trademark Archives | Law Office of Kelly Weiner PLLC

Legal issues brands should consider when collaborating with other brands

Collaboration can be a fun way to increase the value of your brand. You can expose your brand to an entirely new market or territory, strengthen your existing brand awareness, or create additional revenue streams. Who doesn’t think that Doritos Locos Tacos is the most amazing option on the Taco Bell menu? Target’s Missoni line generated a shopping frenzy. Its collaborations with Lilly Pulitzer, Altazurra, Phillip Lim, Prabal Gurung, Zac Posen, Jean Paul Gaultier, and Alexander McQueen make it a...

Pitching: When numbers aren’t enough.

By Kelly Weiner

The intersection of financials, brand identity, and intellectual property. You know how to run the numbers, but what is your company’s story? Does your pitch deck convey who you really are? Do you really know your company’s brand and it’s value as a company asset? Do you understand your intellectual property assets? Do you have the language to talk about these issues at length? Unless your numbers truly speak for themselves, you need every tool at your disposal for communicating...

Manufacturing in China? Simple, proactive steps that you can take to protect your brand.

By Kelly Weiner

Outsourcing manufacturing to China can be a good strategy for reducing overhead. This is particularly true for low profit margin products. Most of us are aware of the country’s reputation for flooding the market with knock off products. We typically associate knock offs with large, well known, international brands. A Chinese individual registered the name of teen idol Justin Bieber. Another took the name and logo of the popular computer game Angry Birds. The Facebook trademark has been registered for...

LegalZoom

By Kelly Weiner

As a trademark attorney, I’ve received my fair share of cries for help from business owners who filed applications through trademark filing services to reduce their startup costs. LegalZoom and Trademarkia are two well-known companies in the industry. They sound like a great deal. The companies charge a fraction of what an attorney would cost. However, these companies are not law firms and they do not provide legal advice. I recently exchanged emails with yet another victim. She is a...

Trademark Office Issues Decision to Cancel Registrations for REDSKINS Marks

By Kelly Weiner

After a long battle, the US Patent and Trademark Office has issued a decision to cancel trademark registrations used in connection with the Washington Redskins football franchise (Pro-Football, Inc., doing business as The Washington Redskins) that consist in whole or in part of the term REDSKINS. DECISION HERE. The trademark office found that the registrations must be cancelled because they are disparaging to Native Americans. The request to cancel the trademarks was made by five individuals back in August 2006. ...

What makes a great brand? A legal perspective.

By Kelly Weiner

According to Brandchannel.com (Interbrand), great brands share the following principal attributes: (1) a compelling idea; (2) a resolute core purpose; and (3) a central organized principle.[1] What else do Interbrand’s top 100 brands of 2013 share [2]? Nearly every brand incorporates a strong source-identifying trademark. US trademark law evaluates the strength of a trademark along the following continuum (from weakest rights to strongest rights): generic, descriptive, suggestive, arbitrary, and fanciful. What is a generic term? Office Supply Store when used in...

Pinterest’s Trademark Application Opposed in the European Union

By Kelly Weiner

A cautionary tale for US businesses that currently offer products or services in the European Union or intend to do so in the near future. In 2012, Pinterest, Inc. filed a trademark application in the European Union (a CTM application) for its trademark PINTEREST. Premium Interest filed an application for PINTEREST only 10 days earlier. Pinterest opposed Premium Interest’s application. Premium Interest opposed Pinterest’s application. Pinterest’s opposition against Premium Interest’s application was rejected. Pinterest has appealed this decision and action...

Defining the Scope of your Goods/Services – Class Headings

By Kelly Weiner

Unlike many other trademark offices, the US trademark office does not permit the use of class headings to identify the goods or services in a registration. A common filing strategy for applicants (particularly foreign applicants and other applicants that rely on foreign registrations as the basis for registration in the US) is to include the class headings in an initial application, with the intention of later narrowing the scope of the goods or services at a later time. In a...