How To Brand Yourself Like A Celebrity

Posted by Randy Michels on Jan 26, 2016 4:39:13 PM

Personal brands are often the most valuable assets that celebrities own, driving demand and building relationships with fans, customers, and partners. Savvy celebrities protect their personal brands with federal trademark registrations.

Federal trademark registration provides important legal benefits such as a presumption of nationwide validity and the right to use the ® symbol. Federal registration can also be instrumental in enforcing rights with social networking sites like Facebook, Instagram, Twitter, YouTube, Pinterest, LinkedIn, and Google+.

Sign up here for a free trademark assessment and learn your safety score.

When a federal trademark application identifies a living person, the trademark can only be registered with the written consent of that person. This requirement protects people from having their names registered as trademarks by someone else. It also makes the U.S. Patent and Trademark Office (USPTO) the top celebrity autograph collector in the world.

Here are a few names that you might recognize from the USPTO database:

Katy Perry a/k/a Katheryn Hudson

Justin Bieber

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Topics: Branding, Trademark Registration

U.S. Customs and Border Protection: Safeguarding America's Trademarks

Posted by Randy Michels on Jan 26, 2016 3:13:29 PM

So you just received a registration certificate for your trademark from the U.S. Patent and Trademark Office (USPTO). Now what? If you want to protect your trademark rights, then you should sign up for trademark monitoring services.

Another important form of protection for your trademark registration can be obtained from U.S. Customs and Border Protection (CBP). CBP is not only tasked with safeguarding America's borders, but it's also responsible for safeguarding America's trademarks from overseas infringers.

Sign up here for a free trademark assessment and learn your safety score.

CBP examines cargo entering the United States to ensure that it is in compliance with a variety of laws. This includes determining whether or not an importation infringes on someone else's intellectual property rights. CBP maintains a database of trademarks, trade names and copyrights that have been recorded with CBP. Port personnel use this database for help in determining if there is a violation.

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Topics: Trademark Registration

6 Things To Do After You Register A Trademark

Posted by Randy Michels on Jan 26, 2016 2:16:39 PM

One of the biggest trademark stories of 2015 was the registration of our key logo with the U.S. Patent and Trademark Office (USPTO):

Ok, maybe our trademark registration is not that important, but it does raise the issue of what to do next. Here are the 6 things you should do after receiving a federal trademark registration:

Sign up here for a free trademark assessment and learn your safety score.

1. Docket deadlines

To maintain rights in the registration, the following documents must be filed with the USPTO at specified times:

  • A Declaration of Continued Use or Excusable Nonuse must be filed on or between the fifth anniversary of registration and the sixth anniversary of registration; and
  • A Declaration of Continued Use or Excusable Nonuse and an Application for Renewal must be filed on or between the ninth anniversary of registration and tenth anniversary of registration and during the last year of every ten-year period thereafter.

Failure to file these documents will result in cancellation of the registration. Trademark lawyers (like us) can help you keep track of these deadlines.

2. Use the federal trademark registration symbol

A notice of registration should be displayed with the trademark whenever it is used in connection with the goods or services recited in the registration. This notice may take the form of the words “Registered in the U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or ®. Failure to provide notice could limit the recovery of damages for trademark violations.

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Topics: Trademark Registration

10 Disadvantages of Using the Madrid Protocol For Trademark Protection in the United States

Posted by Randy Michels on Jan 26, 2016 1:44:38 PM

Before November 2, 2003, foreign trademark owners only had one option for seeking registration of a trademark in the United States: a national trademark application filing with the U.S. Patent and Trademark Office (USPTO). As of that date, foreign trademark owners gained an alternative filing option when the Madrid Protocol went into effect. This enabled foreign trademark owners to seek extension of protection of an international registration of a mark to the United States.

While seeking trademark registration in the United States via a Madrid Protocol filing may be a cost-effective option for certain applicants, our experience has shown that it is not beneficial in all situations. We have identified 10 disadvantages of using the Madrid Protocol to obtain trademark protection in the United States:

(1) Madrid Protocol filings are subject to central attack

“Central attack” means that if the original application used to initiate a Madrid Protocol filing is successfully disputed or denied, then all other trademark protections granted by the Madrid Protocol are cancelled as well. This is a potentially catastrophic outcome for the applicant. The applicant can try converting each Madrid Protocol filing to a national application in each jurisdiction, but this will lead to substantial additional costs since a transformation application must start anew with local counsel and another set of filing fees. Thus, in the event of central attack, the Madrid Protocol filing is a waste of time and money.

(2) Supplemental Register cannot be used

Most trademarks registered in the United States are registered on the Principal Register, which gives trademark owners the strongest trademark rights in the United States. Certain marks that are not eligible for registration on the Principal Register, but are nevertheless capable of distinguishing an applicant’s goods or services, such as merely descriptive marks, primarily geographically descriptive marks and marks that are primarily merely surnames, may be registered on the Supplemental Register. While trademarks registered on the Supplemental Register do not enjoy the same level of protection as trademarks on the Principal Register, a Supplemental registration does provide advantages that would not otherwise be available to owners of common law trademarks. For example, a registration on the Supplemental Register gives its owner the right to use the registered ® symbol. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods and/or services.

Sign up here for a free trademark assessment and learn your safety score.

Madrid Protocol filings are not eligible for the Supplemental Register. If a Madrid Protocol filing is deemed primarily merely a surname, for example, then there is no possibility of moving it to the Supplemental Register as would be done with a national U.S. application. Instead, it must be abandoned and a new national application filed, incurring additional fees and losing the priority date of the Madrid Protocol filing.

