WINNING!

Posted on June 3, 2011 03:10 by Julie A. Katz

Intellectual Property News reports “that Charlie Sheen has been adding to his growing trademark portfolio again.  His two most recently filed trademark applications are for Masheen and Sheenius.  Both applications were filed in one class of goods but the descriptions cover many different classes which means that the U.S. Patent and Trademark Office is certain to issue Office Actions, and then Sheen will have 6 months to file appropriate responses.  At that time, he will have to cough up an additional $2,000+ in government filing fees if he truly intends to use the trademarks for all of the goods and services listed.”

So what?  Why should Charlie Sheen capitalize on what otherwise will end up in the hands of cyber-squatters?  I say more power to him.  Other people will (to the extent that it isn't already happening) try to make money on his catch phrases, maybe selling t-shirts, hats, sunglasses, beer bottle holders and the like of typical trinkets.  Big corporations try to hold onto a number of trademarks through the intent to use process while they conduct focus groups studies and hone in on the one or ones that ultimately they believe will bring in the most consumers.  And, it does not appear that Mr. Sheen cannot afford the office actions.  Filing in one class to start off is savvy.  Let the examining attorney make the determination of exactly how many classes there are in the goods/services description; there's no prohibition against it.  Is it really that unimaginable that Mr. Sheen comes forth with a cologne, clothes, accessories, beverages (alcohol or not), bars/restaurants.  Rock stars, athletes and other actors all have done this long before Mr. Sheen's trademark filings.  Let his entrepreneurial spirit soar.  He has a fan base and if he sells to them, they will buy.  Good then for him to have federal trademark protection to enforce his rights against infringers who only wish that they got there first.

 

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Who Needs IP Lawyers?

Posted on June 2, 2011 04:05 by Julie A. Katz

A recent article from Bloomberg News discusses the effect a company called Trademarkia has had on IP attorneys that are generally hired to file patent requests.  Bloomberg reports “While entrepreneurs can file trademark applications with the U.S. Patent and Trademark Office (USPTO) on their own, many pay attorneys $150 to $500 per hour to handle the complex process. Since Trademarkia made its debut in 2009, the legal website has streamlined and made the task cheaper.”  Trademarkia -- it is not about "angering IP lawyers," but rather it is about the disservice to unknowing and unsuspecting applicants who save a little money at the start but miss out on opportunities to obtain really valuable intellectual property rights that can add significant value to their business' bottom line. Treating the trademark filing and registration process as a mere "task" misses a major component of legal advice to clients.  Foresight is the key to success.  

A licensed attorney well versed in U.S. Patent and Trademark Office practice and procedure may be able to make filing a trademark application result in increasing a company's bottom line in terms of asset valuation.  A solid trademark registration can make the difference between an investment that increases over time for its owner rather than one that is nothing more than a money pit.  Many believe that the process of filing a trademark is simple and straightforward – plug and chug.  However, in my experience, picking up the pieces of a rejected application often leads the applicant to sour to the whole government process unnecessarily. 

Careful examination of the applicant’s goals in terms of breadth of protection, enforcement opportunities or “policing” responsibilities should take place before clicking “submit”.  The consequences, and there are always consequences, of an apparent initial cost savings incurred by avoiding retaining the services of a proficient trademark attorney who considers the ramifications of a well-worded identification of goods and/or services and the benefits of certain filing bases is ultimately lost once the applications hits the examining attorney's desk and is rejected.  At that point, there may be no resuscitating the application and even if something can be salvaged for protection, the breadth of protection may be so narrow that the applicant is left wondering what it was all for in the first place. 

A trademark registration may be useful for defensive purposes only.  In other words, just to keep others from legitimately claiming that the registrant is an infringer.  A trademark registration may be useful for so much more.  Consideration of issues such as whether to claim color or have a design registered in black and white, claim a special font or use plain block lettering, or how to describe the goods and/or services to accurately cover the spectrum of the business are just a few examples of an experienced trademark attorney adds significant value to the initial filing process.  Lesson to be learned:  Once the application is filed, changes can be made only to narrow or clarify what is covered and not to broaden it; that would require a whole new filing. 

 

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