Trademarks: Only Use in Commerce Establishes Ownership

Trademarks can be a business’s most valuable assets. Apple’s mark is estimated to be worth more than $355 billion. The Amazon mark lags behind by a hair at $350 billion.

When the value of a company’s trademark can be so high, it makes good sense to carefully develop, grow and protect marks.

Trademarks can take many forms but first and foremost a mark must serve the purpose of identifying the source of goods in the minds of consumers. Letters, numbers, domain names, abbreviations, nicknames, words, slogans, color, alone or in combination with other colors, and designs can serve as marks.

The configuration of products or packaging, called “trade dress” also can serve as a mark if not functional.  Generic terms (computertraining.com) can never serve as a trademark because they remain available for anyone to use. Marks that are merely descriptive of the goods (Ever Sharp) must acquire secondary meaning, being an association in the consumers’ minds between the goods and their source.

“First come, first served” is the basic rule of acquiring rights in a mark. Ownership of a distinctive mark goes to the first to use it in commerce; ownership of a descriptive mark belongs to the first mark that acquires secondary meaning through use. Continue reading

We Have a New Team Member. Meet Jim O’Brien, Lawyer in Business/Corporate, IP, Estates and Trusts Matters

Jim O'Brien - Business/Corporate, IP, Estates and Trusts Lawyer - Baltimore, MD

Jim O’Brien

We are pleased to welcome a new colleague. James Patrick O’Brien has joined Goodell DeVries as an associate. Jim practices in our Business and Corporate LawIntellectual Property, and Commercial and Business Tort Litigation groups.

He represents clients involving corporate governance, business transactions, intellectual property protection and management, and commercial disputes. Jim also handles estates and trusts matters, creating personalized estate plans for individuals and families as well as guiding fiduciaries through the estate administration process after a loved one passes away. Continue reading

Intellectual Property Lawyer Kaitlin Corey Scores Win in WIPO Trademark Proceeding

Kaitlin Corey - Business and intellectual property lawyer at Goodell DeVries

Kaitlin Corey – Business and intellectual property lawyer at Goodell DeVries

Intellectual property lawyer Kaitlin Corey recently secured a win for her client, a process serving company, in an administrative panel decision in the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center. The complaint, which was filed by a competing process serving company, alleged that the client’s use of a particular domain name for its website infringed the complainant’s federally registered trademark.

In her WIPO response, Kaitlin established that the complainant’s federally registered trademark is merely descriptive, and the complainant failed to prove secondary meaning to establish a protectable mark. The Panelist also found that the complainant brought its WIPO complaint in bad faith, finding that its attempt to transfer the domain name was an attempt at “Reverse Domain Name Hijacking.”

This case serves as a worthwhile lesson to business owners to choose protectable trademarks and steer clear of descriptive marks.

Jim Astrachan Named Baltimore Lawyer of the Year for Intellectual Property Litigation

Jim Astrachan - Intellectual Property Lawyer

Jim Astrachan

Congratulations to our partner, Jim Astrachan, on being named the 2025 Baltimore Lawyer of the Year in Intellectual Property Litigation by Best Lawyers.

The Best Lawyers Lawyer of the Year honors are awarded to only one lawyer per practice area in each region with extremely high overall feedback from their peers, making it an exceptional distinction. Continue reading

Should I Register My Mark? Yes!

Should I Register My Trademark? YesA pal and I walked across the parking lot at the Maryland State Bar Association conference last month looking for a lunch joint; the topic of our conversation was whether and why copyright and trademark registrations are necessary and beneficial.

My bud correctly pointed out that a trademark acquires common law rights as soon as it is used on goods or services, and a copyright exists as soon as the work is fixed in a tangible medium of expression. The bulb over my head lit up; my June column was born. I offered to buy him an adult beverage, or two, for the idea.

“You’re correct,” I said. “Both copyrights and trademarks exist without registration, but registration of both confers substantial and valuable rights.”

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Intellectual Property Lawyers Jim Astrachan and Donna Thomas Recognized in Chambers 2024

Congratulations to Jim Astrachan and Donna Thomas, who were recognized in the 2024 edition of Chambers, a leading ranking of the world’s top lawyers. Both were selected for the Maryland Intellectual Property category.

Jim and Donna are ranked in Chambers every year, which is a testament to the stellar reputation their IP practice has earned (and held) for decades.

Jim Astrachan - Intellectual Property Lawyer

Jim Astrachan

Donna Thomas - Baltimore Intellectual Property Lawyer

Donna Thomas

 

US Supreme Court Opens Door for Once-barred Copyright Claims

US Supreme Court Opens Door for Once-barred Copyright ClaimsEarlier this month the U.S. Supreme Court answered the question of when a copyright plaintiff must file an infringement claim or be barred from suing by statute of limitations. The case was Warner Chappell v. Nealy Music, Inc.

The controversy arose because the U.S. Circuit Courts of Appeal were in disagreement whether limitations under 17 U.S.C. Section 507(b) required that suit be filed within three years of the infringing event or whether a plaintiff could sue when it discovered, or should have discovered, the infringement even though beyond the three-year limit for suit. Continue reading

Your Voice is Your Identity

In 1992, a jury awarded the singer Tom Waits the equivalent of $6 million in today’s dollars because Frito-Lay used a voice-alike in its Doritos ad and misappropriated his right to publicity. Bette Midler, Shirley Booth, and Bert Lahr also sued advertisers who used their voice-alikes in ads.

The reason for the lawsuits is that a distinctive voice is a recognizable component of a person’s identity, and the use of a person’s identity without consent to sell goods violates their right of publicity. With new technology, there will be many new incidents.

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