Archive for the ‘Trademark Law’ Category

Trademark Clearinghouse: An Inside Look – YouTube Video

Friday, August 29th, 2014

This is a PowerPoint presentation on an overview of the Trademark Clearinghouse presented by Robert Kriner of Corsearch Digital Brand Management Consultants, and Vicky Folens of Deloitte.

Janice – Webinar Commentator: Thank you for joining today’s webinar on the Trademark Clearinghouse: An Inside Look.  Our presenters are Rob Kriner, Corsearch Digital Brand Management Consultant and Vicky Folens, Senior Manager of IP & Internet Services and Strategy at Deloitte. Vicky is a member of the Trademark Clearinghouse team and her roll involves protection IP on the internet and leading an IP team.  She has years of experience helping clients with trademark registration, drafting license or transfer agreements, IP litigation matters, compliance with data protection laws, as well as managing large scale IP audits in relations to sunrise periods for new gTLDs and ccTLDs such as .eu, .asia and .co.

Rob Kriner has been in IP status for over five years working in domain name registration management, internet monitoring and other areas of online branding registration. He recently led the development of the Trademark Clearinghouse filing service at Corsearch. For those unfamiliar with the Trademark Clearinghouse, it is the essential repository for verified brands to be protected in the new gTLD or generic top level domains program introduced by ICANN. The Internet Corporation for Assigned Names and Numbers.

Rob will discuss the benefits of filing with the Trademark Clearinghouse and describe Corsearch’s agent services. Then he will share an inside look at the Trademark Clearinghouse processes and other key details. The event will not qualify for CLE credit but is primarily designed to be an informational update. If you have any questions during the presentation, please enter them in the chat box and we will address them, as many as we can at the end of the webinar.

Rob Kriner will now explain the importance of the Trademark Clearinghouse.

Continue reading Trademark Clearinghouse: An Inside Look – YouTube Video »

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Understanding Trademark Availability

Thursday, July 10th, 2014

Here is some background information on trademark availability issues. This information is provided purely by way of background and so that you understand the process. These are the most common questions we get on trademark availability.

 

FAQ Trademark Availability

Q. What is a trademark availability search?

A. In general, trademark availability is a search done by a qualified trademark attorney or staff member under that attorney’s direction to identify other possible uses of the market of your proposed trademark, or words which may create customer confusion as related to your proposed trademark in your proposed industry.

trademark

Q. Do I have to get a trademark availability search before registering a trademark?

A. The answer is No, however you will be taking a significant risk that you will either not achieve registration or even if you do achieve registration, that your trademark will later be determined to be invalid or infringing on someone else’s mark.

 

Q. I already did a Google search and checked the trademark database, isn’t this enough?

A. It depends. Most clients do not understand trademark law well enough to come up with a different variations of your proposed mark in order to do a comprehensive search. A search typically involves variations of your proposed trademark or service mark, phonetic variations and other advanced search techniques within the trademark database.

Continue reading Understanding Trademark Availability »

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How Do You Trademark a Name in the US? – YouTube Video

Monday, July 7th, 2014

The process of trademarking a brand name may sound like a relatively easy process.  However, there are crucial steps that need to be considered and/or completed before, during and after the application process.  Some of these things include understanding what the factors are for determining the filing fee, knowing how to respond to any possible Office Actions filed by the Examining Attorney during the application process, and taking the proper steps to protect your trademark once it is filed.  This video gives a good overview of the basic steps which need to be done to trademark a brand name, but there are other specific details that also need to be covered during the process.  Failing to be prepared for such potential issues could lead to the denial of your application or a trademark infringement dispute.  The attorneys and staff at Traverse Legal have extensive experience in the entire process of trademarking a brand name and can help you successfully get your brand name trademarked. 

Hi, I’m Kiyla Fenell, business expert with UltimateBizSystems.com.  A frequent question I get in my line of work is how to trademark a name?  So today, I’m going to give you my best advice on how to protect your intellectual property from copycats that might try to steal your work.  The first thing that you need to know is a trademark is a brand name.  There are universal symbols that are used to identify a brand name has been taken.  The very first is the ‘R’.  The ‘R’ means that the trademark has been registered.  Second, is the TM if it is not.  If you currently using a brand name, you can already begin to use the TM.    Continue reading How Do You Trademark a Name in the US? – YouTube Video »

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Common Litigation and Prosecution Trademark Pitfalls in 2011-2012 – YouTube Video

