Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Rebuilding Goodwill

Posted in Trademarks

A week ago last Sunday, millions of Americans watched The Oscars. As everyone now knows, “Moonlight” won the best picture award, but only after “La La Land” was first accidentally announced as the winner. Also, as many people now know, this mistake occurred because an envelope was misdelivered by one of the co-ballot leaders from the accounting firm that handles the voting process for the awards show.

PriceWaterhouseCoopers (“PwC”) has held the balloting responsibility for the Oscars for decades. PwC’s promotional materials tout the relationship to bolster its reputation:

This video is an example of how associations with events, organizations, causes, and people can develop the connotations associated with a brand. We have seen this happen when brand owners launch advertising campaigns to signal support for various political or social causes.

Another way that mark owners extend the reach of their brand is to enter into license agreements that associate the mark with new goods and services in the minds of consumers. In this case, PwC’s video links the attributes that make it a successful accounting firm with those that made it a choice for handling the balloting responsibility for the Oscars. PwC says it was asked to take on this role because of its “integrity, accuracy, and confidentiality.” In the video, the co-balloters explain the importance of their responsibility for maintaining the confidence of the ballots in their possession until the time the winner is to be announced.

Linking the accounting firm’s reputation with this particular task, one that is seen by more of the public than most of PwC’s other daily work, may have helped build the goodwill of PwC’s name and reputation…. until the mistake at the most recent awards ceremony. Having spent all this time and effort to associate the good name of PwC with the balloting work for the Oscars, how is PwC to repair its reputation after the public error witnessed by millions of viewers?

PwC is not the first mark owner to suffer unexpected injury to its goodwill in this way. And it is possible to rebuild the goodwill in a brand even after much greater injuries. Perhaps the most well-known (and successful) brand rehabilitation campaign was Johnson & Johnson’s recovery after Tylenol capsules on store shelves were poisoned, resulting in deaths of seven consumers in the early 1980s. The brand owner moved quickly. First, it protect consumers’ interests with an unprecedented recall of the product and implemented new safety features in the packaging to reassure consumers that the capsules they were about to consume were free of tampering. Then it communicated this clearly through advertisements that emphasized Tylenol’s good reputation.

Fortunately for PwC, it is not facing nearly as dire a scandal. It need not go through the same steps to recover from this injury, but it can consider applying some of the same principles that made brand rehabilitation possible.

First, take responsibility. PwC promptly apologized, twice. In its second apology, it clearly accepted the blame. Second, take action. Apologizing does little if the brand owner does not take steps to prevent the error from happening again. For Johnson & Johnson, that meant a issuing a recall and implementing new packaging. For PwC, it might mean something much less drastic. For example, improvements to protocols and procedures (or ensuring adherence to them) could provide the necessary reassurance in this case. Third, tailor the response and messaging to the nature of the damage. This is where PwC’s judgment will be most tested. The Oscar scandal was very public, and embarrassing, but the severity and permanence of the damage suffered by third parties is relatively low. PwC will have to assess how much damage was done to its reputation among its core audience and focus its rehabilitation efforts accordingly.

Trademarks are symbols of goodwill and reputation. Brand owners choose strong marks and spend years and dollars building up the strength of the goodwill associated with those marks. Few companies escape the occasional mistake, embarrassment, or unfortunate association. How companies respond to such circumstances can determine whether and how successfully a company repairs and rebuilds its brand and reputation.

 

Branding Lessons Learned from Bond. James Bond.

Posted in Trademarks

Growing up, my dad and I watched a lot of Bond movies. You all know the line: “Bond.  James Bond.”  [Cue music and Bond girl].  That line was introduced in the 1962 film Dr. No. Over more than 50 years, Bond has endured as an iconic brand.  The Bond actors and array of Bond girl actresses have changed throughout the decades, but the brand stands the test of time to Die Another Day.   The heart of each Bond movie is constant and shares the same key characteristics of a spy with a License to Kill for whom The World is Not Enough.  The way Bond looks, however, has changed over time with several actors playing the role.  My favorites are Sean Connery and Daniel Craig.  To see them all, click here for the official 007 website.

Just like Bond, your brands and trademarks may change looks over time. You may want to change fonts, tweak your design, add or remove punctuation or spacing, change colors or make other changes to your mark.  Two easy steps will maintain your brand and avoid becoming a Spectre. First, you need to make sure that the new version of your trademark is covered by your trademark registration.  And second, you need to make sure that your marketing and branding materials consistently use the same version of your mark so you communicate a consistent message and avoid a Skyfall.

