Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

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. 
  

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.

 

Register a TrademarkTrademark InfringementTrademark Monitoring

Interstate Trademark Disputes in Practice

The recent trademark dispute between the University of Texas (UT) and Virginia Commonwealth University involving the trademark for ‘havoc’ highlights the issue of trademark disputes across state lines.  By way of background, when Virginia Commonwealth University’s (or VCU) head basketball coach left to accept the same position at the University of Texas, the University of Texas, via its Board of Regents, filed Intent to Use trademark applications with the United States Patent and Trademark Office (USPTO) for ‘Horns Havoc’ as well as ‘House of Havoc’.  This raised eyebrows within the trademark community, media in Virginia and Austin, Texas, as well as between the two schools.  VCU, as the first to make use of the Havoc mark in connection with various apparel and other items, arguably had a claim of trademark infringement.  Interestingly, VCU had not applied for, let alone registered a trademark for ‘Havoc’ with the United States Patent and Trademark Office.  Instead, they had relied upon a state trademark.  

New gTLDs Registrations Cause Eye-Brow Raising Results!

Since the onset of the new gTLDs being offered, it is being reported that the Trademark Clearinghouse (TMCH) program may be causing a negative effect on the registrations of domains.  A report released by ICANN on February 2, 2015 has reported that of the new 297 TLDs initiated in the Claims period, that there were 25,221,479 Claim Notices generated for the 4.2 million domains registered, which resulted in only 96,471 completed domain registrations.  That is a 6:1 ratio, a significant change from the 4:3 previously reported registration ratio.  These numbers also show that there has been more than a 90% decreased in completed registrations since the start of the TMCH program.  Those in the industry are stating that the TMCH program is having a very negative ‘chilling effect’ towards those that try to register a domain under one of the new gTLDs.  

The IP Audit - Newsletter Update

The IP Audit

We are now a month or so into 2015, and as we normally do, we are completing several Intellectual Property Audits on behalf of clients, big and small.  As we do so, we always wonder why all businesses do not have an IP Audit completed, especially when embarking on a new year with new opportunities.  It is the perfect time to take inventory of your trademarks, copyrights, patents, domain names and trade secrets.  It also gives us the opportunity to educate you about what you have and what you should have; what you are doing and what you should be doing.

If you are wondering if an IP Audit even applies to you, the answer is a resounding yes.  How can you leverage and monetize what you have created when you do not even know what you truly have?  How can you protect against infringers and cybersquatters, and even unlawful competitors, when you aren't monitoring what is rightfully yours?  Do you really want to wait until a prospective purchaser of your business is performing due diligence to learn that you have failed to take the necessary steps to acquire, maintain and enforce your IP, and possibly lose the deal?

Let Traverse Legal's experienced IP attorneys and leveraged software tools provide you with an efficient and cost-effective IP Audit.  Once complete, you can rest easy knowing that all of your IP is:

1. Identified;
2. Applied for and/or registered in the United States and/or internationally;
3. Docketed for maintenance and renewal;
4. Monitored to identify infringers; and
5. Treated like the valuable asset it is, with proper licensing or other treatment.

Give us a call today at 866-936-7447 or email us directly to discuss your IP Audit. 

 

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?

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.

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.

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.

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. 

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. 

TTAB Rulings Effect on Federal Trademark Litigation

The 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. 

Related articles

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

How To Respond To A Trademark Cease And Desist Letter

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.

Understanding How To Trademark A Name: An Attorney Knows Best

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. 

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. 

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.

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.

 

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.