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


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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Picture of Mailboxes along Route 66 with text reading "The Trademark Cease and Desist Letter - Strategies & Considerations"

Trademark cease and desist letters are a crucial part of a trademark attorney's arsenal. Granted, they seem simple and straightforward. However, when you dig beneath the surface, they are deceivingly complex. When a trademark owner undertakes the task of sending a demand letter without counsel, many important strategic and substantive legal issues are not vetted. The same goes for using an attorney who does not specialize in trademark law to send the cease and desist letter. This post is here to help. Use it as a resource to check off items that you should consider when sending a trademark cease and desist letter.

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Conception of a Trademark

Back to back blog posts inspired by clients' FAQs. Sounds like a new blog category or tag is in order.

Last week, I got a call from a potential client. The issue is one that I'm asked about at least 10 times a year. The potential client was going to start a business with a friend of his (former friend now). Things went south. The friend started his own company and is using a trademark that the potential client had come up with. The potential client never filed a trademark application, never used the trademark, and had no agreement in place with the friend regarding the trademark. The potential client wants to sue the former friend for stealing the trademark and using it. Of course, there are different variations on this set of facts but, in all scenarios, the common component is that the client wrongly believes that he or she owns the trademark because he or she invented the trademark. The client's belief is misplaced. continue reading→