How Much Use Equals “Use”? Decoding Common Specimen Refusals issued by the USPTO

Filing a trademark example of use in the USA?  You think, piece of cake.  At this point you have jumped through the application hoops, chosen and narrowed your classes of goods and services appropriately and are ready to get the coveted “circle R.”  You jump on your website, see the mark clearly used on the first page, hit “print,” and send it to the USPTO.

Except…

Wait, how can use not be considered “use”?  As it turns out, simply displaying a mark is often not enough.  Below are some tips for decoding three common specimen rejections issued by the USPTO and finding a suitable example of use. Continue reading

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.

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

Brexit & Your Trade Marks – Some Practical Questions Answered (Guest Post from UK Firm HGF)

We found this update from the UK firm HGF ( www.hgf.com ) helpful, and thought you might, too — so we asked permission to re-post it here.  Enjoy!  P.S. Since we’re lawyers, we have to mention that HGF is not affiliated with Drinker Biddle & Reath LLP, and the views expressed in this post are those of HGF, and not those of Drinker Biddle & Reath LLP or its clients.– DBRanding® Blog Editors

You will no doubt have received many updates from IP law firms discussing the potentially new landscape for IP rights in the UK and EU in the longer term. Some are long, some short, some academic, but maybe not all practical.

The following briefing answers some of the more practical questions and concerns around managing your trade mark portfolio in light of Brexit. With change comes opportunity, and we at HGF are here to help you maximise that opportunity. We do not claim to know all that will transpire in the next few years come Brexit, no one does, but we hope these initial practical pointers below will help you along the way.

As a European firm of intellectual property specialists with locations in both the UK and mainland Europe, HGF will continue to offer a fully integrated team of professionals in the EU covering not only trade marks, but patents, designs, contentious and non-contentious IP law. 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

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

Continue reading

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:

Continue reading

Top Twelve Tips for Avoiding the Foreign Filing Deadline Crunch

Our corner of the IP world is chock-full of minutiae – powers of attorney, legalized declarations of intent to use, merger certificates, you name it.  So how do we manage all those details and still meet dozens of filing deadlines every week?

Very carefully.

Seriously, here are a few tricks we use to tackle foreign trademark filing and renewal requirements. These tactics help us meet deadlines with time to spare, and without having to go back to our clients multiple times to request additional documents. We’re all about efficiency!

Continue reading