In Intellectual Property News – January 2017

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The world of intellectual property can be alternately straightforward or complex, entertaining or laborious. Here is a round up of a little bit of all of the above for the months of December 2016/January 2017. Enjoy! Have questions? Reach out: barbara@thinkalexanderlegal.com or 404-900-6881.

Question: What do a dance-rock band and an NFL team have in common? 

Answer: A shared opinion that a portion of a 60-plus-year old trademark statute is unconstitutional. The Washington Redskins have been fighting their own legal battle with ...

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Protecting your brand online

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Entrepreneurs and businesses: are you being naïve about your online activities? You should have an integrated online brand protection strategy to effectively protect your brand.

Think of the Internet as follows:

1. Search engines: It’s where most prospective customers begin a search for a product or service.  Do you have a strategy that addresses cyber-squatters and counterfeiters that show up next to your website in search results? Don’t assume the prospective customer can tell the difference between your brand, a cyber-squatter or ...

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Trademark Squatters: What They Do and Why It Matters

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Trademark Squatting: Could it happen to you?

As a business owner, you took the time, spent the money, and achieved success!  The United States Patent and Trademark Office (USPTO) registered your trademark. Your trademark is protected in the United States!  And only in the United States.  Meanwhile, an unscrupulous, enterprising trademark squatter notices that your trademark is registered in the United States, but it is not registered anywhere else. This trademark squatter files an application to register ...

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Do I need to conduct a trademark clearance search?

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Do I need to conduct a trademark clearance search?

What are the dangers of skipping a trademark clearance search?

You are not required to conduct a trademark clearance search before preparing and filing a trademark application. Is it a good idea to do so?  Absolutely! A trademark clearance search identifies potential conflicts your application could encounter when the United States Patent and Trademark Office (USPTO) reviews it and decides whether or not to approve it. It also allows a trademark attorney ...

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Opposition Proceeding: When to Oppose the Registration of a Trademark

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Opposition Proceeding: When to Oppose the Registration of a Trademark

If you are a trademark owner who monitors your trademark portfolio, you are likely paying attention to applications filed with the United States Patent and Trademark Office (USPTO). You want to ensure that no applicant attempts to register a trademark you believe to be confusingly similar to your own trademark. Perhaps a competitor is looking to register a merely descriptive or generic term that you believe should be available for ...

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Have you ever had a (Famous) Popsicle?

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Have you ever had a Popsicle?  Are you *sure*?  The word “Popsicle” is a registered trademark of Conopco, Inc. (doing business as Unilever Bestfoods North America). So, unless you are eating a Unilever popsicle, it is just a “pop” or an “ice pop”; we know, explain that to your seven-year-old, who asks you for a popsicle.

Genericide” occurs when a trademark becomes so popular and its use so pervasive with reference to certain goods that the general public ...

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How Creative Are You: Trademarks and Taglines

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Does your business have a tagline? need a new tagline? Just how creative are you?

Taglines are powerful branding tools worth protecting. The good ones, that is. Whatever stage your business — start-up, growing, leading — a good tagline helps prospective customers/clients remember your brand.  Make sure your tagline is creative, or in official trademark-ese: “inherently distinctive.”

A tagline that is creative or “inherently distinctive” is eligible for registration with the United States Patent and Trademark Office (USPTO).  Famous examples of creative or ...

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Be the Mark You Wish to See in the World

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What you need. What we know.™ – Trademarks: Selection Matters​

When an existing or prospective client tells me they have a business/product/mobile app name that they want to trademark, I am happy to hear that they are thinking about their trademark rights and building their trademark portfolios. 

Too often, however, when I hear the name, I repress a groan. It’s descriptive. Yes, it clearly communicates what they do/provide/have built, but it is bland, uninteresting, and safe.  In particular, if the business is a start-up ...

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The Trademark Test You Don’t Want Your Mark To Fail

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What you need. What we know.™ – Trademarks: Likelihood of Confusion

At the end of 2013, the USPTO employed 409 trademark examining attorneys. Any one of these 409 trademark examining attorneys could be assigned to examine your application and could issue an initial “likelihood of confusion” refusal for your trademark application. Clients, of course, never see the “likelihood of confusion” issue in the same way as the trademark examining attorney does.

In order to attempt to “win” the argument, however, and defeat the refusal ...

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Can’t I Just Do It Myself?

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What you need. What we know.™ – Trademarks: The Application

 You need to know why you shouldn’t save the attorney fees by preparing and filing a trademark application​ yourself, or why you shouldn’t just click on that “Register My Mark”  for $69 + government fees button for the website you found. With each of these options, once your application is filed, you go it alone through the next 12-18 months that it can take for the USPTO to prosecute your application ...

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