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Protecting Thousands of Brands Every Day Requires Breakthrough Innovation and Proactive Strategy. We know. It's what we do.

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Trademarks are one of the most important assets your company owns. A trademark is an icon, an instantly recognizable mini-profile of your brand. When properly secured, trademarks boost brand recognition, generate continual income streams, differentiate from your competitors, and in some cases, can be worth more than the physical assets of the company itself.

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Providing experience from the inside out.

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Merchant &amp; Gould is consistently ranked as a top filer of trademark applications with the U.S. Patent and Trademark Office. Our trademark group includes three former Examining Attorneys who have collectively examined more than 14,000 trademark applications during their time at the USPTO, in industries from consumer goods, chemicals, natural resources, and industrial goods to healthcare, technology, utilities, and services. This inside knowledge of the Trademark Office allows us to predict the registrability of any type of mark. Our Group maintains an intimate familiarity with the people and processes of the Trademark Office, allowing us to secure registrations with an efficiency that few others can match.

Our TTAB experts, domain name experts, international trademark experts, licensing experts and trial attorneys have helped Merchant &amp; Gould earn its reputation as one of the top trademark and copyright practices in the U.S. and globally. Our trademark database includes more than 60,000 records for hundreds of clients. We clear more than 20,000 docket dates per year.

Building strong brands with preventative measures.

Before adopting and using a trademark or service mark, it's critical to conduct the appropriate due diligence to ensure the mark is available for use and registration in the places you want to use it. A relatively small investment in trademark searching before using the mark or filing trademark applications can help eliminate the risks of potential third-party challenges, the significant costs of related litigation, and the potential need to rebrand your products and services.

Minneapolis

Of Counsel

John “Jack” A. Clifford

Partner

Andrew S. Ehard

Intellectual Property Paralegal

Robyn R. Erickson

Gregory C. Golla

Atlanta

Nachele Hemphill

Scott  W. Johnston

Associate

Lindsay Jones

Carolyn  B. King

Heather J. Kliebenstein

Knoxville

Angela C. Kreis

Los Angeles

Elizabeth  A. Linford

Danielle I. Mattessich

John P. Olson

Brent E. Routman

Jenna Beth I. Sass

Christopher J. Schulte

William D. Schultz

Denver

Julie A. Wolfe

Elizabeth Harwood

W. Reid Morris

Partner & Chief Diversity Officer

John T. Winemiller, Ph.D.

<div>

The Federal Bar Association, Phoenix Chapter presents:
<a href="http://www.fedbar.org/Chapters/Phoenix-Chapter/Calendar/Phoenix-Chapter-Intellectual-Property-Update.aspx" target="_blank" rel="noopener">INTELLECTUAL PROPERTY UPDATE: 
A fast-paced overview of current trends in IP litigation</a>
Faculty: John A. Clifford, Shareholder, Merchant &amp; Gould P.C.
“Frequent flyers” are not just for airlines anymore!  Find out who is suing whom over patents, trademarks, and copyrights, and what it means when your client gets an unexpected letter or summons.  This presentation will cover:
<ul>
<li>Patents: Trolls, hobbits, and actual cases and controversies</li>
<li>Trademarks: Brands, knockoffs, confusion, and the recent SCOTUS decision in B&amp;B v. Hargis</li>
<li>Copyrights: Web search infringement, “There’s an app for that,” “right click” infringement, free downloads, fabrics, Dallas Buyers Club, and The Turtles</li>
</ul>
Jack Clifford has practiced Intellectual Property law since 1981.  He has handled over 5,000 trademarks with the U.S. Patent and Trademark Office, has appeared in over 700 Trademark Oppositions and Cancellations, and established the web site: <a href="http://www.theantitroll.com">www.theantitroll.com</a> to bring useful information to potential victims of patent trolls.  He represents various celebrities and luxury goods makers such as Louis Roederer’s CRISTAL champagne, LORO PIANA fashion goods, ALFA ROMEO automobiles, and LUSH cosmetics.
Thursday, May 21, 2015 at 12:00 – 1:15PM 
Sandra Day O’Connor U.S. District Courthouse | Jury Assembly Room
Cost in advance: $15.00 (FBA Members) | $25.00 (Non-members) | $10.00 (Law Students) 
Free for current federal judicial law clerks and externs 
Cost at the door: $20.00 (FBA Members) | $30.00 (All others) 
Buffet Lunch provided by Citron
RSVP by Monday, May 18, 2015, to Janice Rogalla at <a href="mailto:jrogalla@swlaw.com">jrogalla@swlaw.com</a>
Payment options:
<ol>
<li>Pay ONLINE at <a href="http://www.fedbar.org/Chapters/Phoenix-calendar">http://www.fedbar.org/Chapters/Phoenix-calendar </a></li>
<li><a href="http://www.fedbar.org/Chapters/Phoenix-calendar">Send checks in advance payable to “FBA – Phoenix Chapter” (print name of each attendee on check) to Don Gaffney, Snell &amp; Wilmer L.L.P., One Arizona Center, 400 East Van Buren, Phoenix, AZ 85004-2202</a></li>
</ol>
May qualify for up to 1.0 hour CLE credit
</div>

Intellectual Property CLE in Phoenix

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in&nbsp;The Best Lawyers in America® 2013.&nbsp;



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues.&nbsp; Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



DENVER, CO



<ul>
<li>Peter A. Gergely &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>
</ul>



MINNEAPOLIS, MN



<ul>
<li>John A. Clifford &#8211; Litigation (Intellectual Property), Patent Law, Trademark Law</li>



<li>Charles E. Golla &#8211; Copyright Law</li>



<li>Allen W. Hinderaker &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>



<li>Scott W. Johnston &#8211; Litigation (Intellectual Property), Trademark Law</li>



