Trademarks Practice Area
A trademark helps distinguish your products from your competitor’s products. The trademark conveys importance, quality, and investment to your customers. Your potential customers will choose your products over your competitors. Research shows branded products command a higher profit margin than non-branded products.
“Brands therefore add value to a basic product or service by enabling the product or service to command a higher price, or higher market share than an unbranded equivalent.” -The Dobney Corporation consulting firm.
In legal terms, a trademark grants you the exclusive rights to use your trademarks in connection with your products. But, to achieve this protection trademark owners have to follow certain rules.
- You must use the trademark properly
- You must continuously use the trademark
- The trademark must be chosen properly; it cannot describe the product and it cannot be a generic meaning for the product.
- The trademark should be distinctive and unique.
- You have to police/enforce your trademark; if others use it you must stop them.
The failure to follow any of these rules you may lose your rights to the trademark.
You’re entitled to use the SM for an unregistered service mark (for a service), TM for an unregistered trademark and ® for a registered trademark or service mark.
It is quite valuable to register a trademark. Your trademark will have numerous advantages such as nationwide rights to stop competitors from copying your trademark, a legal presumption of validity and ownership of the trademark, the right to use the ®, public notice of your exclusive rights to other parties to stop them from copying your trademark, the right to record the trademark with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods, the right to bring a lawsuit in federal court to enforce your rights, and listing your trademark in the United States Patent and Trademark Office’s online databases.
When you’re choosing your trademark, be sure to not use a trademark that is already in use. This is the purpose of a trademark search. The first place to search is the United States Trademark Office database at www.uspto.gov. A trademark search is a specialized craft but if you put some effort into it and research how to conduct a search you could get a good idea if a prior trademark conflicting with yours exists. Plus, your good search will help you understand the strength of your mark.
Depending on certain factors, if someone is using your trademark in their domain name, you may have the right to force them to give you the domain rights because you cannot use a trademark in a domain name.
As you can see from the above, you should consider numerous factors in using your trademark. We would be delighted to help counsel you in using your trademarks to help drive profits at your company. In this letter to a client, we detail some of the Benefits to Federally Registering a Trademark.
We can also assist you in Naming a New Company, as it is important not to infringe on previously existing trademarks since damages to your company can result.
Stopping Media Company Misuse
A trademark owned by our client was discovered to be used by one of America’s largest media companies. The work was similar but not identical. We sent them a cease and desist letter within one week. In negotiations with the infringing party they agreed to: dispose of existing inventory, stop using the trademark, place a non-affiliation notice on the TV, assign to us their domain, and pay half of our attorney fees.
Misuse of Name
A client was sued for infringing the name of a competitor. The client was willing to change its name. We assisted by negotiating a cost-effective settlement. We achieved this goal on budget and on time for the client.
Resuscitate 90-year old Trademark
A client failed to renew a federal trademark registered continuously since 1924. We were met with a descriptiveness objection by the U.S. trademark office. Using decades-old records, we asserted a 2(f) position. While we could have registered with a 2(f) notation on the file, we nonetheless argued successfully for the removal of the descriptiveness objection. We immediately filed form comprehensive new trademark applications. We added significant additional protection to the client’s trademark protection. We were successful and four strong registrations were issued.
Trademark Program Created
A client with a popular, ecologically-related name faces continual infringements. We established a program to systematically enforce the trademark nationally. We enforced the trademarks in California, Maryland, and Colorado, including against a governmental entity. In another situation with this client, a competitor was misusing their trademark by incorporating our client’s trademark in their domain name. Successfully obtained the domain through a UDRP (Uniform Dispute Resolution Procedure) with WIPO (the World Intellectual Property Organization).
Multi-License Trademark Program
Identified licensing opportunities for underutilized secondary trademark of the MacGregor Golf Company. Created information package supporting trademark validity. Led the negotiations that put three licenses in place. Realized significant royalty income from unused trademark and boosted net earnings.
International Trademark License Analysis
PepsiCo (as licensee) claimed a royalty-free implied right to use a Wilson trademark in Malaysia. We researched the implied license laws in the U.S., Japan, and Malaysia and mapped out a strategy to require royalties for the use of the trademark.
Worldwide Trademark Assessment
Reviewed many of Wilson’s 3000 worldwide trademarks to determine whether we had appropriate protection for the highest priority trademarks. Based on the research, we modified the uses of some trademarks to strengthen our rights and we sought additional registrations as appropriate.
Conducted IP Review
This company needed to ensure that its tens of thousands of hours of development time was appropriately resulting in securing legal rights. Focused this IP Review on patents (computer software and business methods) and trade secrets. The first step was to review their IP portfolio and their IP-related guidelines. The project had three key deliverables. The first was to ensure that the company has identified and protected all IP that resulted from its development efforts. The second was to create systems and procedures that will maximize and protect the IP developed in the future. The third was to educate all company IP users about the new guidelines. Drafted all the documents and executed the strategy.
Assessed and Pruned a 3,000-Trademark Global Portfolio
Reviewed this company’s worldwide trademark portfolio in approximately 35 countries. Needed to compare the actual use of the products with the registered trademarks. Reviewed the utility of the trademarks and recommended go-forward strategy for products where the marketplace opportunities justified continued expenditures.
License Terminated Successfully
The company’s exclusive apparel producer/ licensee announced a premature termination of its license. Aggressively negotiated termination package and simultaneously participated on strategic team to swiftly replace licensee and reconfigure overall license program. Negotiated $450,000 minimum royalty payment (2 years’ worth of minimum royalties) and developed creative contract provisions to protect the brand and prevent unauthorized distribution during the sell-off. Using record speed, replaced licensee and prevented product delivery interruption for next selling season. Team modified strategic trademark licensing strategy (products and channels) and concurrently renegotiated separate apparel license.
