In a September 6, 2018 webinar hosted by CompuMark, I presented on the very important topic of trademark watching services. Thanks to CompuMark for inviting me to speak, and to everyone who attended the webinar and asked great questions! (If all goes according to plan, future blog posts may cover some of the questions we ran out of time to answer during the webinar). For those who weren’t able to make the webinar during the live presentation, you can access a copy on CompuMark’s website (you’ll need to register on the right side of the screen).
In the webinar, I discuss strategies and tips for leveraging trademark watching services for protecting your brand. As our regular blog readers know, trademark watching services are one of our favorite topics, and we rely on them for effective – and early – trademark enforcement. In the webinar, I discuss watch-facilitated strategies like filing letters of protest. I also walk through setting up and maintaining watches, and give a window into outside counsel’s thought process when deciding whether to report watch notices to clients, and what to think about during enforcement, should the client decide to act. I touch on recent infringement trends, including the increasing filing of fraudulent specimens with US applications and the USPTO’s pilot program combatting them. With infringement on the rise globally, now is as good a time as ever for businesses to think about doubling down on brand protection.
Note: CompuMark is a trademark watching service provider to the author and other Drinker Biddle trademark lawyers. Neither the author nor Drinker Biddle was compensated for this article or the author’s participation in the September 6 webinar.
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.
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 →
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.