Posts by Bruno Tarabichi
Proving Market Penetration: Another Reason to Federally Register Your Trademark
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…
Read MoreTrademark Disputes, Litigation Holds, and the 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…
Read MoreDisclaimers: Can You Really Disclaim Confusion To Avoid Trademark Infringement?
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…
Read MoreThe Different Types of Confusion That Can Support Trademark Infringement
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…
Read MoreHow to File a California State Trademark Application
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…
Read MoreYou’ll Probably Never Litigate 15 U.S.C. § 1121(b) But There’s Only Been a Handful of Cases That Have
Like many trademark practitioners, I cite Section 39(a) of the Lanham Act, aka 15 U.S.C. § 1121(a), routinely in jurisdictional statements. And every time I take a refresher and peek at the statutory section, Section (b) piques my interest. So what’s the story on § 1121(b)? Turns out, it’s a short story with little case law…
Read MoreAttorneys Signing Trademark Application Papers: Is the Fear of Becoming a Witness and Being Disqualified Overblown?
Trademark applications need to be signed. Other documents in the trademark prosecution process—like statements of use, § 8 declarations of use, § 9 renewals—need to be signed. And the rules are clear that the attorney of record can sign those documents on behalf of the applicant. Yet, many trademark attorneys have a strict policy against…
Read MoreResponding to Trademark Infringement Cease and Desist Letters: Strategies & Considerations
This post lives on the other side of the coin from my prior blog post entitled “On Trademark Cease and Desist Letters: Strategies & Considerations.” Responding to a trademark cease and desist letter is an art form. The nature of, and strategy behind, the response will vary depending on the facts and circumstances. Here are…
Read MoreHow to Make Sure You Don’t Overlook a Claim in a TTAB Opposition or Cancellation
Systems are incredibly powerful in the practice of law. By system, I mean a set of detailed methods, procedures, and routines used to perform an activity. When it comes to filing a notice of opposition or petition for cancellation or counterclaims in a Trademark Trial and Appeal Board (“TTAB”) proceeding, I have a very simple…
Read MoreThe Company You Keep: A Look at How The USPTO Took Down The Trademark Company’s Matthew Swyers
George: I got greedy. Flew too close to the sun on wings of pastrami. Jerry: Yeah, that’s what you did . . . – Seinfeld, Episode #904 “The Blood” Matthew Swyers is done—at least for five years, maybe forever. It didn’t matter that Swyers was a former Trademark Examining Attorney at the U.S. Patent and…
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