Categories

Recent Posts

The Importance of a Trademark Search

Florida trademark lawyer, intellectual property

Guest contributor: Monica Mason, Trenam Law

A trademark is a name, word or logo used to indicate the source of a product or service. While a “trademark” technically refers to a brand used on goods and products (e.g., coffee, sneakers, jewelry), a “service mark” refers to a brand used in connection with services (e.g., restaurant services, insurance services, accounting services). Almost every company imaginable has a trademark or service mark – either the name of the company advertised to the public or the name of its product.

Prior to using or advertising a new brand in connection with a business or product, it is critical to have a trademark attorney conduct thorough trademark searches to clear the potential trademark for use and registration. It is necessary for a business owner to know whether there are risks to the company’s use and registration of the proposed trademark. When first selecting a trademark, a business owner should conduct an Internet search or use the free search engine located on the United States Patent and Trademark Office website – Trademark Electronic Search System (TESS) – to discern whether the proposed mark is unique or widely used.

Generally, there are two levels of trademark searches recommended: first, a preliminary “knock-out” search is conducted to determine if an identical mark has already been applied for or registered with the United States Patent and Trademark Office or with any state trademark office. This first and very important step helps determine the potential availability and registrability of a proposed trademark, and can easily determine whether a proposed mark is worth pursuing or should be eliminated from consideration due to conflicting marks. The preliminary search, however, is limited in scope as many companies do not register their trademarks; thus, there could be additional and extensive use of the same or similar marks at common law.

If no conflicts are found in the preliminary search, the next step is to conduct a more thorough, due diligence trademark search. A comprehensive trademark search helps determine any further risks associated with the use and registration of the mark, including possible infringement risks, and reviews the extent of non-registered use of the mark around the country. This second level of searching involves a trademark attorney ordering and analyzing a detailed report from a specialized commercial search firm. The comprehensive search gathers information from a variety of sources including federal trademark/service mark applications and registrations in the United States Patent and Trademark Office, available state registrations, and also searches an extensive database of trade names, trade directories, corporate filings, international filings, registered domain names, Internet usage, telephone books, and other non-registration sources. These searches can also search design and logo components, phonetic equivalents, and other variations of a proposed trademark. Although a comprehensive trademark search offers a more thorough discovery of potential conflicts and risks involved with the use and registration of the potential trademark, it is not exhaustive.

Once the trademark has been cleared, a trademark owner should protect its trademark by filing an application to register the mark with the United States Patent and Trademark Office, with state trademark offices (e.g., Florida), and/or foreign countries, as appropriate.

Although U.S. trademark law does not require that trademark searches be conducted prior to using and/or applying to register a trademark, trademark searches are important because courts have held that the failure to conduct a trademark search prior to adopting a mark can constitute evidence of bad faith and/or willful infringement. Conducting a thorough trademark search and using a trademark attorney can help negate a charge of bad faith in a trademark infringement lawsuit.

While conducting trademark searches is not mandatory under trademark law, the searches can uncover substantial risks of which a business owner would otherwise be unaware, and save the company substantial expense, time, and headaches down the road.

 

Florida intellectual property lawyerMonica Mason is Senior Counsel at Trenam Law, one of Tampa Bay’s largest law firms. Monica practices in the firm’s Business Transaction Practice Group, focusing primarily on intellectual property law including trademarks, copyrights and domain names. Monica has vast experience with all aspects of trademark law, including trademark clearance and prosecution, cease and desist matters, and licensing. She represents clients in connection with sales and acquisition of trademarks, unfair competition, brand strategy, trademark watching and policing, and managing large trademark portfolios. She also assists clients in connection with copyright and domain name matters. Monica was recognized as the Tampa Trademark Law Lawyer of the Year in 2014 by The Best Lawyers in America.® 

 

 

Tampa Bay public relations

Kris Solberg Wins Pinstripe Service Excellence Award

Pinstripe Service Excellence Award, Ad 2 Tampa Bay, young professional of the yearAd 2 Tampa Bay‘s immediate past president, Kris Solberg, received the 2015 Pinstripe Service Excellence Award at the American Advertising Federation – Tampa Bay Chapter’s ADDY Awards held on February 18 at The Cuban Club. Presented annually by past recipients, the award recognizes the young professional who demonstrates the most outstanding contributions to Ad 2 Tampa Bay, the advertising industry, and the community.

Solberg joined Ad 2 while he was a student at University of South Florida and immediately became involved in the education committee and mentorship program. He later took a leadership role as co-Public Service Director, managing the organization’s pro bono advertising campaign for a local non-profit, which ultimately won the 2011 National Ad 2 Public Service Competition. As president for the 2014-15 year, the chapter earned District and National Club of the Year, the National Ad 2 Public Service Competition, and he was recognized as Ad 2 President of the Year. He currently serves on the National Ad 2 board of directors as Treasurer and is a mentor to Ad 2 Orlando.

