Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Entries in TM (3)


Google Penguin 2.0 / Keyword TM Infringement

Google is always looking for ways to improve its search results and to prevent others from gaming their algorithms. 

To that end, Google deployed its new SEO guidelines.  If you are involved with SEO, you should check out Google's video on where they are going with their algorithms (i.e. Penguin 2.0):


Now bringing this back to trademarks...

Webmasters should not use another's trademark as a keyword or metatag on their own website.  Imagine coke.com should not be using "Pepsi" as its keyword.  Using another's trademark, might be an act of infringement and could lead to liability for trademark infringement.  A third party's complaint might injure your legitimate page rank in Google.

If you notice a competitor using your trademark (registered or unregistered), the competitor is probably committing trademark infringement.  If you have a registered trademark, you can submit a complaint to Google and have the offending site removed.  If you do not have a registered trademark, you can enforce your common-law trademark rights judicially.


Trademark Watch Service--No Fee through June 2013

Trademark watch services are the most underutilized service by trademark owners.

A trademark watch service monitors a database for similar trademarks and sends a notice to the search owner.  Trademark owners can use trademark watch services to monitor when a third-party files a similar trademark.  Applicants who receive early notice are often less invested in their trademark and are more willing to adopt a different mark.  Trademark owners can use trademark watch services to detect when a similar trademark application is published for opposition.  The trademark owner can be assured to file an opposition within the thirty-day window.  Trademark owners can use watch services to monitor foreign filings.  Watch services even can be configured to monitor domain name registers, corporate name registers, and state trademark registers.

Watch services are hired on an anual basis and start as low as $240 per year.

To encourage the adoption of watch services, I will charge my existing customers no fee, just the cost, for a trademark watch service through the end of June, 2013.

Do not be a trademark owner who says, "I wish I knew sooner about that infringer."  Hire a watch service.


Assignment of Trademarks Adds Email Confirmation

The Electronic Trademark Assignment System (ETAS) office of the United States Patent and Trademark Office (USPTO) announced several improvement including email confirmation of recordation.  Formerly, confirmations were sent via facsimile.

A Trademark Assignment is a contract that transfers ownership of a trademark.  Assignments should be recorded to provide notice to future buyers.

A trademark is intellectual property that may be transferred or sold. The law permits the transfer or sale of a trademark by means of a legal document called an Assignment. A properly executed assignment transfers all rights from the existing owner to another person (referred to as the Assignee). When the trademark is transferred, the Assignee becomes the new owner of the trademark and has the same rights as the original owner. The the U.S. Patent and Trademark Office (USPTO) records all assignment documents and any document that affects title. Documents that affect title include, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions. 

So, ETAS will record the following types of documents:

  • Assignment of the entire interest and the goodwill
  • Assignment of an undivided part of assignor's interest
  • Merger
  • Nunc Pro Tunc Assignment
  • Change Of Name
  • Security Interest
  • Corrective Assignment
  • Mortgage
  • Lien
  • License
  • Option

Recording a transfer gives notice to all future purchases of the owner's interest.

Having a contract for the sale and never recording it, may lead to the seller being able to transfer the property to third parties.

Trademark and Patent owners as well as attorneys should request a consultation with Loren Donald Pearson to have their client's assignments, licenses, and security interests properly recorded.