# Adams Law Office > Trademark attorney services ## Posts ### Mistakes That Can Cause USPTO Refusal: What to Avoid Before Filing a Trademark When filing for a trademark with the United States Patent and Trademark Office (USPTO), even a small misstep can lead to a refusal and cost you time, money, and momentum. As Sharon Adams, an experienced trademark attorney, explains, many of these mistakes are entirely avoidable with the right knowledge and preparation. In this article, we walk you through the most common mistakes that can trigger a USPTO refusal, based on real experiences from Sharon's trademark law practice. Whether you are applying for the first time or trying to clean up a past filing, these insights can help you steer clear of costly setbacks. Mistake #1: Choosing a Confusingly Similar Trademark What It Means: Your application may be refused if your mark is deemed “confusingly similar” to another registered or pending trademark, even if it’s not an exact match. Sharon's Insight: “The clearance search does not just bring back exact matches; it brings back a whole bunch of ones that are around it. People don’t realize that similarity in sight, sound, or meaning can trigger a refusal.” Real-World Example: Sharon mentioned a case where her client’s application was initially refused due to perceived confusion with another entity’s mark. Although she did not believe there was actual confusion, the examiner disagreed. This underlines how subjective trademark review can be, and why a professional search is key. 🔗 Related: How to Do a Trademark Search Before You Apply Mistake #2: Using the Wrong Trademark Classification What It Means: The USPTO divides trademarks into 45 classes, and placing your product or service in the wrong class can result in a refusal or increase the cost by adding extra classes. Sharon's Insight: “I had a client with an app, and one of these trademark mills wanted to file him in four different classes: education, art exhibitions, business consulting, and software as a service, just because the app had these features. I told him, ‘You have got a downloadable app. We can do it in one class.” Unnecessary or incorrect classes inflate costs and invite rejection. Getting classification right is not just a formality; it determines the legal protection your mark receives. Related: Understanding the 45 Trademark Classes Mistake #3: Incorrect Entity or Ownership Listed What It Means: The owner listed on your trademark application must exactly match the entity that uses the trademark in commerce. Mismatches between the applicant and the actual user of the trademark can lead to a mark being declared invalid, even after registration. Sharon's Insight: “If you file as an individual and later form an LLC, but don’t transfer the application and then file the statement of use in your personal name, it’s void ab initio. Completely invalid, even if it registers.” In one case, Sharon successfully fended off opposition because the opposing party had improperly filed their statement of use under the wrong entity. This mistake cost them the validity of their mark. 🔗 Related: Use in Commerce: What It Really Means Mistake #4: Filing Without a Proper Trademark Clearance Search What It Means: Filing without understanding the trademark landscape is like driving blindfolded. It can result in a USPTO refusal, opposition by other trademark owners, or having to start over. Sharon's Insight: “Sometimes I can just look at a mark and say, ‘That’s not going to work.’ That's my feeling based on years of experience, and I'm often right. But I always rely on the clearance search to determine. Sometimes, when a clearance search is negative, it helps people go back to the drawing board and come up with a name that has a better chance of success." Clearance searches reveal more than duplicates; they surface near matches, common law uses, and dormant registrations that can still pose a threat. Without this step, you’re flying blind. Mistake #5: Using a Trademark That Isn’t Truly in Use  What It Means: To file based on actual use, your trademark must already be used in commerce. If you're filing under intent to use, you must eventually file a valid Statement of Use. Filing either prematurely or inaccurately can result in rejection. Sharon's Insight: “There are strict rules about use in commerce. If the trademark isn’t being used by the named entity when the statement of use is filed, the whole application could be thrown out.” She also noted that failing to properly document or prove use (such as screenshots, website evidence, or packaging) can be another reason for USPTO pushback. Mistake #6: Working with a Low-Quality Filing Service (“Trademark Mills”) What It Means: Some DIY platforms or cheap online services rely heavily on automation, letting users self-declare goods, classes, and ownership without proper legal guidance. Sharon's Insight: “They just accept whatever the client says. That’s not my process. I use a trademark questionnaire, analyze the business, and advise on the right classification and ownership. That’s what makes the difference.” Final Takeaway: Treat Trademark Filing as a Legal Process, Not Just Paperwork Many people underestimate the complexity of filing a trademark. It is more than just filling out forms; it is a legal strategy requiring precise language, accurate classification, and a deep understanding of USPTO standards. By avoiding these common mistakes and working with an experienced trademark attorney, you are much more likely to secure registration and protect your brand long-term. ### Use in Commerce: What It Really Means Filing a trademark requires more than just having a clever name or a great logo. One of the most misunderstood requirements from the USPTO is proving “use in commerce.” Many applicants get rejected because they file too soon or misunderstand what “commerce” actually means. Here's what you need to know to avoid delays or denials. What Does “Use in Commerce” Mean? “Use in commerce” means that your product or service is actively being sold or offered to customers across state lines in the U.S. Here is what Sharon has to say:“Having a website or a domain does not count. You need to show real, traceable business activity that crosses state lines. That is what the USPTO is looking for.” “Use in commerce” does not require actual sales. For example, a non-profit may offer services at no charge. This may qualify as use in commerce if actual customers can access the services provided by the non-profit. Requirements for Proving Use in Commerce To file a use-based application (Section 1(a)), you need: A valid specimen (proof of real use) For products - Commercial activity that involves interstate trade Sales or services actually provided using the mark Acceptable Specimens (Proofs) Depending on your trademark class, a valid specimen might be: For Goods (Products): A photo of product packaging with your brand name A label/tag attached to the product An online store page with a purchase option For Services: A webpage showing the service with your brand and contact info Advertisements offering the service Business cards showing the mark in connection with the service Common Mistakes to Avoid Mistake 1: Filing an “in use” trademark application before you are actually using the markMistake 2: Using only a social media handle or domain nameMistake 3: Submitting a mock-up or concept image Here is what Sharon has to say:“We have had clients try to submit website screenshots from pages that weren’t live or weren’t offering the product for sale. The USPTO rejected it right away.” What If You Haven’t Started Yet? (Intent-to-Use Option) If you have not started using the mark in commerce, you can file under Section 1(b) – Intent to Use. This allows you to: Reserve your name or logo Get priority on the USPTO’s register Submit your proof later (via a Statement of Use) However, you can not finalize registration until you show actual use. Use in Commerce vs. Business Use Not every business activity counts: ✅ Acceptable Commerce ❌ Not Commerce Nationwide product sales Internal planning Website with purchase button Holding a domain name Actual client work Demo-only portfolio How to Know You are Ready to File Do you have actual customers? Do you ship or offer services beyond your own state? Can you prove this with screenshots, packaging, or invoices? If yes, then you’re likely ready for a use-based trademark filing. Final Thoughts Do not waste time and money by filing too early or with the wrong proof. The “use in commerce” requirement is strict, and it’s one of the most common reasons trademark applications get rejected. “It’s better to delay your application a little and get it right, than to face a rejection that sets you back months.” – Sharon, Adams Law Office Frequently Asked Questions  Q1: Can I file a trademark without using it yet?Yes, you can, by filing an Intent-to-Use application. It basically holds your spot, but you’ll need to show actual use of the trademark later on before it gets fully approved. Q2: Does having a website count as “use”?It can count, but only if your website clearly shows the product or service with the trademark, and there is a way for people to buy or book it directly. Just displaying the name isn’t enough. Q3: Can I use mock-up designs as a specimen?No, mock-ups or concepts will not work. The USPTO wants to see real, active use, something that shows your trademark is actually out there in the market. Q4: What does “use in commerce” actually mean for a trademark?It means that your trademark is actively being used to sell or promote your goods or services across state lines or in a way that implicates affects interstate commerce, not just locally. Q5: Can I apply for a trademark if I haven’t used it in commerce yet?Yes, you can file what's called an Intent-to-Use (ITU) application. It basically holds your rights while you get ready to launch. But keep in mind, you’ll still need to show real use down the line to complete the registration. Q6: What qualifies as proof of “use in commerce”?Proof can be things like product packaging with your trademark on it, website screenshots showing prices and sales, receipts that show the tradeamrk, shipping records, or even marketing materials. Basically, anything that clearly shows your mark is being used in real, day-to-day business. Q7: Does a social media post count as “use in commerce”?Not always. A basic post won’t cut it. To count as “use in commerce,” the post needs to clearly show that the product or service is available for sale, ideally with pricing, a way to buy, and some indication that you're reaching customers beyond just your local area. Q8: What’s the difference between “use in commerce” and just “using” a brand name?Using a name casually or privately (like printing it on internal documents or personal materials) doesn't count. “Use in commerce” must show the brand is tied to actual sales or a commercial offering that reaches the public. Q9: How soon after using a trademark in commerce should I file?Ideally, as soon as you have made a public, interstate-level sale or offering of your product or service. Waiting too long can expose you to risk if someone else files before you. Q10: Can I lose my trademark if I stop using it in commerce?Yes, trademarks can be canceled or considered abandoned if they’re not used in commerce for a continuous period (usually 3 years), and no intention to resume use is shown. ### Understanding the 45 Trademark Classes When you are applying for a trademark, you will come across one of the most critical (and commonly misunderstood) steps, and that is selecting the correct trademark class. The USPTO breaks down goods and services into 45 distinct trademark classes. Choosing the wrong one can delay your application or result in limited protection. Let’s break it down in a way that’s easy to understand, and backed by real-world insight. What Are Trademark Classes? The trademark system uses a global classification framework that organizes all goods and services into 45 distinct categories. Classes 1–34: cover physical goods such as clothing, electronics, and packaged foods. Classes 35–45: reserved for services like legal support, entertainment, and educational offerings. Each class defines a specific area of commercial activity, and your trademark protection only applies to the class or classes you include in your registration. Why Choosing the Right Class Matters Here is what Sharon from Adams Law Office has to say: “People don’t realize that even though a name is that’s available in one class, that doesn’t mean it’s available overall. It may already be taken in a related class, and that could block their trademark registration.” Here is why making the right class choice is crucial: It defines your protection scope The same name can legally be registered in different classes It affects your chances of USPTO approval Real-World Example: “Pancake” Trademark In another interview, Sharon shared a great example to explain the significance of the right class choice. She pointed out how the word “Pancake” has actually been registered in completely different categories:  Class 11: Lighting fixtures Class 7: Air-operated cylinders Class 28: Fishing lines Class 9: Magnifying lenses Even though they all use the same word, they’re in completely different, non-competing industries, which is exactly why they can all coexist without any issues. A Look at Some Common Classes Class No. Covers 9 Electronics (software, apps, computers) 25 Clothing and apparel 35 Advertising, business services 41 Education and entertainment 44 Medical and beauty services 45 Legal services An example: If you are an online course provider, you might need Class 41 (Education) and maybe Class 9 if you offer downloadable content. Can You File in More Than One Class? Yes, many businesses file under multiple classes if their goods or services fall into distinct categories. For example: A brand offering a mobile app (Class 9) and online consulting services (Class 35) should file under both to protect all aspects of their offering. However, filing in multiple classes means: Higher USPTO fees - the USPTO charges a fee for each class More documentation (e.g., separate specimens) What If You Choose the Wrong Class? Filing under the wrong class can: Lead to rejection or delay Limit your ability to stop others from using a similar name Cost more if you have to amend or refile How to Find the Right Class Identify your core product/service Use the USPTO’s TESS or ID Manual Get help from an experienced trademark attorney Remember: it is not about what you think your business does—it’s how it’s categorized legally. Final Thoughts Understanding trademark classes isn’t just paperwork; it is a strategic decision that affects your brand’s future. It is important to choose the right class (or classes) as it gives your trademark strength and longevity. “The classification system isn’t always intuitive. We’ve seen clients assume they’re covered when they’re not. It’s worth doing right the first time.” Sharon, Adams Law Office Frequently Asked Questions  Q1: How many trademark classes can I choose?You can file under multiple classes. However, each one requires additional fees and proof of use. Q2: Can I add a class after filing?No, you’d need to file a new application for the additional class. Q3: Do I need a separate application for each class?No, you can include multiple classes in one application. However, each needs a separate description and specimen. Q4: Can I register the same trademark name in more than one class?Yes, you can register the same trademark in more than one class. Q5: What happens if someone has already registered my desired trademark in a different class? If a trademark you are interested in is already taken under a different classification, you can typically still register it under another class—provided the products or services aren’t related in a way that might confuse consumers. The United States Patent and Trademark Office (USPTO) organizes trademarks into distinct categories called classes, each representing specific types of goods or services. This classification system makes it possible for separate businesses to legally use identical trademarks in different industries. Q6: How do I determine which classes apply to my business? To choose the right trademark classes for your business, start by clearly outlining the exact products or services you provide. Then, refer to the USPTO’s Trademark ID Manual, which is a detailed directory that groups goods and services into specific classes. This resource helps you match your offerings with the correct class numbers for your trademark filing. If you need expert assistance, Adams Law Office can offer professional guidance throughout the process. Q7: Is filing in the wrong trademark class a common mistake? Submitting a trademark application in the wrong class is a common mistake that can be expensive. If your goods or services are misclassified, it can lead to your application being rejected, cause delays, and cost you more money. Here’s why it is important: Application Rejection: The USPTO and other trademark offices will turn down your application if the class doesn’t match your goods or services. Delays: If you misclassify, you’ll likely get an office action requiring you to fix it, which will delay the process. Additional Costs: Each class has its own fee. If you file incorrectly, you may have to submit a new application and pay the fees again. Limited Protection: Even if your application is approved, filing in the wrong class could leave your brand less protected. How Adams Law Office Can Help:Adams Law Office can help you avoid these mistakes by reviewing your business and making sure you choose the right trademark class from the start. Their legal team will handle the details, check the accuracy of your classification, and manage the filing process to avoid delays and ensure your brand is fully protected. With their help, you can avoid these common issues and feel confident moving forward. ### Just Registered Your Business Name? Why You Might Still Need a Trademark So, you have registered your business name with the state. You might think you are fully protected—no one else can use your name, right?Not exactly. Business name registration and trademark registration are not the same thing. And confusing the two could expose your brand to legal and financial risks down the line. In this blog, we’ll break down the difference between business name registration and trademark protection, and why securing a federal trademark might be one of the most important steps you take for your brand. What Happens When You Register a Business Name? When you register a business name with your state (either as an LLC, corporation, or fictitious name/DBA), you are: Complying with state law Claiming the name for business operations within that state Ensuring another business with the exact name doesn’t already exist in that state But here’s the catch:This type of registration doesn’t grant you nationwide exclusive rights to that name. It doesn’t stop someone else from using the same name in another state—or worse, filing a trademark before you. Why State Business Name Registration Isn’t Enough Let’s look at what state registration doesn't do: Action Business Name Registration Federal Trademark Registration Protects you in all 50 states ✗ ✓ Allows legal action against infringers ✗ ✓ Stops others from registering similar names ✗ ✓ Builds legal ownership and brand value ✗ ✓ In other words, state registration is not a substitute for federal trademark protection, especially if you plan to grow your business online or across state lines. Real-World Risk: The Business Name That Wasn’t Safe Imagine this:You launch a wellness brand in California called MindWell Therapy. You register the name with the state and start building a website, social media accounts, and advertising campaigns. Six months in, you get a cease-and-desist letter from a company in New York. They’ve had a federally registered trademark for MindWell since 2020. You now face: Potential legal fees Forced rebranding Lost customers and credibility This scenario is not rare, and it is completely avoidable with early trademark registration. The Legal Difference: Business Name vs. Trademark Feature Business Name Trademark Governing body State-level agency (e.g., Secretary of State) United States Patent & Trademark Office (USPTO) Coverage area Single state All U.S. states + basis for international protection Purpose Business compliance Brand protection and ownership Can you stop othersfrom using the name? No May have some rights to the name under specific circumstances Yes Common Myths Debunked Myth 1: “If my name is available as an LLC, I can use it freely.”Truth: Another company could already have a federal trademark, and your LLC name doesn’t override their rights. Myth 2: “Registering a domain name means I own the brand.”Truth: Domains aren’t trademarks. Someone with a registered trademark can take legal action even if you own the URL. Myth 3: “I’m just starting out—I’ll file a trademark later.”Truth: The U.S. is a first-to-file country. Waiting gives someone else the chance to register first, even if you used the name before them. When to File a Trademark: Earlier Is Better You don’t have to wait until you're fully launched. In fact, you can file an “Intent-to-Use” (ITU) application if: You are building your website You are preparing product packaging You are not selling yet, but plan to soon This secures your place in line with the USPTO and helps avoid conflicts later. How a Trademark Adds Value to Your Business Registering your trademark doesn’t just protect you from risk—it adds real value to your company. Gives you exclusive nationwide rights to the name Builds consumer trust and credibility Increases your business’s valuation and appeal to investors Enables enforcement on platforms like Amazon, Etsy, and Instagram Provides a foundation for international trademark registration Why Adams Law Office Recommends Both: State + Federal Registration At Adams Law Office, we regularly help clients who assumed their business name registration was “enough”—until they faced trademark issues. We recommend: Registering your business entity with the state for compliance Filing for federal trademark protection to secure your brand Attorney Sharon Adams and her team walk you through: Conducting a trademark clearance search Choosing the right trademark class Filing under the correct entity Responding to Office Actions (if needed) Monitoring and renewing your trademark over time Whether you are a tech startup, therapist, designer, or eCommerce seller—your brand deserves solid legal protection from day one. Real Client Insight: Filing Late Nearly Cost Them Everything One client started a coaching business and used their business name publicly for nearly a year. But they hadn’t filed a trademark. Another party filed for the same name and got approval first. Our client had to: Change their business name Rebuild their website and reprint marketing material Lose valuable word-of-mouth and brand recognition This could have been prevented with early legal protection. FAQs – Business Name Registration vs. Trademark Q: I registered my business with the state. Do I still need a trademark?A: Yes. State registration only protects you locally. A trademark protects your name nationwide and gives you the legal standing to prevent others from registering or using confusingly similar names. Q: Can I use my domain name without a trademark?A: Technically yes, but it’s risky. If someone else trademarks the name, they may force you to surrender the domain or stop using it in business. Q: What’s an “Intent-to-Use” trademark application?A: It allows you to file for trademark protection before you start selling. It secures your place in line with the USPTO. Q: Will the USPTO automatically reject my application if my name is similar to an LLC in another state?A: Not always, but it may raise legal risks. That’s why a clearance search is crucial before filing. Registering your business name is a great first step. But it’s not the last. If you’re serious about building a memorable, defensible, and valuable brand, a federal trademark is essential. Do not leave your name—and your future—unprotected. Let Adams Law Office help you secure it the right way. Schedule your consultation today ### What Makes a Strong Trademark? A Guide to Fanciful, Arbitrary, and Suggestive Marks When you are building a brand, a strong trademark is one of the most valuable legal tools in your arsenal. But what defines a "strong" trademark? Why do some marks receive swift approval and legal protection while others face rejection or enforcement challenges? In this guide, we will explore how the strength of a trademark is measured, break down the different categories (with a focus on fanciful, arbitrary, and suggestive marks), and explain how to strategically choose a name that builds lasting brand equity and legal protection. What Is a Trademark and Why Does Strength Matter A trademark is a name, logo, symbol, or phrase used to identify your product or service in the marketplace. It’s not just a label—it's legal proof of your brand identity and a business asset that can gain value over time. But to be truly valuable, a trademark needs to be distinctive. The more distinctive a trademark is, the easier it is to register and defend legally. Distinctiveness is what separates a strong trademark from a weak one. The Trademark Strength Scale The USPTO ranks trademarks on a scale from strong to weak: Fanciful – Made-up terms (e.g., Google, Exxon) Arbitrary – Real words unrelated to the product (e.g., Apple for computers) Suggestive – Hints at the product’s qualities (e.g., Netflix) Descriptive – Directly describes the product or service Generic – Common names, not registrable Let’s explore the top three categories that form the core of a strong trademark strategy. 