Posts in Trademark Basics

How to Keep Your Trademarks Forever

Trademarks must be continuously used to be enforceable. If you stop using them, they are lost. This also means you should have evidence to prove use of your trademark. If your use is challenged, you will have to prove that you’ve been using your trademark, and you need the correct evidence. This just happened to McDonalds in Europe. Even though they were using the BIG MAC trademark, they didn’t have the correct evidence to prove that they had continuously used that trademark for the previous five years, and they lost their European registration.  A truly shocking result.

Examining Recent USPTO Programs to Improve the Trademark Register

While all eyes are on China and how it plans to tackle bad faith infringers, the United States Patent and Trademark Office (USPTO) also is cleaning house, implementing stricter rules for acquiring and maintaining trademark registrations. Unlike other countries, the U.S. is a “first to use” country, not “first to register.” This means, generally speaking and with some exceptions, you acquire ownership by being the first to use a trademark, not the first to register. You acquire these automatic common law rights through use, not registration. Why register then? Aside from being able to use that nifty registration symbol and obtain additional remedies in an infringement suit, you also expand your trademark rights nationally. Suddenly, with a registration in hand, your common law rights in, say, California and Nevada expand presumptively (and over time conclusively) to all 50 states. This is why registrations are so valuable, and this is why the USPTO’s initiatives to remove fraudulently obtained and dead marks have such a significant impact on brand conscious clients. Over the last two years, the USPTO has launched several pilot programs and initiatives.

Taking on on Trademark Trolls and Frivolous Marks, Trademark Watch Dawgs Wades Into Divisive Waters

While readers of this website will be well aware of the damaging impact of “patent troll” rhetoric that has reached the highest levels of American political discourse, many players in the trademark space have been shining a light on the issue of “trademark trolls” in recent years. Trademark trolls can take several different forms, according to a December 2015 article published in the INTA Bulletin. Generally, a troll will register a trademark, often viewed as a frivolous mark by others in the industry, and then demand licensing payment, threaten litigation or issue serial takedowns on e-commerce platforms through assertion of the mark. These can include companies that file for domestic trademarks for a mark owned by a foreign company that hasn’t yet entered that market or entities, including individuals, who claim trademark use and registration to threaten infringement or issue takedowns against other entities, even when their use of the mark is in unrelated areas. Last spring, the word “troll” was thrown around once or twice to describe Faleena Hopkins, a romance novel writer who was asserting her trademark rights to the use of the word “Cocky” against other writers using that word in their book titles. Last June, changes to Canadian trademark laws that shifted requirements for trademark registration from first-to-use to first-to-file had sparked some fears that trademark trolling could result.

Tips for Protecting Cannabis Trademarks

In most industries, federal trademark registration is seen as an attractive form of protection, because federal registration converts what would normally be localized common law trademark rights into national rights covering all 50 states. However, businesses in which the products or services involve the manufacture, distribution or consumption of cannabis—aka “plant-touching” businesses—face an uphill battle seeking to build and protect their brands. This is because all “plant-touching” products and services are still considered illegal at the federal level under the Controlled Substances Act (CSA), which prohibits, among other things, manufacturing, distributing, dispensing or possessing certain controlled substances, including cannabis and cannabis-based preparations, and makes it unlawful to sell drug paraphernalia. Accordingly, the USPTO’s current policy is to refuse all trademark applications for cannabis-based goods and services as illegal under the CSA.

Protecting Your Brand Portfolio: Four Steps for a Proper Trademark Audit

A trademark audit is a review of a brand owner’s current trademark portfolio to ensure that the brand owner’s trademark usage and trademark holdings are sufficient, comprehensive, and accurate. Good practices requires that a trademark audit be conducted yearly, or any time an existing trademark portfolio is acquired, even if there has already been IP due diligence. The primary goal of conducting a trademark audit is to ensure that there are no deficiencies in protection.

5 Mistakes Businesses Make with Trademarks and Brands

Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining traction or being unable to stop infringers from using your brand name. Below are 5 of the most common mistakes businesses make with trademarks and what you can do to avoid them.