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

May 2017

A man staring at a question mark and the words "Types of Confusion: confused about confusion?"

Trademark infringement requires a likelihood of confusion. But what kind of confusion is required? Turns out, confusion has come a long way since 1962.

In 1962, 15 U.S.C. § 1052 was amended to delete the word "purchasers" from the phrase "likely to cause confusion, or to cause mistake, or to deceive purchasers." In addition, 15 U.S.C. § 1114 was amended to delete the phrase "as to the source of origin." These changes broadened actionable confusion to the use of any trademarks that were likely to cause confusion, mistake, or deception of any kind, not just confusion of purchasers or confusion as to source of origin. Since then, federal courts have recognized various types of actionable confusion. continue reading→

A picture of a California beach with text that reads "How to file a California trademark"

Although most businesses opt to file a federal trademark application with the U.S. Patent and Trademark Office ("USPTO"), not every trademark owner qualifies for federal registration. The trademark owner may not be making use of its mark in interstate commerce. There may be an existing federal registration preventing the trademark owner from registering at the federal level. Or maybe the trademark owner wants to take a belt and suspenders approach to its trademark portfolio and support its federal registration with a California state trademark registration. Whatever the reason—how do you file a trademark application in California? continue reading→

15 USC Section 1121(b)

Like many trademark practitioners, I cite Section 39(a) of the Lanham Act, aka 15 U.S.C. § 1121(a), routinely in jurisdictional statements. And every time I take a refresher and peek at the statutory section, Section (b) piques my interest. So what's the story on § 1121(b)? Turns out, it's a short story with little case law interpreting it. continue reading→

Disqualification of Trademark Attorney

Trademark applications need to be signed. Other documents in the trademark prosecution process—like statements of use, § 8 declarations of use, § 9 renewals—need to be signed. And the rules are clear that the attorney of record can sign those documents on behalf of the applicant.

Yet, many trademark attorneys have a strict policy against signing any trademark application documents on behalf of their clients. That policy is based on the concern that, by signing such documents, the attorney can be considered a witness and might even be disqualified. But how much of a concern should this really be? Turns out it is probably very unlikely that anything will come of it. continue reading→