1. Fanciful Trademarks Definition: A fanciful mark is a completely invented term, created specifically to serve as a brand name. Examples: Kodak (photography) Pepsi (beverages) Zillow (real estate) Pros: Inherently distinctive Strongest form of trademark Easier to protect and enforce Cons: Requires significant marketing to gain recognition Legal Insight: Fanciful marks have the highest level of legal protection and are often favored by companies planning a national or global scale from day one. 2. Arbitrary Trademarks Definition: Arbitrary marks use actual words that have no logical relationship to the product or service they represent. Examples: Amazon (e-commerce) Apple (electronics) Gap (apparel) Pros: Also inherently distinctive Memorable and simple to market High level of trademark protection Cons: May create consumer confusion at launch without context Legal Insight: These marks work well when you're willing to educate the market on your product but want a familiar-sounding brand. 3. Suggestive Trademarks Definition: Suggestive trademarks hint at a product’s qualities without directly describing them. Consumers must use some imagination to connect the name to the product. Examples: Coppertone (sun protection) Netflix (entertainment delivery) Jaguar (automobiles – speed and power) Pros: Inherently protectable Creative and brandable Resonate emotionally with customers Cons: Must avoid slipping into descriptiveness Legal Insight: Suggestive marks strike a great balance between marketability and legal protection. Avoiding Weak Trademarks: Descriptive and Generic Descriptive Marks These marks describe a feature, function, or characteristic of your product. Examples: Quick Print (printing services) Cold & Creamy (ice cream) Pros: Customers easily understand what is being sold, or the services being offered Cons:  The USPTO may refuse to register a descriptive trademark on the Principal Register, and may only allow registration on the Supplemental Register Pro Tip: Sometimes including a logo with a descriptive trademark may help overcome a USPTO refusal claiming the trademark is “merely descriptive” Why They Are Risky: May require “acquired distinctiveness” to be registered Weak in court during infringement disputes Generic Marks These are everyday names for products or services. Examples: Computer (for computers) Phone App (for mobile applications) Why They Fail: Not registrable Can never be exclusively owned The Impact of a Strong Trademark Having a strong trademark means: Often times, faster USPTO approval Greater protection from conflicting or confusingly similar marks Higher brand valuation Easier international registration Strong trademarks are unlikely to receive an Office Action that refuses registration claiming the trademark is “descriptive”,  and are more likely to become enforceable, lasting brand assets. Real-World Example: Arbitrary vs Descriptive Let’s say you’re launching a new fitness app: Descriptive Name: “Daily Workout Tracker” Suggestive Name: “CoreDrive” Arbitrary Name: “Nimbus” “Daily Workout Tracker” may be functional but it offers little legal protection. “CoreDrive” hints at fitness and motivation, giving it both branding appeal and distinctiveness. “Nimbus” has no obvious connection to fitness but is unique and easier to protect. How Adams Law Office Helps You Choose Wisely At Adams Law Office, we do more than file trademarks—we help you build a brand that lasts. Our services include: Trademark strategy consultations tailored to your business Comprehensive clearance searches to assess risks Custom legal opinions on your proposed mark’s strength Filing and prosecution support through the USPTO We work with startups, tech founders, eCommerce brands, and service professionals to secure marks that grow with your business. FAQs: What Makes a Trademark Strong? Q: Why is a fanciful trademark stronger than a descriptive one? A: Fanciful marks are unique and have no prior associations, making them easier to register and defend. Descriptive marks require proof of distinctiveness and face a higher rejection risk. Q: Is it okay to use a common word if it has a different meaning? A: Yes, that would qualify as an arbitrary mark. Words like "Apple" for computers are strong because the word has no natural link to the product. Q: Can a descriptive mark become strong over time? A: Sometimes. If a brand builds strong recognition through years of use, it may gain “acquired distinctiveness” and qualify for registration. Q: Should I avoid clever or humorous names? A: Not necessarily. If they’re suggestive or arbitrary and not descriptive, they can be powerful trademarks—especially with a creative brand strategy. Q: How early should I consult a trademark attorney? A: Before launching! Even if your business is in development, early consultation ensures you avoid weak marks and costly rebranding. Ready to Secure a Strong Trademark?Let Adams Law Office help you choose, file, and protect a mark that supports your long-term business goals. Schedule a consultation today. ### Trademark Filing Mistakes That Can Get You Rejected (and How to Avoid Them) Filing a trademark with the United States Patent and Trademark Office (USPTO) can seem straightforward, but in reality, it’s a legal process that requires accuracy, clarity, and strategic foresight. Many applicants are surprised when their trademark gets rejected due to avoidable mistakes. The good news? With the right preparation and legal insight, most of these pitfalls can be avoided. This guide breaks down the most common reasons trademark applications get denied—and how to protect your brand from setbacks. Why Are Trademark Applications Denied? USPTO trademark examiners review thousands of applications each year. Their job is to ensure that every registered mark meets specific legal standards, is distinguishable, and does not infringe on others. Even a small oversight in your application can lead to delays or full-on rejection. At Adams Law Office, we’ve helped countless clients avoid these errors and successfully register their trademarks. Below, we break down the most common mistakes and what you should do instead. Mistake 1: Choosing a Weak or Descriptive Trademark What Went Wrong:Many businesses submit names that are too generic or merely describe what the business does. For example, “Fresh Bread Co.” for a bakery or “Speedy Car Wash” for an auto detailing service. These types of names offer little to no legal protection. Why It’s a Problem:Descriptive marks are often rejected because they fail to distinguish your brand from others in the marketplace. Worse, even if accepted, they’re harder to enforce legally. What to Do Instead:Choose a strong mark—preferably fanciful, arbitrary, or suggestive. These have the highest chance of approval and offer robust protection. During consultations, Adams Law Office helps evaluate name strength and suggests adjustments before filing. Mistake 2: Not Conducting a Proper Clearance Search What Went Wrong:Some applicants skip the clearance search altogether or rely solely on a basic USPTO TESS search. As a result, they file for trademarks that are already in use or too similar to existing registrations. Why It’s a Problem:Your application can be denied due to a "likelihood of confusion" with a previously registered mark, even if it’s in a slightly different form or spelling. What to Do Instead:Before filing, conduct a comprehensive trademark clearance search. At Adams Law Office, we use advanced legal databases and professional search tools to identify potential conflicts beyond exact matches. Mistake 3: Incorrectly Identifying Goods and Services What Went Wrong:Applicants often use vague, overly broad, or incorrect descriptions in the “Identification of Goods and Services” section. For instance, writing “technology services” instead of specifying the nature of the service (like “software development for mobile applications”). Why It’s a Problem:The USPTO requires clear, specific descriptions that align with approved terminology. Ambiguity can lead to a refusal or an Office Action request for clarification. What to Do Instead:Work with a trademark attorney to select the right class(es) and write accurate descriptions. At Adams Law Office, we guide clients in matching their services to the correct USPTO categories and language. Filing Under the Wrong Name or Entity What Went Wrong:Some business owners mistakenly file the trademark under the wrong name—such as using their personal name when the trademark belongs to their LLC, or listing outdated business information. Why It’s a Problem:Ownership errors can render your registration unenforceable or even void. What to Do Instead:Double-check ownership details before filing. We advise our clients on correct legal ownership—whether you're filing as an individual, corporation, LLC, or partnership. Mistake 5: Responding Poorly (or Not at All) to Office Actions What Went Wrong:Applicants sometimes ignore USPTO Office Actions or submit weak, non-persuasive responses. Others miss the deadline entirely. Why It’s a Problem:Failure to respond correctly (within the deadline) leads to application abandonment, requiring you to start over. What to Do Instead:If you receive an Office Action, don’t panic—but act quickly. At Adams Law Office, we craft detailed, USPTO-compliant responses that address examiner concerns head-on. From minor corrections to complex refusals, we give your trademark the best shot at success. Bonus Mistake: Relying on Cheap Online Filing Services What Went Wrong:Many applicants turn to low-cost platforms that offer one-size-fits-all templates and no legal advice. These services rarely flag legal issues or assist with Office Actions. Why It’s a Problem:You might save money upfront, but end up paying far more in the long run to fix or refile applications—or even rebrand. What to Do Instead:Work with an experienced trademark attorney who understands the legal and strategic aspects of filing. Sharon Adams offers flat-fee services so there are no surprises—just dependable guidance from start to finish. Real Case Example: How Smart Filing Avoided a Costly Rebrand One of our clients—a digital marketing startup—wanted to trademark their new brand name. A quick online search showed no obvious conflicts, but our clearance search found a pending registration that could’ve blocked them. Our solution? We recommended a slight name modification and adjusted their filing strategy to avoid rejection. The trademark was approved, and their rebrand never had to happen. H5 Tag: Final Thoughts: Trademark Filing Isn’t Just a Form—It’s a Legal Strategy Filing a trademark is not a do-it-yourself job. It’s a very critical investment in your business’s future. By avoiding common mistakes and working with the right legal team, you protect your brand, your time, and your reputation. At Adams Law Office, we have seen the long-term consequences of improper filings, and we have helped hundreds of clients get it right the first time. H6 Tag: Ready to File with Confidence? Let Sharon Adams guide you through the trademark process with personalized legal support. ✔ Comprehensive Trademark Search✔ Correct Class & Description Selection✔ Error-Free USPTO Application Filing✔ Response to Office Actions, If Needed Call now: (510) 649-1331Or fill out the trademark intake form to get started today. FAQs – Trademark Filing Edition Q: Can I file a trademark on my own?Yes, but even small mistakes can cause rejection. Legal help ensures your application meets USPTO standards. Q: Do I need to register my trademark if I already own the domain?Yes. A domain does not give you trademark rights or legal protection. Q: How long does the filing process take?On average, 8–12 months. But delays are common if office actions are issued—timely legal responses help avoid setbacks. Q: How much does trademark filing cost with legal help?Adams Law Office offers flat-fee services with no hidden costs. You’ll know exactly what you’re paying for upfront. ### How to Do a Trademark Search Before You Apply Thinking about trademarking your brand? Start here. Before you invest time and money into your application, one of the most critical steps is conducting a proper trademark clearance search. This step can save you from rejection, opposition, or future legal headaches. In this guide, we will walk you through the trademark search process and highlight key insights from trademark attorney Sharon Adams, who has helped countless startups, Amazon sellers, and small businesses successfully navigate this journey. Why a Trademark Search Is Non-Negotiable A trademark search helps you: Avoid infringement on existing trademarks Gauge the registrability of your brand name or logo Save time and money by identifying potential conflicts early Increase approval odds with the USPTO Sharon explains that due to the sheer volume of trademarks filed every year (including international filings), it’s more difficult than ever to secure a unique name. That’s why she recommends starting the trademark application process with a detailed clearance search. What Is a Trademark Clearance Search? It’s more than typing your brand name into Google or the USPTO database. A proper clearance search digs deeper: Exact matches Similar names or spellings Phonetic equivalents Related goods or services Sharon emphasizes that even when a name looks available, you must look at names in related industries or classes that might still pose a conflict. Free vs. Professional Searches You can start with free tools like: USPTO TESS Search Google, domain name checkers, and social media handles But as Sharon notes, these tools only scratch the surface. She offers professional clearance searches that: Examine federally registered and pending marks Include common-law marks (those not federally registered) Interpret how an examiner might perceive confusion "Even if a name appears available, an examiner may still find a likelihood of confusion. Every examiner has their own interpretation." – Sharon Adams What Happens After the Search? Sharon’s process includes: Analyzing search results with the client Identifying risks and close conflicts In some cases, suggesting alternatives if the original name is not viable Proceeding to file only when the chances of success are reasonable Sometimes, she even advises clients to go back to the drawing board if all viable names in a category are blocked. While she doesn’t create brand names, her insight helps refine names that are more likely to pass. https://www.youtube.com/watch?v=UHgzQKLMvW8 Final Thoughts A trademark search is a strategic safeguard, not just a formality. It’s about understanding the landscape, minimizing risk, and ensuring your brand gets the legal protection it deserves. Sharon’s client-first approach, grounded in thorough clearance research, is what sets her apart from DIY platforms or "trademark mills" that skip these crucial steps. Ready to move forward?Start your journey with a search that gives your brand the green light. ### The Complete Guide to Trademarking Your Brand: From Idea to Registration Thinking about protecting your brand with a trademark? Whether you are an Amazon seller, a startup founder, or an entrepreneur ready to launch your product, understanding the trademarking process is crucial. Sharon Adams, an experienced and veteran trademark attorney, shares key insights drawn from working with clients from small businesses to product developers. With the help of this guide, we will walk you through everything from the initial idea to successful registration with the USPTO, and what to watch out for along the way. Why Trademarks Are Essential for Your Brand Trademarks give your brand legal protection, help prevent others from using confusingly similar names, and offer a foundation to build lasting brand equity. For businesses using platforms like Amazon, a trademark opens the door to the Amazon Brand Registry, providing protection and advantages even before your trademark is officially registered. Client Insight: Sharon frequently works with Amazon sellers who pursue trademarks primarily to gain access to the Brand Registry. Even a pending trademark application qualifies. How to Prepare to File: The Importance of The Trademark Clearance Search Before filing anything, a trademark clearance search is essential. This isn’t just about checking exact matches; you need to understand what's similar or potentially conflicting. Client Insight: Sharon emphasizes that this is not a DIY process. She performs deep-dive clearance searches to reveal related trademarks, not just identical ones. This helps clients identify what’s possible and what to avoid. Key Tip: If your brand name starts with or ends with a trendy letter combination already saturated in your category, you may need to go back to the drawing board. Avoiding Common Filing Mistakes Many applications get rejected due to avoidable mistakes such as: Filing under the wrong entity (individual vs. LLC) Using vague descriptions for goods/services Choosing incorrect or multiple unrelated trademark classes Client Insight: Sharon shared a case where a client was wrongly advised to file under four classes for one downloadable app. She helped consolidate it into one correct class, saving time and money. https://www.youtube.com/watch?v=qrUWFJAKGU8 Understanding Trademark Classes The USPTO uses 45 classes to categorize goods and services. It’s important to select the correct one for your business, not the one that kind of fits. Client Insight: Many clients don’t realize they can describe a wide range of features under a single class if it's properly worded. Sharon helps clients expand descriptions within the USPTO’s accepted language. Filing Your Application Sharon typically works on a flat-fee basis, which includes a custom questionnaire covering: Who owns the mark (individual or entity) What goods/services are covered The format of the trademark (word, logo, etc.) She ensures this aligns with how the trademark is used and prevents future rejections. Client Insight: Trademark mills often skip this critical analysis, leading to incorrect or overly complicated filings. Sharon's personalized process helps avoid that. Use in Commerce: What It Really Means The term "use in commerce" has legal weight. The entity using the mark (not just the person who files) must match the information in the application. Client Insight: Sharon shared a powerful case where she uncovered a competitor's mistake: the trademark was filed by individuals, but actually used by an LLC. She used that error to protect her client against an opponent. What Happens After Filing? After filing a submission, you can expect to hear from the USPTO in about 8 months. During this time,  Sharon will keep you updated at each step (major and minor) You can check in at any time Sharon will inform you about approvals, publications, and potential office actions Client Insight: Many clients feel anxious about the "quiet period." Sharon reassures them that this is normal and prepares them for every stage. Overcoming Refusals and Oppositions Refusals (like the likelihood of confusion) or third-party opposition can happen. Sharon’s recent case study showed how expertise can make the difference: She defended a client's mark against two challenges Proved an opponent's registration was invalid due to incorrect ownership Got a second conflicting registration canceled Client Insight: Her deep knowledge of USPTO rules and strategic timing prevented costly legal battles. Conclusion: Trademarks Protect Your Vision Trademarking isn’t just about paperwork; it’s about protecting your dream. Whether you’re launching a product on Amazon or scaling your startup, a well-managed trademark process gives you peace of mind, legal security, and a brand identity you can build on. Final Note from Sharon: "I really like helping people who have a dream. They want to start their business. I want to get them their trademark and give them the protection they need online to keep competitors away." ### Office Action Panic? A Simple Guide to Respond Without Losing Your Trademark You have filed your trademark application, feeling excited and confident, only to receive an intimidating letter from the USPTO called an Office Action. What now? Many business owners panic, fearing they’ve already lost their shot at protecting their brand. But here’s the good news: An Office Action doesn’t mean rejection, it’s a request for clarification or correction. And with the right legal strategy, your trademark can still move forward smoothly. How to Respond to a USPTO Office Action Without Losing Trademark Protection Understanding how to respond to an Office Action is critical. A poorly crafted or delayed response can lead to the rejection of your trademark application. But with professional guidance, you can often overcome the objections, strengthen your filing, and secure your mark. Let’s break it down step-by-step, what it means, what to do, and how to respond with confidence. What Is a USPTO Office Action? A USPTO Office Action is a formal communication from a trademark examiner who reviews your application. It outlines specific issues or objections with your filing. These can be non-substantive (such as a missing disclaimer or improper classification) or substantive (such as a likelihood of confusion with another registered trademark). There are two common types: Non-Final Office Action: This is the most common. It means the examiner has found some issues, but is open to review after your response. Final Office Action: If your first response didn’t resolve the issues, the USPTO may issue a final refusal at this point; your options narrow, but you may still respond, amend, or appeal. Common Reasons for Receiving an Office Action Understanding why you received an Office Action helps you avoid it in the future or fix it now. Some of the most frequent causes include: Similarity