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Trademark Titan Blog Podcasts: Trademarks, Trademark Law, Copyrights, Copyright Law, Patents, Branding Laws

Former U.S. TM Office Attorney; Trademark, Tradema

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Trademark Titan Blog Podcasts: Trademarks, Trademark Law, Copyrights, Copyright Law, Patents, Branding Laws
Trademark Titan Blog Podcasts: Trademarks, Trademark Law, Copyrights, Copyright Law, Patents, Branding Laws

Trademark Titan Blog Podcasts: Trademarks, Trademark Law, Copyrights, Copyright Law, Patents, Branding Laws

Former U.S. TM Office Attorney; Trademark, Tradema

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About Us

Roger Bora, a former U.S. Trademark Office Attorney and now global IP attorney, discusses intellectual property including trademarks, copyrights, patents, trade secrets and branding; Featured Music: “The Returning” by Jeremy Wray (www.jelsonic.com). The music is licensed under creative commons attribution license available on the Free Music Archive. See full details on my blog at www.TrademarkTitan.com.

Latest Episodes

Podcast 9: Trademarks and the Doctrine of Foreign Equivalents: Infringing Trademarks in Different Languages

Trademarks and the Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages This podcast summarizes the recent U.S. Trademark Trial and Appeal Board decision of In re Compass Automotive Inc., which featured the issue of thedoctrine of foreign equivalents. I. Background of In re Compass Automotive Inc. * Compass Automotive Inc. (the “Applicant”) sought U.S. trademark registration for the word mark GUEPARDO (which has an English translation of “Cheetah”) and the below design mark for “vehicle wheels.” * The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(d) of the Trademark Act on the ground that Applicant’s marks, when used in connection with vehicle wheels, are likely to cause consumer confusion with the registered word mark CHEETAH (in English) for: tire bead seating equipment, namely, pneumatically powered tire changer machines for land vehicles; and hand tools for tires, namely, tire irons, wheel pullers. * Aft...

17 MINJUL 21
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Podcast 9: Trademarks and the Doctrine of Foreign Equivalents: Infringing Trademarks in Different Languages

Podcast 8: Copyright Creation and Ownership – What You Need to Know

Copyright Creation and Ownership – What You Need to Know Introduction Securing U.S. copyright registration for works that are integral to your business is a good business and intellectual property strategy – especially for works thatgive you or your business a competitive advantage. * Those works may include product manuals, teaching guides, jewelry, poetry, novels, artwork, photographs, movies, music, puppets and software. Eligibility for Copyright Protection To be eligible for copyright protection, however, a work must (1) be fixed in a tangible medium, (2) be original to the creator and (3) comprise protectable expression (i.e., something more than simply stating an idea or fact). * Copyright law, therefore, protects your expression of a certain idea, concept and principle, but does not protect the underlying idea, concept or principle. In other words, your expression of your views or thoughts about an idea, concept or principle is what may be protected by copyrights. The Bundle of Exclusive Rights Include the Right to: * Distribute; * Display; * Copy; * Perform; and * Create derivative works (new works based upon an original work) How are Copyrights Created? Copyrights are created the moment a work is fixed in a tangible medium; a registration is not necessary. Alert: If the work was commissioned from a third-party vendor (i.e., individual artist or brand agency), the party claiming copyright ownership must ensure that title to the copyright was transferred from the creator of the work because under copyright law, the general rule is that the author (or creator) of the work is the owner of the copyright, unless the work is assigned or the work was commissioned as a “work made for hire.” * If an employee created the work within the scope of employment, the employer is considered the “author” of the work and thus owns the copyright in the work. * A “work made for hire” must meet certain written and statutory requirements; many works do not fall within the legal category of a “work made for hire.” Thus an assignment would be necessary for the transfer of title to the commissioning party. Tip: Check your agreements with vendors to see if the works were assigned or were commissioned under agreement as a legally recognized “work made for hire.” Advantages of Copyright Registration Although copyrights are created immediately upon the creation of a work fixed in a tangible medium, copyright registration still provides extremely valuable rights, some of which are: * May entitle copyright owners to attorneys’ fees and statutory awards for third party infringements * Provides leverage in settlement discussions for infringement * Can add value to the company’s assets at the time of a business sale * Provides immediate access to the courts Company Assets – Business Transaction Securing copyright (as well as trademark and patent) registration is a prudent business strategy for building stronger IP rights and a more valuable business. In some instances, failure to secure registration protection for key intellectual property assets can present serious concerns during a sale of a company or company’s business assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property and are not eager to buy uncertainty. Copyright ownership issues may include: * Whether company has “good title” to all copyrightable materials / works * The need for a “Catch All” provision in a business transaction agreement for “all copyright protected works” * Co-authors — beware of co-authorship issues! * Software – beware of open source issues with software products Conclusion