Changes to your brand are not For Your Eyes Only.  You may need to file an updated version of your mark with the U.S. Patent and Trademark Office to make sure your updated version of your mark is protected with an existing registration.  If the changes are non-material and don’t change the overall commercial impression of the mark, you can simply amend an existing registration to update the appearance of your mark.  If, however, you are making a change that would be noticeable to a consumer, then you probably will need to file a new registration application. Diamonds are Forever, but trademark registrations must be updated.

Second, you need to ensure that all uses of your mark are consistent. This is true whether you adopt a new updated version of your mark or whether you have marketing or promotional materials that display your original mark in different ways.  For example, maybe your mark has a hyphen in some places but not others, or maybe your mark is shown as a one-word term in some places but as two separate words in other places.  This inconsistency can cut against your brand identity.  Don’t just Live and Let Die.  Review your marketing, your website, your business cards, and other materials to ensure that you have a strong, consistent trademark message.  After all, You Only Live Twice.

When you have a consistent brand, your message is clear and capable of stronger brand recognition among consumers. On the flip side, you are at greater risk of mockery.  Bond is not immune.  Check out this clip from Saturday Night Live featuring Tim McGraw in a parody of the classic Casino Royale.

 

Trump and his Trademarks

Posted in Trademarks

The slogan “MAKE AMERICA GREAT AGAIN” are four simple words that nobody (except for maybe President Trump himself) could have predicted would help launch our new president into the White House. However, President Trump had been sitting on this slogan for years. In fact, on November 7, 2012, the day after Romney lost the election to Obama, Trump decided not only that he needed to run for President, but that he needed a brand to do so.

Sitting in his golden tower, he threw out a number of phrases, deciding on MAKE AMERICA GREAT AGAIN, and he immediately took his slogan to his attorneys to file an intent to use trademark application. At least, that is what he told the Washington Post. Now, every politico knows that Trump didn’t coin this phrase. Ronald Reagan used “Make America Great Again” as his 1980 campaign slogan. He plastered it, much like Trump is did, on everything from buttons to posters and even included it in his acceptance speech.

Regardless, five days later, Trump filed an intent to use application, which allowed him to claim rights in the mark as of the date of filing the application. Once he actually started using the mark in commerce in “political action committee service, namely, promoting public awareness of political issues and fundraising in the field of politics,” he was able to file a statement of use and allow the application to proceed to registration.

Note that Reagan did not claim rights in the mark. Trump just chalks this up to him being someone that understands marketing. In fact, Trump is the owner of more than 800 trademarks in over 80 countries.

Trump is already planning his 2020 slogan, though he can’t quite decide whether he should use an ! or not at the end; to use KEEP AMERICA GREAT or KEEP AMERICA GREAT? That is the question. To give himself options, Trump filed applications for both:

KEEP AMERICA GREAT KEEP AMERICA GREAT!

This time around, Trump filed the applications for everything from bumper stickers to political campaign services to online social networking services.

Trump isn’t the only one taking advantage of his MAKE AMERICA GREAT slogan. Countless other individuals have filed similar applications, trying to trade off what little goodwill President Trump has.

Even NFL Vince Young is jumping on the bandwagon and has filed an application for registration of “MAKE VINCE GREAT AGAIN”. Apparently Young is trying to make a football comeback. Even though he has not taken a snap since the 2011 season, he has hired an agent, followed President Trump’s branding lead, and has prepared a comeback campaign with these trademark applications:

MAKE VINCE GREAT AGAIN 1 MAKE VINCE GREAT AGAIN

 

 

Branding 101: It’s Like Cheers: Where Everybody Knows Your Name – But Everybody Pronounces It Differently

Posted in Trademarks

For those of you faithful Trademarkology readers out there, you may recall that I last posted to the blog Christmas week – and reveled in the honor of getting to write about SANTA trademarks:

Santa trademark

Well, I have a confession to make. Instead of blogging about Dear St. Nick, I almost wrote about the GRINCH:Grinch

While the USPTO has over 2,000 active registrations and applications where SANTA is all orpart of the mark, the GRINCH has only 32 – and all of them are owned by none other than Dr. Seuss Enterprises, L.P. and Geisel-Seuss Enterprises, Inc. (with the exception of Reg. No. 3,436,739 for M.K.G. MONEY-KILLA-GRINCH which may be the topic of another post later this year).

Why, you may ask, did I opt to stiff the GRINCH? Simply put, I’m holding a grudge.