to an existing trademark (likelihood of confusion) Descriptiveness (your mark describes the product/service too directly) Improper classification of goods or services Failure to function as a trademark (generic or overly common words) Missing disclaimers on part of your mark Specimen issues (the image or evidence you submitted doesn't show proper use) How to Respond to an Office Action the Right Way Responding effectively requires legal precision. Here's the process: Step 1: Review the Office Action Carefully Read the full document. Understand the legal basis of the examiner’s objections. Step 2: Check Your Deadline You typically have three months (with a one-time extension of three more months, if needed and paid for) to respond. Don’t miss it, your application will be abandoned if you do. Step 3: Prepare a Response Depending on the type of refusal, you may: Amend the description or classification Provide additional evidence or clarifying details Argue why your mark is not confusingly similar to another Offer legal citations and precedents Step 4: Submit Through TEAS All responses must be submitted via the Trademark Electronic Application System (TEAS). Responses should be formal, professional, and legally sound. Why You Shouldn’t Do It Alone Many applicants try to handle Office Actions on their own or through low-cost online platforms. This often leads to rejections, delays, or permanently abandoned trademarks. Here's why working with an attorney, like Sharon Adams of Adams Law Office, makes all the difference: Sharon analyzes the legal arguments and prepares a USPTO-compliant response. She helps you refine or reframe your mark refine or reframe some aspects of the trademark application, if needed. She draws from years of experience handling complex refusals. Real Scenarios Where Sharon Legal Help Saved the Trademark Trademark Applied For: SONOMA CHAMPAGNE SABRES Product Type: Champagne sabers Challenge: The USPTO considered the mark descriptive and initially refused registration. Sharon’s Legal Strategy: Demonstrated that the mark had acquired distinctiveness through use in commerce. Provided supporting evidence to meet USPTO standards. Outcome: The trademark was successfully registered. Let’s Fix Your Office Action Before It’s Too Late Received an Office Action? Don't let your trademark dream die in red tape. Schedule a consultation with Sharon Adams today and get a clear legal response that puts your application back on track.Fill out the intake form to get started An Office Action is not the end; it’s a second chance. With a clear understanding and the right legal strategy, your trademark application can move forward.Let Sharon Adams help you protect what you’ve built. FAQs – Office Actions Explained Q: What happens if I ignore the Office Action? Your application will be abandoned, and you’ll lose your filing fees and place in line. Q: Can I fix my trademark if it’s “too descriptive”? Yes, in some cases, by proving “acquired distinctiveness” or adding branding context. Q: Can I respond to the Office Action myself? Technically, yes. But legally, even small mistakes can lead to rejection. A trained attorney like Sharon ensures your response is complete, persuasive, and on time. Q: How much does it cost to respond with legal help? Adams Law Office offers many trademark services, including office action responses, on a flat-fee basis—no surprises. ### Trademark or Bust: Why Delaying Brand Registration Could Cost You Thousands Your brand is more than just a logo or a catchy name—it’s your business’s reputation, your customers’ trust, and your competitive edge. But what happens if someone else registers your brand name first? What if you invest thousands in marketing, only to face legal threats or forced rebranding? Let’s face it—delaying trademark registration isn’t just risky; it can be financially devastating. This guide will walk you through the essentials of trademark protection, common pitfalls, and why acting early could save your business. What Is a Trademark, and Why Does It Matter? A trademark is legal protection for your brand name, logo, slogan, or any unique identifier that distinguishes your product or service in the marketplace. It gives you exclusive rights to use that mark in connection with your goods or services. If you’re building a brand that you want to scale, monetize, or license, a trademark isn’t optional; it’s essential. The Hidden Costs of Delaying Your Trademark Waiting too long to register your trademark might seem harmless, but the risks grow with every day you wait: 1. Someone Else Could Register It First If another business—local or online—files for the same or a confusingly similar name before you do, you could: Lose the legal right to use your own brand Receive cease and desist notices Be forced to rebrand entirely It’s not just about losing a name; it’s about losing your identity, your credibility, and the audience you’ve worked hard to build. 2. Rebranding Is Expensive Changing your brand isn’t as simple as a new name. It often requires overhauling: Logos, websites, product labels, and packaging Social media handles, advertising materials, and brand guidelines Business cards, contracts, signage, and other assets A rebrand can easily cost thousands of dollars, not to mention the loss of brand recognition and trust you've earned. 3. You May Miss Out on Legal Benefits Registering your trademark with the USPTO gives you: Nationwide exclusive use of the mark Legal presumption of ownership Power to stop infringers Eligibility to register internationally Without registration, you may not have full legal recourse, even if you’ve been using the brand name for years. First-to-File: Why Being First to Use Isn't Always Enough The U.S. trademark system follows a first-to-file approach, meaning that the first party to file a trademark application may be granted the registration, even if someone else has already been using the mark in commerce. Here’s what that could mean for your business: Even if your company (say, Z Company) has been selling products under Trademark X, if another business files for that name first, they may receive the official trademark registration. While Z Company can likely still use the name, they now face: Customer confusion, where clients mistakenly engage with the registered company A weakened brand position despite prior use Your Legal Options: File an Opposition during the trademark application’s publication phase. But this must be done quickly and is often missed. It’s a costly process, taking about two years and requiring thousands in attorney fees. File a Cancellation Proceeding after registration. Also expensive and time-consuming. Although Z Company doesn’t lose the right to use the name, it may choose to rebrand anyway—simply to avoid legal complications and protect its customer base. Key takeaway: Filing early isn't just smart—it's strategic. It protects your brand from costly legal disputes and confusion in the marketplace. When Is the Right Time to File a Trademark? When Is the Right Time to File a Trademark? The best time to file is as early as possible—ideally before you: Launch your brand or business Purchase a domain or publish a website Print any marketing materials Begin social media promotion or advertising Even if you're still in the planning phase, you can file an "intent to use" application to secure your rights before going public. How to File a Trademark the Right Way Filing a trademark may sound simple, but mistakes are common and costly. Here’s what it involves: 1. Conduct a Thorough Clearance Search Don’t rely on a quick Google search. A proper trademark search includes: The USPTO database An in-depth search of the USPTO database, beyond what is shown on the USPTO website, using a specialized search engine tool State-level trademark registries Common law and unregistered uses Similar-looking or sounding marks This helps prevent rejection or legal disputes down the road. 2. File an Accurate Application A successful application requires you to: Choose the right trademark class(es) Describe your goods/services with clarity Avoid overly broad or vague language File under the correct entity (individual or company) Missteps here are among the top reasons applications are denied. 3. Monitoring and Maintenance After your trademark is registered, it is essential to actively monitor and maintain it to protect your rights. Once registered, you must: Use the trademark in commerce Submit proof to the USPTO Renew at specific intervals (between 5–6 years, then 9–10 years) Neglecting maintenance can result in the loss of your trademark rights entirely. What If You Already Filed and Got an Office Action? An Office Action is a formal letter from the USPTO identifying problems in your application. It could be due to: Confusingly similar mark already registered Incorrect classification Weak or descriptive mark Don’t panic. Many applications receive office actions. An experienced trademark attorney can help you: Draft a legal argument & respond with a strong legal argument Amend your application Strengthen your application You don’t have to navigate this alone. Choosing a Strong Trademark: Not All Names Are Equal The strength of your trademark affects its success. Here’s how USPTO ranks trademark strength: Type of Mark Example Strength Fanciful (invented) Exxon, Kodak Very Strong Arbitrary (real word, unrelated meaning) Apple (for computers) Strong Suggestive Netflix (suggests entertainment) Moderate Descriptive Fast Plumbing Weak Generic “Computer” for a computer brand Not Registerable Avoid descriptive and generic names—they’re harder to protect and often rejected. “I Already Registered My Business Name —Isn’t That Enough?” Short answer: No. A business name registration (like an LLC or sole proprietorship) only protects the name locally or at the state level. Likewise, obtaining a domain name does not necessarily give you rights to that name, especially if another company has a trademark registration for your domain name. Only a USPTO trademark registration gives you nationwide protection and legal rights. “Note - Registering a business name with the state allows someone to run a business under that name. However, it doesn’t always mean they have the right to use it as a trademark.” How a Trademark Attorney Can Save You Time and Money While DIY platforms look cheap upfront, they often: Use generic templates Don’t help with classification Offer zero legal support if your mark is refused Working with an attorney like Sharon Adams means: Thorough clearance searches Custom advice on mark strength and strategy Correct class selection USPTO-compliant filings Representation in office action responses Read Example: The Cost of Waiting Dana, a wellness coach, built her entire brand around the name “Root & Ritual.” After 18 months of business growth, she discovered someone else had filed for the same name. She received a cease and desist and had to: Redesign her logo and website Notify and explain to her entire client base Spend over $5,000 on rebranding, marketing, and materials Had Dana filed earlier, the entire situation could’ve been avoided. Take Action Before It’s Too Late If you are building a brand, the best time to register your trademark is right now. Waiting exposes you to risks, potential lawsuits, and expensive rebranding. Whether you are just starting out or have been in business for years, protecting your brand should be a top priority. Ready to Protect Your Brand? Work with Sharon Adams Today Attorney Sharon Adams offers flat-fee trademark legal services—no hidden costs, no confusion. Comprehensive Clearance Searches Trademark Application Filing Office Action Responses Trademark Renewals & Maintenance Fill out the intake form to get startedOr call now: (510) 649-1331 Trademark FAQ Q: Can I register a trademark before launching my business? Yes! You can file an “intent to use” application to secure your rights before launch. Q: Will a trademark protect my logo, too? Yes, you can register word marks (names) and design marks (logos), separately or together. Q: Can I trademark a phrase or tagline? Absolutely—as long as it’s not generic or merely descriptive. Q: What happens if I don’t maintain my trademark? It can be canceled. You must submit evidence of use and renew at set intervals. ### Distinctive Trademarks For Online Protection and Visibility Understanding Trademark Distinctiveness: Why Some Marks Are Stronger Than Others When it comes to protecting your brand, not all trademarks are created equal. The United States Patent & Trademark Office (USPTO) classifies trademarks based on their level of distinctiveness, which ultimately determines how much legal protection they receive. The stronger the trademark, the easier it is to enforce against competitors. Types of Trademarks: Distinctive, Suggestive, or Generic The USPTO organizes trademarks into several categories based on their distinctiveness: Distinctive Trademarks: These are the strongest trademarks and receive the highest level of legal protection. Distinctive marks are further divided into two subcategories: Fanciful Marks: These are made-up words that have no meaning outside of the brand. Examples include XEROX and KODAK. Arbitrary Marks: These use real words, but the words have no logical connection to the goods or services provided. Examples include AMAZON (for an online retailer) or COACH (for handbags). Suggestive Trademarks: These marks suggest, but do not directly describe, the goods or services. For instance, the mark YOUR ACCOUNTANT for accounting services suggests the nature of the business but requires some imagination to connect the name to the service. Generic Terms: These marks are the weakest and receive no protection. Generic terms directly describe the goods or services they represent. For example, COFFEE STORE for a business selling coffee cannot be trademarked because it is generic. Real-World Examples: Arbitrary vs. Suggestive Marks in Action To better understand the relative strength of trademarks, let’s compare suggestive and arbitrary trademarks in an internet search: Suggestive Marks: An internet search for the registered trademark YOUR ACCOUNTANT does not reliably find the business that owns the trademark. Instead, the search returns results for businesses with similar names. This illustrates that suggestive trademarks, while protectable, may lack the uniqueness and strength of more distinctive marks. Arbitrary Marks: In contrast, an internet search for the arbitrary trademark BUILD ACCOUNTING yields multiple listings for businesses with the same name, along with one similar result for BUILT ACCOUNTING. While arbitrary marks (like BUILD ACCOUNTING) are stronger than suggestive marks, they still carry some limitations compared to fanciful trademarks. Why Fanciful Trademarks Are the Strongest Fanciful marks, such as XEROX or KODAK, stand out because they are invented words. These marks are inherently distinctive, making them the easiest to protect and enforce. When you search for a fanciful mark, the results almost always lead directly to the business associated with the trademark. This uniqueness provides a significant advantage in branding and legal protection. Key Takeaways Distinctive trademarks (fanciful and arbitrary) offer the strongest legal protection. Suggestive trademarks are protectable but may face challenges in terms of uniqueness and search visibility. Generic terms receive no protection and cannot be trademarked. For businesses looking to build strong brands, choosing a distinctive trademark—especially a fanciful or arbitrary mark—can provide lasting value and a competitive edge in the marketplace. Here is a YouTube video about this. https://www.youtube.com/watch?v=F-GUlIAfOXQ This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### USPTO Fees Will Increase on Jan 18, 2025 The United States Patent & Trademark Office has approved an increase in filing fees that becomes effective on Jan 18, 2025. The USPTO is increasing fees for trademark applications, post-registration maintenance fees, intent-to-use fees, and petitions and letters of protest fees. The USPTO lists some of the fee increases here. In addition, the USPTO is adding a new fee for applications that are incomplete, or that use a free-form identification for goods or services. Adams Law Office is ready to file documents before the Jan 18 fee increase happens. Contact us now to get the filing done before the deadline. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Incontestable Trademarks - A Section 15 Declaration of Incontestability Protects TMs from Claims that the Mark is Merely Descriptive. After five years a trademark registered with the USPTO must be renewed by filing a Section 8 Declaration of Use. At the same time, a trademark registered on the Principal Register may be declared "incontestable" by filing a Section 15 Declaration of Incontestability. See, 15 U.S.C. §1065. Incontestability provides certain specific rights, stated in 15 U.S.C. §1115(b): "To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce."         Section 1115 states these items, but what does it mean in practice? In Park 'N Fly, Inc. v Dollar Park and Fly, Inc., 469 U.S. 1985) the U.S. Supreme Court analyzed this section and held that an incontestable trademark cannot be challenged for being "merely descriptive". The Park 'N Fly company had a registered trademark for PARK 'N FLY, and the trademark had been declared incontestable. Park 'N Fly sued Dollar Park and Fly (hereafter "Dollar") claiming infringement of the PARK 'N FLY trademark. Dollar claimed that PARK 'N FLY trademark was "merely descriptive" in an attempt to invalidate the registered trademark. The Supreme Court held that an incontestable trademark cannot be challenged for being merely descriptive. The Supreme Court made clear that a trademark can be challenged for being merely descriptive prior to a declaration of incontestability, but after that - No. The Court stated "a mark may be canceled on the grounds that it is merely descriptive only if the petition to cancel is filed within five years of the date of registration." According to USPTO rules, a "merely descriptive" trademark should not be registered on the Principal Register. But it can happen, and a descriptive mark may be registered on the Principal Register. It's arguable that PARK 'N FLY is descriptive. However, once a Declaration of Incontestability is filed, that mark cannot be invalidated by claiming that the mark is descriptive. Here is a YouTube video about this if you're interested in a bit deeper dive into this subject. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Trademark Considerations When Creating a Brand Book A brand book comes with several layouts and color themes. However, trademarks are specific to one particular design, and one set of colors (if choosing to go with a color mark). The video below explains how trademarks relate to the designs shown in a brand book. https://www.youtube.com/watch?v=ArLbsBizMfc&t=35s This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### USPTO Rules to File Statement of Use, and When To File an "Insurance" Extension of Time A Statement of Use (SOU) is required when a trademark application was originally filed as "intent to use" (ITU). An ITU application means that when the trademark application was not being used on goods or services at the time of filing. After a trademark application is filed an examining attorney at the USPTO reviews the application. An ITU application may receive a notice of allowance if the examining attorney approves the application. But because the application was filed as intent-to-use, the trademark is not registered. It is approved. The applicant still must show "use in commerce" before the trademark can be registered. A Statement of Use is filed to show use in commerce. The USPTO has specific rules regarding the timing of filing an SOU. The applicant has six months after a notice of allowance file a statement of use. If the applicant cannot show use in commerce within six months then the applicant can request an extension of time to file an SOU. Each extension of time is for six months. So, a request for extension of time must be filed every six months until an SOU is accepted and approved by the USPTO. The date of the notice of allowance is the critical date for determining the USPTO filing deadlines. The recurring six-month deadlines are based on the date of the notice of allowance. Why An "Insurance" Request for Extension of Time Is Important. At the time this article is being written, the USPTO is taking at least four months to review an SOU. This means that the six-month deadline may expire before the USPTO examines the SOU. For example, if a notice of allowance issued on Oct. 5, 2023, the deadline to file an SOU is April 5, 2024. If the applicant files the SOU in February 2024 there is essentially no chance that the USPTO will review the SOU before the April 5, 2024 deadline. For this reason, it's best to file an "insurance" request for extension of time. This extends the deadline to show use in commerce for another six months, until Oct. 5, 2024. When the examining attorney finally reviews the SOU (in our example, estimated to happen around June 2024) the examining attorney may reject the SOU. That happens. Examining attorneys may issue a rejection as part of the examination process. In our example, if the applicant filed an "insurance" RFET the applicant will have until Oct. 5, 2024. This is particularly important if the examining attorney rejects the SOU claiming that it does not show use in commerce. The "insurance" RFET means that the applicant can create new evidence to show use of the mark and submit that before the Oct. 5, 2024 deadline. This is key. If the applicant did not file the "insurance" RFET, then the applicant cannot create new evidence of use of the mark. The deadline to show use in commerce expires if an RFET is not filed. In our example, if an RFET had not been filed, the applicant could only use evidence of use that was in existence as of April 5, 2024. These timing issues mean that an "insurance" request for extension of time is a good way to give a trademark applicant time to correct issues if a statement of use is not accepted. Contact Adams Law Office if you have questions about trademarks. We're here to help! This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Identity Verification for Trademark Filings with USPTO Click here for video of what is written below. The U.S. Patent & Trademark Office recently started requiring identity verification for users filing trademark documents on its online portal. Previously, a user could simply log into the USPTO website portal and file a trademark document. Now, only verified users can access the USPTO portal to file a trademark application or any other trademark document required by the USPTO. The USPTO has two ways to verify your identity: (1) on paper; or (2) online. To verify your identity on paper, go to the Trademark Identity Verification webpage. Scroll down to "Paper Verification". Download and complete the form, get your signature notarized, and mail or fax to the USPTO. To verify your identity online you will need a camera with an internet connection and a government-issued photo ID. You can either self-verify using biometric data, or go through an online agent for verification. Perhaps the easiest way is to contact Adams Law Office. Sharon Adams is already verified with the USPTO and can file application, response to an office action, maintenance filing, or any other trademark document that must be filed with the USPTO. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Trademark a Slogan? Businesses often want to trademark a phrase or slogan that is commonly used in their business. However, the U.S. Patent & Trademark Office (USPTO) will refuse to register a phrase/slogan unless it functions as a trademark. A trademark must identify a source of the goods. A phrase does not function as a trademark when consumers take the phrase at its ordinary meaning. The USPTO is increasing its scrutiny of phrases; there have been several recent decisions by the Trademark Trial & Appeal Board (TTAB) affirming a refusal to register a trademark because it failed to function as a trademark. Two recent trademark cases are discussed below: (1) GOD BLESS THE USA, and (2) TEXAS LOVE. GOD BLESS THE USA Does Not Function As A TrademarkRecently, Lee Greenwood, famous for his song “God Bless the USA†tried to register the phrase GOD BLESS THE USA for pillows, centerpieces, and wall hangings. The registration was refused because the phrase GOD BLESS THE USA does not function as a trademark. The TTAB found evidence of widespread use of the phrase by many others. This widespread use by others made it unlikely that the public would perceive the phrase as identifying that Lee Greenwood was the source of the goods. Therefore, registration was refused, and Mr. Greenwood did not get his trademark.  TEXAS LOVE Does Not Function As A TrademarkSimilarly, another TTAB decision held that TEXAS LOVE failed to function as a trademark because the phrase was the expression of a concept, was widely used by third parties, and would not be perceived as an indicator of the source of the trademark applicant’s goods. In this case, the trademark applicant wanted to register TEXAS LOVE for clothing and hats. The trademark examining attorney found evidence of widespread use of this phrase, and refused registration. The TTAB upheld this refusal even though there were other similar registered trademarks: e.g. FLORIDA LOVE (for clothing), CALIFORNIA LOVE (for beer), SOUTHERN LOVE (for a retail store), and others.  Although the USPTO had allowed these common phrases to be registered as trademarks, that did not matter in the case of TEXAS LOVE. Each case is examined independently. And in this case, the evidence showed widespread use of the phrase by others. Therefore, the phrase TEXAS LOVE was refused registration because consumers would not understand that the  applicant was the source of the goods. This is a short explanation about whether a slogan may be used as a trademark. Contact Adams Law Office if you have questions about obtaining a trademark. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events or case law may change the law and/or the analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney as applied to the facts of your circumstances. ### Showing Use of Trademark For Clothing Every trademark application filed with the United States Patent & Trademark Office (USPTO) must show use of the trademark in commerce before a trademark will be registered. The trademark applicant must submit a specimen, or evidence, to show use of the mark in commerce. "Use of the mark in commerce" is a phrase that has a particular meaning in trademark law. There are very specific requirements that must be followed to show use of the mark. One requirement is that the specimen cannot show an ornamental use of the mark. Having a specimen showing only ornamental use is a common issue with trademarks for clothing. If the specimen shows an ornamental use then the trademark application will be rejected for failing to show use of the mark in commerce. DESIGNS ON FRONT OF SHIRT ARE ORNAMENTAL Many trademark applications for clothing attempt to use a design on the front of the clothing as evidence of use of the mark in commerce. But the USPTO will reject this type of evidence as being ornamental. This happened in a trademark application for TWISTED MISFITS. The trademark was placed on the front of a sweatshirt, as shown in the image on the right. The specimen was rejected because "the specimen of record is merely a decorative or ornamental feature of applicant's clothing and, thus, does not function as a trademark to indicate the source of applicant's clothing and to identify and distinguish applicant's clothing from others." SPECIAL RULE FOR SMALL DESIGNS Small designs on the front of clothing may be allowed. For example, the crocodile logo for Lacoste, as shown on the left, is acceptable. The USPTO states that a small, neat, and discrete word or design feature, such as small design of animal over pocket or breast portion of shirt, may be valid evidence of use of the mark in commerce. Note that a small design feature will not necessarily be acceptable in all cases. This means that a small logo may be sufficient, but there is no guarantee. HOW TO SHOW USE OF A TRADEMARK ON CLOTHING There are some methods that are generally successful to show use of a trademark for clothing. These are tags, labels, and websites. Tags are attached to clothing, and may have a price on the back. The tag below shows an acceptable specimen for the trademark A ACME. Labels are also a common method to show use of a trademark on clothing. Labels are permanently attached to the clothing, as shown below by the label for a trademark for JUNK FOOD. SHOWING USE OF TRADEMARK FOR CLOTHING ON A WEBSITE Websites are often used to show use of a trademark on clothing. On a website, the trademark must be used near the description of the clothing, and there must be a shopping cart or other way to place an order for the clothing. The US Patent & Trademark Office provides an example, as shown in the image below. This is a short explanation of how to show use of a trademark on clothing. Contact Adams Law Office if you have questions about showing use of a trademark on clothing, or for other goods or services. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Bloomberg Uses NDAs – When Should A Business Have an NDA Presidential candidate Michael Bloomberg was challenged over his use of Non-Disclosure Agreements (NDAs) with women from his past. In addition, Bloomberg’s campaign staff reportedly are required to sign NDAs that preclude staffers from disclosing “all non-public informationâ€. While this may seem extreme to some, there are definitely times when businesses should use an NDA. Inventors, entrepreneurs, and businesses all need a Non-Disclosure Agreement whenever developing a new product, or developing a new business model. An NDA is essential when dealing with: Manufacturers or companies that build prototypesInvestorsPotential partners Having a signed NDA in place is crucial to protect your business before discussing your business plans or ideas with any of the above. A reputable company that manufactures products or builds prototypes will typically have a standard NDA, and often these NDAs have fair terms. However, it is important to have an attorney review the NDA to look for potential issues involving ownership and/or licensing rights, which can crop up in NDAs from manufacturers. Likewise, your business should have a standard NDA that it can provide to potential investors or partners. Having your own NDA shows that you are serious about your business and about protecting your rights. Potential investors and partners will expect a business to have an NDA, and having an NDA will help to protect your business from exploitation by others. Adams Law Office drafts non-disclosure agreements for a wide variety of businesses and entrepreneurs; and can review NDAs from other manufacturers to help protect you from signing away some of your rights. Contact Adams Law Office to discuss protecting your business and your inventions. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Registered Trademark Needed for Benefits of Amazon Brand Registry Rush to Register Trademarks Is On! More and more independent merchants are opening businesses and using online platforms to sell their products or services. Amazon is a key player in the online market. Amazon’s CEO Jeff Bezos says that independent merchants account for 58% of the company’s gross merchandise sales. Amazon itself accounts for an estimated 38% of the total U.S. online commerce. Amazon is encouraging independent merchants to use its platform by taking steps to prevent infringement of merchant’s brand names. Amazon’s Brand Registry program protects merchants in the competitive global marketplace by providing protection within the Amazon platform. Amazon Brand Registry Requires Registered Trademark. The Amazon Brand Registry protects sellers by proactively removing suspected infringing content. A merchant must have a registered trademark to be in the Brand Registry program so that Amazon has evidence that the merchant has legal rights to the brand name. The Brand Registry allows merchants to search for infringing content and have the infringing content removed, all within the Amazon Brand Registry platform. This is a huge benefit to independent merchants because it does not require going to court or any other type of legal intervention to stop infringement. Amazon itself will remove the infringing content. It appears that an increasing number of independent merchants will use the Amazon platform to sell products or services. Amazon reports that more than 130,000 brands are registered worldwide in its Brand Registry. Each one of these has a registered trademark. It’s time to apply for a trademark to compete in the global online marketplace — or in a brick and mortar store! A registered trademark protects the brand name, products, or services of companies that sell products online, whether on Amazon or another platform. Adams Law Office can assist with applying for a trademark to protect your products or services.  Contact Adams Law Office if you have questions about trademarks. This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Trademark Registration — Principal Register and Supplemental Register Compared It often happens that a business chooses a descriptive trademark for its brand name or products. A descriptive trademark may be entitled to registration on the Supplemental Register, however descriptive trademarks are not entitled to registration on the Principal Register. What does registration on the Supplemental Register mean? Only arbitrary and fanciful trademarks are allowed on the Principal Register. A descriptive trademark may only be registered on the Supplemental Register. A descriptive mark means that the mark describes a characteristic of the goods or services.  For example, INK TATOO CO. is registered on the Supplemental Register because it is descriptive of the tattoo services provided. There are many advantages to registration on the Supplemental Register. Some key features of trademark registration on the Supplemental Register are: Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services.Use of the registration as a basis to bring a lawsuit for trademark infringement in federal courts.Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.Inclusion of the mark in the USPTO’s database of registered and pending marks, which will:Provide public notice of the registration;Make it easier for third parties to find the registered mark; andPotentially deter third parties from using confusingly similar marks. Below is a chart that compares some features of registration on the Principal Register and on the Supplemental Register. Principal Register Supplemental Register Trademark must be distinctive Trademark may be descriptive, but cannot be generic Entitled to use ® Entitled to use ® Can prevent subsequent registrations of confusingly similar trademarks Can prevent subsequent registrations of confusingly similar trademarks Registered mark is presumed valid No presumption of validity of registered mark Can file intent-to-use trademark application Cannot be used in an intent-to-use trademark application May be declared incontestable after five years Cannot be declared incontestable after five years Published for opposition Not published for opposition Subject to cancellation proceeding Not subject to cancellation proceeding A key advantage of trademark registration, on either the Supplemental or the Principal Register, is that the mark is in the USPTO database. A registered mark can be a bar to subsequent registrations of confusingly similar marks. So, it’s better to have a mark on the Supplemental Register rather than to have no trademark registration at all. For all these reasons, having a registration on the Supplemental Register provides many benefits to trademark owners. Adams Law Office can assist with applying for all types of trademarks.  Contact Adams Law Office if you have questions about trademarks. This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. The case law and analysis provided in this blog reflect the date that the article is written. Subsequent events, updates, or case law may result in a change in the analysis provided herein. This blog does not contain any such updates or subsequent case law. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Scandalous Words Can Be A Registered Trademark Three In a Row for First Amendment Protection of Trademarks Trademark law prohibits registration of a scandalous or immoral trademark. However, in Iancu v. Brunetti, the U.S. Supreme Court recently held this provision of the law violates the First Amendment.   Erik Brunetti is an artist and entrepreneur who founded a clothing line that has been selling goods under the name FUCT for many years. He claims that the mark is pronounced as four letters F-U-C-T. “But you might read it differently†to quote the Supreme Court. Brunetti attempted to trademark his brand name for many years, filing his first unsuccessful trademark application in 1993. Brunetti tried again in 2011, and his registration was again refused because the Trademark Office considered the mark to be scandalous or immoral. Brunetti appealed this matter all the way to the U.S. Supreme Court, which ruled in his favor and held that prohibiting registration of scandalous or immoral trademarks violated the First Amendment. This is the third in a series of cases where courts have scrutinized whether trademark registration procedures are in alignment with the First Amendment. In Matal v. Tam, the U.S. Supreme Court held that the First Amendment protects disparaging trademarks.In United States v. Mongol Nation, a California federal court held that the First Amendment protects trademarks that inspire fear.And now, in Iancu v. Brunetti, the U.S. Supreme Court held that the First Amendment protects immoral or scandalous trademarks. CONCLUSION — It’s time to apply for that scandalous, immoral, disparaging, or scary trademark! Adams Law Office can assist with applying for all types of trademarks permitted under the First Amendment.  Contact Adams Law Office if you have questions about trademarks. This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. The case law and analysis provided in this blog reflect the date that the article is written. Subsequent events, updates, or case law may result in a change in the analysis provided herein. This blog does not contain any such updates or subsequent case law. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### First Amendment Protects Trademarks That Inspire Fear Mongols Nation Motorcycle Club Keeps Its Trademark The First Amendment may not come to mind when thinking about trademarks. However, the First Amendment was a crucial factor in a recent case about the government’s attempt to require forfeiture of a trademark used by a motorcycle club convicted of serious criminal offenses. First Amendment Protects Disparaging Trademarks & Trademarks that Inspire Fear The U.S. Supreme Court previously held that the First Amendment protects disparaging trademarks. Recently, a California federal court held that the First Amendment also protects from forfeiture trademarks owed by a motorcycle club the U.S. Justice Department characterizes as a gang. See, United States of America v. Mongol Nation, Case Number CR 13-0106-DOC-1, “Order re Motion for Entry of Preliminary Order of Forfeitureâ€, Feb. 28, 2019. The Mongols Nation Motorcycle Club owns two federally registered trademarks, one for the word MONGOLS, and the other for the word and logo, shown below. The trademarks are “collective membership marks†which means that members of a group wear the trademark to show they are part of a collective, in this case a motorcycle club. The Justice Department had been pursuing the Mongols Nation Motorcycle Club for criminal violations for over a decade, alleging violations of RICO.* Recently, a federal jury found the defendant Mongols Nation guilty of racketeering offenses under RICO. The jury also found that there was a direct connection between the club’s crimes and the trademarks and determined that the club should forfeit the trademarks. Defendant Mongols Nation objected to the forfeiture. The court found in favor of Mongols Nation. The court stated that the First Amendment prohibits the government from using RICO forfeiture laws to chill Mongol Nation members’ right to express their membership in the club. The court analyzed First Amendment law, noting that symbols and words on clothing are pure speech, and are entitled to full First Amendment protection. The jury had convicted Mongol Nation of serious crimes, including murder, attempted murder, and conspiracy to distribute cocaine and methamphetamine. The government contended that the crimes and actions of Mongols Nation inspired fear in others through the use of the trademarks, and therefore the trademarks should be forfeited. The court was unpersuaded by these arguments. The court found this type of forfeiture would be a prior restraint on speech and a content-based restriction on speech. In addition, the government had previously made statements that forfeiture of the trademarks would allow any law enforcement officer seeing a Mongols logo to “stop the gang member and literally take the jacket right off his back.†However, not all Mongols Nation members had been convicted of the crimes. The court found that forfeiture of the trademarks in these circumstances would unconstitutionally impact the Mongols Nation motorcycle club members right of association. For these reasons, the court refused to require forfeiture of the trademarks. From the court’s opinion, at page 11: Collective Membership Trademarks Collective membership trademarks are different than typical trademarks. Normally, a trademark must be associated with goods or services used in commerce. Collective membership marks do not require any goods or services associated with the mark. They are used to show that certain people are part of a collective. Some examples of collective membership marks include the National Rifle Association, American Thyroid Association, and the International Brotherhood of Teamsters. *RICO refers to the Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. §1962 et seq. Adams Law Office is here if you have questions about collective membership trademarks, or trademarks in general. This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. The case law and analysis provided in this blog reflect the date that the article is written. Subsequent events, updates, or case law may result in a change in the analysis provided herein. This blog does not contain any such updates or subsequent case law. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### It’s a Fine Line Between Hate and Love – U.S. Supreme Court on Trademarks FIRST AMENDMENT PROTECTS DISPARAGING TRADEMARKS A few years back a rock band tried to trademark its name — THE SLANTS. The U.S. Patent & Trademark Office (PTO) refused to register the trademark based on the statutory prohibition of “disparaging†trademarks found in 15 USC §1052(a).[1] The PTO reasoned that because “slants†can be used to disparage Asian people, it was a “disparaging†trademark and could not be registered with the PTO. The band said they chose the name The Slants to reclaim the word. They wrote a song about their experience trying to register this trademark, and their feelings about the word. The case made its way to the U.S. Supreme Court. The Supreme Court held that prohibiting registration of the trademark violated the First Amendment right to free speech. THE SLANTS is now a registered trademark. The Supreme Court took a strong stand in favor of the First Amendment in The Slants case, affirming that the disparagement clause in §1052(a) violates the free speech rights found in the First Amendment. See, Matal v. Tam, 137 S.Ct 1744 (2017). FIRST AMENDMENT PROTECTS DISPARAGING TRADEMARKS — DOES THE FIRST AMENDMENT PROTECT SCANDALOUS TRADEMARKS? After The Slants case, the PTO refused to register the trademark FUCT for clothing and other items. Based on The Slants case, the Federal Circuit overturned the PTO decision, and approved the registration of a trademark FUCT. This word was not analyzed as being “disparagingâ€, it was analyzed as being “scandalous†implicating a different clause of the same code section.[1] The Federal Circuit noted that the the concept of what is scandalous changes over time. Previously considered scandalous: MADONNA for wine (now permitted and registered as a trademark in 2008 without even referencing the fact that this was previously considered “scandalousâ€)BLACK TAIL for adult entertainment magazines (refusal to register affirmed by Federal Circuit in 1994, now the same applicant has a registered trademark for BLACK TAIL for adult entertainment services) The Federal Circuit looked to The Slants case, and held that refusing to register FUCT was an unconstitutional content-based restriction on speech. In other words, refusal to register FUCT violated the First Amendment. This appears to be in alignment with the Supreme Court’s decision in The Slants case. To many of us it follows that if the First Amendment protects hate speech, it should also protect scandalous speech. But for some reason, the Supreme Court felt the need to review the Federal Circuit’s decision, and in January 2019, the Supreme Court granted review of the decision to approve the trademark registration. The Supreme Court is expected to hand down its decision in the FUCT case in June. TRADEMARK REGISTRATION CAN BE COMPLICATED Trademarks are a valuable tool for protecting brands and businesses. But, trademark applications may involve tricky issues such as the correct applicant/owner, or what is the best classification or description of goods/services.    Contact Adams Law Office if you have questions about protecting your trademarks. [1] 15 U.S.C. §1052: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead … (Emphasis added.) This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Trademark Marijuana Products? Products that are used to smoke marijuana received U.S. federal trademark registration in November 2018. Yet it remains impermissible to trademark drug paraphernalia under federal law. How was this trademark obtained? Use-in-Commerce Specimen Submitted by Applicant in Trademark Application SmokeCartle.com sells a variety of smoking products and a look at its website shows that many of the products are used with marijuana. Federal law only allows registration of trademarks that are used for legal purposes, and smoking marijuana remains illegal under federal law. In addition, federal law prohibits the sale of drug paraphernalia used with substances listed in the Controlled Substances Act. Marijuana  is defined as a controlled substance, and thus the sale of drug paraphernalia for smoking marijuana is illegal under federal law. GOODS WERE LIMITED TO TOBACCO PRODUCTS The Trademark Office initially rejected the trademark application, stating that the Applicant did not have a bone fide intent to use the mark lawfully in commerce.  The examining attorney presented evidence showing that Applicant’s smoke products produced flames used in dabbing marijuana products.  Applicant countered with evidence that its website specifically stated that the products are “primarily intended or designed for tobacco use only.