Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Should I Register My Trademark in Color?

Should I Register My Trademark in Color?

In most (if not almost all) cases, no.

Unless a trademark’s color or color scheme has itself acquired trademark meaning in that the color identifies the source of the goods or services, brand owners should seek U.S. trademark registration for their trademarks in black and white.

Under U.S. trademark law, a registered trademark in black and white receives legal protection for all color combinations and color schemes, including the actual color scheme in use as of the filing date of the trademark application.  Benefits of a black and white trademark registration are that it provides the most flexibility for future modifications to a trademark’s color and color scheme and broad enforcement against third party marks that are arguably confusingly similar in sight, sound and/or meaning yet depicted in a different color scheme (a color scheme legally covered by a black and white registration).

Accordingly, when brand owners register their marks in color, when the color itself has not achieved trademark status, they are narrowing and limiting their trademark rights unnecessarily.

However, once a mark’s color or color scheme has achieved acquired distinctiveness, meaning consumers perceive a color or color scheme itself as indicating the source of the goods or services – brand owners should consider seeking trademark registration for the specific color or color scheme. 

Examples of federal trademark registrations claiming colors based upon their source identifying significance include the following:

[Pink for insulation]

[Purple and orange combination for delivery services]

[Blue, red, yellow and green for internet search engine and email services]

Trademark registrations protecting specific colors that have acquired trademark status can provide an additional layer of protection.  For example, if third parties adopted the following names for their services, how do you think Google and FedEx would react?



Although the words FedEx and GlobalExpress and Google and Email+ are not confusingly similar, obviously the colors schemes of the marks are the same and thus consumers may arguably believe that the services rendered by these other third parties originate, or are associated, with FedEx and Google based upon the selected color schemes in their marks. 

Until a brand owner’s colors and color schemes reach the level of trademark recognition, securing trademark registration in black and white is the practical strategy and one that will offer the strongest and broadest legal protection. 

Other Important Considerations

Standard Character Marks – For Word Marks Without Artwork

In addition to seeking registrations in black and white, brand owners should also seek registration for, what is known as, a standard character mark to obtain even stronger protection.  For example, a company that uses the mark Acme should seek registration for the mark as a “standard character mark” – shown below (assuming the color purple and/or the stylized font have not acquired secondary meaning):


A registration issued for ACME (standard characters and in black and white) would provide legal protection for the term in all fonts and formats and in all color schemes, including the following:



Why limit your legal protection and branding flexibility?

International Filings

Certain countries may not provide broad legal protection for black and white and block letter trademark registrations.  Meaning that if the mark is used in the marketplace with a color scheme, certain country laws may not recognize a black and white registration as legally covering the mark and its color as used in the marketplace.  Therefore, as brand owners expand their trademark rights and registrations internationally, they must take note of other country laws and seek trademark registration accordingly, which may require color mark registrations for certain countries.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband, and a father of an amazing 13-year-old son.

©arry a Big Stick: Advantages of Copyright Registration

©arry a Big Stick: Advantages of Copyright Registration

Securing U.S. copyright registration for works that are integral to your business is a good business and intellectual property strategy – especially for works that give your business a competitive advantage. 

Those works may include teaching guides and manuals for learning and instructional centers, product catalogs (which include text and images), newly developed games, trademark logos, songs, lyrics, valuable photographs, jewelry, puppets and marionettes; yes, even puppets and marionettes may be registered with the U.S. Copyright Office.

To be eligible for copyright protection, however, a work must be fixed in a tangible medium, be original to the creator and comprise protectable expression (i.e., something more than simply stating an idea or fact).

Important Note: If the work was commissioned from a third-party vendor (i.e., individual artist or brand agency), the party seeking copyright registration must ensure that title to the copyright has been transferred, since under copyright law, the general rule is that the author of the work (may be the brand agency if created by an employee) is the owner of the copyright, unless assigned or it qualifies as a work made for hire.

Tip: Check your agreements with vendors to see if the works were assigned.

Another Important Note: Copyrights are created the moment works are affixed in a tangible medium; a registration is not necessary.

