Jennifer Dean is a leading trademark lawyer who helps companies establish, protect and promote their brands in the United States and globally. Clients entrust her with intellectual property portfolios comprising thousands of trademark applications and registrations, relying on Jennifer’s extensive experience navigating the intricacies of international brand management. Her knowledge of clients’ industries and careful monitoring of the marketplace enables her to act swiftly to avert competitors’ efforts to launch confusingly similar brands.
Faegre Drinker Biddle & Reath LLP (Faegre Drinker) launched global operations on February 1, 2020. Faegre Drinker is the combination of Faegre Baker Daniels, an international law firm with deep roots in the Midwest, and Drinker Biddle & Reath LLP, a full-service national law firm with storied East Coast origins.
With more than 1,300 attorneys, consultants and professionals in 22 locations across the U.S., U.K. and China, Faegre Drinker is one of the nation’s 50 largest law firms based on size and projected gross revenue.
We are very excited to introduce TCAMToday, Faegre Drinker’s successor to the DB®anding Blog. Our newly expanded team of over 30 T-CAM professionals will continue to provide fresh commentary on Trademark, Copyright, Advertising and Media topics ranging from anticounterfeiting to sweepstakes and promotions. Watch this space!
We are tickled pink when we get to work with trademark registrations that issued before we were born. (We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).
But what if your old, venerable logo is due for some sprucing up? Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)
This post is for those who gain pleasure from tidying up. It’s springtime here in DC, so let’s roll up our sleeves and declutter! Your trademark portfolio, that is. You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.
What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application? Isn’t that tantamount to driving without a seat belt? Hear us out.
Our followers know that we get a little giddy at the prospect of registering trademarks. It’s almost as much fun as deep-fried Twinkies! (Um, make that “Twinkies® brand sponge cakes.”) So why are we posting about reasons NOT to register your mark? Well, although we love global brands, you may sometimes be better off skipping or delaying those new applications. Consider, for example, the following:
How long will you continue to use the brand? If you will only use the mark for a short time, or in a limited geographical area, maybe it’s not worth spending the money on registration. You might even stop using the brand before the application matures to registration!
Is your industry brand-focused? In some industries, brands can be (gasp!) a little less important. If your competitors don’t tend to copy your brand names, consider applying to register only your most important brand names.
Might the Trademark Office consider the mark descriptive? If you’re at risk of a refusal to register the mark on descriptiveness grounds, you might refrain from applying, or wait until after you have used the mark for five years.
Is there a crowded field of similar marks? If you’re not keen on trying to persuade the Trademark Office to withdraw a refusal to register your mark on the ground of confusion with five prior third-party registrations (ugh), maybe your resources would be better spent on something other than a new application…like finding a new brand?
Is there a compelling reason to register the mark now? In some cases, if you’ve been using an unregistered brand for a while, maybe there’s no need to disrupt the status quo, particularly if the brand isn’t especially valuable or distinctive, you’re facing serious registrability hurdles, and there’s no infringement you need to stamp out. Why call attention to yourself and invite oppositions when no confusion has arisen in the real-world marketplace?
Of course, the above considerations may not apply in every case. If a brand’s importance is increasing, you’re entering new territories, or you have infringement concerns, it’s often a good idea to conduct searches and file applications. Just wanted to share some (fat-free) food for thought before you rush into filing globally!
US trademark aficionados know that US registrations depicting logos in black and white allow the trademark owner to display the registered mark in any color. Filing in black and white is often a good way to achieve broader protection in the States, and it helps avoid your having to file a new application if you change the color of your logo in the future. The next time you want to protect your logo outside the USA, however, pause before you send that email to local counsel or submit your Madrid Protocol application depicting the logo in black and white. It’s not safe to assume that a black-and-white registration outside the USA confers “universal” protection for a mark displayed in any color.
To elaborate: counsel in a number of jurisdictions have informed us that black-and-white registrations may not protect marks displayed in any color. We’ve heard this from the EU, Kazakhstan, and Thailand, among other places – though you will of course want to check this with your own local counsel, since this is a fact-specific issue. Worse yet, black-and-white registrations outside the USA may be subject to attack on non-use grounds if the trademark isn’t used in black and white. (How often does that happen?!)
We haven’t run across a treatise or other resource that drills down to this level of trademark nerddom, so this might be a good topic to add to the next edition of the Country Guides (accessible to members of the International Trademark Association). In the meantime – now you’re equipped to ask some more pre-filing questions, to help ensure that your future logo applications will achieve maximum protection.
We really love registering service marks. Trademarks, too. (Mentioning service marks in the title of this post better served our alliterative inclinations.) What’s even more fun is finding new ways to register trademarks as quickly and cost-effectively as possible – which frees up time and money we can use to…register more trademarks. Hooray!
In case you are of a similar mindset, here are some things to ponder while you work on a new US application.
WARNING: major trademark nerd content to follow… only those seriously interested in quality assurance need read on!
Seriously, we’re here to share a tip that may help you spot anomalies in your trademark portfolio, thus saving money… and heartache… and priority battles… later on. Here goes: We all know that it’s important to generate and review docket reports listing upcoming filing deadlines. (We like weekly meetings for that purpose.) But it’s often a good idea to add the following to the mix: produce and review a spreadsheet that lists your active registrations and applications in alphabetical order by country, then by mark. Like this: