Tag: Zamani Thomas

Steps to a Successful Trademark Filing

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5 Steps to a successful filing

In this article I am going to try to outline 5 steps that will give you the best chance at a successful trademark filing with the United States Trademark & Patent Office (USPTO).

1. Make Sure you are the first to file your “mark” (or something too similar)

Be sure when you are ready to file your trademark, you are using and filing a “mark” that is not already taken or is not “confusingly similar” to anther mark already registered. The search feature on the USPTO website allows for individuals see all the marks that have been filed and also what “class” they have been filed under.

It is in your best interest to perform an exhaustive search on your proposed “mark” because once filed, you will not be able to receive a refund if rejected by the examiner.

2. Be sure that the Trademark you select is “Protect-able”

The second thing anyone looking to file a Trademark must understand is that not all words or phrases are eligible to be protected.  Below is a list of characteristics that may determine the success of a filing and strength of the potential trademark, from weakest to strongest.

  • Generic words may not be protected.
  • Descriptive words are only allowed to be protected once they have attained a secondary meaning.
  • Suggestive words are protect-able if they still identify the good/service. (ex Twitter)
  • Arbitrary words have a high level of protection (ex. Apple)
  • Fanciful or made up words are afforded the greatest scope of protection. (ex. Kodak)

The more similar your trademark is to other trademarks on the market, the less identifying strength it is going to have. 

3. File your Trademark earlier rather than later

Although your “common law” trademark rights arise automatically, you should still look to file your “mark” with the USPTO ASAP to secure exclusivity nationwide and to create constructive notice to all future applicants looking to file your “mark’ or something “confusingly similar”.  By filing it early, you become first in time and are at the front of the line with respect to that “mark”.
If you have not started using the “mark” in public yet, you can file an “Intent to Use” registration application as soon as you develop a bonafide intent to your new name or logo in commerce.

4. Once Registered, the work starts

After you have filed and received a successful registration of your trademark, you must stay vigilant and continue to monitor potential individuals infringing on your intellectual property.  Failure to adequately enforce your trademark rights can result in both (i) degradation of the brand, and (ii) potentially loss of exclusive rights altogether. If you decide to expand your business internationally, you will need to file separate trademark protections in foreign jurisdictions.

5. Protecting your Trademark gets more important as you grow

As your company grows you will probably have more items and or services under the initial Trademark umbrella that may need protecting. 

Be sure to keep your intellectual property protected at all times.  The best way to do this is by filing new trademarks following the steps above, each time you roll our a new product or service. Further, if you create new goods or services and keep them under the existing trademark, you may run into problems with clearance in the new market. If your brand changes over time, new registration applications may be necessary in order to protect modified versions of your trademarks.

Protecting your Intellectual Property will pay dividends in the future and is a critical element in making sure your company or ideas have the best chance of being successful. 

Disclaimer

The information contained in this website is provided for informational purposes only, and should not be construed as legal advice on any matter.

The transmission and receipt of information contained on this Web site, in whole or in part, or communication with Zamani Thomas PA via the Internet or e-mail through this website does not constitute or create a lawyer-client relationship between us and any recipient. You should not send us any confidential information in response to this web-page. Such responses will not create a lawyer-client relationship, and whatever you disclose to us will not be privileged or confidential unless we have agreed to act as your legal counsel and you have executed a written engagement agreement with Zamani Thomas PA. The material on this website may not reflect the most current legal developments. The content and interpretation of the law addressed herein is subject to revision. We disclaim all liability in respect to actions taken or not taken based on any or all the contents of this site to the fullest extent permitted by law. Do not act or refrain from acting upon this information without seeking professional legal counsel.