However, registration still provides extremely valuable rights, some of which are listed below:

Another excuse to use my SF photos

• It’s an inexpensive “big stick!” ($35 / $55 government application fee)
• May entitle copyright owners to attorneys’ fees and statutory awards 
• Provides immediate access to the courts — a/k/a “clear sailing!”
• Provides leverage in settlement discussions for infringement
• Can add value to the company’s assets


What copyrights do not protect

It’s also important to understand what copyrights “do not protect.” The following are not eligible for copyright protection:

• Facts
• Ideas, principles, concepts, discoveries
• Words, short phrases and basic symbols
• Works not fixed in a tangible medium
• Works created by the U.S. government

The below example demonstrates the value of a registration for a key company asset when its owner needs to enforce its copyrights.

Earlier this year I received a call from a business owner who discovered that one of the company’s three-dimensional designs had been copied and sold at retail. Luckily for the company, a copyright registration was secured for the three-dimensional design back in the 1980’s. When we compared the parties’ works and presented compelling arguments and images that depicted the products in a side-by-side view, it was undeniable that the works were substantially similar and the other party had “copied” the design.

The result was a relatively quick settlement negotiation with opposing counsel.

Note/Disclaimer: This outcome does not guarantee similar outcomes in other cases.

Due to the ease at which one can secure copyright registration (go to if you have good title to the work) and its low cost, copyright registration protection is an obvious business and intellectual property strategy for protecting valuable copyright-eligible works.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

United States Trademark Registration and Protection: Five Potentially “Fatal” Mistakes Made by U.S. and Foreign Brand Owners

United States Trademark Registration and Protection: 

Five Potentially Fatal Mistakes Made by U.S. and Foreign Brand Owners

Seeking United States trademark registration protection is full of traps for the unwary, not only for pro se applicants but also for attorneys that step outside of their every-day specialties. This post focuses on five trademark traps (and there are many others) that U.S. and foreign brand owners make when seeking U.S. trademark registration and protection.

U.S. Patent and Trademark Office Campus

1. United States is not a “first-to-file” country. Because many foreign trademark applicants are domiciled in countries that grant exclusive trademark rights to those that file and register first, they fail to understand that trademark rights in the United States are created based upon trademark use rather than federal trademark registration. Thus, even if there are no pending trademark applications or registrations on the United States Patent and Trademark Office (“USPTO”) database for the same or similar mark that does not mean that a trademark is available for use and registration.


  • In 2008, Company A begins using the mark APEX in San Francisco for insurance services and begins expanding into neighboring states.
  • Company A does not seek federal trademark registration.
  • In 2011, Company B begins using the mark APEX in NYC for insurance services and secures a U.S. trademark registration for its mark and services.
  • Although Company B is the first to file a trademark application with the USPTO for the mark APEX, Company A may still object to the filed application for APEX via an opposition proceeding or seek cancellation of a resulting registration, within a certain period of time, on the basis of priority of use rights.

It is well established that the first company to use a mark in the U.S. (on a systematic and continuous basis) has priority not only with respect to use of the subject mark for the associated, and related, goods/services (in the geographic regions within which the mark is used) but also with respect to federal trademark registration.

For that reason, it is imperative that companies undertake a comprehensive trademark search not only for marks on the USPTO database but also for common law trademarks (those in use but not federally registered) as well as business names to ensure that the proposed mark is available.

Failure to undertake such review is risky and may result in thousands, if not hundreds of thousands, of dollars in litigation costs and re-branding efforts.

Read more about how trademark rights are created here.

2. Lack of bona fides (navigating this slippery slope). Under U.S. trademark law, brand owners may file U.S. trademark applications either before or after their marks launch. If they file before brand launch, they must have a bona fide intent to use the applied-for mark for the listed goods/services in U.S. commerce as of the trademark application filing date.

We Understand That Getting From Point A to Point B is Not Always a Straight Line

U.S.-based (and foreign) applicants may file, what is known as, an intent-to-use (a/k/a 1(b)) trademark application prior to brand launch; however, they must ultimately use the mark in U.S. commerce before a registration will issue.

