A Trademark Attorney Can Help: Trademark Registration, Trademark Infringement & Enforcement.

We Have A Trademark Attorney Who Can Help You On Trademark Infringement, Trademark Registration and Trademark Protection Issues: 

Our intellectual property trademark attorneys handle trademark, copyright, patent and idea protection issues every day. 

  • You need a trademark attorney to handle trademark registration and monitoring in the United States and internationally.
  • You need an attorney to make sure that your trademark infringement threat letter is either sent or responded to correctly. 
  • We have an Internet lawyer who specializes in trademark domain name issues.
  • Our Internet and complex litigation law firm handles some of the largest and most complex trademark infringement litigation cases in the United States, under the Lanham Act, UDRP and the Anti-Cybersquatting Protection Act. Contact us and let a real internet lawyer help you with your online issues. 

Enrico Schaefer Trademark Attorney Litigation and Internet Law Attorney Enrico Schaefer: "We are a boutique litigation law firm built on client service.  Each trademark attorney here knows how to strategically and efficiently accomplish client goals within budget. We have a trademark lawyer on staff to handle any or your trademark needs."

Contact a trademark attorney for a no risk consultation about how we have assisted clients like you on trademark matters just like yours.

 

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Thursday, 21 August 2014

What is the Trademark Clearinghouse?

Welcome to Internet Law Radio where we discuss the hottest topics in internet law.  If you are facing an internet law issue, cyber-law complaint, website or ecommerce issue, we have an internet lawyer ready to help. 

GTLD Trademark Clearinghouse

Matt:  Hi, It’s Matt Plessner, and welcome back to Internet Law Radio.  Today, we’re going to be talking about some recent updates in Internet Law, specifically, regarding the gTLD Trademark Clearinghouse.  What is that exactly?  Well, we are going to talk about that, and, of course, also what’s going on with that as we speak once again with Attorney at Law from Traverse City, Enrico Schaefer.  Enrico, nice to see you.

Enrico:  Great to be here, Matt.

Matt:  Well, great to have you here.  So, for those people who don’t know, Enrico, what is the Trademark Clearinghouse?

Continue reading What is the Trademark Clearinghouse? >>
Wednesday, 13 August 2014

Trademark Clearinghouse Information from Service Providers Deloitte and IBM – YouTube Video

Representatives from Trademark Verification Service Provider Deloitte and Sunrise/Claims Service Provider IBM discuss the Trademark Clearinghouse.

My name is Jan Corstens and I am with Deloitte. I am overall responsible for the Trademark Clearinghouse as has been set up by ICANN. The Trademark Clearinghouse is ICANN’s cornerstone of their right protections mechanisms for the new gTLD program. It is going to be really central point where trademark owners will be able to add their protection for the new gTLDs program. What does that mean? Well, in principle it’s going to be a centralized database with validated trademarks.

Continue reading Trademark Clearinghouse Information from Service Providers Deloitte and IBM – YouTube Video >>
Monday, 14 July 2014

Redskins Trademarks Canceled by U.S. Patent Office

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent Office has canceled six federal trademark registrations owned by the Washington Redskins in a 2-1 vote in which the Board ruled that the term "Redskins" is disparaging to American Indians. The TTAB stated that the ruling was made after it found that by a preponderance of evidence petitioners had proved the term was disparaging to Native Americans at the respective times the marks were registered. Pressure mounted against the Washington team following a comment to USA Today by team owner Daniel Snyder that he would "never" change his team's name, even if the team were to lose its federal trademark protection.


The team's attorneys have stated they are confident they will be able to have the TTAB's ruling overturned on appeal, which is precisely what happened on appeal in an earlier iteration of the case.
While the Redskins maintain their federal trademark rights pending appeal, losing those rights could potentially allow others to profit using the team's name and logos for their own benefit with little to no consequence.

