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Trademark Litigation

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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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→