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The Benefits of a Trademark Clearance Search

What is a Trademark and Why Are Trademark Clearance Searches Necessary? 

A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. Your trademark is the "source indicator" or the "anchor" to your overall brand and products. To be the only entity allowed to use a trademark, one must register it with the United States Patent and Trademark Office ("USPTO") ~ if the USPTO allows it! 

So you think you've found that perfect name that you absolutely love?!

Get excited, but not too excited.

The USPTO will reject your trademark application if the Examining Attorney finds that there is a likelihood of confusion with a prior-filed trademark. A rejection can be unbelievably frustrating, especially after spending so much time creating your brand name.  

If your name is rejected, it's may be in your best interest to create another brand name. At the end of the day, you want your trademark to be unique, strong, protectable and enforceable. 

On the sunny side, you can actually take some very important steps to drastically decrease your chances of receiving a rejection from the USPTO.  Being proactive will save you time and money.

Here's the solution for all potential trademark applicants:  Clearance searches!

Always perform a trademark clearance search before attempting to register any potential trademark. 

A trademark clearance search can be performed at a basic level via the USPTO’s Trademark Electronic Service System (TESS). However, this type of simple search is not fool-proof. It's almost impossible to search all variations and incarnations of a word mark.

You might also want to consider a more robust trademark search, one that is outsourced to a third-party search company and then reviewed and analyzed by a trademark attorney.

How to Perform a Basic Trademark Search On your Own 

It is quite simple to do a basic search by using the TESS. Here, you can search the USPTO database of registered trademarks and pending applications. 

TESS offers several options for entering search terms. One can choose from three options:

Basic Word Mark Search;

Word and/or Design Mark Search (Structured); or

Word and/or Design Mark Search (Free Form). 

However, a basic search is merely a cursory method of searching.

Even a basic search will benefit from a thorough analysis by an attorney. 

Moreover, a Comprehensive Trademark Clearance Search is strongly encouraged in most situations to avoid future trademark infringement complaints, which could result in penalties that include money damages.

USPTO offers the following stern warning about relying on one’s own basic search: 

WARNING: AFTER SEARCHING THE USPTO DATABASE, EVEN IF YOU THINK THE RESULTS ARE "O.K.," DO NOT ASSUME THAT YOUR MARK CAN BE REGISTERED AT THE USPTO. AFTER YOU FILE AN APPLICATION, THE USPTO MUST DO ITS OWN SEARCH ALONG WITH OTHER REVIEWS, AND MAY REFUSE TO REGISTER YOUR MARK. 

According to the USPTO webpage, “Trademark Basics,” hiring a competent trademark attorney is not only recommended, but an integral part of this legal process. (As an aside, foreign domiciled entities must hire a US-licensed attorney starting August 3, 2019, for handling trademark applications, maintenance, and work before the TTAB.)

USPTO states the following: 

   You may file a trademark application on your own (unless you are foreign domiciled as linked above), but if you want someone to help you or give you legal advice, you need to hire an experienced trademark attorney who is licensed to practice law in the United States. 

   Foreign attorneys and non-attorneys who work for trademark filing companies are not permitted to advise you, help you fill out a form, sign documents for you, or take actions on your application for you. 

   Hiring someone who is not allowed by the USPTO’s rules to represent you can delay your application and jeopardize its validity. 

Having a trademark roadmap that starts with visualizing your goals for your business and leads to “planting your flag” via the establishment of a trademark can be a daunting process.

It is vital to heed the USPTO’s warnings, to insulate oneself from infringement damages.

And remember, you don't just want to create a trademark that can be cleared and registered.

You want a unique trademark that is memorable and strong from both the legal and marketing perspective!  

The right attorney will not only help you with clearance searching, but might even guide you in a direction that helps you manifest that perfect brand name to fit the vision for your brand just perfectly!!!  

Need help with trademark creation or clearance?

Apply to work with me!

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The Right {or Wrong} Trademark Can Make {or Break} Your eCommerce Brand

Whether we realize it or not, we all encounter trademarks daily. Actually, scratch that..more like hourly.

Trademarks are a simple and concise method of communicating information about a brand. The information communicated centers around the desirable qualities and characteristics of the brand.

Your trademark "sings" the song of your brand. {You've probably already heard me say that a time or two!}

Some of the highest performing brands today don’t just sell products - they sell a lifestyle. A key example of this is the health and wellness industry. A consumer is not just buying a pair of yoga pants - he or she is buying a healthy lifestyle. Businesses within this industry develop strong branding and trademarks that clearly, concisely, and effectively communicate to buyers that they are purchasing a lifestyle of physical wellbeing. {Hello, prAna, Lululemon, and my favorite, my client Eagle Rock WERKSHOP!}

Over time, trademarks come to encompass far more than their original marketing messages. Company reputation becomes a key factor as more and more consumers gain experience with a product bearing a trademark. This can have a profound effect on the value of a trademark - for good or bad {and that's up to you, as the brand owner!}

Branding strategies should be designed to support and promote a retailer’s desired perception of a product. When a retailer fails to develop trademarks that align with this goal, the result can be especially detrimental.

Poor trademark creation practices are likely to completely impede a retailer’s ability to attract a strong customer base, and more specifically, the customer base they desire. A business lacking a regular stream of loyal customers will struggle to survive in any market - let alone the current market, which is highly competitive, particularly in the online retail world.

The Qualities of Good (and Bad) Trademarks

To help marketing teams make good branding decisions, a well-developed trademark is:

  •    Simple
  •    Distinctive {unique}
  •    Meaningful
  •    Well-associated with a retailer’s product class {but NOT descriptive of said product class}
  •    Capable of eliciting a robust mental image
  •    Designed to evoke an emotional reaction {hopefully, a smile!}

Based on these stated qualities of a good trademark, we can infer the qualities of a bad trademark. A private label with a poor trademark selection strategy is likely to have a trademark that is:

  •    Overly-complicated {e.g., challenging to share verbally}
  •    Difficult to distinguish from other retailers’ branding {might as well be on the lookout for a cease and desist letter}
  •    Lacking in meaning or significance to consumers {watch out for those trendy marks full of consonants}
  •    Difficult to search for using voice on Alexa and other voice searching platforms {this is gonna be a biggie in the future}
  •    Unable to elicit strong mental images {a la borrrring}
  •    Incapable of creating an emotional response

The Importance of Trademarks for Private Label Businesses

In the age of Amazon, it is imperative that private label businesses develop branding strategies that sell, and create trademarks that best represent and convey those strategies.

