Intellectual Property

The Trademark “Spectrum of Distinctiveness”

Trademarks are words, names, symbols and other branding that distinguish and identify the sources of goods or services. Not every trademark is created equal, however, and the trademark “spectrum of distinctiveness” affects the level of protection the trademark receives. Distinctive trademarks are rewarded because they help consumers understand which goods and services come from where, thereby ensuring that consumers know who they are dealing with and (at least in theory) receive consistent quality. Generic terms are not protected because, in essence, they would interfere with the public’s ability to effectively identify the source of different types of goods and services.

So what makes a trademark distinctive?

Distinctive trademarks share three qualities. First, they are different from other marks used to describe similar goods...

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Intellectual Property

A Few Questions Buyers Should Consider to Protect Intellectual Property Rights When Purchasing a Business

When purchasing a business, buyers often overlook one important part of the purchase: formally transferring the seller’s intellectual property rights to the buyer. The most common IP rights include copyrights, trademarks, patents, and trade secrets. Today’s post highlights three simple questions buyers should ask before purchasing a business.

Can you and do you want to transfer the business’ trademarks?

In most purchases, trademarks will be easily assignable from the seller to the buyer. However, in some situations even if the trademarks are assignable, you may not want to acquire them. For example, if the business’ logo infringes on trademark rights of another business, then you wouldn’t want to transfer ownership of the logo and risk being held liable for trademark infringement once...

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Intellectual Property

USPTO Reduces Trademark Application Fees

Today, we bring good news to any of our readers who are planning on filing for a federal trademark. The United States Patent and Trademark Office (“USPTO”) recently announced that it will be reducing trademark application fees and also will be adding a new type of trademark application.

Why were trademark application fees reduced and when will the new fees take effect?

As authorized by the Leahy-Smith America Invents Act, the USPTO amended its regulations to reduce certain trademark application fees in order to: (1) continue with an appropriate and sustainable funding model; (2) support strategic objectives relating to online filing, electronic file management, and workflow; and (3) improve efficiency for USPTO operations and customers. The new fees will take effect on...

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Intellectual Property

How to Transfer Ownership of Trademarks

There are a variety of reasons why you may want to transfer ownership of your federally registered trademark (or acquire ownership of a trademark). For example, trademarks may need to be assigned during a business acquisition or as part of a reorganization. Today’s post discusses how to transfer ownership of trademarks and why you should ensure you transfer your trademarks correctly.

Documenting the Trademark Transfer with a Transfer (Assignment) Agreement

Transferring your trademark includes two major steps: documenting the transfer between the parties and then documenting the transfer with the U.S. Patent and Trademark Office (USPTO). Before you can document your transfer with the USPTO, you’ll need to put together a trademark transfer (or assignment) agreement. This document will lay out the terms...

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Intellectual Property

Brewery Law 101: Protecting Your Beer Trademarks

Today we continue our Brewery Law 101 series and discuss the importance of protecting your brewery or distillery trademarks.

You’ve probably been told countless times that you need to “register your trademark.” Perhaps you haven’t been told why you should federally register your beer trademarks, brewery trademarks, and distillery’s trademarks. Today’s post highlights the major benefits attached to federally registering your trademark with the United States Patent and Trademark Office (“USPTO”).

Common Law Trademark Rights

Trademark rights exist the minute you use a trademark “in commerce”—basically the first time you put your brewery’s name, logo, slogan, etc. in front of the public. These automatic trademark rights are considered common law rights, which means that the trademark rights are developed through use and are not governed...

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Intellectual Property

“Actual Use” v. “Intent to Use”: Choosing the Filing Basis for Your Trademark Application

As we’ve discussed in previous posts, if you intend to build value behind any company trademark—for example, a name, slogan, or logo—then it is important to protect those trademarks. Filing for federal registration with U.S. Patent and Trademark Office (USPTO) is an important step to protect those trademarks. And when you file your trademark application with the USPTO, you are required to assign a filing basis to your trademark. In today’s post, we’ve highlighted the 1(a) and 1(b) trademark filing bases and how the two differ.

1(a) Basis: Actual Use in Commerce

As the name suggests, trademark applicants can file under the 1(a) basis only if their trademark is currently being used in commerce—this is trademark lingo for “you are actively using...

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Intellectual Property

Trademarking a Hashtag: Dez Bryant’s #ThrowUpTheX

We’ve discussed the intersection of sports and law a number of times on this blog, particularly in the context of trademarks and other intellectual property, and today our topic is Dallas Cowboys Wide Receiver Dez Bryant, his “ThrowUpTheX” brand, and his attempt at trademarking a hashtag, #throwupthex.

For context, Dez Bryant is famous for “throwing up the X” after scoring touchdowns, which is when he puts his arms up in the air in the shape of an “X.” Dez has been seeking to capitalize on his famous move by creating a brand called “ThrowUpTheX,” which brand’s website can be seen here. While the “lifestyle brand” is relatively new, Dez has been using the hashtag #throwupthex for quite some time. In an effort to...

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Intellectual Property

The Basics of the International Trademark Registration Process

If your business plans to expand overseas (and perhaps even if it doesn’t), it would be wise to register your trademarks in potential countries of expansion in order to protect your brand. Today, we will be explaining how international trademarks work and the process to obtain them for your business.

The Madrid Protocol

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.

The resulting “international registration” serves as...

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Intellectual Property

USPTO Cancels Washington Redskins’ Trademark Registrations

Last week, the United States Patent and Trademark Office cancelled six federal trademark registrations for the Washington Redskins name, ruling that the name is “disparaging to Native Americans” and thus cannot receive trademark protection under federal law, which prohibits the protection of offensive or disparaging language. “We decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered,” the Trademark Trial and Appeal board wrote in its opinion.

For years now, pressure from various Native American groups has been placed on Daniel Snyder, owner of the Washington Redskins, to change the name of the team due to its connotation as a racial slur. After last week’s ruling by...

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