Take It To The Board with Donna DiMaggio Berger
Take It To The Board with Donna DiMaggio Berger
Crafting and Protecting Your Community’s Trademark with Becker’s Valeria Angelucci
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Has your association ever faced the challenge of a shadow website or social media page imitating your own? Have you discovered your community's name being used by a business entity without permission? Host Donna DiMaggio Berger, along with guest Valeria Angelucci from Becker’s Corporate Practice, shed light on these common issues. Despite their prevalence, the solution for both prevention and resolution is often just one registered trademark away!
Donna and Valeria reveal how to safeguard intellectual property for community associations, particularly their names and logos. They explore the intricacies of intellectual property, emphasizing the crucial function trademarks serve in preserving the identity of your association. They also share insights into crafting distinctive branding, with real-life examples, including renowned brands like Nike and Lululemon.
Donna and Valeria discuss the expenses and enforcement associated with trademark registration, providing practical advice for addressing inquiries from the United States Patent and Trademark Office. They highlight how a well-protected trademark can forge a stronger sense of community. Whether you're a seasoned manager or a newcomer to community associations, this conversation is an essential guide to mastering the landscape of trademarks.
Conversation highlights include:
- Differences between trademarks, copyrights, and patents
- Steps and costs involved in the trademarking process for community associations
- Limitations or restrictions on what can be trademarked
- Legal implications for community associations if their names or logos are not properly trademarked
- How community associations can enforce their trademark rights if they discover infringement
- Alternatives to trademarking
Hi everyone. I'm attorney Donna DiMaggio-Berger and this is Take it to the Board where we speak condo and HOA. Has your association ever been confronted with someone creating a shadow website or social media page that looks like it is your official association website or media page but it's not? Have you ever had a local business trade on your community's good reputation by incorporating your community's name into the name of their business? These kinds of problems are not as rare as you might think, and the solution to preventing and resolving them is usually just one registered trademark away.
Speaker 1My guest today is my partner here at Becker, valeria Angelucci, who was born and raised in Chieti, abruzzo, which is in Italy. For those of you who are not familiar, she earned her law degree from Roma Tre University in Italy and then went on to obtain another law degree from Nova Southeastern University. Valeria is an attorney in Becker's corporate practice, where she uses her international background, experience and language skills. She speaks Italian, spanish and French, in addition to English, naturally, to assist her clients in the areas of corporate finance, mergers, acquisitions and divestitures, securities, spacs and general corporate governance matters. Today, we're going to be focusing on her work with community associations to protect their intellectual property, namely their names and logos. So, valeria, welcome to Take it to the.
Speaker 2Board. Oh, thank you, dawn. I mean that was a great introduction. Now I feel very humbled and I don't know if I'm going to be up to the task, but I'm going to try. Thank you for having me here. It's the first time for me on a podcast, so that's going to be interesting. But hopefully I can kind of like help you, give you some information, useful information to people out there.
Speaker 1I have no doubt you will, and after looking at all the languages you speak, you know, I like to say I speak Spanish and some French, really just menu Italian. I would never, I would never take you on linguistically speaking. So the first question I wanted to ask you just to set kind of set the table for our listeners is can you explain the difference between trademarks, copyrights and patents Because I don't think any of our clients need patents and why trademarks are particularly important for community associations.
Speaker 2Sure. So basically, these are all examples of intellectual property. Intellectual property is something intangible, it's not something you can hold in your hands or like, move around, and these are all types of intellectual properties that can be actually registered with the USPTO. So, for example, let's say you're thinking of a new way of producing something. So there is a new process for producing a product, or a new way that you're going to I don't know create like a medical device or some medicine or anything like that. So when it comes to an invention, so it's going to be something that is new, that it's not actually already in commerce, has not been produced by anybody else, it's something that is useful and it's something that is not obvious to people.
Speaker 2That's going to be a patent. So when you register the patent, what you're doing is actually saying I have a right to this process, this invention that I just developed, and from that time on, nobody else can use that. So an example of a patent could be, for example, again, like you know, medicines those are like old patented things. Or even you know, for example, how certain electronical devices function. These are all patents. And no, probably I wouldn't think that associations are ever going to need to register a patent. I mean, anything can happen in life, but that's not probably what you're going to come in contact with.
Speaker 1Do you know when the first patent was registered in the United States?
Speaker 2I'm not sure about that. No, I think it's probably going to be like the 1800s or something like that, and I may guess, explain acronyms.
Speaker 1So you said USPTO. I know what it means. Do you want to tell our listeners what USPTO means?
Speaker 2So US stands for United States and PTO stands for Patent and Trademarks Office, so that's basically the agency that takes care of anything related to patents and trademarks in the US. If you are registering in a different country, then you're going to go to that country patent office or trademark office. Usually they're in the same place, but that changes, and then I can move to copyrights. If you're okay with that I don't know, unless you have any questions on patents Okay, andiamo, andiamo, okay.