A strong trademark puts a private label business on a stable path toward the creation of a high-performing brand, and one that will grow in value over time.

This is also important for Amazon sellers. So listen up!

These retailers must be mindful of how they can build a strong brand name that will persist over time without having to rely on the existence of an external platform like Amazon. {Amazon isn't here to help you police and enforce your brand. Don't depend on Amazon. Diversify.}

The Marketing Value of Trademarks

A compelling trademark is the critical starting point for private label businesses looking for avenues of driving sales and maximizing their market share.

An effective trademark establishes a business in the mind of the target consumer.

This establishment then serves to stimulate critical consumer behaviors:

  1. purchases of the business' products,
  2. communication about the brand’s value with others, and
  3. return customers.

In the modern age of social media, consumer communication about a brand can be invaluable. Developing a strong brand name that consumers can easily communicate about online and in-person creates a fertile environment for positive consumer perception. This allows potential consumers to have a deeper initial experience with a brand, which will ideally drive new sales to the retailer, as well as bring back repeat customers.

The Legal Ramifications of Trademarks

From a legal perspective, a trademark is a powerful protective force for a retailer. Establishing a legal trademark protects a retailer from other parties infringing on the brand. This is known as trademark infringement, which is defined under US law as, “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

The law allows a trademark owner to file a lawsuit if the owner believes another party is infringing on the trademark. In cases where the court finds that trademark infringement has occurred, the trademark owner may be entitled to:

  •    A court order demanding that the infringing party stop using the trademark
  •    A court order that requires the infringing party must destroy or forfeit any infringing articles
  •    A court order requiring the infringing party to pay the attorneys’ fees of  the trademark owner
  •    Financial compensation for any profits the infringing party made as a result of the infringement 
  •    Financial compensation for any damages
  •    Financial reimbursement for the costs of filing the lawsuit

These laws are designed to protect businesses and their brands, as well as consumers! Businesses who are striving for market success should be aware of these protections and how they can utilize them to maintain the quality of their branding strategies and increase the value in their trademarks over time ~ super important!

Apres' Ski

The modern eCommerce age has provided private label sellers with an extensive platform for conducting business.

A well-developed trademark is an essential element for a business to distinguish itself from the crowd, establish itself within the minds of consumers, and grow itself into a reputable ~ and profitable ~ industry leader.

Establishing a strong trademark ~ from both the legal and the marketing perspective ~ and a well-planned branding strategy lays a solid foundation for success within the online retail sector.

Do you need help with trademark creation?

I understand that finding the nexus of a great trademark ~ from both the legal perspective and the marketing perspective ~  can seem elusive. But guess what? I can help you.

Apply to work with me today!



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3 Tips for Trademark Creation Brainstorming

Are you in the midst of forming a creative team for an internal creative process?

Well, there are certainly plenty of pros and cons of forming a creative team when it comes to creating trademarks for your private label products, services, courses, or even the name of a podcast!

Nailing down a viable and strong trademark for a new product in the early stages of product sourcing and or development is ideal, because it's the optimal time to choose a trademark that is both marketable (from a brand value perspective) and protectable (from a legal perspective).

Setting up a creative team for your brand name selection endeavor is helpful, but by no means required. In fact, I think some people put too much emphasis on forming a creative team for so-called creative brainstorming events. 

There are certainly some pitfalls when forming a creative team. So watch out! 

In fact, there are some real advantages to being your own creative team. The best creative team might be comprised of: YOU! So, think long and hard about whether a creative team will work best for you. 

If you don’t love the naming process the first time you do it with a creative team, try it alone with the next round if needed. And vice versa. There is no right or wrong way. It’s all about finding out what works best for your business, your brand, you

As an introvert, I see a lot of benefits to being a one-man show. If, for any reason, you don't think you can put together a creative team, don't worry. 

I'm going to provide guidance on working with a creative team, as well as how to go this alone, and still create a totally amazing trademark either way.

If you do want to form a creative team to help you in the brand name creation process, ask yourself a couple of questions: 

Who has the creative fire, and knowledge about the brand,  to help you with your initial brainstorming process?

Is it your employees, partners, vendors, suppliers, family, beer-drinking buddies, or a combination of the foregoing?

You might also want to consider your current most loyal customers, if you've been around long enough to establish that base and you're rolling out maybe a second or third brand name. {This idea probably won't work if you're just starting out.}

If you are putting together a creative team, whether it's two or ten people, or you alone, identify the creative resources you will utilize. For example, you might want to rent a party room somewhere, or even use a table at your favorite bar and treat everyone to beer and pizza.  

You may have more resources than you realize to brainstorm internally.

Avoid uninspired surroundings.

Of course, if you're unhappy with the first results of a creative team brainstorm session, you may be forced to pivot in some way. You can set up a different creative team: again, try to go it alone. 

My hope is that you'll get faster and faster with future brand name rollouts, as you ultimately learn what works, and what doesn't. You’ll learn if you are able to surround yourself with a great, go-to creative team, or if it makes more sense for you to roll solo.

Learning this information will save you from future hangups, and the process will get even smoother. 

Of course, a lot of of this depends on your own internal processes and availability ~ or lack thereof ~ of creative people and beer-drinking buddies.

Beware,  I have seen too many companies outsource to so-called "professionals" on the creative side, paying thousands if not tens of thousands of dollars, and then, end up with trademarks that end up getting challenged on the legal for any number of reasons. So watch out for this trap.

I'm not trying to dissuade you from outsourcing the creative element. In fact, I can assist you with the creative process as well. However, I think you need to proceed with caution and understand the possible downsides if you do outsource. 

Remember, most outsourced creatives are developing a brand name from a creative perspective, and cannot necessarily help you from a legal perspective or help you watch out for legal traps. Beware!

