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Responsibilities of the Trademark Coordinator

The responsibilities of the trademark coordinator can include: Liaison with outside IP counsel regarding administrative matters. Presenting substantive incidents to the trademark manager and company legal for decision and response. Coordinating decisions on payment of trademark renewals. Managing and ensuring proper trademark usage, marking, and notice requirements. Managing trademark and domain name watching and reporting violations […]

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Trademark & Domain Name Database

The trademark coordinator and/or outside IP counsel can maintain an internal database of company trademarks and domain names. The database can include: Records of trademark searches and opinions Applications for trademark registrations Registered trademarks and correspondence Domain name registrations Relevant correspondence

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Trademarks & Domain Name Monitoring

Part of the value of trademarks and service marks comes from their exclusivity and the fact that others cannot use confusingly similar marks on related goods or services. In order to preserve these rights, it’s important to monitor the activities of others to make sure the marks they use are suitably differentiated. This can be […]

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Review Use of Third Party Trademarks

It is important to properly use these marks properly and give appropriate acknowledgement of ownership. The owner of the trademark may have additional requirements – be sure to review their policies for use of their marks if available (generally published on a webpage). For further recomendations, see the materials within the guidlines of this section.

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Review Use of Comparative Advertising

Examples of comparative advertising include: Product or service characteristics Value Performance Consumer preference Market share Sales origin Availability The comparison must be a fair and factual comparison of similar properties, features, ingredients, benefits or performance between one product or service and one or more other products or services. An advertisement must not create an unsupportable […]

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Clearance & Use of Company Trademark

Clearance Timing is important. Trademark or domain name clearance should be undertaken as early as possible prior to use of the mark. This means before marketing material is printed (or designed) and before the mark is incorporated into product designs. There are two primary scenarios where clearance can be necessary: When a product is in development which […]

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Trademark & Domain Name Registration/Protection

All strategic trademarks and domain names should be registered in all jurisdictions they are used in. To avoid poaching of company trademarks in foreign jurisdictions, any such registrations should be initiated prior to use of the mark or domain name in any respective jurisdiction. The basic procedure for registration of trademarks include the following steps, which […]

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Domain Name Selection

Trademarks always take precedence when selecting a domain name and if a domain name is in conflict with a trademark, the owner of the trademark will normally be able to acquire ownership of the domain name. The primary goals of domain name selection are: Selection of a domain name that is protected by a defensible trademark […]

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Trademark Selection

All trademarks used by a company should take into consideration a selection and clearance process in accordance with the guidelines related to this section.  These guidelines are designed to ensure that the trademarks selected or adopted by a company can be used free of infringement, registered, and enforced in all jurisdictions of importance. Critical elements of trademark selection and clearance include: Selection […]

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