Practice Areas & Industries: Fredrikson & Byron, P.A.

Practice/Industry Group Overview

A New Group. An Old Tradition.™

Fredrikson & Byron’s new Advertising, Marketing & Trademark (AMT) Law Group personifies the firm’s unique position in the creative community.

Since creating the first practice of its kind in Minneapolis more than 30 years ago, Steve Bergerson has been recognized as the ad industry’s leading advertising and trademark law attorney. We’ve now brought together a group of like-minded attorneys who embody Steve’s original vision: only legal minds with creative souls allowed.

"We understand and respect the creativity that goes into developing ads, designing marketing strategies, and selecting trademarks, so for us, when we advise clients, ‘no’ is a word of LAST resort."

We bring a rare combination of expertise, experience, and empathy to every client conversation and assignment. Our advice is both sophisticated and practical. And our service is unsurpassed.

Unlike other intellectual property attorneys, we don’t see things in black and white. In fact, we thrive on nuance, ambiguity, and subjectivity. We are comfortable with the gray vagaries of advertising and trademark law. We are the antithesis of rigidity, timidity, literality, and solemnity.

Creativity requires intuition, instinct, imagination, and ingenuity. It requires a willingness to live with risk – attributes not commonly associated with lawyers.

But we’re different.

We’re creative thinkers with creative backgrounds, not attorneys who moonlight on advertising, trademark, and copyright projects.

Our Goal Is To Help You Get Where You Want. Not Tell You That You Can’t.™

We know your business, the language you speak, the competition you face, the deadlines you must meet, and your need for creative freedom.

We know where you’re coming from, and understand where you want to go. We’re here to help you get there, not to get in the way; to find ways around the walls, not to erect them. When you want to push the envelope, we will help you do that.

When the phone rings, we hit the ground running. And we don’t slow down until we’ve done all we can to get you where you want to be.

We’re passionate about what we do, and it shows.

Your experience with us will be refreshingly different.

Our AMT Group Is Greater Than The Sum of Its Parts

Fredrikson & Byron’s Advertising, Marketing & Trademark Law Group brings together like-minded attorneys who share a unique combination of knowledge, perspectives, attitudes, and capabilities.

That gives us a rare combination of energy and synergy.

What’s more, we have the vast resources of one of the area’s largest law firms, with more than 220 attorneys.

And we work especially closely with our nationally-known Media & Entertainment Law Group, and the other thirty talented attorneys in our Intellectual Property Law Department.

The Quality of Our Advice is Best Measured by Our Clients’ Success

Name the most successful marketers, advertisers and advertising, sales promotion, direct marketing, and public relations agencies you can.

Big or small, established or on the rise, local or national, we may well be helping them achieve marketplace success.

We’re proud of our relationship with each of them, and believe our association is not a coincidence.

Services Available

Advertising & Promotion

We advise and represent advertisers, advertising, direct marketing, and sales promotion agencies, designers, illustrators, photographers, and other creative service businesses of all sizes throughout the country.

The services we offer these clients include:

• Advertising copy compliance
• Sweepstakes compliance and official rules
• Agency/client agreements
• Talent & celebrity contracts
• Privacy & publicity rights issues
• Competitive advertising disputes & litigation
• Television network clearance
• Disclaimers & disclosures advice
• Confidentiality & non-disclosure agreements
• Hold-harmless & indemnification agreements
• Product labeling and warranties
• SAG/AFTRA issues
• Errors & omissions insurance review
• Client seminars

Trademark & Copyright

We advise and represent businesses and individuals in every imaginable industry, both in the United States and throughout the world.

We clear, register, maintain, and protect clients' trademarks and help them develop and implement creative intellectual property protection strategies for building brand and product value around the globe.

We offer them the following services:

• Worldwide registrability and availability searches
• Trademark validity and infringement opinions
• Preparation, filing, and prosecution of trademark applications in the U.S. and internationally
• Conducting trademark opposition and cancellation proceedings
• Trademark litigation, including infringement, counterfeiting, cybersquatting, and grey-market goods.
• Copyright registration, protection, and litigation
• Trade secret protection and litigation
• Trademark and copyright license agreements
• Music license agreements
• Domain name registrations and disputes
• Due diligence for intellectual property transactions
• Trademark and brand counseling, including portfolio management

AN INTRODUCTION TO TRADEMARKS

A trademark is a word, phrase or symbol used by a manufacturer to distinguish its goods from others. A trademark is a brand. For example, the phrase “Good to the Last Drop”, a picture of an upturned coffee cup, and the name Maxwell House can each be individually protected as trademarks. Service marks – which are used to market services rather than tangible products - can also be protected as trademarks. The ultimate commercial value of a trademark is to identify the product so strongly that consumers ask for it by its brand name.