I also don't want you to think a creative team or focused groups are required. They are NOT.  {Creative “teams” and focus groups are NOT necessary!}

"Focus Groups"

I particularly want to caution you against "focus groups." Focus groups are not supposed to make decisions for you.  

While there are a lot of good reasons to utilize focus groups, trademark creation is not necessarily one of them. You can't "focus group" names generally because creativity is hard to test, and even harder to quantify.

Plus, focus groups might not be familiar with your brand. Keep this in mind.

You cannot use scientific analysis to find great art. And, analogously, that's what you are doing when you utilize a focus group in brand name creation!

Another problem with focus groups is that participants would be asked about possible brand names devoid of context. Participants need to know the big picture. Because, remember, brand names are living vessels that collect all of the interactions, experience, and news for your brand. 

Attempting to isolate the name as a variable is unnatural and foreign. 

It's very similar to selecting a name for your new baby. You're bound to get looks of disapproval from the in-laws no matter what, "Don't you think you should maybe consider a...familyyyy name....?"

Again, when it comes to trademark creation, focus groups are discouraged, and creative teams are totally optional….

And, you should consider if a creative "team" makes sense for your naming project.

But, do not get discouraged if you cannot get a team together. 

Be ready willing and able to roll solo. 

Remember, the answers to pretty much everything are usually found within.

Ready to work with me on brand name creation, protection and enforcement? Do you need help with legal compliance for your private label business? I'm here to help you! Apply today!

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I'm Talking to you, Moon unit! Why Your Brand Name Could be MORE Important than Your Kid’s Name!

Creating a GREAT Brand Name for your product or service is MORE Important Than Naming Your Kid!

Indeed, naming your children is important! (Perhaps that's why people with names like Rocket Flare, Binge McDingleton, and Felonious Dorcus are legally changing their names at a record rate with as little as “$50 and a few clicks” in the UK!)

Even Americans are jumping on board to get the name they want and getting rid of the name they were given.  

Listen, if you ended up with a name like Moon Unit or Cocaine Spider, you can at least right your parent's wrong by picking out a fantastic brand name for your product or service!

Of course, the pain of change is just one of several reasons you’ll want to select a strong trademark for your product or services at the outset. If you've already gone down the road of trademark creation, and encountered some problem areas (e.g., a cease and desist letter or a merely descriptive refusal with the USPTO), take what you've learned from that experience, and focus on creating a strong, viable trademark that will benefit your business for the long term going forward.

What it boils down to is the fact that consumers’ purchasing decisions are influenced by trademarks. There is no way around this. If you end up spending weeks on selecting your products, you'll need to spend weeks on creating your trademark. Please do not gloss over the oh-so important trademark creation process. 

Trademark selection is just as important as product selection, especially if you intend to stick around for a while.

{Fly-by-night fidget spinner factory or fad-of-the-month club? If you're just looking to make a quick buck, you can stop reading now.}

 Your brand is your reputation. Your trademark sings your reputation.

Are you ready for some tough love? Here are three reasons why your brand name is more important than your kid’s name:

#1: Your Trademark Can Increase in Value

Unlike your children, who might decide to become “Magic Powers” or “Steve Smith” once they are adults, it’s essential to your business that your trademark withstands the test of time. Yes...well beyond the lives of Magic Powers or Steve Smith.

Bunn, Coca Cola, Stella Artois ~ these are beautiful brand names that have increased in value over time, and long outlived their owners' founders. You can do this, too, but probably not with a name like "Super Smashy Garlic Press." {Actually, that one's not too bad...} 

If you’re savvy, your trademark will be worked into every aspect of your product and brand. Additionally, as long as you keep using it, and as long as you maintain the registration properly, you can expect that trademark to long outlive the life of any of your tangible products.

A good trademark can be passed down through generations, as it is an asset.

Think “Kellogg's” — at one point, that was just someone’s last name! Oh my. Cereal and packaging have evolved. The first generation those products were marketing to now likely have youngsters or grandchildren of their own.

But guess what?

That brand name has grown in value over time.

And you, too, should create a brand name that has the potential to grow in equity over time. Do you really think that "Super Smashy Garlic Press" for garlic presses will be a trademark that grows in value? Mmm, probably not.

You are reading this information because you want to learn, and you want to learn how to make more money for your business. Your trademark can grow in value, and it's an asset that can be sold or licensed.

Think outside the box when it comes to monetizing your trademark. And just stick around with me for a while, you'll ultimately learn how.

If you suddenly realize that your trademark isn’t going to cut it for the long haul, for whatever reason, you will most likely have to go through the whole process of creating a new brand name and filing a new trademark application. Not the end of the world, and you might end up with an even better trademark. 

{Make sure you listen to Episode 11 of my Podcast Trademarks Made Easy if you think you might have to go through a name change. I keep it real!}

However, having to go through a name change will not be an overnight task. Remember, even if there are no hangups in the trademark application process with the USPTO, you should expect it to take about six to eight months to obtain a new trademark.  

Don't be afraid of selecting a new trademark if you must. Be afraid ~ much more afraid ~ of the Sunk Cost Fallacy:

“The sunk cost effect is the general tendency for people to continue an endeavor, or continue consuming or pursuing an option, if they’ve invested time or money or some resource in it,” says Christopher Olivola, an assistant professor of marketing at Carnegie Mellon’s Tepper School of Business. “That effect becomes a fallacy if it’s pushing you to do things that are making you unhappy or worse off.”

Simply put, decisions can be tainted by the accumulation of monetary and emotional investments, and the more you invest in something the harder it becomes to abandon it.

All decisions face uncertainty about the future. And when you lose something permanently, it hurts. The drive to mitigate this negative emotion leads to strange behaviors. For example, continuing to market under a brand name that you know you cannot really build value in because the trademark is actually descriptive, and weak.

Please do not become a victim of the Sunk Cost Fallacy. If you need a new trademark, take this challenge as an opportunity to engage and communicate with your customers. Make sure they know your brand name is evolving and only getting better, and that you'll still have the same amazing quality products. Perhaps you could even involve people in a naming contest or poll to increase engagement.

