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The Let’s Get Ready To Rumble! Trademark: A Complete Guide

The phrase Let’s Get Ready To Rumble is a cultural phenomenon. It has been used in countless boxing matches, sports events, movies, TV shows, and video games. But it is also the foundation of a multi-million dollar empire built on trademarks.

Guide to Michal Buffer's Lets Get Ready to Rumble Trademark

   By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to the famous phrase: Let’s Get Ready To Rumble!

This guide covers:

So, if you need to learn about the famous phrase Let’s Get Ready To Rumble, this guide is for you.

Let’s jump in!

I. The Origins of a Famous Catchphrase 

Who Says Let’s Get Ready to Rumble?

Michael Buffer says Let’s Get Ready to Rumble. He started using the phrase about 40 years ago.

Who is the Let’s Get Ready to Rumble Guy?

Michael Buffer is the Let’s Get Ready to Rumble guy. Mr. Buffer is a legendary ring announcer.

Who is Michael Buffer?

In the world of sports, few voices are as instantly recognizable as that of Michael Buffer. Known for his elegant appearance and resounding, deep voice, Buffer has become a staple in sports arenas across the globe.

Born on November 2, 1944, in Philadelphia, Pennsylvania, Michael’s parents divorced when he was just 11 months old. Subsequently, he was raised by foster parents under the name of Huber. Though he faced challenges early on, Michael later found his calling in sports announcing.

Let's Get Ready To Rumble Guide

At the age of 38, in 1982, Buffer began his career as a ring announcer. He soon gained national exposure, serving as the exclusive announcer for fights promoted by Bob Arum’s Top Rank on ESPN.

Michael Buffer is best known for his work in boxing, but his powerful voice has also led to opportunities outside the ring. Today, you can hear him at prestigious events like the MLB World Series, NBA Finals, WWE, and even the now-defunct WCW. Mr. Buffer has even appeared in movies and television, including Rocky and South Park.

How It All Started

As Buffer’s popularity as a ring announcer grew, he knew he needed a distinctive phrase to capture the crowd’s attention and generate excitement for the match. He experimented with several lines, but none resonated with the audience.

Drawing inspiration from notable boxers and their sayings, Buffer recalled that Muhammad Ali often said, “Rumble, young man, rumble.” Additionally, renowned announcer Sal Marchiano was known to declare “We’re ready to rumble” when presenting a fight. By merging these phrases, Buffer crafted his now-legendary slogan. The phrase was an instant hit, and it quickly became Buffer’s signature call.

Michal Buffer first used the phrase “Let’s Get Ready to Rumble” during a boxing match in 1984.

To ensure the phrase’s powerful delivery, a friend who was a professional singer coached him. Buffer learned the importance of dramatic delivery and mastered the strategic pause, allowing the crowd to react enthusiastically. The phrase quickly gained traction, establishing Buffer as a household name in the world of boxing.

Michael Buffer Let's Get Ready to Rumble

II. Trademark Protections

What is a Trademark?

A trademark is an exclusive right that a business or individual has to use a name, logo, slogan, or other symbol to identify products and services. Trademarks help protect a brand’s identity from competitors who may try to copy it while also preventing confusion among consumers. Trademarks protect brands.

Is Let’s Get Ready To Rumble Trademarked?

Yes, “Let’s get ready to rumble!” is a registered trademark owned by Ready to Rumble LLC. The trademark is associated with the famous boxing announcer Michael Buffer, who started using the phrase in 1984 and obtained the federal trademark in the early 1990s. Since securing the trademark, Buffer has earned over $400 million from its use, selling the rights to use the line in various products, including video games, TV shows, movies, and merchandise.

Related: Guide to Famous Trademarks

When Was Let’s Get Ready To Rumble Trademarked?

The phrase “Let’s get ready to rumble!” was trademarked by Michael Buffer in 1992. He first started using the catchphrase in 1984.  The trademark was issued in 1995 and lists the word mark “Let’s get ready to rumble” as a protected phrase owned by Ready to Rumble LLC.

Who Owns the Trademark for Let’s Get Ready To Rumble?

The trademark for the phrase “Let’s Get Ready To Rumble” is owned by Ready to Rumble, Inc., which is a corporation formed by the famous boxing announcer Michael Buffer. Buffer first started using the phrase in 1984 and obtained a federal trademark for it in 1992. Since then, he has generated over $400 million in revenue from selling the rights to use the phrase in various licensing deals, including video games, TV shows, movies, and merchandise. Ready to Rumble, Inc. is responsible for protecting and enforcing the trademark, ensuring that others do not use the phrase without permission.

U.S. Trademark Registration No. 1,905,876 for LET’S GET READY TO RUMBLE

How Much Is the Let’s Get Ready To Rumble Trademark Worth?

The “Let’s Get Ready to Rumble” trademark is worth a significant amount of money, with estimates ranging from $400 million to $500 million. Michael Buffer, the famous ring announcer who created the catchphrase, has generated this revenue by licensing the rights to use the phrase in various forms of media, including music, video games, movies, TV shows, and merchandise. Buffer obtained the federal trademark for the phrase in 1992, meaning anyone who wants to use it must pay him. He has been vigilant about protecting his trademark and has been involved in legal battles over its unauthorized use.

Stop Worrying About Your Trademark

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New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

Timeline of the Let’s Get Ready To Rumble Trademarks

The catchphrase “Let’s get ready to rumble!” was popularized by Michael Buffer, a world-renowned boxing and wrestling ring announcer. Here is the history behind the catchphrase:

1984: Buffer was hired to announce a match between Roberto Duran and Thomas Hearns, where he first used the catchphrase inspired by a line from a song by rap group UTFO, which he had heard on the radio.

1992: Buffer decided to trademark the phrase and formed a corporation named Ready to Rumble LLC, as he started hearing the phrase being used outside the ring and realized its potential as intellectual property.

1995: The trademark for the phrase “Let’s get ready to rumble” was issued, listing Ready to Rumble LLC as the owner of the protected phrase.

$400 million: Since securing the trademark in 1992, Buffer has reportedly earned over $400 million from the use of his catchphrase through licensing deals, including video games, TV shows, movies, and merchandise.

Variations: Over the years, Buffer has also used variations of the catchphrase, such as “Let’s get ready to shuffle up and deal” for the 2008 World Series of Poker finals.

III. Pop Culture Fame

Popularity in the Media

It’s not just boxing fans who love the catchphrase. Over the years, “Let’s Get Ready to Rumble” became a pop culture phenomenon, featured in movies, TV shows, and even political rallies. Many celebrities and athletes, such as Michael Jordan and Hulk Hogan, have used the phrase to fire up their fans. In fact, the phrase has become so popular that Michael Buffer has trademarked it, making him a fortune. He has also lent his voice and catchphrase to video games, commercials, and other events, reinforcing its place in pop culture.

But what is it about this catchphrase that makes it so effective? According to Buffer, it’s all about the buildup. He intentionally stretches out the intro, drawing the audience in and building anticipation for what’s to come. This creates a sense of excitement and energy that carries over into the event itself.

Plus, the catchphrase has a certain ring to it – it’s catchy, memorable, and easy to say. It’s the perfect way to get people fired up.

Over the years, celebrities and athletes have used the phrase to excite their fans in different settings. The phrase has been used in entertainment events such as the Grammy Awards and Super Bowl halftime shows. It’s also been featured in movies, video games, and even commercials.

