* The phrase claimed as a trademark was never marked anytime in its use with (tm) or (®). *
* It was only claimed as one in an obscure location; in the ABOUT tab inside the claimant's software.
* This claim was made by merely stating that the phrase was a trademark of the individual claiming it. *
* You would only see this claim if you licensed/owned and used the software... *
* and then only if you went to the ABOUT tab in the software *
I can not see that this is an enforceable claim, is it?
Only a USPTO registered trademarks can use ® in business. You cannot use ® even while your trademark application is in pending. USPTO registration gives right to use ® symbol. There is no rule that the owner must display ® whenever it is used. However it slightly strengthens the argument that the trademark owner did not enforce his/her mark. To use TM (Trademark) or SM (Service mark), you do not need USPTO permission. TM can be used in situations where you are selling goods and SM used when selling services. TM or SM is used for unregistered trademarks. TM or SM usage does not give any additional protection. Whoever uses first in the geographical region has the priority to use. To evaluate TM or SM or phrase current usability or priority, it is advised to do a comprehensive trademark search.
The owner of the trademark has a duty to maintain "good will" of the registered trademark in pubic. "Good will" of the registered trademark is maintained as long as the owner takes reasonable measures to protect it. Trademark abandonment may lead to loss of registration status. However, to prove that a registered trademark is abandoned, you need to litigate which is costly or at-least a cancellation proceeding before USPTO.
Please check the following link on the benefits of USPTO trademark registration. https://affordabletrademarkattorney.com/trademark-faqs/benefits-of-trademark-registration/
The response is general in nature and cannot be construed as legal advise. If you would like to have legal advise, then please consult any competent attorney or me privately to discuss your case and establish proper attorney-client relationship. You can reach me at my website https://affordabletrademarkattorney.com/ or email my organization at [email protected]
Generally, depending on the facts, failure to, for example, give notice of registration of a trademark, such as with the registration ® symbol may result in no profits or damages being recoverable absent actual notice.
See 15 USC 1111
You should discuss with an intellectual property attorney in a private consultation.
Legal Disclaimer- the information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship. Although effort has been made to ensure that the answers are correct, Law Office of Walter Tencza Jr. cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only. Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.
No, you do not need to use either the TM or "Circle R" ®. Additionally, you cannot use the ® unless you have a national trademark registration -- a US Federal registration in the case of sales in the US. If you have a registration then using the ® can have an advantage in a lawsuit for damages. If you want to register, retain a trademark lawyer and / or see what the US Patent and Trademark Office has to say. The International Trademark Association and many law firm websites have helpful information. There is a lot of misleading information from other sources. The paralegal services sometimes take you in the wrong direction.
This answer is written to explain situations which may come up involving intellectual property law issues. It does not give specific legal advice about specific fact situations. If you have a specific fact situation in mind you should ask for professional legal advice about the relevant facts. Seemingly minor changes in facts may change a legal opinion dramatically. Space here does not permit an explanation of all the variables in complex legal areas. Dave Brezina is an Illinois lawyer and his profession is regulated under the authority of the Supreme Court of Illinois. Although he represents clients nationally and internationally, his law practice is performed in Illinois and is not subject to regulation by other states. Dave Brezina is also a Registered Patent Attorney and a patent practice is regulated by the US Patent and Trademark Office a Federal agency and is not subject to regulation by the states. The firm, Ladas & Parry, LLP, has attorneys admitted and offices in at least Illinois, New York and California. Finally, do not post confidential information. There is not an attorney client relationship created simply by correspondence or communication with the author of this site.
Using either the common law "TM" or the ® symbol is not a requirement other than to say as noted that it might affect a damages award.
I assume there are some underlying facts that you did not address here.
If you received a cease and desist letter or something like that, you should get some proper attention before responding to it.
If you are seeking to protect your own trademark then the following might be helpful.
Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the UT secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Legal, LLC on the basis of this posting.
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