A commonplace practice of medical patients is growing in popularity with the trademark departments of companies throughout the United States — the legal second opinion.

With companies demanding more from outside trademark law firms, second legal opinions simply make sense.  It has been estimated that approximately 40% of companies switch law firms each year, with better value being one of the key-drivers of change.  Second opinions are routinely being sought by in-house trademark counsel to help further mitigate risks and maximize shrinking legal budgets. When it comes to managing trademark portfolios and brand enforcement, in-house legal departments are looking at some of the following factors:

  1.   Priority trademark enforcement.  Not all trademarks and brand names are created equal to companies.  Some marks are given greater weight based on annual revenues, marketing budgets, consumer goodwill, and other marketplace factors.   Outside trademark counsel can help trademark departments create a brand enforcement map that takes into account these priority-based enforcement goals.
  2. Value-based engagements.   This is more than simply alternative fee arrangements, and includes things such as complimentary in-house employee training, quarterly reporting updates, and other value-added services that are not tied to hourly fees.  If a law firm routinely charges an important client for every five- minute phone call, chances are that the firm will not retain that client relationship for long.
  3.    Efficient Staffing.   Companies no longer wish to pay for three attorneys to sit-in on a routine conference call with opposing counsel.  They are also paying better attention to the partner to associate ratios and what resources are truly needed for effective representation of the client’s interests.

The trademark law firms that continue to proper are those that understand client concerns and align their services and value propositions to best meet the needs of sophisticated corporate brand owners.


What’s in a name?  In the case of two publicly-known personalities and merchandisers, it could mean millions of dollars.

Kylie Minogue, singer and actress, has filed a notice of opposition with the U.S. Trademark Trial and Appeal Board against Kylie Jenner’s application for registration of the mark KYLIE for a wide variety of goods and services in the advertising and entertainment fields.  In doing so, Ms. Minogue has claimed that the daughter of Caitlyn and Kris Jenner is causing dilution of her own KYLIE MINOGUE and KYLIE marks, claiming priority use of the name that Ms. Minogue has used for years in connection with her various business and entertainment brands.  While both parties have United States registrations for KYLIE MINOGUE and KYLIE JENNER respectively, the main tussle here is who has rights in and to the name KYLIE as a stand alone trademark.

Ms. Minogue’s trademarks, protected under Section 44 of the Trademark Act and first registered in 2006,  cover a wide variety of goods and services, including perfumes, musical recordings, and entertainment services.

Ms. Jenner is the owner of a U.S. Registration for KYLIE JENNER for entertainment services, claiming a first use date of 2007.   This registration was cited against an application for KYLIE for entertainment services in the name of Ms. Minogue.  Not to be outdone, only a couple of days ago, Ms. Jenner upped the ante by applying for the mark KYLIE COSMETICS, despite the preexistence of the mark KYLIE MINOGUE for goods in the same class.   This development, may be due in part, to Ms. Minogue’s description of Ms. Jenner in pleadings filed with the Trademark Office that allege that Ms. Jenner’s reality television reputation is tarnishing Ms. Minogue’s trademarks and brand.

This trademark opposition dust-up has been reported in World Intellectual Property Review, the Australian media, and entertainment publications everywhere.  Should things get too provocative in the Trademark Office with the back and forth filing of additional trademark applications, Ms. Minogue may seek to take matters into her own hands by bringing an action in federal district court for trademark infringement and dilution.

This dispute is not going away anytime soon, particularly when it comes to the Kardashian/Jenner clan’s interest in seeking to continue to monetize the allure of its brand after all these years.  With both parties having seemingly unlimited resources and revenue opportunities at stake, be prepared for a long battle.


In a recent case before the U.S. Trademark Trial and Appeal Board, the TTAB provided useful guidance regarding the burden of proof that parties must meet in trademark opposition proceedings.

In Brick Bodies Fitness Services, Inc v. BRIK Fitness Solutions LLC, the Board held that the mark BRIK FITNESS and Design was likely to cause confusion with Opposer’s mark, Brick Bodies based on the similarity between the parties’ marks and respective health and fitness services.  In so ruling, the Board raised the following observations that touch upon several related issues that litigants face in trademark opposition proceedings:

  1.  Assertion of a “family” of marks.   Here, the Opposer Brick Bodies sought to assert rights in and to four separate trademarks – namely, Brick Bodies, Lynne Brick’s, Build Your Body with Brick, and Brick Bodies Extreme, claiming that collectively they constituted a family of “BRICK” marks that were entitled to greater protection.  The Board opined that the mere use of a common term in multiple trademarks owned by the same party does not a “family” make for purposes of trademark rights.  Instead, other factors must be examined, including the public’s recognition of the marks as emanating from the same source, as supported by website visitors or other consumer perception factors.
  2.   Strength/Weakness of marks.  Applicant claimed that the Opposer’s “brick” marks were weak, since the “brick” derivative of Opposer’s marks were derived from a combination of the surnames of the founders of the company.  The Board rejected this argument, stating that the term “brick” is commonly perceived to relate to a hardened clay block, and not primarily merely a surname.
  3.   Third-party trademark uses.   Applicant submitted into the record evidence of numerous third-party listings for fitness facilities that use the term “brick” as part of their name from several locations throughout the United States.  Surprisingly, and without explanation, the Board reasoned that although use of similar marks on similar goods by third-parties is relevant to show that a mark is weak and entitled to a narrow scope of protection, the Applicant failed to show the extent of such third-party uses.  Therefore, the Board summarily concluded that the uses provided by Applicant were limited in geographic scope and not probative to show that consumers would be aware of such third-party uses.

In the end, the Board relied on the standard likelihood of confusion analysis based on the similarity of sight, sound, and meaning of the parties’ respective BRICK BODIES and BRIKFITNESS marks, together with the similarity of the parties’ services, to deny registration and rule in favor of the Opposer.

The United States Patent and Trademark Office recently released its TTAB filing and performance statistics for the fiscal year 2015.

While there have not been any substantial deviations from 2014 filing statistics, the recent Supreme Court decision in B & B Hardware, Inc. v. Hargis Industries, Inc. will most likely result in an increase in the number of trademark opposition proceedings instituted in the U.S. Trademark Trial and Appeal Board.  This is due to the fact that trademark opposers may now perceive the TTAB to be a superior forum in which to contest a trademark applicant’s right to register, and ultimately use, a trademark in commerce.

Trademark Trial and Appeal Board Filings – FY 2015

The following is a breakdown of relevant TTAB filings for the fiscal year 2015, with percent changes over FY 2014 filing figures indicated in parentheses:

  • Trademark oppositions: 5,290 (-4%)
  • Trademark Cancellations:  1,763 (+2.3%)
  • Extensions of time to oppose:    17,132   (-1%)
  • Appeals:  2,992 (+7%)

As one can see, with the exception of the number of appeals filed, there has been little change in year over-year filing volume between FY 2015 and FY 2014.  The number of trials for the year was 123 compared to 132 in FY 2014.

Of particular note is the low number of cases decided under the TTAB’s accelerated case resolution program (ACR).  Once touted as a less costly and more streamlined alternative to traditional proceedings, there were only 10 cases decided under ACR procedures in FY 2015. Even more surprising in the negligible difference between the pendency of normal cases vs. ACR proceedings, with the average total pendency of trial cases being 161.2 weeks versus 138.6 weeks for ACR cases.

The volume of trademark opposition case filings will be watched closely in FY 2016 to see if predictions come true as to whether there will be an increase in notice of trademark oppositions filed by brand owners seeking to take advantage of the strategic ramifications of the B & B Hardware decision.

Managing a trademark portfolio continues to present unique and often complex challenges for inhouse counsel and trademark administrators.  Professional organizations such as the International Trademark Association (INTA) and Association of Corporate Counsel (ACC) provide excellent networking opportunities and educational materials for in-house personnel to share best practices to help make their jobs easier.  In addition, outside trademark counsel often can provide valuable insight based on their wealth of real-world experiences.

With this in mind, here are some effective trademark portfolio management strategies worth repeating:

1.   Be a Valued Partner.   The best trademark counsel and trademark administrators are the ones that have an open and transparent line of communications with their clients.  Most inhouse trademark professionals have great relations with their product development and marketing teams. They educate them on the importance of trademark protection, and listen to their needs and concerns to help ensure that the company’s intellectual property investments are secured in a timely and cost-effective manner.

2.   Create a Trademark Enforcement Plan.   Surprisingly, many attorneys, both inhouse and outside trademark counsel, can not adequately articulate the factors that they take into account when deciding how and when to enforce the client’s trademark rights.  Such factors, where possible, should be determined in advanced as part of an overall proactive trademark monitoring and enforcement plan, so as to avoid any surprises as to why a certain decision was made or not made concerning the trademark portfolio.

3.    Remain Flexible.   Attorneys can learn alot from their business colleagues.  While a company’s trademark portfolio strategies, once approved, for the most part remain constant, the tactics to acheive the company’s brand enforcement goals should be open to fine-tuning and recalibration based on predetermined legal and economic preferences and outcomes.

By keeping in mind the above tips, trademark portfolio managers will better serve their companies and foster better relationships that are based on cooperation and mutual respect of all internal and external trademark team partners.