IV. From Catchphrase to Business

Michael Buffer has turned his famous catchphrase into a multimillion-dollar empire by using trademarks. Here’s how.

In 1992, Michael Buffer made a game-changing decision that is a valuable lesson for business owners today. After observing that his catchphrase, “Let’s get ready to rumble,” was gaining popularity far and wide, Buffer realized it was crucial to protect it. Consequently, he took the essential step of trademarking the phrase, a move that would help him secure his intellectual property and lead to the formation of his company, Ready to Rumble LLC.

In a 2009 ABC News interview, Buffer recounted the moment that led to this pivotal decision: “I realized it was popping up everywhere… And they were, like, using my line. And I checked with attorneys and found out that this could be considered what they call intellectual property.”

V. Final Thoughts

One key aspect of Buffer’s success that business owners should take note of is his decision to trademark his iconic phrase “Let’s get ready to rumble!®”. By doing so, he has protected his work and built a sustainable brand around his voice and unique catchphrase.

Buffer’s experience highlights a crucial takeaway for business owners: trademarking a phrase is the best way to protect it and secure your intellectual property. So, if you have a unique and catchy phrase associated with your brand, consider following Buffer’s footsteps and take the necessary steps to protect it.

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The Metallica Logo: A COMPLETE Guide

Metallica has strategically leveraged trademarks over the years and built an impressive trademark portfolio.

Metallica Logo Guide

   By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to the trademarks for the METALLICA LOGO.  

Since 1981, the legendary heavy metal band Metallica has been creating iconic music that continues to be loved around the world. While many people may know them for their music, few know that Metallica owns many trademark registrations for a variety of trademarks, including its iconic logo.

If you want to know about the METALLICA LOGO and Metallica’s efforts to trademark it, then read on.  This guide is for you.

Let’s jump in!

CONTENTS

History of the METALLICA LOGO

The Metallica logo was created by James Hetfield, the lead singer and guitarist of the band. It appeared on the cover of the band’s debut studio album, Kill ‘Em All, released in 1983. Since then, it has become one of music’s most recognizable and iconic logos. The Metallica logo has been featured on countless products, such as t-shirts, stickers, and even tattoos.

KIll Em All Album Cover

When Did Metallica Start Using the METALLICA LOGO?

According to legal filings submitted to the U.S. Patent and Trademark Office, Metallica started using its iconic METALLICA LOGO in 1982.

Is the METALLICA LOGO Trademarked?

Yes, the Metallica logo is trademarked. Metallica trademarked its logo in 1994 and currently owns more than 15 trademark registrations for its logo.

U.S. Trademark Registration No. 1,923,477 for the METALLICA LOGO

When was the METALLICA LOGO Trademarked?

Metallica filed its first trademark applications for the METALLICA LOGO in 1993. The applications were granted by the U.S. Patent and Trademark Office, and they are now registered.

What Do the METALLICA LOGO Trademarks Cover?

The METALLICA LOGO trademark registrations cover:

  • Pre-recorded video and audio cassettes, and a series of pre-recorded phonograph records and compact discs featuring musical performances (Class 009)
  • Guitar picks; drum sticks (Class 015)
  • Clothing, namely, T-shirts, hooded shirts, crew shirts, ponchos, headwear, and baseball caps (Class 025)
  • Entertainment services, namely live musical performances (Class 041)
Ride the Lightening Album Cover
Master of Puppets Album Cover
and Justice for All Album Cover

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Enforcement – Flex your trademark rights. Stop copycats.

Is the METALLICA LOGO Copyrighted?

No. The METALLICA LOGO is not copyrighted because it is a brand. Logos, including the logos of bands like Metallica, are eligible for trademark protection.

Copyrights protect creative works, such as music, songs, lyrics, and album covers.  Copyrights do not protect names or logos.

Related: Trademarks vs. Copyrights

How Metallica Uses Their Trademarks

Metallica uses its trademarks to protect and promote their name and music. For example, it uses them on promotional material like t-shirts, hats, and mugs. They also use them to pursue copyright infringement cases against those who try to make money off of their music or name without proper authorization.

Metallica Logo Game
Mug with Metallica Logo

How Metallica’s Trademarks Have Grown Over Time

As Metallica has grown in popularity over the years, so has its trademark portfolio. In addition to registering trademarks related to their music, the band have also registered marks for the names of their fan club (“Met Club”), as well as several slogans such as “The Memory Remains” and “Wherever I May Roam.” It even owns trademarks related to charitable organizations that they support!

How Metallica’s Trademarks Help Fans

By registering trademarks in association with their music and image, Metallica protects itself from those who would try to take advantage of their success without proper authorization. This helps fans by ensuring that they are getting the real deal when it comes to merchandise or other products related to the band. It also helps them avoid any potential legal issues down the road.

Final Thoughts

Metallica’s trademarks are an important part of their success as a band. By registering these marks, they are able to protect themselves from those who would try to take advantage of their name and music without proper authorization. They also use them in promotional material that helps fans show their love for the legendary metal band.

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African American Trademark Serial Number: A Complete Guide

The African American Trademark Serial Number

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to the African American Trademark and the African American trademark serial number.

In this article, we’ll shed light on what trademarks are, the unique features of the African American Trademark, what it covers, and the African American trademark serial number.

So, if you need to learn about the African American trademark serial number and the African American trademark, then this guide is for you.

Let’s get started!

What Is A Trademark?

A trademark serves as an indicator that specific goods or services are associated with a particular company. In essence, it’s a brand’s way of claiming its identity. Common forms of trademarks include names, phrases, and logos. Trademarks help protect a brand’s integrity and reputation in the marketplace.

A trademark is a badge of origin.

What Is The African American Trademark?

The African American trademark is a registered trademark for this logo:

The African American trademark logo features a stylized outline of the “African” continent with four horizontal lines defining five horizontal bands or sections, with the word “AMERICAN” forming an arc above the outline and the word “AFRICAN” forming a concentric arc above the word “AMERICAN”.

The African American Trademark Serial Number

86979951. The U.S. Patent and Trademark Office (USPTO) assigned the African American trademark serial number 86979951.

When registering a trademark, the U.S. Patent and Trademark Office (USPTO) assigns a serial number to the application. In this case, the African American Trademark was given the serial number 86979951.

Related: Trademark Serial Number vs Registration Number

When Was The African American Trademark Filed?

December 29, 2014. The African American trademark application was filed with the U.S. Patent and Trademark Office (USPTO) on December 29, 2014.

When Was The African American Trademark Registered?

October 4, 2016. The U.S. Patent and Trademark Office (USPTO) granted the African American trademark on October 4, 2016.

What Does The African American Trademark Cover?

The African American Trademark covers beef, canned vegetables, chicken, and pork. These goods are in International Class 29.

Coverage of the African American Trademark

The scope of the African American Trademark extends to beef, canned vegetables, chicken, and more. As a registered trademark, the owner can take legal action against any infringing use of the trademark.

Who Owns The African American Trademark?

The owner of the African American trademark is African American Inc., a North Carolina-based food and beverage service company.

The owner of the registered trademark assigned African American trademark serial number 86979951 is African American Inc., a North Carolina-based food and beverage service company.

Related: How to trademark a restaurant name

What is African American Inc.?

African American, Inc. is a company that specializes in providing quality food and non-food products to retail merchants and food service institutions across multicultural markets in the United States. Through their Foundation, they create educational, collaborative and funding opportunities with their partners to promote positive social change.

