Baker & Rannells, P.A.
Protecting Brilliance: Top Reasons to Trademark Your Brand or Company Name
by Jack Branowski
The most valuable brands in the world are recognized by nearly everyone on the planet at a glance. The Golden Arches. That iconic swoosh. The apple.
Whatever your opinion of the products behind them, you know exactly what they stand for and what company makes them. The companies behind these brands spend a significant portion of their time protecting their brands. Whether your company is large or small, you should copy their example and trademark your brand and/or company name, too.
What Happens When You Register Your Brand as a Trademark?
When you register your brand as a trademark, it is immediately recognized within the registry of the U.S. Patent and Trademark Office (USPTO). Once identified and recognized, this registration discourages domestic and possibly foreign third parties from adopting or using a trademark similar to yours.
If another filer attempts to file a trademark that is confusingly similar to your existing trademark, the USPTO attorney examiner will identify your trademark and refuse registration to the new trademark. This can prevent infringements and save you the effort of taking legal action to stop a third party from copying your brand. What is even better, you pay nothing for the USPTO to do this.
7 Reasons to Trademark Your Brand
There are numerous reasons to trademark your brand or company name. Here are seven of the most compelling:
• You’re protected until proven otherwise. A trademark registration is prima facie evidence of validity of the registration, the registrant’s ownership of the trademark and the registrant’s exclusive right to use the trademark in commerce.
• Get help enforcing your rights. When a trademark registration reaches its fifth anniversary, it becomes incontestable (provided it was in continuous use). This precludes an attack by third parties on the basis of functionality or descriptiveness. This is extremely helpful when enforcing your trademark rights against would-be infringers.
• Widen your net. A trademark registration is typically national in scope and effective as of the date of application. This is extremely important because the United States is a first-to-use vs. first-to-file jurisdiction. Without a registration, your rights may be limited to your geographic trade area.
• Get the ® behind your brand. That little ® packs a powerful punch. The trademark registration owner has the right to use the ® device, which puts consumers and competitors on notice regarding your trademark rights.
• Extends your rights. A trademark registration extends your rights throughout the entire United States.
• More damages. A trademark registration provides statutory damages in lieu of having to prove actual damages.
• Protects against imported infringement of trademark. A registration can be recorded with the U.S. Department of Homeland Security to bar the importation of goods bearing infringement of your trademark.
Interested in Protecting Your Intellectual Property?
For more information about trademark and copyright laws, or to speak to an experienced intellectual property attorney about protecting your brand or company name, contact Baker & Rannells, P.A. at www.tmworldwide.com .
October 6, 2016
Baker and Rannells, P.A. Travels to Bali for APAA 2016 Conference
By Jack Branowski
In keeping with the opening of their new office in Guangzhou, China, Baker and Rannells, PA, Intellectual Property Attorneys, will attend the 66th Annual Asian Patent Attorneys Association (APAA) Conference.
Established in December 1969, the APAA is open to individuals practicing the profession of patent attorney in the Asian region. The APAA is a non-governmental organisation dedicated to promoting and enhancing intellectual property protection in the Asian region (including Australia and New Zealand).
For more information please contact Baker and Rannells, PA at www.tmlawworldwide.com .
Part 2: Strengthening Alliances in China
By Jack Branowski
We are back! The trip to China, taken by Baker and Rannells, P.A., President and Senior Partner, Stephen L. Baker and Associate Attorney, Pei-Lun Chang, yielded all intended results.
In September 2016 Baker and Rannells, PA, the notable and highly regarded law firm specializing in intellectual property law, initiated the first step of its planned expansion into China. During the ten day trip we strengthened alliances and cooperative efforts with our strategic partners. We also reaffirmed our law firm’s dedication to our already strong list of clients based in China.
There was a renewed sense of need for the removal of roadblocks faced by Chinese companies looking to move into U.S. markets, adding to the list of Chinese needs beginning with licensing, trade mark registration and patent filings. There are also new and renewed concerns in the areas of client vetting, enforcement of client intellectual property rights and immigration law representation for businesses and individuals.
Baker & Rannells / Huake Joint Exhibition (See Blog Pt. 1)
The most exciting benefit of the trip to China is the newly expanded relationship Baker and Rannells, P.A. will enjoy with its strategic partner, Huake Law Firm. Through this enhanced relationship with Huake (practice limited to China), both Baker and Rannells and the Huake Law Firm will each maintain offices within the other’s headquarters location. This gives each firm access to local talent, knowledge, expertise and services which are vital to accommodate the needs of their respective clients in both China and in the United States.
Baker & Rannells New Office within Huake
Baker & Rannells is excited and appreciative for every one of its clients in all the countries we service. Now through our continued and expanded endeavors in China, we are excited about our expanded client service the firm now offers and about the cultural expansion our relationship with Huake provides.