Speaker 2So copyrights when you're thinking of copyrights, you need to think of something creative. So it's going to be a song, or maybe you wrote something, it's a poem, it's a novel, it's like a short story, and it can even be like a drawing. So those are all copyright war, copyrightable war, and what happens with copyright is that it's your rights to the authorship that is actually protected. The thing with copyrights is that they actually they actually happen the moment you create the work. You're not, you are not required to register a copyright. It's a common law copyright right. And if you register, though, you're going to have enhanced protection because, from that point on, you're making it public for other people to know that listen, this is my work of art and you're not supposed to reproduce that, to copy that, to alter that, to create derivative products or anything like that. So whenever you have a song, whenever you have something creative, that's probably going to be a copyright.
Speaker 1Probably not applicable to community associations.
Speaker 2Maybe you know maybe you come up with like a song for the association or something like that, I mean.
Speaker 1I don't think that might help them. A nice peaceful song at the board meetings, that might be something that they should consider, but okay.
Speaker 2Yeah, something like that. So you know the difference between patents and copyrights is like patent is like useful stuff, you know like a new invention, something useful. Copyrights are creative things. And then we're going to move to trademarks, which is a different sort of thing. So a trademark is basically a word, a design or something that is used in connection with a certain good or a certain service. So let's think of like something that you associate with a certain brand, for example, and it can be even colors, it can be even sounds, and that's where you can have like a little bit of like a in-between between copyrights and trademarks, right? So everybody knows, for example, apple, right, when you see the Apple logo, when you see the logo, you know that that's Apple that is producing that device. So I make that connection instantaneously between the product and the company that actually created that. And the same thing works for, for example, for, let's say, the red Lobotan. You know the shoes that they have like the red sole. That's actually like trademark.
Speaker 1Louboutin. Yeah, Don't ask my husband to look in my shoe closet.
Speaker 2Yeah, yeah, another one of your night, the Tiffany blue.
Speaker 1The Tiffany blue box Absolutely. So that color is actually a trademark, Wait they could trademark that particular blue as tiffany blue. Yes, but can I use it on something different? Can I use tiffany blue on a vehicle?
Speaker 2so yes, you could. And that's where you know that kind of like the thing with trademarks is it's really associated with the type of good or service you're providing. So let's say you know we have Apple and of course Apple makes you know electronic devices I guess you know phones, ipads, whatever. So if you see that logo on, let's say you know, like at the grocery store, you're not thinking, oh wait, this is Apple, the company, apple that actually created this. You know, like I don't know box of cookies or whatever you know.
Speaker 2That's where it's really important to make sure that when you have a trademark, you're clearly defining what it's going to be the product you're going to be selling or that's going to be used in connection with the mark, or what is the service. Because the thing with trademarks is actually we refer to trademarks generally, where we refer to both actual trademarks, which are the ones that are used with products, and service marks, which are the ones that are used with services. We just use the term trademarks because, you know, it's just easier, but in theory they're two different things.
Speaker 1Is it fair to say that these?
Speaker 2protections are all designed to avoid confusion in the marketplace. Yes, that's exactly the point. So the idea behind that is, again, if I'm going to Apple and I'm buying something that does, I'm just using Apple because it's an easy thing for everybody to think of, right? So if I'm buying a phone and I see the Apple logo on the phone, I'm going to say, oh, this is an iPhone and I rely on that specific phone because I'm thinking, well, this is Apple.
Speaker 2I know it's a very good brand, I know it makes very good phones or it has very good technology, so I'm going to buy that thing because I know it's connected with that company and this thing works with, like you know, pretty much everything else. So you know, if you're buying a pair of Louboutin shoes and you're buying them and have the red sole and then you actually find another pair of shoes that have the same color but they're not Louboutin, you could be confused and you could be like hey, I thought I was buying Louboutin and I know I'm. You know I wanted to buy Louboutin because that's really great.
Speaker 1And he said I bought these like Chinese, made like coffee but for Valeria, if you're spending $75 thinking you're getting real Louboutin shoes, well, probably no better. But you just raised a question for me because we talked about confusion in the marketplace. One of my associations. What tends to happen and I mentioned it in the introduction, was that they had a real estate company that this is a very large community with thousands of homes and this realtor put in the name of their company. They started out with the company name broker, real estate broker LLC. So they wanted people to think that they were the official broker for that community. So what can that community do? I'm assuming, if I'm listening to, that a trademark is what could help that community. So what can that community do? I'm assuming, if I'm listening to, that a trademark is what could help that community in shutting down another business from trading on their good name.
Speaker 2Yes, so it's always I think it's always better to register the trademark. I will just mention like very briefly, that in theory you are covered. You have some rights, even under common law trademarks, so you don't need to register something. But the problem is going to probably come is that it's going to be more complicated for you to prove that hey, this is the mark I was using even before you started using that, and this is associated with my association or in my company or whatever it is. So that's where registering the mark makes it like more protective for you.
Speaker 2But yeah, the problem in a situation like that is exactly that you may have somebody else who's using a similar name or a similar logo and then doesn't have to be intentional, of course. If it's intentional, that becomes, you know, even worse. But you just somebody that in good faith, is using something and it's like very similar to what you're using, and maybe you know it's like like in your what you're using. And maybe you know it's like in your case, a real estate company that is advertising units, maybe in the same association or maybe, you know, is doing business very close to the place where the association is. So it would be normal for people to think oh look, you know this is the same name, it's kind of like the same logo, so this must be the same, you know. This must be kind of like under the same umbrella. This must be the person that is probably allowed to sell for the association. Maybe I need to go to this person if I want to buy a unit in the association.