Tuesday, 24 June 2014

The Beastie Boys Sue Monster Energy Company for Copyright Infringement – YouTube Video

American music group, “The Beastie Boys” have sued Monster Energy Drink for copyright infringement.  Founding member Adam Horovitz appeared in a New York court on Tuesday as the case filed nearly two years ago got underway.  The Beastie Boys say that Monster Energy used their songs and image to promote their product without permission.  In 2012, band member Adam Yauch died and it was reported his Will banded the use of The Beastie Boys music in advertisements.  The group is seeking $150,000 in damages for each infringement.

Continue reading The Beastie Boys Sue Monster Energy Company for Copyright Infringement – YouTube Video >>
Monday, 23 June 2014

COMMON TRADEMARK APPLICATION MISTAKES – YouTube Video

DISCLAIMER:  PLEASE NOTE THAT THIS VIDEO IS A THIRD PARTY VIDEO.  THE ATTORNEYS AND LAW FIRM NOTED ARE NOT AFFILIATED WITH TRAVERSE LEGAL IN ANY WAY.  HOWEVER, THEIR VIDEO IS A GOOD ONE FOR VIEWING AND WE PROVIDE IT FOR INFORNMATIONAL PURPOSES ONLY.  

 

Welcome to the second call in our 2011 Trademark Teleconference Series.  My name is Erik Pelton.  I'm here with Mark Donahey.  We are of Erik M. Pelton & Associates in Falls Church, Virginia and we are happy to be talking to you today about common trademark application mistakes.  Trademark application mistakes are very common among all types of applicants, whether they are individuals, corporations, attorneys who practice a lot in the field trademarks or attorneys who are dabbling in trademarks without a lot of experience.   A lot of these mistakes can be easily avoided as you can see and avoiding such mistakes helps your application have a better chance getting approved, a better chance of getting approved quickly, a better chance not losing your filing fees and several other benefits.  Before we jump into the rest of the content, I just want to remind everybody that call is being recorded and that nothing presented today should be construed as legal advice.  If you have a specific question that relates to your trademarks or to your application, please consult an experienced trademark attorney. 

Continue reading COMMON TRADEMARK APPLICATION MISTAKES – YouTube Video >>
Thursday, 15 May 2014

How to Respond to a Trademark Opposition

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

 

Matt:  Hello and welcome back to Trademark Law Radio.  This is Matt Plessner speaking and today we are going to be talking about how to respond to a trademark opposition.  What does that mean exactly?  Well, we are going tell you about that and, of course, beyond.  We are speaking, of course today, once again with Attorney at Law Brian Hall from the Traverse Legal office in Traverse City, Michigan, and also with a new office in Austin, Texas.  Brian thanks a lot again for joining us today.

How to respond to a trademark opposition

Brian: Thanks Matt. Looking forward to it. 

Matt: Now to start off, what is a trademark opposition, Brian?

Brian:  A trademark opposition can come in many forms.  Obviously, if somebody claims to be a trademark owner and disapproves of another’s use of a trademark, they can send a Cease and Desist Letter.  That is a form of trademark opposition.  Obviously, if somebody sues someone in Federal Court for trademark infringement or otherwise, that is a trademark opposition.  But what I am really focus on today is a trademark opposition with the Trademark Appeals Board, which is a particular kind of opposition that is specific to those that apply for and sometimes are successfully in registering a USPTO trademark.  But the trademark opposition specifically asks to be brought within a thirty (30) day opposition window and it proceeds similar to litigation at that point. 

Continue reading How to Respond to a Trademark Opposition >>
Sunday, 03 November 2013

TTAB Rulings Effect on Federal Trademark Litigation

Supreme-courtThe determination by the Trademark Trial and Appeal Board, or TTAB, as to whether or not a mark creates a likelihood of confusion with another mark has historically not been binding upon a federal court in any subsequent trademark litigation. However, the United States Supreme Court has been asked to decide whether federal courts are bound by the findings of the TTAB related to the likelihood of confusion matters. This petition is the result of federal district court and Eighth Circuit Court of Appeals rulings that were contrary to what the TTAB had found. It will be interesting to see whether or not the Supreme Court entertains the issue in changes the binding of that, or lack thereof, in TTAB likelihood of confusion matters.