Huake Law Firm – Yuexiu No. 198 North Road, 19th Floor, Guangzho, China
Check back in October 2016 for information and an update as Huake Law Firm visits the United States and on the Baker and Rannells, P.A. trip to the APAA2016 in Bali.
For more information please contact Baker and Rannells, PA at www.tmlawworldwide.com .
This is a very exciting time for Baker and Rannells, PA, the notable and highly regarded law firm specializing in intellectual property law, as we eagerly initiate the first step of our planned expansion into China.
Stephen L. Baker, President and named partner of Baker and Rannells, and Attorney Pei-Lun Chang, have scheduled an exciting ten day trip to China from August 9 through August 19, 2016. While visiting Guangzhou, Shen Zhen and other parts of China, Attorneys Baker and Chang will attend and exhibit at the annual meeting of the International Overseas Trade Fair (OCTF). The OCTF promotes overseas import and export expansion efforts in China and is sponsored by the Overseas Chinese Think Tank (OCTT).
Attorney John M. Rannells, the other named partner of our prestigious firm, spoke enthusiastically regarding the trip to China. Referencing an even stronger alliance and cooperative effort with its current strategic partners, Attorney Rannells looks forward to a highly anticipated attorney exchange program with his firm and that of its strategic partners. He also believes his firm’s dedication to the Chinese market will be demonstrated through the increase of attention, talent and resources being allocated. He is confident these efforts will lead to an increase of his firm’s current Chinese client base as well.
Local markets and manufacturing zones will also be of interest. Here Attorneys Baker and Chang will be working with various domestic and overseas social organizations, business associations and current local strategic alliance partners of Baker and Rannells.
It is the goal of all involved in the Baker and Rannells expansion effort, to reinforce and strengthen the already solid relationships Baker and Rannells enjoys with its current China based clients and strategic partners. Baker and Rannells, PA plans to increase its recognition as a leading source for the Chinese markets intellectual property legal needs.
Check back in September for Part 2, an update and learnings from the trip.
For more information please contact Baker and Rannells, PA at www.tmlawworldwide.com.
Although the Trademark Insider® Annual Report is no longer published, the performance of the firm Baker and Rannells, PA and the firm’s President/Chief Attorney Stephen L. Baker to the present time has remained at least as significantly strong as is illustrated by the figures presented below.
Corporation Service Company® (CSC®), a leading provider of trademark research and watching, brand monitoring, and domain name management services, published the Trademark Insider® Annual Report until 2010.
A quarterly publication on the trademark industry, the report provided a ranking of leading trademark practitioners, insight into overall trademark filing activity, and analysis of overall industry trends.
Trademark Insider® Award was determined by calculating the number of times an individual law firm and/or attorney is listed in the Correspondent field of all USPTO applications submitted during a particular calendar year.
“It is a great achievement to be recognized as one of the top trademark practitioners,” said Rod Ward, President and CEO of CSC ” in 2010. We congratulate all those who received ranking on this year’s (2010) list, especially those that won an esteemed CSC® Trademark Insider® Award.”
We often get questions from business owners whether they should register their logo or trade name. According to USPTO, who manages incoming applications and issues trademarks, there are several advantages to officially register your trademark.
1. You are declaring to the general public that you have claim of ownership of the mark
2. You have legal coverage and right to exclusively to use the registered mark nationwide
3. You have the ability to bring any action regarding violations of the mark by others in federal court
4. You can use of the U.S registration as a starting point to obtain registration in other countries
5. You have the ability to file the U.S. trademark registration with the U.S. Customs Service in order to prevent importation of infringing foreign goods
Note that you can use the TM (trademark) or SM (service mark) designation to alert the public to your claim. You can use the R (registered mark) only after USPTO officially registers the mark. This asserts that you have legal protection and exclusive right to use the mark. Click here to read more about trademarks.
A trademark includes any name, word, symbol, or device used, in business to distinguish the goods of one company from another. A trademark is a brand name and a valuable asset that should be protected.
1. Pick Wisely
There are four main kinds of trademarks:
Descriptive (Ex: Honey Bunches of Oats)
Suggestive (Ex: Jaguar)
Arbitrary; (Ex: Apple)
Fanciful (Ex: Kodak)
Note that descriptive trademarks are less likely to get approved when you compare them with the other three.
2. Be Unique
The trademark must be sufficiently unique in order to be approved, to be protectable and to keep away infringement complaints. USPTO will analyze your trademark application and compare with other approved trademarks to gauge the uniqueness.
3. Clear Drawing and Specimen
USPTO would expect a clear drawing of the mark to be submitted with the paperwork. Make sure the drawing matches the mark on the specimen. For products submit the actual label or tags used on the product packaging. For services use brochure or magazine advertisement that clearly shows the mark.