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What is a Trademark: An EASY Guide

Names, logos, and phrases are the most common trademarks. Trademarks protect brands.

What a trademark is and does

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarks.

Have you ever wondered what a trademark is, what it protects, or how it can benefit your business? Do you need to learn what can be a trademark? This blog post answers these questions – and more.

If you need to learn about trademarks, then read on. This guide is for you.

Let’s get started!

CONTENTS

What is a Trademark?

There are many ways to define trademarks. 

A trademark is a sign that distinguishes the goods or services of one company from those of another. A trademark can be a word, phrase, logo, image, or combination. Trademarks protect brands and businesses’ investment in their brands.

Trademarks are distinctive words, names, and signs used to identify and distinguish a company’s products from those of the competition. Trademarks are badges of origin.

A commonly used synonym for a trademark is brand name.  For example, COKE and PEPSI are trademarks (brand names) for soft drinks while FORD and BMW are trademarks for automobiles.

Trademarks are more than just names, however. The most common trademarks are words, logos, and phrases.

A trademark identifies a product from a single source. Customers don’t always need to know the name of the source, but they can know that products with the brand come from a single source.  

Trademarks represent and protect brands and are often indicated by the trademark symbols TM, SM, and ®️.

LEARN MORE: An Easy Guide to Trademark Symbols

What is a Registered Trademark?

A registered trademark is an enhanced trademark that has been certified by the U.S. government and, comes with official legal ownership, nationwide legal rights, and prevents anyone else from registering anything even similar for your industry.

When you protect a trademark, you protect the brand that goes with it, along with all of the hard work and investment that you put into your brand. The very best way to protect a brand is with a registered trademark.

The United States Patent and Trademark Office (or “USPTO”) is the federal agency that registers trademarks.

Owners of registered trademarks are legally allowed to use the “circle r” or “®” trademark symbol.

Trademarks can last indefinitely so long as they are renewed on time.

How Do You Register a Trademark?

To register your trademark, you’ll need to file an application with the USPTO – the federal agency responsible for trademark registration. While the process can be time-consuming and may require expert guidance, it’s a crucial step in securing your brand’s identity and ensuring its success.

What Does a Trademark Do?

A trademark identifies the source of products and services, tells customers which products or services come from your business, and differentiates them from the competition. Trademarks are badges of origin and represent and protect brands. 

Trademarks represent your brand and also protect it while helping maintain the integrity of your hard work and investment.

The Power of Trademarks

The strength of a trademark is its ability to:

• Identify the source of your products or services, communicating a sense of trust and dependability to your customers

• Establish a strong connection between your brand and the products or services you offer, enabling customers to recognize and choose your business over competitors

• Provide legal protection by discouraging competitor attempts to use similar names, logos, or designs that could potentially confuse customers or tarnish your brand image

What Can You Trademark?

Every element of your brand can be a trademark. The possibilities are almost limitless. The four most common types of marks are:

  • Names: usually your company name
  • Logos: your company logo or other graphic used to brand your business
  • Slogans: the catchphrase used to promote your business
  • Product Names: the unique name of your product

In most cases, brand names and logos are the cornerstones of most brands.

LEARN MORE: Guide to what can (and can’t) be trademarked

Other examples can include:

  • Clothing Brands
  • Company Names
  • Podcast Names
  • Blog Names
  • Band Names
  • Product Shapes
  • Webinar Names
  • YouTube Channels

Stop Worrying About Your Trademark

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New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

What Can’t Be Trademarked

Already in use or too similar: If a mark is already in use or has a striking resemblance to an existing mark, it cannot be trademarked.

Generic descriptive words: You cannot trademark generic terms, as they cannot be exclusively linked to your brand or product.

Commonly used phrases or messages: Everyday phrases do not qualify for trademark protection. For example, you cannot trademark “Happy Birthday.”

Direct religious quotes and passages: Using sacred words or direct quotes from religious texts is forbidden when it comes to trademark protection.

Requirements for Trademark

getting your Federal trademark comes down to meeting the same four trademark requirement

  1. No conflicts with other trademarks
  2. Trademark distinctiveness
  3. Use in commerce
  4. The capability to be a source identifier

LEARN MORE: Guide to Trademark Requirements

Why You Want a Registered Trademark for Your Brand

The answer is simple. A registered trademark is the ultimate protection for any brand. There is no greater protection. That makes a registered trademark the best insurance against having to rebrand.

Here are just some of the reasons why:

Confidence. A registered trademark is an official confirmation that you own your trademark. Your brand will be yours as long as you use it.

Exclusivity.  A registered trademark will prevent anyone else from registering it (or anything similar) in your industry. The USPTO is required to reject all future applications.

Legal Protections. A registered trademark comes with the immediate, exclusive, and nationwide right to use your mark in your industry with the backing of Federal courts to protect it.

Online Protections. A Federal trademark gives you enhanced protection for domain names and on social media platforms, along with access to Amazon’s brand registry.

Credibility. Only a Federal registration gives you the legal right to use the ® symbol, an attention grabber that tells the world that you take your business and brand. seriously.

They also:

  • make foreign registrations possible
  • enable counterfeit protection by Homeland Security at the border
  • can continue indefinitely

We make trademarks easy!

How Long Does It Take to Get a Federal Trademark?

The trademarking process takes about 14 months in most cases.

Remember: Registering your trademark is a complex procedure that involves your application moving through various stages. It is a Federal legal matter, and there are many factors that affect how long it takes to register a trademark. In fact, there’s no guarantee your trademark will ever register.  This is why the U.S. Patent and Trademark Office recommends that applicants work with a trademark attorney.

According to the Wall Street Journal,  you’ll increase your chances of success by up to 50% compared to applications not filed by a trademark lawyer.

Why You Should Work With A Trademark Lawyer

A lot of legal strategy goes into a successful Federal trademark application. An experienced trademark attorney can help save you time, money, and headaches as you navigate the process.

Here are a few of the ways:

1. The USPTO will not give you legal advice and cannot give you a break. If you file on your own, you’re really on your own. The USPTO cannot give you legal advice and can’t bend the rules for you.

2. Over 80% of all applications require a legal response. Most applications are initially denied because of all of the legal and procedural requirements. This often gets unrepresented applicants into trouble.

3. You’ll get legal and strategic advice about your trademark, your brand, and the best ways to protect them. We can help make sure that your mark is legally protectable, that your application is complete and accurate, and help ensure that you apply for the protection you need.

4. The U.S. Patent and Trademark Office strongly recommends it

USPTO Recommends Working With an Trademark Attorney

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Who Owns A Trademark: An EASY Guide

Every trademark application MUST name the correct owner and the USPTO severely limits correction of mistakes in ownership.

Who Owns A Trademark

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademark ownership.

Trademark ownership is critical to securing and maintaining trademark rights. If you get ownership wrong, you can lose your trademark. Ownership matters.

If you need to learn who owns a trademark, then read on. This guide is for you.

Let’s jump in!

CONTENTS

What Is A Trademark?

A trademark is a distinctive symbol, design, word, or phrase that that sets your products or services apart from those offered by other businesses. A trademark is your brand’s unique identifier, making it easily recognizable to your customers.

Who Can Own A Trademark?