A trademark must actually be used for one to obtain rights in it, and the use must be continuous to maintain those rights. Proper use requires that the mark be placed on the product directly or on containers, displays, tags or labels for the product. A service mark must be used or displayed in promotional literature, signs, or other advertising for the service.

Proper use of a mark also requires that the mark be used as an adjective, and not as a noun or verb. For example, a document may be copied on a Xerox brand copier, but the document is never described as “a Xerox”, nor is it “xeroxed”. If a trademark is used properly, rights in that mark can last indefinitely. Some trademark rights have been lost because the marks became the generic names of the product. “Aspirin” is one example.

Selecting and Registering a Trademark

Some trademarks are inherently stronger than others. Much of a trademark’s ultimate strength depends on which of the following categories it falls into: generic, descriptive, suggestive, arbitrary, and coined.

The generic category refers to the actual common name of a product, such as the use of the word “copier” to identify a new photocopier. It is impossible to protect a generic trademark or to prevent others from using it.

A descriptive trademark describes a feature of the product. Such marks are a poor choice if you want immediate exclusive use of the mark. A name such as U.S. Steel would be considered geographically descriptive, making it difficult to prevent others who manufacture steel in the U.S. from identifying their products in that manner. While many companies use descriptive words as trademarks, exclusive trademark rights can be obtained only if the company is the only one using the trademark for a long time (generally five years or more).

Suggestive trademarks are stronger – they typically hint at a particular quality of a product without actually identifying the product. The use of Softee as a trademark for a paper product, for example, conveys some information about a desired quality without actually describing the product itself. Roach Motel as a trademark for roach traps is another good example.

Arbitrary trademarks are ordinary words that are not used in a descriptive manner. The word Apple would be descriptive when used with a fruit juice, but it is arbitrary, and a fairly strong trademark, when used in connection with computers.

Coined trademarks – words that are “made up” – generally provide the strongest marks.  These are words that have no meaning in the English language prior to being adopted by a particular company for use with its goods or services. For example, Lexus is a coined mark which has become clearly associated with a luxury car. These marks are instantly identified with an organization or product, and the exclusive right to use the mark is easily defended against potential infringers.

The Federal Registration Process

Since 1989, it has been possible to apply to register a trademark before actual use of the mark begins if there is a bona fide intent to use the mark. While registration cannot be granted until the mark is actually used, it is wise to file the application as soon as possible.

A trademark application includes specimens of the trademark as it is actually used, together with information concerning when the mark was first used (or the existence of bona fide intent to use the mark) and an identification of the types of goods and services on which the mark is used (or intended to be used).

Once filed, the application is reviewed by an examiner in the U.S. Patent and Trademark Office, who determines whether there are any other federally registered trademarks, for similar goods and services, that may be confusingly similar to the pending trademark. If the trademark application passes this legal standard, the mark is published in the Official Gazette. This government publication allows any member of the public an opportunity to oppose the registration of a mark.  If no one opposes the application, the registration certificate will then be issued. Proper commercial use is required to maintain the registration. If evidence of proper use is filed when required six years after the registration is issued, then the registration is good for an initial period of ten years. If not used, a trademark registration can be subject to cancellation. If use continues, trademark registrations may be renewed for subsequent ten-year periods.

Once a trademark is granted federal registration, it can be identified with the word “Registered” or with the symbol ®. Until then, an unregistered trademark should be identified with the letters TM or SM.

Trademark Infringement

Trademark infringement – based on a “likelihood of confusion” standard – depends on many factors, including:

Similarity of the trademarks in appearance, sound and meaning;

Similarity of goods and services identified by the trademarks;

Similarity of channels of distribution;

Sophistication of the consumers who buy the specific products or services;

Degree of commercial competition between the two trademark users;

Distinctiveness of the trademarks (e.g., are they descriptive, suggestive, arbitrary or coined).

When a trademark owner determines that someone may be infringing on a trademark, he or she will commonly write a letter to the alleged infringer requesting that they discontinue use of the mark. If the infringing party is not cooperative, the controversy can end up in court.