(3) Class numbers cannot be changed

The next three disadvantages involve descriptions of goods and services in an application. For national U.S. applications, the USPTO allows adjustments to ensure that descriptions within the scope of the original language of the application can proceed to registration. Because Madrid Protocol filings are tied to an International Registration, however, the USPTO imposes several restrictions in how a description of goods and services can be amended. The first restriction is that the class numbers used within a Madrid Protocol filing cannot be changed.

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Topics: Madrid Protocol

How To Properly Use Trademarks

Posted by Randy Michels on Jan 26, 2016 1:11:50 PM

Every brand, from the smallest startup to corporate giants, needs guidelines and rules to maintain its identity. These guidelines and rules typically take the form of style guides that cover everything from the design of a logo to the proper use of the organization's trademarks.

The world's most valuable brand - Apple - has one of the world's most comprehensive style guides: 

(click image to download)

Apple's style guide contains the following guidelines for properly using its trademarks in text:

These guidelines are extremely important to protecting Apple's trademarks. If its trademarks are not properly used, then their strength and enforceability can erode and rights may eventually be lost in a process known as "genericide".

Sign up here for a free trademark assessment and learn your safety score.

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Topics: Trademark Registration

How Long Does It Take To Get A Trademark Registration?

Posted by Randy Michels on Jan 26, 2016 12:57:45 PM

By now, it is well documented that one of the biggest trademark stories of 2015 was the registration of our TRUST TREE trademark. Ok, maybe our trademark registration is not that important, but it does offer some guidance on one of the most frequently asked trademark questions: how long does it take to get a registration?

We own two federal trademark registrations: U.S. Reg. No. 4,819,885 for TRUST TREE and U.S. Reg. No. 4,799,689 for the black and white version of our key logo (depicted below).

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. No legal issues arose during the examination of our applications (because, hey, we're trademark experts!). Despite the smooth sailing, it still took 8 months for the TRUST TREE trademark to register and 7 months for the key logo to register.

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Topics: Trademark Registration

How To Claim Your Trademark As A Business Page On Google+

Posted by Randy Michels on Jan 26, 2016 12:17:19 PM

So you've picked out a name for your startup. You've done a trademark search, and the name appears to be registrable. In addition to filing a federal trademark application, it's important to register the usernames that match your company name on social networking sites liked Google+.

Google+ was launched in 2011 to challenge Facebook, but it never lived up to its potential. Ambitions were subsequently scaled back, and the network was redesigned in November 2015 to focus on people's interests. Network performance was also optimized for smartphones and tablets. Google is not giving up on this platform and neither should you.

Sign up here for a free trademark assessment and learn your safety score.

What if someone already has registered your company name as a business page? You can first try to resolve the issue informally with the user in question. If that doesn't work, then you can fill out this online form.

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Topics: Social Media

How To Claim Your Trademark As A Username On Twitter

Posted by Randy Michels on Jan 26, 2016 10:01:37 AM

So you've chosen a name for your startup. You've done a trademark search, and the name appears to be registrable. In addition to filing a federal trademark application, it's important to register the company name as a username on social networking sites like Twitter.

Twitter is the largest microblogging service on the Internet with more than 320 million active users around the world. Twitter allows users to keep up with events in a real-time news feed. The site is particularly popular with younger users, which makes it attractive to brands. So if you're not using Twitter for marketing, then you could be missing out.

Sign up here for a free trademark assessment and learn your safety score.

What if someone already has your username? You can first try to resolve the issue informally with the user in question. If that doesn't work, then you can fill out this online form.

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Topics: Social Media

How To Claim Your Trademark As A Username On Pinterest

Posted by Randy Michels on Jan 25, 2016 4:18:18 PM

So you've chosen a name for your start-up. You've done a trademark search, and the name appears to be registrable. In addition to filing a federal trademark application, it's important to register the company name as a username on social networking sites like Pinterest.

Pinterest first began as a site that was used mainly by women, but that has all changed. Today, more than 30 percent of Pinterest users are men, and 45 percent of all users are from outside the United States. Pinterest is now the third most popular social media platform, which makes it a potentially important part of your social media marketing strategy.

Sign up here for a free trademark assessment and learn your safety score.

What if someone already has your username? You can first try to resolve the issue informally with the user in question. If that doesn't work, then you can fill out Pinterest's Trademark Complaint Form.

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Topics: Social Media

How To Claim Your Trademark As A Company Page On LinkedIn

Posted by Randy Michels on Jan 25, 2016 3:31:37 PM

So you've picked out a name for your start-up. You've done a trademark search, and the name appears to be registrable. In addition to filing a federal trademark applicationit's important to register your company name as a username on social networking sites like LinkedIn.

LinkedIn operates the world’s largest professional network on the Internet with more than 400 million members in over 200 countries and territories. Since it focuses on business-to-business connections, LinkedIn should be a big part of your social media marketing strategy.

Sign up here for a free trademark assessment and learn your safety score.

What if someone already has registered your business name as a company page? You can first try to resolve the issue informally with the user in question. If that doesn't work, then you can fill out LinkedIn's Notice of Trademark Infringement Form.

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Topics: Social Media

About This Blog

From their office in a meat packing plant turned creative community, the lawyers at Trust Tree craft articles on the importance of trademarks and the power of branding. When you visit our blog, you can expect lots of content related to those topics. Unfortunately, you can also expect lots of memes, lame jokes, bad puns, and shoutouts to Nashville. The goal of our blog is to help you learn a few things about trademarks in the least painful way possible.

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