Tricks to Transferring Trademarks

A trademark assignment is the transfer of ownership of a mark.  This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.

Sounds pretty straightforward, right?  Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries.  Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned.  Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name.  The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.

With Halloween just around the corner, our “treat” for you is some of our favorite “tricks” we’ve picked up along the way when managing the assignment of trademark portfolios worldwide.

  1. If you’ve got it, “haunt” it. If budget permits, ask local counsel to conduct a search to confirm that your assignment covers the entire universe of marks to be transferred in a given jurisdiction.  If any marks are inadvertently excluded from the assignment, you may have to go through the entire process all over again (and pay double the fees – boo!).
  1. Get your “pumpkins” in a row. Generally, at the outset of a global assignment project, we like to ask counsel in each relevant jurisdiction to confirm the local requirements for assigning a mark, and to prepare any documents required to record the trademark assignment in their jurisdiction’s trademark office.  Ask counsel whether the assignment documents require notarization or legalization, and whether original documents are required.  Nailing down counsel’s answers to these questions as soon as possible can save some back-and-forth when arranging for execution of the documents. 
  1. Decide “witch” way to assign your marks. Do Trademark Office records reflect the current owner’s correct address?  Maybe not – for instance, you might have been waiting for the next renewal deadline to update the owner’s address associated with a particular registration.If some of the addresses aren’t current, ask counsel if it’s possible to record multiple assignment documents – that is, one document per address.  Sometimes filing multiple documents can be quicker and less costly than first updating the addresses and later assigning the marks together in the same document. 
  1. Note any “dead-lines.” Depending on the type of transaction driving the trademark assignment, time may pass between the effective date of the assignment, and the date that documents are filed to record the assignment in a given jurisdiction.  And beware! In some jurisdictions, waiting too long to file these documents could create issues or require the payment of penalties. 
  1. Determine “how-l” and when to assign pending applications. In some jurisdictions (e.g., Egypt), it’s not possible to record the assignment of a trademark application.  In cases like these, be sure that your docket reflects the need to ask local counsel about recording an assignment for the pending application as soon as it matures to registration. 

While all these tricks may not apply to your trademark assignment, here’s hoping they make the process at least a little less scary!

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.

Helping “Insure” Your Success: When and How to Use “Insurance” Extension Requests for US Trademark Applications

You might remember from our “How Much Use Equals ‘Use’?” post that the USPTO can be picky when it comes to accepting proof that a brand is in use (and, of course, when we say “use,” we mean that special kind of “trademark use” that the USPTO is looking for – i.e., use of a brand in connection with products or services offered in commerce).

Luckily, owners of trademark applications based on proposed use have some time to develop and submit proof of use.  After an initial 6-month period, a trademark owner may request up to five 6-month extensions before it has to file proof that its brand is in use (that’s a total of three years!).  Of course, while taking advantage of these extensions might be helpful in some cases, the faster a trademark owner can submit an acceptable example of use, the faster its application can proceed to registration.

You might be thinking:  “I’m using my brand – but am I using it in a way that meets all of the USPTO’s strict criteria?”  If you’re not sure, you could file an “insurance” extension request along with your proof of use.  An “insurance” extension request provides trademark owners with six additional months to submit new proof of use, if needed.

Example B below shows how a trademark owner can use an “insurance” extension request to its advantage:

Example A:  A US trademark application is allowed on January 1, 2017.  A trademark owner submits evidence of use on July 1, 2017.  The USPTO rejects the evidence of use on July 30, 2017.  In some cases, the application may lapse unless the trademark owner can convince the USPTO to accept the original evidence of use.

Example B:  The application is allowed on January 1, 2017.  A trademark owner submits evidence of use on July 1, 2017, and also files an “insurance” extension request.  The USPTO rejects the evidence of use on July 30, 2017.  Because it filed an “insurance” extension request, the trademark owner has until January 1, 2018 to file entirely new evidence of use.

And there you have it – one way to gain a few extra valuable months when finding and submitting proof of use.   This can make the difference between maintaining an existing application or having to start the application process all over again.

A few pointers when considering whether to file an “insurance” extension request:

Timing:  Only one “insurance” extension request may be filed per application, and it must be submitted in the same 6-month period as the proposed example of use.  Once an “insurance” extension is requested, the trademark owner cannot request any further extensions of time.  Filing an “insurance” extension request also can’t extend the time allotted for the trademark owner to file evidence of use by more than three years.

Additional Fees:  Submitting an “insurance” extension request requires additional filing fees.

Office Actions:  Filing an “insurance” extension request alone is not a sufficient response to an Office action, or rejection of evidence, from the USPTO.  It also doesn’t extend the deadline to respond to the Office action.

Not sure an “insurance” request is right for you?  Might be a good time to ask a trademark attorney to lend a hand!

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.

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.


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

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:

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