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Category: Trademark

Food Truck Trademarks

No longer a trend, food trucks are here to stay as restaurant alternatives. Outside of my stomach, I have an academic interest in food trucks: they are great at branding (or they’re not great, and then they disappear) and present all sorts of trademarks issues. Food truck trademarks are great examples of unique branding that you don’t see in other industries so nearly ubiquitously.

At a festival, a concert, or any event that brings in a dozen or so food trucks, customers walk the rounds and often remember the truck with the best – or most outlandish – branding. Branding incorporates a number of things: paint schemes on the truck, structural elements or decorations, and of course, the name of the truck.

I often discover what type of food the truck actually serves long after I’ve been hit with its branding. Until I’m about 6 feet away, I can only see the truck, not the menu, which might be on a chalkboard, a sandwich board, or even just a piece of printed paper. This experience demonstrates to me that the image the truck presents is much more important in initially attracting the customer than the food itself.

You’ll see a whole variety of branding on food trucks. Some are vintage or retro – airstreams, simply-designed milk trucks. Some are insanely elaborate – decorated like real hamburgers or sushi rolls. Some have bright paint jobs, and some opt for flat matte schemes.

You’ll also see a wide range in names, from things like “That Food Truck” to “The Moose is Loose.” Perhaps it is obvious, but food truck names are incredibly important to their vitality because of the way they often advertise their location. On social media, it can be difficult to discern food trucks, and if a The Fry Guy truck says it will downtown at 3:00, but The Fry’s Guys truck says it will be midtown at lunch, you’re going to have some customers going to the wrong truck. If you’re the truck on the wrong side of this confusion, you’ll see some lost sales, maybe even no customers at all.

Food truck owners need to think about many things when launching, operating, and selling their food truck business, like:

1) Develop and protect a great name, logo, and/or slogan
Because the name is so crucial to a social media presence and the ability to advertise, food trucks have to give a great deal of thought about their names. This doesn’t just mean coming up with something catchy, it has to be protectable. If you can’t protect it, the name will become a liability. I’ve seen companies go out of business because they didn’t pick good names, and someone else with a similar job stole their customers. If a food truck starts with a bad name, it will battle uphill from the get-go to keep other trucks out of its space.

A food truck name should be clever, and it should not be descriptive of the food or the service provided. “The Food Truck” is not a good name for your business – it immediately describes the service, and protectable rights will almost certainly never vest with this business. That can represents a huge loss of value in a future sale of the business.

A food truck trademark should also be cleared by a professional trademark attorney. An attorney can give you an idea whether the name is appropriately distinct, but also whether there are similar names already registered. If there are, those other names may prevent you from protecting or even using your name.

The above goes for logos and slogans – if you’ve got a clever and distinct design or catchphrase, run it by a local trademark attorney to make cure it looks clean.

2) Develop and protect trade dress
You can protect the way your truck looks – the shape, the design, the paint scheme. If you’re planning to have several food trucks, or to franchise across states, trade dress protection could be a valuable way to prevent others from running a truck that looks like yours.

3) Use your branding correctly
This one is fairy easy for most food trucks. Placing the name on the outside of the truck, on menus, on your social media, all to advertise your food or your food truck services, is appropriate. Use your trademarks as an adjectives, not as nouns – call it “The Giant Donut foo  d truck,” not “The Giant Donut.”

4) Patrol your rights
Watch out for others using names similar to yours. Practically, you should be especially aggressive on social media. You don’t want anyone to start using a name similar to yours that might siphon customers, or might reduce your ability to signal to your loyal base where you’re stopping tomorrow afternoon. Beyond this, you need to make sure other businesses, restaurants, bars, aren’t using names like yours, and aren’t registering trademarks like yours. Cease and desist letters can be helpful ways to let other companies know they should pick a new name or change their existing name.

If you have other questions about food truck trademarks, contact a local trademark attorney, or Tom Galvani here.



What is a Trademark Statement of Use?

Earlier this month I wrote about Notices of Allowances in trademark applications. A Notice of Allowance is the United States Patent and Trademark Office’s manner of moving the substantive portion of examination toward registration; the Office notifies the applicant that application seems ready for registration and then invites the applicant to submit proof that the mark is being used in commerce. The Statement of Use is the applicant’s official response to the Notice of Allowance.

No trademark application, but for some with foreign priority claims, registers without proof of use of the mark. The Statement of Use submits proof of use. It includes a number of things. First, the Statement of Use declares that the trademark is in use in commerce with the goods and services identified in the trademark application. Second, it declares a date that the mark was first used in commerce. Third, it declares a date that the mark may have been used, regardless of whether such use was in commerce or not. Fourth, the Statement of Use provides a specimen, or an example of how the mark is being used. Multiple specimens are sometimes submitted. If the application contains multiple classes – different categories of goods and services – a specimen for each class is required. Sometimes, applicant will also file multiple specimens within a class as well.

