Rebranding Roadmap – A Checklist for Changing Brand Names and Company Names

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So you’re thinking about changing your company name, brand, or both.  We usually like to allow at least a few months to identify the new name and initiate protection.  To help you plan, here’s a high-level overview of significant steps in the process.  Happy rebranding!

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Join Us! We’re Seeking an Experienced Trademark Prosecution Associate

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Faegre Drinker is actively recruiting a trademark prosecution associate to join the Trademark, Copyright, Advertising and Media (T-CAM) Team for our thriving Intellectual Property practice. This position offers the opportunity to play a key role in growing our existing trademark, copyright, and advertising practice in our Chicago, Indianapolis, Minneapolis, Washington D.C., San Francisco or Denver offices.

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Oops! Now What? Corrective Assignments and Fixing Inadvertent Chain of Title Errors

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We’ve all been there.  Maybe we find it in reviewing the chain of title for trademarks during due diligence.  Maybe it’s something that another company filed that has nothing to do with us.  Or maybe someone on your team made a typo (yup, no one is perfect!).  But, however it happened, it’s there, in the USPTO records:  an assignment inadvertently recorded against a registration that was not actually part of the assignment; a security interest recorded against the wrong application number; or a name change was erroneously recorded as a merger.  Regardless of why or what, the bottom line is the same:  there is an error in the chain of title for the application or registration.  Oops!  Now what?  How do we get that error fixed and removed from the USPTO trademark records?

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Celebrating One Year of TCAM Today!

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In February 2020, Faegre Baker Daniels and Drinker Biddle & Reath LLP combined to form one of the nation’s 50 largest law firms.  Soon after the combination, Faegre Drinker shifted to a virtual work environment to protect our clients, colleagues and loved ones during the global COVID-19 pandemic.  We nevertheless remained committed to the success of our clients in a challenging year, and focused on serving clients with our new firm’s combined capabilities.

This month marks not only the first year of Faegre Drinker, but also the inaugural year of TCAM Today – Faegre Drinker’s blog covering all things trademark, copyright, advertising and media.  In 2020, Faegre Drinker’s team of more than 30 T-CAM professionals shared their insight on topics ranging from social media influencers to trademark trolls.

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New Trademark Fees Implemented by the United States Patent and Trademark Office

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On November 17, 2020, the USPTO enacted a rule that will adjust trademark fees and Trademark Trial and Appeal Board fees. This is the first time that trademark fees have been adjusted since 2017. In the final rule, the USPTO says that the increase in fees is intended to further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The new fees will take effect on January 2, 2021.

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Introducing TCAMToday – a Faegre Drinker℠ blog on T®ademark, ©opyright, Advertising & Media

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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!

BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office

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As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.

For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back.  Mark and Lamar’s well-documented bromance is one for the ages.  The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains.  The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.

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Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

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Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada?  After reading that question, are you wondering what on earth a Madrid Protocol application is?

Let’s take a step back.  The Madrid system is a mechanism that facilitates the registration of trademarks in multiple jurisdictions around the world.  One way to file trademark applications in multiple jurisdictions is to engage local counsel in each jurisdiction of interest and work with counsel to file individual applications.  By using the Madrid system, however, a trademark owner can file a single international trademark application with the World Intellectual Property Organization (WIPO), and designate one or more jurisdictions based on just this one application.

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It’s Perfect! Or, Perfecting Security Interests in Intellectual Property

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In our recent post, we discussed the Seven Secrets of Security Interests relevant for owners or buyers of intellectual property.  But after an IP owner grants a security interest in intellectual property, how do you make it official?

Welcome to the mysterious world known as perfection.  That’s a fancy word for filing the right documents with the correct organizations so everyone knows that the lender has that security interest in intellectual property – and to make sure that the lender has priority over other parties who might have a future interest in the IP.

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High Court TM Profit Award Standard May Be Coming

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On June 28, the U.S. Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc. et al., agreeing to weigh in on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to receive a portion of defendants’ profits.

Whether willfulness is a prerequisite to an award of defendants’ profits in trademark infringement cases is a question that has deeply divided the U.S. circuit courts. Half of the circuits have answered the question in the affirmative.[1] The other half have answered the question in the negative.[2] These latter circuits that do not require a threshold showing of willfulness merely view willfulness as one of many factors considered in fashioning an equitable remedy.

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