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IP and Thinking About Your Exit Strategy

proactive ip protection and exit strategy spear ip

Whether you’re a brand owner or a future brand owner, you start to do a gut check this time of year. The soon-to-be brand owner? She starts her engines and gears up to launch her business. The existing brand owner? He does a review; thinking through how the previous year went. What to both types of entrepreneurs have in common? They must be thinking about an exit strategy. (Spoiler alert: taking proactive steps to protect your IP now will add value to your business, no matter the exit strategy you choose.)

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Put a © On It: Benefits to Registering A Copyright

Benefits to Registering A Copyright

Sometimes referred to as a “bundle of rights,” copyright law gives protection to authors of creative works (think: paintings, music, photographs, graphic design, even website code). Why bother registering a creative work? What are the benefits?

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Put A © On It: Copyright Registration for Jewelry

Copyright Registration for Jewelry

Obtaining a copyright registration for jewelry is a little less challenging than obtaining a copyright registration for clothing. Copyright protection in the context of apparel hits a snag because of the functional or “utilitarian” aspect at play. (Remember?) So what makes jewelry different? And is there a cost-effective way to achieve copyright registration for jewelry collections?

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Apples® to Apples: Policing Your Trademark

Policing Your Trademark

It’s November, and we are well into apple season. Have you heard about the trend in apple branding and policing of fruit-related tradmarks? It all started with the Honeycrisp, a variety of apple that has apparently revitalized the apple industry. Apple “brands” have been cropping up (pun intended), and the owners are taking trademark ownership seriously in protecting, policing, and monitoring their marks.

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Breaking Down the Trademark Application Process

the Trademark Registration Process

Many business owners are vaguely familiar with the trademark application process. Without fail, though, when a business wants to register its trademark with the U.S. Patent and Trademark Office (or “USPTO”) the first question is  “How long until I get my registration?” Of course, the answer is “it depends.” Are you using the mark yet? The answer to that question matters when it comes to registration.

Keep in mind that there’s never a guarantee that submitting an application for federal registration of a trademark will result in registration. Nonetheless, the federal trademark application process usually follows one of two paths:

The Trademark Application Process: The Use-Based Application

Filed after you have begun using your mark in commerce  — and ideally after a trademark search has been conducted. 

Step 1: File the application along with a “specimen.” The specimen is usually a photo or image showing use of the mark in connection with your goods or services.

Step 2: Approximately three months later, an Examining Attorney at the USPTO reviews the application.  Upon review, he or she will either:

  • Approve the application for publication (meaning there are no visible issues with the trademark application); or
  • Initially reject the application by issuing an Office Action. Rejections can be on substantive or non-substantive grounds. (An example of substantive grounds? The existence of a confusingly similar mark that essentially “blocks” your application. A non-substantive ground is asking for revisions to the description of your logo.)  An initial rejection is not the end of the world — in fact, many times, the stated issues are surmountable.

Step 3:  After the application has been examined (and/or after you’ve adequately addressed an Office Action), the mark passes through to “publication.”  This means that the content of your application is posted in the Federal Register. Then, third parties get thirty days to file an objection to your application. (This usually happens when that third party owns a mark similar to yours and feels it would be damaged by your achieving registration in the mark).

Step 4:  If no oppositions are filed, the mark should proceed to registration.  The typical timeframe from the date of filing to the date of registration (if no Office Actions are entered) is anywhere from six to ten months.

The Trademark Application Process: The “Intent-to-Use” Application

Filed if you have not yet used your mark in commerce, but have a bone fide intent to do so.

Steps 1-3 above also apply to an Intent-to-Use application, with a few differences.  First, you can’t file an Intent-to-Use application with a specimen, because the you haven’t begun using the mark yet (so, there’s nothing to submit).  Instead, after Step 3 (the publication period), the Examining Attorney issues a “Notice of Allowance.”  Then, you have six months from the date of the Notice of Allowance to either:

  • File your specimen, showing proof of use of the mark (along with a filing fee); or
  • File a request for a six-month extension (along with a filing fee).  An applicant can file for an extension up to five times.

Once the Examining Attorney approves the specimen, the application should proceed to registration.

So there you have it — the trademark registration process in a nutshell.  If you wish to apply for federal registration of your trademark, feel free to contact Spear IP below.

What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.

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Why Register A Trademark? A Look At Registration

Why Register A Trademark

Along with “how does the trademark registration process work?” one of the most common questions that I hear over and over is, “why should I register a trademark?” Your rights to your trademark or service mark begin the minute you first use of the mark “in commerce” (legalese for, essentially, public offering of your goods or services), regardless of whether you register. And, the current fee charged by the Trademark Office per class of goods or services in an application ranges from $225-$275 per class, which can add up if you are in the business of offering several types of goods and/or services. So why register? Because trademark registration comes with some hefty benefits.

The ® Is For Registered.

If you register a trademark with the United States Patent and Trademark Office (or “USPTO”), you will enjoy a variety of perks. Federal registration allows you to use the  ® symbol, which is reserved for federally registered marks, and lets the world know that you consider this mark to be your brand, thus working to ward off infringers.

The Public Record.

Registration also creates a public record of your ownership of the mark and date of registration and date of first use. This can be important if you find yourself arguing with an infringer that attempts to claim his use of a similar brand predates yours.

Also, this public record prevents infringers from claiming their adoption of a similar mark was done in “good faith.” (In other words, “We didn’t know you existed” doesn’t really work as a defense if you have a registered trademark.)

The Potential Remedies.

Other benefits to registering your mark with the USPTO are the remedies available to a brand owner if infringement happens. Think of “remedies” as the things that you ask for in a lawsuit because of the harm that has been done to you. Remedies in general range from things like money damages in the form of lost profits, to non-monetary remedies such as a temporary injunction.

Owning a federally registered mark entitles the owner to the following:

  • Certain statutory damages in cases of counterfeiting, including the potential to block imports that infringe upon your mark;
  • Potential to recover triple or “treble” damages; and
  • The ability to file a lawsuit in federal court (as opposed to state court).

These benefits are important weapons to have in your arsenal when policing your brand against unauthorized users.

Also, knowing that you’re entitled to the remedies listed above could make an infringer more cooperative. How so? Well, they don’t have to respond to your cease-and-desist letter. But the thought of being on the hook for a tripling of your monetary damages? That’s a powerful motivator to respond and work something out.

The Territory.

When you register a trademark with the Trademark Office, you get to enjoy protection in all of the United States. Without registration, you have basic rights. But an opponent could argue that your rights are limited to the states in which you actually operate. (This can leave some gaps in protection!)

The Point: A little investment now can go a long way. Familiarize yourself with these benefits and think about whether your brand could benefit from federal trademark protection.

What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online.