Speaker 2That's not true, of course, right, but that's really what the issue becomes and that's when you know having a trademark register actually helps you, because it's a presumption that no, this is my mark, it's valid, I've been using this since whatever day you've been using that, and that's all going to be in the application you prepare and file and it's going to give you a little bit more protection.
Trademark Protection and Registration Process
Speaker 1So let's talk about the statute of limitations. So we've got this realtor who's using our name to try to sell property, to try to give the impression that that real estate brokerage is affiliated with our community, which is a large community. What's the statute of limitations to enforce? Let's just say we only have a common law trademark. We haven't registered the mark.
Speaker 2The problem? I don't think the problem is really with the statute of limitation. I will mention that the issue is more what happens if you don't do anything. It doesn't matter, even if you do a little bit. It doesn't have to be the same month you figure out this is happening. But the problem is that if you don't do anything, regardless of the study of limitation, what happens is you're not doing anything to protect your mark.
Speaker 2Nothing happens for two, three, four, five years and then you're back there and you're like trying to argue that you own the mark and at that point the mark can be considered diluted and can be considered like you know. You kind of like lost your rights in a way. The thing with trademarks is you have a right to use that mark and to use it in business for your products and to be protected in case and to enforce your rights in case somebody else is actually using it and they should not be using it, right. But if you don't do anything, then it's kind of like you're abandoning your rights. That's the issue there. It's really not. It's more regarding like statute of limitations, more like you have a right and remember, if you have a right you still need to make sure you use your right.
Speaker 1If you don't use your ride, you're just going to giving it up. That was always my understanding as well, which is once you actually, if you actually register it, that you have to protect it or you lose it. But I assume and I want to get into you know, federal versus state registration. But I want to give you an example. Let's say an association comes to you and we've had this because you work with me, you work with all of our associations, and they say we have somebody setting up a shadow website. They've got a picture of our monument wall with our name on that page on their website. Also on their Facebook page They've got our name. What can we do At that point? What kind of trademark protection, let's say they want? They're saying tell us, should we register federal, federally? Do we need a florida registration or state, because we got people listening in other states? And if you could speak to the costs of involved?
Speaker 2okay. So I first want to just like kind of like highlight one thing just because you're using a name, it doesn't mean you're going to have a trademark okay. And I just want to make it very clear because sometimes it's easy to think well, you know, I'm using this name, so you know I work in for lauderdale and I'm using like for lauderdale real estate company, whatever, so now I'm gonna trademark for lauderdale as a trademark or whatever. That doesn't work. A trademark needs to be something that is a little bit distinctive. It cannot be a very simple term on its own that is used in association, for example, with the geographic area. That's the first thing I want to highlight. As to cost, it really depends If you are in Florida.
Speaker 2Most states have, I would say have some trademark laws or some trademark statutes. So you're probably going to be able, even if you're not in Florida. Florida has a specific statute. Other states have statutes. Some may not I mean on top of my head I don't remember all of them but I would say most have some sort of protection and some sort of registration. The Florida I will talk about Florida just because that's where we practice mostly but other states have something similar and the costs are usually similar.
Speaker 2For Florida, the process is way easier than the federal process, right? So what you need to do is literally provide a few examples of how you use the trademark. You're going to have to provide information for who the owner is. So in this case it's going to be an association and you're going to certify that you're using the trademark for a certain service. So usually for an association, probably what you're going to be doing is market the association to potential buyers or potential new residents, or you're going to protect the association. You're going to enforce the rules and regulations of the association. This is probably association. You're going to enforce the the rules and regulation of the association. This is probably what you're going to be putting as the services in there. So some sort of like real estate association related services. The cost is really for florida is like very low because it's basically 87.5 dollars for one class. You probably just need one class for an association if you're just doing the sort of things I said before.
Speaker 1Right, you're not selling merchandise. Some of our timeshare resorts actually do license, you know, apparel and cups and beverage containers like that. Yeah, my point was In another class, right?
Speaker 2Yeah, my point is exactly that. So I'm talking like most associations. They just do like you know, their association work and have nothing else really that they're going to use the mark for. But if, for example, you have a restaurant that you have on your premises, or if you're, for example, you have some sort of other activities, so you're like selling shirts with you know, your logo on and things like that, those are all different classes and that's where it comes when they or the issue comes that you need to kind of like check okay, what type of work am I doing? Am I doing caps or am I doing shirts? Am I doing travel arrangements? Am I granting kayaks?
Speaker 2You can do like many things right. So you need to check what is the service, what is the good, and based on that, you may need to register for one, two, three more classes. So $87.50 is really for one class. That's probably most likely applicable to the majority of the association, but it doesn't mean that you need to just stick to that. You can do more things. One thing that is very important to note is that Florida only allows registration of marks that are already in use. So that means you need to have been using the mark on the caps, the shirt or for, like you know, like your letterheads or, like you know, like your newsletters, whatever it is. But you need to already have been using that for a little bit before you can actually register in Florida. Would a website?