Unlike U.S.-based applicants, however, foreign applicants may secure U.S. trademark registration without using the mark in the U.S. prior to registration issuance under Section 44(e) (based upon a foreign registration) and Section 66(a) (based upon a foreign registration and filed via the Madrid Protocol).  Those filing basis still require foreign applicants to have a bona fide intent to use the applied-for mark in U.S. commerce for the listed goods/services.

Lack of a bona fide intent to use a mark for the goods/services listed in an application (i.e., lack of a written plan to use the mark for the goods/services or actions taken to bring the mark/brand to market) renders an application and resulting registration vulnerable to attack by third parties on the basis the applicant lacked the pre-requisite “bona fide intent to use” the mark in the U.S.

This is problematic for many foreign applicants because many rely upon their home country trademark registration(s) for securing U.S. trademark registration, which may list goods and/or services of which they never intend to sell under the applied-for mark, which is permissible under their own country trademark law. 

For those reasons, U.S. and foreign applicants should list only those goods/services in their U.S. trademark applications that they intend to sell in U.S. commerce or run the risk of third party challenges and losing valuable trademark rights.

To read more about lack of bona fides, read my blog post here.

3. Trademark use is required to maintain registrations. As mentioned above, foreign applicants may secure U.S. trademark registration without having used an applied-for mark in U.S. commerce prior to registration. At a certain point, however, the foreign registrant must show use of a registered mark in the U.S. in order to maintain its registration.

During the fifth and sixth year of registration, and at the tenth-year anniversary and every ten years thereafter, a trademark registrant must provide evidence of use of the mark, as registered, in the United States for the goods/services listed in the registration.  Failure to show valid use of the registered mark in the U.S. during those periods will result in the cancellation of a registration by the USPTO.  Note that even slight changes to the manner in which the mark is used may render the registration invalid (i.e., using the registered mark APEX as “APEX PLUS”).

Failure to use a registered mark in a manner acceptable to the USPTO may result in application abandonment or registration cancellation.  Furthermore, a mark not used during a consecutive three-year period post registration is vulnerable to cancellation on the basis of non-use.

For more information about acceptable specimens of use, read my blog post here.

4.  “I searched the USPTO trademark database and my name is available because a “competitor” abandoned its trademark registration for the same mark”

Unfortunately, it’s not that simple.  Trademark rights in the U.S. are not

Things are not always what they seem

created based on trademark registration; they are based on actual use.  Therefore, if the owner of the now cancelled trademark registration is still using the once-registered mark, that continued use would trump the “new-comer’s” use and even a “new-comer’s” issued trademark registration.

Don’t get caught in this trademark trap…trust me.

5. “I secured my “Business Name LLC” with the state, so I own the name and trademark”

Although you have successfully registered “Business Name LLC” with state “x” … that does not give you any legal right to use that name and corresponding trademark in consumer-facing marketing and business activities if that name infringes existing third-party business name and/or trademark rights.

States typically review names to ensure that they are “distinguishable on the record” from other registered business names for the purpose of identifying a specific entity from another, not whether the names are “confusingly similar” (a/k/a infringing). 

The only way to know if a selected name is available for use and registration is to conduct initial trademark and business name clearance.

You can read more about trademark clearance here.  


Intellectual property law (patents, copyrights, trademarks, trade secrets) is filled with traps for the unwary; and in many cases IP attorneys specialize in one of those areas only.  Just as you would hire a heart surgeon for your heart surgery, hire a “trademark attorney” for your trademarks and not “an attorney that does trademarks” because, as I have said before, there is a difference and it could mean the difference between life and death for your brand launch…  


Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

How to Protect Trademarks Internationally: Part Three of a Three-Part Series

How to Protect Trademarks Internationally:

Part Three of a Three-Part Series

If you have not read parts one and/or two, I recommend that you do so here   (Part 1) and here (Part 2) before reading this post.

