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Kathy Rheintgen

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Kathy’s intellectual property litigation experience includes managing pharmaceutical, as well as mechanical, patent cases in a variety of trademark and copyright infringement matters and trade secret and antitrust matters. She also has experience in writing infringement opinions for patent, trademark and copyright cases.

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The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application. An application can be filed based on your bone fide intent to use the mark in the future. However, the application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. This statement can be filed prior to approval for publication of the mark, or after issuance of a notice of allowance. There is a blackout period, between approval for publication and issuance of the notice of allowance during which a use statement cannot be filed. If the use statement is filed prior to publication, the application will proceed to registration once the publication period is complete (if no opposition was filed).

Once you have selected a trademark and it has been cleared for use, you can simply start using the mark. This will give you common law trademark rights. However, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO). There are a few questions that might come to mind when this recommendation is made: 1. Why should I register my trademarks? 2. Which of my trademarks should I register? And 3. When should I register my trademarks?

Once a proposed mark has been chosen, it is always a good idea to have your trademark attorney conduct a trademark search. Even if you are not aware of any competitors or related companies that use the same name it does not mean that there are none. A trademark search will also look for marks that are “confusingly similar” to the mark being searched or are likely to cause confusion in the consuming public. We will discuss the concept of confusing similarity and likelihood of confusion in the context of trademark infringement in a later post.

If you are considering several marks, it may be possible to narrow the field by conducting a quick Internet search using Google or a similar search engine. If that search finds a direct hit, you can quickly move on to your next contender. This strategy can save time and money for when the final options need to have a closer look taken by your trademark attorney.

Selecting a strong trademark is the key to being able to protect the trademark. As we discussed last week, the first and central step in branding is selecting your trademarks, which will serve to promote your reputation and help your company stand out among your competition. However, when choosing a name for a product or service, the inherent strength of mark should be considered as this will affect many things going forward from the cost of a search to your ability to stop others from using similar names.

“Branding” is one of the most popular buzz words in the advertising and marketing arena. But what does it mean to have a “brand” and what is needed to create and maintain your “brand”? Is it really important for a small physician’s office or local hospital? The short answer is yes – branding is important, even for small providers.

You have picked a strong trademark, had it searched and filed your intent to use application.  All went well and you have a trademark registration.  You have created your trademark usage manual. The marketing department has been advised to follow those guidelines and to use the ® symbol next to the mark in advertising.  You are doing everything right.

Is it time to just kick back and build brand equity?  No.

There are still a few additional issues you need to pay attention to.  One of these issues is maintenance of your trademark registration.  A trademark registration does not continue indefinitely.  It requires tending.

Declaration of Continued Use

A declaration of continued use (under § 8 of the Lanham Act) must be filed during the year preceding the 6th anniversary of the registration date. The declaration can also be filed within a 6 month grace period, upon payment of an additional fee.  It is also necessary to file a current specimen showing use of the mark.

We have talked about why it is important to use your trademark consistently.  The easiest way to be sure that everyone in your organization knows the proper way to use the company’s trademarks is to create and distribute a trademark usage manual.  The trademark usage manual should also include easy to follow guidelines setting out that the mark is to be used as an adjective and not a noun. The usage manual does not need to be a complex or confusing document.  It should be a straightforward listing of the acceptable ways that the company’s trademark should be used.  For example:

1) Where color is an option the, Ô   logo is to be printed in “PANTONE® Classic Blue 19-4052 TPX.”  The wordmark FLOWER POWER is to be printed in “Pantone® Virtual Pink 18-1856 TPX.”

In our companion post today, we are talking about the importance of using your trademarks in a consistent manner.  This consistency helps consumers know that when they see KalmKap,that it identifies a product coming from a single company and that they can trust that the quality is the same as the last time they bought the product. Consistent use helps to identify your mark as being owned by you. Another way to identify your marks as yours is to use the recognized trademark symbols and to make appropriate attribution statements somewhere within your ads.

Failure to use trademark symbols won’t result in a loss of trademark rights, but using these symbols will help place competitors on notice regarding what you believe you own and that you are serious about protecting and enforcing your valuable trademark rights.

The three symbols that can be used directly with the mark are ®, TM and SM.  If a trademark is registered with the United States Trademark Office, then you can use the ® symbol.  If the mark is not registered, then you should use the TM or SM symbols. The TM symbol can be used for any mark whether in use on goods and/or services.  SM may used for marks that are specifically used for services, rather than a product.

We have discussed the need to use your trademarks as adjectives (and not nouns or verbs) to avoid having them become descriptive or even generic terms. Today, we will talk about how you should be using your trademarks in a prominent and consistent manner.

Trademarks help consumers identify and distinguish your goods or services from those of your competitor. You should be using your marks in a way that builds “brand awareness” so that consumers will see your mark and immediately think of your company.  If the appearance of your trademark is different every time a consumer sees it, it will take longer to build up a good, strong association between the mark and your goods and services. And, with less distinctive marks, inconsistent use can undermine your rights completely.

Consistent use of a mark will help strengthen your rights in that mark as well as in any registrations that you may have. Consistency in use is particularly important with descriptive or highly suggestive marks and will assist in developing secondary meaning.

Healthcare is a highly competitive market.  Healthcare companies are hiring marketing teams to lure customers to their facility.  This will invariably require making statements regarding the quality of your services and how your services are better than your competitors.  Problems will arise if these ads cause patients or their families to expect more than what is or even can be offered. There are many scenarios that could result in claims of false advertising, but today we will be looking at “puffery.”

Puffery is generally a subjective exaggeration, even blustering or boasting, upon which no reasonable consumer would rely – “Our hamburgers are the best in the world!”  Puffery often uses exaggerations so excessive that they become comical – “Our hamburgers are so good they will bring you to tears!”

Thus, non-actionable puffery will generally involve vague, highly subjective claims regarding the superiority of the service or products being sold.  However, clarifying what may be found to be mere puffery rather than an actionable false claim can be a difficult task. The result will often turn on the totality of the advertisement or even the entire advertising campaign. Ultimately, a court will focus on whether a reasonable consumer of the services would view the accused claim as stating a verifiable fact – “We have the healthiest meals anywhere!” or whether a reasonable consumer would view the comment as expressing an unverifiable opinion – “We serve our patients the tastiest meals in the city!” The first statement can perhaps be factually verified and if not true could be an actionable false claim, whereas the second claim regarding tastiness is more a matter of opinion and is more likely to be considered puffery.