How to Protect Your Trademark – Latest Need-to-Know…

“Trademark owners have a duty to police their mark… The cost of dropping the ball on this duty can range from a bar on future enforcement of your rights against a particular company to a complete loss of all trademark rights.” (Mintz Levin)

Applying for and obtaining a trademark is just the first step – mark owners must constantly work to protect their brands, slogans and trademarks.

For your reference, here’s a roundup of recent legal commentary and analysis on how to do that, in the US and around the world:

A Primer on Policing Your Trademark (Mintz Levin):

“First, decide where you are going to police. This will depend on where you currently own rights and what your expansion plans may be. Trademarks are territorial – federally registered marks are effective nationwide, while unregistered, common law rights are effective in the geographic area of actual use (and also the natural zone of expansion). Trademark rights also exist on a country-by-country basis, so rights in the US have no effect outside the US and vice versa.” Read on>>

Use It or Lose It — Trademark Abandonment (Ervin Cohen & Jessup LLP):

“The central foundation of U.S. trademark law is that a trademark is created by use of a particular name and/or design in commerce, so that the mark comes to represent, in the eyes of the target customers, your particular goods or services marketed, offered and sold under that mark… Establishing that your mark is sufficiently distinct and uniquely identifies your product—thus giving assurance of the nature and quality customers have come to rely upon—creates the trademark, gives you ownership of that mark, and leads to a variety of legal protections.” Read on>>

Google AdWords Trade Mark Policy – Important Changes (K&L Gates LLP):

“Google has revised its AdWords trade mark policy which is currently in place in Australia, Hong Kong, China, Macau, Taiwan, New Zealand, South Korea and Brazil and these changes will come into effect on 23 April 2013. From this date, Google will no longer remove third party advertisements which are triggered by keywords purchased for a competitor’s trade mark, unless the trade mark appears in the text of the resulting advertisement.” Read on>>

One Cross – Two Cross – Red Cross – Blue Cross: Trademark Development Traps (Bradley Arant Boult Cummings LLP):

“Trademarks containing variations of ‘cross’ designs are popular with many companies which market products or services related to health care. But companies in this industry area, as well as their advertising and marketing experts and trademark practitioners, should take heed of several barriers regarding the use of cross designs in connection with health care products and services.” Read on>>

What Your Company Should Know About Protecting Against Trademark Infringements in China’s Fashion Apparel Industry (K&L Gates LLP):

“It is no secret that trademark infringements are rampant in the People’s Republic of China (‘PRC’ or ‘China’). As the popular phrase goes, ““傍名牌,搭便车,”” which translates to “feigning as brand name companies and free riding on their coattails,” these cases have steadily increased over the years. In fact, in 2012 alone, PRC courts have heard 19,815 trademark civil cases and 1,123 trademark administrative and unfair competition cases.” Read on>>

You Owe Me One Hundred Million Dollars (Winthrop & Weinstine, P.A.):

“The threat of monetary damages in trademark infringement cases is something that is often asserted, but not necessarily a well understood concept. Some trademark owners mistake their federal trademark registration as a lottery ticket. Generally, this is not the case.” Read on>>

European Commission Proposes for Reform of European Trade Mark System (McDermott Will & Emery):

“The European Commission has proposed a number of initiatives aimed at improving trade mark registration systems all over the European Union to make them cheaper, quicker, more reliable and more predictable. For example, as well as harmonising the rules and criteria for the classification of goods and services and introducing new fee structures for national registries and OHIM, the Commission proposes a new definition of a trade mark and a number of significant procedural changes aimed at reducing cost and delay.” Read on>>

What’s the Use? Give Your Trade-Mark’s Life Some Meaning (Field Law):

“The most important, and most often overlooked, aspect of giving validity and value to your company’s trade-marks is how they are “used.” Unlike copyright works or patented inventions, that remain protected even if never exposed to the public, trade-mark protection only exists if your product or service is actually being sold to the public under the “brand” that is your trade-mark.” Read on>>

Monitoring Employees’ Use of Company Trademarks in Social Media (McAfee & Taft):

“The first and best way to defend your trademarks is through an employee training program. All employees should receive training on the proper and improper use of company trademarks. Provide a list of trademarks owned by the company and inform each employee that the trademarks belong to the company and should never be used without permission.” Read on>>

The Trademark Registration Process in The United States (Sterne, Kessler, Goldstein & Fox P.L.L.C.):

“Unlike copyrights and patents, trademark rights can last indefinitely, provided that the trademark owner continues to use the mark in commerce as an identifier of the source of goods or services. The term of a federal registration is 10 years, with unlimited renewal terms of 10 years. In addition, the PTO requires trademark owners to file a declaration of use between the 5th and 6th year of the initial registration.” Read on>>

BVI Introduces Comprehensive Revamp of Trade Mark Laws (Harney Westwood & Riegels):

“For the first time in several decades there will be a comprehensive revamp of the trade mark laws of the British Virgin Islands. The Trade Marks Act (Cap.158) of the Laws of the Virgin Islands (Existing Act) and the Registration of United Kingdom Trade Marks Act (Cap. 157) of the Laws of the Virgin Islands (Existing UKTM Act, BVI) will, it is anticipated, soon be repealed and replaced by the Trade Marks Act 2013 (the New Act).” Read on>>

“How ADR Can Stem the ‘Trademarklawpocalypse’” in Jams Dispute Resolution — Spring 2013 (JAMS):

“With the ever-growing pressure to achieve quantifiable results for shareholders, companies are seeking to ‘monetize’ intellectual property. But because it’s challenging for companies to discover an untapped revenue source in the form of innovation, trademark cases are gaining popularity. Copyright and patent protection are only so flexible: Basic designs and short strings of words typically aren’t copyrightable, and patent protection is expensive, time-consuming to obtain and has a limited shelf life. Trademark, on the other hand, has become a primary asset because consumers distinguish products quickly and efficiently through brands. If used as a brand, a trademark can be owned indefinitely.” Read on>>

“CJEU Judgment Regarding the Modernisation of Marks Under German Trademark Law” in IP/IT & Media Newsletter – Issue 1/2013 (Reed Smith):

“With a judgment of October 25, 2012 the Court of Justice of the European Union (‘CJEU’) provided owners of trademark rights with more security than in the past with respect to modifications to marks. According to the CJEU, the trademark owner is allowed to merely use the current version of his trademark, whereby the ‘old’ trademark will continue to enjoy full protection. The condition is, however, that the distinctive character of the trademark is not altered by the trademark used at present.” Read on>>

Why Legal and Marketing Conflict on How to Choose a Trademark (Sands Anderson PC):

“Words that ‘merely describe’ an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services, however, are not registrable as trademarks unless they have been used and heavily marketed for at least five years (known as acquired distinctiveness). Descriptive marks are considered very ‘weak’ trademarks and hard to protect. It may be difficult or impossible to stop infringement of a descriptive mark.” Read on>>

Trademark Advice: Measure Twice, Cut Once — How to Avoid Unnecessary Legal Fees (Snell & Wilmer L.L.P.):

“While the counsel of an experienced trademark attorney cannot be overstated, whether you are selecting a name, logo or tagline for a new or existing company, or its products or services, the four suggestions outlined in this article can help you to build a protectable brand, and do so more efficiently. By carefully considering your trademark issues, like the carpenter who measures twice before cutting, you too can save time, money and avoid legal hassles.” Read on>>

Also read these updates on ICANN’s Trademark Clearinghouse:

Find additional Trademark Law updates at JD Supra>>