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

Trademark Application

Less than two weeks ago, the Trademark Trial and Appeal Board (“TTAB”) issued its precedential decision in In re I-Coat Company, LLC. The case involved I-Coat’s appeal from the U.S. Patent and Trademark Office’s (“USPTO”) refusal to register its three trademark applications for INDIGO for corrective lenses based on a likelihood of confusion with Schwabe & Baer’s registered INDIGO and INDIGOSNOW trademarks for glasses and ski goggles. While the TTAB affirmed the USPTO’s § 2(d) likelihood of confusion refusal, the decision is more important because the TTAB took the time to clarify the requirements for introducing and relying on Internet evidence during ex parte proceedings before the USPTO. continue reading→

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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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→

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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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→