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

TTAB causes of action: lining up the chess pieces

Systems are incredibly powerful in the practice of law. By system, I mean a set of detailed methods, procedures, and routines used to perform an activity. When it comes to filing a notice of opposition or petition for cancellation or counterclaims in a Trademark Trial and Appeal Board ("TTAB") proceeding, I have a very simple system that I use to make sure that I am not omitting any causes of action. OK - it's really just a checklist, but it is very effective. At the end of this blog post, you'll have an opportunity to download a copy of the checklist. Let's review the available causes of action in TTAB proceedings. continue reading→

The Trademark Company: A Cautionary Tale

George: I got greedy. Flew too close to the
sun on wings of pastrami.
Jerry: Yeah, that's what you did . . .
- Seinfeld, Episode #904 "The Blood"

Matthew Swyers is done—at least for five years, maybe forever. It didn't matter that Swyers was a former Trademark Examining Attorney at the U.S. Patent and Trademark Office ("USPTO") from December 2000 through September 2002 (or maybe that made it matter more). The USPTO got their man, even if he was formerly one of their own. I don't take any pleasure in the misfortunes of others (although I know a lot of others are taking satisfaction in his comeuppance). That's not why I'm writing this blog post. I'm writing it because I think it's fascinating and I wanted to learn more about what happened and why. Like most attorneys practicing trademark law before the USPTO, I'm not very familiar with the Office of Enrollment and Discipline ("OED") or exclusions on consent—why would I be? So a look into the downfall of Swyers was educational, even if I was left with a few unanswered questions.

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California cannabis trademarks in 2018?

On November 8, 2016, California voters approved Proposition 64, the Adult Use of Marijuana Act ("AUMA"). And on December 12, 2016, Assembly Bill No. 64 ("AB 64") was introduced in the California Legislature. Although the AB 64 is still in its early stages and has a ways to go before being passed by the California Legislature and approved by the Governor, it has some important consequences for recreational and medical marijuana businesses who want to protect their trademarks. continue reading→

Photo of mobile app icons

When I was hunting and pecking for particular apps on my iPad the other night, I suddenly became consciously aware of the powerful branding association created by app icons. I suppose I already knew this even if I wasn't thinking about it before. Literally, when I think of Netflix, I picture the app icon with the red stylized N and black background (the most current app icon). It's the very first thing I think of. It's what I search for and tap on before joining Pablo in Narcos. Same goes for all the other apps I use on a consistent basis—especially services that I only use through an app like Netflix (in contrast, I tend to use Freshbooks and Twitter more through their websites than apps on my iPhone or iPad). Nevertheless, despite the visibility and recognition of these app icons as trademarks that actually get tapped on by consumer fingers, the majority of app icons have not yet been registered as trademarks (I went through a lot of the app icons on my phone out of curiosity and most had not been registered). It's time for app providers to seriously consider registering app icons as trademarks ASAP. continue reading→

Image of Two People About to Shake Hands with Text That says Make Sure you Address Attorneys' Fees in Settlement Agreements

Sometimes when you're negotiating, drafting, and revising a settlement agreement, you include language just because the language was contained in a sample or template. This is especially so when you're a new attorney. One provision that I frequently came across in different settlement agreements was a provision that each party shall bear their own costs and attorneys' fees. It is simple and straightforward on its face, and I never thought it merited much billable time. If the provision was in the settlement agreement, I usually left it there (unless the parties had agreed that one party was going to pay for the other's costs or fees). If the provision was not in the settlement agreement, I wasn't majorly concerned about it because obviously the parties were going to bare their own costs and fees absent some provision in the settlement agreement saying otherwise. But it's actually an important provision because ... continue reading→