News & Resources

Trademark Scams: What to Expect After Filing Your Application

I recently went through the process of filing trademark applications for my law firm’s trademarks. Now I am receiving all kinds of scam mail from companies claiming to publish international catalogues of trademarks and offering global trademark protection. I realized that my clients receive these scam mailings every time a new trademark application is filed with the United States Patent and Trademark Office. So below is a list of scam mail I received, along with […]

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Simon Tam’s Journey to the U.S. Supreme Court

Recently, I had the pleasure of attending the Defense Research Institute (DRI) Intellectual Property Litigation seminar in Denver, Colorado. Simon Tam was one of the featured speakers and he spoke about his journey to the U.S. Supreme Court in the case of Tam v Matal. (See blog article Disparaging Words and ‘The Slants’ on March 8, 2018) Simon Tam and his legal teams were the persistent force that led to the U.S. Supreme Court issuing […]

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USPTO’s New Program to Combat Trademark Application Fraud

The United States Patent & Trademark Office (USPTO) launched a pilot program allowing users to protest trademark applications filed with improper specimens that are digitally created, altered, or fabricated. This program was implemented to combat the growing problem with illegitimate filings, particularly those from China. Many of these fraudulent applicants are not actually using their marks in the United States. Instead they doctor specimens to reserve the rights to the mark, often by adding text […]

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Trademark Searches: A Cost Saving Measure Often Ignored – Part 2

When companies set out to establish a new brand for their company, they often skip one important step: the trademark search. This may save a little money in the short-term… only to cause much larger expenses and problems in the long-term. In my previous blog post, I discussed why trademark searches are so important. Here I’ll talk about how to budget for your search. Budget Considerations and Types of Searches When creating a new brand, […]

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Trademark Searches: A Cost Saving Measure Often Ignored – Part 1

Businesses often overlook a simple but critical step in establishing a new brand for a company, product, or service: a trademark search. The first step in a trademark strategy for the adoption and protection of a new word or design mark should be the search process. Often, clients do not budget for a trademark search or ask for a scaled-down search process to save money. In today’s business environment, the value of establishing a strong […]

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Avoid Naked Licensing

When business owners develop a wonderful product, often other people want to sell the product or use the trademark to develop other products. For example, a business develops a popular tasty rum and sells it under a registered trademark, YUMMY. Friends of the creator want to make rum cakes and rum sauces using the YUMMY mark. The two parties may end up negotiating a licensing agreement regarding the products and trademark. If the license agreement […]

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