Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Dear Rich: I have two trademarks registered to a corporation and will be transferring the rights to use these trademarks to a new corporation. Do I have to notify the Patent and Trademark Office and how would I do that? Also I notice that someone asked about renewing a patent. Is that also necessary for trademarks? First of all, the Dear Rich Staff wants to acknowledge that the person who asked this question also happens to be the same person who comes by and fixes our mother's computer so we say thanks for all that great service over the years -- and BTW, we messed with the ethernet cords and wifi last time we were in town. Ooops!

Dear Rich: My mark has been registered on the Supplemental Register for five years and continuously used during that time. Does it now qualify automatically for registration on the Principal Register? "Automatically" may not be the correct word but you should be able to "graduate" to the Principal Register without much problem. 

Dear Rich: I would like to register a trademark, but how can I be sure that someone from the site won't steal my business idea? Are online registration services trustworthy? Aside from Nolo's trademark registration service (Insert FTC Disclaimer here), we cannot attest to other online site's trustworthiness (although they would have difficulty staying in business if they ripped off customers). In any case, as helpful as these services may be, you can probably bypass them and file directly at the USPTO website without much hassle. The Dear Rich Staff believes that you can trust the USPTO (and if you have doubts about trusting government agencies, you're best off not going into business at all). Some other things to keep in mind:

Dear Rich: I plan on registering my trademark even though I have not begun using it. When does the mark I'm registering show as "pending?" There's no official status for a "pending" trademark registration; you either have a federal registration or you don't. (The Dear Rich Staff thinks that you may be confusing trademarks with patents. There is a "patent pending" status, available to filers of patent applications and provisional patent applications). 

Dear Rich: A friend of mine has a CD with educational material (not school-related) but some type of teaching program she has put together and wants to copyright. Do you have any suggestions? Start with the principle that your friend already owns a copyright for her work. It's automatic. She should include a copyright notice on the CD, packaging and on the materials that appear on the user's screen. The notice should be something such as "Copyright 2009 [Your Friend's Name]" and if she is including recordings on the disk, there should also be a "P" in a circle followed by similar information -- "2009 [Your Friend's Name]." 

Dear Rich: Is there a free online resource to find examples or forms of an answer that I can file in response to an objection filed against a trademark application at the USPTO? Yes, you have online access to hundreds (maybe thousands) of real-life responses to trademark objections via the USPTO's Trademark Document Retrieval (TDR) system, or alternatively via Trademark Applications and Registrations Retrieval (TARR). You can get to both from the USPTO homepage. To find these documents plug the appropriate serial number into TDR -- for example, try your own serial number and you'll see a list of all the filed documents. Click on any title and you will see the document (or check the box and download a PDF). 

Dear Rich: I am 12 and I have a radio program that uses the service mark "For Kids ... By Kids." I have been using it since 2005. I have an application in process for the service mark for use in Internet radio. I am affiliated with a radio consultant who is talking to radio stations about licensing my format. In March 2009 a radio network released a new program format that uses my service mark. I sent them a C&D letter and they would not comply as I am not a station in their market. But they do stream on the Internet and use the same service mark and I am a direct competitor, I would say, as I have streamed at JENNiRADIO.com since 2005! My lawyer and their lawyers have already talked and they said no, they will continue to use my SM. What should I do now? Wow! First of all, the Dear Rich Staff is impressed. You're 12 and you have your own radio show, you've been to CES (like 4 times), you've interviewed Mitchel Musso (more than once), you can send cease and desist letters, and you know the difference between a service mark and a trademark. (BTW, we're going to refer to trademarks and service marks interchangeably).  

Dear Rich #1: I have had a business installing and maintaining equipment for a number of years. I now want to register my trademark, but I do not know if I meet the "in commerce" requirement. I am in a first state and have a number of customers located in a second state, but the work I do for them is all on customer property located in the first state. Am I "in commerce"? I also do some work on  American Indian land. Is this work in commerce?

Dear Rich: I am a long-time artist, but never serious until now. I took up clay with lost wax in mind, and am now at the point of contacting a foundry to begin the process. What do I need to do and/or know prior to actually sending them any photos? I'm so glad you asked. The short answer to your question is "That depends..." The Dear Rich staff presumes you're concerned about either (1) the foundry ripping off your work, or (2) that the foundry will make some claim of co-authorship. As for being ripped off, as our Dear Rich readers know, you have a copyright in the photos (and any resulting sculpture) without doing anything. You can file a copyright application if you like (we recommend the new Form CO) and that will provide additional rights in the event of an infringement. You could also have the foundry sign an agreement (PDF) not to disclose or reproduce your work. That agreement could also deal with your second issue by having the foundry acknowledge that it acquires no rights in the resulting sculpture (and any rights it does acquire are assigned to you). (This site has helpful information about dealing with foundries.) Our guess is that the foundry is used to artists raising such issues and may even have such an agreement available. If they don't (and the agreement cited above doesn't work), you can put together an informal agreement yourself, or get one from one of Nolo's independent contractor books. All of these suggestions are based on the assumption the foundry is in the U.S. If it's in a foreign nation, you'll have a harder time enforcing agreements and copyright.