Trademark attorneys know that when there is a potential for likelihood of consumer confusion, the matter can be addressed via an opposition proceeding or a cancelation proceeding before the TTAB. Unfortunately, trademark lawyers have to advise their clients that the TTAB decision may lead to federal trademark litigation, and the result of that federal trademark litigation may be different from what the TTAB had found. Therefore, it is not out of the ordinary for trademark owners, or those subject to a trademark dispute, to choose to go directly to a federal court. Should the United States Supreme Court change precedent, the TTAB may become a more attractive option, especially since any TTAB ruling would have binding effect on federal court.

The TTAB is sometimes seen as a better option since it typically can cost less and lead to a faster resolution. That said, that is not always the case and a tradmark attorney should be consulted in order to identify whether a TTAB or federal trademark litigation is the best course of action. Among the considerations is obviously the fact that the TTAB does not afford damages but instead simply makes the determination as to whether or not a mark is registered. As such, a plaintiff looking to recover statutory damages, attorney's fees, or other injunctiive relief may look directly to federal court. Regardless, this trademark development is something worth keeping an eye on, both for trademark owners as well as trademark attorneys. 

Wednesday, 02 October 2013

How To Respond To A Trademark Cease And Desist Letter

Cease-Desist-image
Companies and other entities that own trademarks regularly monitor third party use of what those entities deem to be confusingly similar marks, in an effort to police their trademark and maintain trademark rights. In doing so, it is fairly common for trademark owners to send a cease and desist letter. They send these to anyone making use of a mark that they believe will lead to a likelihood of consumer confusion, which is the test for trademark confusion under US law. If you receive a cease and desist letter from a trademark owner, there are certain steps you should always follow in order to protect your rights.

First, if you are in a position to retain a trademark attorney you should immediately contact your trademark lawyer, who can review the facts and laws specific to each matter. Trademark law is a very fact specific area of law that requires analysis of the trademarks at issue, and a detailed analysis of the likelihood of confusion factors available for assessing these kinds of matters. If you are unable to retain legal council, you should still educate yourself about what options exists.

Second, you should identify whether the trademark owner indeed has a protectable trademark. You may search the US Patent and Trademark Office database, try to identify their existing use, and determine if there has been any adverse decisions against their mark. Moreover, an analysis of where the particular trademark falls along the distinctiveness continuum will likely dictate the next steps.

Third, you should try to identify whether any trademark defenses exist as it relates to your use. For example, you may be subject to the defense of fair use, which includes nominative fair use, and be able to avoid any claims of trademark infringement based on the same. Obviously, identifying a position without the benefit of a fair use defense necessarily requires an analysis of the trademark infringement factors. If you are simply going to rely upon the argument that there is no likelihood of consumer confusion, and thus no trademark infringement, you should be prepared to identify why the marks are different, how the goods and services are different, how the consumers are different, and related items as noted above.

Finally, you should consider what your goals are. If you are simply willing to rebrand, then you may wish to correspond with the trademark owner in hopes of getting the release of liability and amicable resolution. However, if your goal is to continue use of your mark, there may be ways to allow peaceful coexistence between the sender of the cease and desist letter, or alledged trademark owner, and yourself. This may be based upon a consent agreement or some other kind of agreement that limits use in a way, such as based upon geographic location, which would be memorialized in a concurrent use agreement. Regardless, understanding how the matter can be resolved without the need for either a trademark infringement lawsuit in federal court or even proceedings before a trademark trial and appeal board is extremely important.

Tuesday, 01 October 2013

Understanding How To Trademark A Name: An Attorney Knows Best

Uspto

So you want to know how to trademark a name, logo, or slogan? It's a great question. Something in the back of your mind tells you these brand names are becoming increasingly important in the internet age. You see other companies building value around their brand names, logos, and slogans. You're wondering whether something more is required than simply doing business under your brand or name. Understanding how to trademark a name is something that trademark attorneys spend entire careers understanding. While the paperwork at the US Patent and Trademark Office (uspto.gov) website simply contains dozens of fields of data to fill in, understanding how to fill in the trademark forms at the trademark office is where expertise and experience comes in handy.

