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January 4th, 2017
Ten Resolutions for a Happy and Healthy Trademark Portfolio
Identify your Marks. Look at the trademarks, service marks, slogans, logos and other source identifiers ("Marks") you currently use in your business. Even colors, textures, sounds and smells can sometimes serve to identify products and services. Protection and enforcement start with knowing what is important to your business.
Consider registering your Marks. While trademark rights in the US are created through use and not registration, there are benefits to federally registering your Marks. Be aware that there are two different registers in the US - Principal and Supplemental. Even if your mark is initially rejected for registration on the Principal Register as descriptive you can sometimes obtain a Supplemental Registration which also has benefits.
Vet new Marks before you fall in love with them. A "knock-out" search of registered trademarks in the U.S. Patent and Trademark Office will identify any existing third party registrations. Once you narrow down your choices, a full search will identify any rights existing through unregistered uses before you invest substantial time and money. It is better to know before committing.
Make sure your Marks are being used correctly. They should be offset in some manner, such as in capital letters, boldface, italics or with quotation marks. Marks are proper adjectives and should be used that way and followed by "brand" or a generic term — such as ACME Brand or ACME fly swatters. Train your employees on the proper ways to use your Marks. If you own registrations make sure you are using the ® — and if you do not own a registration make sure you are not using an ®. You can use "tm" on unregistered Marks. While "tm" has no legal significance it does act as a deterrent and conveys the message that you take your rights seriously. Incorrect use of Marks can lead to loss of rights.
Review specimens of use. For Marks that are registered or marks that you want to register, review the tangible uses, such as labels, tags, websites and brochures. The U.S. Trademark Office has very clear rules about appropriate specimens which prove use and support registrations. Marks that are used to identify services often create special challenges relating to specimens. Make sure you have acceptable specimens of use for when you need them.
- Consider who is actually making use of your marks. If the owner of a Mark is not the entity actually using it, make sure licenses (with appropriate quality controls) are in place. Improper licensing or use of Marks can lead to loss of rights.
Record ownership changes. If you have acquired rights in any trademark registrations, make sure the assignments are in writing and recorded in the US Patent and Trademark Office.
Check existing registrations. Confirm that they cover all the goods and services on which your Marks are used. If you have expanded use to different goods and services, they may not be covered. Consider filing new applications to register your Mark for these expanded goods and services. Similarly, identify any goods or services for which your Marks no longer are used— you may need to remove these before a mark is renewed or a continuing use affidavit is filed.
Consider filing applications for new Marks you intend to use. US trademark law permits the filing of applications for Marks that have not yet been used, as long as such intent is in good faith and documented. Proof of good faith intent-to-use is more than just having an idea for a Mark and must exist at the time of filing a trademark application based on an intent-to-use. The creation of sample products or of business plans and similar documents that specifically identify the Mark and proposed goods or services may serve as proof of intent-to-use a Mark. You will need this proof in the event your Mark is challenged.
- Police your Marks and enforce your rights when necessary. Monitor Marks continuously for infringement and misuse. Use watching services and encourage your employees to help identify new trademark applications you may want to challenge and potential infringements against which you should take action to preserve your rights.
If you have any questions about trademark or other intellectual property matters, please contact Donna Tobin at (212) 705 4878 or firstname.lastname@example.org, Catherine Farrelly at (212) 826 5579 or email@example.com, or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.
Other Intellectual Property Law Alerts
Federal Appeals Court Weakens DMCA Safe Harbor Protection for Moderated Online Content
If you're an online publisher or other internet service provider ("ISP") that relies on moderators to police or curate user-generated comments or other content, your risk of liability for copyright infringement just increased.
May 2 2017
Supreme Court Supports Copyright Protection for Fashion and Industrial Designs
On March 22, 2017, the Supreme Court ruled in Star Athletica v. Varsity Brands that copyright law can protect designs on cheerleading uniforms.
March 23 2017
Does IP Law Protect Cake and Pastry Designs?
A chef who created a cake for President Obama's inauguration in 2013 recently tweeted a photograph showing two cakes. According to the chef, one was created for the Obama inauguration and the other was for an inaugural ball for President Trump. The Trump cake baker apparently admitted copying the Obama cake design (and stated the proceeds would be donated to a charity). So among the many legal questions raised by the new Trump administration, there lies an interesting IP question: can a baker, chef or restaurateur use intellectual property law to protect a cake or pastry design?
February 3 2017