<li>Daniel W. McDonald &#8211; Litigation (Intellectual Property), Litigation (Patent), Trademark Law</li>



<li>Christopher J. Schulte &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>



<li>Anthony R. Zeuli &#8211; Copyright Law, Litigation (Intellectual Property), Litigation (Patent), Patent Law, Trademark Law</li>



<li>Rachel Zimmerman Scobie &#8211; Litigation (Intellectual Property)</li>
</ul>



<a href="http://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>

Merchant & Gould Attorneys Included in The Best Lawyers in America © 2016

<div class="details_summary_text">
Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America® 2017. Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.
DENVER, CO
<ul>
<li>Peter A. Gergely – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>
MINNEAPOLIS, MN
<ul>
<li>John A. Clifford – Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>
<li>Charles E. Golla – Copyright Law</li>
<li>Allen W. Hinderaker – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
<li>Scott W. Johnston – Litigation &#8211; Intellectual Property, Trademark Law</li>
<li>Daniel W. McDonald – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law</li>
<li>Christopher J. Schulte – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
<li>Rachel Zimmerman Scobie – Litigation &#8211; Intellectual Property</li>
<li>Anthony R. Zeuli – Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law</li>
</ul>
<a href="http://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>
</div>

Merchant & Gould Attorneys Named 2017 Best Lawyers®

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America® 2018.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



DENVER, CO



<ul>
<li> Peter A. Gergely – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>



MINNEAPOLIS, MN



<ul>
<li> John A. Clifford – Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>



<li> Charles E. Golla – Copyright Law</li>



<li> Andrew S. Ehard – Litigation &#8211; Intellectual Property, Trademark Law*</li>



<li> Allen W. Hinderaker – Litigation &#8211; Intellectual Property, Litigation – Patent</li>



<li> Rachel C. Hughey – Litigation &#8211; Intellectual Property**</li>



<li> Scott W. Johnston – Litigation &#8211; Intellectual Property, Trademark Law</li>



<li> Daniel W. McDonald – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law</li>



<li> Christopher J. Schulte – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li> Christopher J. Sorenson – Litigation – Patent</li>



<li> Rachel Zimmerman Scobie – Litigation &#8211; Intellectual Property</li>



<li> Anthony R. Zeuli – Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law</li>
</ul>



* Andrew Ehard recognized by Best Lawyers in Trademark Law for the first time this year



** Rachel Hughey recognized by Best Lawyers in Litigation &#8211; Intellectual Property for the first time this year. Also listed in Best Lawyers for the first time this year (2018).



<a href="https://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>

Merchant & Gould Attorneys Named Best Lawyers® 2018

Merchant &amp; Gould is proud to be recognized in the “United States: Minnesota” category in World Trademark Review’s 2019 research directory, WTR 1000, a peer-feedback-based resource which spotlights firms and attorneys that are deemed “outstanding” by the global trademark community.&nbsp; Merchant &amp; Gould’s trademark attorneys help implement brand strategies for clients in both global and local markets, as well as protect clients’ trademark rights in the event of infringement.



To research the market, World Trademark Review conducted face-to-face and telephone interviews; exchanged correspondence over a four-month period with hundreds of lawyers, attorneys and their clients involved with trademarks; and gathered written submissions from firms detailing their recent activity in the field. &nbsp;When identifying the leading firms, factors such as depth of expertise, market presence and the level of work on which they are typically instructed were also taken into account.



A few comments shared by World Trademark Review: “Outstanding and reliable in terms of quality, Merchant &amp; Gould has long stood tall as a trademark and IP leader in Minnesota. Particularly striking is the international reach of its practice, which extends into all the corners of the world. The professionals here think globally about brands and are extremely well connected with top IP outfits abroad; they send out a lot of instructions and, as testament to the group’s quality, people are only too happy to reciprocate.”



In addition to the general firm feedback, the following Merchant &amp; Gould received positive comments from sources, as noted in quotations below:



<ul>
<li>Trademark chair&nbsp;Christopher Schulte&nbsp;“gives excellent, commercially focused advice” and helps clients to mitigate risk wherever they are doing business. “He operates at the cutting edge of trademark prosecution.”</li>



<li>Andrew Ehard&nbsp;is “unbelievably knowledgeable, practical and responsive, he’s phenomenal on anything complex and hands down the best trademark lawyer.”</li>



<li>Coordinating work to and from Asia,&nbsp;Brent Routman&nbsp;“has patents to his name and is a dyed-in-the-wool innovator with a passion for trademark, copyright, internet and advertising law.”</li>



<li>Scott Johnston “brings fresh ideas to the table; he developed Brandscape, which presents trademark information in a visual form to help those with little knowledge of trademarks to protect themselves against third parties.”</li>



<li>Heather Kliebenstein’s “background in patents puts her in pole position to handle multifaceted IP disputes. She’s a top trademark litigator – big brand owners think she’s fantastic.”</li>



<li>Gregory Golla&nbsp;“bridges the contentious and non-contentious sides of the practice,&nbsp;and he has an edge in the courtroom over other litigators, who lack his depth of prosecution&nbsp;expertise.”</li>
</ul>



Congratulations to the Minneapolis office and the Merchant &amp; Gould’s trademark team!

Merchant & Gould Is Recognized by World Trademark Review  for Its “Outstanding and Reliable” Work and IP Leaders in Minnesota

Please Join Us



The recent backlash by the outdoor community to Backcountry.com’s aggressive trademark enforcement practices underscores the importance of policing your rights in a way that does not harm your mark or reputation. 



