The recent U.S. Supreme Court decision in Iancu v. Brunetti will likely not be the last word on the subject of scandalous trademarks being granted registration. That certainly suggests there is room for further interpretation in the future, especially if Congress elects to amend the Lanham Act. Further, four Justices voiced some degree of concern about scandalous marks being granted registration.
This month’s dramatic announcement by the U.S. Patent and Trademark Office that all foreign domiciled trademark applicants, registrants and parties to USPTO trademark proceedings will now be required to retain U.S. counsel is expected to result in the most significant practical change to domestic trademark prosecution practice in years.
For casual observers, this new rule — set to be effective on Aug. 3, 2019 — may have arrived as an unexpected, or even shocking, development. After all, with this announcement, literally tens of thousands of active, foreign-domiciled participants in the trademark processes of the USPTO will suddenly now require representation by a U.S. attorney, altering years of common practice.
Moreover, the time from announcement to implementation — only 32 days — is remarkably short for agency action of any kind, let alone a new rule set to transform the role of trademark practitioners in relation to a massive class of new clients.
This post is for those who gain pleasure from tidying up. It’s springtime here in DC, so let’s roll up our sleeves and declutter! Your trademark portfolio, that is. You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.
As the proud owner of a trademark, you will encounter a number of situations that may prompt you or your company to consider granting a trademark license. Navigating the process of selecting a mark, conducting a trademark search and securing a trademark registration is no small feat. Now that you have accomplished these goals, it is important to make sure you are getting the most out of your investment of time, energy and money. A trademark license may be the most effective way to ensure that your trademark rights primarily benefit you and not a third party.
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:
Well, they’re not really secrets. But whether you’re representing the bank taking a security interest, an owner granting one, or a buyer who wants to ensure that outstanding security interests are released before a deal closes, here are a few things to keep in mind when it comes to IP security interests.
What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application? Isn’t that tantamount to driving without a seat belt? Hear us out.
Last time we talked about some important Do’s of IP due diligence. But what might the buyer want to avoid during due diligence?
Here are the top 5 Don’ts to consider:
So you’ve been asked to help acquire a company with an extensive IP portfolio. Great! Now it’s time for that mysterious task known as “due diligence.” Due diligence is intended to confirm all of the assets that a buyer will obtain in an acquisition and to resolve any discrepancies before the deal closes.
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:
- How long will you continue to use the brand? If 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!
- 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.
- 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.
- 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?
- 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!