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Trademark Litigation

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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A man staring at a question mark and the words "Types of Confusion: confused about confusion?"

Trademark infringement requires a likelihood of confusion. But what kind of confusion is required? Turns out, confusion has come a long way since 1962.

In 1962, 15 U.S.C. § 1052 was amended to delete the word "purchasers" from the phrase "likely to cause confusion, or to cause mistake, or to deceive purchasers." In addition, 15 U.S.C. § 1114 was amended to delete the phrase "as to the source of origin." These changes broadened actionable confusion to the use of any trademarks that were likely to cause confusion, mistake, or deception of any kind, not just confusion of purchasers or confusion as to source of origin. Since then, federal courts have recognized various types of actionable confusion. continue reading→

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→

TTAB causes of action: lining up the chess pieces

Systems are incredibly powerful in the practice of law. By system, I mean a set of detailed methods, procedures, and routines used to perform an activity. When it comes to filing a notice of opposition or petition for cancellation or counterclaims in a Trademark Trial and Appeal Board ("TTAB") proceeding, I have a very simple system that I use to make sure that I am not omitting any causes of action. OK - it's really just a checklist, but it is very effective. At the end of this blog post, you'll have an opportunity to download a copy of the checklist. Let's review the available causes of action in TTAB proceedings. continue reading→

Image of Two People About to Shake Hands with Text That says Make Sure you Address Attorneys' Fees in Settlement Agreements

Sometimes when you're negotiating, drafting, and revising a settlement agreement, you include language just because the language was contained in a sample or template. This is especially so when you're a new attorney. One provision that I frequently came across in different settlement agreements was a provision that each party shall bear their own costs and attorneys' fees. It is simple and straightforward on its face, and I never thought it merited much billable time. If the provision was in the settlement agreement, I usually left it there (unless the parties had agreed that one party was going to pay for the other's costs or fees). If the provision was not in the settlement agreement, I wasn't majorly concerned about it because obviously the parties were going to bare their own costs and fees absent some provision in the settlement agreement saying otherwise. But it's actually an important provision because ... continue reading→