A question from new clients arises often. They ask me: what does the process of filing a trademark consist of? Briefly, I will lay out the process we use here at the Roe Law Firm.

First, you must determine whether you need to register a trademark or a copyright. Please refer to the article I previously wrote regarding the differences between trademark vs copyright.

Second, you should have a consultation with a qualified trademark attorney specializing in intellectual property. He should have a discussion with you regarding the nature of your business and the nature of the intellectual property, which you wish to protect. He should also discuss with you an overall comprehensive IP strategy, including trademark surveillance and enforcement. Your attorney should discuss with you the costs of a trademark filing. Our straight forward / nothing's hidden pricing is available for you.

Third, your trademark attorney will perform an extensive search for potentially conflicting trademarks, whether in or outside of your industry or geographic area. International searches are not necessary unless the trademark filing is part of a comprehensive global IP strategy. Global searches can be performed upon request.

Fourth, if a conflicting...

There appears to be rumors floating around stating that the musical group Rammstein has recently won a trademark infringement case against Apocalyptica (a musical group that does orchestral versions of heavy metal songs). Rumors said that the heavy metal band from Helsinki, Apocalyptica, has been ordered to pay Rammstein 45,000 EUR. Despite these rumors that Rammstein won a trademark infringement case against Apocalyptica for using the Rammstein name in advertising and promotional materials, the following statement was released by Apocayptica:

"The article's headline is substantially wrong: neither the band Apocalyptica nor their management are or were involved in the described lawsuit. However, the parties involved are the band Rammstein and Sony Music Entertainment GmbH, as the successor of the by now-defunct affiliated label GUN Records.

Apocalyptica and Halbe Miete Management have issued statements that they regret the events, but neither had any influence on a violation of trademark and naming rights, nor any part in whatsoever resulting agreements.

It is correct that GUN Records published advertisements with the stated endorsement disregarding existing agreements, and the band Rammstein subsequently filed a lawsuit against...

I received an interesting comment from a reader on an article I recently wrote called, âHow does a poor economy effect trademark and copyright?â In that article I stated that trademark filings go up in poor economic times because setting oneself apart from their competition is more important in a competitive market. Also, there is good data that show that companies who implement a comprehensive IP (trademark & copyright) strategy see an increase in revenue.

However, the reader asserted that in poor economic times brand loyalty is less important because people are going to purchase more economically prices goods and that they will be less likely to pay more for brand loyalty. The reader also posited the argument that because there are essentially two separate classes of consumer, things like product counterfeiting have little to no actual economic impact. The reader uses the example of the individual how buys a Rolex for $50. The purchaser knows itâs not a real Rolex, and likely would not purchase a real Rolex; therefore, there is little to no dilution / tarnishing / loss of sales on Rolex.

Respectfully, I must disagree with this reader. The readerâs argument does not consider the impact of global counterfeiting on everyday...

A client asked me an interesting question the other day; how has the poor economy affected trademark and copyright filings in the last few years?

First, trademark filings go up. The number of trademark filings has been on the rise in recent years, indicating that companies are taking a proactive approach to brand protection in an effort to solidify their brand name and better compete in an increasingly competitive market.

Second, the amount of trademark counterfeiting and infringement go up. In a survey performed in 1998 (encompassing worldwide trade in athletic clothing and footwear and the effect on that industry from trademark infringement and counterfeiting) it discovered that companies participating in the survey lost an average of 22% of their total sales, or $2.0 billion in 1995 as a result of trademark infringement and counterfeiting.

This survey found that companies who were the victims of trademark infringement and counterfeiting lost revenue from both a loss in per-capita sales and a loss in market share.Consequently, we ask the question: how do we better protect companies in economically uncertain times? The two statistical trends above appear together for a reason. The only way to access the federal court system and...

I recently read a trade article regarding the correlation, if any, between trademark registration and protection and an increase in revenue. This particular article focused on virtual worlds and massive multiplayer online gaming (MMO).

This is a market that grew from $2.0 billion in 2009 to $2.6 billion in 2010. After subjecting their data to an independent study it indicated that between the period of 2005 through 2009 there was a sharp increase in the trademark filings for virtual goods, virtual currency and virtual worlds and that those with trademarks covering core virtual brand aspects (i.e., signs, logos, icons or symbols that consumers know them for) show a higher than average revenue per user.

This is particularly true in places like the United States where consumers are more willing to pay for virtual goods, so in these places trademark protection appears to have a more significant impact than in other markets where consumers may not be willing to pay as much.

In conclusion, the study found that those companies with a trademark strategy who operate in this competitive market (that only appears to be becoming more competitive) are best positioned to distinguish from their competition and profit from their brands in the...

You have received a cease and desist letter alleging that you are infringing on anotherâs trademark. What do you do?

As I have said before, the first thing you do is go to see an experienced trademark attorney who has experience with litigation. First your attorney will explain to you that they can only stop your use of the mark with a court order and to get this they must prove two things.

1) They must convince a judge that they have suffered or will suffer, irreparable damage without an immediate court order barring your continued use of the mark; and 2) then must convince a judge that they will likely win in court and that they have superior rights to the mark (this is another reason why registering your trademark is so important).

Next, your attorney will find out as much as they can regarding the complaining party and their use and registration of the mark in question. Only after consulting with your attorney should you make a tactical response to the cease and desist letter. There are several ways in which to respond.

First, you do nothing. You are convinced that they have no case and therefore, you simply donât respond. In my opinion this is not a favorable option as you risk them filing a lawsuit just to get your...

What is a trademark attorney? As the name suggests, this is a licensed attorney who specializes in trademark law. First and foremost, this requires a specialized knowledge of federal, state and frequently foreign and international treaty law relating to trademarks. This is an extremely specialized area of law that a relatively small number of practitioners specialize in. While this is a specific area of law, there are some distinctions that can be made of the attorneys practicing in this area.

For example, some trademark attorneys handle only transactions (meaning they will only do work relating to pre-application advice, the filing of an application and provide licensing advice). Other trademark attorneys handle only litigation (meaning they will only do work relating to trademark infringement, enforcement actions and other adversarial proceedings).

Years ago, when I first started practicing law, intellectual property or IP as it is regularly referred, was not my only practice area. I commonly handled business transactions for clients (giving me a good sense of the true needs of a business). However, I also regularly litigated cases, to the conclusion of a jury trial if necessary.

Many years ago when I transitioned my practice to...