In 2009, through a serendipitous chain of events involving what amounted to a nuisance lawsuit over a trademark, I met Roberta Jacobs-Meadway, partner in the Philadelphia-based ip law firm Eckert Seamans. She was hired to handle our defense. The lawsuit was a distraction. Meeting our defense counsel and her team was an attraction.

Bobbi, a gifted trial attorney, displayed the legal knowledge, advocacy skills, and the experience of the finest practitioners. She and her colleagues handled the plaintiffs with the air of Red Adair extinguishing and capping a blazing, erupting oil well.

After the case was over, I asked Bobbi to contribute some advice to this chapter. So here are Bobbi’s Traps and Tips.

Beware of fraud on the Trademark Office. An application may be void and a registration subject to cancellation if goods identified in the application/registration have not been sold before the declaration of use is made, even if other goods have been sold under the mark and even if the goods are sold after the date of the declaration of use.

Beware of the naked license. Trademark rights can be lost if there is no control over the nature and extent of use of the mark by permitted users.

Beware of abandonment. Three years nonuse gives rise to a presumption of abandonment of rights, but rights in a mark can be lost if the mark is still in use but the form is altered over time. That is, if the mark is registered in special form and the form changes, the registration may not be able to be maintained, and the rights provided by registration will then be lost.

Beware of the territorial nature of trademark rights. Having a mark protected in the United States provides no rights in countries where the goods may be manufactured. If another owns the mark in China or India or Brazil, barriers may be raised to manufacture and export, as well as to sell in that jurisdiction.

Beware of inadvertent infringement. Rights can be acquired based on the filing of an intent to use application with no market presence. Trademark infringement is not an intentional tort. Willfulness may impact on the quantum of damage, but not on the availability of damages or injunctive relief. Common law rights may be claimed in nontraditional trademarks, including sounds, colors, product configurations, and packaging.

Things to do to avoid issues later:

Do a reasonable trademark search before becoming wedded to a name. Don’t look only at the Trademark Office website, although that is a good place to start. Spend some time in the marketplace getting a sense of what is there, how it is displayed, what it is called, and how else it can be identified.

Think creatively about what may be subject to intellectual property protection. Protection can be layered, and the same article may be subject to protection under copyright, trademark, trade dress, patent, design, utility, and publicity rights. If you would be upset if some aspect were copied, look for some means of protection.

Act early to protect intellectual property rights. Trademark applications can be filed on the basis of intent to use. Copyright applications can be made for unpublished works. Patent rights can be lost if you wait too long to file for protection.

Ignore the urban myths. No rights are secured by mailing the work to yourself in a certified envelope. And there’s no right to copy any particular number of words or notes or images.

Have written agreements in place with anyone who is working on the project and has any creative input. Make certain it is clear who owns what, who can do what, what payments are owed, and who’s responsible for what. Understand with any person who is going to participate in the project what the cost is of getting involved, what the cost is of being involved, and what the cost is of getting out of the deal. Finally, pay attention to intellectual property issues involving indemnifications, warranties, and insurance.