Archive for 2017

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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Natural Zone of Expansion: A Misnomer That Should Send You Running to Federally Register Your Trademark

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…

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Trademark Disputes, Litigation Holds, and the 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…

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