A Statement of Use is a filing that swears that the mark is being used on all the goods identified in the application. If some of the goods or services aren’t being offered, an applicant should remove those goods not offered, lest the application and resulting registration be at risk of later cancellation, generally.

A Statement of Use must be submitted within six months of the Notice of Allowance mail date. If it is filed late, it will not be accepted unless accompanied by a Petition to Revive. However, the six-month deadline can be extended. A Request for Extension of Time to File a Statement of Use asks for an additional 6 months to submit the Statement of Use. Further Requests can be filed, but no more than five extension can be obtained in a single application. Failure to file the Statement of Use after the fifth extension results in the abandonment of the application.

The Statement of Use is thus the official mechanism for responding to a Notice of Allowance and presenting the necessary proof of use to finalize the trademark application.



What is a Trademark Notice of Allowance?

Filing a trademark application with the United States Patent and Trademark

Sample Notice of Allowance

Office initiates a lengthy process for the search, examination, and potential registration of a trademark. The Trademark Office reviews applications for technical and substantive requirements before allowing a mark to register. However, no application – with the exception of those based on foreign trademark registrations – is allowed to register without proof that the mark has actually been used in the marketplace. A Notice of Allowance is one part of the trademark application process.

Some trademark applications are filed on an in-use basis. This means that the mark is in use at the time the application is filed; the owners are actively selling their products under a brand, the company is promoting its services under a logo, or some other public, commercial use is being made of the applied-for trademark.

Other trademarks are filed on an intent-to-use basis. This means that the applicant, at the time of filing, is not using the trademark, but does have an intent to do so in the near future. At some point in the application process, the applicant must offer up proof that it has begun to use the mark in commerce.

In an intent-to-use trademark application, proof of use can be submitted early in the process. This is done by filing an Amendment to Allege Use. The Amendment to Allege Use provides the Trademark Office with an example of how the trademark is being used commercially, when the trademark was first used commercially, and then requests that the application be processed as an in-use application moving forward. An Amendment to Allege Use is not a required filing, and we file very few of them. There can be strategic reasons to file or not file an Amendment to Allege Use, but often times an Amendment to Allege Use is not filed simply because the applicant has not put the trademark to use in time.

If no Amendment to Allege Use is filed, then the Trademark Office reviews and processes the trademark application normally. If all goes well, after a publication period, the Trademark Office will issue a Notice of Allowance to the applicant. The Notice of Allowance invites the applicant to submit a Statement of Use. A Statement of Use if very similar to an Amendment to Allege Use, but is submitted after the publication period. The Notice of Allowance places a deadline on filing a Statement of Use of 6 months. If not Statement of Use is filed, the application is abandoned unless the applicant files a request to extend the time to file an SOU.

The Notice of Allowance is thus the Trademark Office’s way of formally inviting the applicant to submit proof of commercial use of the mark, and restricting the amount of time in which to do so. This moves the trademark application forward to registration or lets it abandon.



Trademark Knockout Searches

Before a trademark application is filed, it is often advisable to perform a trademark search. A search can be used to evaluate the risks associated with using a mark and is also helpful for determining the likelihood of federally registering the mark.

There are two types of trademark searches that can usually be run: a comprehensive search and a knockout search. A comprehensive search usually looks for identical and similar marks at the Trademark Office and in common law usage, which includes any instances of the mark being used outside of the Trademark Office, such as business trade names, internet usage, phone numbers, and other local usage. Comprehensive searches require a significant amount of investigation, analysis, and time.

A knockout search is a much more cursory search. The purpose of the knockout search is limited to reviewing filings at the Trademark Office for anything that may pose an immediate danger. Identical marks and very, very similar marks – in terms of sight and sound, generally – may be found in a knockout search, while confusingly similar marks may be missed. Knockout searches are merely quick reviews to eliminate the potential mark if an obvious problem exists.

Some law firms bill for knockout searches. This firm doesn’t charge. However, even though a knockout search can be done quickly and cheaply, its purpose shouldn’t be confused; it is intended to find only the most obvious of issues for a mark as means of eliminating a vulnerable mark. If you’re planning on expanding geographically, using the mark broadly, or establishing a legitimate brand force, you should strongly consider a comprehensive search. Speak with a local trademark attorney for more advice on your particular situation.