Trademark owners come in many forms. People, organizations, and businesses can own a trademark. Some examples of potential trademark owners include:

• Individuals

• Partnerships

• S-Corporations

• C-Corporations

• Limited liability companies (LLCs)

• Sole proprietorships

 Clubs

• Trusts

• Non-profits

Trademarks can be owned by individuals, a partnership, an organization (such as charities), and businesses (such as corporations or limited liability companies). In fact, corporations and LLCs are some of the most common trademark owners.

The world of trademarks is vast and diverse – people, organizations, and businesses can all stake their claim to a trademark.

Can A Trademark Have Two Owners?

Yes, a trademark can have two owners (or more) when all of the owners jointly control the nature and quality of the goods or services offered under the mark (see below).

Who Should Own A Trademark?

A trademark owner should be the party (person, business, organization) that uses the mark and controls the nature and quality of the goods and services offered under the mark.

A trademark owner should be the party that applies the mark to their goods, uses it with their services, and controls the nature and quality of the products and services offered under the mark.

Always remember – the party who controls the nature and quality of the goods and services used in connection with the brand should be the trademark owner.

What Is Trademark Use?

What do we mean by “uses the mark”? Simply put, this refers to applying the mark to the goods they produce or using it in the sale or advertising of the services they perform.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

Who Owns A Trademark?

A trademark is owned by the person, organization, or business that uses the mark to brand their goods or services and controls the nature and quality of the goods and services. The person or entity that uses a trademark and controls the quality of the goods or services under the mark owns it.

What Does It Mean To Be A Trademark Owner?

Being a trademark owner means that a party gets the exclusive right to use the mark in their industry and the right to stop others from using confusingly similar marks. Also, a trademark owner is the party responsible for controlling the nature and quality of the goods and/or services offered under the mark.

Being a trademark owner comes with unique rights and responsibilities. Owning a trademark grants you the exclusive right to use the mark in your industry, enabling you to differentiate your products or services from others. Furthermore, as a trademark owner, you hold the power to prevent others from using misleadingly similar marks that could harm your brand.

On the flip side, you are also responsible for controlling the nature and quality of the goods and services offered under the mark. This ensures that your brand maintains a consistent level of standard that consumers can rely on.

Why Is Trademark Ownership Important?

A trademark owner can sue for trademark infringement. Also, the trademark owner is responsible for using the trademark correctly to ensure that the mark stays enforceable. This is because the trademark owner is the party responsible for using the mark and ensuring the quality of the products and services they provide.

Why Does Accurate Trademark Ownership Matter?

A trademark application must identify the correct owner – by law. When an application misidentifies the owner, it must be rejected as a matter of law.

Example: The trademark owner is a corporation or an LLC. The trademark application must be filed in the name of the business – not the owner or corporate officer.

Also, the rules of the USPTO (“the United States Patent and Trademark Office”) prohibit corrections that change the owner.

Mistakes about ownership are some of the most common mistakes that do-it-yourself applicants make when trying to register their trademarks.  This mistake can lead to the invalidation of a trademark application.

We make trademarks easy!

How to Find Out Who Owns A Trademark

Conduct a trademark lookup to find out who owns a trademark. This lookup, which is sometimes called a “trademark search,” can be conducted online for free on the USPTO’s website at www.uspto.gov.

Learn More: How to Do a Trademark Lookup – The COMPLETE Guide

Why Should You Own a Trademark?

As a business owner, you should be the one to own the trademark for your goods or services. By owning the trademark, you have the exclusive right to use it within your industry, and you can protect your brand by preventing others from using marks that are too similar. So, no one can register your mark for their business and take it from you!

Take the Next Step and Legally 

Own Your Trademark!

Schedule a Free Strategy Call

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How To Buy A Trademark: An EASY Guide

You can buy trademarks and buying a trademark can often be a savvy business move – if you understand the legalities.

Guide to Buying Trademarks

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to buying a trademark.

Buying an existing trademark can be the best and fastest route to trademark success. But buying a trademark requires more than the ability to identify a good deal. The process of buying a trademark can be a bit tricky and requires specific information about trademarks and the U.S. Patent and Trademark Office.

If you need to know about buying a trademark, then read on. This guide is for you.

Let’s jump in!

CONTENTS

I. Can You Buy A Trademark?

Yes, you can buy a trademark. The law treats trademarks like any other physical property; they can be bought, sold, licensed, and even mortgaged! So, trademarks can be bought and sold, like a car, jewelry, and real estate. 

The answer to can you buy a trademark is yes!

II. How To Buy A Trademark

There are two options to buy a trademark. You can buy all or part of it.

Option 1. Assignment: A trademark assignment (see below) transfers the entire ownership of a trademark. This could happen while your trademark application is examined at the U.S. Patent and Trademark Office or after your trademark has been registered.

Option 2. Licensing: A trademark license (see below) “buys” a right to use a trademark by temporarily transferring some or all of the rights associated with a trademark. The ownership of the trademark, however, does not change.  

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III. What Is A Trademark Assignment?

A trademark assignment is a legal document that transfers the ownership of a trademark from one party to another. This type of transfer can occur when a trademark owner sells their business, merges with another company, or simply wants to transfer the rights to a trademark to another party.

The assignment document must be in writing and signed by both the assignor (the current trademark owner) and the assignee (the new trademark owner). It should include details about the trademark, such as the registration number, the goods or services associated with the mark, and any licensing agreements that may be in place.

Once the trademark assignment is completed and recorded with the appropriate trademark office, the new owner has all the rights and responsibilities associated with the mark, including the right to prevent others from using the mark without permission.

It is important to note that a trademark assignment does not affect any existing contracts or licenses that may be in place for the trademark. These agreements must be reviewed and addressed separately to ensure that the transfer of ownership does not violate any existing legal obligations.

IV. What Is A Trademark License?

A trademark license is a legal agreement between the owner of a trademark (the licensor) and another party (the licensee) that allows the licensee to use the trademark in connection with certain goods or services.

The license will specify the terms and conditions under which the licensee can use the trademark, including the duration of the license, the territory in which the mark can be used, and any quality control standards that must be met.

In exchange for the right to use the trademark, the licensee may pay the licensor a fee or royalties based on sales or other usage metrics.

A trademark license allows the owner of the mark to generate revenue from the licensing of their trademark while still retaining ownership and control over the mark.

It is important to carefully review all terms and conditions of a trademark license agreement before signing to ensure that both parties fully understand their rights and obligations.

®  Want help with your trademark?  

V. Buying a Trademark: Step-by-Step

These are the steps to take when buying a trademark to ensure a successful transaction:

Step 1: Do a trademark search.

Step 2: Negotiate a purchase agreement.

Step 3: Update the trademark registration at the USPTO.

Step 4: Enforce the trademark.

 

STEP 1: DO A TRADEMARK SEARCH

Before you proceed with buying a trademark, it’s important to conduct a search to make sure the trademark you want to purchase is available. The United States Patent and Trademark Office (USPTO) keeps a record of the ownership of all registered trademarks on its website.

STEP 2: NEGOTIATE A PURCHASE AGREEMENT

Once you’ve confirmed that the trademark is available for purchase, the next step is to negotiate a purchase agreement with the current owner. This agreement will include the terms and conditions of the sale, such as the purchase price, payment terms, transfer of ownership, and any warranties or representations. It’s important to have an experienced attorney review the agreement to ensure that it protects your interests.

STEP 3: UPDATE THE TRADEMARK REGISTRATION AT THE USPTO

After the purchase agreement has been signed and the purchase price has been paid, the current owner will need to transfer ownership of the trademark to you. This involves filing a trademark assignment or license with the USPTO. This document transfers ownership of the trademark from the current owner to you.

