by Kim Grimsley | Oct 1, 2020 | Firm Matters, Office, Office News
Oliver & Grimsley’s own Mike Oliver has been named to the 2021 Best Lawyers® list for his work in Copyright Law, Information Technology Law, Trade Secrets Law and Trademark Law. Mike has been on this list for 15 years (since 2006). Mike was also named Copyright Law Lawyer of the Year in 2020 for Baltimore (the third time). He has previously been named Best Lawyers® “Lawyer of the Year” in Baltimore for Information Technology Law in 2016, Trademark Law in 2015 and 2012, and Intellectual Property Law in 2011. Only one lawyer is chosen a year for each practice area and location and is generally chosen by who receives the highest overall peer-feedback.
Mike Oliver has been practicing law for over thirty years and his wealth of experience led him to opening his own firm, alongside partner Kim Grimsley, in 2013.
Everyone at Oliver & Grimsley would like to congratulate Mike on his achievement and look forward to his continuing to excel in the future
by Kim Grimsley | Apr 21, 2020 | In the News, Intellectual Property, Trademarks
Have you been sitting in your house, properly adhering to stay-at-home standards, and thinking to yourself, “I can’t wait to get some sweet coronavirus merch?” That is at least what recent trademark filers have assumed you were thinking, anyway. Since the beginning of 2020, fifty-three (53) trademark applications have been filed with the United States Patent and Trademark Office (PTO) containing the word “CORONAVIRUS”, and with one hundred seventy-six (176) more being filed containing “COVID.”
The majority of the trademark applications being filed are for printed materials like t-shirts or bumper stickers. “I SURVIVED THE CORONOAVIRUS,” “I SURVIVED COVID-19,” “CATS AGAINST COVID-19,” and “CORONAVIRUS FREE” are just a few examples. A quick search on the website Redbubble, a place where artists upload their designs to be printed on various items and sold, shows a litany of products already on the market.
While it is understandable that budding entrepreneurs may be looking to the current pandemic as a way to make a profit during this difficult economic time and achieve something positive, not every use of “CORONAVIRUS” or “COVID-19” is entitled to federal trademark protection. So, it seems like a good time to take a brief moment to highlight several of the issues you should consider as you seek federal trademark protection, coronavirus-related or otherwise.
First: what is a trademark? It is not just a clever saying – although that could be the beginning concept– but more is needed to establish trademark rights A trademark is a word, phrase, design or combination of both that is used in connection with goods or services and identifies and distinguishes the source of the good or services of one party from those of others. Consumers, for example, want to know when they’re drinking a genuine COCA-COLA product, not someone else’s inferior product with an infringing name slapped on it. Thus, consumers associate you as the source of a product or a service when your trademark appears on that product or service. By applying your trademark to your products or services, for example on a clothing line or a video game product, or in connection with consulting services or health-related services, you are building rights in your trademark.
Also, at the time you file your trademark application, you must either (1) be using the mark in a trademark sense in interstate commerce (that is, actually selling your goods or rendering services to customers between more than one state or U.S. territory, or in commerce between the U.S. and another country); or (2) have a bona fide good faith intent to do so. You cannot obtain a registered trademark by merely requesting a “place holder” so no one else can use the mark on a particular good or service when you do not have a bona fide good faith intent to use the mark. To show a bona fide good faith intent, you should have documentation to back up your intent, such as marketing plans and internal business meeting memoranda.
Further, prior to filing, it would be in your best interest to make sure the mark is available for registration. If a third party has started using an identical or confusingly similar trademark before you in connection with the same or related goods or services, they would be the senior user of the mark and would have priority rights over you. The United States is a use-based nation, meaning that trademark rights are created through the use of the trademark, and not necessarily through registration. For this reason, a trademark search for the availability of a trademark – although not mandatory – is extremely beneficial in determining if your trademark is eligible for registration.
This brings us to an important point regarding use of the trademark. When a trademark is applied to your goods or services, the mark should be used in a “trademark sense” as opposed to an ornamental sense. For example, a t-shirt design with the trademark placed largely front and center would not be considered a trademark use; rather, it would be seen merely as an ornamental use. To function as a trademark, the mark would need to be displayed in a certain way for example, a properly used trademark would be displayed on clothing on its tag or label. The mark could also be displayed on the clothing item itself, usually in a smaller size above the breast, behind the neck, or son the arm of the shirt). For services, the trademark would be used in connection with the services – for instance, on one’s website or brochures describing the services provided under the trademark. A trademark will not register on the Patent and Trademark Office’s Principal Register (where distinctive marks are registered) if it considered merely decorative or “ornamental.”
