Tore DeBella

About Tore DeBella

Tore Thomas DeBella is an associate in the firm's Intellectual Property Practice Group. Tore’s practice focuses on trademark clearance, portfolio management and enforcement, as well as information technology and data privacy/security strategy and compliance. Tore’s unique blended practice offers significant value to his clients, as he is able to counsel on both the “brand value” and “data” implications of various cutting-edge technological issues like social media, website policies and terms, keyword advertising and domain names.

Boo, Lean, and Truncate: A Guide to Getting Your Search On

Ever wonder what dance parties and trademark searching have in common?  Neither did we.  But I can’t deny this title reminds me of a dance party.  Maybe because today is Friday (today is Friday, right?).

We often receive requests to file new applications for clients who have already cleared a potential mark through searching the PTO records and the Internet.  If done properly, a bit of self-help can cut down on legal expenses.  However, a proper preliminary search can be tricky – it involves more than just plugging the exact mark into the “basic search” feature on the PTO website here (“Quick Links” -> “TESS” -> “Basic Word Mark Search”) and hitting “submit query.”

Although the PTO website isn’t my preferred search tool, when I do use it (because it’s free), I like to use the “Advanced Search” feature.  The Advanced Search is more complicated to learn, but I think it’s the best way to conduct a thorough preliminary search through the PTO website.  Although each search is different, here are some usual tricks that I employ:

  • Active Trademarks Only. I usually limit my queries to “active trademarks only” by using the search term (LIVE)[ld].  Adding this to your query will filter out inactive marks.  Inactive marks can be important in full searches, but often aren’t worth reviewing on a high-level first pass.  (By the way, when using the “Advanced Search” feature on TESS, the bracketed terms denote the search fields, while the search terms are contained in parenthesis – so (LIVE)[ld] means you’re searching the “Live/Dead” field for all “Live” marks).
  • Determine Relevant Goods Keywords and International Classes. I limit my searches to specific “International Classes” or goods/services of interest by using the search fields [IC] and/or [GS].  If you operate in a very specific field, you might spend 10-15 minutes coming up with a robust list of keywords that might be found in other applications in your field.  For instance, if you make airplanes, you might try including: (air plane airplane aircraft aerial helicopter drone flight airport airline jet propeller transport transportation)[gs].  Keep that list of search terms for future use, so you won’t have to draft a new query each time you have a new brand to explore.
  • Outsource Design Searches? Searches for marks incorporating designs can be even more complicated.  Sometimes you will want to send those to a third-party search company, but if you want to get a quick peek into whether significant obstacles exist, you can try using the [DE] field for words contained in the description of the mark, e.g. (heart or ribbon)[DE].  You can also try using the [DC] “design search code” field, but that takes a bit more effort to master.
  • Go “Big Picture” for Multiple-Word Mark Searches. If it’s a word mark you’re searching, devise a search strategy before you begin searching.  I can’t tell you how many hours this has saved me over the years.  For example, for multi-word marks – e.g. THE BEST KINGDOM IN THE LAND – it’s sometimes sufficient to search all the possible word combinations, but not search variations of the individual words.  And it’s often wise to drop the less important words (e.g. articles or prepositions) from these searches.  So, for instance, you might search (BEST and KINGDOM and LAND)[bi,ti] and (BEST and KINGDOM)[bi,ti] and (BEST and LAND)[bi,ti] and (KINGDOM and LAND)[bi,ti].  (For this specific example, I might also search variations on the word “KING” – so as to capture “KING” and “KINGSHIP” – but that’s a judgement call).
  • Cozy Up To Boolean and Truncation Operators for Single-Word Mark Searches.  If your search is for a single-word mark, you’ll certainly want to search variations of the word.  You can do this using “Boolean” and “truncation” operators available in the PTO’s advanced search feature.  For instance, a query for (*SHOE*)[bi,ti] will return results for BOAT SHOE and SHOEBOX.  A query for (B?G)[bi,ti] will return results for BIG, BUG, BOG, etc.  At the conclusion of your search, take a minute to consider what marks might hypothetically be considered similar to your mark, and make sure you’ve run queries sufficient to capture them all.

And then have a dance party.  It is Friday, after all.

Let the Games Begin – But Only After the Rules Are In Place (Sweepstakes & Promotions Series Part 2)

As we mentioned last month in our kickoff post on this topic, we are excited to dive deeper into the world of sweepstakes and promotions law.  This post explores several key elements to keep in mind when formulating the official rules and abbreviated rules for a promotion.

The main goal of the official rules in any promotion is two-fold: (a) to inform participants and the public regarding the details of the promotion, and (b) to comply with a series of federal and state laws and regulations.  Both of these goals are critical – no company wants to face either disgruntled participants or angry regulators.

The rules must be in place and finalized before the promotion begins.  If you are running a U.S.-based sweepstakes with a total prize value of over $5,000, you may also be required to register and bond the promotion with various state agencies up to thirty days before the promotion begins. Registration will require you to submit a copy of the promotion rules, so keep in mind that in those cases, the rules must be finalized at least thirty days before the beginning of the promotion.  That means the clock is ticking!  Depending on the type of promotion, other state laws and regulations may also be implicated, so be sure to check well before the beginning of the promotion. Continue reading

Launching a Sweepstakes or Contest – What You Need to Know (Part 1)

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

Review of 2016 ANA/BAA Marketing Law Conference

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

The “Principal” of the Matter: Deciding Between Principal and Supplemental Register 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

Marco v. Polo: Navigating Around “Likelihood of Confusion” Refusals

There are refusals, and then there are refusals, and a “likelihood of confusion” refusal (also called a “Section 2(d)” refusal in the US) is certainly of the latter variety.  But most times you don’t need to be an expert navigator to traverse these choppy waters and successfully sail your application through to registration.  All it takes is a little bit of “pathfinding” (investigating) on your part, and “charting a course” (developing a strategic approach) for moving forward.

And then I ran out of explorer metaphors.

As consolation, here are some thoughts about how to approach and respond to these kinds of refusals, which are among the most daunting.  Some, but not all, of the tips below apply equally to “likelihood of confusion” refusals encountered in the USA and in trademark offices abroad.

Continue reading

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

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.

 

Global Brand Protection – A 50,000 Foot View

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

Our (Sort Of) Secret Weapon: Letters of Protest

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