Law Offices Of William E. Maguire

© Copyright 1997, William E. Maguire. All Rights Reserved.
(Published in CIGAR SMOKER MAGAZINE, Summer 1997)

MACANUDO, ASHTON, COHIBA, H. UPMANN, LA GLORIA CUBANA, DAVIDOFF…… At this point, most cigar lovers reading this article have set it aside and are lighting up, not being able to resist the temptation conjured up by the mere mention of these objects of desire and satisfaction. With respect to such Cigar trademarks, this article will briefly introduce the readers to the fundamental aspects of trademark law.

A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. MACANUDO and ROMEO Y JULIETA are excellent examples of 'word' marks. "Agnes, have you seen my Don Diegos?" is an example of a slogan mark. An example of a service mark is ROYAL CIGAR SOCIETY, THE BIG EASY or the CIGAR JOINT for retail tobacco and cigar store services. Sucha service mark as the CIGAR JOINT can also be exploited and serveas a trademark (i.e., for clothes (shirts, hats, jackets, sweaters, vests,neckties); prerecorded videotapes; cigar cases, tubes and pouches; humidors;cigar diaries, etc.). In the U.S., trademark rights are acquired throughuse (e.g., by selling or transporting your product (trademark) in commercewith the mark attached or on a label; or advertising and promoting yourservice marks by placing ads in magazines or other media or by sending brochures or mailings in commerce featuring your mark). In addition, under certain circumstances "color" can be a trademark. Examples outside the cigar industry are the color "pink" for fiberglass insulation and "green" for dry cleaning pads. Whether color can be protected as a trademark in the cigar industry is certainly an issue which should be addressed by manufacturers keen on expanding their trademark rights.

(2) Good Defense Can Beat Good Offense: Other/Defensive Domain NameRegistration(s). The client also should be thinking defensively.Brainstorming as a "pirate" or domain name trafficker might think isworthwhile. In the example of ROXY, consider registering in thealternative ".org" and ".net" top level categories. In this regard, pleasenote that InterNIC no longer ascertains the non-profit status of .orgrequesters. Variations or misspellings of ROXY should also be considered,together with changing the TLD. This effort might be charted as follows:

The selection of a trademark is the first step that a merchant undertakes to create an identity for his/her cigar brand/label, cigar accessories, apparel, etc. The clearance of a trademark is the process of determining whether or not the trademark is available and is not being used by someone else as a trademark. This clearance process cannot be overemphasized in its importance. Ignoring this vital step can lead to a multitude of problems and expense. In the clearance of a trademark, a two-step process is suggested.

The first step is to conduct an on-line computer trademark search of the mark. This on-line search is further clarified by identifying the goods sought to be used or sold as trademarks are categorized by classification. In the United States, the federal government has adopted the International Classification system. Cigars, tobacco, cigar cutters, chewing tobacco, lighters (not of precious metal), matches, pipes, tobacco pouches and cigar cases are all in Class #34, the designated class for smoking articles.

Typically, it is the cigar "band" which is the specimen or label of choice for distinguishing one's brand/label/trademark. Shirts, hats, jackets and related apparel and clothing are in Class #25. Gear bags and travel bags are in Class #18. Posters, magazines, books, trading cards, diaries and other printed matter and publications are in Class #16. Videotapes, audiotapes, business software and computer game programs (including downloadable software from a global computer network) are in Class #9. Therefore, if you are planning to sell cigars and cigar accessories, apparel and magazines, then you will want to conduct an on-line search of Classes # 34, 25 and 16. The on-line search is often called a "knock-out" search. This is because the on-line search is a quick and relatively inexpensive way to determine if the mark is already being used. These on-line searches are often available at public libraries, commercial search firms and law firms.

If your mark appears free of conflicts after conducting an on-line search, the next level of search is the full search, which is obtained from commercial search firms. The full search will search the federal database of trademarks at the Patent and Trademark Office, State trademark registrations, and common law sources such as phone directories and Dun & Bradstreet listings. If your mark still appears clear of conflicts after a full search, then you can be fairly certain that you can adopt and start using your mark.