You see, my law firm has offices in Louisville, Kentucky. For more than three decades, Louisville has held an annual festival called “Light Up Louisville” where the community kicks off the holiday season. It’s a free event designed for families and children which culminates with Santa and the Mayor pulling the ceremonial switch turning on the holiday lights in the city.

My grudge with the Grinch started in 2008, the year the city had planned its Light Up Louisville celebration to include a children’s area called “LouWhoVille” with costumed characters from the classic “How the Grinch Stole Christmas” including Cindy Lou Who, other citizens of Who-Ville, and the Grinch. Well, the Grinch would have none of it. The Grinch’s lawyers sent Louisville a trademark cease and desist letter (and not one of the nice ones like Jack Daniels is famed for sending). It was a mean-spirited one. It threatened suit if the city did not pull the plug on its plans. Eventually the city relented and renamed the child area “Lou-Ville” and then-Mayor Jerry Abramson was quoted in the local press as saying, “It appears these lawyers’ hearts are two sizes too small.”

The play on words of LouWhoVille by Louisville was inspired by the fact many people – including lifelong residents of the city – pronounce the city’s name differently. It is a problem which is sometimes faced by brand owners. Rather than launching an educational campaign to teach people the “correct” way to pronounce Louisville, the city and its Visitors and Convention Bureau took a totally different approach. Instead, Louisville embraced the diversity of pronunciations and celebrated the multiple ways people pronounce the its name and made it the theme of their community branding campaign:

Luhvul

In fact, the city even filed its own application to federally register LOOAVUL LUHVUL LOUEVILLE LOOAVILLE LOOEYVILLE LOUISVILLE as a mark and is the proud owner of Reg. No. 4,079,605.

They just won’t be calling it LouWhoVille, and I won’t be writing about the Grinch.

Keeping Your Cool in the World of Trademarks and Bankruptcy

Posted in Trademarks

January in Nashville has been a roller coaster of temperatures. One day hints at spring and the next punishes all who failed to wear earmuffs. Adaptability and resilience are key in the current climate. The same is true in the worlds of trademarks and bankruptcy, as we can see with the roller coaster of news that reaches you in the scenario below:

Good news!: You have entered into a marketing agreement with the owner of some valuable intellectual property. In the agreement, the intellectual property owner granted you the exclusive right to sell certain goods in certain territories, a non-exclusive license to use certain intellectual property rights, and a limited license to use certain trademarks. You operated under the agreement for some time.

Bad news: Someone filed for bankruptcy.

Good news!: It wasn’t you.

Bad news: It was your trademark licensor. Not only that, but the trademark licensor filed a motion seeking permission to reject the marketing agreement between you and to sell substantially all of its assets free and clear. The Bankruptcy Code has a provision that permits debtors in bankruptcy to reject executory contracts (contracts under which each party has ongoing obligations to the other).

Good news!: The Bankruptcy Code also has a provision that protects intellectual property licensees (allowing them to either consider a rejected contract terminated or to keep the licensed rights – and duties– for the duration of the contract). You make an election under that provision and object to the licensor’s motion, saying the sale of those assets should be subject to the marketing agreement and claiming that you retain rights of exclusive distribution, permission to use the intellectual property rights, and permission to use the trademarks as described under the marketing agreement.

Bad news: The Bankruptcy Code’s definition of intellectual property does not expressly include trademarks. The bankruptcy court permits the debtor to reject the contract subject to your election to preserve your rights under the Bankruptcy Code provision protecting intellectual property licensees. But you and the trademark licensor cannot agree on what that means. The bankruptcy court explains that this means your rights with respect to the licensed patent, trade secret, and copyrights under the agreement are protected, but your rights to the licensed trademarks and the exclusive distribution rights are not. You appeal.

The foregoing scenario is a simplified version of facts from a case (Mission Prod. Holdings, Inc. v. Tempnology LLC, Case No. 15-065 (BAP, 1st Cir., 2016)) recently decided by the bankruptcy appellate panel for the U.S. Court of Appeals for the First Circuit.

MCOOLCORE

 

 

 

In Tempnology, the panel affirmed the bankruptcy court’s finding of protection of the licensed patents, trade secrets, and copyrights, affirmed the finding that there was no protection for the exclusive distribution rights under the Bankruptcy Code, and  affirmed the finding that the Bankruptcy Code protecting the licensed intellectual property rights did not protect the licensed trademark rights. But, it still found that the licensed trademark rights did not terminate upon the debtor’s rejection of the marketing agreement. Instead, those rights are determined by the terms of the marketing agreement and applicable non-bankruptcy law.