Speaker 1count Valeria. So in other words, they've got the name and the logo on a website.
Speaker 2Yes, so for Florida you're going to need three specimens. So usually that means three different examples. Website works okay, that's not an issue. But usually let's put it this way If you're using a name, a logo or something, you want to try to be consistent.
Speaker 2That's going to be part of kind of like your goodwill, kind of like your image outside for other people. So you try to use that as much as you can on whatever is related to the association and that way it's going to make it easier also for other people to kind of realize hey, you know, I got this letter. This letter comes from the association. It's not coming from, you know, my neighbor who's acting to be the association, or if that's the case, then you shouldn't be doing that. That's a different story, right? But yeah, so websites are definitely very useful and we use websites a lot when we need specimens. It's just I want to make sure you understand it's not just websites. Some people think, oh, I use my trademark on just like one thing and now that's it. It needs to be distinctive enough, like people need to understand that's you acting, it's the association acting using that logo.
Speaker 1So let me give you an example and ask you if these would be examples of potential specimens you could submit for the registration In my HOA. It's a golf course community. So when you come to the entrance, beautiful signage with the crossed golf clubs right there on the monument wall. When you go throughout the neighborhood, you have that same signage with the crossed golf clubs. Could you use that as a specimen? Yes, absolutely. Pre-signs, monument walls, other kinds of signage that's perfect. Yes, that's perfect.
Speaker 2I like just to make the application a little bit more persuasive, to maybe show different things if possible. So you know even just the letterhead or the you know business cards for somebody or the website. If you use like more, you know different things with the same logo. I think it's going to make your application a little bit more persuasive. It's probably going to be easier to move through the process and for just know that for an association it's probably easier to use like signs and things like that, because of course you know we are just referring hey, this is like kind of like real estate services related to the enforcement and marketing of the association. But now if you're using the same marks and you're using them for like cups and shirts or whatever, I'm going to need to see those marks applied on that type of product. That's not going to work for that class at least.
Speaker 1So you mentioned that not everybody's eligible to trademark a name, and I get that. Like I gave you the example of my association, valeria, which does have a very distinctive logo. Right, it's actually a shield with the crossed golf clubs. Does every association need that kind of logo, that kind of or I don't even know if I'm saying the right terminology Is that considered a logo when you have a graphic, or is that something else?
Trademark Protection for Branding and Designs
Speaker 2No, you can call it logo. It's a design, so usually you can. So a trademark can be the wording, could be the design or could be a mix of both. So you know, if you're thinking of, let's say, nike, right, the brand night, you're gonna see the little like check, and that's a design, right, it's just like a drawing and you can see that on its own being used. And then sometimes you see that used with that Nike wording which is in certain specific fonts Right, so you can have a trademark You're referencing.
Speaker 1Nike right, Nike yes.
Speaker 2Nike, sorry, like the Greek pronunciation would be Nike, sorry, yeah, nike, nike. So so in that case, for example, nike probably has a trademark that is both to the design, to the wording and probably to both of them used together. And that's, you know how it kind of like protects. You know attacks from every side.
Speaker 1Let's say so it's stronger with the design, and that would hold true for associations as well, right, yes, so the point is, if you're just using wording, then it needs to be something like very particular.
Speaker 2Okay, again, you cannot just say you know for l'ordal and use that as a. You know this is going to be the mark. You need to be something, you know, different, something creative, something that is not, is not telling you this is related to this association, just because of the name. Okay, so, um, you can have a name and it's just like you know, made up like I don't know, lululemon, that's not a word, right?
Speaker 2so that's enough. You know, like you're saying, okay, I'm using this word and that's the month you can have like designs, I would say, probably, if you have like a wording in a design or a mix of the two, is probably easier for you to get protection, just because again you're thinking of somebody else that is looking at the product or is looking at the service and looking at this thing and it's like, okay, what is that? If it's very particular, it's going to be easier for you to remember that as a thing. And related to that, certain, you know, company association or whatever it is.
Speaker 1So we've got. You know, listen, our associations run the gamut from very small to very, very upscale. Okay, maybe the very upscale communities have brand consultants, but I'm guessing 99% of the community associations don't. But let's take a community that has a name like Island Club. Okay, and that's all they were. When the developer turned over, that's all they had was this name Island Club. Would it be possible for that association then to decide we want to add a palm tree, maybe we want to add two palm trees around our name and trademark? That I'm assuming. You can do it after the fact, but you would have to look and see if there's any other island clubs out there that have that design. Is that how that would work?
Speaker 2So okay, so it depends Meaning and of course you know we're talking generally, we're not giving like specific advice.
Speaker 1Yeah, I should have said that. Thank you, my colleague, for saying that we are not giving specific legal advice. This is a podcast. This is for general education and entertainment purposes only.