Hopefully, your business and your brand-spankin' new trademark will both be around much longer than they have been already. And you will likely have far more customers in the future than you have had in the past. If you end up having to change that brand name, do it sooner rather than later.  

#2: Trademarks are Valuable (Ahem, $$$$)

Okay, whether or not your business is more valuable than your child remains open for debate. However, your trademark itself, that little nugget that sings your brand, is more valuable than your kid’s name. (Unless, of course, your kid’s name is Blue Ivey Carter.)

A primary reason that choosing a strong trademark when starting your business is so important is that your brand name itself holds value.

In fact, the right trademark matched with products or services that fit well into a market can make a fortune for your business.

And remember what I said earlier...don't forget about possible monetization of your trademark!

The leading valuable brands — not the company value, but just the value of the brand — are worth billions of dollars. To give some examples: Amazon is valued at $150.8 billion, Apple at $146.3 billion, Google at $120.9 billion, Samsung at $92.3 billion, and Facebook at $89.7 billion. Those numbers make my head spin.

Understanding the value of your trademark has a lot to do with your interactions with consumers and creating what is considered “goodwill.” The goodwill generated by your company appreciates with time as the positive reputation of your business grows, also making your trademark more valuable along the way.

Why is that? Consumers are more willing to pay a premium for a product (like a wetsuit by the company Quiksilver) than they are for the exact same product (like a wetsuit without the Quiksilver trademark) because they trust the brand Quicksilver. Plus their logo is really cute.

By not choosing the right trademark from the start, you’re setting yourself up to lose a lot of value down the line, either through unrealized growth or from cutting losses and starting over with your brand.

#3: Trademarks Tell Consumers WhassUp

Your trademark, your brand name, communicates what your company brand is all about to consumers. 

It tells the consumers if you’re a wild, adrenaline-rush of a brand that thinks doing five backflips on a pogo stick off a cliff and landing it is worthwhile (hello, Red Bull).

Or, it can communicate if you’re a sophisticated brand for those moments in life where elegance, power, luxury, and history are essential (think Tiffany & Co). These are both so different, but so so great in their own unique way!

What is communicated, when done right, can go beyond your initial product. John Deere is basically a tractor company, but they also have branded themselves as a farmers’ lifestyle company. The brand represents more than tractors; it represents a dream of what America was, is, and can be. Because of that, people wear John Deere hats, shirts, and buy other products with the iconic yellow and green John Deere logos on them to communicate their alliance with these brand traits. {Are you not imagining a waving American flag, in front of a wheat field and a green tractor rolling by, with God Bless The USA in the background?}

Grab my Trademark Quickstart Bundle for a fun exercise!

Choosing the right trademark can give you the ability to grow beyond your original product and represent more than just a really pretty piece of jewelry.

Final Thoughts: Top 3 Reasons Your Brand Name is More Important than Your Kid’s Name

The bottom line is that you have to take the time to get your trademark right. And it's better to get it right the first time if you can. If you messed up, it's okay. I can help you. Avoid the Sunk Cost Fallacy and stop digging yourself deeper. Remember, it's more expensive to have to be reactive than proactive.

The value of your trademark and its ability to communicate your brand in the market is essential for you to grow your brand presence and maximize your profits. Additionally, the costs of either struggling forward with a lousy trademark or switching your trademark, later on, can hurt you in the long-term.

If you think you've glossed over this all-too-often overlooked step, go back to the drawing board sooner rather than later. You don't want to put this off.

Ready to create your own trademark for your business or service? Check out the Trademark Trailblazer: The Brand Name Creation Blueprint

Rather us do it for you? Apply to work with us today!

You got this, Abcde, but we can help! 



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Brain Tattoos & Our Emotional Attachment to Brands

According to a study published in the Journal of Consumer Psychology, brand attachment is a type of emotional bond that binds the consumer to particular brands.

The authors of the study found that the public exhibits devotion to certain trademarks (or brand names) when they perform the following emotional actions:

  •    Go out of their way to own a brand
  •    Make an effort to protect a specific brand
  •    Tell others they feel passionate about or connected to the brand

In listing its 25 Most Popular Brand Stories of 2018, Adweek found that “in 2018 brands were on a mission to connect with people more than ever.”

Emotional branding allows you to create relationships in which your customers turn into your cheerleaders.

This means that you need to establish invisible lines between your brand and the consumer’s mind and heart.

You do this with your trademark!

So, how can you create a trademark that forges an emotional bond?

In addition to assisting you with a trademark clearance search and trademark filing ~ even before you get to those stages ~ we can help you create your trademark with our Trademark Trailblazer: The Brand Name Creation Blueprint

The purpose of the blueprint is to formulate a vision for your brand. It is a process of brainstorming brand names to carefully determine which ones strike an emotional chord ~ those strings which tether your intended customers to your brand ~ along with removing brand names that we know will not be good from a marketing perspective, as well as a legal perspective.

Marketing guru, Seth Godin, defines BRAND in his book, “This is Marketing: You Can’t Be Seen Until You Learn to See” as follows:

A brand is shorthand for the customer’s expectations. What promise do they think you’re making? What do they expect when they buy from you, or meet with you or hire you?

A trademark, therefore, must convey a strong message ~ right away.

The message must be positive and, if anything, memorable and smile-inducing! Your brand is the song; your trademark is the singer. It delivers the message. And that message better be good.

Because people have emotional reactions to specific brands, it is essential for people to like what they see as soon as they see it. And it is equally crucial that potential customers understand what you are promising, so that they know what to expect.

Let's talk about brand names that give you the “feels.”

Remember, a trademark is a crucial element that provides consistency to the visibility of your brand. Always lead with your trademark. Your trademark sings your brand! {Think about just how impressionable a song can be. Have you heard a song that you "just can't get out of your head"? We lovingly call these addictive tunes "earworms." You want to create the same impression with that trademark!}

That's why selecting a strong, distinctive brand name is so dang important! 

A trademark is the impression that stays with the consumer, and, therefore, it must pack a unique punch. It is crucial that the brand name ~ and perhaps also the accompanying design logo ~ be protected by becoming registered with the USPTO, of course.

It's imperative that you legally set up a brand and trademark for legacy.