The First Circuit panel’s reasoning aligns with that of the Seventh Circuit in another case (Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012)), and contrasts with the reasoning of the Fourth Circuit in the case that prompted Congress to enact the provision of the Bankruptcy Code protecting (certain) rights of intellectual property licensees (Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985)).

In Lubrizol (decided prior to the enactment of the Bankruptcy Code provision protecting the interests of intellectual property licensees), a debtor’s rejection of an executory contract was considered a breach, and the licensee’s remedies were limited to money damages. The licensee could not retain the licensed rights, even though that might have a type of remedy afforded it if the debtor had not been in bankruptcy. Applying this reasoning to a trademark license would mean that a trademark licensee simply could not retain the trademark license if the debtor rejected the executory contract in which the license was granted.

The circuit split makes it hard for a trademark licensee to keep cool in this climate of uncertainty. Some groups are working on crafting a legislative fix that would specifically address trademark licenses. In the meantime, trademark licensees will need to factor this consideration into the negotiation of their licensing agreements and prepare themselves for potential inclement weather.

Patriots Trademarks and the Big Game

Posted in Trademarks

Once again, my team is in the Big Game. I can’t help but think back to 2008 when the undefeated Patriots lost to the Giants. Perhaps the fact that they filed trademark applications for “19-0” and “PERFECT SEASON” days before the Big Game jinxed them.

Ironically, despite defeat, the Patriots continued to prosecute their trademark applications for the past nine years. Yes, you read that correctly…9 long years! The Patriots were persistent in their prosecution, battling a suspension and negotiating a surrender of another registration for 19-0 THE PERFECT SEASON, which stood in the Kraft Group’s way to the end zone of registration. The Kraft Group also took the maximum five extension of time to demonstrate use of the marks. The Kraft Group has finally shown use of the marks in connection with the goods and services in these applications, which include pre-recorded dvds, calendars, clothes, and playing cards.

These trademark applications might fall into the category of what we know to be alternative facts. Admittedly, the Patriots have yet to have a perfect season, and the Miami Dolphins are the only NFL team to actually have a perfect season. If an NFL team other than the Patriots ever does go 19-0, they will have to seek a license from the Kraft Group in order to use the mark.

The Patriots will not have a perfect season this year, but my household will still be hoping for a New England win in the Big Game.

patriots gear

You might be wondering why I keep using the phrase “the Big Game.” Use of the term “SUPER BOWL” keeps NFL’s trademark lawyers quite busy this time of year. The mark SUPER BOWL is protected by the following federally registered trademarks for various goods and services:

  • SUPER BOWL, U.S. Reg. No. 846,056
  • SUPER BOWL, U.S. Reg. No. 882,283
  • SUPER BOWL CONCERT SERIES, U.S. Reg. No. 2,133,100
  • SUPER BOWL, U.S. Reg. No. 2,954,420
  • SUPER BOWL, U.S. Reg. No. 3,138,590
  • SUPER BOWL, U.S. Reg. No. 3,343,714

The prominence of the Super Bowl makes it a prime target for unauthorized uses (both intentional and unintentional). The NFL allegedly sends out approximately 100 cease and desist letters a year to businesses advertising Super Bowl specials. To avoid becoming the recipient of one of the NFL’s cease and desist letters, it is best to avoid using the term to advertise any products or services. Substituting the “Big Game” for the term “Super Bowl” is an alternative.  This strategy was once explained in a Samsung ad with Paul Rudd and Seth Rogen:

 

THE PROCESS of Joel Embiid’s Trademarks

Posted in Trademarks

It seems my step-twins and Joel Embiid have something in common: they all love Shirley Temples. Embiid prefers his made with ginger ale and grenadine and allegedly drank as much as a pitcher a day while recovering from an injury.

Shirley Temple

Embiid’s love of Shirley Temples is so strong that he decided to build a brand around it. Following the lead of Steph Curry and Jeremy Lin, last October Joel Embiid filed two trademark applications for his nickname THE PROCESS:

SHIRLEY the process

THE PROCESS shirley

The applications were all filed on an intent to use basis for a variety of goods including apparel, cell phone cases, rubber bracelets, children’s books, and pre-bottled Shirley Temples. I have no doubt that pre-bottled Shirley Temples will be a hit with kids.