STEP 4: ENFORCE THE TRADEMARK

After buying a trademark, it’s important to enforce it by protecting it from infringement or unauthorized use by others. You can do this by monitoring the marketplace for any potential infringement, sending cease and desist letters, and taking legal action if necessary. It’s important to work with an experienced attorney to ensure that your trademark is adequately protected.

VI. Do You Need A Trademark Lawyer To Buy A Trademark?

Most authorities agree that working with a trademark lawyer is a good idea when purchasing a trademark. A trademark lawyer can provide guidance on the legal implications of the purchase.

In addition, a trademark lawyer can provide guidance on negotiating and drafting a purchase agreement that protects your rights and interests and ensures that the transfer of ownership is properly documented and recorded with the U.S. Patent and Trademark Office.

Hiring an attorney to complete the trademark assignment is a wise decision, as there can be a lot of “magic language” or specific legal wording that goes into the agreement. A professional will help ensure the process is done correctly and with your best interests in mind. Overall, working with a trademark lawyer can help ensure that the purchase of a trademark goes smoothly and that your investment is protected.

Do You Want To Buy A Trademark?

If you are serious about buying a trademark, you should consider working with an experienced trademark lawyer.

A trademark lawyer can help you:

  • decide whether to assign or license the trademark,
  • confirm the seller’s ownership,
  • understand what you’re buying,
  • prepare the appropriate legal documents to facilitate the proper transfer of rights,
  • record your purchase with the U.S. Patent and Trademark Office.

Take the Next Step – Buy That Trademark

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An EASY Guide to Trade Dress

When customers recognize the look and feel of your product (or service) and associate it with you, you may have a protectable Trade Dress, which can be a powerful trademark.

Trade Dress guide

By Michael Kondoudis, Small Business Trademark Attorney

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This is our EASY guide to Trade Dress.

Brand recognition is important. Businesses need their customers to be able to easily identify their products and services. Using distinctive trademarks (names + logos) is one way to build recognition. Another way is to use trade dress.  

Trade dress is often overlooked, but it can be a powerful tool to help you distinguish your products and services from the competition.

In this blog post, we’ll dive into the ins and outs of trade dress and explain why it’s crucial for business owners to understand this trademark law concept.

Let’s jump in!

CONTENTS

I. ABOUT TRADE DRESS

What is Trade Dress?

Trade dress refers to the overall appearance or design of a product or service that distinguishes it from others in the market. It encompasses a variety of elements, including packaging and labeling, product configuration, flavor, color, and even the design of a restaurant or retail store. Essentially, trade dress helps identify a brand and creates a unique image in the minds of consumers. By protecting these elements, companies can prevent others from unfairly capitalizing on their intellectual property and ensure that their brand and reputation remain intact.

Trade dress helps customers know which company is the source of a product or service from the look and feel rather than a name or logo.

The features and characteristics of a product or its packaging, such as design, shape, colors, and patterns, can be trade dress. The ambiance and décor in which a service is rendered can be trade dress. These elements combine to form a distinctive look or feel that distinguishes a product and represents a brand.

Companies can register their trade dress with the US Patent and Trademark Office to obtain legal protection and prevent others from using confusingly similar trade dress in the marketplace.

Trade dress is a type of trademark protection.

Definition of Trade Dress

Trade dress refers to the visual appearance and overall image of a product or service, including its packaging, design, graphics, colors, shape, and other visual elements. It is a type of intellectual property that is protected under trademark law and is used to identify and distinguish the product or service from those of other companies. The purpose of trade dress is to create a unique and recognizable brand identity that helps consumers associate the product or service with a particular company or source.

Coke Bottle Trade Dress Registration
U.S. Trademark Registration No. 696,147

Trade dress is a legal protection for the way a product looks and feels or the ambiance or décor in which a service is rendered – when it distinguishes the product or service from the competition.

The Purpose of Trade Dress

Trade dress identifies and distinguishes the source of a product or service through “look and feel” rather than trademarks (names + logos).

Trade dress prevents competitors from copying a company’s unique branding elements beyond names and logos.

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New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

How Is Trade Dress Different From Trademarks?

Trade dress protects the look and feel of a product or service, while trademarks protect the names, words, logos, and phrases used to brand a product or service.  The difference between trade dress and trademarks is what they protect. 

The main difference between trade dress and trademarks is that trade dress protects the overall look and feel of your product, while trademarks protect specific words, logos, or other symbols associated with your brand.

Trade dress and trademarks both protect brands, just in different ways.

II. WHAT QUALIFIES AS TRADE DRESS

What Can Be Trade Dress?

Features that contribute to the commercial look and feel of a product, its packaging, or a service can be trade dress, including:

1. Shape: The shape of your product or packaging can significantly impact its overall appearance and make it more distinguishable.

2. Color: A distinct color scheme can help your product stand out on store shelves and create a lasting impression on your customers.

3. Design: A unique and eye-catching design can enhance your product’s appeal and contribute to its recognizability.

4. Size: Playing with different product or packaging sizes can set your offering apart from other similar products in the market.

5. Configuration: How the different components of your product are arranged can contribute to its distinctive visual appearance.

6. Packaging: Creative and unique packaging can catch consumers’ attention and help reinforce your brand identity.

7. Decor: Distinctive décor that results in an atmosphere that customers associate with a business or service and help reinforce a brand identity. Example: The atmosphere of an Apple® store or a Taco Bell® restaurant.

What Is Not Trade Dress?

Products and Services

Trade dress does not protect a product or service. Trade dress protects the distinctive appearance of the product or service that represents your brand.   

Functional Elements

The trade dress cannot perform any function that is essential to the use of a product or to render a service. Trade dress protects the aesthetic aspects that set a product or service apart from the competition. The trade dress must be nonfunctional.

Common Elements

Trade dress must be distinctive so that it identifies a brand. Consumers do not recognize common elements (those shared between competitors in an industry) as representing a brand. Consumers see the trade dress and automatically associate it with a particular company or product.

III. REQUIREMENTS FOR TRADE DRESS

Trade Dress Requirements

Trade dress is protectable when it is (1) non-functional and (2) distinctive. Essentially, trade dress should be seen as a way to establish a brand identity or image, rather than as a functional aspect of a product or service.

Non-Functional

This means that the design or shape of a product cannot serve a practical, functional, or utilitarian purpose. Instead, it must be primarily for aesthetic or decorative purposes.

Distinctive

This means that the design, shape or décor is not ordinary. Instead, it must be recognizable by consumers as a reflection of a company brand and as an indication that a product or service comes from a particular source.

 

To be protectable, trade dress must be (1) non-functional and (2) distinctive.

IV. EXAMPLES OF TRADE DRESS

Trade Dress Examples

Some examples of trade dress are product packaging, product design configurations, product color, a restaurant’s décor, and the design of a retail store.

Trade Dress Examples In The Marketplace

The distinctive red and white label on a bottle of Coca-Cola (product packaging)

The unique shape and design of a Porsche 911 sports car (product design configuration)

The distinctive pink color or Owens Corning fiberglass insulation (product color)

The trade dress of a retail store, such as the distinctive decor, signage, and layout of a Starbucks coffee shop (restaurant decor)

The unique design and layout of an Apple Store, including the glass storefront and minimalist aesthetic (store design)

®  Want to protect your Trade Dress?

