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Create a Cult of Personality for Your Brand

Is it Time to Rebrand?

By Linda Tancs

Our brands are like children.  They grow and change.  The marketplace in which they live grows and changes, too.   Is your brand thriving in its space?   If not, why?  Has the economic environment in which you operate changed?  Is your customer base changing?  If so, then it may be time to rebrand.  Rebranding is a swift overhaul of your company’s mark or logo, as opposed to simply initiating a new tagline or ad campaign or extending your brand into other markets.  Before deciding to rebrand, however, consider the emotional connection that your customers have with your brand.  This is your brand equity, which drives sales.  Be sure to educate your customers on the changes that you’re making to avoid disengagement from you and your brand.

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The Extraterritorial Reach of Trademarks

By Linda Tancs

Consider the following hypothetical:  a big U.S. company with well regarded brand names (“BIG”) and substantial manufacturing facilities in China fails to register its marks in China.  Enter a U.S. corporation that swiftly files trademark applications for all of BIG’s flagship marks in China, potentially affecting BIG’s export market and local manufacturing operations.  Lesson #1:  BIG should have protected its brands in China notwithstanding it small sales volume there.  But what can BIG do, if anything, to assert its U.S. trademark rights against another U.S. entity for acts taking place on foreign soil?  BIG should consider federal court decisions holding that the U.S. Trademark Act allows for trademark infringement suits involving extraterritorial actions provided that the defendant is a U.S. domiciliary, the foreign activity had substantial effects in the U.S., and the jurisdiction of a U.S. court over the matter would not impair another nation’s sovereignty.  Of course, U.S. law isn’t the only one to address this type of activity.  The British courts have long espoused the extraterritorial reach of laws protecting trademarks and trade names.  And in India there is the doctrine of transborder reputation, which protects a trademark acquired outside of the country from being used by an unrelated party within the country if the reputation of the initial trademark owner has reached into India.  As trade continues to grow and borders begin to blur with the introduction of brands into social networking sites and other digital milieu, the issues surrounding the protection of brands in foreign lands will only increase.

This post is not intended as legal advice. Readers should obtain legal advise that is particular to their needs.

“Official” Correspondence Merits a Second Look

By Linda Tancs

At some point during the life of a trademark application or registration, the applicant/owner of the mark or its agent is likely to receive one or more “official looking” letters from an agency in the U.S. or elsewhere, offering services ranging from publication of the mark in a yet-unheard-of-directory or catalog to monitoring or registration services.  Of course, these offers come with a (sometimes hefty) price tag attached and often confuse applicants into believing that a certain action must be taken to avoid jeopardizing their applications or registrations.  Be aware that, if any official action is due on an application, notice of such action will only come from one of two places: the U.S. Patent and Trademark Office itself or your authorized agent, such as a legal advisor.

The Trade/Service Mark Application Process

By Linda Tancs

Use the following six steps in the U.S. trademark (or service mark) application process as a reference guide for your next filing:

1.  Upon receipt by the Trademark Office, the application will receive a filing date and enter pre-examination processing, during which the application data will be entered into the Trademark Office system.

2.  The application will be forwarded to an Examining Attorney in the Trademark Office in approximately 6 months (more or less, depending on the staffing of the Office at the time).  The Examiner will review the application for compliance with the Trademark Act.  Notwithstanding any legal conclusion that the mark is registrable, the application is ultimately subject to a determination by the Examiner whether he or she believes that the mark can be registered.  If the Examiner refuses registration of the proposed mark, a communication will be sent to the correspondent listed in the application requesting a response to the Examiner’s conclusions within a 6-month period, during which time a response should be filed unless the application will be abandoned.  If the application is not refused, or any objections to it are resolved, then the application will be approved for publication for opposition.

3.  All trademark and service mark applications are published in the Trademark Official Gazette.  During the 30 days following publication of the application, anyone who believes that they may be harmed by registration of the mark may file a proceeding at the Trademark Trial and Appeal Board (TTAB) to oppose registration of the mark.

4.  After the mark has been published in the Gazette, and if no opposition has been filed, then the application continues to be pending until the mark is actually used in interstate commerce.  Trademark applications are based on either (i) actual use of the mark in commerce; or (ii) a bona fide intention to use the mark in commerce.

5.  For applications based on a bona fide intention to use the mark in commerce, the Trademark Office will, upon publication without opposition, issue a Notice of Allowance.  The Notice of Allowance gives the applicant 6 months to begin using the mark in commerce, at which time a Statement of Use is filed.  It is possible to request an extension of time to file a Statement of Use.  Up to 5 extensions can be granted.  Each extension, if accepted by the Trademark Office, will last for a 6-month period calculated as of the issue date of the Notice of Allowance.  Once the Statement of Use is filed (including a specimen showing use of the mark, such as labels or tags for goods or brochures, pamphlets or other marketing materials for services), it will be examined by the Examiner to ensure that the materials submitted comply with the Trademark Act.  If no objection is lodged, a Certificate of Registration will issue for the mark.  Applications based on actual use of the mark (as opposed to an application based on a bona fide intent to use the mark) are not subject to a Notice of Allowance and a Statement of Use (unless the application is converted to an intent-to-use application) because the required specimen of use of the mark is filed with the application.  Once published for opposition, use-based marks proceed to registration is there is no opposition lodged against the mark.

6.  After successful registration of a mark, there is a possibility that a party objecting to its registration will file an action at the TTAB to have the mark cancelled.  A mark is vulnerable to attack during the application process through an opposition proceeding of a third party (as noted above) or again after registration through a cancellation proceeding.  Provided that a mark is not cancelled, its registration will last 10 years, at which time the mark can be renewed for an additional 10-year term (and subsequent 10 year terms thereafter) so long as the mark is in use.  During the registration of a mark, it is necessary in most cases to file certain affidavits stating that the mark is still being used.  Be mindful of due dates on your calendar system.  The Trademark Office does send some courtesy email reminders of due dates under some circumstances but is not liable for any errors or omissions in that regard.

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