In this complimentary CLE, a panel of in-house trademark experts will discuss the Backcountry.com case, other instances of trademark enforcement gone awry, and ideas for protecting your brands without creating a Backcountry.com-style backlash. We will also have a brief networking session with beverages and hors d’oeuvres after the discussion.



<h2 class="wp-block-heading">Thursday, February&nbsp;27, 2020 &#8211; 3:00 p.m.&nbsp;</h2>



150 South Fifth Street Third Floor Conference Center Minneapolis, MN 55402



<h2 class="wp-block-heading">Panelist</h2>



<ul>
<li>Sarah A. Lockner &#8211; Assistant Chief IP Counsel &#8211; Ecolab</li>



<li>Alexandria M. Christian &#8211; Counsel &#8211; General Mills</li>



<li>Becky J. Sullwold &#8211; Manager/Paralegal &#8211; Polaris</li>
</ul>



<h2 class="wp-block-heading">Moderator</h2>



<ul>
<li>Scott W. Johnson &#8211; Partner &#8211; Merchant &amp; Gould</li>
</ul>



<h2 class="wp-block-heading"><a href="https://emailcc.com/s/09682e3514426d4e9d4928d720b265ba6837b530" target="_blank" rel="noreferrer noopener">RSVP Here!</a></h2>



This event will begin promptly at 3:00 p.m. to ensure full CLE credit. An application for 1.5 hours of CLE credit is currently pending.

Trademark Enforcement Without Alienating Your Customers or Tarnishing Your Brand

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2021.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



ATLANTA, GA Jeff Blake&nbsp;&#8211; Patent Law



DENVER, CO Peter A. Gergely&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent



MINNEAPOLIS, MN John A. Clifford&nbsp;– Litigation &#8211; Intellectual Property, Patent Law, Trademark Law Andrew S. Ehard&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Allen W. Hinderaker&nbsp;– Litigation &#8211; Intellectual Property, Litigation – Patent Rachel C. Hughey&nbsp;– Litigation &#8211; Intellectual Property Scott W. Johnston&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Heather J. Kliebenstein&nbsp;–&nbsp;Litigation &#8211; Intellectual Property Thomas J. Leach&nbsp;–&nbsp;Litigation &#8211; Intellectual Property Daniel W. McDonald&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law Christopher J. Schulte&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent William D. Schultz &#8211; Litigation &#8211; Intellectual Property Christopher J. Sorenson&nbsp;– Litigation – Patent Rachel Zimmerman Scobie&nbsp;– Litigation &#8211; Intellectual Property Anthony R. Zeuli&nbsp;– Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law

MERCHANT & GOULD ATTORNEYS NAMED BEST LAWYERS 2021

Merchant &amp; Gould is proud to announce that World Trademark Review has recognized three of the firm’s Minneapolis attorneys in the 2020 Global Leaders Guide: Private Practice: <a href="/people/christopher-j-schulte/">Christopher J. Schulte</a>, <a href="/people/andrew-s-ehard/">Andrew S. Ehard</a> and <a href="/people/scott-w-johnston/">Scott W. Johnston</a>.  As a peer-feedback-based resource, World Trademark Review identifies the “best of the best” in the trademark industry.



While Chris, Andrew and Scott have been recognized in previous years in the Gold Tier for WTR 1000, this year’s recognition is even more notable – earning places on the short list for WTR 300 global leaders. Merchant &amp; Gould’s trademark attorneys develop and implement cutting-edge brand development, registration and enforcement strategies for clients in both global and local markets, and are a trusted source for trademark counseling for companies who value their brands.&nbsp;



According to World Trademark Review, “All those listed as&nbsp;WTR Global Leaders&nbsp;merit special attention owing not only to their expertise and experience in relation to creating, protecting, managing and enforcing essential brand rights; but also to their ability to innovate, inspire and go above and beyond to deliver for their clients.”



Congratulations to the Minneapolis office and the Merchant &amp; Gould trademark team!

Three of Merchant & Gould’s Trademark Attorneys Ranked in World Trademark Review as “2020 Global Leaders” in Private Practice

Recognized for client engagement and client investment.



Congratulations to <a href="/people/andrew-s-ehard/">Andy Ehard</a>, partner in Merchant &amp; Gould’s Minneapolis office, for being selected as a BTI Client Service All-Star 2020.



Andy is one of 475 attorneys selected from 181 firms around the country.&nbsp; The methodology is based solely on unprompted feedback from clients at large and Fortune 1000 organizations.&nbsp; Specifically, Client Service All-Stars are noted for their client engagement, client investment, savvy approach, unequivocal recommendations, deep knowledge and anticipation for client needs.



As part of the selection process, Andy shared his philosophy with the BTI team:



“My approach to client service is to do my best to provide timely, thoughtful and easy -to-understand advice in a cost- effective manner, to allow my client to execute on their business plans. My goal is to be available to my clients 24/7 or ensure that someone on my team is ready to provide assistance. I also take significant steps to understand my client’s business goals and objectives, to tailor an IP strategy that provides for them the broadest scope of protection at the most reasonable price point possible.”



Andy practices general intellectual property law with an emphasis on trademark and copyright matters. &nbsp;He represents and counsels significant brand holders in the management of their global trademark portfolios and the selection, clearance, and registration of new brands. &nbsp;&nbsp;Andy also represents clients involved in domestic and foreign trademark oppositions and cancelation proceedings.