Examples of Trade Dress

The following examples of protected trade dress:

The Coca-Cola Curvy Bottle

The Coca-Cola bottle has a distinctive and recognizable contour shape.

Coke Bottle

Apple Stores

Apple stores are known for their class storefronts and minimalist aethetic, both of which reflect the Apple brand.

Apple Store

Hershey Chocolate Bars

Hershey’s chocolate bars are packaged in foil wrappers with brown outer wrappings.

Hershey Bar

John Deere Tractors 

John Deere tractors are painted in a distinctive and recognizable green and yellow combination.

John Deere Tractor

Chevrolet Corvettes

The unique shape and design of Chevrolet’s Corvette sports car is both distinctive and recognizable.

Chevy Corvette

What Is The Most Famous Trade Dress?

The Coca-Cola bottle’s shape is widely considered one of the most famous trade dress marks worldwide. This iconic shape has been a federally registered trademark for over four decades, since 1977, to be exact. The history of the Coca-Cola bottle dates back even further, to 1916, when it was first used. This trademark’s design is easily recognizable, and it has become an incredible symbol of the brand’s identity, cementing its place in pop culture and history.

Coca Cola Bottle

V. CONDENSED SUMMARY

Trade dress is a type of trademark that can protect the overall appearance of a product or company. It can include features like color, shape, design, packaging, and more. The purpose of trade dress is to help consumers distinguish one product from another and to identify the source of the product. In order for trade dress to be eligible for protection, it must be nonfunctional and have acquired a secondary meaning among consumers. Keep reading to learn more about trade dress and how it can be used to protect your business. 

Trade dress is a type of trademark that can be used to protect the overall appearance of a product or company. It can include features like color, shape, design, packaging, and more. The purpose of trade dress is to help consumers distinguish one product from another and to identify the source of the product. In order for trade dress to be eligible for protection, it must be nonfunctional and have acquired a secondary meaning among consumers.

Like other trademarks, trade dress is protected by state and federal law. trade dress can also be registered with the US Patent and Trademark Office (USPTO). Registering your trade dress gives you additional legal rights and makes it easier to enforce your trademark rights if someone infringes on them.  If you have not yet registered your trade dress, you can still assert common law rights in it. However, registering your trademark makes it easier to prove infringement in court and can give you greater damages if you win your case.

If someone infringes on your registered or unregistered trade dress rights, you may be able to sue them for trademark infringement. To win an infringement lawsuit, you will need to show that (1) you have valid trade dress rights in the product or service; (2) the defendant’s use of the trade dress is likely to cause consumer confusion; and (3) you have been harmed as a result of the infringement. If you are successful in your lawsuit, you may be entitled to damages including profits lost due to the infringement, punitive damages, attorneys’ fees, and an injunction against further infringement.

VI. DO YOU NEED A LAWYER?

Do You Have to Use a Trademark Attorney to Protect Trade Dress?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney.

Why Should You Work With a Trademark Attorney? 

Filing a trademark application with the USPTO (U.S. Patent and Trademark Office) starts a federal legal process that can get complicated, expensive and confusing. Working with a trademark attorney can make the process go faster, smoother, and result in more protection. Remember, the trademarking process is much more than just filling out online forms (that’s the easiest part of the process). The USPTO will only grant your application after meeting all of its many legal and procedural requirements.

USPTO_Warning

Also, studies show that working with a trademark attorney can increase your chances of successfully trademarking your brand by over 50%.

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 Your Trade Dress

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How to Trademark a Book Title: An EASY Guide

Book Titles can often qualify for trademark protection.  Also, trademarking a book title is the best way to protect it. So, it is important to know when and how you can trademark a book title.

How to trademark book titles

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking a book title.

in this guide, we explore protecting book titles with trademarks, spell out the requirements to trademark a book title, and explain how to trademark a book title.

In fact, this is the information that we use to register book title trademarks for our clients.

So, if you’re ready to learn about protecting book titles with trademarks, then read on. This guide is for you.

Let’s dive in!

Trademark Reg. No. 6,725,825 for the book series NAPPTURLY CUTE CHRONICLES secured by The Law Office of Michael E. Kondoudis

Trademark Reg. No. 6,725,825 secured by The Law Office of Michael E. Kondoudis

I. PROTECTING BOOK TITLES

Can You Legally Protect a Book Title?

Yes, in many circumstances, you can legally protect a book title.  For example, when the title is used for a series of books, it can qualify for federal trademark registration.

Here is the rule:

While an individual book title cannot be trademarked, the name of a series of books can be trademarked. This is because the name of a series of books is considered a brand. So, while you cannot trademark the name of a single book, you can trademark a series of books.

This means that the name of a specific series can be protected under trademark law, but not just one book title on its own.

The Difference Between Trademarking a Single Book and a Series?

The main difference between trademarking a book title and a book series is that while you can’t trademark individual book titles, you can trademark the title for a series of books since it serves the role of a brand. Here are some key points to understand the difference:

 

Trademarking a Book Title

  • Generally, you cannot trademark the name of a stand-alone book title.
  • The USPTO does not consider a the title of a single book title to be a brand.
  • To qualify for a trademark, a book title must be distinctive, unique, and not too similar to an existing trademark.

 

Trademarking a Book Series

  • You can trademark the title for a series of books since it serves the role of a brand.
  • A book series is considered a “brand” by the USPTO, and they are more willing to grant trademark rights to a series.
  • To trademark a book series, you must provide evidence that the series is not just a collection of stand-alone books but an underlying brand.
  • The trademark for a book series must be used as a source identifier for the actual series, which can be distinguished from the individual book titles within the series.

In summary, while you can’t trademark individual book titles, you can trademark the title for a series of books since it serves the role of a brand.

Can You Trademark a Book Title?

The answer is YES, in some circumstances. You can trademark a book name, and many names of books are trademarked! Trademarking the title of your book is the most effective way to protect it and the brand identity you’re building. The book name must be part of a series, however.

Titles such as J.K. Rowling’s Harry Potter and C. S. Lewis’ The Chronicles of Narnia have been successfully trademarked. to protect their respective authors’ rights over the books in their respective series. 

How Do I Protect My Book Title?

You protect your book title by trademarking it. Trademarking a book title is the best way to protect it. A trademark will protect your book name throughout the U.S. and ensure that it is exclusively yours to use.

You trademark a book title by submitting an application to the U.S. Patent and Trademark Office (USPTO). To qualify for a U.S. trademark for your book title, you will need to show that no one else has already trademarked it and that it is the title or name of a series of books (see below). The USPTO will not register the title of a single book

Want help with your book trademark?  

What is the Best Way to Protect a Book Title?

The best way to protect a book title is to trademark it. Trademarks protect brands, including the titles of a series of books. Trademarking your book name is the most effective way to protect it because a trademark prevents other authors from using the same or similar name for their books.

Also, trademarking your book title is official confirmation from the U.S. Government that you legally own it and comes with the exclusive right to use it.

II. TRADEMARK A BOOK TITLE

Where Do You Trademark a Book Title?

You trademark a boot title by filing an application with the U.S. Patent and Trademark Office (USPTO). The USPTO is part of the Department of Commerce and it is the federal agency that administers federal trademarks.

When Should You Trademark a Book Title?

Most authorities agree that the best time to start the process of trademarking a book title is BEFORE publication.