Speaker 2So, okay, let's put it this way, let's look at that. You know, under you know Florida and under federal, because it's a little bit different. Okay, for both of them you're probably going to need to check if somebody's using something similar. So what I will do, generally speaking, when I get somebody that wants to trademark something is I will try to look for something that is similar. And when you have a design associated with the wording, for example, that design needs to be described in the application. So there are ways to kind of look for that. It's never perfect, you know. Sometimes something may come up and it didn't show when you were first searching for that, but that's how you will do it. Now, if you're doing so, like in your case, you're saying, okay, well, we were using, uh, island club he's the name, okay, so you're, you're just using island club and now you're like well, we kind of want to use it as a trademark, but we need to add something right to make it more a little, a little pizzazz too, yeah, yeah.
Speaker 2So so you're like we're gonna just add these palms and stuff, okay, great. Now if you're in florida again, you're not gonna. We're going to just add these pumps and stuff, okay, great, now if you're in Florida again, you're not going to be able to register that because you haven't used that. So that's the first thing you need to keep in mind, right, if you are starting to use that and you've used that like for a little bit now, you can go to Florida and say, okay, now we're going to register. But if you're doing that before you actually start using mark in commerce which would mean again, publicly you cannot do that For federal. You can do that.
Speaker 2So for federal trademark applications, you can actually have two different types of application. They're kind of similar in the way they work, but one is based on using commerce. So you're saying, hey, you know, I've been using this mark for a while and this is how long I've been using that for. And the other one is hey, you know, I have this mark and I have all the intention to use that in commerce and you can register that before you even start. Well, you can apply for registration before you even start using that. You will need at one point to show you're actually using that after a certain amount of time, because otherwise you're going to kind of give up that sort of like you know, a reservation on the mark. But you can do both, so that's the first thing you need to keep in mind.
Speaker 2So in Florida you need to have been using that enough under the USPTO, under the federal, then you will need you can do both. So you can either do like, oh, I've been using this and I've been using this for this long, or I haven't any time to use it and you can start the application, and then at one point you're going to need to show that you know a year has gone by, but now I'm actually using this mark. If you don't do that, then even if you kind of like reserve the mark saying I have the intent to use it, you're gonna lose it. So that's the little issue there. Um, and then you know this is kind of like, you know, between federal and florida. Then you need to also consider again the. The market needs to be somehow distinct, it needs to be different. Okay, it cannot be something that is very obvious. I guess So-.
Speaker 1Are palm trees obvious, I mean or no? I mean I don't know, because, listen again, these are not companies, these are not-for-profit corporations, and their residences. And they may want to, like I said, add a little pizzazz, a little something that speaks to what life would be like in their community. Golf course communities, it's easy. Equestrian communities, it's easy. You add a horse and a rider on your design, so you're kind of putting it out there what you can expect with this lifestyle.
Speaker 2But I would still think that most of the designs are going to be fairly basic it just it just needs to be not too generic or just like kind of like only descriptive. And you can kind of get around that with like other you know, in other ways, like you know, you can, uh, kind of like drill the palms in a certain way or drill the clubs in a certain way, make them so that they're not like the standard palms. Maybe or maybe you can include something in the palms design where it includes some of the letters. You can find ways around a mark to make sure that it's a little bit more original. I guess the point is you just need to be careful. If you're just making, you know, like you know, island club and you're putting like a club and an island, probably you know, I mean that's kind of like you know it's simple to think, hey, you know, maybe this is not going to work very well for registration. It needs to be something that would be particular and can be remembered in a way.
Speaker 1I'm thinking there's some potential work for graphic artists out there who may be listening to say hey, I can do a great design for your community. But let me ask you something why would you go for a state registration as opposed to just doing federal? Does federal protection cover everything that the state mark would cover?
Trademark Registration Process and Costs
Speaker 2Yes, so the thing is Florida will mean like you're just registering for Florida and the idea is you're using the mark in Florida. So if somebody else is using the mark in New York, you know, so sad you cannot do anything about that. But if you're registering at the federal level, then yes, that would be a registration that covers the entire US. It's just. I mean, I think it depends a little bit, like I guess, on how big the association is. If you have, I know probably an association is not going to have, like you know, an association here and one in another state, that may not be the case. But you know, if you're an association that may have like products, for example, or maybe doing something else, or it is like a bigger association, I probably think the federal is a little bit better. The main differences I mean first of all, let's talk about pricing. Okay, because we sell like 87 bucks for Florida registration. That's pretty cheap. You need to renew that every five years, but again it's pretty cheap. If we go to federal, then at the federal level we have two different types of registrations, two different types of application, I mean for the registration, and you can either do the TA's plus or the TA's standard. Depending on the type of application you prepare, then it's either 250 or 350. Still not a lot of money, if you think of that. Again, this is always per mark per class. So if you have more than one class then it's going to multiply that by the number of classes and you're going to have the total. Still not a lot. The thing with the federal is that it's going to give you protection all over the United States. It's going to give you subject matter jurisdiction of federal courts over any sort of issue with the marks, because the moment you register with the USPTO then you can go to federal court and federal courts are a little bit more knowledgeable on trademarks and intellectual property issues than state courts. So that's a little bit better protection, I guess. And the other thing is with the federal registration after. So after five years.