You can keep track of your trademark application by entering your registration number here: http://tarr.uspto.gov
You can find more resources and help here: http://TMLawWorldWide.com/
Patent examiners at the United States Patent and Trademark Office (USPTO) prosecute applications for patents. Examiners make determinations based on federal codes, rules, and judicial precedents. These determinations are appealable through the U.S. Courts. An appeal of these determinations is three steps away from the U.S. Supreme Court. Responsibilities for a patent examiner at the USPTO include:
- Reviewing patent applications to determine if they comply with basic format, rules and legal requirements;
- Determining the scope of the invention claimed by the inventor;
- Searching for relevant technologies to compare similar prior inventions with the invention claimed in the patent application; and
- Communication of findings as to the patentability of an applicant’s invention via a written action to inventors/patent practitioners.
In the United States, a practitioner may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to practice and represent clients before the United States Patent and Trademark Office (USPTO). Both patent agents and patent attorneys may prepare, file, and prosecute patent applications. Patent agents and patent attorneys may also provide patentability opinions, as noted by the U.S. Supreme Court in Sperry v. Florida. However, the USPTO Rules of Ethics and Professionalism, effective as of September 15, 2008, specifically clarifies that patent agents may not provide an “opinion of validity of another party’s patent when the client is contemplating litigation and not seeking reexamination” because such activity “could not be reasonably necessary and incident to the preparation and prosecution” of a client’s patent.
Patent attorneys must also be admitted to the practice of law in at least one state or territory of the U.S. or in the District of Columbia. In the time since the USPTO issued the first patent in 1790, approximately 68,000 citizens have passed the USPTO registration examination, allowing them to register to prosecute patent applications. (This total does not include current patent examiners, who are not allowed to serve as patent attorneys or agents and thus do not appear on the list of enrolled practitioners.) Today, roughly 40,000 people are on the list of registered patent attorneys and agents, with about 30,000 of them also licensed to practice law. Of the states, California has the most patent attorneys (and agents), followed by New York and Texas. Per capita, Delaware has more patent attorneys (and agents) than any state (not including DC). Both Patent Attorneys and Patent Agents are generally required to have a technical degree (such as engineering, chemistry or physics) and must take and pass the USPTO registration examination (officially titled Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office). Since patent attorneys are admitted to practice law in a state or territory, they can additionally provide legal services outside the Patent Office if practicing within the jurisdiction they are admitted to practice or if the law of the jurisdiction otherwise permits them to practice although not admitted in that jurisdiction. These legal services include advising a client on matters relating to the licensing of the invention; whether to appeal a decision by the Patent Office to a court; whether to sue for infringement; whether someone is infringing upon the claims of a client’s issued patent; and conversely, whether a client is infringing the claims of someone else’s issued patent. Patent agents cannot provide legal services of this nature, nor can they represent clients before the Trademark Office part of the USPTO.
To register as a patent agent or patent attorney, one must pass the USPTO registration examination. This examination, commonly referred to as the “patent bar,” tests a candidate’s knowledge of patent law and USPTO policies and procedures as set forth in the Manual of Patent Examining Procedure (MPEP). Upon successful completion of the examination, one will be labeled as a “patent attorney” if he/she has already been admitted to a state or territorial bar. However, engineers, scientists and any other science based majors, as well as law students and law graduates who are not admitted to a bar, will be labeled as “patent agents” since they cannot give legal advice nor represent clients in court. The latest exam result statistics are from June 9, 2005 through October 17, 2006: during that time, 58.2% of the 4,165 candidates passed the exam, which was based upon MPEP, 8th Edition, Revision 2. The current exam is based on MPEP, 8th Edition, Revision 4, as of October 19, 2006. (No tests were given based upon MPEP, 8th Edition, Revision 3.) Applicants who are not United States citizens and do not reside in the U.S. are not eligible for registration except as permitted by 37 CFR § 11.6(c). None of the world’s countries, except Canada reciprocates, giving U.S. citizens the right that the U.S. grants to their citizens.
A candidate must also have an adequate scientific and technical background or education to understand a client’s invention. The educational requirement can be met by a bachelor’s degree in a specifically enumerated major, such as biology, computer science, chemistry, biochemistry, microbiology, physics, and biomedical, chemical, civil, electrical or mechanical engineering. This is known as Category A qualification. One can also meet the scientific and technical training requirement by qualifying under Category B or Category C. Category B provides four distinct qualification options, where each option sets a requisite number of semester hours in physics, biology, chemistry, computer science, and/or engineering. An applicant can qualify under Category C by showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination. Specific details of the ways one can qualify for the USPTO registration examination are outlined in the USPTO Registration Statement. Degrees in the social sciences, mathematics, or philosophy by themselves do not meet this requirement.
A candidate must also possess “good moral character and reputation” (37 CFR 11.7). If practicing outside the United States, a patent agent or patent attorney must be a U.S. citizen.
- Domain Name
- Entertainment Law
- Intellectual Property
- Internet Law
- register a trademark
- Trademark Infringement
- trademark licensing
- trademark registration
- trademark sale
- trademark symbols
- Trademark Terminology
- trademark transfer