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USPTO Review – Translating Portions of a Brand

USPTO Review – Translating Portions of a Brand

by | Mar 1, 2022 | Brand Protection 101, Other

Trademark applications complete a process known as prosecution before they become registered.  The first step is a review by the USPTO to ensure the application meets certain requirements.  I have prosecuted and managed thousands of applications in my career.

One item the USPTO must check is whether any or all terms in the brand are foreign words that would be translated by buyers.  If so, they then request that you insert the translated words in the record.  These requests are often reasonable, but you should carefully consider the impact of the results.

Billy wanted to protect his brand Ikariso Ikons.  The USPTO noted that “Ikariso” means tavern in Kinyarwanda, and requested that we translate this term.  I knew that we would then need to disclaim exclusive rights to this unusual term, so I argued that none of the prospective buyers spoke Kinyarwanda.  They would see this as a fanciful word.

Your most recent client had an interesting business name.  Ask her why she chose it, then make a 3-way introduction with me.

USPTO Review – Disclaiming Descriptive Portions of a Brand

USPTO Review – Disclaiming Descriptive Portions of a Brand

by | Feb 23, 2022 | Brand Protection 101, US Registration

Trademark applications are reviewed by the USPTO to ensure the application meets certain requirements.  There are over 30 offices of USPTO examiners.  I know dozens of these examiners on a first name basis.

One item the USPTO must check is whether any words or other items in the brand merely describe the goods or services listed.  The USPTO is quick to request that the applicant “disclaim” the rights to these terms to prevent parties from claiming exclusive rights in common words.  These requests are often reasonable, but you should be prudent about giving away your rights.

Calvin filed an application to register his Captain Cajun Canteen.  The USPTO requested that he disclaim the exclusive rights to “Cajun Canteen” since this phrase described his restaurant.  I convinced the USPTO to allow him to disclaim these words independently, but not as a whole phrase given the alliteration. Calvin now has additional rights over the term “Cajun Canteen.”

Introduce me to the brand agency whose clients request brand names with informative words to reduce advertising spend.  Let them know that I can help maximize the protection of those brands.

USPTO Review of Identification of Goods and Services

USPTO Review of Identification of Goods and Services

by | Feb 13, 2022 | Brand Protection 101, US Registration

Trademark applications are reviewed by the USPTO to ensure the application meets certain requirements.  There are many resources that can be used to reduce cost and increase the chances of success.  Our firm uses these resources to our clients’ advantage.   

One item the USPTO must check is whether the items identified as being connected with the brand are clear and unambiguous, and classified correctly.  There is a list of pre-approved identifications that are automatically accepted and using them reduces the filing fee.  Our firm knows how to add items to this list to let you take advantage of the list.

Jenn works for a company that creates new technology.  The products are unreal and, before now, did not exist.  She has a lot on her plate and wants the trademark process to be smooth.  Our firm contacted the USPTO and had these brand new items added to the preapproved list just for Jenn! 

Your inventor friend is always showing you a new gizmo he created for his company.  Tell him you know a firm who can make the unfamiliar seem familiar, and make the brand new become pre-approved.

Name, Image & Likeness (NIL) is Everywhere

Name, Image & Likeness (NIL) is Everywhere

by | Feb 7, 2022 | Brand Protection 101, US Registration, Infringement, Education

NIL is a common term for the collective rights that allow people to control the commercialization of their identity, most commonly via an endorsement deal. NIL has always been one of the least understood areas of branding. Both companies and experienced, wealthy athletes have frequently gotten into trouble as a result of endorsement deals. Now, a recent decision by the US Supreme Court held that college athletes can earn money from their NIL. Adding this inexperienced group to the mix of people that can enter NIL deals will almost certainly lead to issues.

Companies have always had many concerns in NIL deals. In addition to money, duration and scope, there are also concerns regarding whether the endorser will uphold the brand image, or otherwise be a good brand ambassador. Some issues are unavoidable, such as when Reebok promoted “Dan versus Dave,” a head-to-head match up of two US decathlon athletes, for months before the 1992 Summer Olympics– and then Dan didn’t make the team. (Catching Up With Dan And Dave (cnbc.com).) Others are avoidable, but not viewed as a moral wrong, such as when David Beckham endorsed Brylcreem, and then decided to shave his head. (Brylcreem gets greasy as Becks tells his story – Marketing Week.) Some issues seem personal, like when Lebron James used social media to criticize the Samsung product he endorsed. (LeBron James tweets Samsung phone fail, then deletes it | Fox News.) Finally, sometimes the athlete becomes downright untouchable, like when many companies dropped Tiger Woods after news broke about his marriage infidelity. (Tiger Woods loses Gillette endorsement. Will 2011 be a turning point? – CSMonitor.com.) While our firm can’t prevent athletes from being human, we can counsel companies to make sure they are covered for all of these situations.

College athletes have many potential pitfalls in NIL deals. The biggest concern of course is that they sign away too much rights, and lose the ability to enter future deals when their “brand” is more valuable. They also have the concerns that even highly counselled celebrities, such as when Kawhi Leonard lost his KLAW logo to Nike. (Kawhi Leonard loses copyright lawsuit against Nike – Sports Illustrated.) Finally, college athletes have to worry about losing their scholarship and their ability to play on the very team that makes their NIL valuable.

Initiating Protection can help any party in a branding deal. We can draft or review an endorsement (or similar) agreement, advise on developing a branding strategy focused on NIL, consult on potential risk to scholarships or any other legal service related to NIL and branding.

Is your brand properly protected?

USPTO Review of Descriptiveness

USPTO Review of Descriptiveness

by | Feb 4, 2022 | Brand Protection 101, US Registration

Trademark applications are reviewed by the USPTO to ensure the application meets certain requirements.  The examiners follow a book known as the TMEP.  I’m an expert on this book.

One item the USPTO must check is whether the brand in the application merely describes the goods or services listed in the application.  The USPTO is quick to issue “descriptiveness” refusals to prevent parties from claiming exclusive rights in common words.  A well-crafted response can change their mind.

Hannah came to me to protect the name of her horse training service—CHEVAL NOIR.  As expected, the USPTO claimed that since this translates to “black horse,” it is descriptive of a trait of the service.  I explained that the addition of “Noir” gave the brand a certain je nai se quoi that only a French term could provide.

I’m a good fit for the brand agency that loves to suggest descriptive brands to reduce advertising spend.  Let the owner know that a descriptive brand is hard to protect, but I can help convince the USPTO that their brand qualifies for protection.