Posts Categorized: Trademarks

How Can a Trademark Be Lost During the Trademark Application Process?

Picture of trademark symbol and gavel

Written by Andrew Reed In the first part of this series, we discussed why a business should register their trademarks. In the second part of this series, we will discuss how a trademark can be lost during the trademark application process. While some of these issues may not result in instant loss of trademark rights,… Read more »

Why Should I File for a Trademark Registration? Part One

Picture of trademark stamps

Written by Andrew Reed. You may be wondering why you should register your business’s trademarks.  A business’s brand and identity are two of its most valuable assets. Recently, Nike was said to have received over 22 million dollars from Tiger Woods’ win at the 2019 PGA Masters solely because of the publicity of its trademark… Read more »

USPTO Requires Foreign Trademark Applicants to Appoint U.S. Attorney

Written by Vincent Allen The U.S. Patent and Trademark Office (USPTO) now requires that any applicant, registrant or party to a trademark proceeding whose domicile is not located within the U.S. must be represented by a U.S. attorney. You can find the new rule at 37 C.F.R. § 2.11. The rule was effective August 3,… Read more »

Trademark Abandonment

If you are a trademark owner who has several registered trademarks that correlate to various products in your portfolio, then you may have periods of time in which certain trademarks are not currently being used. While periods of non-use are often unavoidable, there are a few things to keep in mind during these times so… Read more »

Protecting your Business: Copyright vs. Trademark

Have you ever wondered about the difference between copyrights and trademarks?  Do you have a great product and wonder if you can do more to protect it from competitors?  If so, this short and sweet article is for you. First, let’s look at copyrights.  The basic rule is fairly simple: to be copyrightable, a work… Read more »

Interview with Hope Shimabuku of Dallas Regional Office of USPTO

Less than a year ago, the US Patent and Trademark Office (USPTO) officially opened the doors to its new Texas Regional Office in Dallas. This regional office provides outreach services for inventors and entrepreneurs in the state of Texas, as well as Alabama, Arkansas, Louisiana, Mississippi, New Mexico, Oklahoma and Tennessee. David Carstens (DC) recently… Read more »

Don’t Go to the Trouble of Creating a Website and then Ignoring the Trademark Infringement Lawsuit – Neutron Depot LLC v. Bankrate, Inc.

If you’ve taken the time and effort to create a website in a competitive industry and your trademark is arguably close to an industry competitor, don’t make the mistake of ignoring a subsequent trademark infringement lawsuit.  In a recent case set in the federal court for the Southern District of Texas, Insurance Depot Marking Corporation… Read more »

Tropic Ocean Airways: Don’t Draft your Complaint on the Beach

When a lawsuit is filed, a plaintiff must provide the factual and legal basis for the claims to avoid the case being dismissed.  How much detail must be provided was arguably changed significantly by a pair of U.S. Supreme court decisions, Twombly and Iqbal, decided in 2007 and 2009, respectively.  Before these two cases, the… Read more »

Trademark Infringement: Can I Bid on My Competitors’ Trademarks as Adwords?

By Vincent Allen and PJ Putnam

With the use of search engines by consumers to find products and websites becoming more prominent, search engine optimization has become an important part of the marketing plan for large and small businesses alike. For those companies that do not want to take the time or put in the effort to improve their SEO for certain keywords organically, purchasing keywords, also known as Adwords, from Google or other search engines can put a website on the first page of search results for a particular keyword overnight. By “purchasing,” we mean the submission of the high bid for the use of a keyword or campaign for a specific time period and geographic location.

Trademark Basics: What’s in a Name?

by Mandy K. Jenkins

Is the name of a new business or product really that important to its success?  As Shakespeare would say, “that which we call a rose by any other name would smell as sweet.”  No offense to Shakespeare, but most people would agree that when starting a new business or launching a new product, the name is very important.  The name gives people a first impression and is associated with the product or business forever.  So choosing the right name is paramount.  When deciding upon the name for a new company or product, you want to select a name that can be protected as a trademark, ensure your chosen name will not infringe another’s trademark, and take the proper steps to protect your trademark.

In re Bose Corp.: The New Sound of Fraud?

By James R. Gourley

The Federal Circuit raised the bar last year on the standard of proof needed to support a finding of fraud in connection with trademark registrations in the In re Bose Corp. decision.  Applicants for federal trademark registrations make a number of representations to the United States Patent and Trademark Office (USPTO) over the life of a trademark.

Jim Brown Fails to Break Through First Amendment Defense

By Vincent J. Allen

Jim Brown’s claim of false endorsement against Electronic Arts in regard to the use of his likeness in the Madden NFL video game was dismissed last year. The decision continues the trend of courts finding that the First Amendment provides a complete defense to a claim of unfair competition when source identifiers are used within video games. Jim Brown is a retired professional football player who is revered as one of the best football players of all time. Electronic Arts (EA) develops and publishes video games, including the popular Madden NFL series. The Madden NFL game is a virtual football game that contains up to 170 virtual teams and 1,500 virtual players. The virtual players include players that wear the names and numbers of current real-life players playing on real-life teams.

Pirates of the Twenty-First Century – Tips for Fighting Back Against Counterfeiting

By Zach W. Hilton

Worldwide Counterfeiting Epidemic

Over the course of the last couple of decades, the counterfeiting of almost every conceivable product has become endemic worldwide.  While thought of as harmless by many, the massive amount of trade currently occurring in counterfeit products can often lead to disastrous consequences for both individuals and businesses.