Blog | Trademark Counsel

3 Potential Pitfalls of the “Intent-to-Use” Trademark Application

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{5 minutes to read} When you file a trademark application in the US, you must include a basis for the filing. Two of the more popular bases are (1) current use in commerce; and (2) an “intent to use” the mark in commerce in the future. The “intent to use” (ITU) application can be an important tool for protecting a company’s intellectual property. Oftentimes a company develops the name of a product or service well before it’s ready to launch...

Timing of Registration in a Copyright Dispute

By Kelly Weiner

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The Supreme Court Clarifies the Importance of Timing When Registering Original Works {2 minutes to read} A copyright is the exclusive legal right to reproduce, publish, sell, or distribute an original work of authorship, such as a photograph, song, book, work of art, etc. The copyright attaches upon the creation of the work. You don’t need a registration certificate to claim rights to a work. So, why bother registering the work with the US Copyright Office? Enforcement. The Copyright Act...

Why Protect Weak Trademarks?

By Kelly Weiner

{3:30 minutes to read} The more distinctive a trademark is, the broader and stronger rights the owner will have in that trademark. But not every company chooses a distinctive name. Oftentimes businesses want the company name to describe what the company does so that consumers viewing the name will have an immediate understanding of the nature or a feature of a product or service. So for example, Salty as the name of a salty snack product. A name that describes...

When Search Results Go Stale

By Kelly Weiner

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{2 minutes to read} When selecting a new name for a business, product, or service, one of the first steps should be a trademark availability search to look for potentially “confusingly similar” trademarks that could block the registration of your trademark. Ideally, the next step would be to file a trademark application with the US Patent and Trademark Office (PTO) to preserve your rights to the name. If you allow too much time to pass between conducting the search and...

Amazon — Another Reason to Register Your Brand As a Trademark Early

By Kelly Weiner

{2 minutes to read} If you’re a products-based business, or are getting ready to launch a products-based business, you may have heard of the Amazon Brand Registry program. A new and improved Brand Registry was launched in 2017 by Amazon to help provide sellers with accurate brand representation, powerful search tools, and proactive brand protection. Brand Registry helps brand owners protect their brands (on Amazon), and helps sellers develop trust with customers. It is an extremely important program for many...

Your Trademark Application Has Been Rejected: Now What?

By Kelly Weiner

{3:00 minutes to read} Approximately four to five months after you file a trademark application, an examining attorney for the US Patent and Trademark Office (PTO) will review the application to make sure it conforms to the PTO standards and that the mark you're applying for is eligible for registration. If there are any problems with the application, the examining attorney will issue an Office Action. Trademark owners then have six months to respond to that Office Action. If no...

When I File My Trademark Application, Should I Include My Logo?

By Kelly Weiner

{4:00 minutes to read} Like most answers to legal questions, the answer to this article’s title is, it depends. Filing separate applications to cover each element of your branding, which can include words, slogans, design elements, stylization, even product design, and color, would provide you the strongest legal protection. However, not every company has the financial resources to do this. If you have a tight legal budget, are a newly formed business, or a business that often refreshes its branding...

Which Comes First, Company Formation or the Trademark Search?

By Kelly Weiner

{3:00 minutes to read} This question comes up frequently, especially when we're working with startups. Whether they're getting ready to launch, preparing to pitch to investors, or have just recently paid $5,000 for the perfect domain name, there is often a sense of urgency around company formation. But startups should consider conducting a trademark search before forming their company. One common misconception is that registering a business name or a domain name will provide the owner with exclusive rights to...

3 Mistakes to Avoid When Naming

By Kelly Weiner

{3:00 minutes to read} There are three typical legal mistakes businesses make when naming their company, a product, or a service offering: 1. The name is already taken. Generally, a name can’t be registered as a trademark if there's an existing registered trademark that is "confusingly similar" to the proposed trademark. Determining the likelihood of confusion involves a multifactor test that takes into consideration such things as: •The visual similarities between the marks; •The similarities between the goods or services being...

Is Your Trademark Client Protected?

By Kelly Weiner

{4:00 minutes to read} Trademark rights are territorial. With a US trademark registration, trademark rights extend nationwide, but a US trademark registration generally will not provide a trademark owner with protection in other countries. There is no worldwide trademark protection. Protecting a worldwide brand can involve a large number of filings in individual countries, which can be extremely expensive. Trademark owners will often focus on core areas of interest. At a minimum, owners will want to file in countries that...