Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

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Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada?  After reading that question, are you wondering what on earth a Madrid Protocol application is?

Let’s take a step back.  The Madrid system is a mechanism that facilitates the registration of trademarks in multiple jurisdictions around the world.  One way to file trademark applications in multiple jurisdictions is to engage local counsel in each jurisdiction of interest and work with counsel to file individual applications.  By using the Madrid system, however, a trademark owner can file a single international trademark application with the World Intellectual Property Organization (WIPO), and designate one or more jurisdictions based on just this one application.

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Be on the Lookout for Potentially Misleading Trademark Solicitations

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If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.

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New US Counsel Rule For Foreign TMs Promises Sea Change

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This month’s dramatic announcement by the U.S. Patent and Trademark Office that all foreign domiciled trademark applicants, registrants and parties to USPTO trademark proceedings will now be required to retain U.S. counsel is expected to result in the most significant practical change to domestic trademark prosecution practice in years.

For casual observers, this new rule — set to be effective on Aug. 3, 2019 — may have arrived as an unexpected, or even shocking, development. After all, with this announcement, literally tens of thousands of active, foreign-domiciled participants in the trademark processes of the USPTO will suddenly now require representation by a U.S. attorney, altering years of common practice.

Moreover, the time from announcement to implementation — only 32 days — is remarkably short for agency action of any kind, let alone a new rule set to transform the role of trademark practitioners in relation to a massive class of new clients.

Read the full article on Law360.

Mindful Management of Marks and Money (Or, Spring Cleaning: Do You Really Need to Renew That Trademark Registration?)

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This post is for those who gain pleasure from tidying up.  It’s springtime here in DC, so let’s roll up our sleeves and declutter!  Your trademark portfolio, that is.  You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.

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Tips & Tricks to Trademark Licensing

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As the proud owner of a trademark, you will encounter a number of situations that may prompt you or your company to consider granting a trademark license. Navigating the process of selecting a mark, conducting a trademark search and securing a trademark registration is no small feat. Now that you have accomplished these goals, it is important to make sure you are getting the most out of your investment of time, energy and money. A trademark license may be the most effective way to ensure that your trademark rights primarily benefit you and not a third party.

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To Claim or Not to Claim … Seniority (Guest Post from EU Firm Cleveland Scott York)

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Businesses operating in the European Union may be familiar with the concept of “seniority.”  By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries.  To illustrate when a business might claim seniority, take the following example:

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Five Reasons NOT to Register Your Trademark

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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:

  1. How long will you continue to use the brandIf 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!
  2. 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.
  3. 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.
  4. 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?
  5. 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!

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

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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

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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!