Trademark Clearance Search: What Trademark Databases Should I Be Searching?

In today’s global marketplace, it is a virtual certainty that every brand describing a good or service has a trademark issues.  There is essentially a shortage of available words and increased tension between use of those brands in different countries. 

Trademark Monitoring Is The Key To Trademark Protection

Traverse Legal Radio

Today's Guest - Brian Hall  

Today's Host - Damien Allen August 2007

Play Show: Trademark Monitoring Is the Key To Trademark Protection
Traverse Legal, PLC
Read Transcript:

powered by Vertio.net

Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

Brands (Trademarks) are the Way to Distinguish Yourself and the Quality of Your Goods or Services on the Internet

We have said it time and time again: trademarks are increasingly important in today’s digital age.  Eric Schmidt, CEO of Google, appears to echo our urgings when, as reported, he said: “Brands are the solution, not the problem, . . . Brands are how you sort out the cesspool.”  He went on to state:  “The fundamental way to increase your rank is to increase your relevance. . ."

While Mr. Schmidt is talking about the need for quality content in order to appear relevant within the Google search engine, he also appears to be stressing the need for a reputable brand that consumers will recognize and trust.

If You Plan to do Business Internationally, You Should File a Community Trade Mark

With the advent of the Internet, most businesses with a website can be doing business internationally.  Any e-commerce site would definitely have the potential, and likelihood, of reaching consumers in foreign countries.  Who truly knows where your product or service may be the most successful.  As such, it the prudent decision is to file for a Community Trade Mark (CTM).  A Community Trade Mark allows a registrant to protect a trademark in all of the countries of the European Union (EU) by filing a single trademark application with one single office, the Office for Harmonization in the Internal Market (OHIM).

Trademark Monitoring Identifies Third Party Use: A Qualified Trademark Attorney Will Help You Understand How To Protect Your Marks In Cyberspace

Trademark Protection: The Necessary Evil of Analytics : StraightUpSearch

At the start of the 3rd quarter, marketing plans and budgets will be made, debated and negotiated for 2009. Marketers, executives and business owners need to consider not only how marketing and advertising strategies from the past have performed but also what important elements are missing from your plan. One often overlooked item in online marketing plans is trademark monitoring services, as a part of your comprehensive analytics package.

Trademark monitoring is only part of the effort required to protect your brands in cyberspace. Further, monitoring uses of your trademark protected words in keyword advertising represents a small niche of potential infringing uses.

You need a qualified trademark attorney to analyze the results of the trademark monitoring effort. Only a qualified trademark attorney can offer competent legal advice about what uses of your trademark protected words may qualify of trademark infringement, send a trademark cease and desist letter where applicable and guide your company through the myriad of issues related to potential on-line trademark infringement. Contact a trademark attorney to learn more about on-line brand protection and trademark monitoring services.

Trademark Auditing is More Important than Ever: Trademark Registration Requires a Lot More than Simply Filing with the USPTO

The United States Patent and Trademark Office, like most government offices, survives on the accuracy of its data.  Trademark applications and other submissions to the USPTO are expected to be accurate.  A simple mistake in the listing of goods and services can be seen as perpetrating a fraud on the USPTO and will completely invalidate an application, even where the other listed goods and services were not affected by the mistake.  This makes trademark auditing an extremely important part of any trademark holder's intellectual property protection strategy.  Trademark auditing is an evaluation of a company or individual's marks to ensure that those marks remain accurately registered in association with the correct classes of goods or services.  Failing to accurately register or monitor your marks can result in losing one of your most valuable assets: the goodwill associated with your trademark.

Trade Name vs. Trademark: TTAB Clarifies the Difference Between Words Used to Describe Products and Services and Those Indicating a Business Name

When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.”  But not all words qualify as trademarks.  A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark.  Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.

Three Stripes? You're Out! Adidas Awarded $305 mil against Payless for Willful Infringement

An experienced trademark attorney can help you avoid the mistakes of those that have come before you.  Experienced trademark attorneys understand how to help businesses abide by the terms of settlement agreements, and what actions are likely to be found infringing in the aftermath of a negotiated settlement in a trademark dispute.  Failing to understand the mistakes of the past can be a costly misstep in trademark law, and in the case of Payless Shoes it proved to be a $305 million disaster. 

Trademark Rights – Registration Alone Isn’t Enough: Filing a Statement of Use for a 1(b) Application

Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough.  It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application.  1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection.  A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce.  This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party.  But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.

The Lifecycle of a Trademark Opposition: Understanding the Trademark Opposition Process at the Trademark Trial and Appeal Board (TTAB)

What do you do when you, or preferably your trademark-monitoring attorney, find a application in the United States’ Patent and Trademark Office’s database that is likely to confuse consumers because it is similar to your mark?  One possible solution is to file an opposition.  Every trademark must go through a series of stages on its way to registration, hopefully on the Principal Register.  One of these stages, titled publication for opposition, allows a party to oppose the registration of a trademark that it believes is likely to cause confusion with its mark.