Thursday, July 3rd, 2014

The Fair Use Defense. I’ll go to over the case and then I’ll make the point that I am trying to make. But the Fair Use Defense is codified in the Lanham Act under 15 USC 1115 (b)(4) and its … there are two types of trademark fair use.  There’s the classic trademarks fair use defense where the defendant has used the plaintiff’s mark to describe the defendant’s own products or nominative fair use where the defendant has used a trademarked term to describe the plaintiff’s product even though the defendant’s ultimate goal is to describe its own products.  So whether you’re dealing with the classic or the nominative fair use defense, there are several prongs that you need to satisfy.    Continue reading Common Litigation and Prosecution Trademark Pitfalls in 2011-2012 – YouTube Video »

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Trademark Agreements

Tuesday, October 29th, 2013

Trademark Agreements Assignments Versus Licenses
Matt: Hello! Welcome back to Trademark Law Radio. This is Matt Plessner, and today we’re going to be discussing the difference between assignments and licenses in terms of trademark agreements. And to help us out today, Brian Hall, attorney at law of the Traverse Legal office of Traverse City, MI, joins us once again today. Brian, hello.

 

Brian: How’s it going Matt?

 

Matt: Doing pretty well, thank you for asking. Now, let’s start off by talking about, Brian, why do trademark owners enter into trademark agreements?

Continue reading Trademark Agreements »

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Trademark Clearinghouse Update: Should I register my trademark in the new ICANN Trademark Clearinghouse?

Thursday, September 26th, 2013

Should I register my trademark in the new ICANN Trademark Clearinghouse?

The countdown to a whole new universe of web extensions is underway. From the Summer of 2013, hundreds of new top level domains, or gTLD’s, will begin to appear in the online space, resulting in a whole universe of new domains. But while the new extensions offer many exciting opportunities for businesses online, brand owners also need peace of mind that their trademark is protected within this new universe. For this reason, ICANN, the organization that oversees domain names on the internet, has created the Trademark Clearinghouse. This is a centralized database of validated trademarks operated by world- class providers Deloitte and IBM. The Trademark Clearinghouse is the only authorized and universal means of a brand owner protecting their trademarks during the launch and take-off periods of every new gTLD.

Continue reading Trademark Clearinghouse Update: Should I register my trademark in the new ICANN Trademark Clearinghouse? »

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How to Defend Against Trademark Counterfeit

Thursday, September 26th, 2013

Matt: Hi, and welcome back to Trademark Law Radio.  I’m Matt Plessner. Today we’re going to be discussing trademark counterfeiting, and how to defend yourself against claims of counterfeiting. To help us, we’re speaking again with Brian Hall of the Traverse Legal office of Traverse City, Michigan…Brian, nice to have you back.

 
Brian: Thanks Matt, it’s good to be here again.

 
Matt: Now Brian, fist of all, what is trademark counterfeiting?

Continue reading How to Defend Against Trademark Counterfeit »

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When Can I Use a Registered Ⓡ vs. Common Law ™ Trademark Symbol?

Tuesday, September 24th, 2013

 Ⓡ vs. ™?

Author:

Clients and prospective clients alike are often confused as to which trademark symbol they can use and when. There are various options available. First, the registered ® symbol, which is displayed in superscript form next to the mark with a capital R enclosed by a circle. Second, is the ™ symbol, which is displayed in superscript form next to the mark with capitol T and a capital M. Third, is the service mark symbol known as ѕм, which is displayed in superscript form next to the mark with a capital, S and a capital M. Trademark owners should not use these interchangeably as each has a very specific meaning.

The registered R symbol is reserved for trademarks that are registered with the United States Patent and Trademark Office. However the registered R symbol, it is not only reserved for trademarks that are registered with the USPTO but also for service marks that are registered with the USPTO.  . Keep in mind, the only difference between a trademark and a service mark is that the mark is used with goods or products for a trademark, where as the mark is used with services for a service mark.

There is only one kind of registered symbol, and that is the registered ® symbol. A similar symbol, with a very different meaning, is the copyright symbol, which is epitomized by a small c with a circle around it, or ©  That is for copyrights only and should never be used with a trademark to identify designation, although it may be displayed if indeed the logo or other design is subject to both copyright and trademark protection. People should also understand that the registered trademarks symbol may also be used on marks that are not registered with the USPTO if they are registered in other countries. Therefore, it usually takes researching and, effort to determine whether or not the registered ® symbol is referring to a United States federally registered trademark or some other trademark registered in a foreign jurisdiction. Continue reading When Can I Use a Registered Ⓡ vs. Common Law ™ Trademark Symbol? »

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How To Defend Against Trademark Counterfeit Claim

Wednesday, September 18th, 2013

Matt:  Hi, and welcome back to Trademark Law Radio.  I’m Matt Plessner.  Today we’re going to be discussing trademark counterfeiting, and how to defend yourself against claims of trademark counterfeiting.  To help us, we’re speaking again with Brian Hall of the Traverse Legal office of Traverse City, Michigan…Brian, nice to have you back.