† Screenshot of Applicant’s Website Although this statement was found at the bottom of only one of Applicant’s webpages, the examining attorney accepted this as sufficient evidence provided that Applicant amend the description of goods to add the words “all for use with tobacco productsâ€. The trademark was then allowed because the claimed goods were limited to those used with tobacco products. NOTE — this case study is presented for information only, may not represent typical results, and is not a guarantee that similar results may be obtained by using a similar strategy.  This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Nikola vs. Tesla – Design Patent Litigation – What Would Nikola Tesla Think? Design patents can be an effective method of protecting the look of a product or brand. Design patents are somewhat narrow in scope because they protect only the actual design shown in the patent. However, the narrow scope of design patents can still provide real protection of intellectual property especially when multiple design patents are used to protect a concept, as shown by the lawsuit Nikola Corporation has filed against Tesla, Inc. Nikola applied for and received multiple design patents covering the look of the front end of its new alternative-fuel truck. Three of the design patents identified in its lawsuit are shown below. In a design patent, the features with solid lines are protected by the patent. The features shown in dotted lines represent the environmental surroundings, and are not claimed.  Each of the design patents below claim a different feature of the same over-all truck design. Well after Nikola filed these patent applications Tesla began tweeting and advertising its “new†alternative-fuel truck design, which is scheduled for release in 2019.  The Tesla Semi is shown below, next to the Nikola One truck. It is apparent there are similarities between the two designs. But, it is also apparent that there are differences. Nikola’s lawsuit contends that Tesla infringed Nikola’s wrap-around windshield (shown in D811,968).  Nikola’s lawsuit also claims that Tesla infringed its mid-entry door panel (shown in D816,004). According to Nikola’s complaint, the wrap-around windshield and mid-entry door allow a driver to be closer to the front of the cab, and provide additional room inside the cab. Finally, Nikola claims that Tesla is infringing the aerodynamic fuselage design (shown in D811,944). Nikola would have a much weaker case if it had only one design patent that attempted to cover all of the features included in its new design.  Instead, Nikola filed multiple design patent applications with each application covering one feature of the new truck design. It appears that the wrap-around windshield, mid-entry door, and aerodynamic fuselage are all completely new to the trucking industry. Nikola’s complaint included photos of existing trucks, none of which have these features. It will be interesting to see how this case is resolved, and whether the minor differences between the Tesla Semi and the patented designs will be sufficient to overcome Nikola’s patent infringement claims. This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Patent a Recipe? Recently there have been many inquires about patenting a recipe. Many of these inquires are related to the new California law legalizing marijuana that has inspired many entrepreneurs. However, a recipe is patentable only if the recipe meets certain narrow criteria. Recipe Must Be Novel and Non-Obvious All inventions must be both novel and non-obvious to be entitled to patent protection.  In the context of a recipe “novel†means that the invention cannot be a pre-existing recipe — that is, it cannot be a recipe that has been handed down, the inventor must invent the recipe! To be “non-obvious†the recipe cannot be an obvious improvement or alteration of a previously known recipe.This means that there must be some unusual or unexpected outcome. Most new recipes are merely combinations of known ingredients in varying amounts. They are simply variations of known recipes. To be patentable, however, the resulting food product must have some unexpected feature, or the process for making the food product must be novel and unique. For example, US patent number 8,088,427 discloses a system for making gluten-free bread products. This patent teaches the use of ingredients that might make one re-consider whether to eat this particular gluten-free bread.* The U.S. Patent & Trademark Office found that the process for producing the gluten-free bread was novel and non-obvious, and a patent was granted on this method. On the other hand, if the inventive step is to add a new ingredient and the new ingredient produces an expected result, then the resulting food product is “obvious†and will not be patentable. * The first claim is for a gluten-free bread product comprising a starch, a gluten-free gas-retaining polymer selected from the group consisting of butadiene-styrene rubber, butyl rubber, paraffin, petroleum wax, polyethylene polyisobutylene, polyvinyl acetate, poly-1-vinylpyrrolidone-co-vinyl acetate copolymer, polyvinyl alcohol, polyethylene glycol, polyethylene oxide,polyacrylic acid, Sapotaceae, Apocynaceae, Moraceae, Euphorbiaceae, and a gluten-free setting polymer selected from the group consisting of polylacticacid, polyvinyl alcohol, corn zein, and polycaprolactone, said bread product having a specific volume of about 4.0cc/g to about 6.0 cC/g. Trade Secrets Can Be Used to Protect Food Products A patent may not be the best way to protect a food product because patent applications and issued patents are published. After publication, anyone can learn the details of any recipe disclosed in a patent application. Some companies, like Coca-Cola, have chosen to use trade secrets to protect their recipes. A trade secret provides different protection than patent protection in a number of ways. With trade secrets, inventors do not disclose the ingredients of the food product, or how to make the product. Instead, employees and others must sign non-disclosure agreements preventing them from disclosing the confidential information contained in the recipe. Unlike patent protection, a trade secret cannot be used to prevent a third party from making the same food product if the third party independently discovers the product, or if the third party reverse-engineers the product. This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Ten Million (10,000,000) Patents The U.S. Patent & Trademark Office (PTO) anticipates that utility patent number 10,000,000 will issue sometime in 2018.  According to the PTO, the 10 millionth patent symbolizes the position of the United States as an innovative and economic powerhouse based on the protection of inventions found in the United States Constitution. The right to protect inventions was so important to the founders of the United States that the language protecting inventions is found in ARTICLE ONE of the U.S. Constitution. Right up front, at the start, the Constitution grants to Congress the power: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive right to their respective Writings and Discoveries.” To commemorate utility patent number 10,000,000 the PTO developed a new patent cover design, and the 10 millionth patent will be the first patent to have the new cover, shown below. ### Someone Is Using Your Brand Name! What Can Be Done? Emerging businesses generally take a close look at expenditures, and may view trademark registration as a discretionary expenditure. But, federal trademark registration is cost-effective, providing a lot of bang for the buck for protect brand names. Social media sites will frequently remove an infringing use if the business has a registered trademark for its brand name. But, the situation becomes more complicated if the name is not already trademarked. Business on the Internet Many entrepreneurs and start-ups use a brand name to offer goods or services on the internet. Success is a wonderful thing, but success can bring its own set of issues. Competitors recognize success, and often begin to sell goods or services using a brand name similar to the brand name of the successful business. If the business has not already obtained a federally registered trademark it can be difficult to get a trademark when a competitor is already using the brand name. And, even if the name can be trademarked, it may too late to prevent others from using the name. At this point, most business owners wish they had applied to register their brand name when they began their business. Social Media and Online Advertising Online advertising and selling may create common-law trademark rights that provide some protection to a brand name. However, common law trademark rights are not easy to protect, especially when dealing with social  media. The situation is different for registered trademarks. Generally, if a business has a registered trademark, infringement on social media can be solved quickly and easily. The business contacts the social media platform and requests removal of the infringing use. Facebook, Instagram, Twitter, and other social media platforms have specific procedures for reporting trademark infringement. If a business can supply proof, in the form of a valid registered trademark, the social media site will typically take down the infringing content. Nothing further needs to be done by the business, and the infringement problem is solved. A federal trademark registration is proof that the business has the right to use the mark, and the right to prevent others from using the mark. Without a valid registered trademark, social media sites are reluctant to take down the content of a competitor. Cautionary Tale – based on true events A business may begin advertising and selling its products on social media platforms. Success happens! Then, a competitor begins using a similar name to sell similar products on the same social media platforms. The business seeks and obtains a federal trademark, and then reports the infringing use to the social media platforms. However, the social media platforms refuse to take down the infringing content, stating that the infringing content was on the site before the trademark issued. Moral of the Tale:  The early bird gets the worm (and the best trademark protection). To protect a business product or service — obtain federal trademark registration early, before competitors try to divert your business leads. This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Cannabis Trademarks In California California voters approved Proposition 64, legalizing recreational marijuana use, subject to certain restrictions. It is now legal under California law for adults over the age of 21 to grow and process up to six plants for recreational purposes, and to have up to one ounce. Starting in January 2018, it will be legal, under California law, for retail sales of recreational marijuana to adults over the age of 21. (NOTE – Prop 64 did not change federal law, and the possession and/or cultivation of marijuana is still illegal under federal law.) However, Prop 64 did not address the right to obtain trademark protection in California for the numerous brands of marijuana that are expected to hit the market in 2018. Currently, it is not possible to obtain a federal trademark on marijuana. Federal trademark law allows for registration of trademarks that are used in commerce. “Commerce†is defined as “all commerce which may lawfully be regulated by Congress.†The U.S. Patent & Trademark Office routinely denies trademark registration for marijuana products because marijuana is illegal under federal law, Federal Trademark Registration Refused For Cannabis As just one example (among many) the Patent & Trademark Office refused registration of a trademark application for KUSH RESEARCH. This mark claimed the services of: “scientific research and consulting in the field of medical marijuanaâ€. The description of services itself did not specifically disclose that marijuana was being used illegally under federal law. However, the examining attorney reviewed applicant’s FaceBook page, and found that applicant was working in the field of raw cryogenically extracted cannabis based supplements. The examining attorney refused registration of the trademark because cannabis is illegal under federal law. Registration May Be Allowed for Related Goods/Services It may be possible to obtain federal trademark registration on goods or services that are related to cannabis. For example, the mark CANNABIZ has been federally registered. This trademark claims services for computer software for complying with governmental regulations related to medical marijuana. Even though this trademark directly references cannabis, it was allowed to register because the services are not illegal. California State Law Currently Does Not Allow Trademark Registration For Cannabis Medical marijuana has been legal under California law for several years. Because these goods are legal under state law, some have attempted to obtain California state trademarks for medical marijuana. However, this also is currently impermissible. California state law requires conformity with federal trademark law. It also states that: “The intent of this chapter is to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Actâ€. These provisions have been interpreted to mean that the claimed goods or services must be lawful under federal law.  Therefore, it has not been possible to obtain a state trademark on marijuana products, including medical marijuana products that are legal under California state law. AB 64 Would Modify Existing State Law To Create New Classifications for Cannabis Goods/Services To address this situation, Assembly Bill 64 was introduced. AB 64 would amend California law to create a new classification for cannabis goods or services. The proposed amendment creates a new section of the Business & Professions code — it will be §14235.5. The proposed section reads:  (a) Notwithstanding Section 14235, for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, the following classifications may be used for marks related to cannabis, including medicinal cannabis, goods and services that are lawfully in commerce under state law in the State of California: (1) 500 for goods that are cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products. (2) 501 for services related to cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products. NOTE – This bill does not change the state law requirement that state trademark registration be “substantially consistent†with federal trademark law.  (If only they could have changed this as well…) AB 64 has passed the state assembly and state senate. The current  status of AB 64 is “In committee: held under submissionâ€.  It’s unclear exactly what is going on with this bill right now.  Assuming that this bill moves forward, and is signed into law, there will likely be a rush to obtain state trademark registration of many cannabis and cannabis-related goods and services. ________________________________________________________________________________ This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Federally Registered Trademark Protects Brand Names Many entrepreneurs and small businesses start their business by offering goods or services on the internet using a brand name. Online advertising and selling may create common-law trademark rights that provide some protection to the brand name. However, obtaining federal registration provides more rights and greater protection than common-law rights. Start-ups and entrepreneurs generally take a close look at expenditures, and may view trademark registration as a discretionary expenditure. But, federal trademark registration is cost-effective; it provides a lot of bang for the buck. Once a business becomes successful, competitors often offer goods or services using a brand name similar to the brand name of the successful business. If the business owner has not already obtained trademark registration, it may be more difficult to get a trademark at this point. Even if a mark can be registered, it may be more difficult to prevent others from using a similar name, if the competitor can show they have been using the similar name in commerce. At this point, most business owners wish they had applied to register their brand name when they began their business. Benefits of Federal Trademark Registration Only federally registered trademarks can use ®. Common law trademark cannot use ®, but are permitted to use â„¢. Statutory presumption that the mark is valid. Once a trademark is issued, it is presumed valid. After 5 years of continuous use of a mark, the owner may apply to have the mark declared “incontestableâ€.  This means that the mark cannot be challenged or cancelled. Presumption that the trademark applicant is the owner of the mark. Federal registration acts as a bar to the registration of another confusingly similar mark. The Trademark Office will not register a new mark that is confusingly similar to a mark that is already registered. In addition, after registration, a trademark appears in the U.S. Patent & Trademark database. Many businesses search this database before choosing a brand name. Having a registered mark in the database can deter other businesses from choosing a name similar to the registered mark. Federal registration may serve as the basis for an international trademark application. Registering a mark with the U.S. Patent & Trademark Office provides a basis to file in other countries, and obtain a mark in these countries. This can be important for businesses that sell products internationally, which happens more often in the age of the internet. Constructive notice nationwide of the trademark owner’s claim. The trademark owner does not have to provide actual notice of the registration. The fact that a mark is registered means that any business using a confusingly similar mark is deemed to have notice of the registered mark. Registration grants the right to file a trademark infringement lawsuit in federal court. A successful federal lawsuit for trademark infringement may allow the owner of the registered mark to obtain monetary remedies, including the infringer’s profits, damages, costs, and in some cases treble damages and attorneys’ fees. Registration may be recorded with U.S. Customs and Border Protection to prevent importation of infringing foreign goods. This can be an important benefit that prevents foreign competitors from selling goods in the U.S. without the need for a lawsuit. Once a mark is registered the owner may record the registration with U.S. Customs and Border Protection. Products bearing infringing trademarks may be seized before they enter the United States. Click here for more information on trademarks, services marks, and slogans. _____________________________________________________________________________________ This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### So You Have A Phone App That You Want to Patent — Or Subject Matter Patentability Subject matter patentability defines what types of inventions may receive patent protection, and favors physical objects. Phone apps or software programs are not physical objects. To obtain a patent on a phone app or software there must be more than just the app. It is not sufficient to take a task that has been performed without use of the internet, and then make an app to do the task on the internet. The invention must improve the functioning of the computer or phone, or must show an improvement in another technological field. Patentable Subject Matter The right to obtain a patent is created by the U.S. Constitution, and is subject to the limitations found in the Constitution, controlling statutes, and case law. Statutory law enumerates four categories of allowable subject matter for inventions, and case law has explained what these four categories mean. These four are: Process: an act, or series of steps. Machine: a concrete thing, consisting of parts, or of certain devices or combinations of devices. Manufacture: an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery. Composition of Matter: all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids. Use of a Physical Phone Or Computer Does Not Qualify as a “Machine†Many have argued that the phone or computer itself is a physical object, and that use of these physical objects means that the phone app should be patentable subject matter. However, courts have added limitations to the four enumerated categories of allowable subject matter. There are specific categories regarding what may *not* be patented, including: Abstract ideas. Natural phenomena. Laws of nature. These rules reflect the view that the basic tools of science and technology are not patentable. For example, a mathematical formula or software algorithm is considered an abstract idea, and is not patentable. A natural phenomena might be a newly discovered mineral or plant. The mineral or plant would not be patentable because it is naturally occurring. Likewise, Newton could not have patented gravity because it is a law of nature. An app may be able to do many interesting things. But, the Patent & Trademark Office (“PTOâ€) and/or courts will reduce all the things an app does to a few simple concepts, and will review these concepts looking for the presence of patentable subject matter. If an app simply takes a method or practice that was know in the pre-internet world, and performs the method on the internet, it is NOT patentable subject matter. DDR Holdings, LLC v. Hotels.com et al., 773 F.3d 1245 (Fed. Cir. 2014). The PTO will look to see if the claims have an inventive concept. An invention is not patentable if it “solves no problems, includes no implementation software, [or] designs no system. The mere statement that the method is performed by computer does not satisfy the test of inventive concept.†In Affinity Labs v Amazon, 838 F. 3d 1266 (2016) the court invalidated a patent claiming a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface. The court held that this was simply an abstract concept, and was not patentable. Similarly, in In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016), the court held that including generic physical objects does not remove the invention from being the abstract concept. In this case, the court analyzed a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images. This patent used physical components including a telephone and a server. However, the court noted that “not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry†and it pointed out that the specification made clear that the recited physical components “merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner.