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


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 person jumping into 2017 with text The New TTAB Rules

On January 14, 2017, the Trademark Rules of Practice were amended. The 2017 amendments are the first major set of changes since 2007. Many of the changes emphasize electronic filing and service, discovery limitations, and simpler introduction of evidence by way of declarations.

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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→

Back in the Medinol days, a claim for fraud on the U.S. Patent and Trademark Office ("USPTO") was a player in Trademark Trial and Appeal Board ("TTAB") proceedings. Parties were alleging fraud left and right: the applicant or registrant knew or should have known this or that. But as we all know, the Federal Circuit put that all to bed when it issued In re Bose on August 31, 2009, holding that "should have known" is not the appropriate standard for fraud on the USPTO. Rather, there has to be subjective intent to deceive—regardless of how difficult that may be to prove. Oh, and don't forget that a party alleging fraud bears a heavy burden of proving fraud "to the hilt" with clear and convincing evidence. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). continue reading→