January 06, 2016

Trademark Resolutions

Happy new year! Gone is the old year and with it the tired top ten lists that rehash stale events that occurred months before. This is not a top ten list. It is a top sixteen list! Completely different. These are good resolutions for all trademark owners, and some are inspired by recent trademark cases. If you want to know more about any of those major cases, feel free to peruse recent Trademarkology posts. In the meantime, enjoy!

Be distinctive When selecting new marks, invent a whole new word or pick a word that bears no connection with the goods or services you offer. These marks are the strongest inherently.

Be respectful Yes, the Federal Circuit recently found the statutory proscription against registration of disparaging marks unconstitutional, but that may not be the last word on the issue. Even if it is, what would your mother think?

Be diligent Search before you adopt a mark. Research and investigate a portfolio before concluding a merger, acquisition, or similar transaction.

Think globally Consider where your mark is used (where products are manufactured, distributed, and sold). Register and protect your marks there.

Be vigilant Police your marks. Monitor the marketplace and your competitors. Protect the boundaries of your mark's scope of protection.

Be conscientious Use your registered marks in ways trademark offices will accept as specimens of use. Make maintaining registrations a breeze.

Build Goodwill License your mark with new goods and services, associate your mark with causes close to your heart, and build goodwill in the process.

Be organized Make lists.

Act promptly Once the decision is made, expressly abandon the application before the notice of opposition is filed. File the notice of opposition before the applicant abandons its application. In contrast with my timesheet, the TTAB considers each day an indivisible expanse of time and that has consequences for determining who filed "first."

Be prepared Make sure you have objective (documented) evidence supporting your intent to use a mark when filing an intent to use application.

Think of others Third party registrations and trademark use may influence the analysis of whether one mark is likely to be confused with another.

Be yourself Use your mark to refer exclusively to yourself. Trying to buddy up to royalty will not do you any favors.

Be tacky The jury decides whether two marks have sufficiently similar commercial impressions to be 'tacked' for determining priority. (OK, this decision doesn't lend itself to a good recommendation.)

Be wary Even though there has been at least one indictment, scam artists abound and find special ways to prey on trademark owners. If you don't recognize the source of that invoice, call your trademark attorney.

Be creative Surely we can think of one more.

Be careful The outcome of a TTAB decision could dictate the outcome of a future district court case.