†Conclusion A phone app or software invention has significant hurdles to overcome before it qualifies as patentable subject matter. There must be some tangible invention aside from implementing an invention on a phone or computer. _______________________________________________________________________________ This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, not to provide specific legal advice. By using this blog you acknowledge there is no attorney client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### What’s In a Name? Unicorn Latte v. Unicorn Frappuccino A rose by any other name is still a rose, but what about a Unicorn Latte? Unicorn Latte A juice shop, called The End, created the Unicorn Latte, and began selling the drink in December 2016. After the juice shop began getting good publicity for the Unicorn Latte, in April 2017 Starbucks began selling Unicorn Frappuccino. Now, the owners of the juice shop filed a lawsuit against Starbucks seeking damages for trademark infringement. Unicorn Frappuccino The complaint filed by the juice company states that they sell creative coffee and blended beverages, and their greatest invention is the Unicorn Latte, a “healthy, unique, colorful, blended beverageâ€. Recognizing that they had an extremely marketable drink and name, the owners of The End filed a trademark application in January 2017. This was before Starbucks began selling its Unicorn Frappuccino, and this trademark application will help the trademark infringement lawsuit. Despite their names, neither the Unicorn Latte nor the Unicorn Frappuccino contain coffee. The Unicorn Frappuccino is a mixture of Blue Drizzle, Pink Powder, and other strange items. The Unicorn Latte is mixture of ginger, lemon, honey, and other healthy things. The End put a lot of time and effort into marketing its Unicorn Latte, and had gotten a lot of positive press and social media exposure, including an article in the Huffington Post. However, according to the complaint, after Starbucks launched its product people began to confuse the Unicorn Latte with the Unicorn Frappuccino and began to believe that The End was perhaps affiliated with Starbucks. The complaint acknowledges that Starbucks is no longer selling the Unicorn Frappuccino. However, the complaint provides evidence of actual customer confusion, including photos of the Starbucks product under the #UnicornLatte hashtag used by The End. In addition, the complaint alleges that the Starbuck product was inferior, stating that “People Magazine proclaimed that Katy Perry, a world-renowned recording artist and marketing icon, ‘Spits Out Starbucks’ Unicorn Frappuccino After One Sip.'†The complaint also alleges that Starbucks threatened to oppose the trademark application for UNICORN LATTE.  Before a trademark can be finally registered on the Principal Register, the mark must be published for opposition, giving third parties time to oppose the mark.  The UNICORN LATTE mark has been approved for publication, but has not yet been published. Time will tell whether Starbucks will oppose this mark, although there does not appear to be any valid grounds for any such opposition. Conclusion:  TRADEMARK YOUR BRAND NAME! It is apparent that UNICORN LATTE has been a huge success for The End, bringing good press and social media coverage to the juice company. If The End had not applied for a trademark *before* Starbucks began selling its Unicorn Frappuccino, The End would have a much weaker case. As it stands now, The End has a good chance of preventing Starbucks from making the Unicorn Frappuccino a permanent product, and it even has a chance of recovering damages from Starbucks. ________________________________________________________________________________________ This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, not to provide specific legal advice. By using this blog you acknowledge there is no attorney client relationship between you and Adams Law Office. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Post America Invents Act — Inside the "On-Sale Bar" of 35 USC §102 The Constitutional right to obtain a patent is subject to certain limitations, including that an inventor may be barred from obtaining a patent if the invention was sold or publicly disclosed prior to filing the patent application. The America Invents Act (“AIAâ€) changed the statutory language of 35 U.S.C. section 102 regarding when a prior disclosure may bar an inventor from receiving a patent. My article discussing this was published on Law360.com.  The text of the article is set forth here: Section 102(a) is clear and appears to provide a bright line test for determining when a disclosure precludes an applicant from receiving a patent. Section 102(b), however, sets forth exceptions that blow a cloud of smoke over the clarity of Section 102(a). THE GRAY AREA Section 102(a) provides clear rules for determining activities that may bar an inventor from getting a patent: the invention was described in a patent, printed publication, or was in public use, or on sale before the filing date of the patent application. However, section 102(b) provides exceptions to 102(a). Under section 102(b)(1), certain disclosures made within one-year prior to filing a patent application may or may not bar the applicant from getting a patent. In addition, under 102(b)(2) disclosures made at any time in specific patents or patent applications may or may not bar the applicant from getting a patent. THE AIA DOES NOT DEFINE “DISCLOSURE†All of the exceptions found in section 102(b) are identified as “disclosuresâ€. Clearly, the word “disclosure†is extremely important. However, Congress did not define “disclosure†in the AIA. And, the word “disclosure†is not used in Section 102(a). Congress wrote the statute with vague and confusing language, leaving it up to patent examiners at the U.S. Patent & Trademark Office (PTO) to interpret and implement the statute. Patent examiners often are not attorneys, and it is not their job to interpret obtuse statutory language. But, being on the front lines, PTO had to come up with some rules to deal with this statutory mess. Therefore, the Manual of Patent Examination Procedure (“MPEPâ€) provides a working definition of the word “disclosureâ€, stating: “[T]he Office is treating the term “disclosure†as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).† See, MPEP 717. DISCLOSURES DURING THE GRACE PERIOD — SECTIONS 102(a)(1) and 102(b)(1) AIA Section 102(a)(1) seems straight-forward and clear, and provides: (a)Novelty; Prior Art. — A person shall be entitled to a patent unless – (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; … Section 102(b)(1) provides exceptions to this rule, stating that certain disclosures made within one year of filing the patent application will not preclude an inventor from getting a patent. This time frame is often called the “Grace Periodâ€. In other words, although section 102(a)(1) says all public disclosures made prior to filing a patent application will bar the patent, section 102(b)(1) says that some disclosures made within one-year of filing will not bar the patent. If a 102(b)(1) exception applies, then the inventor may still be entitled to a patent. In particular, under section 102(b)(1) if the inventor, or a joint inventor, publicly disclosed the invention within one-year prior to filing the patent application, the patent may still issue. These inventor-initiated public disclosures will not bar the applicant from receiving a patent. SUBJECT MATTER DISCLOSURES – SECTIONS 102(a)(2) and 102(b)(2) The AIA changed the U.S. from first-to-invent to first-to-file. The legislative history of the AIA shows that the exceptions found in Section 102(b)(2) were written to deal with the situation where an inventor, or joint inventors, previously filed a patent or patent application that disclosed an invention that is also disclosed in a subsequently-filed patent application. As explained in the Congressional Record, the “first-to-file system†may be more properly characterized as a “first-to-disclose systemâ€. Section 102(a)(2) states: (a)Novelty; Prior Art. — A person shall be entitled to a patent unless –   … (2)       the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Section 102(b)(2) discusses “subject matter†disclosures, and provides that even if a pre-existing patent or patent application discloses the subject matter of the applied-for-invention, an applicant may still be entitled to a patent. In particular, section 102(b)(2) provides that an inventor/applicant may still be entitled to a patent if: (i) the subject matter disclosed in the pre-existing patent or patent application was obtained directly or indirectly from the inventor or a joint inventor; (ii) the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor; or (iii) the subject matter disclosed and the invention claimed by the applicant were owned by the same person or subject to an obligation of assignment to the same person. Thus, there must be a nexus between the inventor(s) claiming the applied-for-invention and the inventor(s) of the pre-existing subject matter disclosure. Section 102(b)(2) does not provide any time limit on the subject matter disclosures found in pre-existing patents and patent applications, these pre-existing patents and patent applications may have any publication date. They are not limited to publications made within one-year prior to the filing date of the patent application. U.S. PTO CHART In addition to providing a working definition of “disclosure, the PTO provided a chart in of the exceptions found in 102(b). This chart is a nice summary of some complex concepts found in Section 102. The chart shows that there is the statutory redundancy between Sections 102(a)(1) and 102(a)(2) – a published patent or patent application (102(a)(2)) is the same as a public disclosure (102(a)(1)). It appears that this redundancy was to keep the exceptions in line; that is, the exceptions found in 102(b)(1) relate to 102(a)(1), while the exceptions found in 102(b)(2) relate to 102(a)(2). LIMITED CASE LAW There is limited case law discussing 35 USC § 102 under the AIA since the statutory changes are relatively new and are working their way through the court system. One case, MyGo, LLC v. Mission Beach Industries, LLC, U.S. District Court, S.D. California, Case No. 3:16-cv-02350-GPC-RBB (January 11, 2017) discusses post-AIA 35 USC §102(a) and the exceptions found in 102(b). This case started when both MyGo and MBI filed patent applications at almost the same time, with MyGo filing first by about a month, and being published first. During prosecution of MBI’s patent application, MyGo submitted its published patent application into the record of MBI’s patent application, asserting that its published patent application was prior art. PTO subsequently rejected all of MBI’s claims as being anticipated by the prior art reference, and MBI abandoned its patent application. However, the story was not over. MBI continued to sell its product, and MyGo sued for infringement of its issued patent. MBI asserted a counterclaim that MyGo’s patent was invalid under 102(a)(1), alleging that MBI used its invention on a public beach prior to the date MyGo filed its patent application. The court analyzed this and found that MBI stated a valid claim, even if MBI’s public use was during Grace Period found in 102(b)(1). Public use by MBI is not use by the inventor (MyGo), and therefore the exceptions found in 102(b)(1) are not relevant. And, although the court did not discuss this, the exceptions found in 102(b)(2) also did not apply — there was no disclosure by MyGo to MBI. Therefore, the court denied MyGo’s motion to dismiss MBI’s counterclaim, and MBI is pursuing its attempts to invalidate MyGo’s patent based on MBI’s prior use. CONCLUSION The AIA changed the United States from first-to-invent to a first-to-file country. In doing so the AIA changed the rules regarding when a public disclosure, use, or sale may bar a patent applicant from receiving a patent. The AIA provides a one-year grace period for public disclosures made by an applicant in the year prior to filing a patent application. These disclosures will not bar an applicant from receiving a patent. The AIA further provides that subject matter disclosures made in published patents or patent applications will not operate to bar an applicant from receiving a patent if there is a nexus between the applicant and the prior patent or patent application. The AIA also changed previous interpretation of the rules, and now provides a clear rule that disclosures made in private before the filing date of a patent application will not bar the applicant from receiving a patent. ### Trademark Applicants – Beware of Scams After Filing TM App A trademark application filed with the U.S. Patent & Trademark Office contains required information about the trademark applicant, including the applicant’s name and address. The applicant’s name and address are publicly-available, even when an attorney files the trademark application. There are companies that exploit this public information by sending official-looking documents to trademark applicants requesting money. But, trademark applicants are *not* required to pay any fees requested by these third-parties. Often, these third-party companies send official-looking documents stating that they provide trademark protection, or appearing to require additional fees to continue the trademark application. The scams generally fall into 4 categories: (1) claims that the company will provide legal services; (2) claims that the company will provide trademark monitoring services; (3) claims that the company will  record trademarks with U.S. Customs and Border Protection; and (4) claims that the company will register trademarks in the company’s own private registry.  See one example below: It is NOT NECESSARY to pay any fees from any such company!!! The *only* time that a trademark applicant must pay fees is after receiving an official fee request from the U.S. Patent & Trademark Office (“PTOâ€). If the trademark applicant has hired an attorney and the attorney is listed as being “of record†to prosecute the trademark application before the PTO, then the PTO will not communicate any fee request directly to the applicant. The PTO will communicate fee requests to the attorney of record — not to the applicant. Trademark applications may also include the applicant’s email address (this information is not required).  If the applicant’s email address is included in the trademark application, then the applicant may receive emails soliciting fees. Again, these fees are *not* required by the PTO.  See one example below: The problem is so wide-spread that the U.S. Patent & Trademark Office has a webpage describing these scams. Trademark applicants, whether represented by an attorney or not, should be aware of these scams. Unless the letter or email is actually from the U.S. Patent & Trademark Office, it is not official, and trademark applicants are not required to pay any fee requested. ### Design Patents – Year in Review Companies continue to see the value of design patents.  Nike, Inc. is ranked 5th in the United States in the number of design patents granted to it in 2016, with a total of 275 issued design patents.  Number one on the list is Samsung, with 1,629 issued design patents, above Apple Inc. with 433 issued design patents. Of course, being number one in issued design patents didn’t help Samsung in a design patent dispute with Apple Inc. Apple won an infringement lawsuit that it brought against Samsung, claiming that Samsung infringed three of Apple’s design patents. Apple won at trial, and had been awarded almost $1 billion in damages. Samsung appealed to the Federal Circuit, and the damage award was reduced to $399 million. The case was appealed to the Supreme Court, which  took up this case. The Supreme Court issued a decision clarifying how damages are calculated in design patent infringement cases, and remanded the case to the Federal Circuit for review of the damage award. It seems likely that the Federal Circuit will reduce the damage award to Apple, based on the Supreme Court’s decision. Nevertheless, is also seems likely that Apple will walk away with a substantial amount of cash, based on its design patent infringement claims. The Apple v. Samsung case shows that design patents can be valuable. To best utilize the value of a design patent, it’s important to understand what is protected by a design patent.  A design patent covers the appearance of an object, to quote the United States Patent & Trademark Office, a design patent covers the ornamental design of an object. A design patent does not protect functional features. A design patent has specific and relatively narrow coverage, and protects the specific design shown in the drawings. Nike clearly understands this, and has filed a design patent for many variations of shoe designs.  Below is a small example of Nike’s 275 design patents. Nike obtained 3 design patents with variations on a basic theme. These designs are similar, but they are not identical. The thunderbolt feature is slightly different in each patent. Nike may have filed design patent applications on each of these subtle variations because: (1) it was considering selling each of these designs; or (2) it may have done so to prevent others from selling shoes with these designs; or (3) it may done so because Nike is actually selling each of these shoe designs. These are all valid reasons for filing one or more design patents. Design patents can have great value if properly utilized and understood. Please contact Adams Law Office if you have an invention that may benefit from the protection of a design patent.   ### Damages for Infringement of Design Patents – Supreme Court Clarifies Rules in Apple v. Samsung Apple Inc. is known for the number of patents it owns. Apple doesn’t just own patents, it actively engages in enforcing its patents.  This includes a case against Samsung that has been winding its way through the courts for years, where Apple claims that Samsung infringed some of Apple’s iPhone patents.  This case reached the U.S. Supreme Court, and the Court issued a decision clarifying determination of damages when there is design patent infringement. As previously discussed, design patents can be a great way to protect a company’s products. However, there is often a question about the scope of protection, since design patents claim only the “ornamental design†as shown in the drawings. The Apple case shows that design patents can have great value. This case began years ago with a jury trial on claims that Samsung’s smartphone infringed some of Apple’s  iPhone design and software patents. In August 2012, the jury awarded Apple almost $1 Billion in damages. After various post-trial proceedings and appeals, Apple was awarded $399 million in damages due Samsung’s infringement of three of Apple’s design patents. The three design patents at issue were: U.S. Design Patent Number 618,677 claiming a black, rectangular surface with rounded corners; U.S. Design Patent Number 593,087 claiming beveled edges on a rectangular shape; U.S. Design Patent Number 604,305, claiming 16 icons displayed on the surface. Since design patents don’t actually use words to describe their claims, and since a picture is worth a thousand words, one figure from each of the design patents is shown below. Based on a finding that Samsung’s smartphones infringed of these three (relatively simple – a black rectangle with rounded corners? a beveled edge???) design patents, Apple had been awarded $399 million in damages. Samsung appealed to the Federal Circuit which upheld the damages award.  Samsung again appealed to the U.S. Supreme Court, and the Court took up this design patent case. The Supreme Court looked at the narrow issue of how damages are calculated in design patent infringement cases. In October 2016, Supreme Court held that the Federal Circuit had improperly analyzed the basis for calculating damages. Samsung had argued that damages should be based on profits attributable to the screen, or case of the smartphone, as shown in Apple’s design patents. The Federal Circuit held that damages must be calculated based on sales of the entire smartphone. The Supreme Court reversed the Federal Circuit. The Court noted that design patent damages are awarded based on profits associated with an “article of manufacture†to which the design is connected. See, 35 USC §289.* For example, a dinner plate with a patented design is the “article of manufactureâ€. A dinner plate has only a single component, and the profits from sales of the infringing dinner plates are easy to calculate. However, the Court noted that when a product (such as a smartphone) has multiple components, identifying the “article of manufacture†to which the design has been applied is a more difficult task. The Federal Court had reasoned that the “article of manufacture†was the entire smartphone, since consumers can only purchase the entire smartphone; they cannot purchase the individual components. The Supreme Court rejected this analysis, finding that an “article of manufacture†is not limited to the end product, and may also include the various components. Thus, in cases like this one, a patent holder will be entitled to the infringer’s total profit from a component of the end product, and not the total profit from the end product itself. The Supreme Court remanded the case to the Federal Circuit for further proceedings consistent with its opinion. * “Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250 . . . .†35 U. S. C. §289. Adams Law Office provides this blog for informational purposes only. No legal advice is intended or given. Please contact Adams Law Office if you have a question about patents, trademarks, or other intellectual property matters.  ### Tips to Selecting Proper Trademark Classification in Trademark Application Every trademark application filed with the United States Patent& Trademark Office (PTO) must identify the goods or services that are associated with the trademark.  Failure to properly classify the goods or services in a trademark application may result in rejection of the trademark application. However, choosing the correct trademark classification is not as straight-forward as it might seem. Correct Classification Is Essential To The Success of Your Trademark Application! Every registered trademark must have a “specimen†showing use of the trademark in commerce for the specifically claimed goods or services.  Goods or services are grouped by international trademark classification. There must be a clear association between use of mark on the submitted specimen and the classification of goods or services identified in the trademark application. Applicants must pay a fee for each classification selected, therefore many applicants prefer to limit the number of classifications in a trademark application, often selecting only one classification.  It is crucial that the selected classification(s) be correct, or the applicant will have to start over again, and pay a new fee.  Step 1:  Goods Or Services?       The first step is determining if the mark is being used for goods or services. The difference between goods and services may seem obvious, but there are pitfalls even at this basic level of classification. It may not be readily apparent in today’s internet-based marketplace if a mark is being used to identify the source of goods or services, as shown by the LEADING EDGE TONERS application. In this case, the applicant applied for a trademark for goods, including toner, toner cartridges, and ink. The applicant submitted the following specimen to support its use of the goods with the mark. The PTO refused registration because the mark, as used in this specimen, was not directly associated with any goods at all.  The PTO stated that the mark in this specimen is associated with services — not goods.  The PTO explains:  â€œWhen a mark appears in the computer browser area as part of the URL, Internet address, or domain name of the website that houses the web page, consumers generally do not recognize this as trademark use. Instead, this use merely identifies the Internet location of the website where business is conducted and goods or services are offered.  â€¦ â€œ[A]pplicant’s use of the term LEADING EDGE TONERS as part of the internet address. . . identifies the website where applicant conducts its retail sales services. Obviously, a website can be used for multiple purposes and the simple fact that a term is used as part of the internet address does not mean that it is a trademark for the goods sold on the website.†  TMEP 904.03(i)(B)(2).  Step 2: Software or Service? — An Important Distinction! There are 11 trademark classification that are associated with services. Some of these service mark classifications seem to overlap, and may cause confusion in selecting the correct class, particularly for website and mobile app trademark applications. Choosing Correct Classification — Class 35 and Class 42: One important consideration is whether the applicant is directly providing services to others (Class 35-Advertising and Business), or whether the applicant is providing software for the services. (Class 42-Computer and Scientific). When an applicant is providing non-software services the proper classification may be Class 35.  