What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application? Isn’t that tantamount to driving without a seat belt? Hear us out.
Our followers know that we get a little giddy at the prospect of registering trademarks. It’s almost as much fun as deep-fried Twinkies! (Um, make that “Twinkies® brand sponge cakes.”) So why are we posting about reasons NOT to register your mark? Well, although we love global brands, you may sometimes be better off skipping or delaying those new applications. Consider, for example, the following:
- How long will you continue to use the brand? If you will only use the mark for a short time, or in a limited geographical area, maybe it’s not worth spending the money on registration. You might even stop using the brand before the application matures to registration!
- Is your industry brand-focused? In some industries, brands can be (gasp!) a little less important. If your competitors don’t tend to copy your brand names, consider applying to register only your most important brand names.
- Might the Trademark Office consider the mark descriptive? If you’re at risk of a refusal to register the mark on descriptiveness grounds, you might refrain from applying, or wait until after you have used the mark for five years.
- Is there a crowded field of similar marks? If you’re not keen on trying to persuade the Trademark Office to withdraw a refusal to register your mark on the ground of confusion with five prior third-party registrations (ugh), maybe your resources would be better spent on something other than a new application…like finding a new brand?
- Is there a compelling reason to register the mark now? In some cases, if you’ve been using an unregistered brand for a while, maybe there’s no need to disrupt the status quo, particularly if the brand isn’t especially valuable or distinctive, you’re facing serious registrability hurdles, and there’s no infringement you need to stamp out. Why call attention to yourself and invite oppositions when no confusion has arisen in the real-world marketplace?
Of course, the above considerations may not apply in every case. If a brand’s importance is increasing, you’re entering new territories, or you have infringement concerns, it’s often a good idea to conduct searches and file applications. Just wanted to share some (fat-free) food for thought before you rush into filing globally!
US trademark aficionados know that US registrations depicting logos in black and white allow the trademark owner to display the registered mark in any color. Filing in black and white is often a good way to achieve broader protection in the States, and it helps avoid your having to file a new application if you change the color of your logo in the future. The next time you want to protect your logo outside the USA, however, pause before you send that email to local counsel or submit your Madrid Protocol application depicting the logo in black and white. It’s not safe to assume that a black-and-white registration outside the USA confers “universal” protection for a mark displayed in any color.
To elaborate: counsel in a number of jurisdictions have informed us that black-and-white registrations may not protect marks displayed in any color. We’ve heard this from the EU, Kazakhstan, and Thailand, among other places – though you will of course want to check this with your own local counsel, since this is a fact-specific issue. Worse yet, black-and-white registrations outside the USA may be subject to attack on non-use grounds if the trademark isn’t used in black and white. (How often does that happen?!)
We haven’t run across a treatise or other resource that drills down to this level of trademark nerddom, so this might be a good topic to add to the next edition of the Country Guides (accessible to members of the International Trademark Association). In the meantime – now you’re equipped to ask some more pre-filing questions, to help ensure that your future logo applications will achieve maximum protection.
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.
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:
- 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?
- Do you get especially excited when you see your brands outside your home country?
- 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?
- Do family members also ask you “Why was Company X able to register that mark? Isn’t that merely descriptive?”
- When you like someone’s clothing, do you ask “Who makes that?” and not “Where did you buy that?”
- 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?
- Do you clip “look for” or anti-genericide advertising from publications you read at home, so you can show them to the marketing team?
- Do you use the Trademark Office’s web site to look up brands you encountered on your personal shopping trips?
- Does your phone contain more photos of Trademark Office specimens than photos of loved ones?
- 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!
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|
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?
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!
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.