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The Productive Lawyer 01: Clear to Neutral

  Lately, I’ve been noodling about how to become more productive. My law practice has become quite busy (with an honorable mention to my personal life). Unfortunately, this blog has been one of the casualties. Last year, blog posts were consistently published on a weekly basis. This year I have only published two posts to…

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In re I-Coat: Internet Evidence in Ex Parte Proceedings

Less than two weeks ago, the Trademark Trial and Appeal Board (“TTAB”) issued its precedential decision in In re I-Coat Company, LLC. The case involved I-Coat’s appeal from the U.S. Patent and Trademark Office’s (“USPTO”) refusal to register its three trademark applications for INDIGO for corrective lenses based on a likelihood of confusion with Schwabe…

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Do Federal Courts Have Jurisdiction Over Pending Trademark Applications? Sometimes …

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 I Used a Consent Agreement To Win a Trademark Infringement Lawsuit

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…

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The USPTO Is Dropping the Hammer on Consent Agreements Since In re Bay State Brewing

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”)…

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The Death of a Trademark Registration Kills All Statutory Evidentiary Presumptions

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…

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