However, if the applicant is providing computer software for the services, then the proper classification may be Class 42. Example:  Retirement Services — Classes 35 and 42 If an applicant is directly providing retirement services a proper description of the services in Class 35 could be: “financial consulting in the field of retirement planningâ€.  However, if the applicant is providing computer software for “retirement services†then a proper description of services in Class 42 could be: “providing temporary use of non-downloadable software for retirement planning.†  Questions About Correct Classification with Trademark Applications? Please contact Adams Law Office for your trademark needs. ### Apple, Inc. and What a Company can do with $231.5 Billion Cash-on-Hand People often ask about the extent of patent and trademark applications needed to protect the intellectual property of a business.  As shown by Apple, the answer is: as much as possible. Apple, Inc. has $231.5 billion in cash-on-hand. When a company has this kind of cash it can afford to pursue patent applications that others might not pursue due to the expense involved. The U.S. Patent & Trademark Office (“PTOâ€) recently published a patent application by Apple, Inc. for a paper bag – a white paper bag with 60% post-consumer content. Apple’s first claim reads, in its entirety: “A retail paper bag, comprising: a bag formed of white paper with at least 60% post-consumer content.†This patent application was filed a few months ago, and the PTO has not taken any significant action on this application. Apple is also pursuing another patent application by the same inventor, for a “Display Apparatusâ€. The first claim in this patent application claims an  â€œupper branch†for hanging the display apparatus, and adhesive on two locations of the “lower branchâ€. See figures below. This patent application has received a final rejection from the PTO.  But, Apple has not given up. It has filed a request for continued examination* and continues to pursue this patent application. Apple is spending a lot of time and money pursuing utility patents on these inventions. One question is — why  not file a design patent for each these items? A design patent is far less expensive, and seems more appropriate for the simple inventions claimed by these patent applications. Apple has obtained several design patents, issued in Hong Kong, on its store layout. Apple has also obtained a USA design patent on another version of its store layout, shown here.     Or, perhaps Apple should be pursuing a trademark on its bags and displays. Apple has already obtained a trademark on its store layout, shown in the figure to the left.   Apple clearly believes that the protections afforded by design patents, utility patents, and trademarks are important to its business model. Apple is willing to apply for many patents and trademarks in its efforts to protect its intellectual property. * A request for continued examination is a procedure for continuing prosecution of a patent application by paying additional fees.       ### Copyright Trolls Update A previous article discussed how Getty Images, Inc. and other image licensing companies routinely send out demand letters claiming copyright infringement based on a one-time or accidental use of an image in a blog or other online forum.   © Carol Highsmith   If you are the recipient of such a letter, the first thing to check is whether the image licensing company actually has the right to make a claim of copyright infringement.  Recently, a well-known photographer, Carol Highsmith, received a letter from Getty Images addressed to her nonprofit organization accusing her of copyright infringement and demanding payment for displaying one of her own photographs on her own website! Ms. Highsmith has generously donated over over 30,000 of her photographs to the public by providing the United States Library of Congress with copies of her photographs for use by the public.  Despite the fact that these images are freely available to the public, Getty Images, License Compliance Services, Inc., and Piscount, Inc. (hereafter collectively “Gettyâ€) had over 18,000 of Ms. Highsmith’s images on its website, and was demanding that people to pay for the right to use these images — images that Ms. Highsmith had already made freely available to the public. In December 2015, Getty sent a demand letter to Ms. Highsmith’s nonprofit organization This is America! Foundation, claiming copyright infringement.  This prompted Ms. Highsmith to file a lawsuit against Getty asking for over $1 million in damages under the Digital Millennium Copyright Act, specifically 17 U.S.C. §1202. Getty has already had a final judgement entered against it for violation of 17 U.S.C. §1202 within the past three years, therefore Ms. Highsmith notes that the court may treble the damage award.  The complaint explains that Getty had more than 18,000 of Ms. Highsmith’s photographs on its website — purporting to require the public to pay to use Ms. Highsmith’s photographs. Practice Tip — If you receive a letter claiming copyright infringement, verify that the company making the demand actually has the right to claim copyright infringement.  Ask for proof of the copyright, and proof that the company actually represents the copyright holder. ### Design Patent for Consumer Products In today’s competitive marketplace a successful business product will likely draw competition, and competitors may try to copy the successful product.  This is especially true in the field of consumer products. A design patent is a cost-effective way to protect successful consumer products from infringement. A design patent protects the design of an invention.  Often, innovative design is what makes a consumer product successful.  For example, the company Oxo International owns the rights to a unique handle design used in food preparation products.  The handle design was based on bicycle handlebar grips. In 1998, Oxo obtained a design patent on this handle design for use in food preparation products. This handle design is considered so innovative that it’s listed on the Smithsonian National Museum of American History.  And, this handle design is part of Oxo’s line of food preparation products.  Shown below is the Oxo carrot peeler, using the handle design. If Oxo had failed to obtain a design patent, it is almost certain that competitors would have made knock-offs of the Oxo handle, and Oxo would have had to compete against these knock-offs.  Since Oxo had a design patent, it had the sole right to sell this handle design.  This allowed Oxo to focus its money and resources on marketing its product, rather than fending off competitors.  This is just one example showing why design patents can be so important in the consumer products field. Filing a design patent application is relatively straight-forward.  A design patent application must have drawings that show all sides of the design.  A design patent protects the ornamental design as shown in the patent drawings.  This is distinct from a utility patent, where the protected invention is what is written in the claims. Design patents cannot claim a purely utilitarian device.  In other words, the design of the device cannot be dictated solely by function, there must be an ornamental aspect to the device.  Most inventions have some functional purpose, so this raises the question of what is functional and what is ornamental. There is a body of case law discussing the distinction between an ornamental design and a functional design.  For example, one case looked at the fins on a foam football-shaped ball.  The court noted that the tail fins added stability for the ball in flight, which was functional.  However, the fins also produced an overall “rocket-like†appearance, which is ornamental.  The court held that this was a valid design patent. Because a design patent protects only the design, the scope of protection is narrow and limited to the specific design that is shown in the drawings.  For this reason, companies like the toy company Mattel, Inc. often seek a separate design patents for each variation of a consumer product — Mattel has over 200 design patents.  Shown below are images from two different design patents owned by Mattel, each for a variation of a fold-out playset with pop-up structures. Once a design patent is filed, it is proper to use the words “Patent Pendingâ€.  There is no need to state that the pending patent is a design patent.  This is yet another advantage of filing a design patent —  competitors will see “Patent Pending†on the product being sold.  This may be sufficient to dissuade a competitor from trying to copy your product. Other benefits of design patents include a quicker review time by the U.S. Patent & Trademark Office, which also generally makes design patents significantly less expensive to obtain than utility patents. Design patents can be a valuable tool for startups and other businesses in the consumer product field.  Contact Adams Law Office to find out whether a design patent may be useful to your business. ### Trademark Basics Trademarks are an important business asset.  Trademarks have different aspects.  A trademark can function as a brand name to identify the goods or services provided by a business.  Trademarks are also an aspect of the “goodwill†of a business, and can be important in business valuation A trademark identifies the source of the goods or services — A trademark must be used in connection with specific goods, and a service mark must be used in connection with specific services.  Often times the term “trademark†refers to both a trademark on goods and a service mark on services, and this article uses the word “trademark†to encompass both.The same trademark may be used by different entities to identify different goods or services.  For example, the word “Yosemite†is a trademark registered by different entities to provide different goods or services, including roofing, software, and recreational services.                   A federally registered trademark is a trademark that has been examined and approved by the U.S. Patent & Trademark Office (“PTOâ€).  If the PTO approves a trademark, the trademark may use ®.  If the PTO has not approved a trademark, the trademark may use â„¢ (for goods) or â„  (for services).A trademark may be a word, a logo, or both.    A trademark may be fanciful, arbitrary, suggestive, merely descriptive, or generic. Fanciful, arbitrary, or suggestive marks are entitled to the highest protection under trademark law.A fanciful mark is a term that has been invented for the sole purpose of functioning as a trademark.  marks include words that are either unknown in the language (for example, PEPSI, KODAK, XEROX) or or are completely out of common usage (for example, FLIVVER). An arbitrary trademark includes words that are in common use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (for example, APPLE for computers; OLD CROW for whiskey).A merely descriptive mark is a term that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.A generic mark is not entitled to federal trademark registration.  As its name implies, a generic mark includes terms that the public understands primarily as the common or class name for the goods or services (for example, CORNER STORE).A trademark can be valid indefinitely, as long as the mark is renewed at the required times.Tag lines can function as a trademark, as long as the tag line is specifically linked to goods or services.A trademark can be an important part of the portfolio of any business.  Protect your business assets today by obtaining a trademark.  Contact Adams Law Office for a review of your potential trademarks. ### CA Social Purpose Corporations – Annual Shareholder Report A California Social Purpose Corporation is formed pursuant to Corporations Code sections 2500 et seq. Social Purpose Corporations are required to provide annual reports to shareholders no later than 120 days after the close of the corporation’s fiscal year.An outline of these requirements is provided below. Detailed requirements for this annual report are found in Corporations Code § 3500. Financial Information — The Social Purpose corporation must provide a balance sheet through the end of the fiscal year, including an income statement, statement of cash flows for the fiscal year, and any report by an independent accountant. If there is no accountant report, the corporation must provide a certificate by an authorized officer of the corporation that the financial statements were prepared without audit. Special Purpose Management Discussion and Analysis —The corporation must provide a Special Purpose Management Discussion and Analysis (MD&A) concerning the social purpose stated in its Articles of Incorporation. The MD&A must the information listed below. To the extent possible, and consistent with reasonable confidentiality requirements, the corporation shall post the MD&A on its website, or other social media.  The MD&A must: Identify and discuss the overall objectives relating to the corporation’s social purpose, or any changes made in the special purpose objectives during the fiscal year.Identify and discuss material actions taken by the corporation during the fiscal year to achieve its stated social purpose.Identify and discuss the impact of corporate actions, including causal relationships between actions taken and reported outcomes, and the extent that the actions achieved the special purpose objectives for the fiscal year.Identify and discuss material actions, including the intended impacts, that the corporation expects to take in the short term, and long term, to achieve its special purposes.Describe the process for selecting, and identify and describe the financial, operating, and other measures used by the corporation during the fiscal year for evaluating its performance in achieving its special purpose objectives. Include an explanation of why the social purpose corporation selected those measures. Identify and describe the nature and rationale for any material changes in those measures made during the fiscal year.Identify and discuss any material operating and capital expenditures incurred by the corporation during the fiscal year to achieve the special purpose objectives.Provide a good faith estimate of any additional material operating or capital expenditures the social purpose corporation expects to incur over the next three fiscal years in order to achieve its special purpose objectives.Describe other material expenditures of resources incurred by the social purpose corporation during the fiscal year, including employee time, in furtherance of achieving the special purpose objectives.Include a discussion of the extent to which that capital or use of other resources serves purposes other than and in addition to furthering the achievement of the special purpose objectives. All information contained herein is provided for general informational purposes only.  The information provided is not legal advice, and is not to be acted on as such, may not be current, and is subject to change without notice.  ### Patent Claim Drafting – Use of "OR" It is surprising to read a Federal Circuit case on patent claim construction, delving deeply into the difference between “and†and “orâ€, referencing Stunk & White — and incorrectly writing “of†when the court meant to use “or†in a quote from Struck & White! The Federal Circuit wrote: “A common treatise on grammar teaches that ‘an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.’ William Strunk, Jr. & E.B. White, The Elements of Style, 27 (4th ed. 2000).†SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, ¶ 68 (Fed. Cir. 2004). “An article of a preposition†— upon reading this I wondered: is this some rule of grammar that I never learned? A preposition states the relationship between objects, and does not require an article. So, I went to the source — Strunk & White. And here is what it actually says: “[a]n article or a preposition applying to all the members of a series must either be used only before the first term or else be repeated before each of them.†Strunk & White, The Elements of Style, page 27, emphasis added.   Of course, it’s a typo in the Federal Circuit case.  BUT, this misquote of Strunk & White has been repeated in scholarly articles analyzing the use of “or†in patent claim construction.  I’m not sure how “or†what these authors were thinking when they read about an “article of a preposition†but they certainly weren’t thinking about grammar! PATENT CLAIM CONSTRUCTION Now that this confusion had been cleared up, here is a brief summary on the Federal  Circuit’s interpretation of “OR†in patent claim drafting: – OR – INTERPRETATION #1 – “Or†may mean: A or B, but not A and B. If a claim uses “or†it may be interpreted to mean a choice between two items, but not both. Kustom Signals, Inc. v. Applied Concepts, 264 F.3d 1326 (Fed. Cir. 2001). The Kustom Signals court stated: “The district court construed the term ‘or’ … to mean ‘a choice between either one of two alternatives, but not both.’†Kustom Signals, 264 F.3d at 1330. The court held that “The prosecution history requires that ‘or’ means the operator’s choice between search for the strongest or fastest target speed, but not both. The district court’s claim construction is affirmed.†Kustom Signals, 264 F.3d at 1331-1332. – OR – INTERPRETATION #2 – Or (pun intended) “or†may mean: A, or B, or A and B. See, Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001). In Brown, the court held that “or†meant A, or B, or C, or any combination of A, B and C. Lesson learned: be clear in claim drafting, and be careful when using the word “orâ€.   ### Bloggers Beware – Copyright Trolls on the Prowl Certain large companies, including Getty Images , routinely send out demand letters claiming copyright infringement based on a one-time or accidental use of an image that Getty Images claims is protected by copyright.  However, the actual validity of alleged infringement is rarely, if ever, tested in court.  Getty Images seems to have perfected the “price point†for extracting money based on weak claims of copyright infringement. Simply by sending out a demand letter, Getty Images is frequently able to extract money from bloggers, based on a weak claim of copyright infringement. A weak claim means that it is unlikely that Getty Images would actually prevail if this matter went to court. But these matters rarely (if ever) make it to court because the cost of fighting this copyright infringement claim was so much higher than paying off Getty Images. This is often referred to as a “business decision†— it’s far cheaper in terms of time, money and emotional health to pay the demand than to fight it. Moreover, even if the blogger took the matter to court and prevailed at trial, there would be little to no financial benefit to the blogger. A favorable ruling would find non-infringement by the blogger, after spending tens of thousands of dollars on attorneys’ fees to reach this conclusion. The blogger – now proved innocent – would be unlikely to recover the cost of attorneys’ fees. Recipients of demand letters such as those sent by Getty Images are faced with a choice — spend lots of money to fight a weak claim with little or no financial benefit if they prevail OR pay off the demand. There really is only one reasonable “business decision†in this matter, and Getty Images is counting (its dollars) on that. ### Social Purpose Corporation – May Consider Public Benefit In Addition to Maximizing Profit Since 2012, California has created two new corporate structures: (1) the social purpose corporation; and (2) the benefit corporation.  Unlike traditional for-profit corporations, these new corporate structures are permitted to consider the public benefit in making corporate decisions. The primary purpose of a for-profit corporation is as stated in the name —  for profit. (See here for a discussion of Dodge v. Ford, holding that corporations must maximize profits for shareholders.)  Case law is clear that a corporate board of directors must make corporate decisions that ensure the primacy of this purpose. In making decisions at a for-profit corporation, it is not permissible for the Board of Directors to consider other purposes, such as any benefit to the public or to the environment.  The only thing that may be considered is maximizing shareholder profit.  (That’s why is makes no sense to have for-profit health care corporations.) In contrast, a social purpose corporation or a benefit corporation allows the Board of Directors to consider factors other than *profit* when making decisions.  Note however, that these new corporate entities are not tax exempt, and are therefore different than non-profit corporations.   These new corporate structures seek to straddle some of the rigid distinctions that existed under the non-profit/for-profit corporate dichotomy. SOCIAL PURPOSE CORPORATIONSThe California social purpose corporation was originally called a “flexible purpose corporation†as discussed in my earlier article.  In 2014, the legislature amended the name from “flexible purpose corporation†to “social purpose corporationâ€. A social purpose corporation has specific requirements that are different that other types of corporations.  For example: (1) The Articles of Incorporation must include a statement of certain enumerated purposes. (2) In addition to the enumerated purposes, the Articles of Incorporation must state that the purpose of the social purpose corporation is to engage in one or more of the following purposes: (A) One or more charitable or public purpose activities that a nonprofit public benefit corporation is authorized to carry out. (B) The purpose of promoting positive effects of, or minimizing adverse effects of, the social purpose corporation’s activities upon any of the following, provided that the corporation consider the purpose in addition to or together with the financial interests of the shareholders and compliance with legal obligations, and take action consistent with that purpose: (i) The social purpose corporation’s employees, suppliers, customers, and creditors. (ii) The community and society. (iii) The environment. The Board of Directors of a social purpose corporation is required to annually prepare a report to shareholders containing, among other things, a discussion of the short term and long term objectives of the corporation; the material actions taken to achieve its special purpose objectives; the impact of those actions; and the extent to which the actions achieved the special purpose objectives for that year. BENEFIT CORPORATIONS AND B CORPORATIONSIn California, a benefit corporation “shall have the purpose of creating general public benefit.†And, the benefit corporation “may identify one or more specific public benefits that shall be the purpose or purposes of the benefit corporation.†Like social purpose corporations, benefit corporations have specific accountability requirements, however, the accountability requirements are more rigorous for benefit corporations.  Benefit corporations are required to use a third party to prepare the annual shareholder report, while a social purpose corporation may prepare the annual report itself, provided it meets certain reporting requirements. The difference between a benefit corporation and a “B Corporation†is that a specific third-party, B Labs, is used as the third party evaluator for “B Corporationsâ€.  A benefit corporation may use other third-parties to evaluate the corporation and prepare the annual shareholder report.  B Labs has recently published a list of the best B Corporations in 2015, showing that B Corporations can be any size and have a wide variety of public benefit purposes.   