Posts by Bruno Tarabichi

Trademarked Keywords: Am I Infringing or Not?

What’s the deal with buying or selling someone’s trademark as a keyword? Is it allowed? Or is it trademark infringement? There used to be a lot of debate about this issue. It’s still not entirely settled and the answer is very dependent on the facts of the case. But there is a lot more clarity…

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The 2016 FRCP Amendments: The End of the Email Extension Era

On December 1, 2016, the 2016 amendments to the Federal Rules of Civil Procedure (“FRCP”) went into effect. The 2016 amendments are much simpler and less impactful than the 2015 amendments. In fact, only three rules were amended – FRCP 4, 6, and 82. And of the three rules, the amendments to FRCP 4 and…

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What Does Advice of Counsel Get You in a Trademark Case?

Throwing your counsel under the bus to save yourself, which is also known as the advice of counsel defense. It gets a lot more play in patent infringement cases, but the defense is available in trademark infringement cases too. It’s just not invoked as often in trademark cases. Here’s what we’ve learned from when it…

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Likelihood of Confusion Tests by Circuit

Each of the 13 federal courts of appeal have their own test for evaluating whether a likelihood of confusion exists between two trademarks. Although the tests are not identical, most of them are substantially similar and use many of the same factors. And the factors are non-exclusive.  For ease of reference, I decided to identify the…

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The Zen of Legal Aggression

“Only when you can be extremely pliable and soft can you be extremely hard and strong.” – Zen Proverb Zen is a practice that needs to be experienced, which makes it hard to define. But you can zenify just about everything and anything. As an attorney, one thing I love to zenify is legal aggression. Once…

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On Trademark Cease and Desist Letters: Strategies & Considerations

Trademark cease and desist letters are a crucial part of a trademark attorney’s arsenal. Granted, they seem simple and straightforward. However, when you dig beneath the surface, they are deceivingly complex. When a trademark owner undertakes the task of sending a demand letter without counsel, many important strategic and substantive legal issues are not vetted.…

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