While tangible products rust away, your trademark will last forever.

Finding the nexus of creating a great trademark from both the legal and the marketing perspectives can be challenging, to say the least. Instead of having it done by two separate entities (ie, a naming agency AND a law firm), if you haven't already selected your trademark, our Two-Week Trademark program is a perfect fit for your needs!

Selecting a strong brand name and performing a trademark clearance search (ensuring the viability of the trademark from a legal perspective), will ensure that an emotional connection with your customer endures well beyond the life of your tangible products!

Remember, we are here to help!

Grab the Trademark Quickstart for my Free Brand Name Creation Workbook!

Want us to do the work for you? Apply here!



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3 Tips Competitors Use For Their Online Brand Protection Strategy

With over 5 million sellers...

The fierce competition between online retailers on Amazon can be really stifling and overwhelming. This is not to mention the vicious counterfeiting practices by copycats and other pirates from the underworld who want to rip off the goodwill and reputation of your business name.

Is it even possible to distinguish yourself from the thousands of voices of Amazon sellers in the same category or to even protect your products and sales from being slavishly ripped off by online scammers?

The short and simple answer is yes!

Did you know that there are 310 million estimated active customers on Amazon. This figure represents a large market that could potentially bring huge profits to a recognized seller who knows his target audience within the pool and how to attract them to his products.

Here are your free tips for pulling it off...

To create a genuine, long-lasting brand, one of the first steps is to perform extensive and intensive research on the Amazon marketplace.

What you should be researching?

  • Target audience: Information on purchasing habits of people who are  readily interested in your category of product listings, potential customers and new leads on Amazon, social media pages and email listings.
  • Preferred features: What do customers prefer about your product listings. Research shows that 90% of Amazon consumers would not purchase items with less than a three star rating. There would also be shipping preferences, fulfillment preferences, etc.
  • Competitors: Study the branding, colors, fonts, logos, selling points, special features, and offers of existing brands and top sellers.  The information you glean from competitor research will help you know what is, perhaps, too trendy.  Chart a path on how you can be distinct from your competitors.
  • Your Brand: Here, you pen down the abstracts of what you want to achieve. Consider the product branding you want to create.  What colors, logo, fonts, and features on Amazon are best adaptable to your products?

Create a Brand Strategy!

Branding on Amazon can be an easy job if you have concrete plans. Having completed your research, you can begin to chart your course to create a classic brand. There is literally no big brand today without a brand strategy (think Coke's “One Brand”).

Your brand strategy should be fully fleshed out and thorough, which will form the groundwork for your brand identity. Elements you should include in your product branding strategy:

  •    Brand voice
  •    Brand style
  •    Colors
  •    Logo
  •    Tagline
  •    Fonts/Typography
  •    Brand messaging architecture
  •    Product listing style guide (your method of naming and listing new products)
  •    Picture quality
  •    Special offers on products
  •    Shipping policies (especially if you are not an FBA subscriber)
  •    TOS on return and replacement of products

And of course, your trademark.

Keep in mind that your trademark is just one element of your overall brand strategy!

The end product of your strategy should be a Creative Brief. Then you are set to engage the visual elements to bring alive the brand you have created. Visual elements will include the words you use in describing your products, taglines and so on.

Create and Implement a Proactive Brand Protection Plan!

Four days before it launched the iPhone, Apple began its applications to patent its designs. This is the reason they were awarded up to $539 million in damages for infringement by Samsung.

Lesson? You do not wait for your products to be counterfeited or ripped off before you protect your brand. Be proactive when comes to the protection of your intellectual property.

I promise, while it might seem expensive now, being proactive is much less expensive than being reactive. Plus, you'll sleep better at night!

You might not have anything eligible for patent protection, but you certainly have a brand name you'll want to protect via trademark registration, and beautiful one of a kind products you'll want to protect via copyright registration..

Bonus Tip:  Pay attention to SEO and Reviews on your Product Listings!

FeedbackExpress reports that there are 1,761,784 sellers have Amazon product listings as of 2017, and 1,029,528 have joined in 2018. A huge number. How do you get visibility above other sellers to get the attention of an estimated 1. 79 billion users (Statista, 2018) who use online search engines to find products (Adeptmind reports 46.7% of U.S. searches on Amazon and 34.6% on Google)? The answer is simple – Search Engine Optimization. Engaging SEO on your product listings, specifications, social media pages, and blogs will significantly increase your brand publicity.

FeedbackExpress also reports that 9,644,400 seller feedback reviews are left monthly on all Amazon marketplaces and as pointed out earlier, 90% of customers would not purchase a product with less than 3-star ratings. Hence, your customer reviews are essential to generating new leads for your products and establishing a top class brand.

Product branding on Amazon requires focus, research, strategy and overall protection.

However, with the right guide, you can get it right. Grow and protect your brand today!

Apply to work with Suzi!

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The Principal and the Supplemental Registers ~ Why Amazon Sellers MUST Be Aware of the Difference!

The Federal Trademark Register is made up of two separate registers—and they are not created equal.

The Principal Register is just that—the principal, primary list of trademarks with the fullest federal protection.  

The Supplemental Register, on the other hand, is the second string, reserved for trademarks that couldn’t quite make the cut for the Principal. Let’s just call them the benchwarmers. Generally, this register is the home to trademarks that would be considered "merely descriptive" of the underlying goods and/or services associated with the trademark. 

So, what exactly is the difference?

Principal Register

The Principal Register is what all trademark owners are after. Once listed as the owner of a trademark on the Principal Register, you are legally presumed to be the exclusive owner of that trademark within the United States. This register also gives you full rights to the trademark in a court of law, should you need to pursue an infringer.

You can use the fancy ® by your mark as indicia of registration, and apply for incontestability after five years of use. How cool is that?

Trademarks that are unique, distinctive, and not merely descriptive of goods and services are typically eligible for registration on the Principal Register. {You do NOT want a trademark that is merely descriptive of your goods or services. But not to worry. We can help you!}

Currently, only trademarks on the Principal Register are eligible for Amazon’s Brand Registry enrollment program. So, if you think simply moving an applied-for trademark to the Supplemental Register because you’ve been issued a “descriptiveness refusal,” BEWARE!