Top Reasons To File a Trademark Application

  • To Protect Your Trademark – trademark registrationVery basically, filing an application to register your trademark federally is an essential step in protecting your mark. It gives defensive and offensive benefits, and is absolutely critical in protecting your brand and brand value.
  • You’re Expanding Your Brand – You’ve got an existing line of products under a brand name, but you’re expanding that brand to a new line. A trademark registration will help protect that new line, and prevent others from using similar names.
  • You’re Expanding Geographically – Because a federal trademark registration provides national priority but can be established with quasi-local use, you can prevent others from using your mark around the nation, thus letting you expand from a local or regional use into a larger geographic area.
  • Presumption of Ownership – Parties that use your trademark after you do are infringers, presumed to have knowledge of your trademark registration. Registering a trademark establishes constructive use across the entire nation.
  • Basis for Foreign Protection – A trademark application filed in the US can be made the basis for foreign protection, either through direct national filings or via an international registration under the Madrid Protocol
  • Asset Establishment – Trademarks are representations of goodwill, and as such, can establish considerable value on a company’s books that otherwise would be difficult to quantify and attribute
  • Perpetual Protection – Trademarks are unique in that they provide continuing protection for as long as it they are used.
  • Multiple Avenues of Enforcement – A federally registered trademark can be enforced through a variety of mechanisms:
    • Cease and desist letters are often the most cost-effective, and depending on the recipient and the grounds, can be the most legally effective
    • Infringement can be proven through a lawsuit. Lawsuits are expensive, but can result in the award of damages
    • UDRP – A Uniform Domain Name and Dispute Resolution Policy proceeding can be used to wrest a domain name that infringes on a trademark. If a cybersquatter is using your trademark in a domain name, a UDRP proceeding can grab that domain name back
    • Customs – Registering your trademark with US Customs helps control importation of infringing products


Government Trademark Fees To Rise

The United States Patent and Trademark Office will be increasing certain trademark fees on January 14, 2017. The USPTO is unique among government agencies in that it is a profit center for the US; it generates more revenue for the government than it expends in operating costs.

Most, if not all, of the increasing fees are for paper filings. Trademark applications filed by paper are much more time-consuming than those lodged electronically through the Trademark Office’s online filing system. The filing fee for paper applications is nearly doubling to $600. It appears the costs associated with pursuing a registered trademark are not going to change.

Trademark fees are set at levels projected to cover future costs, including operating costs and reserve funds. The number of applications filed, and the number of registered trademark issued, continues to climb this year, as it has for the past six years. The Trademark Office is predicting that this will not change in the near future. Further, the Office desires to not increase the pendency of a trademark application, which currently averages 9.8 months, despite the predicted increase in trademark filings. Further, the Trademark Office is upgrading its IT systems.

The Trademark Office has chosen to fund these changes and improvements by shifting the fee burden to those still filing by paper. I don’t have figures for the number of applications filed electronically versus in paper, but I find it fascinating that there are apparently enough paper filings that these fee increases will bring in enough money to fund its changes. As the Office puts it: “The fees will allow the Office to further USPTO strategic objectives by: Better aligning fees with the full cost of the relevant products and services; protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings and more efficient resolution of appeals and trials; and promoting the efficiency of the process, in large part through lower-cost electronic filing options. The changes will also continue to recover the aggregate estimated cost of Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations.”



Securing a Domain Name with Pre-Existing Trademark Rights

Domain names are addresses for websites. Domain names are often chosen because of their ability to be remembered, marketed, or commercialized. However, sometimes a domain name is chosen for more illegitimate reasons, such as extracting a premium purchase price out of someone who wants the domain and may have some reasonable claim to it. For example, a business owner may be forced to pay a much higher price for a website domain name embodying the business name if someone is able to register the domain name before the business owner.

There are several processes that can be used to wrest the domain name from the registrant. One of them is a UDRP proceeding. A UDRP proceeding is an arbitration initiated by a trademark owner to establish superior rights in a domain name and force a registrant to cancel or transfer the domain name.

All registrants, when they purchase a domain name, agree to follow UDRP rules and policies, and to be bound by decisions of an arbitration panel ruling on those rules and policies. Thus, when someone registers a domain name that may touch on a trademark, the trademark owner can institute a UDRP proceeding. A successful UDRP proceeding will show that the domain name is similar to the trademark, that the registrant has no legitimate rights in the domain name, and that the domain name was registered in bad faith. When successful, the registrant may be forced to transfer the domain name to the proper trademark owner.

A UDRP proceeding can be an inexpensive, quick, and very effective way to obtain a domain name from an illegitimate registrant, or even a cybersquatter. However, there are very strict technical rules for the manner in which a proceeding has to be prepared and filed, and, of course, the proceeding must be based on substantively strong grounds as well. You should contact a local, competent trademark attorney if considering pursuing a domain name held by someone.



Trademarks for Etsy Shops

Chances are, if you are considering starting an Etsy shop, you have spent a fair amount of time deciding on a name for that shop. The name symbolizes you, your branding and image, your customers, and it takes on a dominant role in the creation of an online business. Unfortunately, often once a name is picked, little more is done with respect to the name.

Until you get the warning. I’ve seen Etsy shop owners get warning letters, or notification letters, regarding the use and/or infringement of trademark rights in the shop name or product. Etsy seems to have a fairly strict intellectual property rights policy: previous clients have told me that it is a three-strikes-your-out game, and just about anyone can throw those strikes in the form of a complaint submitted through an online form in a matter of minutes.

Thus, protecting your shop name, and using it properly, is a very important next step for a new shop. Developing trademark rights is essential to the success and long-term vitality of the shop.

Trademark rights arise and inure to the benefit of a person or company selling goods or services. Typically, we think of trademarks as those names, logos, and catchphrases on billboards, storefronts, and advertising brochures. However, trademark rights can be developed in much less sophisticated, though just as proper and powerful, ways.

A correctly structured Etsy shop has everything that is needed to create trademark rights. Goods are offered. The goods are advertised in connection with a shop name. The consumer can purchase the goods. That’s about all that is necessary.

However, building trademark rights in a name is not as simple as just setting up the online shop. Some consideration must be given to how the goods are displayed, how the mark is displayed, and how the trademark is used, or things can go wrong

For instance, clothing is one of the largest markets on Etsy, but poses one of the most difficult types of goods for which one can obtain trademark protection. Decorative clothing, silk-screened shirts, handmade dresses are advertised for sale, but if not done correctly, will never lead to trademark rights because the use of the trademark can be considered to be merely ornamental by competitors, the Trademark Office, and even courts. I see the ornamental kiss of death all the time; just using a name on the front of a shirt is not going to protect that name. Not only will you not be able to protect the name, but others may be able to usurp and develop their own trademark rights in it. This is a field in which careful guidance from a trademark lawyer in developing the clothing and building the Etsy shop is crucial and fairly painless.

As another example, with these other goods, the goods or services with which the trademark is used must be related to the trademark carefully. Otherwise, you can end up developing trademark rights as a retailer of goods, rather than as a manufacturer of goods. In other words, if you sell belts, and you really see yourself as a leather worker, you may not trademark rights in “online retail store services featuring belts.” You’ll want your trademarks to be associated with the belts themselves. This is a dichotomy that the Trademark Office has been getting particularly adept at noticing in the last year or two, and can be important for the depth and breadth of your protection.

In summary, consult a local trademark attorney if you are considering starting an Etsy store and are giving any serious thought about the name. Designing, protecting, and using the name are important and necessary parts of running your online business.



Increased Trademark Fees

The Trademark Office is proposing fee changes for many trademark filings. Some of these are fairly drastic. For instance, the fee for filing an initial trademark application is currently $375, but the Office is proposing that this fee be increased to $600. Most of the increased fees are associated with paper applications and paper filings. Clearly, the Office is trying to deter applicants from filing in paper because of the increased time which such applications demand in initial processing and examination. The fee changes have not been approved yet, but could go into effect this year. A comments period is currently open; more information is available here: Federal Register Notice



Acquired Distinctiveness Requires Both Continuous and Exclusive Use of a Trademark

When you file a trademark application for a mark that is descriptive of the goods and services – or a quality or characteristic of the goods and services – the Trademark Office will refuse to register it initially. You can still generally achieve registration by amending the application to the Supplemental Register. Or, if you can show long, continuous, and exclusive use, you can keep the application on the Principal Register by claiming acquired distinctiveness under Section 2(f) of the Lanham Act. Basically, you are asserting that the public has come to recognize your mark as indicative of the source of your goods or services because of the efforts you’ve made over several years to associate your brand with a certain quality.

Until recently, it was common that five years of continuous and exclusive would generally satisfy a Trademark Examiner such that you could successfully make a 2(f) claim. However, a discussion I had recently with an Examiner revealed that the Trademark Office has sent down orders to the examining corps that longer use is now going to be necessary, absent other factors such as massive branding or marketing expenditures relative to revenues.

This indicates that showing an adequate length of use is going to be more difficult moving forward. However, a recent ruling within the Trademark Office has raised a new issue. An application was just defeated in an opposition proceeding because it lacked the requisite exclusivity that is part of the 2(f) test. There, an opposer asserted that, while the trademark applicant had used the mark for a long time, it had not done so exclusively, presenting evidence that the opposer and several third parties had used the identical trademark. This was enough to weigh against the application. While absolute exclusivity – likely an impossible standard – is not required, widespread use is inconsistent with a 2(f) claim.