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

Roger Bora - Former U.S. TM Office Attorney and Global Trademark, Copyright and Brand Attorney

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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

Roger Bora - Former U.S. TM Office Attorney and Global Trademark, Copyright and Brand Attorney

1
Followers
6
Plays
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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 10: How to Protect Cannabis Trademarks (Marijuana, Hemp & CBD)

U.S. TM Registration for Cannabis, Marijuana, Hemp & CBD Marks and Other Intellectual Property Protections for Cannabis Businesses Podcast Episode Begins as :45s How to Protect Cannabis Trademarks. With the recent exception of certain hemp-based products and services, the U.S. Patent and Trademark Office (USPTO) does not grant trademark registrations for marks for marijuana/cannabis products and services that “touch” the plant because use of trademarks must be lawful under federal law for federal trademark registration eligibility.How to Protect Cannabis Trademarks Brand owners may, however, secure federal trademark registration for marks for cannabis-related activities that are legal and arguably also preserve trademark rights for future geographic and product and service expansion under the same registered mark for “related” goods and services that are unlawful as of the trademark application filing date, but later become lawful, including Cannabidiol (CBD) infused foods and m...

27 min2019 OCT 25
Comments
Podcast 10: How to Protect Cannabis Trademarks (Marijuana, Hemp & CBD)

Podcast 9: Trademark Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages

Trademark Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages Podcast Episode Begins as :45s Trademark Doctrine of Foreign Equivalents. 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; a...

17 min2019 JUL 21
Comments
Podcast 9: Trademark 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 Podcast Episode Begins as :45s Introduction – Copyright Creation and Ownership 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, con...

5 min2019 APR 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 – How to Protect Trademarks Globally Podcast Episode Begins as :45s How to Protect Trademarks Globally How to Protect Trademarks Globally and Maximize 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. I. 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. Otherwise, failure to do so may restrict future geographic expansion of branded products. Furthermore, 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 ma...

17 min2019 MAR 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 Podcast Episode Begins as :45s How to Trademark a Name Strategies and Steps for How to Register Trademarks Use and Intent-to-Use Trademark Applications 1. 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). 2. 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. 3. Minimum filing details for application acceptance are: (A) The full name of the applicant / trademark owner The party that controls the nature and quality of the goods/services must be listed as the trademark applicant or the application may be declared void and any result...

18 min2019 FEB 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!” Podcast Episode Begins as :45s Should we conduct a trademark search 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. Why Do We Clear Marks? The trademark clearance step involves making sure that the selected marks do not infringe third-party trademark rights and are distinctive, thus immediately protectable upon first use. Below are five other reasons to clear marks before product launch: 1. Determines likelihood of product expansion under same trademark 2. Determines geographic regions in which selected trademark should not be used due to prior users of the same or confusingly similar marks 3. Determines whether selected trademarks are weak or strong 4. Determines whether select...

21 min2019 FEB 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 and Avoid Non-Distinctive “Trademarks” Podcast Episode Begins as :45s This podcast covers the concept of non-distinctive “trademarks,” the spectrum of marks 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 and avoid those that are considered non-distinctive “trademarks.” 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. Con...

10 min2019 JAN 28
Comments
Podcast 4: The Spectrum of Trademarks: How to Select Valuable Brand Names

Podcast 3: Why Improper Trademark Selection Can Kill a Brand – How to Select Valuable Trademarks

Why Improper Trademark Selection Can Kill a Brand How to Select a Trademark Podcast Podcast Episode Begins as :45s How to select a trademark podcast 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 For more information on this and related topics, please see the links immediately below this post and in the ‘recent posts’ section. 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 ...

8 min2019 JAN 22
Comments
Podcast 3: Why Improper Trademark Selection Can Kill a Brand – How to Select Valuable Trademarks

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

How to Create U.S. and Global Trademark Rights How are International Trademark Rights Created? This episode summarizes the ways in which U.S. and international trademark rights are created, including the following topics: Many brand owners fail to recognize that trademark rights they create in the United States, and possibly elsewhere, do not extend automatically into other countries. Therefore, extending those U.S. rights into other countries without first undertaking proper due diligence can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises in certain countries. Accordingly, brand owners should 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. The failure to secure trademark registration protection typically means that a company doe...

8 min2015 AUG 17
Comments
Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

Podcast 1: How to Register Trademarks in China; Battling Trademark Piracy

How to Register Trademarks in China and Battle Trademark Piracy This podcast summarizes how to register trademarks in China, 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 [Update: 2020] Recent changes in Chinese trademark law require applicants to have an “intent to use” the applied-for mark, which provides brand owners with another option for enforcing their rights in China. How Can We Help Brand Owners? 1. Audit a company’s current trademark portfolio for gaps in trademark protection (goods/services and country gaps) 2. Provide a list of “first to file” countries 3. Provide advice regarding goods and services coverage 4. Provide Chinese versions of your trademarks to ensure full protection 5. Review trademarks for negative connotatio...