5 MINAPR 17
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Podcast 8: Copyright Creation and Ownership – What You Need to Know

Podcast 7: How to Protect Trademarks Globally

Trademark Registration Protection for Global Expansion: Maximizing Company Goodwill and Asset Valuations This post summarizes how U.S. and global trademark rights are created and the importance of trademark registration for national and global brand expansion. Introduction U.S. brand owners should register their trademarks with the U.S. Patent and Trademark Office (“USPTO”) to receive the full protection of U.S. trademark laws and because failure to do so may restrict future geographic expansion of branded products. Companies conducting international business should also seek trademark registration in countries where they conduct business because the majority of countries do not recognize trademark rights absent a country trademark registration, except under rare circumstances. Accordingly, even if companies have used their marks for many years globally without registration, the majority of countries will not recognize that use as creating any trademark rights. Those issues may limit a company’s ability to expand nationally and internationally and may present serious concerns during a sale of a company or company’s assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property in countries within which they conduct business and are not eager to buy uncertainty. How are Trademark Rights Created? There are two primary ways in which trademark rights are created globally and they are as follows: * “First to file”principle: meaning whoever files a trademark application first, and secures trademark registration, is generally considered the trademark owner of the registered mark for the listed products in the majority of countries. * “First to use”principle: meaning whoever uses a mark first is typically considered the owner of the mark for the associated products (assuming there are no earlier-filed trademark applications), butonlyin thegeographic regionswithin which the mark isactually used – leaving open other geographic regions for other parties to create rights in the same or confusingly similar mark, which may block both parties from freely expanding their brands nationally. * Accordingly, obtaining trademark registration infirst to use countries is recommended for securing future geographic expansion rights, as well as for other valuable rights. Brand owners must understand that their U.S., or home country, trademark rights and registrations typicallydo notprovide any trademark rights in other countries, since trademark rights are country specific. Global Trademark Registration and Strategy Considerations Brand owners should prepare laser-focused filing strategies based upon core trademarks, core products and key countries and avoid the “reactive strategy” – one that responds to “emergencies” at the detriment of protecting the core marks and products, while exhausting the annual budget. Companies must make difficult decisions regarding which of their trademarks and products to protect and where to protect them and review their filing strategies periodically and modify them, as necessary. Trademarks should be prioritized based on “value,” which may include the following factors: * First tier: includes house marks and major product names used in all markets * Second tier: includes important product names used in all markets * Third tier: includes important names used in certain regions, and sub-brands * Fourth tier: includes slogans. Core products should be identified and may be prioritized based upon their value to the company and company revenues. As for country selection, companies should focus initially on top-tier countries, which may include where the: * Majority of sales take place

