Kelly Horein

About Kelly Horein

Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.

Tricks to Transferring Trademarks

A trademark assignment is the transfer of ownership of a mark.  This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.

Sounds pretty straightforward, right?  Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries.  Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned.  Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name.  The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.

With Halloween just around the corner, our “treat” for you is some of our favorite “tricks” we’ve picked up along the way when managing the assignment of trademark portfolios worldwide.

  1. If you’ve got it, “haunt” it. If budget permits, ask local counsel to conduct a search to confirm that your assignment covers the entire universe of marks to be transferred in a given jurisdiction.  If any marks are inadvertently excluded from the assignment, you may have to go through the entire process all over again (and pay double the fees – boo!).
  1. Get your “pumpkins” in a row. Generally, at the outset of a global assignment project, we like to ask counsel in each relevant jurisdiction to confirm the local requirements for assigning a mark, and to prepare any documents required to record the trademark assignment in their jurisdiction’s trademark office.  Ask counsel whether the assignment documents require notarization or legalization, and whether original documents are required.  Nailing down counsel’s answers to these questions as soon as possible can save some back-and-forth when arranging for execution of the documents. 
  1. Decide “witch” way to assign your marks. Do Trademark Office records reflect the current owner’s correct address?  Maybe not – for instance, you might have been waiting for the next renewal deadline to update the owner’s address associated with a particular registration.If some of the addresses aren’t current, ask counsel if it’s possible to record multiple assignment documents – that is, one document per address.  Sometimes filing multiple documents can be quicker and less costly than first updating the addresses and later assigning the marks together in the same document. 
  1. Note any “dead-lines.” Depending on the type of transaction driving the trademark assignment, time may pass between the effective date of the assignment, and the date that documents are filed to record the assignment in a given jurisdiction.  And beware! In some jurisdictions, waiting too long to file these documents could create issues or require the payment of penalties. 
  1. Determine “how-l” and when to assign pending applications. In some jurisdictions (e.g., Egypt), it’s not possible to record the assignment of a trademark application.  In cases like these, be sure that your docket reflects the need to ask local counsel about recording an assignment for the pending application as soon as it matures to registration. 

While all these tricks may not apply to your trademark assignment, here’s hoping they make the process at least a little less scary!

Helping “Insure” Your Success: When and How to Use “Insurance” Extension Requests for US Trademark Applications

You might remember from our “How Much Use Equals ‘Use’?” post that the USPTO can be picky when it comes to accepting proof that a brand is in use (and, of course, when we say “use,” we mean that special kind of “trademark use” that the USPTO is looking for – i.e., use of a brand in connection with products or services offered in commerce).

Luckily, owners of trademark applications based on proposed use have some time to develop and submit proof of use.  After an initial 6-month period, a trademark owner may request up to five 6-month extensions before it has to file proof that its brand is in use (that’s a total of three years!).  Of course, while taking advantage of these extensions might be helpful in some cases, the faster a trademark owner can submit an acceptable example of use, the faster its application can proceed to registration.

You might be thinking:  “I’m using my brand – but am I using it in a way that meets all of the USPTO’s strict criteria?”  If you’re not sure, you could file an “insurance” extension request along with your proof of use.  An “insurance” extension request provides trademark owners with six additional months to submit new proof of use, if needed.

Example B below shows how a trademark owner can use an “insurance” extension request to its advantage:

Example A:  A US trademark application is allowed on January 1, 2017.  A trademark owner submits evidence of use on July 1, 2017.  The USPTO rejects the evidence of use on July 30, 2017.  In some cases, the application may lapse unless the trademark owner can convince the USPTO to accept the original evidence of use.

Example B:  The application is allowed on January 1, 2017.  A trademark owner submits evidence of use on July 1, 2017, and also files an “insurance” extension request.  The USPTO rejects the evidence of use on July 30, 2017.  Because it filed an “insurance” extension request, the trademark owner has until January 1, 2018 to file entirely new evidence of use.

And there you have it – one way to gain a few extra valuable months when finding and submitting proof of use.   This can make the difference between maintaining an existing application or having to start the application process all over again.

A few pointers when considering whether to file an “insurance” extension request:

Timing:  Only one “insurance” extension request may be filed per application, and it must be submitted in the same 6-month period as the proposed example of use.  Once an “insurance” extension is requested, the trademark owner cannot request any further extensions of time.  Filing an “insurance” extension request also can’t extend the time allotted for the trademark owner to file evidence of use by more than three years.

Additional Fees:  Submitting an “insurance” extension request requires additional filing fees.

Office Actions:  Filing an “insurance” extension request alone is not a sufficient response to an Office action, or rejection of evidence, from the USPTO.  It also doesn’t extend the deadline to respond to the Office action.

Not sure an “insurance” request is right for you?  Might be a good time to ask a trademark attorney to lend a hand!

The Dos and Don’ts of Letters of Protest

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.

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A Second Chance for Supplemental Register Registrations: Debunking “Myths” about Re-Filing on the Principal Register

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

Speaking the Language of the Trademark Office: Descriptions of Goods and Services

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

What to Know (and Ask!) When Opposing a Foreign Trademark Application

It’s a typical afternoon in the office.  You’re taking a look at the watch notices your trademark watching service has recently forwarded for your review – when all of a sudden, you come across a third-party application filed outside the USA for a mark that looks an awful lot like one of your brands.

So, what do you do?

Time to get in touch with local counsel to figure out whether it’s advisable – or even possible – to challenge the registration of this application in their country.

Below, we list some of our favorite tricks for quickly and efficiently getting all the information needed to determine next steps and avoid surprises.  (Pro-tip:  Drop all your questions for counsel into a single email when you have a looming opposition deadline and time is of the essence!)

  1. The very first step is to make sure counsel doesn’t have any conflicts helping you out – this is an important one!
  1. Worried about deadlines? Confirm with counsel that the opposition deadline is the date listed on the watch notice (beware – they don’t always match!), and ask if extensions are available.
  1. When asking about estimated costs, we like to know the “worst case scenario” – that is, the total fees and expenses when dealing with an applicant who aggressively contests the opposition.  Knowing this information up front can help to avoid some unpleasant billing surprises!
  1. Though you’ll want to understand your chances of succeeding in any opposition, it’s a good idea to get the whole story.  Could this applicant turn around and challenge the registration of your brands in this or another country?  Be sure to discuss the risks of opposing with counsel.
  1. Immediately ask whether a Power of Attorney or other documentation will be required.  If you decide to oppose at the last minute, you’ll already have the document in hand and can simply sign and return it to counsel.  If you’re told legalized documents are needed, consider asking whether PDF copies will suffice to meet the deadline.

Finally, don’t forget to give counsel a head start – in addition to forwarding the watch notice you spotted, let them know about the relevant applications and registrations you own and any history you might have with the applicant.

Taking advantage of these tips and tricks will help you make the most informed decision possible going forward.  And the sooner you can deal with a potential infringer, the better!

Give Your Brand Some Love

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.

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Protect Your Brand via Copyright

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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