Various Music Publishing Contracts

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  1. Single Song Agreement – Single song agreements are agreements that deal with specific compositions between the composer/producer and the publisher/label with respect to the rights over the composition. The services provided in these agreements are promotion, licensing, and distribution to name a few.
  2. Exclusive Song Writer Agreement – Exclusive Song Writer Agreements are generally reserved for “in house” or staff writers paid by the publisher. Works are usually seen as “works for hire” and exclusive rights to the compositions/works are granted to the publisher which generally includes the full share of the publisher’s income.
  3. Co-Publishing Agreement – Co-Publishing Agreements are used to create a contractual relationship between the publishing company and the writer to acquire some or all of the copyrights to the composition. The publisher’s rights to exploit the acquired songs and income splits are set forth within this Agreement.
  4. Administration Agreement – The Administration Agreement involves the writer of the composition to license their works to the publisher for a fixed term and negotiate a certain share of the royalties. Generally, the writer in this agreement keeps full ownership of the copyright, however the publisher will take on the responsibilities of exploiting and managing the collection of fees with respect to the works agreed upon.
  5. Collection Agreement – The Collection Agreement involves the publisher only collecting and distributing royalties outlined in the agreement. Unlike the Administration Agreement, this agreement generally doesn’t require the publishing company to do any promotion or exploitation of the works.
  6. Music Purchase Agreement – The Music Purchase Agreement is necessary when a publisher seeks to acquire compositions in whole or part the catalog of another publisher for the future value of the songs.
  7. Sub-Publishing Agreement – Sub-Publishing Agreements are necessary and used when publishers use foreign publishers to assist in promoting compositions in foreign countries. This agreement does not involve a transfer of ownership, only an agreement to promote and collect fees with respect to the specific compositions agreed upon.

Disclaimer

THE INFORMATION CONTAINED IN THIS WEBSITE IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY, AND SHOULD NOT BE CONSTRUED AS LEGAL ADVICE ON ANY MATTER.

The transmission and receipt of information contained on this Web site, in whole or in part, or communication with Zamani Thomas PA via the Internet or e-mail through this website does not constitute or create a lawyer-client relationship between us and any recipient. You should not send us any confidential information in response to this web-page. Such responses will not create a lawyer-client relationship, and whatever you disclose to us will not be privileged or confidential unless we have agreed to act as your legal counsel and you have executed a written engagement agreement with Zamani Thomas PA. The material on this website may not reflect the most current legal developments. The content and interpretation of the law addressed herein is subject to revision. We disclaim all liability in respect to actions taken or not taken based on any or all the contents of this site to the fullest extent permitted by law. Do not act or refrain from acting upon this information without seeking professional legal counsel.

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5 Differences between Canadian and U.S. Trademark Applications

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  1. No Classes – The Canadian application procedure does not use a classification system like the U.S. procedure does. Without the class system, an unlimited number of goods and services may be included in a single Canadian application without additional fees.
  2. The Madrid Protocol – Canada is not a member of the Madrid Protocol, thus a registration in Canada can only be obtained through a Canadian application.
  3. The Canadian Trademark Office is much more lenient with Extensions of Time. The U.S. application process may be terminated in a time extension period is passed.
  4. Canadian trademark registrations are enforceable in every region of Canada even if the mark has been used prior or has become known in that region. In the U.S, the trademark may be limited by regions where the mark has been in use or known.
  5. When filing an application in Canada, it is important to correctly indicate whether or not the trademark has been used in Canada. If there has been use of the trademark in Canada, a date of first use must be claimed. Unlike in the U.S., it is improper to file an application on the basis of proposed use or intent-to-use if the mark has been used in Canada; a third party can successfully oppose an application on this basis.

Disclaimer

THE INFORMATION CONTAINED IN THIS WEBSITE IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY, AND SHOULD NOT BE CONSTRUED AS LEGAL ADVICE ON ANY MATTER.

The transmission and receipt of information contained on this Web site, in whole or in part, or communication with Zamani Thomas PA via the Internet or e-mail through this website does not constitute or create a lawyer-client relationship between us and any recipient. You should not send us any confidential information in response to this web-page. Such responses will not create a lawyer-client relationship, and whatever you disclose to us will not be privileged or confidential unless we have agreed to act as your legal counsel and you have executed a written engagement agreement with Zamani Thomas PA. The material on this website may not reflect the most current legal developments. The content and interpretation of the law addressed herein is subject to revision. We disclaim all liability in respect to actions taken or not taken based on any or all the contents of this site to the fullest extent permitted by law. Do not act or refrain from acting upon this information without seeking professional legal counsel.