17 MINMAR 2
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Podcast 7: How to Protect Trademarks Globally

Podcast 6: U.S. Trademark Registration Process: How to Register Trademarks

U.S. Trademark Registration Process: How to Register Trademarks * A U.S. trademark application is filed based either upon an intent-to-use filing basis (you intend to use the mark for the listed goods/services post filing) or based upon actual use of the mark in interstate commerce (you are using the mark in interstate commerce for the listed goods/services as of the application filing date). Although a foreign applicant may rely upon its foreign trademark registration for securing a U.S. trademark registration, this post will not cover that filing option. * Once the application is filed, an Examining Attorney reviews the application for any procedural or substantive issues – and that review will typically take around three-four months. If the Examining Attorney finds any issues with the trademark application, the Examining Attorney will either issue an Office action explaining the reasons for the refusal or contact the applicant directly by email or phone in an effort to resolve the issue(s). * If the Examining Attorney issues an Office action, the applicant must respond to the Office action within six months of the mailing date, or the application will be declared abandoned. * If/once the application is accepted by the Examining Attorney, the mark will be published for third party opposition (a/k/a a formal objection). Any party who believes that it may be damaged by registration of the mark has thirty (30) days from the publication date to file either a notice of opposition to registration or a request to extend the time to oppose the registration. * If the mark is published based upon the actual use of the mark in U.S. commerce for all of the listed goods/services (or on a foreign registration), and no oppositions are filed, the USPTO should register the mark and issue a registration certificate. * If the mark is published based upon the applicant’s bona fide intent to use the mark in commerce and if no oppositions are filed, the USPTO will issue a Notice of Allowance. The applicant then has six (6) months from the mailing date of the Notice of Allowance to either: 1. submit a Statement of Use affidavit showing use of the mark for all of the goods/services; or 2. request a six-month extension of time to file a Statement of Use * Note: The applicant may also decide to divide an application into two separate applications – one for any goods/services already in use and a second for the goods/services not yet in use. This would permit the mark to register for the goods/services in use, while the second application would list the goods not yet in use. * The applicant may file up to five six-month extensions, not to exceed a total of three years from the mailing date of the Notice of Allowance. If a statement of use is not filed within that three year period, the trademark application will go abandoned. Once the applicant has filed its statement of use, and it is accepted by the USPTO, the USPTO should issue a registration certificate. * Once the trademark owner receives the registration certificate, the trademark owner must still take all necessary steps to maintain the registration going forward. The owner of a registration must file an Affidavit of Continued Use or Excusable Non-use, and may file an affidavit declaring the mark as “incontestable,” between the fifth and sixth year of registration. The applicant must also file renewal applications every ten years from the date of registration. Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”

18 MINFEB 10
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Podcast 6: U.S. Trademark Registration Process: How to Register Trademarks

Podcast 5: Trademark Searches & Trademark Clearance & “Confusingly Similar” Marks …“Oh My!”

Trademark Searches & Trademark Clearance & “Confusingly Similar” Marks …“Oh My!” In this podcast, I discuss the importance of U.S. and global trademark searches and clearance before trademark launch and trademark search considerations. I also discuss common misconceptions about trademark rights and what constitutes “confusingly similar” trademarks. Common Trademark Misconceptions Below is a list of common misconceptions about trademark rights: * State-issued business names / trademark registrations = right to use * Domain name ownership = right to use term in domain name as a trademark * Made up coined mark = right to use the made up term as a trademark * “I searched the USPTO trademark database and did not find my mark” * “I searched the USPTO trademark database and my name is available because company “x” abandoned its trademark registration for the same mark” “Confusingly Similar” Trademarks Means “Source” Confusion * Test / Standard: Likelihood of consumer confusion as to the source of the parties’ respective goods/services * It is not confusion as to what the consumer is buying * Rather, it is confusion as to the source of the goods/services * Example: The sourceof a pair of running shoes vs. running pants “Confusingly Similar” Trademarks – Factors * Would the average consumer * reasonably believe that * the parties’ respective goods/services * are of the type that would * originate with the same source? * Source confusionis the crux of trademark law Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” * Music:“The Returning” by Jeremy Wray – CopyrightJelsonic(jelsonic.com) * The music is licensed undercreative commons attribution licenseavailable on theFree Music Archive * The music contained in this podcast is only a portion of the original; to hear the full version clickhere Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

21 MINFEB 4
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Podcast 5: Trademark Searches & Trademark Clearance & “Confusingly Similar” Marks …“Oh My!”

Podcast 4: The Spectrum of Trademarks: How to Select Valuable Brand Names

Trademark Selection – How to Select Valuable Trademarks This podcast covers the spectrum of trademarks and trademark selectionconsiderations, including the following “Four D’s” of trademark selection: Distinctiveness – Is the name legally protectable? * Tip: Select brand names that are legally protectable upon first use. Distinguishable – Is the mark distinguishable from the competition? * Tip: Only select names that are legally protectable and sufficiently distinguishable from the competition. Da Position – Does the company have a positioning strategy? * Tip: Select a mark or slogan that will capture the position or niche. Da Attributes – What are prospective purchasers looking for? * Tip: Select marks that convey attributes desired by consumers. To read my full blog post on this topic, click here. Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” * Music:“The Returning” by Jeremy Wray (jelsonic.com) –CopyrightJelsonic * The music is licensed undercreative commons attribution licenseavailable on theFree Music Archive * The music contained in this podcast is only a portion of the original; to hear the full version clickhere Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

