On My Mind Blog

If you adopt a recognized or widely used concept or sentiment as your trademark, don’t expect to have the exclusive right to use it or to register it even if you use it in a traditional trademark manner.

If you are thinking of registering a variation of a famous trademark for use as your own mark, think again.

A non-U.S. applicant seeking to register a mark in the U.S. without having used it in U.S. commerce normally should take affirmative steps to establish its bona fide intent to use its mark just like a domestic intent to use trademark applicant.

A pending lawsuit illustrates the importance of keeping your eyes open in selecting a new trademark, and also in monitoring applications by others to register identical or similar marks for competitive or related products, as well as looking for the use of such marks in the geographic areas of your existing sales or planned expansion.

You can preserve rights in a registered trademark if the mark’s non-use is beyond your control, and you have documented the specific steps you have taken to arrange for its use in the near future.

A non-U.S. applicant cannot use the Madrid Protocol to register a merely descriptive English word (or its foreign-language equivalent) as a trademark in the United States.  But another strategy may be available.

So you’ve gone through the process of registering your trademark or service mark.  Now what should you do? 

Here are some guidelines on how to use your registered mark to best legal advantage.

Traditional lawyer demand letters can backfire.

You want your lawyers to be strongly assertive when you believe that your trademark rights are being used in an infringing or generic way.  But formal demands that the improper activity must cease have, on occasion, been posted to social media and ridiculed there, or have just been ineffective.

When a company decides to discontinue the primary use of a mark, the company nevertheless may wish to maintain its exclusive right to use that mark because the mark may continue to be associated with the company.  

Despite any ideological differences, nearly all Americans can agree that the past twelve months have been a boom time for political catchphrases — Covfefe, anyone?  But can a third party stick a political catchphrase on a t-shirt or coffee mug and obtain a trademark registration?