Posts Tagged ‘Trademark Litigation’

Attorneys Signing Trademark Application Papers: Is the Fear of Becoming a Witness and Being Disqualified Overblown?

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…

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The 2016 FRCP Amendments: The End of the Email Extension Era

On December 1, 2016, the 2016 amendments to the Federal Rules of Civil Procedure (“FRCP”) went into effect. The 2016 amendments are much simpler and less impactful than the 2015 amendments. In fact, only three rules were amended – FRCP 4, 6, and 82. And of the three rules, the amendments to FRCP 4 and…

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What Does Advice of Counsel Get You in a Trademark Case?

Throwing your counsel under the bus to save yourself, which is also known as the advice of counsel defense. It gets a lot more play in patent infringement cases, but the defense is available in trademark infringement cases too. It’s just not invoked as often in trademark cases. Here’s what we’ve learned from when it…

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Likelihood of Confusion Tests by Circuit

Each of the 13 federal courts of appeal have their own test for evaluating whether a likelihood of confusion exists between two trademarks. Although the tests are not identical, most of them are substantially similar and use many of the same factors. And the factors are non-exclusive.  For ease of reference, I decided to identify the…

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