10 MINJAN 28
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Podcast 4: The Spectrum of Trademarks: How to Select Valuable Brand Names

Podcast 3: Why Improper Trademark Selection Can Kill a Brand

Why Improper Trademark Selection Can Kill a Brand Trademark Selection Considerations: This episode discusses trademark selection considerations andhownotselecting valuable trademarks can severely impact your product and brand success. Discussion topics include: * Selecting trademarks that distinguish thesource of your goods and/or services from others * Confusingly similar trademarks * Customer loyalty, brand loyalty and goodwill: the importance of selecting valuable trademarks Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” * Music: “The Returning” /CopyrightJelsonic (www.jelsonic.com) * The music is licensed under creative commons attribution license available on the Free Music Archive * The music contained in this podcast is only a portion of the original; to hear the full version click here Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

8 MINJAN 22
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Podcast 3: Why Improper Trademark Selection Can Kill a Brand

Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

How to Create U.S. and Global Trademark Rights This episode summarizes the ways in which trademark rights are created internationally, which addresses the following: * Many brand owners fail to recognize that the trademark rights they have created in the United States, and possibly elsewhere, do not extend automatically into other countries, which can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises * Brand owners must understand how trademark rights are created internationally and then create strategic business plans setting forth a course that seeks to minimize risks and costs, while maximizing brand rights and protection * Failure to secure trademark registration protection typically means that a company does not own any trademark rights – or think of it as a “government-issued business license” – to sell branded products in the majority of countries * Brand owners that fail to implement a coherent and consistent global filing trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection and rights for key brands and products in key markets, have not minimized business and infringement risks, have lost rights in key markets and consistently run over budget Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” Music: “The Returning” by Jelsonic (www.jelsonic.com) The music is licensed under creative commons attribution license available on the Free Music Archive. Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

8 MIN2015 AUG 17
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Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

Podcast 1: Securing Chinese Trademark Registration and Chinese Trademark Rights; Battling Trademark Piracy

Securing Chinese Trademark Registration and Battling Trademark Piracy This podcast summarizes securing Chinese trademark registration and Chinesetrademark rights, including the following: * Overviewof Chinese trademark registration system and scope of protection * Bestpractices for securing trademark registration protection in China * Best practices forpreventing loss of trademark rights in China * Best practices for battling trademark piracy in China Music: “The Returning” by Jeremy Wray andJelsonic (www.jelsonic.com). The music is licensed under creative commons attribution license available on the Free Music Archive. Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

6 MIN2015 MAR 29
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Podcast 1: Securing Chinese Trademark Registration and Chinese Trademark Rights; Battling Trademark Piracy
the END

Latest Episodes

Podcast 9: Trademarks and the Doctrine of Foreign Equivalents: Infringing Trademarks in Different Languages

Trademarks and the Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages This podcast summarizes the recent U.S. Trademark Trial and Appeal Board decision of In re Compass Automotive Inc., which featured the issue of thedoctrine of foreign equivalents. I. Background of In re Compass Automotive Inc. * Compass Automotive Inc. (the “Applicant”) sought U.S. trademark registration for the word mark GUEPARDO (which has an English translation of “Cheetah”) and the below design mark for “vehicle wheels.” * The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(d) of the Trademark Act on the ground that Applicant’s marks, when used in connection with vehicle wheels, are likely to cause consumer confusion with the registered word mark CHEETAH (in English) for: tire bead seating equipment, namely, pneumatically powered tire changer machines for land vehicles; and hand tools for tires, namely, tire irons, wheel pullers. * Aft...

17 MINJUL 21
Comments
Podcast 9: Trademarks and the Doctrine of Foreign Equivalents: Infringing Trademarks in Different Languages

