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

Defenses

This image consists of a figurine of a man reading a paper standing on fine print (like a disclaimer). The text on the image reads "Disclaimers - Do they prevent trademark confusion?" The image also contains the Trademark Well logo.

After a mini hiatus (due mainly to the INTA 2017 Annual Meeting madness in Barcelona), the Trademark Well blog posts are back on track. But that doesn't mean the impact of Barcelona isn't still being felt. Like in this post's featured image, for example. It's a tip of the cap to all those strange figurines that I saw in souvenir shops across Barcelona. In case you don't know, I'm talking about the Caganer figurines.

Back to trademark law. Let's talk disclaimers. Do they prevent confusion? 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→

Trademark lawyers wax eloquent about the significant benefits of federally registering a trademark with the U.S. Patent and Trademark Office. Federal courts do too. And one of the benefits touted is the federal registration defense to state dilution claims provided by Lanham Act § 43(c)(6), 15 U.S.C. § 1125(c)(6).  In fact, in its recently well-publicized decision in In re Tam (which has nothing to do with the defense), the Federal Circuit listed the defense as one of the important legal rights and benefits conferred on trademark owners who register their marks.  In re Tam, 808 F.3d 1321, 1329 (Fed. Cir. 2015) (“registration operates as a complete defense to state or common law claims of trademark dilution”). But this “important” defense afforded by registration hasn’t been treated as such. It’s been chipped away at, and there’s not much left to rely on. Significant limitations have been placed on this supposed significant benefit. continue reading→