The Seven Secrets of Security Interests

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.

1. History is good.  Does the latest security interest agreement tell the whole story?  Ideally, recitals should include details of the underlying credit agreement, security agreement, and any other relevant documents.  If your security interest is a reaffirmation or supplemental filing, mention any documents previously recorded with the USPTO.  Lay out all the details so the reader can get up to speed quickly.

2. It’s all in the details.  Make sure dates, corporate names, addresses, entity types, recordation information, and other specifics about agreements and parties referenced in the security interest are all correct.  This also goes for your schedules of IP against which the security interest is granted – mark names and application and registration numbers and dates should all be correct.

3. Keep U.S. IP separate?  If there is IP outside of the United States, and the security interest is granted in U.S. and non-U.S. IP, consider preparing separate security interest agreements for recording in different jurisdictions.  Why disclose a full list of foreign IP in a filing publicly available on the USPTO website?

4. Consider corrective IP filings or use of “DBA’s.”  You might discover ownership inaccuracies relating to the IP against which a security interest is to be granted or released.  For example, the “Inc.” that is part of the corporate name might not be listed in the ownership information on the USPTO website.  Similarly, the corporate name might contain periods or spaces that are not reflected in the owner of record for the trademarks on the schedule.  In some instances, the parties might file corrective documents with the USPTO in order to correct those errors .  In other instances, consider whether you can list the incorrect owner name as a DBA for the granting or receiving party in the USPTO form.  Either way, the parties to the security interest or release should be listed with the correct corporate name.

5. Keep your chain of title orderly.  Did you know that more than one document can be recorded with the USPTO on the same day?  If you need to record a release of one security interest before recording a new security interest, and those documents have the same effective date, you can do that!  On the online recordation form, just fill in “1” or “2” in the “Multiple assignments with the same execution date” section of the ETAS form.

6. Matching scope of grant and scope of release.  When drafting releases of security interests, the scope of the original grant should match the scope of the security interest that is being released.  Often this scope extends well beyond just the registered IP and includes intangibles like the goodwill of the business.  Copy the language from the original security interest into the release document to ensure that the release exactly matches the interest that was originally granted.

7. What to do about dead or new IP for releases of security interests?  Between the time a security interest is granted and a security interest is released, some registrations may have expired and some applications may have been abandoned, and new applications may have been filed.  Should the dead IP and the new IP be included in the release?  When it comes to the new IP, the answer is a more straightforward “no”; there’s no need to confuse chain of title by releasing a security interest that was never recorded to begin with.  But dead IP is a trickier issue.  If there isn’t a lot of dead IP, you might decide to include it in the schedule to a release – especially for any registrations that remain in the grace period or that remain listed as “active” in USPTO records even though the grace periods are long expired.

While these seven tips may not exactly be secrets, they are important to remember when it comes to preparing and recording those all-important security interests and releases!

The “Do’s” of IP Due Diligence

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.

What should you actually do during due diligence when it comes to IP? How diligent should you be?

Here are the top 5 Do’s to consider when conducting due diligence:

1. Do be thorough. Dig into the details of the IP owned by the seller. Remember that the schedule of trademarks provided by the seller might not exactly match what is listed in USPTO records. Check the owner name, mark, application and registration numbers, and application and registration dates for possible scheduling errors. It’s possible that active applications or registrations might be missing from the schedule altogether. For foreign marks, cross-check the details in publicly available databases or, if possible, subscription databases to assess accuracy of application and registration details. And don’t forget to ask the seller to identify the markets in which the marks are actually used, and since when.

2. Do check chain of title carefully. Review details of all recorded assignments, including assignor / assignee names, address information and entity types. Look out for errors that you don’t want to have to clean up later. Is the assignee’s state in the assignment abbreviated as “AR” but the USPTO records say “Arizona” instead of “Arkansas”? Is an LLC incorrectly characterized as a “Limited Liability Corporation”? Each step in the chain of title should be accurate.

3. Do check goods and services. Did the seller register the marks in the proper classes? Are the goods and services descriptions accurate? The acquired registrations won’t do you much good if they are misclassified or omit key products.

4. Do review applications and registrations for upcoming deadlines. Is there an office action with a response deadline before or shortly after closing? Are renewals or maintenance filings due soon? What about extensive paperwork requirements for foreign registrations? You’ll want to make sure that the IP portfolio that you acquire at closing matches the IP you identified during due diligence. Of course, the seller may choose not to renew registrations in the ordinary course of business – but it’s important to know that information sooner rather than later.

5. Do ensure that any necessary corrective filings are made before closing. If you find any errors in chain of title or current ownership information, the seller is often in a better position to locate old documents or obtain new ones before closing. Having the seller bear the expense of any major corrections may also be in the buyer’s best interest.

Above all, the key to due diligence is being diligent! Do as much digging as time and budget permit, and don’t be shy about asking the seller to give you additional information or make any needed filings.

One final note: if your due diligence determines that one or more of the seller’s top brands is not registered in the markets where the brand is being used, consider filing new applications as soon as your transaction closes.

Stay tuned for our upcoming post on the top 5 “Don’ts” of Due Diligence.

Five Reasons NOT to Register Your Trademark

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:

  1. How long will you continue to use the brandIf 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!
  2. 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.
  3. 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.
  4. 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?
  5. 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!

Boo, Lean, and Truncate: A Guide to Getting Your Search On

Ever wonder what dance parties and trademark searching have in common?  Neither did we.  But I can’t deny this title reminds me of a dance party.  Maybe because today is Friday (today is Friday, right?).

We often receive requests to file new applications for clients who have already cleared a potential mark through searching the PTO records and the Internet.  If done properly, a bit of self-help can cut down on legal expenses.  However, a proper preliminary search can be tricky – it involves more than just plugging the exact mark into the “basic search” feature on the PTO website here (“Quick Links” -> “TESS” -> “Basic Word Mark Search”) and hitting “submit query.”

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Trademark Traps for the Unwary, Part 1: Black-and-White Registrations Abroad are a Gray Area

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.

Lee v. Tam: January 18 Panel Discussion on Supreme Court Oral Argument

On January 18, the Supreme Court will conduct oral argument in Lee v. Tam, a much-discussed case presenting a First Amendment challenge to the disparagement provision of Section 2(a) of the Lanham Act.  The Supreme Court is reviewing a Federal Circuit en banc decision that the disparagement provision is unconstitutional.  Later that day, the American University College of Law Program on Information Justice and Intellectual Property (PIJIP) will be hosting and webcasting a live panel discussion of the Supreme Court argument.

Drinker Biddle partner Jesse Witten will participate in the panel, along with other attorneys for the parties and amici.  Mr. Witten filed an amicus brief on behalf of Amanda Blackhorse and other Native American individuals who have sought cancellation of the trademark registrations of the Washington NFL team.

You are invited to attend the panel discussion or to watch the event live by webinar.  The discussion will occur from 4:15 to 5:15 p.m., Eastern, on January 18 at 4300 Nebraska Ave., NW, Washington, D.C., followed by a reception.  For more information, please visit the PIJIP website: http://www.pijip.org/tam/

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

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

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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