Monsters in the IP Closet — The Trademark Trolls

Create Time 2019-02-19 09:02    Views:9906

There’s a classic fairy tale about three little goats who want to cross a bridge to eat the sweet, green grass on the other side. When they try to cross, however, an evil troll jumps out to oppose them — and gobble them up! In some versions the troll asks them riddles, in others they trick the troll and defeat him, but in the end the little goats make it to the other side.

You too are trying to cross a bridge. You want to file your trademarks and enjoy the rich rewards of success; but along the way there may be opposition and you need to be prepared.  Luckily, Witmart is ready to help you and this blog is the perfect place to start.

Prevention is the Best Protection

Honestly, I’ve always wondered why the goats didn’t just swim across the river. Fun fact: goats are great swimmers. For you as well, there are a few steps you can take to decrease the potential for opposition:

  1. Do a thorough trademark search

Find out if there are any trademarks or pending marks that resemble your own. You could find yourself facing opposition from another company if your proposed trademark is too similar to their mark. A similar mark with similar services creates a potential for confusion in the market — and that is a big no-no in the IP world. Registration offices are not required to inform you of similar trademarks before you file, so the onus is on you (or us!) to scour the web for preexisting marks. 

Want to keep life simple? Check out Witmart’s comprehensive SuperSearch™️ completely free of charge. The better your research, the better the chance your application will be accepted.

       2. Fill out your application correctly

All it takes is one error or missed section on your application for another party to oppose your trademark on the grounds that you have supplied the registrar with false information. This could be accidentally forgetting to include a class, filing for the wrong class, or even spelling something incorrectly. Even though they are unintentional, these errors are catastrophic to your filing. That is why it’s always best to have companies like Witmart stay on top of the process and review your application rigorously before filing.

       3. Make sure your trademark is a strong one

Strength of mark is hugely important. Sometimes, a company that wants to use your trademarked terms freely will argue that your mark is merely descriptive. See our previous blogs to learn how to ensure your mark is a strong one. What it mainly comes down to is choosing a mark that is distinctive. Marks that are simply functional (window wipers) or descriptive (baked cookies) are not going to distinguish your goods and services from others in your class.

Look what happened to Roots when they used a descriptive mark. Their “Cabin” mark wasn’t distinctive enough to stop YM Inc. from using a cabin-themed logo on their own goods. Don’t fall into that trap! Go for a mark that is suggestive (Quick N Neat pie crust), a fanciful made-up word (Xerox), or is completely arbitrary (Apple for computers). Basically, anything that isn’t blatantly related to your products. 

Remember, a descriptive mark can become stronger overtime by its association with your goods and services, but in the meantime there is a serious risk of opposition.

       4. Have specimens as proof of use

An opposing party may claim that you are not the rightful owner of your mark. You can meet these accusations with specimens — examples of your mark in relation to your goods and services in frequent use.  

Our previous blogs discuss what constitutes an effective specimen, but here is some detail for you: a specimen for goods can be a photo, label, hangtag or packaging that has your mark on it directly associated or attached to your product. A good example is the label on your shirt or the GAP printing on GAP sweatshirts. Be careful not to overdo it though, because if you turn  your mark into a decorative print for your product your mark may be dismissed as ornamental. 

For your services, all of your advertising and marketing can be a specimen as long as your mark is clearly shown associated with your offerings. This could be your storefront design or the placement of your mark in a commercial. Make sure you continue to create specimens of your mark, or down the road you may lose your mark through lack of use to another company.

By following these guidelines, you will have done as much as humanly possible to avoid the risk of opposition or to successfully fight an opposition if it comes your way; but you don’t have to go it alone.  

Our experts at Witmart conduct meticulous searches and reviews of your filings to ensure that you are protected when you apply for your trademark. We will guide you throughout the entire process and should you be opposed, we’ll lead you across that bridge when you come to it. 

So don’t hesitate! Head on over to our website to learn more about our services and find out how you too can defeat the trolls!

Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case-by-case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change. 

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