Trademark Attorney | "Federal trademark official part of iHub seminar"

By : Loralee Stevens
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Category : Trademark Attorney

If you’ve ever wondered about trademarks, how to get and protect them, there’s a free seminar tomorrow at the iHub in Rohnert Park.

Craig Morris, an expert in the field and long-time employee of the U.S.  Patent and Trademark Office, is flying out from Washington, D.C., to lead the panel.

“The USPTO just recently launched the public outreach program,” said Santa Rosa patent attorney Warren Dranit, who arranged the seminar. “There are lots of complicated issues around trademarks and the registration process, such as picking one that won’t get you sued.”

U.S. trademarks are different than patents and copyrights, and successfully defending one is largely a matter of choosing the right one to start with, he said.

In addition to Mr. Morris’s discussion, San Francisco intellectual property attorney Carole Barrett will be on hand to talk about international trademarks, which are obtained and defended differently.

Registering a trademark in the U.S. usually costs about $325 per category, or class, according to Mr. Dranit.

“If you choose a trademark for wine, that’s one class. But if your trademark also covers beer the registration fee is doubled to $650, or less if certain patent office guidelines are followed,” he said.

The seminar will cover how to choose a strong, legally defensible trademark, whether an attorney is needed for the registration process and how to select one, how to avoid trademark scams and what to do if you receive a “cease and desist” letter, among other issues.

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US Trademark Application | "Protect your rights before you outsource "

By : Arlene Soto
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Category : US Trademark Application

Q: Do I need to patent my invention before having it manufactured in China?

A: U.S. patent and trademark protection, also called intellectual property rights, covers your invention only in the United States. The Small Business Administration (SBA), recommends working with legal counsel to develop an overall intellectual property rights strategy. This strategy should include developing language for licensing and subcontracting, conducting due diligence of potential foreign partners, registering intellectual property rights in key foreign markets and recording patents, trademarks and copyrights with Customs and Border Patrol This process may be costly, so it's a good idea to identify the potential target market and overall sales potential as a part of the business plan you create. You also will need to be aware of any restrictions on importing your products back into the U.S. There are many hurdles to overcome prior to making the decision to manufacture outside the United States.

Small businesses are even more vulnerable to theft of intellectual property than large businesses because most lack the resources to catch and repair problems if they occur. A patent gives you the right to defend if someone else infringes on that patent and steals your idea. Without money and time, it's difficult to catch and prosecute the person who tries to steal your idea in the U.S. and it's even more expensive and difficult in a foreign country. The World Customs Organization,, estimates counterfeiting accounts for 5 percent to 7 percent of global merchandise trade, costing U.S. businesses billions of dollars each year. Good information about protecting intellectual property rights outside the United States is available at This site also can be used to report theft of intellectual property rights.

A good resource for inventors in our area is the South Coast Inventors Group that meets at 6:30 p.m.the first Wednesday of each month at The Business Center, 2455 Maple Leaf, North Bend. For more information about attending a meeting ,contact the Southwestern Oregon Business Development Center at 541-756-6866 or go to The Inventors Group would be able to provide insights into resources available for inventors, ideas about protecting your intellectual property rights and even some ideas for manufacturing and distributing your products.

Before making the decision to manufacture your invention in China or another foreign country, be sure to talk with an attorney experienced in intellectual property rights and international trade. You will also want to work with someone well versed in trade issues with the country you will be manufacturing in. Then make sure your business plan is up to date with the overall strategy you plan to use to protect and market your invention including all potential costs and benefits of the decision you make.

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Trademark Application | "Business Owners Need to be Vigilant in Protecting Their Domain Names"

By : Cox Padmore Skolnik & Shakarchy
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Category : Trademark Application

Complex legal disputes can arise when one business registers a particular domain name and another business subsequently attempts to obtain a trademark in the same words.

In today's tech age, you can scarcely find a business that doesn't have some type of online presence. In fact, many "stores" are almost exclusively found online - such as Consequently, many traditional "brick and mortar" stores are finding themselves on the losing end of a battle between themselves and their online counterparts, given that online stores have much lower overhead costs.
In an effort to take part in this technological revolution, business owners routinely register new domain names in order to protect their spot on the internet. Many business owners believe - often mistakenly - that simply registering this domain name provides them some trademark protection in the domain name. This assumption can prove costly to a business owner as trademark litigation is likely to occur if they believe simply registering a domain is the same as a trademark.

Domain names and trademark priority

Disputes can arise when one business registers a particular domain name and another business subsequently attempts to obtain a trademark in the same words. Obviously, the company owning the domain name would like to object to the trademark application of the second company and protect its "rights" in the domain name. However, the first company can only protect the domain name, and stop the second company from registering the trademark, if it can show it has priority in the mark - meaning it "used" the mark first.
Unfortunately, this question has yet to be expressly determined in the Second Circuit, but other circuits and Patent and Trademark Office decisions have concluded that simply registering a domain does not create trademark rights. In fact, an often cited Ninth Circuit decision - Brookfield Communications v. West Coast Entertainment- has expressly stated that registration of a domain name does not by itself constitute "use" for the purpose of establishing trademark priority, even if the company intends to eventually use the domain commercially.
This particular proposition was also recently recognized in an Arizona federal case in which a company had registered a domain name but still hadn't created a website - the domain name was simply used as a "splash page" filled with third-party advertisements.
Companies cannot make the mistake of not actually using a registered domain name. Ultimately, a domain name does not become a trademark unless it is also being used to identify and distinguish a particular source of services or goods.

Seek help

The law surrounding domain names and trademark rights is quite complex and difficult to navigate. Even the slightest change in circumstances can determine whether or not a company actually has a protectable interest in a mark. If you are a business owner and you believe another company is using your intellectual property without your permission, or if you want to object to another company's application for a trademark, contact an experienced trademark litigation attorney to be advised of your rights and options.

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