For a complete list of BTI Client Service All-Stars 2020 and additional background, please click here: https://bticonsulting.com/bti-client-service-all-stars-2020

Andy Ehard Named a BTI Client Service All-Star 2020

TMA Provides New Avenues for Eliminating Phantom Registrations from Federal Register



<h2 class="wp-block-heading">Highlights</h2>



<ul>
<li>The TMA Provides for Third-Party Submission of Evidence During Examination and More Flexible Office Action Response Periods.&nbsp;</li>



<li>The TMA Allows for Immediate Ex Parte Reexamination Proceedings to Challenge Evidence of Use Submitted in an Application.</li>



<li>The TMA Outlines Ex Parte Expungement Proceedings to Remove Unused Registrations 3 Years After Issuance.</li>
</ul>



As part of the passage of the Consolidated Appropriations Act on December 27, 2020, a bipartisan group of Congressional leaders has passed the Trademark Modernization Act (“TMA”) of 2020.&nbsp; The TMA seeks to answer longstanding calls to address concerns about never used or fraudulently acquired trademark registrations. Several key components of the TMA work together to create a framework through which the United States Patent and Trademark Office (“USPTO”) will address the overcrowded Federal Register.



1. The TMA Provides for Third Party Submission of Evidence During Examination and More Flexible Office Action Response Periods.



The TMA will allow third parties to submit evidence relevant to a ground for refusing a pending application. Within two months of receipt, the USPTO may then decide whether to include the evidence in the record and issue a refusal of the application based upon the evidence received. This procedure may provide for an efficient and cost-effective means of preventing improper registrations without having to initiate an opposition or cancellation proceeding. However, it remains unclear how this procedure will differ from those now in place for letters of protest.



Similarly, the TMA also provides for more flexible office action response periods. In some instances, which are yet to be clarified, the USPTO may allow applicants to extend the time to respond to an office action by up to 6 months. In other instances, the USPTO may require shorter response periods of as few as 60 days. Together, the forthcoming regulations may assist in shortening or lengthening the application process in an effort to maximize the inward flow of applications accompanied by proper use evidence and minimize the intake of those without such evidence.



2. The TMA Allows for Immediate Ex Parte Reexamination Proceedings To Challenge Evidence of Use Submitted In An Application.



The TMA provides that any third party may request that the USPTO reexamine an application for non-use.&nbsp; The reexamination may be filed immediately after and within 5 years from the date a use-based application is filed or evidence of use is submitted in connection with an intent-to-use application.&nbsp; If the evidence submitted is persuasive, the USPTO may then institute a reexamination of the reported mark without further action by the requesting party. It may cancel the reported registration with respect to all goods therein that were accompanied by insufficient evidence of use of the applied-for mark if the registrant cannot present evidence rebutting the evidence submitted to the USPTO.



Notably, this section only applies to domestic applications-not those filed under §66 or §44 of the Trademark Act.



3. The TMA Outlines Ex Parte Expungement Proceedings to Remove Unused Registrations 3 Years After Issuance.



The TMA also establishes an ex parte expungement proceeding, whereby any third party may file a petition to expunge a registration of a mark that has never been used in commerce on all or some of the goods and services listed in the registration. The petition must be filed between 3 and 10 years following issuance of the registration, but all registrations currently more than 3 years old will be subject to expungement petitions for the first 3 years after the USPTO regulations are implemented. If the evidence submitted by the petition is deemed sufficient by the USPTO, it may institute an ex parte expungement proceeding and the registrant would then have the burden to prove use. Where a registrant fails to meet its burden, the USPTO may elect to cancel the registration with respect to all goods and services that were never used in connection with the mark.



These rules apply to all applications filed in the United States, including registrations filed under §66 or §44. However, the TMA notes that foreign applicants subject to an ex parte expungement proceeding will be provided with an opportunity to submit evidence of special circumstances, such as embargos and international trade restrictions, that may support arguments of excusable non-use.



The TMA demonstrates an increased effort by Congress to assist the USPTO and trademark applicants in decluttering the Federal Register. Although the TMA’s framework addressing this ongoing challenge is presented generally, more specific guidelines and procedures can be expected in the near term. The Director of the USPTO was tasked with furthering Congress’ intentions in the TMA within the next year, which will result in short term changes to both the makeup of the Federal Register and established trademark law principles.



Lindsay M.R. Jones

Trademark Modernization Act

Read Full Article Here: <a href="/wp-content/uploads/2023/03/Morality_refusal_grounds_are_gone_from_the_United_States_but_are_alive_and_well_in_China_World_Trademark_Review.pdf">Morality refusal grounds are gone from the United States but are alive and well in China</a>

Morality refusal grounds are gone from the United States but are alive and well in China

Congratulations to Minneapolis partner Andrew Ehard on being named a 2021 Lexology Client Choice Award Winner, which recognizes attorneys around the world for their excellent client care and quality of service. &nbsp;Specifically, Andrew was chosen for his “ability to add real value to clients’ business, above and beyond the other players in the market.”



Uniquely, attorneys can be nominated only by corporate counsel who are asked to rate individuals on a range of distinguished qualities from industry knowledge, strategic thinking, quality of advice, responsiveness and effective communication, to loyalty and ethics. The results are then divided by country and work area. &nbsp;This year, Client Choice recognized 593 winners across 73 jurisdictions worldwide.&nbsp;



Andrew practices general intellectual property law with an emphasis on trademark and copyright matters. &nbsp;He represents and counsels significant brand holders in the management of their global trademark portfolios and the selection, clearance, and registration of new brands. &nbsp;Andrew also represents clients involved in domestic and foreign trademark oppositions and cancelation proceedings.



Within the firm, Andrew serves on the Executive Committee and has previously acted as the chair of the Trademark Group and the co-chair of both the Recruiting Committee and the New Associate Group. &nbsp;He is a frequent speaker and presenter on intellectual property and trademark issues.