Brian:  Thanks Matt, it’s good to be here again.

Matt:  Now Brian, first of all, what is trademark counterfeiting?

Brian:  That’s a great question, Matt.  A lot people are aware of trademark infringement and related claims, but trademark counterfeiting is something that people think about when they’re buying or selling a product that isn’t the actual or genuine product, but instead has been produced by someone else to look like that product and it bares the mark of the actual product.  So, under law, the Lanham Act, which is the act that specifically deals with trademarks (and it is a federal act), it prohibits the use and commerce of counterfeit trademark in a matter that’s likely to cause consumer confusion, and it’s further provides that anyone using the counterfeit trademark in that way, meaning as a counterfeit, will be liable in a civil action to the registrant of the trademark.  So, put simply, what it means is, under law, if someone uses the trademark of another on a product that’s not the actual product or a genuine product then they can be liable for trademark counterfeiting.
Continue reading How To Defend Against Trademark Counterfeit Claim »

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Trademark Infringement on the Internet: What to do?

Monday, August 5th, 2013

We get a lot of questions on trademark issues and most of them deal with internet-based trademark infringement or online trademark infringement claims. When someone uses your trademark or service mark on the Internet, you potentially will lose more than just customers. You’ll lose revenue, profits, and have your website traffic diverted to someone else’s website. As importantly, you need to understand that a failure to protect your trademark may result in voiding your mark altogether. A good internet and technology lawyer will be able to help you understand your options when facing an unauthorized use of your trademark on a website, blog, e-commerce platform, online sales platform, Facebook, Twitter or other online media. Trademark infringement is serious business. Trademark infringement on the Internet needs to be dealt with early, before you lose your trademark rights

The other thing that you need to understand about trademark law is that much more than the literal elements of the mark are protected. Trademark law protects any unauthorized trademark use which is likely to cause consumer confusion about the source and origin of goods.  As a trademark lawyer, I often find myself explaining to clients that just because a literal word doesn’t come back on a Google search, doesn’t mean that you won’t be infringing someone else’s trademark if you choose it. You have to search for variations and equivalents of the word in order to see if anything is similar. If it is similar, you need to ask yourself whether or not your trademark is going to be used in a distinct area of goods or services from someone else’s trademark use. There is a Delta Airlines. There is also a Delta Faucet. They do coexist. But there will never be another faucet company incorporating a similar word to the “Delta.” And there won’t be another airline which uses a similar word to the word “Delta.” And the logos of both companies are fully protected against any trademark infringement which might cause consumer confusion. Speak to a competent trademark attorney who specializes in Internet Law today to better understand your rights.

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Official Trademark Clearinghouse Agent
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Events & Conferences:
  • International Trademark Association 2011, San Francisco, California
  • Cyber Law Summit 2011, Las Vegas, Nevada
  • Game Developers Conference 2011, San Francisco, California
  • DOMAINfest 2011, Santa Monica, California
Recent Attorney Speaking Engagements:
  • South By Southwest 2010 SXSW Interactive Conference, Austin, Texas
  • West LegalEdcenter Midwestern Law Firm Management, Chicago, Illinois
  • Internet Advertising under Part 255, Altitude Design Summit, Salt Lake City, Utah
  • Online Defamation and Reputation Management, News Talk 650 AM, The Cory Kolt Show, Canada Public Radio Saskatewan Canada
  • Alternative Fee Structures, Center for Competitive Management, Jersey City, New Jersey
  • FTC Part 255 Advertising Requirements, Mom 2.0 Conference, Houston, Texas
  • Webmaster Radio, Cybersquatting & Domain Monetization, Fort Lauderdale, Florida
Notable Complex Litigation Cases Handled By Our Lawyers:
  • Trademark Infringement, Milwaukee, Wisconsin
  • Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan
  • Internet Defamation & Online Libel Indianapolis, Indiana
  • Trade Secret Theft, Chicago, Illinois
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Miami, Florida
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Eastern Dist. of Virginia, Alexandria
  • Stolen Domain Name, Orlando, Florida
  • Commercial Litigation, Tampa, Florida
  • Copyright Infringement and Cybersquatting Law, Grand Rapids, Michigan
  • Mass Tort Litigation, Los Angeles, California
  • Stolen Domain Name, Detroit, Michigan
  • Adwords Keyword Trademark Infringement, Los Angeles, California
  • Trademark Infringement & Unfair Competition, Boston, Massachusetts
  • Non-Compete Agreement and Trade Secret Theft, Detroit, Michigan
  • Mass Tort, Philadelphia, Pennsylvania
  • Mass Tort, Tyler, Texas
  • Insurance Indemnity, New York
  • Copyright Infringement, Detroit, Michigan