 Supplemental Register

The Supplemental Register, while generally seen as less powerful than its counterpart, still offers some protection. Trademark owners on the Supplemental Register can use the ® symbol (woohoo!), and the trademark may be used as a basis for refusal for subsequently-filed confusingly similar trademark applications.

Unfortunately, a trademark on the Supplemental can never achieve incontestability.

And please, keep in mind, as mentioned previously, trademarks on the Supplemental Register are NOT currently eligible for Amazon’s Brand Registry program.

Still, further, you cannot record a trademark that is on the Supplemental Register with US Customs. So, think twice before simply amending your trademark application to the Supplemental Register if you received a mere descriptiveness refusal. A trademark attorney {like yours truly} may be able to assist you in developing legal arguments to overcome such a refusal!

The bright side? Descriptive marks can actually achieve “acquired distinctiveness” after five years of use in commerce. 

Some trademarks may wait out this sentence with a thin layer of protection on the Supplemental Register. In short, they can just hang out on the bench while the distinctiveness hopefully improves over five years of use in commerce.

 

So, how can you avoid being bumped to the Supplemental Register?

First, choose a strong trademark at the outset!  {We can help you through your trademark creation process!}

Now, while it’s better to create a strong trademark at the outset, if you do end up with an arguably descriptive mark, instead of just moving the trademark to the Supplemental Register ~ which is what is often suggested in an Office Action from the USPTO ~ you may want to consider trying to prepare arguments to overcome the descriptiveness refusal.

Convincing the Examining Attorney that your trademark should be considered for Principal Register enrollment is certainly within the realm of possibility, but formulating extensive legal arguments does not necessarily mean a slam dunk.

Key takeaways:

  1. Create a strong mark at the outset. The Trademark Trailblazer: The Brand Name Creation Blueprint, will guide you through the land mines of trademark creation ~ and will teach you how to avoid the legal traps, like ending up with a trademark that is weak and subject to a merely descriptive refusal.
  2. Beware of simply amending a trademark application to the Supplemental Register. {You may think it's an easy fix, but you might be surprised. There may be unintended consequences....}
  3. Even if your trademark ends up on the Supplemental Register for a while, don’t lose sight of the fact that you are building a brand, and not an Amazon business!

Second-string is better than not even being on the field!!!  

Do you need help creating a trademark that's unique, distinctiveness and will not be subject to a mere descriptiveness refusal? Apply to work with us and ask about our Black Diamond Service!

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We Ain't Afraid of No Ghosts ~ Is Your Trademark Vulnerable

 

The U.S. Patent and Trademark Office (USPTO) continues to grace us with clarity on what constitutes a “phantom” trademark—and the effect is only slightly less scary than the Stay Puft Marshmallow Man. The Trademark Manual of Examining Procedure (“TMEP” or the “Trademark Bible”) states that a phantom element is “a word, alpha-numeric designation, or other component that is subject to change” as part of a mark. The most common examples include a date, a location, or a model number that is subject to change.

Generally, a trademark that contains a changeable characteristic is refused registration because the mark is, in essence, multiple marks. Logically, this makes sense—it isn’t fair to all you trademark warriors out there fighting to register a single word mark or design.

However, the USPTO does allow certain marks with phantom elements to register “if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) [likelihood of confusion] search.” Clearly, this leaves room for interpretation. (And that, my friends, demonstrates why attorneys exist.)

If you are considering whether to include one of these poltergeist elements in your mark, or have been issued a phantom mark refusal, who ya gonna call (I’m sorry, I had to)?  

The following tips attempt to help you be the Dr. Peter Venkman of phantom trademark refusals (again, I had to):

  • Of course, the safest option is to choose a mark with no phantom elements. Choose a mark that represents your brand, but does so without needing amending or changing.
  • If you really, really need that changeable element, make sure that the phantom element is readily identifiable from the context of the mark. The TTAB recently denied registration to a company trying to register the marks “NP***” and “SL***: where the asterisks were variable number combinations. The Board found that “[b]ecause the marks’ possible range of meanings is not readily clear from the context…Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations.” The Board held that the missing numbers could potentially represent numbers in a series of products, different versions of the product, or some other physical characteristic. If it is unclear from the unchanging portion of your trademark what the phantom element refers to, that is a red flag for a phantom trademark refusal.
  • Be sure that the changeable element is limited in the scope of possibilities. In the famous case In re Dial-A-Mattress Operating Corp., the Applicant attempted to register a three number phantom sequence in a phone number. The court held that because the possibilities of number sequences were finitely and manageably limited, the phantom sequence was registerable. (Not to mention that what the phantom element represented was readily identifiable from the context of the mark).
  • Don’t claim the phantom element as a part of the mark. For design marks, the phantom element cannot be integral to the mark. In June 2017, a trademark Applicant sought to register a design of the U of Miami ibis mascot wearing a hat and a blank sweater. The Examining Attorney alleged that the sweater “operates as a blank slate for whatever additional elements the applicant, in its sole discretion, sees fit to include.” Applicant stated that he sometimes placed “University of Miami,” “Miami,” or “U of Miami” (among a few others) on the sweater; and he argued that like Dial-A-Mattress, the combinations of what to put on the sweater were limited.  The TTAB held that the test for a phantom design element is whether or not the changeable element of the design is “integral to the Applicant’s mark;” and found that the wording put on the sweater was not. Because Applicant did not apply to register a series of marks; because the letterings on the specimens were not generic, but rather “independent indicators of source;” and because Applicant did not claim rights to those literal elements, the Board found that Applicant did not seek to register a phantom, or multiple, marks.

So, if you have a design mark and you want to add a star for every year you’ve been sober, little chick feet for every Grammy you win, or leave a portion of the design blank to put an initial or monogram, then you will likely be in the clear (as long as the design itself can stand on its own as distinct).

  • Avoid mark mutilation. It sounds brutal, I know, and the TTAB views it as such. Mark mutilation occurs when a portion of the composite mark is “severed” and the applicant attempts to register only that severed portion. For example, the Examining Attorney in Miami claimed that the Applicant had mutilated the ibis (yikes) by severing the accompanying logo and stripes on the sweater and attempting to register the mark without it. The TTAB disagreed and pointed to several examples of marks allowed to register without some portion of the specimen, including a monster truck design without the accompanying JURASSIC ATTACK logo that appeared in the specimen submitted.