Speaker 2So you do the first application, right, and you go through the process which and I will just like tell you like a little bit of how it works, just for an idea, right so you file the application, then the USPTO is going to if it's a design, the USPTO is going to figure out if there is any specific thing that is associated with the design. So let's say, you have, like you said, like the pubs and the clubs. So the USPTO is going to say, okay, we see that the items associated with the design are pubs, clubs and I don't know, like the lake for example, right, and so that's going to be kind of like embedded in the design, in the application. So if a similar trademark comes in and wants to be registered, that's going to also kind of like trigger some sort of like notice. Hey, there is a similar mark. Once you file the application, you're probably not going to hear anything for six months.
Speaker 1Yeah, I was going to ask about that, the review process.
Speaker 2The federal registration takes a while. So we're talking about, let's say, the marks that you've already been using in commerce. So you're going to find the application it's probably going to be six months, probably even eight, I would say at this point and then this is going to get assigned to um, um trademark. Uh, that uspt attorney, the examining attorney, is going to look at your application and it may get back to you and send you a notice of action and say hey, you know, we realized that, for example, you submitted some examples, some specimens, how we call them, and they're not, you know, I don't think they show that you're using this mark in connection with this service or these products, or we don't think that the specimen you way looks great. Or we think that you made a mistake with the class, or you didn't specify or detail, describe well what the services that you're providing are. So there may be like a lot of things that come with the notice from the USPTO. You're going to have probably like three months usually to respond to the USPTO notice and then, once that's kind of like cleared, you may get nothing. But I would say that USPTO has been very focused on making sure things are done like a little bit more like by the book lately than they were doing before, and that's just my opinion, of course, but that's how I think things have been going.
Speaker 2So let's say you get the notice, you respond, or you get no notice. Everything goes well. Then, at one point, you're going to get notice of publication, which means that the market is getting published and there's going to be an opportunity for people that are using something similar to file an opposition or to say, within 40 days from the publication, to say, hey, you know, I have a similar market. I've been using this for like way longer than these people have, right? So let's say nothing happens, everything goes well After the publication. After that period goes by, at one point, finally, you're going to get your mark registered. So it takes, I would say like a year and a half, even more sometimes, depending how long you know if you get a notice, if you get an opposition, if you get like any sort of issues, but it takes a while If your application is pending with the USPTO and somebody else has registered something very similar, do they alert you to?
Speaker 2that If they try to register when you're already submitting the application, so they're coming after you.
Speaker 1When you've already. Your application preceded theirs, but it's pending. Like you said, this could be a lengthy process federally.
Speaker 2So what happens is that the moment you send the application, really nothing is happening. The moment where things are actually being reviewed. There is like actually two moments where things are going to be reviewed and can come like into issue. One point is when it gets assigned to the examining attorney. So the USPTO attorney is going to look at things and it's going to look. You know you should be looking before you register your mark, of course, but you know it's gonna do like another check, you or she's gonna go another check and it's gonna look for other marks that are similar. So when the time comes the USPTO attorney is gonna say hey, you know you mark number two. In time they tried to register after this other mark came in. Please know that there is this other mark that is there. But the point is usually if you applied first, you're probably going to get a protection, unless there is like some issue. Keep in mind, if you get the registration. So if you go through the entire process and you get it registered, the registration is good and it's good as of the day you apply. So it's not going to be good as the moment you get the certificate that says hey, you know it's been registered. It's going to be good, as the moment you get the certificate that says hey, you know, I've been registered. It's going to be the first moment that you apply, which is very good because it covers all the time that you are in the application process, right?
Speaker 2What's the filing fee for the federal mark? So, for federal? So, as I said, there are like two different types of filings you can do. Well, two different type of systems you can use when you file. So up to a few years ago we only had one system, which was the TA standard, and now we also have the TS plus. Sounds weird, but the plus actually costs less money. It's $250 if you're using the plus and it's $350 if you're using the standard. You can use the plus and I would suggest the plus is probably better when you can qualify for that. It's just like a little bit more detailed and it's gonna ask you to kind of like fit in certain boxes, let's say.
Speaker 2So. They use PTO as a specific, like you know, list of like classes and a specific description of the classes and what is included within the classes. So if you can fit in those description, then you can use the class if you're registering your mark for a very peculiar service or very peculiar good or product that is not within those description, then you may need to use the standard. The standard usually also takes a little bit longer in the review process because again in the plus you're trying to provide more information and kind of like, go more by their rules and their. You know definitions already, so it's usually easier. I usually use the class when I can.
Speaker 1I was going to ask you what do you recommend, valeria, for a community association? Would it be the plus?
Understanding Trademarks and Enforcing Rights
Speaker 2Yeah, I mean the plus is usually easier. I mean, again, cost less money. So there is no reason to go for the more expensive one if you can avail yourself of the cheaper one Plus, again, it also depends on the class. As I said, you use the standard when the class and the descriptions that are contained within the class, in the class descriptions, are not really good for you. For community associations, what you're looking at is probably services that are related to protecting the community, making sure to enforce the rules and regulation, marketing the community. Those are pretty standard services, right. But if you were a different business, right, and you're like, you have a product and that product is not within the description, like you know, you're making a complete, different, I don't know piece of clothing or some sort of like weird item, then you may want to do the standard because that way you're going to be more protected and you're just going to say, hey, this is what I'm doing.