CAVEAT: These searches are not guarantees of the absence of conflictingmarks, but they do allow a merchant to make a more informed decision inthe clearance of a trademark.

To obtain maximum protection, it is best to register your trademark or service mark. In the U.S., your greatest rights can be obtained with a federal trademark registration. If you are only conducting business within one state, e.g., California, it is possible to register your mark with the California Secretary of State. However, if it is your intent to do business across state lines or in foreign commerce (or if you are already doing business across state lines or in foreign commerce), then the prudent thing to do is to file for a federal trademark application with the U.S. Patent and Trademark Office (PTO) located in Arlington, Virginia.

An application for registration of a trademark must be filed in the name of the owner of the mark. The applicant must submit: (a) a written application; (b) a drawing of the mark; (c) the required filing fee (which is $245 per mark per class at this time). The applicant will also incur attorneys fees, typically a fixed fee, should an attorney be hired to file the application(s). As previously discussed, trademarks registered with the Federal Government are categorized by a classification system which correspond to the type of goods sought to be registered. The U.S., as with many other countries, uses the International Classification (hereinafter, "Class") system. For instance, PUNCH, FLOR DE FLOREZ and CREDO cigars and accessories are in Class #34; the ROYAL CIGAR SOCIETY service mark is in Class #42; MACANUDO and CIGAR JOINT for clothing are in Class #25; and CIGAR AFICIONADO and SMOKE cigars, pipes and life's other burning desires are in Class #16 for publications.

Please note that internet domain names or websites, e.g. www.cigar.com or www.stogies.com, are potentially registrable in Class #42 for quot;electronic distribution of information and data regarding cigars by means of a global computer network, whereas "retail store services and sales of cigars and accessories by means of a global computer network" are registrable in Class #35.

After the mark is registered in the U.S., it is important to give notice of this fact by placing the registered trademark symbol, "®", adjacent to the mark. Prior to registration, it is also advisable to use the symbols, "TM" (for trademarks) and "SM" (for service marks).

The chief advantages of a federal registration include:

1.   "Constructive Notice" nationwide of the registrant's claim to owner ship of the mark. This basically eliminates the good faith defense of an infringer who claims to have lacked actual knowledge of the registered mark.
2.   Registration is also evidence of (a) the validity of the registration; (b) the registrant's ownership of the mark; and (c) the registrant's exclusive right to use the mark in com- merce in connection with the goods or services.
3.   Registration also entitles the registrant to (a) file a lawsuit for infringement of the mark in Federal Court; (b) prevent importa- tion of goods bearing an infringing mark; and (c) use the registration as a basis for registering the same mark in certain foreign countries.

Trademark registrations are valid for 10 years subject to certain use and filing requirements, and are renewable every 10 years, also subject to continued use and renewal filing requirements.

If your product is distributed internationally, then you must, by and large, register your mark(s) in each country where you plan to do business or are doing business. Is this expensive? Yes! On the other hand, the alternative is the potential loss of the ability to sell your product in those countries where a third party has filed a prior application for your mark(s). Therefore, foreign trademark protection is typically obtained on a country-by-country basis. Unlike the U.S., however, trademark rights in many foreign countries are obtained by registration rather than use. This further necessitates the importance of filing for marks in foreign countries as soon as possible.

One notable alternative to the typical practice of registering trademarks on a country-by-country basis is the new (European) Community Trade Mark Application which has been available since January 1, 1996 for the filing of applications. In this regard, all applications filed between January 1, 1996 and April 1, 1996, will bear the first available filing date of April 1, 1996. By obtaining a Community wide trademark registration, an owner of a U.S. registered trademark, for example, can potentially save both time and money otherwise invested in registering a mark in each separate European country and can thus hopefully attain maximum launch angle for its trademarks in overseas markets at a minimum of cost.

Whether you are selling products or services, it is very important to be aware of your trademark and/or service mark and their value. In a competitive business environment, the potential for economic loss is tremendous if trademark rights are not acquired, evaluated, protected and maximized. While this article does not portend to cover all the intricacies of trademark law, hopefully it has helped to shed some light on this area of the law which is of paramount importance to the business owner.