Seattle Trademark Lawyer

These last few years, the Seattle Seahawks have been good. Really good. And the Sounders, too. Here’s to a lot more of that!

With the rise of our teams’ success, I get more of the same type of question. It focuses on whether local craftspersons can incorporate team names, logos, slogans, and/or colors in their handmade clothing, cakes, beer labels, and art. It’s to celebrate team pride; it’s to give the people what they want; and it’s to make a buck.

So what’s ok, and what’s not ok?

The answer turns on trademark law. Names, logos, slogans, and even colors tell consumers where goods and services come from. By incorporating these indicators into a product, an artisan risks misleading purchasers into thinking the goods are made by the team, are licensed by the team, or are approved by the team. Mistaken consumer assumptions hurt the team because it doesn’t profit from the sale, it doesn’t have a say in how its brand is used, and because bad-quality or inappropriate goods could hurt its reputation.

For practical purposes, small-time producers probably can fly under the teams’ radar. But that doesn’t mean it’s legal for them to wrap up their products in a team’s brand without permission.

The more a craftsperson takes from the team’s image — particularly its name and logo — the more likely he or she is to infringe the team’s trademark rights. As long as you’re selling goods or services, you’re subject to trademark laws. So, you shouldn’t be surprised if you hear from your favorite team if you use their brand without permission.

The same is true if you take your favorite athlete’s name. Natural persons often have extra rights against use of their names, likenesses, and signatures for commercial purposes without their permission, thanks to “personality” rights laws.

Artists are often exempt from these concerns. As long as the artwork contains a minimum amount of artistic embellishment, the First Amendment usually trumps trademark and personality rights protections. But regular folks who want to sell crafts on Etsy or in front of the stadium: you probably can’t “borrow” from your favorite team without stepping on its toes.

Believe it or not, trademark law is here to serve you. Therefore, you should let the market guide your decisions in what trademarks to register and what enforcement actions to take.

Much of trademark law is optional. You don’t need a federal (or state) trademark registration. Getting a registration can be smart, but it’s not required. So, let the cost guide you in deciding whether it’s worth the effort.

The same is true with enforcing your trademark rights. The law doesn’t require trademark owners to oppose every application for a potentially-conflicting trademark registration. It also doesn’t require you to sue every potential infringer. Oftentimes, you get to pick your battles, and you should do so carefully.

It usually comes down to whether you would get a good return on your investment. In other words, you should apply to register your name, logo, and/or tag line if it would likely be worth your while to do so. The corollary is that if you wouldn’t likely obtain a good return on your investment, you shouldn’t bother. The same is true with seeking to enforce your trademark rights. Now, it’s often not very expensive to do what’s needed to maximize one’s trademark rights, but owners should be strategic in allocating their resources.

Granted, if you’re on the receiving end of a cease-and-desist letter or trademark infringement lawsuit, your options are more limited. But the value of your trademark investment and likelihood of success in maintaining it — read: practical economics — should still drive the train.

Let the market be your guide. Whether you’re playing offense or defense, a trademark lawyer can help you decide what steps are likely worthwhile, and what steps you can skip. But in the end, it’s usually not complicated. It should be about getting your money’s worth — doing the things that provide good value, and forgoing the things that don’t.

Trademark owners, take note. If you file an application for federal trademark registration, you should keep an eye out for misleading mailings from unscrupulous vendors trying to sell you (or trick you into paying for) things you don’t need.

This is one reason the U.S. Patent and Trademark Office warns as follows:

“By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through internet search engines and other on-line databases.”

Heed this warning. Fraudsters troll the PTO’s public database and send applicants phony invoices and other official-looking mailings. Their names frequently mimic the PTO’s, and include words like “United States,” “U.S.,” “Trademark,” “Registration,” “Office,” and “Agency.” Ignore them. They are fraudulent. The senders count on a handful of trusting or careless recipients out of thousands to pay their “invoice.” Don’t be one of them.

All official mailings will come from the PTO in Alexandria, Virginia. Or, if your lawyer filed the application, official word will come solely from him or her. All official PTO emails will have .uspto.gov in the sender’s address.

There’s no way to get around providing your contact information when filing for federal trademark registration. That shouldn’t dissuade you from making a filing; just be smart when doing so. Thoroughly ignoring any unsolicited invoices you receive is the best way to take the profit motive out of these scams. You also can report them to the PTO at TMFeedback@uspto.gov.

Time flies when you’re having fun!

September 3 marks five years that Atkins IP has been serving clients with trademark and copyright needs. We couldn’t have done it without you!

In that time, we’ve been in federal court, before the Trademark Trial and Appeal Board, and prepared many an application for registration of our clients’ trademarks with the U.S. Patent and Trademark Office. It’s been awesome seeing our startup clients grow, and our larger clients diversify and expand — weathering the Great Recession and taking full advantage of Seattle’s tech explosion. Gay marriage is now rightly protected, and recreational marijuana is legal. Change has been nonstop.

It’s been incredibly satisfying partnering with lawyers and law firms in Seattle and around the world to help our clients accomplish their business goals. A heartfelt thanks to everyone who has supported us along the way. The list is long, and we’re forever in your debt.

Here’s to the next five years! 

It pays to be strategic in describing one’s goods and services when applying to register a trademark with the U.S. Patent and Trademark Office. Following are some considerations:

• Be vague but accurate. Generally, the vaguer a description is, the more intellectual property “real estate” one gets in the resulting trademark registration. An applicant needs to be accurate, but the more words it uses to describe the goods or services associated with its trademark, the more it limits its claim. To get the broadest claim, say “shirts,” for example, not “women’s long-sleeved silk t-shirts.”
• Consider a narrow description. Though broad claims are often best, sometimes it makes sense to describe goods and services with more specificity. Narrow claims can help put distance between an application and a prior filing, which can reduce the chances of a drawing a likelihood of confusion objection.
• Consider an “off-target” description. Ideally, a trademark owner’s application would cover its core goods or services. But sometimes that’s not possible — either because the trademark owner’s core offerings are illegal at the federal level (say, because they involve marijuana), or because a prior filing would block such an application. An “off-target” description that omits the trademark owner’s core offerings can sometimes make a more limited registration possible. The umbrella of protection that extends from such a registration — even one that does not cover the applicant’s core goods and services — is often much better than no registration at all.
• Minimize descriptiveness and genericness objections. Being smart in describing the goods and services can help avoid a descriptiveness objection. The PTO can deny an application if it immediately conveys information about the associated good or service. While descriptions need to be forthright, trademark owners need not invite this objection with careless wording. In this respect, a vague-but-accurate description can minimize a “merely descriptive” objection. The same is true with avoiding genericness objections. If the applicant defines the goods or services as being the same as the mark, the PTO has no choice but to deny the application.
• Use the PTO’s pre-approved descriptions. Adopting one of the thousands of descriptions the PTO has already blessed reduces the chance the PTO will quibble with the description. Less importantly, but also a bonus, using a pre-approved description enables a TEAS-PLUS filing, which saves $50 per class. Of course, such descriptions are only appropriate if they are accurate and otherwise suit the trademark owner’s needs. Otherwise, a strategic free-form description is the ticket.