“Kris has demonstrated his passion and commitment to Ad 2 in a very short amount of time,” said Ginger Reichl, president of Pinstripe Marketing and former Ad 2 president. “One nomination stated, ‘I can only hope that each year we gain another Kris Solberg for the community.’ I couldn’t agree more. He has been instrumental to the success of the chapter and will play an important role in grooming future leaders.”

Solberg is Account Director at Social Forces in Tampa.

PICTURED: Vinny Tafuro (’05), Jeff Morrow (’06), Kris Solberg (’15), and Mike Compton (’10).

 

About Ad 2 Tampa Bay

Ad 2 Tampa Bay, Inc., an affiliate of the American Advertising Federation, is a non-profit organization of advertising professionals under the age of 32.  As a eleven-time National Ad 2 Club of the Year, the organization takes pride in providing both members and the community with quality educational programs, national award-winning public service campaigns, professional interaction, member employment services, fun-filled social events and much more. For more information, please visit www.ad2tampabay.org.

 

Ginger’s interview with the American Advertising Federation – Tampa Bay

Ginger Reichl interview with the American Advertising Federation - Tampa Bay
Ginger Reichl has been a member of the American Advertising Federation for more than 23 years – from the Ad Club and National Student Advertising Competition at Florida State to president of Ad 2 Tampa Bay and a variety of chair positions with the 4th District and local AAF chapter.

In this interview with AAF Tampa Bay, she provides insight into Pinstripe’s humble beginnings, our favorite project, the best of what St. Petersburg has to offer, and a bit of advice to professionals joining the industry.

See the full interview on the American Advertising Federation – Tampa Bay web site.

If you’re interested in learning more about the organization and becoming a member, we’d love to have you!

 

Pinstripe Bookshelf: The Perfect Pitch

bookshelf_news
I’ve been invited to pitch for hundreds of pieces of business over the course of my career, and I’ve been fortunate to win a significant percentage of them. Our clients know that we don’t go into meetings with PowerPoint presentations or slick handouts – we’ve all suffered enough with death by PowerPoint.* According to Jon Steel, author of The Perfect Pitch: The Art of Selling Ideas and Winning New Business, we’re doing something right, but I know we can always get better. That’s why I picked up this book and discovered more than a few new insights to boost our new business efforts.

perfectpitchAlthough written from the perspective of a strategic planner pitching new business in the advertising industry, the content is relevant for anyone charged with selling ideas and landing new clients. In the professional services realm, one can imagine what new business pitches look like – the parade of suits promising a commitment to client service, full-service capabilities, unmatched experience… all hiding behind a projector, screen and a stack of “leave behinds.” Sound familiar?

Perfect Pitch is not a call to end PowerPoint presentations, but a manual on how to understand your audience and present ideas in a compelling, persuasive fashion. There are dozens of useful nuggets and commentary throughout the book – things to do as well as what not to do.

One of the resounding themes throughout the book rang familiar. My very first pitch for Pinstripe was a soon-to-be-fast-growing software company and I was fortunate to end up on the short list against one of the largest and well-known agencies in Tampa Bay. After a few meetings and submitting a proposal, I won the account which helped get the agency off the ground and was the beginning of a long, rewarding relationship. In that meeting where the CEO officially hired us, she asked if I wanted to know why they picked us. I was so stunned that I didn’t know what to say, but she responded, “you were the only one who behaved as if our business was important to you.”

It was then and it is now.

Order The Perfect Pitch from Amazon

* In 2006, Wall Street Journal estimated 30 million PowerPoint presentations are given every day around the world. We’ve seen the backlash over the last nine years, so we can hope it has gone down since then. Unfortunately, it has probably become worse.

INBOUND 2015 – one of the biggest and best marketing conferences

inbound_news
INBOUND features inspiring keynotes, innovative talks, educational breakout sessions, hands-on lessons and tons of networking. Join us (and 10,000+ new friends) in Boston from September 8th through the 11th to get inspired by Seth Godin, Daniel Pink, Brene Brown, and dozens more, including comedians Aziz Ansari and Amy Schumer.

The event includes more than 170 education sessions (if only we could be cloned!) designed to help us master our skills in:

  • designing content strategies
  • creative storytelling
  • personalizing modular content
  • building collaborative teams
  • nurturing inbound leads
  • tapping into big data
  • aligning sales and marketing
  • discovering client insights
  • using research to drive strategies
  • driving client engagement
  • unleashing better creative
  • developing successful video strategies
  • crafting compelling email campaigns
  • leveraging LinkedIn groups
  • generating traffic from Facebook
  • measuring online activities with Google Analytics
  • building relationships with the media
  • creating world-class company culture
  • adopting new marketing technology
  • forecasting customer activities
  • the art of social selling
  • hosting badass events
  • with more sessions being added daily!

We are so excited about participating in this conference and are working on scheduling a breakfast or happy hour with friends and colleagues from across the country while we’re there. Let us know if you’ll be attending and we’ll add you to the list!

Register for INBOUND 2015!