There are a lot of companies out there that will provide you with cheap trademark registration services. Essentially, they replicate the forms that are already available for free at www.uspto.gov. They are self-help trademark registration forms. That means you simply fill them in yourselves. If you were going to do that, why wouldn't you just go to US Patent and Trademark Office website yourself?

Understanding how to fill in date fields is different from understanding how to correctly file an application for trademark registration. If you cannot afford a trademark attorney, that's one thing. However the cost of filing a trademark registration is pretty inexpensive. The return on investment having an attorney who knows what they're doing, filing your mark is typically significant. Why not have a trademark attorney, who is prepared and has filed hundreds or thousands of US Patent and Trademark Office trademark applications, help you fill out the form?

A good trademark attorney will understand how to trademark a name, logo, or slogan much better than you. I would encourage you to speak to a trademark lawyer today before trying to fill out the trademark application form yourself. You'll be surprised how inexpensive trademark registration can be, and what a tremendous benefit it can be to your company. Having a trademark registration for your company name, brand or slogan in today's online world is critical. 


Friday, 02 August 2013

The Requirement Of Use As A Mark For Trademark Infringement Claims

The 6th Circuit has required that a defendant make use of a trademark in a trademark sense in order to be subject to liability for trademark infringement. However, the 2nd Circuit recently held that a plaintiff does not have to allege that the defendant used the plaintiff's mark in a trademark sense in order to state a claim for trademark infringement. Given the diverging views of these two circuits, and until a Supreme Court decision resolves such issues, trademark owners would be well served consulting with trademark attorneys prior to proceeding with an action for trademark infringement where the trademark use is unclear. 

Continue reading The Requirement Of Use As A Mark For Trademark Infringement Claims >>
Thursday, 01 August 2013

Can a TTAB Decision Preclude Subsequent Trademark Litigation in Federal Court?

The United States Court of Appeals for the 8th Circuit recently ruled that the Trademark Trial and Review Board refusal to register a mark based upon a finding of likelihood of confusion does not preclude the filing of subsequent trademark infringement lawsuit in Federal Court. The case, B and B Hardware, Inc. v Hargest Industries, 716 F.3d 1020, denied the preclusive effect of a TTAB finding and also held that the District Court had properly excluded the finding from evidence. The TTAB had refused to register a trademark due to a likelihood of consumer confusion refusal. However, a jury found that there was no likelihood of confusion between the marks, after the judge had refused to allow evidence of the TTAB decision to go before the jury. In doing so, the 8th Circuit recognized that the TTAB is not an Article 3 court, the factors the TTAB considers for trademark registration purposes are different from those under the 8th Circuit likelihood of confusion test, and the burden of proof differed.

Continue reading Can a TTAB Decision Preclude Subsequent Trademark Litigation in Federal Court? >>
Wednesday, 31 July 2013

Zynga's Trademark Infringement Lawsuit Concerning "With Friends"

The mobile application developer of "Words With Friends", namely Zynga, has sued the developer and author of another mobile application known as "Bang With Friends". The lawsuit, which involves trademark claims, will require that Zynga is able to effectively establish trademark rights to its mark "Words With Friends", which is a federally registered trademark with the USPTO. However, the larger issue becomes whether or not "Bang With Friends", or any other application that utilizes the "With Friends" portion of the mark, creates the likelihood of consumer confusion. At a high level, the mobile application services are arguably similar, but as you drill down, the question becomes whether or not consumers would view these services to be emanating from the same source. Ultimately, if Zynga is able to establish its presumptive trademark rights in "Words With Friends", there is a very real chance that "Bang With Friends" may constitute trademark infringement. This will be a case worth keeping an eye on, and trademark attorneys may have differing opinions as it relates to the merits of this case. Whether or not Zynga faces any real risk with its "Words With Friends" , or other "With Friends" marks, being deemed unprotectable as a trademark remains to be seen.