Podcast 8: Copyright Creation and Ownership – What You Need to Know

Copyright Creation and Ownership – What You Need to Know Introduction Securing U.S. copyright registration for works that are integral to your business is a good business and intellectual property strategy – especially for works thatgive you or your business a competitive advantage. * Those works may include product manuals, teaching guides, jewelry, poetry, novels, artwork, photographs, movies, music, puppets and software. Eligibility for Copyright Protection To be eligible for copyright protection, however, a work must (1) be fixed in a tangible medium, (2) be original to the creator and (3) comprise protectable expression (i.e., something more than simply stating an idea or fact). * Copyright law, therefore, protects your expression of a certain idea, concept and principle, but does not protect the underlying idea, concept or principle. In other words, your expression of your views or thoughts about an idea, concept or principle is what may be protected by copyrights. The Bundle of Exclusive Rights Include the Right to: * Distribute; * Display; * Copy; * Perform; and * Create derivative works (new works based upon an original work) How are Copyrights Created? Copyrights are created the moment a work is fixed in a tangible medium; a registration is not necessary. Alert: If the work was commissioned from a third-party vendor (i.e., individual artist or brand agency), the party claiming copyright ownership must ensure that title to the copyright was transferred from the creator of the work because under copyright law, the general rule is that the author (or creator) of the work is the owner of the copyright, unless the work is assigned or the work was commissioned as a “work made for hire.” * If an employee created the work within the scope of employment, the employer is considered the “author” of the work and thus owns the copyright in the work. * A “work made for hire” must meet certain written and statutory requirements; many works do not fall within the legal category of a “work made for hire.” Thus an assignment would be necessary for the transfer of title to the commissioning party. Tip: Check your agreements with vendors to see if the works were assigned or were commissioned under agreement as a legally recognized “work made for hire.” Advantages of Copyright Registration Although copyrights are created immediately upon the creation of a work fixed in a tangible medium, copyright registration still provides extremely valuable rights, some of which are: * May entitle copyright owners to attorneys’ fees and statutory awards for third party infringements * Provides leverage in settlement discussions for infringement * Can add value to the company’s assets at the time of a business sale * Provides immediate access to the courts Company Assets – Business Transaction Securing copyright (as well as trademark and patent) registration is a prudent business strategy for building stronger IP rights and a more valuable business. In some instances, failure to secure registration protection for key intellectual property assets can present serious concerns during a sale of a company or company’s business assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property and are not eager to buy uncertainty. Copyright ownership issues may include: * Whether company has “good title” to all copyrightable materials / works * The need for a “Catch All” provision in a business transaction agreement for “all copyright protected works” * Co-authors — beware of co-authorship issues! * Software – beware of open source issues with software products Conclusion

5 MINAPR 17
Comments
Podcast 8: Copyright Creation and Ownership – What You Need to Know

Podcast 7: How to Protect Trademarks Globally

Trademark Registration Protection for Global Expansion: Maximizing Company Goodwill and Asset Valuations This post summarizes how U.S. and global trademark rights are created and the importance of trademark registration for national and global brand expansion. Introduction U.S. brand owners should register their trademarks with the U.S. Patent and Trademark Office (“USPTO”) to receive the full protection of U.S. trademark laws and because failure to do so may restrict future geographic expansion of branded products. Companies conducting international business should also seek trademark registration in countries where they conduct business because the majority of countries do not recognize trademark rights absent a country trademark registration, except under rare circumstances. Accordingly, even if companies have used their marks for many years globally without registration, the majority of countries will not recognize that use as creating any trademark rights. Those issues may limit a company’s ability to expand nationally and internationally and may present serious concerns during a sale of a company or company’s assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property in countries within which they conduct business and are not eager to buy uncertainty. How are Trademark Rights Created? There are two primary ways in which trademark rights are created globally and they are as follows: * “First to file”principle: meaning whoever files a trademark application first, and secures trademark registration, is generally considered the trademark owner of the registered mark for the listed products in the majority of countries. * “First to use”principle: meaning whoever uses a mark first is typically considered the owner of the mark for the associated products (assuming there are no earlier-filed trademark applications), butonlyin thegeographic regionswithin which the mark isactually used – leaving open other geographic regions for other parties to create rights in the same or confusingly similar mark, which may block both parties from freely expanding their brands nationally. * Accordingly, obtaining trademark registration infirst to use countries is recommended for securing future geographic expansion rights, as well as for other valuable rights. Brand owners must understand that their U.S., or home country, trademark rights and registrations typicallydo notprovide any trademark rights in other countries, since trademark rights are country specific. Global Trademark Registration and Strategy Considerations Brand owners should prepare laser-focused filing strategies based upon core trademarks, core products and key countries and avoid the “reactive strategy” – one that responds to “emergencies” at the detriment of protecting the core marks and products, while exhausting the annual budget. Companies must make difficult decisions regarding which of their trademarks and products to protect and where to protect them and review their filing strategies periodically and modify them, as necessary. Trademarks should be prioritized based on “value,” which may include the following factors: * First tier: includes house marks and major product names used in all markets * Second tier: includes important product names used in all markets * Third tier: includes important names used in certain regions, and sub-brands * Fourth tier: includes slogans. Core products should be identified and may be prioritized based upon their value to the company and company revenues. As for country selection, companies should focus initially on top-tier countries, which may include where the: * Majority of sales take place

