U.S. Supreme Court issues trademark decision - Check out our decision highlight hashtag

The U.S. Supreme Court issued a decision today in B&B Hardware v. Hargis, the second trademark decision from the high court this term. The issue in the case was whether the Trademark Trial and Appeals Board (TTAB) decision finding a likelihood of confusion between two trademarks had a preclusive effect in a federal court lawsuit that was going on at the same time. The TTAB decision involved the same two parties and the same issue, so the Supreme Court ruled the TTAB's decision should have been considered conclusive by the federal court.

I'll embed the tweets a little later. In the meantime, if you want to check out the tweet stream from my reading of the decision, the hashtag is #BBHardwarevHargis. As usual, it's probably easiest to start at the bottom.

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Nine Things You Need to Know about Trademark Registrations — Part III

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is last part in a three-part series about federal trademark registrations.

7. Treat Your Trademark Like a Business Asset. Your trademark is a business asset, which gives it qualities that are important to income, business valuation, and estate planning considerations.

• Personal Property. Trademarks are considered personal property, like cars or jewelry, and can be bought and sold like other personal property.
• Business Valuation. You may wish to list your trademark registration as a business asset on your balance sheet. Trademark registrations typically fall under the “goodwill” business asset, and federal registrations increase the value of goodwill substantially due to the strengthening of the brand associated with the trademark. Your trademark lawyer will be able to help if you need a formal appraisal of your trademark for business purposes.
• Income Generation. Some trademark owners choose to create intellectual property holding companies for trademarks and other intellectual property. These holding companies license intellectual property rights to others (which may or may not include companies with common ownership). Holding companies can be useful in generating a royalty stream associated with your intellectual property. You should consult with an accountant to determine if a holding company is an appropriate method for you to generate income that receives preferable tax treatment. Most trademark lawyers can help you set up holding companies and the associated license and transfer documents necessary to convey trademark registrations.
• Estate Planning. If you own your trademark rights individually, the trademark will be treated like any other divisible asset, such as a bank account. There are downsides to a lack of estate planning for individually-owned trademarks, including the fact that every heir could have the right to sell, license, or otherwise encumber the trademark to the detriment of all other devisees. For this reason, a solid plan needs to be in place for individually-owned trademarks. 

8. Changes in Ownership or Address. If ownership of the trademark changes (either by sale or restructuring), the USPTO should be formally notified by recording the paperwork. Likewise, if your address changes, the USPTO needs to be updated so it will send any notices relating to the registration to the proper address.

9. Be Wary of Official-Looking Paperwork. Many unscrupulous companies send solicitations to trademark registrants on official-looking letterhead, or in official-looking emails, for worthless services. This is a large enough problem that the USPTO has a page dedicated to non-USPTO solicitations on its website at http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations (last visited March 1, 2015). You should not send money to anyone concerning your trademark without consulting a trademark lawyer first. 

That concludes our three-part series on trademark registrations. Thanks for reading!

Several anti-consumer bills introduced at the Arkansas Legislature

Yesterday was the bill-filing deadline for the Arkansas Legislature. Several anti-citizen bills were introduced. These bills are designed to increase profits for insurance companies and other major corporations at the public's expense. Please reach out to your legislators and oppose anti-consumer bills.

For example, under current Arkansas law, an injured person must be "made whole" by settlement or jury verdict before that person's health, worker's comp, or car insurance company has the right to recover any money from the at-fault party (or his or her insurance company). The reason for this law is this — as between the customer and the insurance company, the insurance company was paid to assume the risk of injury to its customer. This "made whole" doctrine is an issue of fundamental fairness because it helps Arkansans play on a more level field with insurance companies, who already get to hide behind their insureds and rarely get called to account for other bad faith tactics.

HB1907 would repeal this "made whole" doctrine, which would result in a windfall to insurance companies at the expense of Arkansas citizens. Several federal laws are already like this, and many Arkansans already receive nothing — zero — when injured because their federal insurance program gets paid first. The federal law is good for major corporations but bad for consumers, and HB1907 is a bad bill modeled on a bad federal law.

Please call your representatives and senators and tell them you oppose "tort reform" in any form or fashion. Conservative financial magazine Forbes recently declared that tort reform didn't reduce defensive medicine, but rather resulted in record profits for insurers. Forbes also noted tort reform had the unintended consequence of slowing down new patient safety initiatives to correct the 44,000-98,000 needless deaths that occur each year in hospitals. A list of legislators is on the Legislature's website here, and UALR has a district finder here if you need to identify your own legislators. 

Remind your legislators that the U.S. Constitution's 7th Amendment preserves the right of juries to make decisions about disputes between citizens exceeding $20. Under the Arkansas Constitution, this requires full compensation for any wrongs. Juries are the ultimate check on the power of government — they represent constitutionally-established local control of our own communities. Let's keep the power in the hands of the people, and out of the hands of the insurance companies.

Remember this: if legislators can take away your 7th Amendment right to a full and just award by a jury because an insurance company wants them to, they can take away your 1st and 2nd Amendment rights to free exercise of religion and to bear arms as well.

Nine Things You Need to Know about Trademark Registrations — Part II

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is Part II in a three-part series about federal trademark registrations.

4. Marking Using the ® Symbol. Once you get a federal registration, you should begin using the mark with one of the three following registration notices: the ‘‘®’’ symbol, ‘‘Registered in U. S. Patent and Trademark Office,’’ or ‘‘Reg. U.S. Pat. & Tm. Off.’’ Failure to do so will prevent you from recovering damages in a trademark infringement lawsuit from an infringer prior to his or her receipt of actual notice of your registration.

5. Rights Conferred by Registration. The registration of a mark is conclusive evidence of (1) the validity of the registered mark, (2) registration of the mark, (3) your ownership of the mark and (4) your exclusive right to use the mark in commerce. Although the mark is registered, it may be challenged during the initial five years of the term by anyone who believes that he or she will be damaged by your registration. Further, it can be challenged at any time if the mark becomes a generic name, if you abandon the mark by failing to use it, or if an opposer can successfully argue that the registration was otherwise illegal or fraudulent.

6. Duty of Enforcement. You have a duty to enforce your trademark rights against others who use your trademark, or a confusingly similar mark, in commerce. If you do not enforce your trademark rights against others in a timely fashion, you may lose the right to enforce the mark against those infringers. Furthermore, if the mark becomes generic, you will lose the right to enforce it against anyone. 

• Immediately notify your trademark lawyer if you learn of other marks that are similar to yours and that may cause confusion with consumers or that may dilute the strength of your mark.
• Monitoring. Your trademark lawyer should be able to arrange a monitoring service to watch for uses of or applications for other trademarks that may be similar to yours so you can timely enforce your rights.

 We'll conclude our three-part series on trademark registrations next week. Thanks for reading.

Nathan leads Arkansas lawyers for new trademark filings

I wrote some custom software to automatically update a database of trademarks I file for my clients. This software notifies me daily of any changes to the status of my clients' trademark applications. It also notifies me when deadlines get close or when renewal affidavits need to be filed. It's a big help to my practice, and it helps me keep my clients informed in a timely fashion.

My software also analyzes statistical information about my clients' trademark applications, such as average pendency, so I can give clients accurate estimates of the time it will take for various things to happen during the application process.

I recently wrote some new software to analyze statistics about all trademark applications naming Arkansas owners, and I'll be featuring some of the insights on this blog going forward.

One of the first questions I asked was, "Who files the most trademark applications in the state?" The table below shows the answer:

I'm proud and pleased to be the attorney handling the most applications in the state over the last 12 months.

What would you like to know about federal trademark filings for Arkansans?