 

Tuesday, 30 July 2013

Beware of Common Law Trademarks

Individuals and businesses are constantly considering brand protection. In particular, they usually contact a trademark attorney and say they want to register their trademark. In the United States, that registration would be withg the United States Patent and Trademark Office, or USPTO. Often times, they have already made use of their trademark and do not understand that they already possess common law trademark rights. In the United States, the first person to use a distinctive mark in commerce possesses  Common Law Trademark rights. While Common Law trademark rights are limited to the geographical locations in which the mark was used, they are indeed a valuable piece of intellectual property. However, registering for a trademark with the USPTO provides additional benefits, such as nationwide priority and other rights to use the trademark in other geographic locations. Given the other benefits of a trademark registration, entities shouold always consider protecting their brand beyond Common Law trademark rights.

It is also important for trademark owners who wish to register their trademark to beware of Common Law trademark rights. For example, just because a trademark is not pending or registered with the United States Patent and Trademark office does not mean that you may have ytrademark rights to it. A Common Law trademark used prior to your filing for or actual use of your trademark may have senior rights. Therefore, your use may subject you to claims of trademark infringment. Performing a trademark availability assessment, or trademark clearance search, goes a long way towards identifying these other Common Law trademarks that may exist. However, you can never be 100% certain that there aren't any preexisting uses. Nevertheless, performing a prior search and getting an opinion from a trademark attorney may give you better insight into the likelihood of a trademark infringement issue and also provide defense to a claim of willful infringement, such as innocent infringement, in the event that another Common Law trademark use is found. Given the importance of brands in today's day and age, you should not rely solely upon Common Law trademark rights as a brand owner. Instead, you should pursue a trademark registration with the USPTO. Moreover, in selecting a brand, you should be aware that a search of the USPTO is insufficient to determine whether or not you may have copyright infringement liability. Common Law trademark rights may trump your rights, and as such, you should have a trademark clearance search performed in order to avoid infringment issues in the future. A trademark attorney can advise regarding both Common Law trademark rights and registered rights for you and your company.

 

 

Wednesday, 24 July 2013

Trademark Registration, gTLDs & ICANN's Trademark Clearinghouse

What is the Trademark Clearinghouse?

The Trademark Clearinghouse is a way in which trademark owners can protect their marks with the upcoming introduction of new top level domain names. Trademark Clearinghouse is operated by Deloitte, and will allow trademark owners to, for a fee, submit information related to their trademark registration in an effort to protect their trademark in the ever growing domain name space. Put simply, the Trademark Clearinghouse is a central database of validated trademarks that will help defend the trademark owners against cyber squatting or other types of trademark infringement online. Trademark owners can proactively register their trademarks with the Trademark Clearinghouse in order to take advantage of several benefits. First, the sunrise period will give trademark owners the ability to register domain names that match their trademarks before the general public is able to register such domain names. Second, the 90 day trademark claims service will alert trademark owners anytime another individual or company attempts to register domain names that match their trademarks.

Continue reading Trademark Registration, gTLDs & ICANN's Trademark Clearinghouse >>

Advice of Counsel Defense To Trademark Infringement

A recent case out of the southern district of New York,  Bath and Bodyworks Brand Management Inc v Summit Entertainment LLC, discusses the affirmative defense of advice of counsel in a trademark infringement lawsuit. Put simply, the advice of counsel defense is one in which an alleged infringer relies upon advice it had previously sought from trademark counsel in order to avoid a finding of willful infringement. Keep in mind willful infringement carries with it enhanced statutory damages under the Lanham Act. Therefore, in the event that the alleged infringer had retained a trademark lawyer, secured a trademark availability assessment or trademark clearance opinion, and relied upon the trademark attorney's opinion in making use of a particular trademark, the advice of counsel defense may be applicable.