The key is to determine whether your mark, aside from the changeable element, has a distinct commercial impression on its own. The Board held that the ibis did.

As we all know, these analyses are highly subjective and up to the discretion of the Examiner. However, including these ghost-busting tools in your arsenal can greatly reduce the possibility of a phantom refusal.

By Suzan Hixon and Bethany Gaal Patty

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Amazon’s latest weapon in the Battle Against Counterfeiters is its Transparency Program

Amazon’s latest weapon in the Battle Against Counterfeiters is its Transparency Program (“Transparency”).

Transparency allows manufacturers and brand owners to place “Transparency Codes,” which look similar to QR codes, on their products and packaging. Consumers can scan these codes and access data about the product’s origin, including manufacturing location and date.

Program participants have the option of providing even more data to validate the authenticity of their products, such as indicating specific ingredients or materials used.

The consumer experience is essentially seamless—purchasers can either scan the codes with their mobile Amazon app or through the downloadable Transparency app. Upon scanning, the information about your product immediately pops up.

While the intent of this program is to help alleviate the pain of China-based counterfeits, there may be some heavy lifting involved on your end, as the brand owner. Depending on your products, you’ll need to keep the information that is consumer-facing (and accessed via the QR scan) up to date.

According to Amazon, the benefits of the Transparency program go far beyond counterfeit prevention. Participants in the Transparency program also claim to have higher quality product reviews, diminished concerns about unauthorized sellers, and increased consumer trust with their brands.

As all good things, however, Transparency comes at a price. As of right now, manufacturers will be charged per scan, depending on how many products the manufacturer has enrolled in Transparency. Amazon may offer a free term for brand owners, but this will be done on a case-by-case basis. Also, there may be price breaks for larger quantities of scans.

For manufacturers and brand owners battling with hijackers and counterfeiters, this relatively new program is likely a vital weapon to add to the arsenal! You do need to have your trademark registered for Transparency enrollment!

Ready to get that trademark registered that you’ve been putting off? Let’s get the ball rolling.

Are you ready to proactively protect your brand on Amazon and save yourself tens of thousands of dollars from potential lost sales? Let's talk!

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How to Handle Amazon Counterfeiters

Helping Your Brands...Boom!!!

Wouldn’t you love to watch your business boom on the Amazon platform? Did you know that there are over two million sellers on Amazon.  Two million sure sounds like a lot, but that number pales in comparison to the over ONE BILLION items sold on this platform worldwide.

I bet you had no idea that Amazon traffic hovers at around 175 million visitors a month!!!!

So what does this mean for your business?  Amazon has literally transformed itself into an eCommerce, king-sized flea market.  And within this market, you must proactively protect your brands to ensure your business succeeds!   

As an Amazon seller, you must stay alert and vigilant!!! Don’t allow your products to be eaten by counterfeit predators or drown in the murky waters of the gray market!

Why is it essential to stay alert as your products are being sold online?

We all have that one friend who brags about the Gucci purse purchased for only $10.00.  This is exactly what can happen to your product if you are an Amazon seller or are thinking about joining this giant eCommerce platform.  

Do you want your customers to receive a cheap counterfeit version of your product that could tarnish the reputation of your brand and company? Do you want your products to be leaked out into the public through unauthorized distribution channels where they trickle down into the murky waters of the gray market?

Don’t let this happen to your cherished brand. So let’s be proactive and look just a little closer at how to spot suspicious activity on your Amazon listing when it comes to counterfeits and the gray market.     

Exactly what is a counterfeit good and how can I spot suspicious activity?

A counterfeit good is simply an imitation made by a third party (other than the trademark owner) with the intent to deceptively represent its content or origins to consumers. All counterfeits are trademark infringements, but not all trademark infringements are counterfeit. (In other words, there are various types of trademark infringement; counterfeit is just one of them!)  

What are you dealing with? Look at the seller name and location. If it appears to be China-based, you are likely dealing with straight-up egregious counterfeit activity and your brand is at risk of being devoured by these eCommerce predators.

If you have a registered trademark (you should!), you could consider recording your trademark with US Customs. This is just another step in your brand protection arsenal.

 

Exactly what are gray market goods and how can I recognize them?

The “gray market” can be thought of as a large body of water: it's the dark place where the unauthorized distribution of your products occurs.

Perhaps retail arbitrageurs have obtained your products at a liquidation sale. These products might not be eligible for the manufacturer’s warranty. They might be priced considerably lower than the MSRP, thereby damaging your brand value. Still further, gray market products are often not eligible for rebate benefits offered by the manufacturer or post-purchase customer service.

Unfortunately, for brand owners and manufacturers, gray market goods end up on the Amazon platform and often times Amazon’s customers are duped into purchasing from these sellers. Although they might think they are getting a deal, there is no guarantee that the manufacturer will honor any type of warranty.

Gray market goods aren’t technically counterfeits. However, oftentimes arguments can be formulated that will force these types of sellers into a counterfeit seller position when there is a material difference noted in the products.  

If the seller appears to be US-based, you are likely dealing with a situation where the seller has somehow obtained your goods through the gray market (i.e, unauthorized distribution channels). Again, these are typically retail-arbitrageurs that have the power to drown the value of your brand in these murky gray market waters if you aren’t on the lookout.

 

How can I enforce my brand OFF of the Amazon Platform if I become prey to counterfeit predators or gray market sharks? In other words, do I have to go through the platform to deal with these third parties?

 

Try Dealing with the seller directly:  When a counterfeit seller is recognized, this should be addressed immediately. You might want to deal with the seller directly by sending “notices of infringement” or "cease and desist letter." Such correspondence puts the third party on notice, and gives the third party an opportunity to remove themselves.

Also, you can frame the letter as an exploratory letter, not being too aggressive, in order to learn more about what they are selling and where they are procuring the product. Should you discover that a distributor is breaching your agreement with them, you may need to revisit the agreement and determine if how to get out of it.

