Intellectual Property Rights Protection

The Basics of Trademark Protection


A lot of importance is placed on branding and the rights that go along with trying to protect intellectual property, and one of the best ways to protect that is with a trademark and the registration of a trademark to signify the company’s goodwill and the quality of goods and services to be delivered. The registration of a trademark provides protectable, enforceable, and statutory rights, in addition to providing ownership and a valid right to use the trademark. The presenter of this course provides a thorough discussion of the importance of registering a trademark, as well as the pieces and steps that are so important to understand when going through this process with your clients.


I. The Basics of Trademark Protection
    A. What Is a Trademark?
    B. When Does a Registration Right Start?
    C. Why Bother to Register a Trademark?
    D. The Importance of Searching for Similarity
    E. Not All Marks Are Created Equal
    F. Trademark Strength
         1. Fanciful, Arbitrary, Suggestive, and Descriptive Marks
         2. Generic Marks
    G. How Can You Lose Trademark Rights?
    H. The First Steps of the Registration Process
    I. Challenges to the Mark
         1. Examination of the Application
         2. Deceptively Misdescriptive Marks
         3. Further Challenges to the Mark
         4. Confusingly Similar
    J. Fraud in Trademark Applications
    K. Publication of the Mark
    L. You've Got the Registration; Now What?

Content Provided

Highly specialized, highly focused. These traits define Collen IP. Our approach results from decades of experience by leading lawyers whose careers are focused on helping our clients get results in intellectual property and advertising law.

Our partners bring decades of experience to our firm. Their skills were honed at many of New York's and the country's leading international corporate and IP law firms. Our experience with a team approach shows that coordination among team members achieves the best results. Our discipline and execution complement planning and theory. We pay painstaking attention to preparation of legal papers and strategies, based upon the nature of the problem and the risks involved. Sometimes the goal is fairly straight forward -- find a new brand name, minimize the risks that its use will infringe others, and maximize the prospects for developing value in that brand. Other times our job will have an enormous impact on the viability of the company, where a key product, patent or copyrighted work is under attack. 

The number of necessary team members is usually going to be a similarly sized supporting cast of lawyers, researchers, and paraprofessionals regardless of whether you are considering a 3-person firm, 40-person firm, or a 2000-person firm with an intellectual property department. 

We are available to work with you in matters before the Federal courts in New York and in courts throughout the country, where we call upon our network, developed over a quarter century, of outstanding lawyers who fit seamlessly on our team. 

Our partners and senior attorneys all have laser-like focus on the subject matter areas in which our firm practices, as you will see when you review the backgrounds of some of our team. We exist to provide excellent representation. We are graced with fine client relationships and employ our experience for world famous companies, advertisers, and manufacturers, all of whom rely on us to protect their inventions and ideas. Even if you are a small or independent company, Collen IP is still a great choice for you. We have been very successful over the years helping smaller companies with appropriate team of lawyers and professional staff for the job, with competitive budgets for these client's business needs.

Sophisticated problems demand sophisticated solutions. Collen IP would be honored to have an opportunity to discuss your business needs.

A meeting lets us understand your needs, goals, objectives, timetables, and budgets. We then employ our considerable experience to accomplish the goals we are hired to meet.

The lawyers of Collen IP are very proud to follow the best traditions of the legal profession. Lawyers have been favored subjects (for good and bad) of literature and entertainment. We understand how and why lawyers are a favorite target of jokes. We are proud of what we do to help grow and help protect our clients' business. We are determined to uphold the best traditions of our profession and make our clients, the courts and even our adversaries reinforce the best traditions that the legal profession brings to business and society.

Speaker / Author:

Photo of Jane F. Collen

Jane F. Collen
Collen IP

Jane Collen is a founding member of Collen IP and is presently Of Counsel to the firm. Her practice spans a wide variety of intellectual property areas, including Trademark, Copyright, Unfair Competition and Internet law. She has also practiced in the areas of federal court litigation, actions before the United States Trademark Office, infringements, counterfeiting, licensing, false advertising and misrepresentation, and software and related matters. She has counseled clients for over twenty years on management of their trademark portfolios and offering guidance on adoption, selection, protection and enforcement of trademark rights. She routinely prosecutes trademark applications on behalf domestic and international clients before the United States Patent and Trademark Office, and counsels clients regarding use and revision issues outside of the United States, and addresses issues such as procurement, use and enforcement programs regarding internet domain names.

Ms. Collen has served in several capacities in the International Trademark Association, as Chair of numerous subcommittees and member of selected task forces. She has also been an active volunteer committee member. Most recently she was chair of the Issues Identification North American subcommittee, researching the problem of the current proliferation of sham notices to Trademark owners, billing them for unnecessary services. With the ease of accessing government data, a worldwide cottage industry sending sham notices and invoices to list trademarks on non-existent registries or to pay "protection" fees that are not due. Jane spearheaded the committee to propose steps for preventing this fraud on Trademark owners.

As co-chair of the corporate and commercial law section of the Westchester County Bar Association, she is currently active in planning and giving seminars for continuing legal education and has also served on the Board of the Pace University Law School continuing education program. She is Counsel for the Advertising Club of Westchester and has also served on its Board of Directors.

Ms. Collen lectures frequently on numerous intellectual property law topics, including brand protection and enforcement, domain name disputes and other legal issues affecting the World Wide Web.

Ms. Collen is admitted to practice before the State of New York, Massachusetts, and the District of Columbia bars, the Court of Appeals for the Federal Circuit, as well as various United States District Courts.

Ms. Collen received her J.D. from the Western New England University School of Law, and her B.A., magna cum laude, from Boston College.


Price (USD)

Standard Rate: $124.00
Subscribers: FREE
Pillsbury U Online: $124.00
Metro State Univ: $124.00


Course Code : 777115

Release Date : 09/12/2013

Length : 1hr 6min
Recorded Date : 7/24/2013

Format Type : eLearning

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