We think letters of protest are so great that we wrote our very first blog post about them.
You might remember from Tore DeBella’s post that we often file letters of protest in an attempt to persuade the U.S. Patent and Trademark Office to refuse registration of third-party trademark applications. Such letters can help delay or even avoid having to file costly oppositions – if you follow the rules, that is. Some highlights of the rules are as follows.
As we proudly admit on this blog’s “About Us” page, we’re passionate about all things brand related – and what better way to promote your brand than by running a sweepstakes or contest? At a time when we are seeing the “gamification” of every part of our lives, it should come as no surprise to see that many brands now include prizes and rewards as a significant component of their consumer outreach. Where once upon a time this was a niche explored by only a handful of large companies or fly-by-night operators, today, prize promotions are seen by many of our clients as among their most effective forms of advertising.
The concept is wonderfully simple: in a prize promotion, someone enters the promotion, and someone wins a prize. Yet this basic formulation encompasses a nearly endless number of variations, including sweepstakes, contests, games, trade promotions, sales incentives and viral engagement. Some of these variants are legal; some are not. And because we have been so passionate about sweepstakes and contests for so long, we’ve decided to explain the basics in a helpful, multi-post series on the topic. There’s a lot of nuance, and it would be impossible to cover it all in one place, but we think that once we’re done you’ll be as excited about this area of the law as we are. Continue reading “Launching a Sweepstakes or Contest – What You Need to Know (Part 1)”
Filing a trademark example of use in the USA? You think, piece of cake. At this point you have jumped through the application hoops, chosen and narrowed your classes of goods and services appropriately and are ready to get the coveted “circle R.” You jump on your website, see the mark clearly used on the first page, hit “print,” and send it to the USPTO.
Except…
Wait, how can use not be considered “use”? As it turns out, simply displaying a mark is often not enough. Below are some tips for decoding three common specimen rejections issued by the USPTO and finding a suitable example of use. Continue reading “How Much Use Equals “Use”? Decoding Common Specimen Refusals issued by the USPTO”
On January 18, the Supreme Court will conduct oral argument in Lee v. Tam, a much-discussed case presenting a First Amendment challenge to the disparagement provision of Section 2(a) of the Lanham Act. The Supreme Court is reviewing a Federal Circuit en banc decision that the disparagement provision is unconstitutional. Later that day, the American University College of Law Program on Information Justice and Intellectual Property (PIJIP) will be hosting and webcasting a live panel discussion of the Supreme Court argument.
Drinker Biddle partner Jesse Witten will participate in the panel, along with other attorneys for the parties and amici. Mr. Witten filed an amicus brief on behalf of Amanda Blackhorse and other Native American individuals who have sought cancellation of the trademark registrations of the Washington NFL team.
You are invited to attend the panel discussion or to watch the event live by webinar. The discussion will occur from 4:15 to 5:15 p.m., Eastern, on January 18 at 4300 Nebraska Ave., NW, Washington, D.C., followed by a reception. For more information, please visit the PIJIP website: http://www.pijip.org/tam/
If you have a brand, chances are you have a website. And if you have a website, chances are you have content on the website – probably some combination of text, music, photos, and graphics, including a logo that may be registered with both the USPTO and the Copyright Office. You’re probably taking steps to help ensure that infringing content isn’t posted to your website –right? In case you hadn’t heard of it, here’s an additional nifty, inexpensive way for you to help minimize liability even further: compliance with the Digital Millennium Copyright Act (DMCA). Continue reading “Minimizing Website Infringement Liability: (Re)Designate Your Digital Millennium Copyright Act Agent”
You might remember from Tore DeBella’s post on deciding between Principal and Supplemental Register registration that the Principal Register is the place to be if you’re a trademark owner. But what if the best you could do was secure a Supplemental Register, or “second best,” kind of registration?
Don’t despair!
It might be possible to find your way to the Principal Register even if your mark initially landed on the Supplemental Register. If a mark has acquired distinctiveness – or significance as a brand name – while on the Supplemental Register, it may become eligible for registration on the Principal Register. We’ve noticed a few common misconceptions about this process. Below, we do our best to debunk the “myths” we most often hear: Continue reading “A Second Chance for Supplemental Register Registrations: Debunking “Myths” about Re-Filing on the Principal Register”
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 “Review of 2016 ANA/BAA Marketing Law Conference”
We really love registering service marks. Trademarks, too. (Mentioning service marks in the title of this post better served our alliterative inclinations.) What’s even more fun is finding new ways to register trademarks as quickly and cost-effectively as possible – which frees up time and money we can use to…register more trademarks. Hooray!
In case you are of a similar mindset, here are some things to ponder while you work on a new US application.
Continue reading “Seven Strategies for Speedy Service Mark (and Trademark) Registration”
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 “The “Principal” of the Matter: Deciding Between Principal and Supplemental Register Registration”
One of the most important steps when preparing a new trademark application is creating the list of the products or services that the trademark will identify.
Think about it: This list defines the scope of your registered rights in a mark. The U.S. Patent and Trademark Office (USPTO) will use this list to determine whether your mark is confusingly similar to those in prior applications and registrations, and competitors will use it to gauge whether they can get away with adopting a similar brand. Plus, if your description of goods and services is inaccurate, your trademark registration can be exposed to cancellation. High stakes!
Ever take a look at one of these descriptions and wonder what on earth it means? “Providing temporary use of on-line non-downloadable software and applications for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}”? That’s a lot to take in all at once – so let’s break it down. Continue reading “Speaking the Language of the Trademark Office: Descriptions of Goods and Services”
