Category - "Branding"

What to Know (and Ask!) When Opposing a Foreign Trademark Application

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It’s a typical afternoon in the office.  You’re taking a look at the watch notices your trademark watching service has recently forwarded for your review – when all of a sudden, you come across a third-party application filed outside the USA for a mark that looks an awful lot like one of your brands.

So, what do you do?

Time to get in touch with local counsel to figure out whether it’s advisable – or even possible – to challenge the registration of this application in their country.

Below, we list some of our favorite tricks for quickly and efficiently getting all the information needed to determine next steps and avoid surprises.  (Pro-tip:  Drop all your questions for counsel into a single email when you have a looming opposition deadline and time is of the essence!)

  1. The very first step is to make sure counsel doesn’t have any conflicts helping you out – this is an important one!
  1. Worried about deadlines? Confirm with counsel that the opposition deadline is the date listed on the watch notice (beware – they don’t always match!), and ask if extensions are available.
  1. When asking about estimated costs, we like to know the “worst case scenario” – that is, the total fees and expenses when dealing with an applicant who aggressively contests the opposition.  Knowing this information up front can help to avoid some unpleasant billing surprises!
  1. Though you’ll want to understand your chances of succeeding in any opposition, it’s a good idea to get the whole story.  Could this applicant turn around and challenge the registration of your brands in this or another country?  Be sure to discuss the risks of opposing with counsel.
  1. Immediately ask whether a Power of Attorney or other documentation will be required.  If you decide to oppose at the last minute, you’ll already have the document in hand and can simply sign and return it to counsel.  If you’re told legalized documents are needed, consider asking whether PDF copies will suffice to meet the deadline.

Finally, don’t forget to give counsel a head start – in addition to forwarding the watch notice you spotted, let them know about the relevant applications and registrations you own and any history you might have with the applicant.

Taking advantage of these tips and tricks will help you make the most informed decision possible going forward.  And the sooner you can deal with a potential infringer, the better!

Are You Brand Obsessed?

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Are you one of those trademark professionals who can’t shed your “Brand Police” identity no matter where you are or what you’re doing?  Take this quiz to assess whether you are truly Brand Obsessed:

  1. When you’re on vacation, do you make detours to out-of-the-way shops to find out if they carry the brands you work with?
  2. Do you get especially excited when you see your brands outside your home country?
  3. Have you talked about trademark matters so much that family members now ask you why a store’s sign shows a “TM” notice rather than an encircled-R notice?
  4. Do family members also ask you “Why was Company X able to register that mark?  Isn’t that merely descriptive?”
  5. When you like someone’s clothing, do you ask “Who makes that?” and not “Where did you buy that?”
  6. Do you often try to identify the source of others’ handbags, shoes and wallets by looking at their shape, material and hardware, just because you think it’s fun?
  7. Do you clip “look for” or anti-genericide advertising from publications you read at home, so you can show them to the marketing team?
  8. Do you use the Trademark Office’s web site to look up brands you encountered on your personal shopping trips?
  9. Does your phone contain more photos of Trademark Office specimens than photos of loved ones?
  10. Does your phone contain more photos of potential infringement than photos of your dog or cat?

If you said “Yes” to 5 or more of the above, it’s confirmed… you are indeed Brand Obsessed.   Welcome to the ranks!

 

Review Your Portfolio Every Which Way

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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:

Country Name Trademark Name Class Trademark Status Application Number Filing Date Publication Date Registration Number Registration Date Next Renewal Date
Australia DRINKER BIDDLE 45 Pending 123456 10/30/15
Benelux DRINKER BIDDLE 45 Registered 789101112 10/30/15 789101112 10/30/15 10/30/25

Continue reading “Review Your Portfolio Every Which Way”

Give Your Brand Some Love

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When it comes to trademarks, the phrase “use it or lose it” is fitting.

If a trademark is used properly, your rights in the mark can last forever.  Fun fact:  The oldest registered trademark in the USA is more than 130 years old, according to the U.S. Patent and Trademark Office (meaning it was registered in 1884)!

Other trademarks haven’t fared so well.  For example, the mark DRY ICE used to function as a brand – meaning it distinguished a particular product from those sold by other businesses.  Over time, however, consumers started using this mark incorrectly, and eventually understood it to be the generic name of the product itself rather than the source-indicating brand (i.e., all mist produced by solid carbon dioxide is now called “dry ice”).  As a result, everyone – not just the trademark owner – can now use this mark to refer to the product.

So, how do you use a trademark “properly” to avoid losing these important rights?  Let’s face it:  You’re in a long-term relationship with your brand, so it’s important to give it a little love.  The key is remembering that trademarks are special.  What we mean is that trademarks are different from ordinary words, so they should be treated as such.  The more a trademark owner can do to make its mark stand out from the words around it, the stronger that mark will be.

Continue reading “Give Your Brand Some Love”

INTA 2016 Trends: A Bigger Platform and A Changing Role for Trademark Lawyers

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More than 10,000 trademark attorneys from around the world celebrated the annual meeting of the International Trademark Association (INTA) this week by descending on Orlando like a flock of migrating birds.

It is quite literally the largest gathering of IP lawyers to be found anywhere, and for more than a century this meeting has served as a remarkable assemblage of thought leaders, talented practitioners, and representatives from the biggest and most important companies on the planet. After several days of meetings where we network and discuss the‎ hottest topics in branding, we have all come away with deep thoughts about where the law and practice of trademarks is heading in the years to come.

This year, some key trends we identified from the front lines provide a glimpse of a new path for trademark law, brand managers and trademark lawyers:

Continue reading “INTA 2016 Trends: A Bigger Platform and A Changing Role for Trademark Lawyers”

Top Twelve Tips for Avoiding the Foreign Filing Deadline Crunch

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Our corner of the IP world is chock-full of minutiae – powers of attorney, legalized declarations of intent to use, merger certificates, you name it.  So how do we manage all those details and still meet dozens of filing deadlines every week?

Very carefully.

Seriously, here are a few tricks we use to tackle foreign trademark filing and renewal requirements. These tactics help us meet deadlines with time to spare, and without having to go back to our clients multiple times to request additional documents. We’re all about efficiency!

Continue reading “Top Twelve Tips for Avoiding the Foreign Filing Deadline Crunch”

Global Brand Protection – A 50,000 Foot View

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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 “Global Brand Protection – A 50,000 Foot View”