Dear Rich: What is the rule about using the name of one city for products made in another city. Can we call our beer 'Kansas City,' even if it's not made in Kansas City? I'm so glad you asked. The short answer is, "Probably not." If the USPTO thinks your brand is geographically misdescriptive, you won't be able to register it. When a trademark identifies a place other than the place from which the goods or services originate, and if consumers are likely to believe that the goods originate from that place, it is geographically misdescriptive and unprotectible. For example, Maid in Paris was considered misdescriptive of a perfume that is not from Paris. Durango was considered misdescriptive of chewing tobacco since it was not from Durango, the city in Mexico that produces tobacco products.

To our readers: This is the first day of our celebrity-free week, during which we will not be answering any questions about whether you can copy celebrity pictures, names, life stories, odors, hairstyles, or DNA. (And in our daily life, we will attempt to think celebrity-free thoughts.) We are not anti-celebrity, but in our continuing quest for personal authenticity, we urge you (and our fellow bloggers) to achieve some perspective on the issue by taking the one-week celebrity-celibacy vow. Okay, back to our regularly scheduled programming...

Dear Rich: I offer software development services through my website. I applied  for a federal trademark registration for my service mark and I uploaded a specimen which was an image of the trademark taken from my homepage that included the words "custom software design and support services." The trademark examiner said it wasn't acceptable because it "does not show the applied-for mark in actual use in commerce in the sale or advertising of the services." What did I do wrong and how can I fix this? I'm so glad you asked. A specimen for a service mark must identify the applicant's services -- which you did -- and it must indicate their source -- which you apparently failed to do. The Dear Rich staff reviewed your specimen (a screen capture) and noted that it lacked evidence that it was from your website.You should submit a substitute specimen showing the mark in the context of the webpage, preferably with the URL and a displayed method of contacting you -- for example, a "contact us" button.  In addition, you must file a declaration that states: "The substitute specimen was in use in commerce at least as early as the filing date of the application." By the way, as a service mark owner, you can submit a non-website specimen instead -- for example, you can submit letterhead, an invoice, or a business card -- provided it displays the mark, describes the services, and demonstrates a method of contacting you. The USPTO offers more information about service mark specimens. And speaking of services, Nolo now offers online assistance for those who wish to apply for federal trademark registration. 

Dear Rich: I have a question. I am an illustrator. Is it true that the government is setting up a database of visual arts works? And is it true that any works that you don't place on this register will become "orphan works" that anybody can use without your permission? I'm so glad you asked. The answers to your questions are "maybe," and "not exactly." An orphan work is one that is owned by a hard-to-find copyright owner. For example, in 1975, a child sends a drawing to Elvis Presley. In 2008, a biographer wants to include the drawing in a Presley biography. The problem is that the artist can't be found and the publisher doesn't want to reproduce the image without permission. Two bills have been proposed in Congress that address this issue. The proposed bills would allow the publisher -- after performing a diligent search -- to reproduce the image. If the artist later appears, the publisher would have to pay a reasonable fee for the use. An unlikely crew of special interests favor the House version of the bill, including librarians, free-speech types, copylefties, academics, writers, photographers, and big industry groups like the RIAA (and, of course, Google). Under the House bill, anyone who wants to use a work must (1) document their "good faith" search for the owner, (2) file a "Notice of Use" with the Copyright Office before using the work, (3) provide attribution if they know the name of the creator, and (4) include a special "orphan works" symbol when the work is published.

Illustrators and artists are concerned about the bill because it would establish a registry of visual arts works. They're worried that if a piece of artwork doesn't show up on a registry search, all rights to that artwork may be lost. First, keep in mind that orphan or not, copyright is always preserved in the work. Second, there's nothing in the law that says that a failure to appear in the registry automatically creates an orphan. For example, even if the drawing of Suda (above) did not appear in a registry, I would still have a hard time claiming it was an orphan ... since the artist and his work are easy to locate on the web (Steve, please don't sue).

Dear Rich: I have a question. I've tried filing a provisional patent application electronically at the patent office but the USPTO refuses to validate my application cover sheet (a PDF form). It's driving me nuts because I can't figure out the problem. I'm so glad you asked. Chances are you're using the wrong version of Adobe Acrobat. Although many people are using Acrobat 8.0 (and higher), the USPTO EFS system currently only accepts forms prepared with Acrobat 7.0.8 which you can obtain using the links on this USPTO page. (You can get all the EFS requirements here.) And of course, if you're interested in the other kind of acrobat...

Dear Rich: I have a question. Last week, you talked about trademark logos. How do you search the USPTO database to find conflicting design logos? I'm so glad you asked. You can search design logos as follows:

1. go to the USPTO website


2. under Trademarks (on the left), click "Search TM Database"


3. then click "Free Form Search (Advanced)"


4. enter a word or words in the search box that signify what you're looking for followed by [DE] (which stands for "design element").

So, for example, if you were looking for design logos that included a meerkat (no not this meerkat) you would type: meerkat[DE]. Cute, huh?

For more on trademarks, check out Attorney Stephen Elias' book Trademark: Legal Care for Your Business & Product Name (Nolo), now in its 8th edition.