Also, when considering whether to seek trademark registration, you may wish to consider how long you intend to use the mark, as the registration process can take 9-12 months if all goes smoothly at the U.S. Patent and Trademark Office and there are no issues with the mark. During that period, you can use the TM symbol on your trademark, but you cannot use the registration symbol until the U.S. Patent and Trademark Office actually issues a registration certificate. Further, there are continued costs associated with maintaining the trademark after registration. As an example, while we may all be thinking about COVID-19 now, hopefully down the road when we are all allowed to see each other’s bright and shining faces in public again, the initial phase of “covidwear” may fade out (as we hope the virus phases out), and you may no longer have a viable business interest in selling your goods or services under that mark. If you have any questions, please contact Kimberly Grimsley email@example.com or Jennifer Mumm firstname.lastname@example.org at Oliver & Grimsley.
by Kim Grimsley | Apr 7, 2020 | In the News, Intellectual Property, Trademarks
On March 27, 2020, the President signed the Coronavirus Aid, Relief and Economic Security Act (CARES Act) – This Act is to provide the various areas in which the government is providing emergency assistance and health care to individuals, families and businesses impacted by COVID-19. Under the CARES Act, the United States Patent and Trademark Office (the “PTO”) has provided for the extension of certain trademark filing deadlines between March 27th and April 30th, as the PTO has determined that practitioners, applicants, registrants and others associated with PTO filings and fees are being impacted and may be unable to make timely filings due to the outbreak.
In particular, the PTO and the Trademark Trial and Appeal Board (TTAB) has provided that they are giving a 30-day extension for the following deadlines currently due between March 27, 2020 and April 30, 2020:
- Response to an Office Action, including Notices of Appeal from the final Office Action under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
- Statement of Use or Request for Extension of time to file a Statement of Use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
- Notice of Opposition or Request for Extension of Time to file a Notice of Opposition 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a);
- Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
- Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
- Transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
- An Affidavit of Use or Excusable Nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
- A Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- Affidavit of Use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).
There are other extensions available as well. For instance, TTAB has provided that if COVID-19 has caused a delay in a filing not mentioned above, a request (in an ex parte appeal) before the Board or a motion (for trial cases) for a reopening of a case may also be made.
Also, if a trademark application was abandoned or a trademark registration was canceled/expired under any of the deadlines listed above (due to an inability to respond to a trademark-related Office communication by its original deadline) because of the COVID-19 outbreak, the PTO will waive the revival and reinstatement fees.
Thus, filing one of the above documents will be considered timely provided that the filing is made within 30 days of the original due date and provided that the filing includes a statement that the delayed filing or payment was due to the COVID-19 outbreak. With regard to the type of circumstances that would be considered to effect a timely filing, the PTO has noted the following situations::
- Office closures,
- cash flow interruptions,
- inaccessibility of files or other materials,
- travel delays,
- personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.
The PTO and TTAB are providing information as to their extensions and information on frequently asked questions on its website at www.uspto.gov/coronavirus. The PTO will continue to evaluate the situation and will report if additional measure or extensions are put in place.
If you have any questions, please contact Kimberly Grimsley email@example.com or Jennifer Mumm firstname.lastname@example.org at Oliver & Grimsley.
by Kim Grimsley | Feb 28, 2019 | Client Spotlight, Featured, Trademarks
While we can’t quite enjoy the warmth of summer just yet, guests at Four Seasons Hotel Baltimore will soon be able to have the next best thing in their in-room bar selection – Sandy Bottom® Sparkling Rum Cocktails! Tasting almost like a sunny afternoon, the light and fizzy coconut flavored beverage will be offered in rooms, bringing the beach to you.
Founded in 2009, entrepreneur Sandy Mazza was inspired by her friends while boating on the Chesapeake Bay. She created the beverage as a way for busy women to keep summer alive year round whether camping, tailgating, boating, or lounging on the beach. Her ambition ultimately led to Sandy Bottom at retailers throughout Maryland, the pool bar of the MGM National Harbor, and soon to be the Four Seasons Hotel Baltimore to welcome guests.
You don’t have to wait to go to the Four Seasons Hotel Baltimore to find this refreshingly crisp, sparkling rum cocktail. Check out their website to find where you can purchase some Sandy Bottom® for yourself today!
Special kudos to our client The Sandy Bottom Enterprises, LLC and Sandy Mazza! As our client says, “Never quit and dream big!”
by Kim Grimsley | Jul 30, 2014 | Copyrights, Uncategorized
When you walk through a bakery and see a cake with Disney Frozen characters on it, do you ask yourself – did Disney allow that? At birthday parties, you see many themed parties and theme cakes – parents want to have a character cake for their child’s birthday. A baker/cake decorator may wonder what are the legal risks in making and selling such cakes? They do not want to lose a sale, but they don’t want to find themselves in legal trouble either. Some may wonder how will the owner of these characters even find out if I make a cake with a character on it or even care?
The copyright owners of the character artwork do care and, particularly with social media today (everyone at the party taking pictures of the cake and posting on Twitter, Facebook and Instagram etc), it is easier to find such unauthorized works. This post explores basic legal issues in the cake decorating business. (more…)