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!

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

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.

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

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/

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

Are You Brand Obsessed?

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:

  1. 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?
  2. Do you get especially excited when you see your brands outside your home country?
  3. 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?
  4. Do family members also ask you “Why was Company X able to register that mark?  Isn’t that merely descriptive?”
  5. When you like someone’s clothing, do you ask “Who makes that?” and not “Where did you buy that?”
  6. 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?
  7. Do you clip “look for” or anti-genericide advertising from publications you read at home, so you can show them to the marketing team?
  8. Do you use the Trademark Office’s web site to look up brands you encountered on your personal shopping trips?
  9. Does your phone contain more photos of Trademark Office specimens than photos of loved ones?
  10. 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!

 

Review Your Portfolio Every Which Way

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
Australia DRINKER BIDDLE 45 Pending 123456 10/30/15
Benelux DRINKER BIDDLE 45 Registered 789101112 10/30/15 789101112 10/30/15 10/30/25

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INTA 2016 Trends: A Bigger Platform and A Changing Role for Trademark Lawyers

More than 10,000 trademark attorneys from around the world celebrated the annual meeting of the International Trademark Association (INTA) this week by descending on Orlando like a flock of migrating birds.

It is quite literally the largest gathering of IP lawyers to be found anywhere, and for more than a century this meeting has served as a remarkable assemblage of thought leaders, talented practitioners, and representatives from the biggest and most important companies on the planet. After several days of meetings where we network and discuss the‎ hottest topics in branding, we have all come away with deep thoughts about where the law and practice of trademarks is heading in the years to come.

This year, some key trends we identified from the front lines provide a glimpse of a new path for trademark law, brand managers and trademark lawyers:

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