Posts Tagged ‘trademark’

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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How to file a Petition To Cancel Trademark before TTAB?

Thursday, September 26th, 2013

trademark TTABQuestion: How do I cancel someone else’s registered trademark?

Answer: You can file a petition to cancel before the Trademark Trial & Appeal Board.

Trademark Trial and Appeal Board (TTAB) – United States Patent …   www.uspto.gov/trademarks/process/appeal/

 A petition to cancel essentially an arbitration proceeding. TTAB has jurisdiction and authority. Service the federal court. You can either litigate the validity of a registered trademark before the trademark trial and appeal Board or in a federal court with jurisdiction. An experienced  trademark attorney can help you decide which forum is best for your specific trademark issue.

Aug 12, 2013 – Trademark Trial and Appeal Board:  The grounds for cancellation are as follows:

- Immoral or scandalous matter. Trademark Act section 2(a)
- Deceptiveness. Trademark Act section 2(a)
- False suggestion of a connection. Trademark Act section 2(a)
- Geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods. Uruguay Round Agreements Act section 2(9)
- Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. Trademark Act section 2(b)
- Consists of or comprises a name, portrait, or signature of a living individual without written consent, or the name, portrait, or signature of a deceased president without the written consent of the surviving spouse. Trademark Act section 2(c)
- The mark comprises matter that, as a whole, is functional. Trademark Act section 2(e)(5)
- Fraud. Torres v. Cantine Torresella S.r.l. 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
- Genericness. Trademark Act section 23
- Abandonment. Trademark Act section 14
- Violates the provisions of Trademark Act § 4. Trademark Act § 4 (collective and certification marks)
- The registration is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.. Trademark Act section 14
- Priority and likelihood of confusion. Trademark Act section 2(d)
- The mark is merely descriptive. Trademark Act section 2(e)(1)
- The mark is deceptively misdescriptive. Trademark Act section 2(e)(1)
- The mark is primarily geographically descriptive. Trademark Act section 2(e)(2)
- The mark is primarily geographically deceptively misdescriptive. Trademark Act section 2(e)(3)
- The mark is primarily merely a surname. Trademark Act section 2(e)(4)
- Dilution. Trademark Act section 43(c)

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How to Register a Name as a Trademark

Monday, June 25th, 2012

If you want to protect your name as a trademark, there a numerous steps that you need to go through. It is not as simple as simply filling out a form. If you do anything incorrectly on your trademark registration application, your trademark, even if it gets registered, because it’s of course based on the information that you and your trademark attorneys provide, could be invalid. So you could have spent all that time and money for nothing, because somebody challenges your trademark down the line and it turns out you provided some misinformation, either intentionally or innocently. Boom, your trademark is invalid.

Continue reading How to Register a Name as a Trademark »

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Intellectual Property: Trademark Rights

Thursday, March 22nd, 2012

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

My name is Enrico Schaefer and I specialize in trademark and intellectual property issues.  Today, we’re going to be talking a bit about intellectual property and trademark rights.  Some of the questions we receive from clients and prospective clients all the time are, “what is the difference between the various types of intellectual property?”  “Is a trademark intellectual property?” “What is the difference between a trademark and a copyright?”  “What is the difference between a patent and a trademark?” “What is the difference between a patent and a copyright?”  Today, we’re going to have a little bit of an intellectual property primer and we’re going to talk a little bit about the differences between various forms of intellectual property and, in fact, what is intellectual property.  Today, we’re going to be dealing with a very broad topic of IP. Continue reading Intellectual Property: Trademark Rights »

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What is the Difference between a Trademark, Copyright and Patent?

Monday, March 19th, 2012

MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello everyone. And welcome to the Trademark Information Network. I’m Mark Trademan, alongside Sandhya Mahajan, our investigative reporter, and Grant Gainsworth, our Senior News Analyst.

Here at the network, we are dedicated to bringing you the most up-to-date information that will help you apply to register your trademark and, if successful, keep that registration alive. Hope you’ll stay with us throughout the news cycle. Continue reading What is the Difference between a Trademark, Copyright and Patent? »

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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