Kelly Horein

About Kelly Horein

Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.

Be on the Lookout for Potentially Misleading Trademark Solicitations

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If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.

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To Claim or Not to Claim … Seniority (Guest Post from EU Firm Cleveland Scott York)

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Businesses operating in the European Union may be familiar with the concept of “seniority.”  By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries.  To illustrate when a business might claim seniority, take the following example:

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Making Trademark Applications “Special”

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We tend to think that trademarks, in general, are pretty special.

However, a “special” trademark application has a … well … special meaning to the PTO.  The PTO normally examines applications in the order it receives them, which can take about three to four months.  That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.

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Tricks to Transferring Trademarks

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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.

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

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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.

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The Dos and Don’ts of Letters of Protest

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We think letters of protest are so great that we wrote our very first blog post about them.

You might remember from Tore DeBella’s post that we often file letters of protest in an attempt to persuade the U.S. Patent and Trademark Office to refuse registration of third-party trademark applications.  Such letters can help delay or even avoid having to file costly oppositions – if you follow the rules, that is.  Some highlights of the rules are as follows.

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A Second Chance for Supplemental Register Registrations: Debunking “Myths” about Re-Filing on the Principal Register

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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

Speaking the Language of the Trademark Office: Descriptions of Goods and Services

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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

What to Know (and Ask!) When Opposing a Foreign Trademark Application

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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!