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

February 2017

Picture of Keyboard with Yellow Envelope and Text "FRCP 2016 Amendments"

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 82 don't so much change anything as they do clarify. The biggest change is the amendment to FRCP 6 that eliminates the three day extension of time for service made electronically (i.e., by email). Waive bye-bye to those three beautiful, precious days.

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It doesn't matter what I believe. It only matters what I can prove.
So don't tell me what I know or don't know. I know the LAW!
- Lieutenant Daniel Kaffee in A Few Good Men

In 2015, the Federal Circuit examined what is required for a trademark applicant to prove that it had a bona fide intention to use a trademark in commerce when filing a trademark application on an intent-to-use ("ITU") basis under 15 U.S.C. § 1051(b)(1). M.Z. Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015). In reviewing the legislative history of the Trademark Law Revision Act of 1988 ("TLRA"), the Federal Circuit held that an applicant's subjective belief is not enough. In other words, a trademark applicant cannot satisfy the standard by just submitting a declaration or otherwise testifying that "at the time I filed the trademark application, I did truly intend to use the trademark." Yet most ITU applicants, and their counsel, don't know or consider what may be required to prove a bona fide intention to use should the issue ever be litigated in a Trademark Trial and Appeal Board ("TTAB") proceeding or in court. Let's take a look at what principles we can extract from M.Z. Berger and subsequent cases. continue reading→

Relying on Advice of Counsel in a Trademark Case

Throwing your counsel under the bus to save yourself, which is also known as the advice of counsel defense. It gets a lot more play in patent infringement cases, but the defense is available in trademark infringement cases too. It's just not invoked as often in trademark cases. Here's what we've learned from when it has been invoked. continue reading→

Map of Federal Appellate Circuits

Each of the 13 federal courts of appeal have their own test for evaluating whether a likelihood of confusion exists between two trademarks. Although the tests are not identical, most of them are substantially similar and use many of the same factors. And the factors are non-exclusive.  For ease of reference, I decided to identify the test used within each Circuit and set forth the factors in one convenient location, namely, this post. continue reading→