A party with a bona fide intent to use a mark in commerce in connection with specific goods or services may file an application on the basis of intent to use. However, before the mark can be registered, the applicant must actually use the mark in commerce in connection with all the goods and services listed in the application. A declaration attesting to this use must be filed, as well as specimens showing use of the mark in connection with each class of goods and services. Any good or service not actually used by the applicant must be deleted from the application before the application proceeds to registration.

Embiid was named Eastern Conference Rookie of the Month in November and is gaining popularity among basketball fans. Like Draymond Green, Embiid is known for his social media presence.

Speaking of Draymond Green, he also realized the value of owning his own intellectual property, and filed a trademark application to protect MONEY GREEN for sweaters, sweatshirts, and t-shirts. This application has now proceeded to registration, which means that the mark is actually in use in commerce for the goods listed in the application. Anyone dying for a Draymond Green t-shirt can purchase them on the Athlete Originals website.

To learn more about Embiid’s social media presence and his love of Shirley Temples, check this video out: http://www.espn.com/video/clip?id=17821698

The Hand Grenade: Powerful Drink, Powerful Mark

Posted in Uncategorized

We are fully in the throes of Carnival, a season of parades and other celebrations that begins on January 6 and culminates with Mardi Gras. Mardi Gras, French for “Fat Tuesday, will take place this year on February 28, 2017.  An estimated 1.4 million people will flock to New Orleans to take part in Mardi Gras festivities.  And many of those participants will partake in a beverage that has become iconic on Bourbon Street: a Hand Grenade®.

The Hand Grenade is an electric green cocktail that is typically served, you guessed it, in a container that resembles a grenade. Thanks to the wonders of federal trademark laws, patrons may only purchase an authentic Hand Grenade® drink at Tropical Isle and Funky Pirate locations on Bourbon Street in the French Quarter.  (Seriously, a big “thank you” to the U.S. Trademark Office for allowing the trademark owner to place such jurisdictional limits on the sale of this potent drink!)  It is touted as New Orleans’ Most Powerful Drink, a moniker that is also subject to a federally registered trademark.  Its owners are so zealous in their protection of the brand that their website offers a $250 cash reward to anyone who furnishes information that leads to the identification and termination of any illegal use of the trademarks.  http://tropicalisle.com/home-of-the-hand-grenade-new/the-hand-grenade/.

This powerful mark exists, in part, due to its owners’ previous branding failures. The Hand Grenade was created in the mid-1980s by Pam Fortner and Earl Bernhardt, who owned a bar in the Quarter and were attempting to invent a drink to compete with the well-known Hurricane.  They had originally developed a drink they referred to as the “Tropical Itch,” which was served with a cheesy drinking straw that doubles as a back scratcher.  And, had they immediately and vigorously protected that trademark, the Hand Grenade as we know it may never have been created.  But it was not long before “Tropical Itch” drinks were being widely sold in the Quarter by an array of bars and restaurants.  Pam and Earl continued to sell the drink, but they could not distinguish their original “Tropical Itch” from the knock-offs.

One day, Pam walked down to a Mardi Gras store—you know, the kind that sells beads and trinkets and such—to purchase those back scratcher drinking straws for the bar, and that is when she spotted a toy hand grenade. She immediately decided they needed a drink to go with this hand grenade concept.  This time, however, Pam and Earl decided to handle things differently.  They sought and obtained federal trademark registrations on HAND GRENADE, GRENADE, and NEW ORLEANS’ MOST POWERFUL DRINK, among others.  The rest is history.

During this Carnival season, celebrate in your own way. By all means, raise a glass of Abita, a mug of Coffee Au Lait, or even a plastic green cup containing an authentic Hand Grenade®.  But, amid all the fanfare and parades, do not forget to protect and register your trademarks so that you may also raise the value of your brands.

Editor’s Note: Pam and Earl also have a federal trademark registration on Tropical Itch but this brand is now considerably less valuable than the Hand Grenade brand.

Using Trademarks for Good!

Posted in Uncategorized

Monday is Martin Luther King Jr. Day, a national holiday marking the birthday and commemorating the life of one of our most venerated civil rights leaders.

The Corporation for National & Community Service (a federal agency that operates, promotes, and supports community service programs and activities) encourages everyone to honor Dr. King by marking the holiday with a day of service to others. Service projects may lead us closer to Dr. King’s vision of a “Beloved Community,” a just society achieved by using nonviolent direct action to address social problems. CNCS uses the following logo to promote its call to action:

MLK

Last year, CNCS filed several trademark applications to register marks associated with its community service programs. But CNCS did not seek to register the mark above. It may be that conflicting claims in the rights associated with Dr. King’s likeness make registration of the mark in the name of CNCS problematic.