CONCLUSIONThe benefit corporation and social purpose corporation are relatively new corporate structures.  They provide flexibility that is often desired in today’s economy where many corporations are trying to do good in the world, in addition to generating profit for shareholders. ### For Profit Corporation Means Just That — Maximizing Profits to Shareholders is Essential Corporate law requires corporations to maximize profits to shareholders.   This absolute requirement may expose corporate leadership (and the corporation itself) to potential litigation if shareholders disagree with decisions made by the corporate leadership, as was shown in the case of  Dodge v. Ford Motor Co., 170 N.W. 668 (Mich. 1919). Henry Ford, and the Board of Directors at Ford Motor Co., had a plan to accumulate capital in order to expand production capacity. The higher production of cars would in turn lead to higher profits down the road.  Mr. Ford had good business sense, and Ford Motor Company accumulated capital according to the plan. However, shareholders (receiving a regular 60% annual dividend!!!) were unhappy that Ford had accumulated so much capital.  They wanted the capital distributed to them, rather than used to build new plants. Some shareholders brought suit for failing to distribute the maximum wealth to shareholders in the form of a special dividend.  And, Ford’s successful accumulation of cash proved to be a basis for the court to step in and alter the business plans of the corporation. The court recognized that Mr. Ford personally was responsible for the phenomenal growth of the business. The court stated: “Mr. Henry Ford is the dominant force in the business of the Ford Motor Company… A business, one of the largest in the world, and one of the most profitable, has been built up. It employs many men, at good pay.†Despite Mr. Ford’s successful history in running the business, the court apparently believed it was better able to determine the future business plans of Ford Motor Company. The court reviewed the production plans, including the projected number of car sales and projected price for the cars, and determined that Ford Motor Company should not accumulate cash to increase production capacity. Instead, the court decided that the company should distribute the accumulated cash to the shareholders as a special dividend. This court decision remains good law, and is frequently referenced as a clear example that the primary purpose of a for- profit corporation. Dodge v. Ford makes clear that the purpose of for-profit corporations is to maximize short-term wealth to its shareholders. Socially responsible purposes are not a relevant consideration when a board of directors makes decisions regarding the future actions of a for-profit corporation. A social purpose corporation or a benefit corporation are new corporate structures that allow the board of directors to consider factors other than maximizing shareholder profits.  For more information, see here. ### Trademark Specimen of Use — Is "TM" or ® OK to use in a specimen of use? It is the policy of the  U.S. Patent & Trademark Office (PTO) that trademarks may not be warehoused, or saved for later use.  Therefore, the PTO requires evidence of actual use in commerce before allowing registration of a trademark.  The evidence of actual use is called a “specimenâ€. Each trademark application must include an acceptable “specimen†before the PTO will allow registration of a trademark.   A specimen shows how the mark is actually being used.  It is not the same as the drawing of the mark, which shows only the mark you are trying to register.   A specimen is generally what consumers actually see when they are trying to purchase goods or services identified by the trademark. A specimen cannot use ®  because this is the symbol of a federally registered trademark.  Using this symbol in a specimen is inappropriate, and may result in rejection of the trademark application. It is appropriate, and in fact may be helpful, to use TM next to the mark in a specimen.  The use of TM tends to give visual prominence to the mark.   In re Sones, 590 F.3d at 1289, 93 USPQ2d at 1124 (“Though not dispositive, the ‘use of the designation “TM†. . . lends a degree of visual prominence to the term.’†(quoting In re Dell Inc., 71 USPQ2d at 1729)); In re Osterberg, 83 USPQ2d 1220, 1224, n.4 (TTAB 2007). Thus, when submitting a specimen with your trademark application, it’s OK to use TM after your trademark. ### Copyright Protection May Be Available for Professional Engineering Plans Professional engineers (PEs) often work as consultants, rather than employees.  If a PE is an employee, then his or her work product will most likely be owned by the employer.  If the PE is working as a consultant, there may be a question of who owns the plans. Often PEs think that their PE stamp indicates ownership of the plans, however existing law does not recognize a PE stamp as a claim of ownership. This article examines ways that PEs working as consultants can protect their work product and intellectual property. In California, PEs are required to have written contracts with clients.  The written contract must have a description of the services to be provided, the compensation and other factors.  Noticeable absent from this list is any discussion about who will own the plans once the PE produces them. The simplest way to protect ownership of plans and drawings is to specifically discuss ownership in the contract.  The contract may provide that the client owns the work product, or it may provide that the PE is the owner, and may provide for various licensing or other ways to share the plans with the client. If the contract between a PE working as an independent consultant and a client states that the PE’s work is “work made for hire†then it is clear that the client will own the resulting work product. Often, however, a contract between a PE and client is silent on the issue of who owns the plans or drawings, and this can lead to a PE losing rights to their work product. If the contract between the PE and client is silent on the ownership issue, the PE may argue that he or she holds a copyright on the plans, and therefore owns the plans, provided that the plans are for an architectural work, because U.S. copyright law provides protection for defined “architectural worksâ€: An “architectural work†is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features. Not all buildings are protected as “architectural worksâ€.  To be entitled to protection the plans must be for “humanly habitable structures†that are “permanent and stationary … including but not limited to churches, museums, gazebos, and garden pavilions.† Specifically excluded from protection are “structures other than buildings, such as bridges, cloverleafs, dams, walkways, tents, recreational vehicles, mobile homes, and boats.† 37 CFR §202.11(d)(1). When PE plans are for a protected architectural work, the PE may protect his or her work by placing a copyright notice on the plans.  Although US law no longer requires an actual copyright notice to claim a copyright, adding a copyright notice to the plans makes clear that the PE is claiming ownership of the plans.  A copyright notice includes the author’s name, the date, and ©. Summary:  Two ways to protect the intellectual property of consulting Professional Engineers:   Specifically discuss ownership of the plans in the contract between the PE and client; and/or add a copyright notice to protectable plans for “architectural worksâ€. ### DESIGN PATENTS — The IP Solution for Many Small Businesses By: Sharon Adams May 2014 The U. S. Patent and Trademark Office (USPTO)  commemorated the issuance of the 700,000th design patent, for a “Hand-Held Learning Apparatus†currently assigned to the Emeryville, California-based LeapFrog Enterprises, Inc. U.S. Design Patent Number 700,000 A design patent often is an excellent intellectual property solution for many small businesses, especially businesses selling a product. If the business has a unique design for its product, or a unique design imprinted on the surface of an object, a design patent may be the solution to obtaining relatively inexpensive intellectual property protection. Design patents, like all patents, have certain benefits and certain drawbacks. Some benefits include lower USPTO filing fees, and a relatively rapid turn around time at the USPTO, with an average pendency of 15 months. In addition, there are no USPTO maintenance fees once a design patent has issued. A potential drawback to design patents is a shorter patent term. The design patent term is 14 years, in contrast with utility patents, which have a patent term of 20 years. A design patent covers only the design actually shown in the patent drawings. Federal law limits the scope of a design patent claim to the ornamental design disclosed in the patent drawings. 37 C.F.R. 1.153   … claim… (a) … The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted. As stated at the ceremony announcing the 700,000th design patent: “Design patents play a critical role in ensuring that America’s intellectual property system continues to be a catalyst for American companies and entrepreneurs to innovate,†said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee. “The design area has increased from twenty five and a half thousand applications in 2009 to just over thirty five thousand filings in 2013.†### Good News for Yoga Practitioners and Speech Advocates — Bikram not entitled to copyright his Sequence On October 8, the Ninth Circuit Court of Appeals in California affirmed a previous ruling by a federal district court that Bikram Choudhury’s sequence of 26 yoga poses is not entitled to copyright protection. The court held that the poses represent an idea or system, neither of which may be protected by copyright. The court indicated that the sequence may have been protectable if Choudhury had sought and obtained a patent for his idea. In 1979, Choudhury published his classic book, Bikram’s Beginning Yoga Class, which set out 26 yoga poses (asanas) and two breathing exercises (the “Sequenceâ€) along with a prescribed set of words to accompany the poses (the “Dialogueâ€) to be taught over a 90-minute class in a room heated to 105 degrees. Choudhury obtained U.S. copyright registration of this book, along with other books and materials he produced. Some years later, Choudhury began offering teacher training, and trained defendants Drost and Samson in the Bikram yoga method. These students later began teaching classes with twenty-six poses and two breathing exercises, taught in a 90-minute class in a room heated to 105 degrees. In 2011, Choudhury filed suit, claiming copyright infringement. The district court’s held that there was no copyright infringement, because the “Sequence is a collection of facts and ideas†that is not entitled to copyright protection. The Ninth Circuit affirmed this decision, stating: Copyright protects only the expression of this idea—the words and pictures used to describe the Sequence—and not the idea of the Sequence itself. Because the Sequence is an unprotectible idea, it is also ineligible for copyright protection as a “compilation†or “choreographic work.†The district court properly granted partial summary judgment in favor of Evolation because the Sequence is not a proper subject of copyright. Copyright law is designed to balance between the need to protect authors, and the right of others to build upon existing ideas. Case law has distinguished between unprotectable ideas and the protectable expression of ideas. Using this analysis, the Ninth Circuit found that the expression of ideas — the book — was protected by copyright. The court analyzed Choudhury’s claims that his Sequence was designed to heal the body, and compared the Sequence to a book detailing a complicated surgical procedure. The court stated:The copyright for a book describing how to perform a complicated surgery does not give the holder the exclusive right to perform the surgery. Like the series of movements a surgeon makes, the Sequence is, as Choudhury tells readers, a method designed to “cure, heal, or at least alleviate†physical injuries and illness. Monopoly protection for such a method “can only be secured, if it can be secured at all, by letters-patent.†The Court rejected Choudhury’s argument that the Sequence represented a “compilation“. The Court compared the Sequence to a recipe, and stating:a cake recipe could be viewed as a “compilation†of carefully arranged and selected steps – which may, of course, reflect the personal preferences and tastes of the recipe’s author – yet the recipe would remain, in most instances, a process that is not eligible for copyright protection. Likewise, the Court rejected the argument that the Sequence was entitled to protection as a choreographic work, because copyright protection does not extend to any “idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.â€Â 17 U.S.C§102(b). ## Pages ### Sitemap Sitemap Home About Team Trademark Legal Services Blog Contact Privacy Policy ### Terms of Service Terms of Service Last updated: Oct 23, 2024 12:37 PM Please read this Terms of Service ("Terms," "Terms of Service") carefully before using the adamslaw.biz website (the "Website") operated by Sharon Adams ("us," "we," "our") as this Terms of Service contains important information regarding limitations of our liability. Your access to and use of this Website is conditional upon your acceptance of and compliance with these Terms. 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Flat fee Trademark Legal ServicesTrademark Clearance SearchesTrademark ApplicationsTrademark Maintenance and RenewalsRespond to US Patent & Trademark Office ActionsTrademark StrategyClick below for our intake form, and Attorney Sharon Adams will talk with you about your trademark matter. Confidential Intake Form Contact Information 2001 Addison Street, Suite 300Berkeley, California 94704 Phone: (510) 649-1331 sjadams@adamslaw.biz This website is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, not to provide specific legal advice. By using this website, you acknowledge there is no attorney-client relationship between you and Adams Law Office. This website should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances. ### Blog ### Trademarks Info Box Trademark Services Trademark Clearance SearchesSearch report and analysis of the likelihood that a proposed trademark will be approved for registration by the USPTO.Branding and Trademark Strategy SessionsAdvice on modifications to proposed trademark that may increase the likelihood of successful registration of a trademark with the USPTO. Analysis of potential conflicts with other existing trademarks.Trademark ApplicationsCorrect classification of goods/services in a trademark application is essential for successful trademark registration. Sharon works with each client to clarify the classification.Trademark Maintenance and RenewalsTrademark renewal requires showing "use in commerce" and the USPTO has specific rules about what qualifies as "use in commerce". Sharon advises clients regarding the evidence needed to show "use in commerce" and files the documents required by the USPTO.Respond to US Patent & Trademark Office ActionsPeople often file a trademark application on their own, or using an online platform. After filing, the USPTO may issue a refusal. Sharon assists these applicants to understand and address the issues raised in the USPTO office action.Many services provided on a flat fee basis Direct Attorney Contact Attorney Sharon Adams communicates directly with each trademark client about the specific facts of the trademark matter.Trademark Applications - Sharon discusses the trademark and the associated goods/services with each client to identify the correct USPTO classification for each trademark application. In contrast, impersonal online platforms provide little to no guidance on classification. If the classification is incorrect it often means that a trademark application will fail. Getting the correct classification up front is essential, and Sharon is an expert at that.Many clients find Sharon after being burned by an online platform that filed an application with incorrect classification, and she wishes she could have helped them up-front!Trademark registration renewals - The USPTO requires showing "use in commerce" to renew a trademark registration. Sharon goes over the goods/services identified in the trademark registration with clients. Sharon's years of experience give her insight into what the USPTO will require to show "use in commerce". Sharon works with each client to provide evidence that the USPTO will find acceptable to show use in commerce.Flat Fee Trademark Legal ServicesSharon Adams handles many trademark matters a flat fee basis. Contact Me Advantages of a Registered Trademark Click on the video to hear Sharon discuss the advantages of having a trademark registered with the US Patent & Trademark Office. You can find more of Sharon's videos about trademarks here. Contact Me ### About Info Box The Team Sharon Adams Trademark Attorney Sharon specializes entirely in trademark law. Sharon's legal services include trademark clearance searches, filing trademark applications, trademark renewal, and trademark maintenance. Sharon enjoys assisting clients with trademarks and branding strategy so her clients can grow their business secure in the knowledge that their brand names are protected.Sharon has obtained registered trademarks for businesses of all sizes and types, including online stores, downloadable apps, non-downloadable software, consulting businesses, food products, clothing, podcasts, restaurants, and more.Sharon has been working exclusively in trademark law for more than a decade, and has experience with US federal trademark, international trademarks, and California state trademarks.Sharon graduated in the top 10% of her law school class at University of California, Davis. STEPHANIE QUINN Administrative Assistant Stephanie is an Administrative Assistant for Adams Law Office. She has a passion for empowering small businesses to achieve their dreams which has led to her experience in Account Management, and Senior Recruiting for various small businesses. She continues to help small businesses by assisting Adams Law Office clients to obtain high-quality trademark services. Contact Me ### Privacy Policy Who we areOur website address is: https://adamslaw.biz.What personal data we collect and why we collect itCommentsWhen visitors leave comments on the site we collect the data shown in the comments form, and also the visitor’s IP address and browser user agent string to help spam detection.An anonymized string created from your email address (also called a hash) may be provided to the Gravatar service to see if you are using it. The Gravatar service privacy policy is available here: https://automattic.com/privacy/. 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Embedded content from other websites behaves in the exact same way as if the visitor has visited the other website.These websites may collect data about you, use cookies, embed additional third-party tracking, and monitor your interaction with that embedded content, including tracking your interaction with the embedded content if you have an account and are logged in to that website.AnalyticsWho we share your data withIf you request a password reset, your IP address will be included in the reset email.How long we retain your dataIf you leave a comment, the comment and its metadata are retained indefinitely. This is so we can recognize and approve any follow-up comments automatically instead of holding them in a moderation queue.For users that register on our website (if any), we also store the personal information they provide in their user profile. All users can see, edit, or delete their personal information at any time (except they cannot change their username). Website administrators can also see and edit that information.What rights you have over your dataIf you have an account on this site, or have left comments, you can request to receive an exported file of the personal data we hold about you, including any data you have provided to us. You can also request that we erase any personal data we hold about you. This does not include any data we are obliged to keep for administrative, legal, or security purposes.Where we send your dataVisitor comments may be checked through an automated spam detection service.Your contact informationAdditional informationHow we protect your dataWhat data breach procedures we have in placeWhat third parties we receive data fromWhat automated decision making and/or profiling we do with user dataIndustry regulatory disclosure requirements ### Home TRADEMARKLEGAL SERVICES Attorney Sharon Adams speaks personally with clients about:- Protecting trademarks for businesses of all sizes and types- Trademark Clearance Searches- Trademark Applications - US, international, or California - Trademark Maintenance and Renewals- Responding to US Patent & Trademark Office Actions- Many services provided on a flat fee basis Learn More This Video Discusses Some Considerations When Choosing a Trademark Name Play Video What's Unique Sharon has been specializing in trademark law for over a decade. She has helped hundreds of trademark clients. Personal attention from attorney Sharon Adams on each trademark matter.New trademark applications. Sharon takes the time to talk with each trademark client. Sharon learns about the goods or services each client provides. This attention to detail results in a trademark application that accurately represents the client's good/services.Pending trademark applications. Sharon also helps clients who need help responding to an office action from the USPTO. Sharon has many clients who used an online service to file a trademark application. These online services often do not take the time to learn about the trademark applicant's goods or services and this can result in errors or issues with the trademark application. Sharon can provide assistance in these situations. Contact Me Testimonials Sharon Adams is an exceptional trademark attorney-knowledgeable, thorough, and truly dedicated to protecting her clients' brands. Her professionalism, strategic insight, and clear communication made the entire process seamless. Highly recommended! - Robert Solis Getting your logo trademarked does take a long time. Sharon kept me in the loop every step of the way. She worked with me on every aspect of the process. I highly recommend her firm if you're looking to get your logo trademarked!! - Bryan Godfrey Sharon has helped me file a patent for my company's brand trademark and argue my case against a cease-and-desist letter. She's delivered services above and beyond my expectations! I would work with Sharon again. - Harpal Kochar I trust Sharon and her firm with all of my trademarks over the years. She is a great resource, her strategy and advice are on point, and the quality and timeliness of her work are excellent. She also follows up at renewal time, which is wonderful. Highly recommended. - Alay Yajnik Sharon Adams is an outstanding trademark attorney. She helped me successfully register a trademark and has also helped with other related matters. She is super smart, professional, and a pleasure to work with. If you need an attorney for your trademark registration or trademark-related issues, absolutely hire her right now. - Laurell Eden I highly recommend trademark attorney Sharon Adams! From our first consultation to the final filing, she was professional, knowledgeable, and incredibly thorough. Sharon explained every step of the process clearly, which gave me confidence in my trademark application. Her strategic approach and responsiveness were invaluable, making me feel like a valued client. 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