Part 3: International Trademark Filing Strategies and Critical Post Registration Requirements

Once brand owners have identified their core marks and products, selected the primary countries of interest, identified which of those countries are members of the Madrid Protocol and European Union, as well as any other country pacts for filing strategy, such as Benelux (covering Belgium, Luxembourg and Netherland), African Intellectual Property Organization and African Regional Intellectual Property Organization, with each covering certain African countries, and undertaken proper trademark clearance in the relevant countries, they are ready to formalize their trademark application filing strategy.

As a first step, brand owners should undertake a cost estimate review for the selected countries and marks.  The brand owner is then ready to prioritize the primary countries and marks based upon its annual budget.  As discussed in Post 1, the filing strategy may consist of a one to three year (or more) “rolling” filing strategy depending upon budget and, as discussed in Post 2, you may spread out the filing costs during the six-month priority period provided by the Paris Convention.  

I. International Trademark Filing Strategy – Example

Selected countries of interest:

  • Brazil, Canada, China, Columbia, France, Germany, India, Mexico, Norway, Panama, Poland, Spain, Sweden, Switzerland, U.K., and all of the EU member states if economical

How should the company proceed with trademark protection?  Should the company use the Madrid Protocol? European Union trademark filing? Or national filings? Or possibly all three?

The company should first consider the risks with respect to utilizing the Madrid Protocol and European Union trademark filing systems with the primary risks being those discussed in Post 2.  If the risks are low, the next step is to determine the Madrid Protocol and European Union member countries and the countries requiring national filings.

Madrid Protocol member countries/jurisdictions (based on my example):

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., and the EUTM (covers all 28 EU member countries)

EU Member countries (based on my example):

  • France, Germany, Poland, Spain, Sweden and U.K.

Non-member countries requiring national filings:

  • Brazil, Canada, Panama

A few important considerations:

  • Brexit. With the U.K. possibly exiting from the EU, it is absolutely prudent to also file a national U.K. trademark application if a EUTM application is filed in lieu of national EU country filings.
  • China. Although China is a member of the Madrid Protocol, it’s strongly recommended that China not be designated via Madrid application due to the short time period within which a trademark applicant must respond to an office action.  Instead of designating China via the Madrid Protocol, companies should instead file national applications via local counsel.
  • EUTM. If the company is confident that its mark is eligible for registration in all EU member counties (no major potential third party objections or non-distinctiveness issues), or is willing to take the risk in exchange for securing broad trademark protection, the company may elect not to file national EU member country applications (e.g., France, Germany, Poland, Spain, Sweden and U.K.) in exchange for protection in all 28 EU member countries via the European Union trademark, which may be filed via the Madrid Protocol application.
  • Madrid Protocol and EUTM vs. national filing cost comparisons:            
    • Madrid Protocol vs. national filings (for Madrid Protocol member countries) can provide substantial savings.                   
    • In some cases, those savings can be over 40%!
  • EUTM vs. individual EU member national trademark applications:        
    • Average national filings per country: ~$1700 (assuming there are no obstacles to registration and might only cover one class of goods/services for that cost).
    • EUTM for ALL 28 countries: ~$3500! (assuming there are no obstacles to registration and may cover up to three classes of goods/services for that cost).

Potential Strategy:

File Madrid Protocol application for:

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., EUTM

Requirement: a brand owner must own either a pending home country trademark application(s) and/or registration(s) that would form the basis for the Madrid application.

National trademark applications for:

  • Brazil, Canada, China, Panama

Paris Convention:  If Paris Convention priority is available, the brand owner may opt to file the Madrid application first then file the national applications over several months to spread out the filing costs. 

As you can see, there are many filing considerations and options for seeking global trademark registration protection.  Rather than aimlessly filing global trademark applications on a “hit-or-miss” basis, brand owners should first create a well-crafted strategy, one that minimizes risks and costs while maximizing protection, and then execute that strategy while always maintaining flexibility for change, when necessary.

