smar(tm)ark® trademark newsletter from Erik Pelton

April 2018

On a recent trip to Rome, a city full of endless history and architecture, one thing struck me as central to all the great buildings: arches. From the first real buildings, to the Colosseum, to the medieval castles, and to the many bridges and aqueducts, archways were central to building large and lasting structures.

The most important part of any arch is the keystone. The center stone at the top of the arch is central to holding it together, supporting the weight above, and creating the entryway below. The Roman Colosseum that stood for centuries was essentially arch built upon arch. Without the keystone, the arches and the construction around them would not be possible, they are the heart of the architecture.

Registration of trademark is like the keystone for a brand's protection. Registration strengthens the protection immeasurably and makes everything else related to brand growth, expansion, and protection easier and better. It is the center stone upon which strong brand protection is generally resting.

Tricks of the Trade(mark) podcast launched

This month, I launched a new series of short podcasts on trademark and branding topics. Because I aim to practice what I preach, I applied to register the new podcast name, TRICKS OF THE TRADE(MARK)™.

The ideal time to file a new USPTO trademark application is before the launch of the product or service for best protection before public exposure. I did that here, filing a few weeks ago with the USPTO via a TEAS+ application asserting a bona fide intent to use the trademark. See USPTO application filing: Serial No. 87844223, covering: Downloadable podcasts in the field of law, intellectual property, marketing, brands, and trademarks.

I invite you to listen to the podcast,

Speed vs. Patience

Speed and urgency are common in trademark matters - taking quick action to file a new trademark application is generally recommended, as is moving expeditiously if you discover an infringer. However, a little patience is a virtue if you ever receive a "cease and desist" or other letter concerning your use of a trademark. Do not respond before consulting counsel; do not post about it on social media. Contact an experienced attorney to go over the issues and possibilities. Such patience will help make sure that nothing you say in response could actually do damage to your defenses. I have seen rash responses too often that do more harm than good.

Case study explores intersection of business and law

I strongly recommend reading a recent article in Journal of Legal Studies Education (Vo. 35, Issue 1) called How Shorebilly Brewing Company Won the Trademark Battle, but Lost the War: A Cautionary Tale for Entrepreneurs.** © 2018 The Author Journal of Legal Studies Education © 2018 Academy of Legal Studies in Business.

The article covers not only the legal issues and history involved in a trademark dispute, but the practical impacts on the businesses involved - a relatively rare and refreshing analysis considering both the legal and business issues. When businesses make decisions about enforcing or defending trademarks, about suing or appealing, about adopting a name with enhance risks, about possibly changing a brand name, and more, they must consider not only the law but the expenses and the impacts on their businesses. Having a great case may not matter if one cannot afford to defend it. Having a weak case is often masked by money and tactics. In general, more discussion of the way that business decisions, the law, and legal strategies intersect would be a good thing.

These decisions are precisely the situations that experienced trademark counsel help business owners with all of the time. A lot of trademark law comes down to assessing what the risks of a situation or action or decision are, deciding how to proceed based on the risks and the goals.

** FULL DISCLOSURE: I represented for Shorebilly Brewing in their USPTO filings, and was deposed and testified as a witness in the District Court case.

My recent field trip to Junior Achievement's Finance Park inspired a trademark blog post.

If there are any topics or issues you would like to see covered here, let us know!

-------------------------------------------------------

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.