The U.S. is one of the few countries that allow you to apply to protect your book titles before you begin using them. Trademarking early is an opportunity to:
   • reserve a book title and avoid having to change your name later
   • confirm that your book title does not infringe on another book series with a registered trademark
   • complete an important branding task before publication.

How Long Does It Take to Trademark a Book Title?

It takes over 12 months to get a book trademark in most cases. The trademarking process for book names is a legal process that takes about a year. The first step is applying to the USPTO, where an examining attorney examines whether your book title name qualifies for registration. Your book title may not qualify if another restaurant is already using it or has registered it. If the application qualifies, it will be “published for opposition” for 30 days to give potential opponents a chance to oppose.

Trademarking a book title is a legal process that usually takes more than 12 months. So, the sooner you start trademarking your book name, the better.

What Are the Requirements to Trademark a Book Title?

While it may come as a surprise, you can’t actually trademark the title of a single book. However, you can indeed trademark the name of a series of books. This is because trademarks serve as identifiers of goods and services, and a book title for a single book doesn’t fulfill that function.

1. Your book title must be unique: To qualify for a U.S. trademark on your book series title, you must confirm that no one else has already trademarked it. You can do this by conducting a thorough search via the U.S. Patent and Trademark Office (USPTO). Learn how to do a trademark lookup here.

2. You must at least plan to use the book title for a series of works: The USPTO won’t register your title if it’s only used as the title of a single creative work. However, if your trademark is the name or title of a series of creative works, it may register. To complete the registration process, you will eventually need to provide evidence that shows the title is being used for a series.

3. You need to submit your application: Once you have determined that your title is original and available, file an application with the USPTO. You will have to provide the necessary information, supporting documents, and pay a fee.

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How Do You Trademark A Book Title?

You trademark the title of a book by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking a book title is a legal process.

Here’s how to start trademarking a book title:

Step 1: Choose a Unique Name
Your book series title should be unique and distinctive to set it apart from others. If your title is too close to another registered trademark, you will not be able to trademark it. Read more about how to pick a strong trademark here.

Step 2: Conduct a Trademark Search
Before applying for a trademark, do your due diligence and check if anyone else has registered or applied to register a similar name and logo. You can conduct a search through the USPTO’s trademark database to avoid any potential conflicts.

Step 3: Gather Required Information and Strategize
Collect all the necessary information, including your book series title, logo, and descriptions of the goods and services you provide. Develop a trademarking strategy that takes into account your target market, budget, and potential challenges. This step will help you streamline the trademarking process and increase the chances of approval.

Step 4: Prepare and File Your Application with the USPTO
Once you have all the required information, prepare your trademark application, and file it with the USPTO (U.S. Patent and Trademark Office). Ensure that the application is filled out correctly and follows the USPTO’s guidelines. You can apply either online or by mail.

Step 5: Navigate the Application Review Process
The USPTO application review process takes several months and requires patience. During this time, the USPTO will examine your application, and if it meets all requirements of the Federal Trademark Statute, it will be granted. However, if the USPTO does not initially grant your application (which happens over 80% of the time), you’ll need to respond to the reasons for the rejection and make necessary adjustments.

Step 6: Use the Correct Trademark Symbol
Once your book series title trademark is registered, don’t forget to use the appropriate trademark symbol (®) on your books, marketing materials, and website. This symbol represents your registered trademark and informs others that the title is legally protected. Read more about trademark symbols here.

The USPTO will grant your application and add your trademark to the list of Federal (registered) trademarks IF your application meets all of the requirements of the Federal Trademark Statute. If the USPTO does not initially grant your application (which happens over 80% of the time), you would need to respond to the reasons for the rejection.

What is the Trademark Class for Books?

The USPTO categorizes all products and services into 45 separate classes. There are two primary classes for books: International Classes 9 and 16. Class 9 is for downloadable books (e.g., kindle), while Class 16 is for paper goods, like printed books. An application to register the title or name of a series of books should be filed in those trademark classes.

The trademark classes for books are International Classes 9 and 16.

III. DO YOU NEED A LAWYER?

Do You Need a Trademark Attorney to Protect a Book Title?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney.

Remember, the trademarking process is much more than just filling out online forms (that’s the easiest part of the process). The USPTO will only grant your application after meeting all of their many legal and procedural requirements.

Why Should You Work With a Trademark Attorney? 

Filing a trademark application with the U.S. Patent and Trademark Office to register your book title starts a legal process that can get complicated, expensive and confusing. Working with a trademark attorney can make the process go smoother, faster, and result in better protection.

Also, studies show that working with a trademark attorney can increase your chances of successfully trademarking your brand by over 50%.

Take the Next Step and Legally 

Own Your Book Title!

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Book Title!

Request a Free Strategy Call

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Trademark Disclaimer Example: A COMPLETE Guide

A Trademark Disclaimer is an important tool to overcome rejections when a portion of a mark does not qualify for trademark protection. 

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to trademark disclaimers.

In this guide you’ll learn:

  • The Basics of Trademark Disclaimer
  • When Trademark Disclaimers are Required
  • The Format for Trademark Disclaimers
  • Trademark Disclaimer Examples

So, if you need to learn about Trademark Disclaimers, this guide is for you.

Let’s dive right in!

What is Trademark?

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods (or services) from those offered by the competition. Trademarks protect brands. Names, words, logos, and phrases are the most common trademarks.

A trademark owner has exclusive rights to use the mark and to prevent competitors from using the mark – or anything confusingly similar.

What Is a Trademark Disclaimer?

Trademark Disclaimer is a statement included in an application or registration that indicates that you do not claim exclusive rights to a portion of your mark. Typically, these unregistrable portions are words that are generic, descriptive, or informational.

A Trademark Disclaimer simply states that you aren’t claiming exclusive rights to use a part of your trademark, usually because that part does not qualify for trademark protection.

A trademark disclaimer is a statement that you put in a trademark application that tells people that you do not claim exclusive rights to a portion of your trademark. Disclaimed portions are usually descriptive, generic, or informational and thus do not qualify for trademark protection.

Stop Worrying About Your Trademark

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New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

What is the Purpose of a Trademark Disclaimer?

A Trademark Disclaimer tells the public what exactly a trademark owner owns and tells competitors what they can and cannot use in their marks. A Trademark Disclaimer also allows the USPTO to register trademarks that include parts that do not qualify for trademark protection.

For example, if your company’s name contains the word “bread” and you sell bread, you must disclaim that word. This tells the public and your competitors that they can use the word “bread” in their trademarks and not get sued for trademark infringement.

When Do You Make a Trademark Disclaimer?

A disclaimer may be included in an application as filed or may be added during the examination of a trademark application, especially to comply with a requirement by the examining attorney.

What is the Format for a Trademark Disclaimer?

A Trademark Disclaimer is a disclaimer of some legal rights. it is an important statement that has a standard format.

 

For Word-Based Trademarks

The typical format for a Trademark Disclaimer for a word-based mark is:

No claim is made to the exclusive right to use “[the disclaimed portion]” apart from the mark as shown.

 

For Design Trademarks

The format for a Trademark Disclaimer in a logo is:

No claim is made to the exclusive right to use the design of “[the disclaimed portion]” apart from the mark as shown.

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Trademark Disclaimer Examples

Trademark Disclaimer Example: General Motors

Trademark Disclaimer Example

General Motors

Trademark Reg. No. 1,223,115 for GENERAL MOTORS includes this Trademark Disclaimer:

No claim is made to the exclusive right to use “Motors” apart from the mark as shown.