For a complete list of 2021 Lexology Client Choice Award Winners, visit www.ClientChoice.com. &nbsp;

Andrew S. Ehard Named A 2021 Lexology Client Choice Award Winner

Merchant &amp; Gould was ranked in five National Tier and six Metropolitan categories in the 2022 edition of U.S. News – Best Lawyers® “Best Law Firms,” recognized for professional excellence with consistently impressive ratings from clients and peers.



Achieving a high ranking is a special distinction that marks a unique combination of excellence and breadth of experience. Ranked firms, presented in three tiers, are recognized on a national and regional-based scale. Firms that received a tier designation reflect the highest level of respect a firm can earn among other leading lawyers and clients from the same communities and practice areas. Merchant &amp; Gould ranked in the following National and Metropolitan categories:



<h2 class="wp-block-heading">National Tier 1</h2>



Patent Law



<h2 class="wp-block-heading">National Tier 2</h2>



Litigation &#8211; Intellectual Property Litigation &#8211; Patent



<h2 class="wp-block-heading">National Tier 3</h2>



Copyright Law Trademark Law



<h2 class="wp-block-heading">Metropolitan Tier 1 &#8212; Minneapolis</h2>



Copyright Law Litigation &#8211; Intellectual Property Litigation &#8211; Patent Patent Law Trademark Law



<h2 class="wp-block-heading">Metropolitan Tier 3 – Atlanta</h2>



Patent Law



To be eligible for a ranking, a firm must first have a lawyer recognized in The Best Lawyers in America®, which recognizes 6 percent of lawyers practicing in the United States, and also receive consensus on some of the following factors: firm-wide work, the size and coverage of a firm in a specific area, historical analysis, research surrounding the firm’s overall scope and areas of expertise.



The 2022 rankings incorporate more than 8.2 million evaluations of more than 115,000 individual leading lawyers from more than 22,000 firms. More than 2,000 firms received a national law firm ranking this year.

Merchant & Gould Recognized on U.S. News – Best Lawyers® “Best Law Firms” List with Rankings in 11 National and Metropolitan Categories

Merchant &amp; Gould is proud to announce that World Trademark Review (WTR) has recognized three of the firm’s Minneapolis attorneys in the 2021 Global Leaders Guide: Private Practice: <a href="/people/christopher-j-schulte/">Christopher </a><a href="https://www.merchantgould.com/Professionals/Christopher-J-Schulte">J. Schulte</a>, <a href="/people/andrew-s-ehard/">Andrew S. Ehard</a>, and <a href="/people/scott-w-johnston/">Scott W. Johnston</a>.  As a peer-feedback-based resource, World Trademark Review identifies the “best of the best” in the trademark industry.



Chris, Andrew, and Scott have been recognized in previous years in the Gold Tier for WTR 1000&nbsp;and&nbsp;WTR 300 global leaders. Merchant &amp; Gould’s trademark attorneys develop and implement cutting-edge brand development, registration, and enforcement strategies for clients in both global and local markets, and are a trusted source for trademark counseling for companies who value their brands.&nbsp;



According to World Trademark Review, “All those listed as&nbsp;WTR Global Leaders&nbsp;merit special attention owing not only to their expertise and experience in relation to creating, protecting, managing and enforcing essential brand rights; but also to their ability to innovate, inspire and go above and beyond to deliver for their clients.”



To view the complete 2021&nbsp;Global Leaders Guide: Private Practice list, <a href="https://www.worldtrademarkreview.com/survey/wtr-global-leaders/2021/article/wtr-global-leaders-private-practice" target="_blank" rel="noopener">click here</a>.

Three M&G Trademark Attorneys Ranked as WTR “2021 Global Leaders” in Private Practice

Merchant &amp; Gould is pleased to announce its Gold rating in the <a href="https://www.worldtrademarkreview.com/" target="_blank" rel="noopener">World Trademark Review</a>&nbsp;list of the world&#8217;s top trademark firms and attorneys for 2019. The firm and four of its trademark attorneys were again ranked in&nbsp;United States: Minnesota.&nbsp;



In&nbsp;its annual publication, the WTR 1000, the WTR reserves it top rating of Gold for firms and individuals &#8220;that attract the most positive comments from sources.&#8221; These are firms and attorneys whose &#8220;success often hinges on reputations established over lengthy periods of time, something which enables them to secure the most high-profile, big-ticket work from the most prestigious of clients.&#8221;&nbsp;



Merchant &amp; Gould congratulates Minneapolis trademark partners <a href="https://www.merchantgould.com/Professionals/Andrew-S-Ehard" target="_blank" rel="noopener">Andy Ehard</a>, <a href="https://www.merchantgould.com/Professionals/Scott-W-Johnston" target="_blank" rel="noopener">Scott Johnston</a>, <a href="https://www.merchantgould.com/Professionals/Brent-E-Routman" target="_blank" rel="noopener">Brent Routman</a>, and <a href="https://www.merchantgould.com/Professionals/Christopher-J-Schulte" target="_blank" rel="noopener">Chris Schulte</a> on their inclusion in the 2019&nbsp;edition of&nbsp;the&nbsp;WTR 1000.

Merchant & Gould Trademark Team Recognized by World Trademark Review

Retains Gold Rating in List of The World&#8217;s Leading Trademark Professionals 2020.



Merchant &amp; Gould is pleased to announce it has again received a Gold rating in the <a href="https://www.worldtrademarkreview.com/" target="_blank" rel="noopener">World Trademark Review</a> list of the world&#8217;s top trademark firms and attorneys for 2020. The firm and four of its trademark attorneys were again ranked in United States: Minnesota. 



