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

Trademark Application

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→

It doesn't matter what I believe. It only matters what I can prove.
So don't tell me what I know or don't know. I know the LAW!
- Lieutenant Daniel Kaffee in A Few Good Men

In 2015, the Federal Circuit examined what is required for a trademark applicant to prove that it had a bona fide intention to use a trademark in commerce when filing a trademark application on an intent-to-use ("ITU") basis under 15 U.S.C. § 1051(b)(1). M.Z. Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015). In reviewing the legislative history of the Trademark Law Revision Act of 1988 ("TLRA"), the Federal Circuit held that an applicant's subjective belief is not enough. In other words, a trademark applicant cannot satisfy the standard by just submitting a declaration or otherwise testifying that "at the time I filed the trademark application, I did truly intend to use the trademark." Yet most ITU applicants, and their counsel, don't know or consider what may be required to prove a bona fide intention to use should the issue ever be litigated in a Trademark Trial and Appeal Board ("TTAB") proceeding or in court. Let's take a look at what principles we can extract from M.Z. Berger and subsequent cases. continue reading→

Trademark Attorney's Checklist

This post is definitely basic. Some of these posts on Trademark Well are gonna be basic posts intended for laypersons with no trademark knowledge or experience. Attention trademark lawyers—you can probably skip this post.

But this is a good post for trademark owners trying to do the trademark thing on their own. This basic post sets out a checklist that you can follow when choosing a new trademark. The checklist is obscenely obvious. Therefore, it is a basic checklist. continue reading→