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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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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Updates Regarding COVID-19 Impacts on Trademark Operations at the USPTO

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Updated May 29, 2020
[Kelly Horein]

On May 27, 2020, the United States Patent and Trademark Office announced updated measures granting relief for trademark owners impacted by the COVID-19 pandemic.

The deadline extensions that the USPTO announced through previous notices will expire on May 31.

The USPTO will now provide relief on a case-by-case basis for mark owners who have missed certain deadlines as a result of the pandemic. In particular, if mark owners have failed to timely submit responses or fees in connection with Office Actions, or failed to timely meet statutory deadlines, they may file a petition to revive an application or a petition to the director, as appropriate. The petition should explain that the delay in filing or payment was due to the pandemic. For now, if such a statement is included, the USPTO will waive the fees associated with filing the petition.

If the pandemic has interfered with filings with the Trademark Trial and Appeal Board, mark owners may make a request or motion, as appropriate, for an extension or reopening of time.

We’ll continue to post updates here. If you have missed a deadline and wish to better understand the steps you can take to continue protecting your trademark rights, please feel free to contact the Faegre Drinker trademark team.

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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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Be on the Lookout for Potentially Misleading Trademark Solicitations

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If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.

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Refresh Your Logo While Keeping Your Old U.S. Trademark Registration

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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.)

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Counterfeits Got You Down? An Ex Parte (Seizure) Might Cheer You Up!

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If trademark infringement and dilution are frequent headaches for brand owners, counterfeiting – which the U.S. Trademark Act defines as use of “a spurious mark identical with, or substantially indistinguishable from, a registered mark” – is a migraine.  As a practical matter, counterfeiting in most cases renders perfunctory the task of analyzing the “likelihood of confusion factors” required in traditional infringement cases.  In counterfeit cases, the marks and goods are identical, and the counterfeit mark was applied with the intent to deceive consumers into believing that fake goods are genuine, so it’s reasonable to assume it will do exactly that.

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Making Trademark Applications “Special”

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We tend to think that trademarks, in general, are pretty special.

However, a “special” trademark application has a … well … special meaning to the PTO.  The PTO normally examines applications in the order it receives them, which can take about three to four months.  That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.

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