Speaker 2And again, like classes are the way they work, is basically classes try to include within their descriptions like different things that are related to the same category. So for, like, business associations, I think it's easier, I'm sorry, for community association, I think it's easier because, again, the type of services you're going to provide are pretty much standard things. But if you have goods, you can have, like, different types of goods you can have different. Even within the clothing you can have different things. So if I'm registering a product and I'm registering under, you know class, you know clothing, but I'm just doing shirts, I need to say shirts and somebody else may come later and say, hey, I'm just doing like you know baseball caps, you're not doing baseball caps. In theory, I could do baseball caps now. That's why it's important to make sure, when you have the class, that you're kind of like including whatever could be important to you.
Speaker 1I hope nobody's trying to do this on their own.
Speaker 2After talking to the USPTO defense, I guess they try to make the process easier if possible, and it does look kind of easy. But the problem is that and that's what I see most of the time people try to register things and they just end up getting a notice of action because something was improper or you're just not providing things that they like, you're not describing the class correctly. It's not complicated per se, but I think it's really not that expensive to get some help. It's really like maybe a few hours of you know help to make sure that things are done properly.
Speaker 1But you know, you said a few minutes ago that you, if you get the mark, you have to enforce. You know, use it or lose it. You have to protect it. If you don't, you could be deemed legally to have abandoned it. So I'm thinking I'm an association in Texas. For whatever reason, the board has decided to register our mark through the USPTO, but we did not do it through Texas. Ok, Now isn't it going to be? And it's granted. They love our name, they love our mark. Whatever it's granted, it's registered, we have it. And I want to talk to you about the little TM and the little that we see. So they have a little TM, They've got everything. Now do they have to be looking in all 50 states to make sure there's nobody in Florida using their same name and mark? I mean, I would think that's a lot more of like approach meaning.
Speaker 2You know, I think it makes sense for you to kind of like, once in a while, google see if anybody's using something similar to your name or your logo. That's something you can do, right, do you need to actively go in? Uh, you know, I don't know, like in south dakota, if you're in florida, and probably not okay, the point is, if something is happening and you know something is happening and somebody is using your name or your logo or your mark or whatever you want to call it, okay, whether it's like common law or it's registered or whatever it is, but it's clear that it's creating some confusion. That's the biggest issue, right? Creating confusion. Or it's damaging your reputation, your name, your goodwill, then I think you need to take action. That's where really it becomes. You know. That's where you. It really gets to the point that you know you need to do something. You know something, you do something. Are there companies?
Speaker 2that monitor trademarks, where they will go online and search to see if anybody's violating your trademark uh, I'm sure, I'm sure you can have something like that, but but I mean, I've never used them. To be honest with you. It's just most of the time you will know, like, when somebody and I'm saying that for associations specifically, because most of the time when somebody is using your name, your logo, you're probably going to find out because somebody is like a resident or somebody who's interested in the association is going to say, hey, you know, I thought this was you and it's somebody else that is using your logo, your name or something like that. For products. That's different.
Speaker 2Again, like you know, if you are, you know, buying a pair of low-button shoes and they're not low-button, you know I'm sure they have something in place to make sure that nobody is using their you know trademarks for other products. But I don't think that's really applicable to association. Again, we want to make sure that we have like a common sense approach. We're not trying to make it like super complicated or super expensive. Just try to be careful and try to look out. If you see somebody that has, you know, webpage or social media or something like that and it's using your exact same name and he's acting like it's the association, you probably need to do something about that.
Speaker 1Let's talk about doing something. So we find out somebody is using our registered mark. We send an initial demand letter and we get no response. Where do we go next? Circuit court.
Speaker 2Depending on where you registered.
Speaker 2Again, if you registered so let's say you're in Florida, just because this is easier, right? So let's say you're in Florida and you haven't registered anywhere it's going to be a little bit harder because you're going to have to show that you know you're using a mark and that mark is really distinctive. People know that that's the mark you've been using and this person or this company is using your mark for similar activities or similar services or is doing something that is actually harming you. So it's going to be a little bit harder. The burden of proof is going to be a little bit harder, but you can probably find in state court, you're not going to be able to go to federal court because you haven't registered your mark at the federal level. If you're registered at the state level so you're registered in Florida same thing You're going to go to state court. You have a presumption here, however, that since you registered the mark in Florida, that this mark has been used since the day you said it was used in the way you said it was used, and it's going to make your life a little bit easier in court. And if you are at the federal level, so if you register. At the federal level. You have a choice. I would say go to the federal court, because federal court is just going to be again. They're like a little bit better, more knowledgeable when it comes to intellectual property. So I think that's the way to go. But again, like you know, you have different ways to act. Depending on what you have, you're going to have different. The thing to keep in mind is you may have, you may be entitled to, different damages, whether you're registered or not. If you're not registered, you're probably going to be. First of all, you're going to have like a tougher time, kind of like proving. This is my mark, I've been using it and this person has been using it in a way that it's confusing or it's diluting my mark. And secondly, it's going to be a little bit harder for you to get certain type of damages. So you know, loss of profits. It's probably not going to be possible for you to get loss of profits or something like that if you didn't register.