17 MINMAR 2
Comments
Podcast 7: How to Protect Trademarks Globally

Podcast 6: U.S. Trademark Registration Process: How to Register Trademarks

U.S. Trademark Registration Process: How to Register Trademarks * A U.S. trademark application is filed based either upon an intent-to-use filing basis (you intend to use the mark for the listed goods/services post filing) or based upon actual use of the mark in interstate commerce (you are using the mark in interstate commerce for the listed goods/services as of the application filing date). Although a foreign applicant may rely upon its foreign trademark registration for securing a U.S. trademark registration, this post will not cover that filing option. * Once the application is filed, an Examining Attorney reviews the application for any procedural or substantive issues – and that review will typically take around three-four months. If the Examining Attorney finds any issues with the trademark application, the Examining Attorney will either issue an Office action explaining the reasons for the refusal or contact the applicant directly by email or phone in an effort to resolve the issue(s). * If the Examining Attorney issues an Office action, the applicant must respond to the Office action within six months of the mailing date, or the application will be declared abandoned. * If/once the application is accepted by the Examining Attorney, the mark will be published for third party opposition (a/k/a a formal objection). Any party who believes that it may be damaged by registration of the mark has thirty (30) days from the publication date to file either a notice of opposition to registration or a request to extend the time to oppose the registration. * If the mark is published based upon the actual use of the mark in U.S. commerce for all of the listed goods/services (or on a foreign registration), and no oppositions are filed, the USPTO should register the mark and issue a registration certificate. * If the mark is published based upon the applicant’s bona fide intent to use the mark in commerce and if no oppositions are filed, the USPTO will issue a Notice of Allowance. The applicant then has six (6) months from the mailing date of the Notice of Allowance to either: 1. submit a Statement of Use affidavit showing use of the mark for all of the goods/services; or 2. request a six-month extension of time to file a Statement of Use * Note: The applicant may also decide to divide an application into two separate applications – one for any goods/services already in use and a second for the goods/services not yet in use. This would permit the mark to register for the goods/services in use, while the second application would list the goods not yet in use. * The applicant may file up to five six-month extensions, not to exceed a total of three years from the mailing date of the Notice of Allowance. If a statement of use is not filed within that three year period, the trademark application will go abandoned. Once the applicant has filed its statement of use, and it is accepted by the USPTO, the USPTO should issue a registration certificate. * Once the trademark owner receives the registration certificate, the trademark owner must still take all necessary steps to maintain the registration going forward. The owner of a registration must file an Affidavit of Continued Use or Excusable Non-use, and may file an affidavit declaring the mark as “incontestable,” between the fifth and sixth year of registration. The applicant must also file renewal applications every ten years from the date of registration. Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”

18 MINFEB 10
Comments
Podcast 6: U.S. Trademark Registration Process: How to Register Trademarks

Podcast 5: Trademark Searches & Trademark Clearance & “Confusingly Similar” Marks …“Oh My!”

Trademark Searches & Trademark Clearance & “Confusingly Similar” Marks …“Oh My!” In this podcast, I discuss the importance of U.S. and global trademark searches and clearance before trademark launch and trademark search considerations. I also discuss common misconceptions about trademark rights and what constitutes “confusingly similar” trademarks. Common Trademark Misconceptions Below is a list of common misconceptions about trademark rights: * State-issued business names / trademark registrations = right to use * Domain name ownership = right to use term in domain name as a trademark * Made up coined mark = right to use the made up term as a trademark * “I searched the USPTO trademark database and did not find my mark” * “I searched the USPTO trademark database and my name is available because company “x” abandoned its trademark registration for the same mark” “Confusingly Similar” Trademarks Means “Source” Confusion * Test / Standard: Likelihood of consumer confusion as to the source of the parties’ respective goods/services * It is not confusion as to what the consumer is buying * Rather, it is confusion as to the source of the goods/services * Example: The sourceof a pair of running shoes vs. running pants “Confusingly Similar” Trademarks – Factors * Would the average consumer * reasonably believe that * the parties’ respective goods/services * are of the type that would * originate with the same source? * Source confusionis the crux of trademark law Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” * Music:“The Returning” by Jeremy Wray – CopyrightJelsonic(jelsonic.com) * The music is licensed undercreative commons attribution licenseavailable on theFree Music Archive * The music contained in this podcast is only a portion of the original; to hear the full version clickhere Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