In&nbsp;its annual publication, the WTR 1000, the WTR reserves the&nbsp;top rating of Gold for firms and individuals &#8220;that attract the most positive comments from sources.&#8221; These are firms and attorneys whose &#8220;success often hinges on reputations established over lengthy periods of time, something which enables them to secure the most high-profile, big-ticket work from the most prestigious of clients.&#8221;&nbsp;



Merchant &amp; Gould congratulates Minneapolis trademark partners <a href="https://www.merchantgould.com/Professionals/Andrew-S-Ehard" target="_blank" rel="noopener">Andy Ehard</a>, <a href="https://www.merchantgould.com/Professionals/Scott-W-Johnston" target="_blank" rel="noopener">Scott Johnston</a>, <a href="https://www.merchantgould.com/Professionals/Brent-E-Routman" target="_blank" rel="noopener">Brent Routman</a>, and <a href="https://www.merchantgould.com/Professionals/Christopher-J-Schulte" target="_blank" rel="noopener">Chris Schulte</a> on their inclusion in the 2020 edition of&nbsp;the&nbsp;WTR 1000.

Merchant & Gould Recognized by World Trademark Review

Retains Gold Rating in List of The World&#8217;s Leading Trademark Professionals 2022.



Merchant &amp; Gould is pleased to announce it has again received a&nbsp;Gold rating in the <a href="https://www.worldtrademarkreview.com/" target="_blank" rel="noopener">World Trademark Review</a>&nbsp;list of the world&#8217;s top trademark firms and attorneys for 2021. The firm and four of its trademark attorneys were again ranked in&nbsp;United States: Minnesota.&nbsp;



In&nbsp;its annual publication, the WTR 1000, the WTR reserves the&nbsp;top rating of Gold for firms and individuals &#8220;that attract the most positive comments from sources.&#8221; These are firms and attorneys whose &#8220;success often hinges on reputations established over lengthy periods of time, something which enables them to secure the most high-profile, big-ticket work from the most prestigious of clients.&#8221;&nbsp;



Merchant &amp; Gould congratulates Minneapolis trademark partners <a href="/people/andrew-s-ehard/">Andy Ehard</a>, <a href="/people/scott-w-johnston/" target="_blank" rel="noreferrer noopener">Scott Johnston</a>, <a href="/people/brent-e-routman/" target="_blank" rel="noreferrer noopener">Brent Routman</a>, and <a href="/people/christopher-j-schulte/">Chris Schulte</a> on their inclusion in the 2021 edition of the WTR 1000.

Merchant & Gould Trademark Group Recognized by World Trademark Review

Retains Gold Rating in List of The World&#8217;s Leading Trademark Professionals 2022



Merchant &amp; Gould is pleased to announce it has once again received a&nbsp;Gold rating in the <a href="https://www.worldtrademarkreview.com/" target="_blank" rel="noopener">World Trademark Review</a>&nbsp;list of the world&#8217;s top trademark firms and attorneys for 2022. The firm and four of its trademark attorneys were again ranked in&nbsp;United States: Minnesota.&nbsp;



In&nbsp;its annual publication, the WTR 1000, the WTR reserves the&nbsp;top rating of Gold for firms and individuals &#8220;that attract the most positive comments from sources.&#8221; The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive &#8216;go-to&#8217; resource for those seeking world-class legal trademark expertise.



Merchant &amp; Gould congratulates Minneapolis trademark partners <a href="/people/andrew-s-ehard/">Andy Ehard</a>, <a href="/people/scott-w-johnston/" target="_blank" rel="noreferrer noopener">Scott Johnston</a>, <a href="/people/brent-e-routman/">Brent Routman</a>, and <a href="/people/christopher-j-schulte/">Chris Schulte</a> on their inclusion in the 2022 edition of the WTR 1000.

<h2 class="wp-block-heading">Important Considerations About Trademarks</h2>



<h3 class="wp-block-heading">Introduction</h3>



A trademark is a word, symbol, or a combination of both, which serves to indicate that your company is the source of goods. A service mark is the same except it is for services rather than products. Trademarks are valuable assets of your company and should be protected by following the simple procedures outlined below. If you have questions about how to use trademarks or service marks, do not hesitate to get advice from experts within your company, or from your attorneys.



Some trademarks are fanciful, meaning that the words have no meaning apart from the goods or services they identify. Examples of fanciful marks are KODAK® for film, and XEROX® for copiers.



Some trademarks are arbitrary, meaning they are an ordinary word but that word has no significance with respect to the goods or services it is used on other than to identify their source. An example of an arbitrary mark is APPLE® for computers.



Some trademarks are suggestive, meaning they bring to mind some property or function of the goods they relate to. Examples of suggestive marks are ELEPHANT for floppy disks, and DIAL® for deodorant soap.



Some trademarks are descriptive, meaning they describe the goods or services, or a quality or characteristic of the goods or services involved in a manner that does not require interpretation. Descriptive marks usually may be registered or protected only upon proof of distinctiveness, i.e., by proof of considerable sales and advertising, or long-standing use. Examples of descriptive marks are AMERICAN for over-the-road trailers, and REALTOR® for real estate counseling and sales services.



Generic words, which are merely descriptive or apt common names for products or services are not protectable trademarks or service marks. Many current generic names for products were once trademarks. Examples of generic names are ASPIRIN, KEROSENE, THERMOS, and ESCALATOR. These trademarks were lost as assets for the companies that developed them when the public began to use them generically to describe the goods involved, as distinguished from a certain brand of those goods.



If your trademark or service mark becomes generic, it will no longer be the exclusive property of your company and can be used by anyone. To help ensure that your trademark property maintains its value and cannot be used by others, the simple rules inside this brochure should be followed.



