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!

 

What’s In a (Corporate) Name? (And How Can I Appeal Rejections?)

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It happens to even the most diligent companies.  You file to register your corporate name in a state where you’re seeking to do business, and before the ink has even dried on the application, you receive notice that your application has been rejected because your proposed name is allegedly too similar to the registered business name of a third party in the state.

You’re distraught – perhaps you had even performed a trademark search to clear the name, and that search didn’t reveal evidence of any use of conflicting names in the marketplace. This was supposed to be a breeze, and a delay could present serious business interruption costs.  How can this happen and what can you do?

The bad news first – sometimes, conflicts like this are unavoidable.  States’ practices vary as to how frequently they remove old or inactive corporate name registrations from their books, meaning your application could be blocked by a company that’s no longer doing any meaningful business in the state, or perhaps never was.  The state may offer little information about the refusal grounds or the blocking party (sometimes, it won’t even issue a written letter) – so obtaining something substantive is often the first step.

The good news – in many (if not most) states, there are formal or informal processes in place to appeal the refusal.  One potential means of appealing is by arguing that no confusion is likely to arise between the parties’ uses of their respective names.  The factors in making that determination often mirror those applied in trademark law – for instance, differences in the names, differences in the businesses, geographic proximity of the parties, etc. – but not always.  Usually, the governing state statute will be posted on the Secretary of State’s website, so you can see what the factors are.

Another potential option is obtaining the consent of the blocking party.  Many states will withdraw refusals if you submit a consent – but be warned, this can be risky.  The blocking party may demand money in exchange for its consent.  And if you have already been using the name, the blocking party may sue you for infringement.

Often, the best way to evaluate your potential options is to call the Secretary of State’s office.  You may be told that the office cannot provide legal advice, but usually you can learn at least what options are available and what the relevant laws might be.  Then, if the path forward isn’t clear, a lawyer or third-party service provider may be able to help.

 

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”

Protect Your Brand via Copyright

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Brand owners may be able to use copyright law, in addition to trademark law, to better protect their brands.  “Hey, wait a minute,” you say.  “I thought this was a trademark blog!”  Well, it’s our job to make sure every aspect of our clients’ brands is protected in the best way possible—even if that means venturing into the world of copyright law (and patent law . . . but that’s for another post).

Copyright law protects original works, such as writings, pictures and works of art, which have been expressed in a tangible way.  Trademark law, on the other hand, protects words, phrases, symbols and designs that identify and distinguish the source of products and services.

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Our Second (Sort of) Secret Weapon: Time-of-Filing Trademark Watching Services

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You might remember from Tore DeBella’s post that we just love letters of protest . They can delay or even avoid the need to file formal opposition proceedings in the United States Patent and Trademark Office. But wait — how do you learn about conflicting applications *before* they’re published for opposition purposes? Many watching services don’t notify you of conflicting applications until *after* the application has been published. That’s almost always too late to get your letter of protest granted.

Continue reading “Our Second (Sort of) Secret Weapon: Time-of-Filing Trademark Watching Services”

Our (Sort Of) Secret Weapon: Letters of Protest

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It was a mere 43 years ago, in 1972, when Steely Dan first mused “times are hard/you’re afraid to pay the fee/so you find yourself somebody/who can do the job for free.” The “somebody” in Steely Dan’s hit song, appropriately titled “Dirty Work,” was almost certainly not a reference to the U.S. Patent and Trademark Office (in fact, it likely had a more subtle, less appropriate meaning), but the reference could apply nonetheless. How does one let the PTO do their trademark enforcement “dirty work? By filing a letter of protest, of course.

Continue reading “Our (Sort Of) Secret Weapon: Letters of Protest”