Trademark Auditing is More Important Than Ever

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.

Trademark a Catchphrase

A catchphrase is an expression usually popularized by continued use by individuals or fictional characters.  A catchphrase, like a word or design, can be  trademarked and entitled to the same protection as such popular trademarks as NIKE and their SWOOSH.  Catchphrases have become yet another valuable trademark for companies and individuals alike.  Here is a list of some well-known catch phrases as reported on by Caroline Donnelly here.

Third-Party Contractors: Obtaining Their Copyrights

While your company has rights over all material created by your employees within your business, a whole new standard is at play when you contract another company to create copyrightable works. For example, if you contract a graphic design company to create a logo for your company, you <strong>only</strong> have the rights to that work if the third-party signs an agreement that gives you those rights.

This agreement is more than the simple receipt that the designers may give you upon the completion of their work. This is because your company does not own the work simply because its creation was paid for by you. Such work is the property of the artist/design company until they sign an agreement giving the copyrights to the person who contracted the work.

This issue of copyright ownership is why it is so important for companies who are planning to contract a third-party to consult an attorney before any deal is made. With the help of an attorney an effective agreement can be drafted that leaves your company free to use the work in any way it pleases. Without such help, it is easy to find your company forced to seek permission or negotiate a license agreement in order to use the work.

Fighting Trademark Infringements

If it becomes necessary to challenge a third party's use of a mark, the most important legal hurdle to jump is the right to the mark. If you are to stop the use of another party's mark, you have to be able to prove that you have superior rights to the mark. This is to say that the third party started using the mark after your company.

It is also important for a court to realize the confusion that the trademark violation has upon consumers, as a "likelihood of confusion" is necessary to win relief for a trademark infringement. This often means that both the marks and the products or services involved must be sufficiently similar to cause confusion.

However, with the help of an attorney, it is possible to protect your trademark from being infringed upon in the first place. The most effective way to do this is by filing opposition to the registration of another mark with the appropriate trademark office, which, if successful, will have the application denied.

A follow up to achieving the denial of a third party's trademark application is to send them a "cease and desist" letter, which will allow you to confirm that they have stopped using your prior registered trademark.

Utilizing Your Trademark

It is important that you utilize your trademark correctly in order to ensure that your customers perceive a distinct and uniform mark. This is important in all internal and external communications, and should be ensured throughout your company.

It is usually very helpful to prepare a style guide to distribute among your company in order to brief everyone about the use of your newly minted mark.

Key principles of the use of your trademark:
1) Follow the mark with a term that describes the product or service
2) Distinguish the mark from other text
3) Use the mark uniformly

By following those three simple rules you can ensure that your trademark is best prepared to become a household name.

Protecting the Trademark-Domain Connection

After your company has selected a trademark, it is imperative to get a hold of the corresponding domain names in the top-level domains. In this way, your consumers can type: "yourbrand.com" into their browser in order to find your product and company.

However, if you type that into your own browser and find that is already in use, you don't have to scrap the trademark all together. If the original domain name is already taken, you can try a different top-level domain, modify your choice of domain name, or attempt to purchase the registration from the original owner.

If you find that a domain name in relation to your trademark was registered in bad-faith by a third party "cyber-squatter", it is possible to have the domain name transferred to you through arbitration. This however, is rarely a legal issue that can be effectively handled by traditional firms, and should be referred to a firm experienced in domain name disputes.

Define: Brand

Wikipedia defines a brand as: a name, logo, slogan, and/or design scheme associated with a product or service. Wikipedia also defines a brand as a symbolic embodiment of all the information connected to the product and serves to create associations and expectations around it.

A brand is anything that reminds the recipient of a good or service from a particular source. This "anything" can really be just that. A brand can be any tool of identification, including a jingle, device, symbol, slogan, or even a color combination. These "identifiers" are collectively known as trademarks, and when a company selects one, a brand is born.

It is through trademark and intellectual property law that these identifiers are protected, and when your company is trying to pick its own mark, it is important to ensure that it is protected from competitors or hijackers to the fullest extent of the law.

Brand Name Assets

Brand Assets are oftentimes the most valuable asset owned by a company and each year BusinessWeek, with the help of Interbrand, publish their list of the world's most valuable brands. In 2006, Coca-Cola was the world's most valuable brand with an approximate value of $67 billion. Also high on the list of 2006's most valuable brands were the familiar names of Disney and McDonald's, which were both valued at approximately $27 billion. Rounding out the top ten was Mercedes-Benz, valued at approximately $22 million.

Rather than baulk at the potential price-tag these brands could take, the question that all small-time entrepreneurs should be asking is how one gets a brand to be that valuable.

The truth is that there are so many factors that go into making a brand's value number in the millions. This can include investments in advertisements, the quality of the product or service behind the brand, and countless other factors that mark the company that owns the brand, and the brand itself. And if you want to own a brand that can make it on that list, you have to ensure that you master as many of those factors as possible.

The process of building brand name value must be a coordinated effort that includes sound business practices, along with active protection of that brand within the parameters of the law. With the help of attorneys experienced in trademark and intellectual property law, it is possible to greatly contribute to both the creation and adoption of a strong brand that will propel your business forward.

Chicago area company settles logo infringement case for $3 million

Chicago area company settles logo infringement case for $3 million.

A Chicago area businessman has agreed to pay $3.1 million to settle a trademark infringement case involving unauthorized use of university logos. Donald Bruno, of Burr Ridge,, was placed on probation for 2? years after pleading guilty to unauthorized use of a trademark. Bruno, president of Romeoville-based American Family Products, agreed to pay $1.15 million in criminal fines and $1.74 million in civil fines, penalties and restitution, according to court records in Will County, Ill. The company and Bruno were accused of illegally using logos from the University of Iowa, Iowa State University and nearly 60 other universities and companies on sports memorabilia.