Multi-Licensee Trademark Program
Identified licensing opportunities for underutilized secondary trademark. Created information package supporting trademark validity and led negotiations that put three licenses in place. Realized hidden trademark value and created significant royalty income to MacGregor Golf Company.
International Trademark License Analysis
A licensee claimed it had royalty-free use of a trademark in Malaysia based on a related Japanese license. We assessed the implied license laws in the U.S., Japan, and Malaysia and mapped out prosecution alternatives and our strategic approach.
“I have found Charlie to be well informed, attentive and insightful in his counsel to us. We have learned to rely on him as a legal expert, strategic counsel, and trusted advisor for our clients’ trademark and copyright work, and make referrals often. But perhaps our trust in Charlie is most evident in our relationship with him on behalf of [my Company] and our own IP issues. Frankly, Charlie is our “go-to” IP guy, hands down. I highly recommend him.”
– Chuck T., President, Creative Branding Consultants
“As a result of a legal department oversight at our parent company, our 85 year trademark expired…I believed this event to be a disaster with major consequences, but your counsel suggested that in the end we would be in a stronger position with a ‘new’ trademark filing.
Your advice…was excellent. There were many obstacles during the process, but we overcame them and achieved the best possible registrations for our business today and in the future.
On a personal note, your integrity, judgment, and advice were extremely valuable to me. I would recommend your services without reservation.”
– Tom S., Publisher and Editor, Online Equipment Marketplace Company
“Thank you for all of your help and guidance with my trademark and [the process to acquire the trademark]. I had no idea what went into the trademark application process but was interested in getting one for my product line. You were thorough, patient, and informative in all aspects. Now that I have my trademark, with your help, I am even more pleased. Thank you.”
– George N., President, Food and Retail Business
“Charlie Brown is an invaluable resource to my firm. He has helped me identify key areas of intellectual property protection that my previous large downtown firm had not addressed. He spent real time with me, walking through the key issues and clearly explaining my options. Through his plain-speaking, highly personalized approach, I understood the impact each option would have on my business and my budget. This was an outstanding experience! My intellectual property is vital to my firm. Through Charlie, after many years, I’m getting the quality advice I need and the personal attention I prefer.”
– Andrew McC., President, Financial Services Firm
“As a consultant, it was important to personally understand the trademark process and objectives. Charlie thoroughly walked me through the procedures, answered all of my questions in understandable terms, and kept me apprised of developments culminating in the award of the trademark. I recommend Charlie as an outstanding resource for trademark legal services.
I believe we have received very thorough advice. Thanks again.”
– Scott D., Energy Consultant
“Charlie Brown is our attorney and trusted adviser. His firm CorpLaw Associates LLC attends to our overall legal issues and Charlie’s special expertise is Intellectual Property.
As a highly experienced attorney, Charlie is a true specialist in IP Law. This area is critical to the success of my company so we greatly appreciate his expertise in this area. For example, he has suggested ideas to us that will ensure that our IP portfolio is well protected.
We can count on him to support us in the many diverse areas of IP. As a sporting goods company, we really appreciate Charlie’s in-depth knowledge of the sporting goods industry. He has a business background, which has taught him the important lessons of business operations. Combining his high quality legal expertise and his interest in knowing our business goals absolutely results in better outcomes for us.
Charlie’s service ethic is extraordinary.
His work is always on-budget and on-time, with a smile. In addition, he truly cares about me as a business owner, which can be a rare trait among service providers. In my opinion, he is smart, intuitive and practical.”
– Robert B., CEO, International Sporting Goods Company
“As President of [co. name] of Indiana and [co. name] of the Northeast I have been working with Charlie Brown of CorpLaw Associates since 2004. The relationship has been an excellent one for the following reasons.
1. Trademark Application and Protection
Charlie has guided the company through the process of protecting its trademarks as well as enhancing the areas of their uses on an on-going basis. This process has included enlarging the trademark portfolio to include more areas that are consistent with the business as well as enforcing our trademarks against infringers. Charlie has been successful in all cases of forcing the infringing company to cease using our trademark.
2. Protection of Legal Interests
Charlie has the best interest of [co. name] in mind at all times. He pursued the acquisition of [co. name].com through a WIPO proceeding in Geneva, Switzerland which involved dealing with a company located in California that had executive officers located in China. Charlie was able to obtain [co. name].com with minimal expense to our company because of his expertise in the area while dealing outside the United States.
3. Intellectual Property Support
Charlie is well-informed on the uses of the internet and has provided excellent counsel on the best course of to follow to secure the appropriate domain names for the [co. name] companies. He has also guided [co. name] toward appropriate vendors to provide additional help.
Charlie responds quickly and proactively to [co. name] requests. He is very knowledgeable in the field of trademarks and I rely on his expertise to protect the [co. name] trademark portfolio. He and I have recently been working on a trademark Terms Sheet and Trademark Style Guide which will make clear the proper uses of the trademark.
He is a heavy duty lawyer who can do anything.”
– Caroline R., President, Green Energy Company
“Securing the rights to that name and all its potential is essential. Thanks for the offer to [provide additional services] at no charge.
I really do appreciate that, and everything you do for me and my business.
Thank you also for your superb assistance and expertise.”
– Troy C., Owner, Consulting Firm