 

Send out a cease and desist Letters: First, you'll need to find out where the third party is located. You might need to do some supers-sleuthing and/or outsource this work to someone who can help you investigate.  

If the seller is located in China, it’s unlikely your demand letter will carry much weight because they know it’s difficult to enforce rights in China. While Amazon might help, you could consider hiring a law firm in China to help you.  

If the seller is located in the US, you might want to have an attorney prepare the demand letter for you to ensure the appropriate language is used. If you investigate the seller, however, and realize it might be someone you know, or a distributor breaching your distribution contract, you might want to see what you can work out before getting attorneys involved, and see if you cannot repair the issue going forward.

*TIP*

Consider going off the Amazon platform for enforcement, if your trademark isn’t registered yet with the USPTO, but you’ve established common law rights.

 

How can I enforce my brand ON the Amazon Platform if I become prey to counterfeit predators or gray market sharks?

Keep in mind, the longer these sharks remain on your listings, the more money you are losing.  

If you know they are a nefarious seller and/or China-based and clearly a counterfeiter and/or have had prior unsuccessful dealings in the past (with the seller directly), it’s time to consider reporting directly to Amazon. When you go directly to Amazon, use their online infringement reporting forms and save your "Complaint IDs" that are emailed to you after reporting.

If you have to submit multiple demands to Amazon, include these in the letters as Prior Complaint IDs.

If the third party is selling a counterfeit product, make sure you clearly outline the material difference in your goods and the third-party seller's products. Materially different goods are not considered “genuine,” because they are confusingly different.

Courts define “material difference” broadly: it is virtually any difference that exists between the authorized goods and unauthorized goods that a consumer would likely consider relevant when purchasing the product. Still further, “…[the unauthorized resale of a materially different trademarked product can constitute trademark infringement. Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir. 1009), at 1072.

Courts have found that the voiding of services and warranties associated with a product create a material difference in the product and a likelihood of confusion. Keep in mind that not all courts agree, and the law does evolve. so, be sure to discuss with an attorney your particular situation and ramifications.

Examples of material difference for China-based goods are commonly as follows: quality, size/dimension, logo distortions. And for gray market activity, the lack of a manufacturer’s warranty, post-purchase customer service, and rebates would be considered.

*TIP*

When trying to remove these third parties using the Amazon platform, don’t mention the fact that the seller is “unauthorized.” This seems to confuse Amazon. Stay on point that you are dealing with a counterfeiter. (Amazon doesn’t care about unauthorized seller issues and considers that you as the seller should address this off the platform; in other words, the platform isn’t going to help you enforce those agreements.)

 

Are test buys feasible?

When test buys are feasible, be sure to provide the order numbers, submit the demand to Amazon immediately, and tell Amazon you’ll provide photographs of differences of products upon request. (I’ve never had Amazon come back and ask me for photos).

If test buys are not feasible ~ perhaps because the counterfeit is coming straight from China ~ argue to Amazon that the seller is shipping products from countries in which you do not manufacture or distribute your brand.

Amazon allegedly requires test buys, but a vast majority of counterfeit seller removals can be done without test buys. The requirement isn't the "test buy." Amazon wants to confirm that there is a material difference if they are going to be removing a third party seller on that basis.

If doing a test buy isn’t feasible, then submit the counterfeit seller removal demand anyway and explain to Amazon the material differences. If Amazon doesn’t honor the demand, you might need to escalate to a law firm. Amazon might be more responsive to correspondence from law firms.

 

How can I be proactive in the protection of my brand name? 

  • Register Your Trademark to Protect Your Business! {Apply to work with our firm here.} File your trademark application sooner rather than later. Get the ball rolling, because it can take at least six to eight months before you have the Registration Certificate in hand, and that’s assuming a smooth application process. There is an examination process with trademarks when you file an application with the USPTO: you aren’t granted protection just because you file an application. Amazon is very resistant to enforcing non-registered IP rights. In fact, Amazon generally takes the position that it's not there to help you enforce your rights; however, it will remove counterfeit sellers in the interest of protecting consumers. Hence, you might have to do your enforcement OFF the platform using your common law rights and send demand letters directly to counterfeiters. Registering your trademark is the most effective way to protect your brand so that it can grow over time.

 

  • Consider filing your trademark application in the EU, because it moves a lot faster than in the US. (You can file in the US first, and then file in the EU.)

 

  • Consider other international platforms where you are selling ~ like Canada, Mexico, and the UK. If you are selling on these international platforms on Amazon, you need to register your trademark in the relevant jurisdiction.

 

  • Tightly control your channels of distribution from the outset. Or, go back and revisit your distribution agreements are tight and address eCommerce distribution. Make sure your distributors remain compliant. We are living in a new world with eCommerce, and these agreements need to be revised and closely monitored going forward.

 

  • Keep on top of Amazon and the new tools it might roll out to help brand owners, such as Brand Registry, Transparency, and Project Zero. Amazon is a constantly changing platform. Stay educated and involved! Once your trademark is registered with the USPTO, you will be eligible to register your mark on Amazon’s Brand Registry 2.0. This registry allows you to have more control over your product pages and brand name, so customers are more likely to see the correct information associated with your brand. In order to qualify your product for Amazon’s Brand Registry, you must have the following:
    • Brand name that has an active registered trademark.
    • The associated government-registered trademark number. Only trademarks that have been issued by government trademark offices in the US, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom and the European Union will be accepted.
  • Record your trademark with US Customs.

 

Ensuring success on the Amazon platform requires you to be 100% alert and proactive.  Brand protection is a never-ending endeavor. There will always be counterfeit predators and gray market sharks making an effort to devour the equity you're working hard to build in your brand.  

You must always be proactive in warding off these relentless nuisances so that you can preserve and increase the value of your brand.

The tools and methods to protect and enforce your brand on Amazon are ever-evolving!

If you need assistance with trademark creation, clearance, prosecution, enforcement and/or registration maintenance, we are here to help! Apply to work with us today!

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Just 4 Quick Steps

Every day I see entrepreneurs make crucial mistakes that cost them money and put their business at risk. I’ll show you how to protect yourself in this quick guide.