For Legal Professionals
There are six steps to build a valuable brand, Investigate the market place, select wisely, register with a plan, establish and monitor proper use, & enforce rights
An example of a trademark made from “Cotton Candy” shows the value of an arbitrary trademark.
Learn about the types of marks and why two of them make bad choices as a brand name or trademark.
Trademark lawyers Bill Finkelstein & Cheryl Hodgson share what makes for a good trademark. You want the mark to be memorable and distinctive.
When choosing a new trademark, it’s important to avoid terms that describe a product or service. One wants a brand name consumers will recognize and remember.
When choosing your own brand names, look to Pepsi and Apple as examples of good trademarks.
Clients often want to by pass the search process, instead relying upon the Trademark Examiner to do the job. That’s not always a good idea. Here’s why.
Establishing Trademark Use
Registration of a URL or a trademark used on a website has become common. However, there are strict rules regarding establishing trademark use. If these rules are not followed, trademark registration will be refused.
The Trademark Office has detailed and exacting requirements which should used to counsel clients before filing an application to register. Without proper use, the application will be refused.
Monitoring And Policing of Rights
Counseling clients to police or monitor their marks can be an uphill battle. It’s important, since trademark owners are required to monitor the market place and “police” their trademark rights. Failure to do so over time will result in a loss of valuable Intellectual Property rights.
This World Trademark Review round table of experts shares how to protect your brand in Web 2.0. A must read for legal professionals.
The Trademark, Domain Name Connection
Clients often don’t understand the difference betweenregistration of a domain name and a trademark. Domain names are not trademarks unless properly used. It’s important to counsel clients on this distinction.
Cyber security for registered trademarks is now available by registering with the Trademark Clearinghouse. Are your trademarks secure from online thieves?
There are hundreds of new generic Top Level Domains. Trademarks are at risk of being poached in the new domain endings. Are your trademarks registered with the Trademark Clearing House?
Trademark Registration Practice
The TM Office Rules are specific and can be complex when it comes to submitting samples of use that prove trademark use.
A confusing and complicated area of trademark registration practice is related goods. Examiners routinely issue rejections based upon existing applications for goods they consider “related.” Successfully overcoming these objections can be tricky. Know the rules.
Consent agreements are not to be entered into lightly. However seemingly routine, there are pitfalls for the unwary. The trademark consent to use agreement should be used only when it is clear there truly is no likelihood of confusion, and the parties have agreed upon steps to insure future confusion in the market does not occur.
International Trademark Registration
US trademark registration is not only available to U.S. trademark owners. Foreign based brands can also obtain a US trademark registration. This guide to US trademark registration will guide non US based trademark owners on how to secure a US trademark registration.
International trademark registration has become vitally important for online brands. Brand owners selling in the global market are well-served to understand the basics of international trademark registration, lest their brand disappear. Two real client stories to guide you.
Is your client expanding outside the U.S.? Is an international trademark registration necessary? The process can be confusing. Here are the basics.
Specific Trademark Registration Topics
Trademark registration for a hashtag is possible if the hashtag is used to promoted goods and services, not just as a way to organize content. Learn the rules here.
There are specific rules for how register artist names for sound recordings, as book authors. Here are some of the rules.
The music group ABBA paved the way for a trademark for artist names for music recordings and videos.
Learn how to protect titles of books, plays and other entertainment brands
Pitfalls and Mistakes
There is an old expression: “Hung by the tongue,” meaning something is said that one lives to regret. When it comes to trademark use, this saying is particularly true. Trademark owners are required to establish and maintain proper trademark use, including monitoring use of the mark by third parties.
Genericide is a process whereby a brand name or trademark is transformed through popular usage into a common noun. Aspirin, zipper, escalator, thermos. Legal rights in the trademark are lost
There are common mistakes made in trademark filings. Here are five reasons you might experience rejection.
Not all domain containing a third party trademark are cybersquatters. Some are innocent domain owners and victims of an Internet Domain Bully. These are also called Roverse Domain Name Hijackers
Protecting Trade Dress as a Trademark. Trademark registration is available for more than words and logos. Don’t overlook trade dress. It’s also valuable Intellectual Property.
Intellectual Property and Brand Valuation
Learn the basics and understand how your business will be valued.Cheryl Hodgson interviews business valuation expert Melisa Silverman. Understand how it fits with trademarks and IP.