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

Trademark Registration

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→

Photo of ants on opposite sides of a bamboo stick

A consent agreement is exactly what it sounds like. It’s an agreement in which a party consents to the use and registration of the other party’s trademark. Usually, the agreement is bilateral with both parties consenting to the other’s use and registration.

Consent agreements are usually submitted to the U.S. Patent and Trademark Office (“USPTO”) to overcome an office action refusing registration because of a § 2(d) likelihood of confusion with a prior registration or prior pending application. Most of the time, a consent agreement is sufficient to overcome a § 2(d) likelihood of confusion refusal, but the USPTO is not obligated to withdraw the refusal.

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Picture of Registration Symbol Being Destroyed

The last four posts covered the importance of obtaining a trademark registration by pointing out how difficult it is to prove common law rights in trademark litigation. On the heels of those posts, I decided to write this short post on the importance of not letting your trademark registration lapse or be cancelled. It dovetails nicely because, once the registration is cancelled, the statutory presumptions are extinguished and a trademark owner will find itself back in the same situation discussed in the preceding four posts.

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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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Ivy growing on a wall

In my last blog post, I discussed how difficult it is to rely on common law trademark rights because of the requirement to prove market penetration. Continuing with this same theme, it doesn’t get any easier after you’ve proven market penetration. After you’ve established common law trademark rights by proving market penetration in one or more markets, your next task is to try to expand your common law trademark rights beyond just the markets in which you were able to prove market penetration. This takes us to the common law principle of natural zone of expansion. Unfortunately, federal courts are pretty stingy when it comes to a common law trademark owner’s natural zone of expansion, leading once again to the inescapable conclusion that you should federally register your trademark if you can.

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