<h3 class="wp-block-heading">Rules</h3>



<h4 class="wp-block-heading">1. Trademark searching and clearance can avoid problems later.</h4>



Prior to adoption and use of a trademark or service mark, steps should be taken to ensure that the mark is available for use and is not merely descriptive of the goods or services. This typically can be done quickly, and relatively inexpensively, through a computerized trademark or service mark search. Such a search entails reviewing a database which replicates the records of the United States Patent and Trademark Office for issued registrations and pending applications. Additional computer databases listing state registered marks, certain telephone directories, state corporate filings, and a wide variety of other sources may be consulted for an additional charge. Your trademark attorney will understand the information in such databases, and how current the information is.



In many cases, a “full” or “complete” search may be advisable. Such a search typically reviews federal and state registration records, and common law trade- mark uses such as certain trade directories, business name lists, domain names, and listings of certain published judicial decisions relating to relevant marks. Internet page content and International Registration information may also be included. Such a search may be a good investment as common law rights (rights acquired through use without a registration) may exist and stand in the way of acquiring rights to a mark nationwide. No search can uncover all potential types of common law trademark usage, but an appropriate search is a cost-effective way of identifying potential problems in advance. A search may be able to identify prior, common law trademark rights which could preclude your ability to use or register your proposed mark. Moreover, the search may identify a famous or well-known trademark which could form the basis for a claim that your mark is illegally diluting the famous trademark. This risk should also be considered in selecting a new mark. Identifying potential problems in advance is often the best course.



There are also various ways in which at least a preliminary availability search can be performed quite quickly for various foreign countries, and more comprehensive availability searches can be obtained from foreign associates if you are planning to enter foreign markets. It is often advisable to consider the availability of marks in foreign countries when you are considering the availability of the mark in the U.S. so that a single mark might be utilized and registered for both U.S. and foreign markets.



As a trademark user, you probably are very knowledgeable about marks used by competitors, information contained in trade directories and other sources at your disposal, and certain marketing information about your product or service. This information should be shared with your attorney for a full assessment of your situation.



<h4 class="wp-block-heading">2. Trademarks are special words which should always be used as adjectives that modify nouns.</h4>



Whether printed or spoken, your trademark should be used to modify the common descriptive name for your product or service. Examples: CHEVROLET® automobiles, SEARS® department stores, and NIKE® athletic shoes.



The word “brand” may be used to further distinguish the trademark from the noun it modifies. Examples: NUTRA-SWEET® brand sweetener and SCOTCH® brand tape.



If you are in doubt whether you have used a trademark as an adjective, try removing the trademark from the sentence. If the sentence still makes sense, you have probably used the trademark correctly. Using a trademark as a noun or as a verb is improper trademark usage.



<h4 class="wp-block-heading">3. Trademarks should be distinguished from other words in printed materials; trademarks should be capitalized, and notice should be given of their status.</h4>



To help distinguish trademarks from mere words, they should be capitalized when in print. Acceptable alternatives include placing the trademark in quotation marks or capitalizing the first letter of the mark. These rules should be followed throughout the text of a printed document. Other alternatives include italics, bold type, or contrasting colors.



Trademarks which are registered with the United States Patent and Trademark Office should include prominent use of the registration symbol ® on the shoulder of the mark. When appropriate, trademarks and service marks which are not yet federally registered may be accompanied by the TM or SM symbol, respectively. This rule should be followed at least for the first or most prominent usage of the mark in any printed material. Use of the ® symbol on products or literature distributed in countries where your mark is not registered may cause problems under local laws in those countries.



<h4 class="wp-block-heading">4. Trademarks should be used only in their exact format: a trademark should not be modified, changed, or used as a possessive noun.</h4>



It is generally improper to make changes to a trademark or logo in use. Grafting together two trademarks, adding words or letters to a trademark, and making a trademark plural or possessive with an apostrophe “s” should be avoided. If new trademarks are developed, they should be cleared for use prior to adoption, and standards should be set for how the new marks will be used. These standards should be followed consistently.



<h4 class="wp-block-heading">5. Register and maintain your trademarks; consider filing intent-to-use (“ITU”) applications to “reserve rights” in your proposed marks.</h4>



Substantial advantages flow from a federal registration of your marks in the United States. These advantages include the right to use the ® registration symbol, notice to the world of your rights, and the statutory presumption of the owner’s exclusive right to use the mark in commerce.



Registered trademarks are considered to have been constructively used nationwide as of the filing date of the application. A major benefit of registration is that rights in the mark may become incontestable after five years from registration and cannot then be challenged, even by a prior user.



It is possible to file applications based on either a bona fide intention to use the mark at a later date, or based on commercial use of the mark in commerce. If an application is filed on the basis of an intention to use the mark, actual commercial use of the mark must be commenced before U.S. registration of the mark will issue. There are certain time limits and other restrictions which apply to intent-to-use applications.



Filing an application based on commercial use of a mark, as well as maintaining or renewing a registration, requires that the mark be used in the ordinary course of trade. This normally requires full-scale, routine use. Registrations require timely filing of declarations of use, and/or renewal documents to maintain them in force. Questions about these issues in the trademark law should be directed to your attorney.



<h4 class="wp-block-heading">6. Consider registering your trademarks in foreign countries of potential interest, and as Internet domain names.</h4>



It is also possible to register trademarks in most foreign countries. Such registration can prevent difficulties in selling your goods, or providing your services, overseas. Many companies experience problems when they expand their trademark usage internationally without making adequate plans to preserve and protect their rights overseas, sometimes without even determining whether their trademarks are available to be used in determining wheth- er their trademarks are available to be used in foreign countries. Prior planning in this area is advisable and may pay significant dividends.



