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

February 2016

Conception of a Trademark

Back to back blog posts inspired by clients' FAQs. Sounds like a new blog category or tag is in order.

Last week, I got a call from a potential client. The issue is one that I'm asked about at least 10 times a year. The potential client was going to start a business with a friend of his (former friend now). Things went south. The friend started his own company and is using a trademark that the potential client had come up with. The potential client never filed a trademark application, never used the trademark, and had no agreement in place with the friend regarding the trademark. The potential client wants to sue the former friend for stealing the trademark and using it. Of course, there are different variations on this set of facts but, in all scenarios, the common component is that the client wrongly believes that he or she owns the trademark because he or she invented the trademark. The client's belief is misplaced. continue reading→

Back in the Medinol days, a claim for fraud on the U.S. Patent and Trademark Office ("USPTO") was a player in Trademark Trial and Appeal Board ("TTAB") proceedings. Parties were alleging fraud left and right: the applicant or registrant knew or should have known this or that. But as we all know, the Federal Circuit put that all to bed when it issued In re Bose on August 31, 2009, holding that "should have known" is not the appropriate standard for fraud on the USPTO. Rather, there has to be subjective intent to deceive—regardless of how difficult that may be to prove. Oh, and don't forget that a party alleging fraud bears a heavy burden of proving fraud "to the hilt" with clear and convincing evidence. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). continue reading→