All Questions in Trademark Registration >> trademark/patent ? Easiest way to assert IP rights

trademark/patent ? Easiest way to assert IP rights

Posted by . updated on 11/11/2009

Our small firm has a problem.

We have a patented moderately successful product and a web based
competitor determined to infringe on our patent.  It is laughably
obvious.  So much so that all the major internet resellers refuse to
carry his copy.

More, the infringer only takes $ through p*y**l, but they refuse to
consider patent infringement as a violation of their acceptable use
policy and will not pull the plug on his activity. Go figure.

Since, the copy is of very similar appearance, I had an attorney
acquaintance suggest that we should trademark the name ALONG WITH THE
IMAGE- since the resulting trademark falls under p*y**l's AUP existing
policy and this same trademark would have rights similiar to same
digital rights (DRM) and perhaps we could have the website pulled as
if there were illegal mp3's being downloaded.

We tried to register the name and the graphic ("mark") together with
legalzoom but they returned our money saying they weren't setup to
file this joint trademark.

So I guess I am looking for some free advice and or citations that I can read:

1) Can a trademark include  a graphic and a name  ?

2) Does anyone know whether said combination can successfully assert IP rights
     a) under p*y**l's existing AUP ?
     b) with an ISP that recognizes copyright ?

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Answers (3)
Are you using the words WITH the image or are they being used separately and instead you are trying to register two separate marks simultaneously?  Thanks.
Our original filing (abandoned) had the words _with the image (which
was a photo of the product).

Our infringer's product's name is 2/3 similar with ours and is
routinely confused in the marketplace.  We just want to stop an
infringer that believes the threshold for a patent lawsuit is too

I should also mention that the copy has the phrase "US patent pending"
embossed on - even though this is false- so there is the additional
violation of the USPTO's trademark.  In fact that violation is
probably much cheaper to prove and prosecute than a patent

We think the simplest way to stop this guy is to enable the levers
that initiate the AUP policy of either his ISP or his $ (p**p*l).  We
have a patent, and can trademark the graphic (photo or cartoon) and/or
the name, If separate filing is more effective so be it, but then I
don't see how trademarking the name helps (and would be willing to read
any references).

While you sound like you're on the right track, your logic is a bit jumbled.  

First, you don't "trademark" names, logos or the combination of them.  You use names, logos, etc. as trademarks, thereby acquiring trademark rights in them.  You can then register those rights with the Trademark Office.  The distinction is important because you may already have sufficient trademark rights -- albeit not registered rights -- to enforce against the infringer.

Second, your abandoned application, if I understand correctly, sounds botched to me.  You should have a qualified TM attorney handle any future filings for you, in my opinion.

Finally, patent infringement, while a bigger bite to take, can be far more powerful a weapon in the market than trademark actions.  Under the former, you can stop the infringer regardless of how he brands his product, while under the latter, you can only stop infringing branding.

If this is a true business, why not protect it properly and speak with an attorney about your matter.  In the end, it's almost always more cost effective to have an attorney handle enforcement from the outset than it is to try to do it piecemeal yourself.

- Jeff

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