers a filing alterna- tive which allows an applicant to file upon conception and prior to actual use, via its "Intent-To-Use" application. With such application, the trademark office reviews the submission to see if it qualifies to reg- ister as "trademarkable subject matter" and checks the application against existing reg- istrations that might cause a "likelihood of confusion." 6 If these tests are passed, the trademark office provides a preliminary authorization in the form of a "Notice of Allowance," giving the applicant an addi- tional six months to prove it has placed the trademark in commerce. e Intent-To-Use application therefore gives a client who has not begun sales an opportunity to protect its intended brand- ing. However, it requires an additional filing called a "Statement of Use," which carries another filing fee and must be submitted by the USPTO deadline. 7 For these reasons, a standard "Use in Commerce" application is preferable. Typically, however, clients request trademark filing after their com- pany name has been secured and their logo designed, but before the trademark has been used in such a way allowing for immediate Use in Commerce filing. If a competitor might develop the same or similar branding while your client works to put its trademark in use, you should rec- ommend an "Intent-To-Use" application to secure rights immediately, despite the added cost. WHAT SHOULD I FILE? Once you have convinced your client that a trademark filing would be beneficial to secure his or her investment in branding, you need to confirm the precise trade- mark(s) to be filed and the goods/services covered by such trademark(s). This is because trademark protection will extend to the mark itself and anything similar that causes a "likelihood of confusion" in the typical consumer, as against the same or related goods or services. e typical client will present you with a name or graphic and say, "Trademark this." Others might present multiple dif- ferent product names, slogan ideas, logo alternatives, etc. and ask for your advice on what registration applications should be filed, or even on their branding generally. In either case, you need to learn a bit about the client's business to properly advise what elements of the business are most signifi- cant for legal protection. Once the most critical trademark or trade- marks are identified, you need to determine the goods or services to which such trade- marks apply, both to search against existing trademarks that would block your intended " "

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