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

featured image for blog post on reputation theory as a basis for common law trademark rights

This is the third blog post in a four part series on the difficulty of proving common law trademark rights in trademark litigation. Originally, I had only planned on three posts covering (1) seniority, (2) market penetration, and (3) natural zone of expansion. But in researching and preparing these blog posts, every so often a federal court would reference reputation theory in its opinion. For completeness, I decided to add a fourth post on reputation theory—a very murky theory that may or may not provide another basis for claiming common law trademark rights.

continue reading→

Ivy growing on a wall

In my last blog post, I discussed how difficult it is to rely on common law trademark rights because of the requirement to prove market penetration. Continuing with this same theme, it doesn’t get any easier after you’ve proven market penetration. After you’ve established common law trademark rights by proving market penetration in one or more markets, your next task is to try to expand your common law trademark rights beyond just the markets in which you were able to prove market penetration. This takes us to the common law principle of natural zone of expansion. Unfortunately, federal courts are pretty stingy when it comes to a common law trademark owner’s natural zone of expansion, leading once again to the inescapable conclusion that you should federally register your trademark if you can.

continue reading→

Photo of man pushing rock uphill symbolizing uphill battle with common law trademarks

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 does that even mean anyway? And why is it so great? Because if you don't have a federal trademark registration and you are relying only on your common law trademark rights, you are going to have to deal with a big freaking headache: proving market penetration in order to establish your common law trademark rights in a geographic area.

continue reading→

Picture of a server room with text "trademark counsel's 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 know these rules because they are easy to run afoul of and, in fact, most trademark owners and their counsel are not fully complying with litigation hold requirements. Litigation holds are not being implementing early enough (or, in some cases, at all), are not being implemented properly, and are not being monitored for compliance. continue reading→

This image consists of a figurine of a man reading a paper standing on fine print (like a disclaimer). The text on the image reads "Disclaimers - Do they prevent trademark confusion?" The image also contains the Trademark Well logo.

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 that I saw in souvenir shops across Barcelona. In case you don't know, I'm talking about the Caganer figurines.

Back to trademark law. Let's talk disclaimers. Do they prevent confusion? continue reading→