This past weekend, the Brand Activation Association (BAA), a division of the Association of National Advertisers (ANA), held its 38th Annual Marketing Law Conference in Chicago, Illinois. The author, along with two other members of Drinker Biddle’s branding team, attended the conference, which is widely regarded as one of the top conferences on marketing and advertising law, with deep practical legal content. The conference was co-chaired by legal counsel from Coca-Cola, Wells Fargo, and Twitter, and speakers included representatives from Airbnb, American Express, Buzzfeed, Expedia, Facebook, Intel, Lyft, MasterCard, McDonalds, Procter & Gamble, VISA, AT&T, WPP, Mondelez, Sears and at least 30 other companies. Continue reading
I’ll start this post by acknowledging the misleading title – rarely, if ever, does a federal trademark applicant independently decide to register its mark on the Supplemental Register in the United States. Whereas registration on the Principal Register is the “gold standard” for federal trademark applicants, the Supplemental Register offers a “second best” kind of registration, which provides some, but not a full complement, of benefits. Continue reading
There are refusals, and then there are refusals, and a “likelihood of confusion” refusal (also called a “Section 2(d)” refusal in the US) is certainly of the latter variety. But most times you don’t need to be an expert navigator to traverse these choppy waters and successfully sail your application through to registration. All it takes is a little bit of “pathfinding” (investigating) on your part, and “charting a course” (developing a strategic approach) for moving forward.
And then I ran out of explorer metaphors.
As consolation, here are some thoughts about how to approach and respond to these kinds of refusals, which are among the most daunting. Some, but not all, of the tips below apply equally to “likelihood of confusion” refusals encountered in the USA and in trademark offices abroad.
It happens to even the most diligent companies. You file to register your corporate name in a state where you’re seeking to do business, and before the ink has even dried on the application, you receive notice that your application has been rejected because your proposed name is allegedly too similar to the registered business name of a third party in the state.
You’re distraught – perhaps you had even performed a trademark search to clear the name, and that search didn’t reveal evidence of any use of conflicting names in the marketplace. This was supposed to be a breeze, and a delay could present serious business interruption costs. How can this happen and what can you do?
The bad news first – sometimes, conflicts like this are unavoidable. States’ practices vary as to how frequently they remove old or inactive corporate name registrations from their books, meaning your application could be blocked by a company that’s no longer doing any meaningful business in the state, or perhaps never was. The state may offer little information about the refusal grounds or the blocking party (sometimes, it won’t even issue a written letter) – so obtaining something substantive is often the first step.
The good news – in many (if not most) states, there are formal or informal processes in place to appeal the refusal. One potential means of appealing is by arguing that no confusion is likely to arise between the parties’ uses of their respective names. The factors in making that determination often mirror those applied in trademark law – for instance, differences in the names, differences in the businesses, geographic proximity of the parties, etc. – but not always. Usually, the governing state statute will be posted on the Secretary of State’s website, so you can see what the factors are.
Another potential option is obtaining the consent of the blocking party. Many states will withdraw refusals if you submit a consent – but be warned, this can be risky. The blocking party may demand money in exchange for its consent. And if you have already been using the name, the blocking party may sue you for infringement.
Often, the best way to evaluate your potential options is to call the Secretary of State’s office. You may be told that the office cannot provide legal advice, but usually you can learn at least what options are available and what the relevant laws might be. Then, if the path forward isn’t clear, a lawyer or third-party service provider may be able to help.
So you’ve protected your trademark in the USA – nice work! But you have longer-term aspirations to take your business abroad. What are some things you should be thinking about now, or actions you should be taking?
First, think about your long term brand goals. Once your goals are clear, take steps to understand the costs of global protection, and make efficient tradeoffs between those costs and maximizing protection. Continue reading
It was a mere 43 years ago, in 1972, when Steely Dan first mused “times are hard/you’re afraid to pay the fee/so you find yourself somebody/who can do the job for free.” The “somebody” in Steely Dan’s hit song, appropriately titled “Dirty Work,” was almost certainly not a reference to the U.S. Patent and Trademark Office (in fact, it likely had a more subtle, less appropriate meaning), but the reference could apply nonetheless. How does one let the PTO do their trademark enforcement “dirty work? By filing a letter of protest, of course.