21 MINFEB 4
Comments
Podcast 5: Trademark Searches & Trademark Clearance & “Confusingly Similar” Marks …“Oh My!”

Podcast 4: The Spectrum of Trademarks: How to Select Valuable Brand Names

Trademark Selection – How to Select Valuable Trademarks This podcast covers the spectrum of trademarks and trademark selectionconsiderations, including the following “Four D’s” of trademark selection: Distinctiveness – Is the name legally protectable? * Tip: Select brand names that are legally protectable upon first use. Distinguishable – Is the mark distinguishable from the competition? * Tip: Only select names that are legally protectable and sufficiently distinguishable from the competition. Da Position – Does the company have a positioning strategy? * Tip: Select a mark or slogan that will capture the position or niche. Da Attributes – What are prospective purchasers looking for? * Tip: Select marks that convey attributes desired by consumers. To read my full blog post on this topic, click here. Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” * Music:“The Returning” by Jeremy Wray (jelsonic.com) –CopyrightJelsonic * The music is licensed undercreative commons attribution licenseavailable on theFree Music Archive * The music contained in this podcast is only a portion of the original; to hear the full version clickhere Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

10 MINJAN 28
Comments
Podcast 4: The Spectrum of Trademarks: How to Select Valuable Brand Names

Podcast 3: Why Improper Trademark Selection Can Kill a Brand

Why Improper Trademark Selection Can Kill a Brand Trademark Selection Considerations: This episode discusses trademark selection considerations andhownotselecting valuable trademarks can severely impact your product and brand success. Discussion topics include: * Selecting trademarks that distinguish thesource of your goods and/or services from others * Confusingly similar trademarks * Customer loyalty, brand loyalty and goodwill: the importance of selecting valuable trademarks Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” * Music: “The Returning” /CopyrightJelsonic (www.jelsonic.com) * The music is licensed under creative commons attribution license available on the Free Music Archive * The music contained in this podcast is only a portion of the original; to hear the full version click here Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

8 MINJAN 22
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Podcast 3: Why Improper Trademark Selection Can Kill a Brand

Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

How to Create U.S. and Global Trademark Rights This episode summarizes the ways in which trademark rights are created internationally, which addresses the following: * Many brand owners fail to recognize that the trademark rights they have created in the United States, and possibly elsewhere, do not extend automatically into other countries, which can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises * Brand owners must understand how trademark rights are created internationally and then create strategic business plans setting forth a course that seeks to minimize risks and costs, while maximizing brand rights and protection * Failure to secure trademark registration protection typically means that a company does not own any trademark rights – or think of it as a “government-issued business license” – to sell branded products in the majority of countries * Brand owners that fail to implement a coherent and consistent global filing trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection and rights for key brands and products in key markets, have not minimized business and infringement risks, have lost rights in key markets and consistently run over budget Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.” Music: “The Returning” by Jelsonic (www.jelsonic.com) The music is licensed under creative commons attribution license available on the Free Music Archive. Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

8 MIN2015 AUG 17
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Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

Podcast 1: Securing Chinese Trademark Registration and Chinese Trademark Rights; Battling Trademark Piracy

Securing Chinese Trademark Registration and Battling Trademark Piracy This podcast summarizes securing Chinese trademark registration and Chinesetrademark rights, including the following: * Overviewof Chinese trademark registration system and scope of protection * Bestpractices for securing trademark registration protection in China * Best practices forpreventing loss of trademark rights in China * Best practices for battling trademark piracy in China Music: “The Returning” by Jeremy Wray andJelsonic (www.jelsonic.com). The music is licensed under creative commons attribution license available on the Free Music Archive. Disclaimer:This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear atwww.TrademarkTitan.com

6 MIN2015 MAR 29
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Podcast 1: Securing Chinese Trademark Registration and Chinese Trademark Rights; Battling Trademark Piracy
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