New Year’s Resolutions Don’t Have to Be about Weight Loss: Why Conducting a Trademark Audit Should Be Part of Your Company’s New Year’s Resolutions

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New Year’s resolutions are often thought of as individual self-improvement goals that frequently include aspirational health and wellness, financial discipline, habit forming or breaking, and similar goals.  But these aspirational, improvement-focused goals do not need to be limited to personal goals.  In fact, the “New Year, New You” mantra applies equally to the business world.  The new year is a great time to push the reflect and reset button and to use the results of this reflection to accomplish business goals, including goals related to the company’s trademark portfolio.  Finding time in the new year to conduct reflection in the form of an in-depth review of your trademark portfolio (often referred to as a trademark audit) can be a meaningful and important exercise for a number of reasons, including ensuring there are no significant gaps in coverage or other issues associated with your trademark portfolio that could negatively impact your business, such as compliance issues with requirements and deadlines for maintaining trademark rights, chain-of-title concerns, or improper use of trademarks that could impact the company’s rights.  In addition, an audit, when performed correctly, can also provide a critical roadmap for the company for its trademark portfolio going forward.

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Important New Trademark and Copyright Laws Appear in Stimulus Package

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In a year too often filled with unforeseen developments of every kind, a final surprise for many who were not paying close attention has emerged from December’s marathon stimulus and budget negotiations.  This week, Congress included a trio of notable and hotly debated intellectual property measures in its multi-trillion-dollar spending and relief package.  These bills, if signed into law as expected, could fundamentally alter the manner in which intellectual property owners protect and enforce their rights.

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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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U.S. Parties Seeking to Register Their Marks in Canada Currently Face Increased Delays and Added Potential Bars to Registration

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O Canada. Ohhh, Canada! – Delays and Restrictions on Trademark Registrations

With the assistance of local Canadian counsel, we frequently assist U.S. parties that use their marks in Canada to pursue registrations for their marks with the Canadian Intellectual Property Office (CIPO). That process changed fairly significantly when revisions to Canada’s Trademarks Act took effect in June 2019. The most obvious changes, relating to new requirements for identifying and classifying goods and services, lengthened the registration process. Add in circumstances relating to COVID-19, and delays in Canada have become the thing of which legends are made. Indeed, CIPO is currently taking approximately two years for the initial review of an application.
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2020 Brings (Some) Clarity to Trademark Profit Awards

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Nearly a year ago, we previewed the U.S. Supreme Court’s then-upcoming decision in Romag Fasteners, Inc. v. Fossil Group, Inc.—a case set to provide some much needed clarity on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to recover defendants’ profits.

Justice Gorsuch delivered the opinion of the Court resolving the circuit split on this issue and holding that a plaintiff alleging trademark infringement under § 1125(a) of the Lanham Act is not required to prove willful infringement as a precondition to recovering lost profits. The Court reasoned that the clear and unambiguous language of the Lanham Act’s remedies provision only requires a precondition of willfulness when awarding profits for trademark dilution under § 1125(c), not trademark infringement under § 1125(a).  The Court was careful to note that willfulness, though not a precondition to awarding profits, remains an important factor a court should consider when assessing damages.  It simply is not, however, an “inflexible” threshold inquiry.

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USPTO Warns of New Email Scam

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The United States Patent and Trademark Office (USPTO) recently released a warning regarding email scams targeting owners of trademark applications and registrations.  Unfortunately, misleading notices and solicitations are nothing new for those experienced with filing applications with the USPTO.  Because filings with the USPTO are public, private companies are able to gather the contact information of trademark applicants and registrants.  They use this information to send misleading letters and emails asking brand owners for substantial fees in order to renew or maintain trademark applications and registrations.  These companies often go by names that sound like official government agencies, which increases the confusion and the likelihood that brand owners will be duped into responding to the solicitations.

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Sound Marks

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What do you think of when you hear this lion’s roar

How about these five notes?

Or these words?

Trademarks are not limited to words and designs, but can include “sensory” marks such as colors, smells and sounds. All of the above sounds are examples of trademarks: the lion’s roar is a registered trademark owned by Metro-Goldwyn-Mayer Lion Corp. for motion pictures and entertainment services, and heard at the start of MGM movies; the five notes are a registered trademark owned by Intel Corporation for computer hardware and operating system software; and the spoken words “You’ve Got Mail” is AOL’s registered trademark for providing access to a computer network.

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Tips for Transferring Trademarks in Light of COVID-19

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In 2017, we wrote about some of our favorite strategies for updating the ownership of global trademark portfolios. As we continue to support our clients during the pandemic, we’ve developed new strategies for documenting trademark ownership updates outside the U.S. Here, we share a few of these tips.

In this post, we focus on transferring — or assigning — trademark portfolios involving marks in multiple countries. Generally, the transfer of trademark rights from one entity to another must be documented with the trademark office in every country where the assignor owned marks. The requirements for recording a transfer vary by country but often involve submitting newly executed trademark assignment agreements, powers of attorney and other documents. These documents may also need to be notarized or legalized before submission.

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Trademark Trolls – A Danger to Avoid with a Re-brand

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Amidst public criticism and pressure from corporate sponsors, many well-known brands are taking a hard look at their trademarks and choosing to move in a new direction.  These changes are impacting brands in various industries from sports teams, like the currently unnamed Washington NFL team, to retailers, like Trader Joe’s.  While appeasing the call for change, an unfortunate consequence with which these brand owners must deal are trademark trolls.

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The Future of the “Generic.com” Trademark

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The basic premise that a generic term is un-registrable is, at first glance, uncontroversial. If a key purpose of a trademark is to identify a particular source of goods or services, then it stands to reason that one cannot obtain a trademark registration for the name of that very category of goods or services. For example, it’s unlikely one could register the mark “Books” for a bookstore, or “Groceries” for a supermarket—doing so would effectively grant the owner a monopoly on the use of those very terms. But what if those ostensibly generic terms were part of a website domain?

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