Speaker 2Can you talk to us about the little tm and the little c? I, um, that's, that's so everybody, everybody is like um, kind of like confused about that, I guess. Yeah, okay, so there are three, three different, like things we see usually associated with max right. So you see the little tm in the circle. Sometimes this is not very common, but I've seen it. Sometimes you see the SM in the circle and then you have the R in the circle right. So these are the three different ones. Okay, so the SM, which is the one that is less known, that's for service marks. So that's really what it is.
Understanding Trademarks and Branding Value
Speaker 2Okay, so if you're using a mark for services, then you can use that and you can use that SM with a little circle even without registration. You're just saying I've been using this for a while, this is distinctive and this is my mark. Fine, same thing with the TM. So the TM you don't need registration for that. Again, you need to have been using this mark. It's not like you can wake up one day and say, oh, I got this mark just now and now I'm going to say that you know this is my mark and everybody knows it's mine. But the point is, under common law you can use TM, it's fine. The R that's where you know it's different To use the little R, you're going to need federal registration. So not even state you need federal registration If you use the R without the federal registration. You are basically doing something wrong.
Speaker 1I was going to ask you are there penalties if you're putting these little symbols on your letterhead or what have you, and you're not entitled to it. So let's say I'm putting R on my association letterhead. Anybody who knows this which I'm assuming it's not going to be that many people, but anybody who knows the intricacies of the law, will go. Wait a second. Do they have a federal registration for this?
Speaker 2I mean, that's really probably let's put it this way like you shouldn't use it, okay, but is something going to happen? The likelihood that something coming after you because you're using the r when you're not entitled to that, it's probably not that high. Just, I'm just being like very, you know, like down to earth here, right, um, and it's just like, don't do it, people don't do it, just don't do it, but it's probably not gonna happen. But what can happen is if you're using a mark and it's actually registered by somebody else and you're putting the little R, that you know that's all great because you're basically showing you're intentionally using somebody else's mark. So you know you have that intentional part that it's going to make your damages even worse, possibly if somebody comes after you.
Speaker 1Do you think that more developers of these communities should consider trademarking the community association name and design before turning over? I'm always shocked that they don't do this, especially for the very upscale communities. They give a lot, but I would think that that would be an added value to say when you're turning over as a developer. And, by the way, we've protected your name and design, I mean, I agree.
Speaker 2I think again, especially if you're kind of like high end it's, it's something that adds to your, you know, like your image, your value, your reputation, like people are going to know you and they're going to see you as a, I guess, more established, more high hand, just because you have something that really strikes them, because you have this design or this log or something like that. And again, it's just like. It's probably just also because you're going to feel part of something. You know you're part of the association and you know that that logo means the association and you're a resident of the association. I think it's always great to have something that you feel like you belong there. I guess you know this is kind of it is not like very legal, but it's true. You know it's nice to say hey, you know, this is my association, this is our logo, we're doing all these great things and you see that around being used.
Speaker 1Now you hit on something very important because you're selling a lifestyle. You know you're not just selling a building, you know in a condo, and you're not just selling a single family homes, you're selling a whole concept, a lifestyle concept. So you know and I don't want to name names of certain communities, but I can think when I drive in and I see you know a beautiful sign with the you know beautiful design that goes with it, and they've got the mark registered, it does give a different impression, I think. So I really am surprised that more developers don't think about it. But, as you know and I know, because I've asked you to work on this, that it doesn't matter if your developer overlooked that little fact. You can do it after the fact. Yeah, absolutely.
Speaker 2And again, even though you're not like a profit corporation, it's still goodwill associated with the association. It's still something that, whether it's done by the developer, it's done after by the association, it's something that is going to stay with the association for the long term and I think it does add value. So I think it's important to do that, especially if you're again, if you're a high end. It makes no sense for you not to do it.
Speaker 1frankly, Well, I was going to wrap up by asking you what your are, but it's pretty obvious that it's Louboutin shoes and Apple devices. Tiffany, you forgot Tiffany you know.
Speaker 2Oh, and Tiffany, we're going to send a recording to my husband, just in case. Okay, All right mine too.
Trademarking Community Names With ProLawyer Impoliakov
Speaker 1Listen. Thanks so much for joining us today. This has been really really useful information and I hope more communities think about potentially trademarking and protecting their names. Yes, absolutely.
Speaker 2And you know if anybody has questions. I know it's not that easy, but that's when you know your condo association attorney comes in and it's important to speak with them and see what their advice is, because you know you may provide the best advice and tell them whether they can do it or not. Sometimes you cannot do it. Sometimes you cannot do it. Sometimes you can. Lastly, where can people find you? Oh, I'm in the ProLawyer office of Becker and so if you can find, if they can find you, they can find me. I guess I'm Becker Impoliakov. My, I mean, I think you have my name, my phone number, my email are all on the website, but it's basically me, angelucci at BeckerLawyerscom, and we'll put that in our show notes.
Speaker 1Thanks again, valeria. Thank you for joining us today. Don't forget to follow and rate us on your favorite podcast platform, or visit TakeItToTheBoardcom for more ways to connect.