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

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.

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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!

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!

 

What’s In a (Corporate) Name? (And How Can I Appeal Rejections?)

It happens to even the most diligent companies.  You file to register your corporate name in a state where you’re seeking to do business, and before the ink has even dried on the application, you receive notice that your application has been rejected because your proposed name is allegedly too similar to the registered business name of a third party in the state.

You’re distraught – perhaps you had even performed a trademark search to clear the name, and that search didn’t reveal evidence of any use of conflicting names in the marketplace. This was supposed to be a breeze, and a delay could present serious business interruption costs.  How can this happen and what can you do?

The bad news first – sometimes, conflicts like this are unavoidable.  States’ practices vary as to how frequently they remove old or inactive corporate name registrations from their books, meaning your application could be blocked by a company that’s no longer doing any meaningful business in the state, or perhaps never was.  The state may offer little information about the refusal grounds or the blocking party (sometimes, it won’t even issue a written letter) – so obtaining something substantive is often the first step.

The good news – in many (if not most) states, there are formal or informal processes in place to appeal the refusal.  One potential means of appealing is by arguing that no confusion is likely to arise between the parties’ uses of their respective names.  The factors in making that determination often mirror those applied in trademark law – for instance, differences in the names, differences in the businesses, geographic proximity of the parties, etc. – but not always.  Usually, the governing state statute will be posted on the Secretary of State’s website, so you can see what the factors are.

Another potential option is obtaining the consent of the blocking party.  Many states will withdraw refusals if you submit a consent – but be warned, this can be risky.  The blocking party may demand money in exchange for its consent.  And if you have already been using the name, the blocking party may sue you for infringement.

Often, the best way to evaluate your potential options is to call the Secretary of State’s office.  You may be told that the office cannot provide legal advice, but usually you can learn at least what options are available and what the relevant laws might be.  Then, if the path forward isn’t clear, a lawyer or third-party service provider may be able to help.

 

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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Give Your Brand Some Love

When it comes to trademarks, the phrase “use it or lose it” is fitting.

If a trademark is used properly, your rights in the mark can last forever.  Fun fact:  The oldest registered trademark in the USA is more than 130 years old, according to the U.S. Patent and Trademark Office (meaning it was registered in 1884)!

Other trademarks haven’t fared so well.  For example, the mark DRY ICE used to function as a brand – meaning it distinguished a particular product from those sold by other businesses.  Over time, however, consumers started using this mark incorrectly, and eventually understood it to be the generic name of the product itself rather than the source-indicating brand (i.e., all mist produced by solid carbon dioxide is now called “dry ice”).  As a result, everyone – not just the trademark owner – can now use this mark to refer to the product.

So, how do you use a trademark “properly” to avoid losing these important rights?  Let’s face it:  You’re in a long-term relationship with your brand, so it’s important to give it a little love.  The key is remembering that trademarks are special.  What we mean is that trademarks are different from ordinary words, so they should be treated as such.  The more a trademark owner can do to make its mark stand out from the words around it, the stronger that mark will be.

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