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Posted on November 8, 2017

What is Branding?

The American Marketing Association (“AMA”) defines a “brand” as “a name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers.” This definition is close to how the Lanham Act defines a trademark, which is “any word, name, symbol, or device, or any combination …

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Posted on November 7, 2017

Search then Use or Use then Search?

Ideally, a company will conduct a trademark search before the first use of the mark, but there is value in searching even after you have used a mark in commerce. If you adopt a mark in a remote geographic area without knowledge of a senior user’s rights or before the filing date of a senior …

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Posted on November 6, 2017

Rebranding and Trademark Law

Type “rebranding” into Google and you will find a plethora of articles discussing when it is appropriate to rebrand a business or product line and how about doing it. Most of these articles will talk about creating the right brand identity so that it is consistent with what was done in the past but with …

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Posted on November 3, 2017

A Look Back at 2017 Trademark Year

As 2017 starts to close and companies are putting together their 2018 budgets, we thought it was a good time to pause and look back at the 2017 trademark year. Year to date, 594,107 new applications were filed, which represents a 12% increase from this time in 2016. There have also been 327,314 new registrations …

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Posted on November 2, 2017

No Room for Trademark Clearance in the Average Branding Cost Budget?

There is no one-size-fits-all to a branding budget. They will vary by the size of the company and overall marketing strategy. But for anyone investigating what an appropriate branding budget is, here are the guideposts identified by the authors of Branding for Dummies, 2d Edition: Task                    …

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Posted on November 1, 2017

Related Goods Watch 2017

In In re Stanley Black and Decker, Inc., the Trademark Trial and Appeal Board found that department store services are related to computer store services. The applicant identified its services as “retail department store services and online retail department store services” and the registrant identified its services as “retail store services featuring computer hardware, software, …

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Posted on October 31, 2017

Happy Halloween

BOB wishes everyone a happy and safe Halloween!

Posted on October 30, 2017

The Secretary of State Issued My Corporate Name, I am good right? Wrong.

Too often we hear that the Secretary of State issued me a corporate name or an assumed name; thus, I have secured my trademark rights. Unfortunately, this way of thinking is wrong. The Secretary of State has no authority to grant trademark rights. Moreover, the Secretary of State is not evaluating company names in its …

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Posted on October 27, 2017

True Talk About the Attorney-Client Privilege and Trademark Searches

U.S. law recognizes the sanctity of communications between attorneys and clients; thus, the law will normally protect such communications from disclosure to third parties under the policy of attorney-client privilege. In Upjohn Co. v. United States, 449 U.S. 383, 389 (1981), the United State Supreme Court held that the primary purpose of the attorney-client privilege is …

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Posted on October 26, 2017June 25, 2018

Dawn Donut, Not a Pastry, One of the Trademark Rules

In 1959 one of the important trademark rules was created. The United States Court of Appeals for the Second Circuit issued a decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959). Dawn Donut Co. was a wholesale distributor of doughnuts and other baked goods, the senior user, and owned a …

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