II. Critical Post-Registration Requirements

Once brand owners secure trademark registration protection for their marks and products, there are certain actions they must take to ensure that their rights remain active and enforceable, including the following:

  1. Use: If registered marks are not used for the registered products for three consecutive years post registration (five in some countries), their registrations become vulnerable to cancellation by third parties for non-use.
  1. Proper Use: Using marks improperly may render them generic terms with all trademark rights being lost.  Did you know that aspirin, escalator and yoyo were all once trademarked terms?  Did you know that the mark Google® is being challenged as being a generic term for searching the Internet?  “You won’t google that! You’ll search the Internet via Google® search engine for that.”  That issue is another post…at another time.
  1. Trademark Licenses: Some countries require trademark registrants to record trademark licenses with their Trademark Offices if registered marks are licensed to third parties for use in their countries.  Failure to record a trademark license in those countries renders a trademark’s registration vulnerable to cancellation for non-use, since absent the recordal, the mark is deemed not in use by the trademark owner. 
  1. Maintenance: After registrations issue, their owners must make periodic maintenance filings and pay periodic maintenance fees to maintain active and enforceable trademark registrations. Failure to make those filings will result in the cancellation of issued registrations, resulting in the loss of trademark rights.

III. Closing

To summarize, trademark owners must recognize that trademark rights are country specific, there are first to file countries and first to use countries, and trademark registrations are essentially government issued licenses for the right to import and export branded products and conduct business in a country.

Companies should audit their trademark portfolio annually and prioritize their trademarks, products and countries of interest.  Companies should also actively manage their portfolio and implement protocols for trademark clearance and enforcement strategies and – most importantly- develop an overall focused strategy that takes into consideration the budget while minimizing risks and maximizing protection.

Brand owners that fail to implement a coherent and consistent global trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection for key brands and products in key markets, have not minimized business and infringement risks and consistently run over budget.

IV. Your Assignment and Action Items

  • Undertake a cost estimate review for your primary country filings;
  • Prioritize the primary countries and marks further based upon the estimated costs for registration vs. the annual budget;
  • Prepare a one to three year (or more) “rolling” filing strategy, if necessary; and
  • Review the strategy every six months or year and remain flexible.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

Trademark Titan Blog’s Tuesday Tip: Three Steps for Creating a Brand Name Powerhouse Using a “Family of Marks”

Three Steps for Creating a Brand Name Powerhouse Using a “Family of Marks”

Trademark owners that use a number of marks that share a common prefix or suffix have an opportunity to establish what is known as a “family of marks.” For example, a brand owner that uses six different marks that share the prefix “SENSE” (i.e., SenseGloss, SensePlus, SenseRight, SenseDraft, SenseAll and SenseView) for a line of product may establish a legally recognized family of marks. Once established, a family of marks bestows upon its owner a power much greater than the sum of the individual members of that family.

The fundamental benefit of raising a family of trademarks is that, once legally recognized, the trademark owner may successfully enforce its family of marks against competitors’ marks incorporating the common “family term” (i.e., Sense). In effect, the common term appearing in each of the family member marks becomes recognized by customers as an identifying trademark – and a particular source indicator — in and of itself (i.e., Sense) when it appears in any composite mark.

Even though a junior user’s mark may not be that close to any one member of the family of marks, i.e., ExtremeSense, its use of the distinguishing family term “Sense” may cause a likelihood of consumer confusion. Its use may cause confusion because if purchasers have come to associate marks that incorporate the term “Sense” with a single source for a particular product, consumers may reasonably believe that the competitor’s mark ExtremeSense is a new addition to the “Sense” family – thus causing consumer confusion and deception as to the source of the ExtremeSense products.

Although some brand owners believe they own a legally protectable “family of marks,” the truth is that they have not taken the proper steps required under trademark law to establish a family of marks.

Below is a list of key requirements for establishing a legally recognized family of marks under U.S. law:

1. Joint adverting: Advertising that uses the marks in a manner that associates each of the marks as belonging to the same owner.

2. Promoting the marks as a “family” so as to create an association between the marks in the minds of consumers.

3. Use of the family of marks in everyday sales activities.

The key to creating a legally recognized family of marks is to create common exposure of the marks and recognition of common ownership based upon the common term appearing in each mark.

Simply using a series of marks that share a common term does not establish the existence of a legally protectable family of marks; there must be recognition among the purchasing public that the common term or characteristic is associated with the same source.