 However, using the advice of counsel defense requires that the attorney-client privilege is waived to a certain extent. Thus, if the trademark opinion letter identified risks and set forth recommendations contrary to the actions taken by the alleged infringer, it may not be worthwhile for the alleged infringer to assert the advice of counsel defense. Moreover, there may be other reasons why waiving the attorney-client priveiige may not be advantageous. Nonetheless the advice of counsel defense is one worth considering in the event that the alleged infringer did indeed obtain a trademark opinion letter prior to making use of the mark.

 Whether or not an advice of counsel defense is successful in a trademark infringement lawsuit depends on the facts and circumstances of the case. Regardless, this New York case and the concept of the advice of counsel defense simply reinforces the importance of securing a trademark availability assessment or trademark clearance from a trademark attorney prior to making use of a mark. If the trademark clearance revealed that such use would subject you to claims of trademark infringement, then you would have the opportunity to avoid such risks by choosing a different mark. Alternatively, if you were advised that the use is permissible, only to be sued for trademark infringement in the future, you could rely upon the trademark clearance and opinion letter from trademark counsel as an affirmative defense to avoid a finding of willful infringement and the statutory damages that go with it. As such, following the typical steps of a trademark clearance prior to trademark registration of trademark use is advantageous to you and your business. A trademark attorney can guide you through these steps and advise you as needed.

Tuesday, 23 July 2013

How to Respond to an Office Action

    It is very common for trademark applicants to receive what is known as an office action from the United States Patent and Trademark Office. An office action, simply put, is when the examining attorney from the USPTO identifies flaws with the application or other substantive legal issues that need to be addressed prior to registration. While the flaws may merely be procedural or administrative, the more important office action matters pertain to substantive legal issues. If you receive an office action, you should provide it to your trademark attorney. However, in our experience, we have seen a lot of applicants that have attempted to file for the trademark without the help of a trademark attorney. In doing so, they receive the office action and try to respond to it on their own. This is a risky endeavor considering that if they are unable to overcome the office action, they're only remedy will be to appeal to the trademark trials and appeals board which can become far more costly. More over they may unintentionally state something that becomes public record that could hurt their trademark rights in the future.
    Therefore, most trademark lawyers recommend that anyone who receives an office action should seek out trademark council. While the USPTO examining attorney typically sets forth what the issue is, and even provides some of the underlying law that applies, an experienced trademark attorney can help craft the best arguments for the trademark applicant. For example, if their is a likelihood of confusion refusal as part of an office action, a trademark attorney can identify whether or not there truly is a liklihood of confusion or propose alternatives that could allow the application to proceed to regestration, such as a co-excistance agreement or consent agreement. Similarly, if there is a refusal due to mere discriptiveness in an office action, a trademark attorney may be able to advise on ways to overcome such refusal or otherwise help navigate registration on the suplimental register with hope of future registration on the principle regester. Regardless, an office action is a very important piece of the application process, one that must be answered within six months, and faliure to overcome may ultimatly lead to refusal of the application with the only option left being to appeal via the TTAB.
    You would be well served to speak to a trademark attorney if you receive an office action.
Official Trademark Clearinghouse Agent

Trademark Blog Homepage: Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Trademark Infringement: Cease & Desist Letter Help

  • Trademark Threats: 6 Reasons To Take Them Seriously
    Trademark attorney Enrico Schaefer explains what you should do when you receive a trademark cease and desist letter. Listen as he reviews 6 reasons why you should take any trademark threat letter seriously, and what you should do when you receive a cease and desist.
  • How to handle a trademark cease and desist letter?
    Trademark Attorney Brian Hall discusses what you should do when you receive a trademark cease and desist letter. What a trademark threat letter? Why trademark owners send trademark threat letters? What you should do when you receive a trademark infringement threat letter.

How to Trademark A Name?

  • How to Register a Trademark - USPTO Stopfakes.gov
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO Stopfakes.gov
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO Stopfakes.gov
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
  • How To Copyright and Trademark a Catchphrase!
    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.

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