In many foreign countries, rights are accorded to the first to register, so it is important to file applications in foreign countries of interest before a “trade- mark pirate” does so. For those companies interested in marketing in Europe, a single European Community Trademark Application can be filed to obtain a single registration which is valid throughout the European Union. This European Community Application can be filed at a fraction of the cost of previous country-by-country filings. It is often advantageous and advisable to file foreign trademark applications within six months of filing a corresponding U.S. application, since under an International Convention, the foreign applications may then be entitled to the priority of the U.S. filing date. registrations, many companies find that registering important trademarks as internet domain names prevents others from later securing the names and blocking use of the domain name by the trademark owner. This step may be very important.



<h4 class="wp-block-heading">7. Ongoing use of each mark is important.</h4>



In the United States, ongoing use of a mark is required to maintain trademark rights. Use in the ordinary course of trade is required to obtain a federal registration. Similar use is required to maintain the registration, and continuous use for at least five years is required before a registration can become incontestable. Please keep in mind that all rights in a mark may be lost or abandoned if there is no commercial use of the mark for a long period of time (for example, three years or more), or if usage of the mark is discontinued with no intention to resume.



In most foreign countries, registrations may be successfully challenged after several years of registration if the mark has not been used in that country since the registration issued. The trademark laws of foreign countries vary considerably, and care should be taken to verify that you are suitably protect- ing your rights throughout the world.



<h4 class="wp-block-heading">8. Police and protect your trademarks and service marks.</h4>



The trademarks of your company are valuable assets. 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 is important to monitor the activities of oth- ers in your industry. This can be done by watching for the use of similar marks by competitors or by utilizing a “clipping service.” A “trademark watching” service and periodic trademark searches to monitor the state of the trademark register may be advisable for your important marks. This may include searching on the Internet. If competitors or others are using confusingly similar trademarks, it may be essential to take action to prevent infringement and the possible narrowing of your rights. In this area, it’s particularly important to seek legal advice. Failure to police your trademark rights may result in the loss of those rights. Merchant &amp; Gould provides this service, on request, for a modest fee.



<h4 class="wp-block-heading">9. Appoint a responsible person within your organization to supervise your trademarks.</h4>



It makes sense to take good care of your trademarks and service marks. For many companies, a trademark can be one of its most valuable assets, which can last forever if properly used and maintained. In order to make sure that good usage practices are uniformly followed, a trademark supervisor or coor- dinator should be appointed. This person should review advertising, packaging, and other documentation before distribution for compliance with these rules. The trademark coordinator can also serve as the initial contact for others within the organization who have questions.



The trademark coordinator should also perform periodic audits to monitor compliance with these rules, monitor the volume and possible changing nature of the trademark “usage,” and verify that any necessary registration renewals or new filings are brought to the attention of the attorneys.



<h4 class="wp-block-heading">10. Internet Considerations</h4>



The Internet presents several unique concerns to trademark owners. Most companies find that owning top-level domain names for each of their principal brands helps reduce problems. Periodic review of the Internet, both for conflicting domain names, metatags and content can identify issues and aid in policing infringers. Keep in mind that the Internet easily crosses international borders, and U.S. trademark law does not automatically apply on the Internet. Your own Internet site may create concerns and should be carefully prepared to confirm compliance with local and international laws.



<figure class="wp-block-table aligncenter" style="margin-top:var(--wp--preset--spacing--60);margin-right:var(--wp--preset--spacing--60);margin-bottom:var(--wp--preset--spacing--60);margin-left:var(--wp--preset--spacing--60);padding-top:var(--wp--preset--spacing--30);padding-right:var(--wp--preset--spacing--30);padding-bottom:var(--wp--preset--spacing--30);padding-left:var(--wp--preset--spacing--30)"><table><tbody><tr><td class="has-text-align-left" data-align="left"><img decoding="async" loading="lazy" width="970" height="970" class="wp-image-22398" style="width: 150px;" src="https://admin.merchantgould.com/wp-content/uploads/2023/06/TM.png" alt="" srcset="https://admin.merchantgould.com/wp-content/uploads/2023/06/TM.png 970w, https://admin.merchantgould.com/wp-content/uploads/2023/06/TM-300x300.png 300w, https://admin.merchantgould.com/wp-content/uploads/2023/06/TM-150x150.png 150w, https://admin.merchantgould.com/wp-content/uploads/2023/06/TM-768x768.png 768w, https://admin.merchantgould.com/wp-content/uploads/2023/06/TM-800x800.png 800w" sizes="(max-width: 970px) 100vw, 970px" /></td><td class="has-text-align-left" data-align="left">This symbol is used to designate a trademark registered in the U.S. Patent and Trademark Office.</td></tr><tr><td class="has-text-align-left" data-align="left"><img decoding="async" loading="lazy" width="970" height="970" class="wp-image-22397" style="width: 150px;" src="https://admin.merchantgould.com/wp-content/uploads/2023/06/CircleR.png" alt="" srcset="https://admin.merchantgould.com/wp-content/uploads/2023/06/CircleR.png 970w, https://admin.merchantgould.com/wp-content/uploads/2023/06/CircleR-300x300.png 300w, https://admin.merchantgould.com/wp-content/uploads/2023/06/CircleR-150x150.png 150w, https://admin.merchantgould.com/wp-content/uploads/2023/06/CircleR-768x768.png 768w, https://admin.merchantgould.com/wp-content/uploads/2023/06/CircleR-800x800.png 800w" sizes="(max-width: 970px) 100vw, 970px" /></td><td class="has-text-align-left" data-align="left">This symbol may be used to indicate that the user considers a word, combination of words or logos to be a trademark.</td></tr></tbody></table></figure>



This brochure is intended to provide general information about trademarks. It should not be relied upon as legal advice and is not a substitute for consultation with a lawyer. Since no brief publication can cover all the complexities of trademark law, you should seek advice, using this guide as a discussion tool.

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