Trademark Disclaimer Example: Starbucks Coffee

Trademark Disclaimer Example

Starbucks Coffee

Trademark Reg. No. 2,266,351 for STARBUCK’S COFFEE & Design includes this Trademark Disclaimer:

No claim is made to the exclusive right to use coffee apart from the mark as shown.

Trademark Disclaimer Example: Gold’s Gym

Trademark Disclaimer Example

Gold’s Gym

Trademark Reg. No. 3,316,556 for GOLD’S GYM & Design includes this Trademark Disclaimer:

No claim is made to the exclusive right to use gym apart from the mark as shown.

Trademark Disclaimer Example

To give you a better idea of how trademark disclaimers work, let’s look at an example. Imagine that you own a coffee shop named “BUCKSTAR’S COFFEE.” In that case, the USPTO would require a trademark disclaimer like this:

No claim is made to the exclusive right to use “COFFEE” apart from the mark as shown.

This declaration simply states that you aren’t claiming exclusive rights to the word “coffee” as part of your trademark.

When is a Trademark Disclaimer Required?

According to the USPTO, a Trademark Disclaimer is required when a portion of a trademark does not qualify for registration.  A disclaimer may be necessary in any of the following situations:

  • Merely descriptive: When aspects of the trademark merely describe a product’s feature, ingredient, or function.
  • Laudatory words: When terms are included that claim a superior quality.
  • Generic: When common names or designs of services and goods are present in the trademark.
  • Geographic: When words or designs describe a product or service’s origin.
  • Business type designations: When labels specify a business structure or type.
  • Merely informational: When words provide information about a brand, product, or service.

A Trademark Disclaimer can be submitted with a new trademark application or added during the application review process. 

Can You Disclaimer All of Your Trademark?

No. You may not disclaim the entire mark.

A Trademark Disclaimer allows the USPTO to register a trademark that includes a portion that does not qualify for trademark protection because it is descriptive, generic, or merely informational, for example.

If you disclaim your whole mark, there would be nothing to register.

Frequently Asked Questions

1. What is an example of a trademark disclaimer statement?

A trademark disclaimer statement follows this accepted format:

No claim is made to the exclusive right to use [THE DISCLAIMED WORD] apart from the mark as shown.

So, for the name “Delicious Breads,” the disclaimer would look like this:

No claim is made to the exclusive right to use ‘BREAD’ apart from the mark as shown.

2. What is a disclaimer of words in a trademark?

A trademark disclaimer is a statement that you put in a trademark application that says that you do not claim exclusive rights to a portion of your trademark. Disclaimed portions are usually descriptive, generic, or informational and thus do not qualify for the exclusive rights that come with trademark protection.

3. Does a trademark disclaimer change a trademark?

No, a trademark disclaimer is just a statement added to a trademark registration that an unregistrable portion of the mark is free for others to use. A disclaimer does not remove the unregistrable portion from a mark, affect the appearance of the mark, or alter the way you use it. 

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TRUMP TOO SMALL: An Easy Guide

TRUMP TOO SMALL Trademark and Supreme Court

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to the TRUMP TOO SMALL trademark. If you need to quickly learn the history, issues, and questions raised by this trademark case, read on.  This post is for you.

Let’s jump in!

The Background of TRUMP TOO SMALL

During the 2016 presidential campaign, Donald Trump and his then-rival, Sen. Marco Rubio, engaged in a series of heated exchanges on the campaign trail. Trump often taunted Rubio by calling him “Little Marco,” and in response, Rubio critiqued the size of Trump’s hands at a campaign stop.

In 2018, Steve Elster applied to register the trademark “TRUMP TOO SMALL” with the intention of using it on shirts.

Trump too small shirt

The TRUMP TOO SMALL Trademark Application

The trademark application for TRUMP TOO SMALL was filed with the U.S. Patent and Trademark Office on January 10, 2018.  The trademark application for TRUMP TOO SMALL was assigned serial number 87749230.

The Status of the TRUMP TOO SMALL Trademark

The USPTO (United States Patent and Trademark Office) refused Mr. Elster’s application to register the mark, citing the Federal Trademark Statute. The refusal was primarily based on the fact that Mr. Elster did not obtain written permission from President Trump. Later on, the USPTO also denied the registration based on the grounds that it would falsely suggest a connection with a living individual.

Mr. Elster appealed the rejection to the USPTO’s Trademark Trial and Appeal Board, which ultimately refused registration. An appeals court reversed, holding that

In a surprising turn of events, a Court of Appeals reversed this decision. The Court held that the Trademark Statute’s restrictions unconstitutionally limited Mr. Elster’s free speech rights, especially since the mark contained criticism of a government official or public figure. It also found that the government has no interest in protecting the publicity rights of such a public figure. Thus, the refusal violated the First Amendment, according to the Court of Appeals.

Currently, the application for TRUMP TOO SMALL is suspending pending appeal.

Trademark Registration and the USPTO

The Supreme Court has held that federal registration of a trademark serves to bolter the “rights of exclusion” by giving owners “additional protections against infringers.”

The USPTO (United States Patent and Trademark Office) is the government agency that administers and registers trademarks.

To enjoy the enhanced “rights of exclusion, a person who uses or plans to use a trademark in commerce must apply to register the mark with the USPTO. Once approved, the USPTO issues a certificate of registration “in the name of the United States of America.”

The USPTO can only register trademarks that satisfy the statutory criteria

The Statutory Criteria for Trademark Registration 

 The statutory criteria for trademarks is the Lanham Act (15 U.S.C. § 1052). The Lanham Act is the federal trademark statute of the United States. 

What Does the Lanham Act Say?

The Lanham Act instructs the USPTO to refuse the registration of a mark that consists of or includes the name of a particular – UNLESS that living individual provides their written consent.

The Lanham Act reads as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

*  *  *  *  *

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

*  *  *  *  *

What is the Supreme Court?

The Supreme Court is the highest court of the United States and is responsible for interpreting the Constitution and federal laws. It is established by the U.S. Constitution and consists of nine justices who are appointed by the President and confirmed by the Senate.

The Supreme Court has the power of judicial review, which means it can declare laws or executive actions unconstitutional if they violate the Constitution. The Court hears cases on appeal from lower federal courts and state courts, as well as cases in which a state is a party.

The decisions of the Supreme Court have far-reaching impacts on American law and society, and often set precedents that shape future legal disputes. The Court’s rulings are considered final and cannot be appealed except in rare cases.

Why is the Supreme Court Hearing This Case?

The U.S. Supreme Court decided to review this case for several reasons.

1. The Court of Appeals decision in favor of Mr. Elster, in essence, invalidated parts of a 75-year-old federal statute. The Supreme Court regularly reviews lower court decisions that hold federal statutes invalid, especially on First Amendment Grounds.

2. The case presents an opportunity for the Court to resolve the question of whether the Lanham Act, the United States trademark statute, is a restriction on free speech or a condition on a government benefit (the benefits of registration).

3. The Court of Appeals was probably wrong. The refusal to register the TRUMP TOO SMALL trademark does not prevent Mr. Elster from any speech. He remains free to use the mark and speak his mind. He just cannot enjoy the benefits that come with federal registration of his mark.  

When Will The Supreme Court Hear This Case?

The Supreme Court will hear this case during the next term 2023-24 and decide it next year.