Five Reasons NOT to Register Your Trademark

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!

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.

Trademark Traps for the Unwary, Part 1: Black-and-White Registrations Abroad are a Gray Area

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.

Lee v. Tam: January 18 Panel Discussion on Supreme Court Oral Argument

On January 18, the Supreme Court will conduct oral argument in Lee v. Tam, a much-discussed case presenting a First Amendment challenge to the disparagement provision of Section 2(a) of the Lanham Act.  The Supreme Court is reviewing a Federal Circuit en banc decision that the disparagement provision is unconstitutional.  Later that day, the American University College of Law Program on Information Justice and Intellectual Property (PIJIP) will be hosting and webcasting a live panel discussion of the Supreme Court argument.

Drinker Biddle partner Jesse Witten will participate in the panel, along with other attorneys for the parties and amici.  Mr. Witten filed an amicus brief on behalf of Amanda Blackhorse and other Native American individuals who have sought cancellation of the trademark registrations of the Washington NFL team.

You are invited to attend the panel discussion or to watch the event live by webinar.  The discussion will occur from 4:15 to 5:15 p.m., Eastern, on January 18 at 4300 Nebraska Ave., NW, Washington, D.C., followed by a reception.  For more information, please visit the PIJIP website: http://www.pijip.org/tam/

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

Seven Strategies for Speedy Service Mark (and Trademark) Registration

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.

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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

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

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.

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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!