Especially because federal registration of a mark requires use “in commerce,” it is easy to think of trademark protection as something confined to the world of for-profit businesses. But, as this example shows, that is not the case. Many of CNCS’s trademark applications seek protection of marks used in connection with the service of “promoting individual participation in national service, community service, and volunteer activities” in Class 35. Non-profit organizations, foundations, and government agencies may protect the goodwill associated with marks used to carry out their missions via trademark registration. Perhaps CNCS is considering protecting the tag line portion of the mark above “Make it a Day On, Not a Day Off” independently since it is catchy and motivating.

If you are inspired to engage a day of service in honor of the Martin Luther King, Jr. Day holiday, you can learn more about CNCS’s promotion and support of MLK Day projects and find volunteer opportunities near you here: https://www.nationalservice.gov/mlkday.

 

 

 

 

Top 10 Trademark “To-Do’s” for Good Business Health in 2017

Posted in Trademarks

Welcome to 2017!   With a new year, comes new resolutions – often promises of being healthier and generally vowing to be better. While I was on a plane on Monday, a millennial guy seated next to me was writing out his list of new year’s resolutions. One that caught my eye was a resolve to “do all my homework”. While this made me chuckle, it is good advice for entrepreneurs and seasoned businesses alike. Have you done all your homework to ensure you are in good business health?

Too often, businesses ramp up on a shoestring budget without a focus on protecting your brands and business names. Ideally, all the trademark homework should be completed before the business launches, but that isn’t always possible. Trademark protection is often relegated to the future if any when a business succeeds. But waiting until “later” may be too late to carve out the same level of protection that would have been available on the frontend. If budgetary or time constraints have you putting trademarks on your future “to-do” list, here is the top 10 list of trademark strategies for you. Calendar a specific date (and actually enter it into your calendar) when you will revisit your trademark strategy. Protect yourself to make sure you don’t experience a disaster like Mariah Carey’s New Year’s Eve debacle.

TOP 10 TRADEMARK TO-DO’S FOR 2017:

  1. Choose – carefully select a mark that will have some power and help you cut through the clutter if consumers search for you online. Choose marks that are distinctive. Common words and descriptive wording are going to be used by numerous third parties and are going to be difficult to protect. For best results, make up a word (i.e. GOOGLE), or use a word that is arbitrary and has no real significance to your industry (i.e. APPLE for computers). You can add a descriptive tagline if you need to tell consumers what you do, but try to avoid descriptive terms in your primary brand.
  2. Search – make sure your mark is protectable and no one else is already using a similar mark who could sue you for infringement or demand you change mid-stream. It is far less expensive to do this homework before you invest in letterhead and signage.
  3. Register – lock-in your nationwide rights to use your trademarks by federally registering them with the U.S. Patent and Trademark Office. This includes your company name as well as the names of your products or service offerings, your logo designs, and any taglines or slogans.
  4. Domain Names – register all of the domain names associated with your trademarks and make sure the registrations are owned in the name of your business – not the names of individual employees or your web designer.
  5. Think Global – register your trademarks in any foreign country where you have customers, manufacturing, or distributors.
  6. Website – Ensure your website conveys a consistent brand message with your registered trademarks, and ensure you have a contract that specifically says you own the website if designed by another person.
  7. Renew – trademark registrations must be renewed periodically or they will be automatically cancelled. Don’t miss these deadlines. Calendar them in your business calendars. For federal registrations, additional filings are due between the 5th and 6th anniversary of registration and at each 10 year anniversary.
  8. Become Incontestable – a federal registration gives you the opportunity to claim incontestability status once you have been registered for five years. Once granted, the registration may only be challenged on limited grounds.
  9. Police – periodically conduct at least an internet search to make sure no one else is using your brand.   You can order a clearance search at strategic intervals to
  10. Enforce – if you learn of anyone using your mark, you have a duty to protect it or can lose your trademark rights. Work with an attorney to send cease and desist letters or take other appropriate actions to protect your brands.If you aren’t willing to do your homework, then disaster may follow, Mariah Carey style. Another company who does take the steps to protect their brand could take over as the headlining act and force you to leave the stage and change your name.I don’t think Mariah Carey is going to change her name anytime soon, but the horrid performance will live in infamy. The Coyote mascot for the Spurs even joined in the mockery with a hilarious reenactment. Click here for the video.

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