News & Recent Developments

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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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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Yosemite Trademark Spat Leads to Enactment of California Heritage Protection Act

On January 1, 2017, the California Heritage Protection Act (“CHPA”) went into effect. Boiled down to its essence, the CHPA prohibits concessionaires at California’s state parks from claiming trademark rights in names associated with a California state park venue or its historical, cultural, or recreational resources. The CHPA, and the very specific fact scenario it…

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Evaluating the Unauthorized Practice of Law When Running a Nationwide / Multijurisdictional Trademark Practice

In today’s world, most trademark attorneys’ practice is nationwide. They have clients located in other states. They have to litigate in other states. When a trademark attorney has a multijurisdictional practice, it can create problems when it comes to the rules prohibiting the unauthorized practice of law. In this blog post, I’ll identify some of…

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How to Argue That There is No Likelihood of Confusion Due to a Crowded Field After the Federal Circuit’s Decision in Juice Generation v. GS Enterprises

Whether trying to overcome a likelihood of confusion refusal by an examining attorney or litigating a Section 2(d) likelihood of confusion claim in an opposition proceeding, arguing that there is no likelihood of confusion due to a crowded field (many similar marks in use for similar goods or services) has pretty much been hit or…

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TTAB Decisions May Give Rise to Issue Preclusion in District Courts: the Impact of the U.S. Supreme Court's Decision in B&B Hardware

On March 24, 2015, the United States Supreme Court issued its decision in B&B Hardware, Inc. v. Hargis Industries, Inc., a case that involved the question of whether a decision by the Trademark Trial and Appeal Board (“TTAB”) finding likelihood of confusion could preclude Hargis from contesting likeliood of confusion in federal district court. In short,…

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