the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

Photo of man pushing rock uphill symbolizing uphill battle with common law trademarks

There a real advantages to federally registering your trademark. Unfortunately, those advantages are usually described in vague legal terms that may not mean much. The practical import is missing, and the benefit of federal registration cheapened. For example, one of the benefits of federal registration that gets touted is constructive nationwide use. So what? What does that even mean anyway? And why is it so great? Because if you don't have a federal trademark registration and you are relying only on your common law trademark rights, you are going to have to deal with a big freaking headache: proving market penetration in order to establish your common law trademark rights in a geographic area.

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Picture of a server room with text "trademark counsel's duty to preserve"

The legal principles relating to litigation holds are not trademark specific. But it is clear that the rules requiring a party and its counsel to implement a litigation hold apply equally to trademark infringement litigation. These are rules that a trademark owner and its trademark counsel—both trademark prosecution and trademark litigation counsel—should know. They should know these rules because they are easy to run afoul of and, in fact, most trademark owners and their counsel are not fully complying with litigation hold requirements. Litigation holds are not being implementing early enough (or, in some cases, at all), are not being implemented properly, and are not being monitored for compliance. continue reading→

This image consists of a figurine of a man reading a paper standing on fine print (like a disclaimer). The text on the image reads "Disclaimers - Do they prevent trademark confusion?" The image also contains the Trademark Well logo.

After a mini hiatus (due mainly to the INTA 2017 Annual Meeting madness in Barcelona), the Trademark Well blog posts are back on track. But that doesn't mean the impact of Barcelona isn't still being felt. Like in this post's featured image, for example. It's a tip of the cap to all those strange figurines that I saw in souvenir shops across Barcelona. In case you don't know, I'm talking about the Caganer figurines.

Back to trademark law. Let's talk disclaimers. Do they prevent confusion? continue reading→

A man staring at a question mark and the words "Types of Confusion: confused about confusion?"

Trademark infringement requires a likelihood of confusion. But what kind of confusion is required? Turns out, confusion has come a long way since 1962.

In 1962, 15 U.S.C. § 1052 was amended to delete the word "purchasers" from the phrase "likely to cause confusion, or to cause mistake, or to deceive purchasers." In addition, 15 U.S.C. § 1114 was amended to delete the phrase "as to the source of origin." These changes broadened actionable confusion to the use of any trademarks that were likely to cause confusion, mistake, or deception of any kind, not just confusion of purchasers or confusion as to source of origin. Since then, federal courts have recognized various types of actionable confusion. continue reading→

A picture of a California beach with text that reads "How to file a California trademark"

Although most businesses opt to file a federal trademark application with the U.S. Patent and Trademark Office ("USPTO"), not every trademark owner qualifies for federal registration. The trademark owner may not be making use of its mark in interstate commerce. There may be an existing federal registration preventing the trademark owner from registering at the federal level. Or maybe the trademark owner wants to take a belt and suspenders approach to its trademark portfolio and support its federal registration with a California state trademark registration. Whatever the reason—how do you file a trademark application in California? continue reading→