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
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.
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!)
- The very first step is to make sure counsel doesn’t have any conflicts helping you out – this is an important one!
- 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.
- 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!
- 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.
- 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!