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

Pending Trademark Applications & Litigation

It seems axiomatic that a federal district court has jurisdiction to decide whether a pending federal trademark application can be registered or not. Yet, the truth is a federal district court only has power over pending federal trademark applications under certain circumstances.

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How a Consent Agreement Won Me a Case

In my last blog post, I discussed how the U.S. Patent and Trademark Office ("USPTO") has been dealing with trademark consent agreements. This post views consent agreements from a different perspective, a litigant's perspective. It's important to differentiate between these two different contexts. Remember, a trademark consent agreement is just a private contract. And while the USPTO may not be bound by that private contract when making likelihood of confusion determinations, the parties to that private contract are bound by it. To exemplify this difference, I am going to recount a case that I litigated for about two years, including a Ninth Circuit appeal, that was ultimately won based on a consent agreement that was assigned to my client. Once upon a time ...

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Photo of ants on opposite sides of a bamboo stick

A consent agreement is exactly what it sounds like. It’s an agreement in which a party consents to the use and registration of the other party’s trademark. Usually, the agreement is bilateral with both parties consenting to the other’s use and registration.

Consent agreements are usually submitted to the U.S. Patent and Trademark Office (“USPTO”) to overcome an office action refusing registration because of a § 2(d) likelihood of confusion with a prior registration or prior pending application. Most of the time, a consent agreement is sufficient to overcome a § 2(d) likelihood of confusion refusal, but the USPTO is not obligated to withdraw the refusal.

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Picture of Registration Symbol Being Destroyed

The last four posts covered the importance of obtaining a trademark registration by pointing out how difficult it is to prove common law rights in trademark litigation. On the heels of those posts, I decided to write this short post on the importance of not letting your trademark registration lapse or be cancelled. It dovetails nicely because, once the registration is cancelled, the statutory presumptions are extinguished and a trademark owner will find itself back in the same situation discussed in the preceding four posts.

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Old Man on a Scooter. Can you prove seniority under common law?

This is the fourth post on proving common law trademark rights. In order to prove common law rights, you need to establish (1) seniority, (2) market penetration, and (3) natural zone of expansion. Some courts also let you use reputation theory instead of market penetration. All these topics have been covered except seniority.

For some reason, I didn’t start this series of posts with seniority. But now I’m circling back to the beginning and addressing seniority. It’s the first thing you need to establish to prove common law rights. But what does it take to establish seniority?

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