6 min2015 MAR 29
Comments
Podcast 1: How to Register Trademarks in China; Battling Trademark Piracy

Latest Episodes

Podcast 10: How to Protect Cannabis Trademarks (Marijuana, Hemp & CBD)

U.S. TM Registration for Cannabis, Marijuana, Hemp & CBD Marks and Other Intellectual Property Protections for Cannabis Businesses Podcast Episode Begins as :45s How to Protect Cannabis Trademarks. With the recent exception of certain hemp-based products and services, the U.S. Patent and Trademark Office (USPTO) does not grant trademark registrations for marks for marijuana/cannabis products and services that “touch” the plant because use of trademarks must be lawful under federal law for federal trademark registration eligibility.How to Protect Cannabis Trademarks Brand owners may, however, secure federal trademark registration for marks for cannabis-related activities that are legal and arguably also preserve trademark rights for future geographic and product and service expansion under the same registered mark for “related” goods and services that are unlawful as of the trademark application filing date, but later become lawful, including Cannabidiol (CBD) infused foods and m...

27 min2019 OCT 25
Comments
Podcast 10: How to Protect Cannabis Trademarks (Marijuana, Hemp & CBD)

Podcast 9: Trademark Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages

Trademark Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages Podcast Episode Begins as :45s Trademark Doctrine of Foreign Equivalents. 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; a...

17 min2019 JUL 21
Comments
Podcast 9: Trademark 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 Podcast Episode Begins as :45s Introduction – Copyright Creation and Ownership 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, con...

5 min2019 APR 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 – How to Protect Trademarks Globally Podcast Episode Begins as :45s How to Protect Trademarks Globally How to Protect Trademarks Globally and Maximize 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. I. 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. Otherwise, failure to do so may restrict future geographic expansion of branded products. Furthermore, 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 ma...

17 min2019 MAR 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 Podcast Episode Begins as :45s How to Trademark a Name Strategies and Steps for How to Register Trademarks Use and Intent-to-Use Trademark Applications 1. 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). 2. 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. 3. Minimum filing details for application acceptance are: (A) The full name of the applicant / trademark owner The party that controls the nature and quality of the goods/services must be listed as the trademark applicant or the application may be declared void and any result...

18 min2019 FEB 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!” Podcast Episode Begins as :45s Should we conduct a trademark search 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. Why Do We Clear Marks? The trademark clearance step involves making sure that the selected marks do not infringe third-party trademark rights and are distinctive, thus immediately protectable upon first use. Below are five other reasons to clear marks before product launch: 1. Determines likelihood of product expansion under same trademark 2. Determines geographic regions in which selected trademark should not be used due to prior users of the same or confusingly similar marks 3. Determines whether selected trademarks are weak or strong 4. Determines whether select...

21 min2019 FEB 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 and Avoid Non-Distinctive “Trademarks” Podcast Episode Begins as :45s This podcast covers the concept of non-distinctive “trademarks,” the spectrum of marks 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 and avoid those that are considered non-distinctive “trademarks.” 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. Con...

10 min2019 JAN 28
Comments
Podcast 4: The Spectrum of Trademarks: How to Select Valuable Brand Names

Podcast 3: Why Improper Trademark Selection Can Kill a Brand – How to Select Valuable Trademarks

Why Improper Trademark Selection Can Kill a Brand How to Select a Trademark Podcast Podcast Episode Begins as :45s How to select a trademark podcast 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 For more information on this and related topics, please see the links immediately below this post and in the ‘recent posts’ section. 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 ...

8 min2019 JAN 22
Comments
Podcast 3: Why Improper Trademark Selection Can Kill a Brand – How to Select Valuable Trademarks

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

How to Create U.S. and Global Trademark Rights How are International Trademark Rights Created? This episode summarizes the ways in which U.S. and international trademark rights are created, including the following topics: Many brand owners fail to recognize that trademark rights they create in the United States, and possibly elsewhere, do not extend automatically into other countries. Therefore, extending those U.S. rights into other countries without first undertaking proper due diligence can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises in certain countries. Accordingly, brand owners should 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. The failure to secure trademark registration protection typically means that a company doe...

8 min2015 AUG 17
Comments
Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

Podcast 1: How to Register Trademarks in China; Battling Trademark Piracy

How to Register Trademarks in China and Battle Trademark Piracy This podcast summarizes how to register trademarks in China, 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 [Update: 2020] Recent changes in Chinese trademark law require applicants to have an “intent to use” the applied-for mark, which provides brand owners with another option for enforcing their rights in China. How Can We Help Brand Owners? 1. Audit a company’s current trademark portfolio for gaps in trademark protection (goods/services and country gaps) 2. Provide a list of “first to file” countries 3. Provide advice regarding goods and services coverage 4. Provide Chinese versions of your trademarks to ensure full protection 5. Review trademarks for negative connotatio...

6 min2015 MAR 29
Comments
Podcast 1: How to Register Trademarks in China; Battling Trademark Piracy

More from Roger Bora - Former U.S. TM Office Attorney and Global Trademark, Copyright and Brand Attorney

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