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

Litigation

Pending Trademark Applications & Litigation

It seems axiomatic that a federal district court has jurisdiction to decide whether a pending federal trademark application can be registered or not. Yet, the truth is a federal district court only has power over pending federal trademark applications under certain circumstances.

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How a Consent Agreement Won Me a Case

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 the USPTO may not be bound by that private contract when making likelihood of confusion determinations, the parties to that private contract are bound by it. To exemplify this difference, I am going to recount a case that I litigated for about two years, including a Ninth Circuit appeal, that was ultimately won based on a consent agreement that was assigned to my client. Once upon a time ...

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Old Man on a Scooter. Can you prove seniority under common law?

This is the fourth post on proving common law trademark rights. In order to prove common law rights, you need to establish (1) seniority, (2) market penetration, and (3) natural zone of expansion. Some courts also let you use reputation theory instead of market penetration. All these topics have been covered except seniority.

For some reason, I didn’t start this series of posts with seniority. But now I’m circling back to the beginning and addressing seniority. It’s the first thing you need to establish to prove common law rights. But what does it take to establish seniority?

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featured image for blog post on reputation theory as a basis for common law trademark rights

This is the third blog post in a four part series on the difficulty of proving common law trademark rights in trademark litigation. Originally, I had only planned on three posts covering (1) seniority, (2) market penetration, and (3) natural zone of expansion. But in researching and preparing these blog posts, every so often a federal court would reference reputation theory in its opinion. For completeness, I decided to add a fourth post on reputation theory—a very murky theory that may or may not provide another basis for claiming common law trademark rights.

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Ivy growing on a wall

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 more markets, your next task is to try to expand your common law trademark rights beyond just the markets in which you were able to prove market penetration. This takes us to the common law principle of natural zone of expansion. Unfortunately, federal courts are pretty stingy when it comes to a common law trademark owner’s natural zone of expansion, leading once again to the inescapable conclusion that you should federally register your trademark if you can.

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