In a decision with wide-ranging implications to trademark owners everywhere, the U.S. Supreme Court has just ruled that in certain cases, brand owners may be precluded from bringing claims or defenses based on trademark infringement in U.S. District Court if the issue of likelihood of confusion was previously adjudicated in a trademark opposition proceeding before the U.S. Trademark Trial and Appeal Board.

In the case, B & B Hardware Inc. v. Hargis Industries, Inc., Hargis sought to register its trademark SEALTITE with the U.S. Patent and Trademark Office.  B&B Hardware opposed the trademark application on the grounds that it was confusingly similar to its own SEALTIGHT trademark.  The Trademark Trial and Appeal Board (TTAB) ruled in favor of B & B Hardware, thereby refusing Hargis’s right to register its mark. However, since the TTAB’s jurisdiction is limited to precluding a party from registering a trademark, not using a trademark in commerce, B&B subsequently filed a complaint for trademark infringement in U.S. District Court.

In the District Court case, B&B argued that Hargis was precluded from contesting the TTAB’s earlier finding of a likelihood of confusion.  The District Court disagreed with B&B’s position, and the Eighth Circuit affirmed the district court’s decision, stating that issue preclusion was improper as the TTAB and district court used different standards to determine a likelihood of confusion.  The Supreme Court in reversing the Eighth Circuit, held that when the uses adjudicated by the TTAB are “materially the same” as the district court, then issue preclusion may apply.

What the Supreme Court holding may mean for trademark owners

  • Trademark Oppositions may now carry greater weight.  Until now, even if a trademark opposer prevailed in a trademark opposition, it would not prevent a trademark applicant from arguing against likelihood of confusion in a district court proceeding for trademark infringement.  Now, the Supreme Court ruling may have the effect of having a TTAB’s refusal of registration of a trademark due to likelihood of confusion carry over to a district court’s finding.  What does this mean to a trademark applicant?  In all likelihood, the trademark applicant will find that not only will they be not able to register the trademark at issue, but also may be ordered to cease marketplace use in a subsequent district court proceeding.
  • Filing a Trademark Opposition may create greater leverage.  Numerous trademark oppositions have historically resulted in an amicable settlement wherein the applicant agrees to withdraw its trademark application in consideration of the opposer not contesting the applicant’s continued right to continue to use its trademark in commerce.  With the Supreme Court’s ruling, companies that oppose another ‘s trademark in the TTAB and prevail on grounds of likelihood of confusion have a much greater chance of summarily running the table in a district court proceeding to enjoin the applicant’s marketplace use of the trademark.  The predicted result? Trademark opposers will have less of an incentive to amicably settle a trademark opposition and trademark applicants may have greater risk of losing the right to use their brand name in commerce.

Now, more than ever, trademark owners who believe that another party is infringing its trademark rights should consider commencing a trademark opposition proceeding by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board.

Each year, companies spend millions of dollars to protect their valuable brand names from competitors.  While a majority of such enforcement efforts take place online and in federal courts, one of the most effective tools for trademark enforcement resides within the confines of the U.S. Patent and Trademark Office: the trademark opposition.

Trademark Opposition Basics

A trademark opposition is a proceeding in which a party seeks to prevent another party from registering a trademark that is pending before the USPTO.  Every year more than 16,000 requests for an extension of time to file a trademark opposition are submitted to the Trademark Office and over 5,000 trademark opposition proceedings are commenced.  The procedures for trademark opposition cases may be found in the Trademark Board Manual of Procedure, a voluminous work that contains rules, regulations, and processes that must be strictly followed by all litigants and attorneys involved in a trademark opposition proceeding.

1.  The Notice of Opposition.  A trademark opposition proceeding is instituted by filing a complaint with the U.S. Trademark Trial and Appeal Board, the trademark adjudicative body of the United States Patent and Trademark Office.  The complaint, known as a Notice of Opposition, sets forth the grounds for the opposition, which a minimum, should include (a) the name of the opposer; (2) a description of the nature of its trademark rights; and (3) how it will be damaged should the application that is being opposed be granted.

2.   The Answer.  After the notice of opposition (i.e., complaint) is filed, the applicant has 40 days in which to answer, move, or otherwise plead to the allegations contained in the notice.  In addition to answering the allegations of the complaint, the applicant can also invoke affirmative defenses as to why the notice of opposition should be defeated.

3.  Mandatory Discovery Conference.  In an effort to narrow the issues and promote the possibility of early resolution of the dispute, the Trademark Trial and Appeal Board requires the parties to have a mandatory discovery conference prior to the commencement of discovery.  The conference, which may take place by phone, should include a brief discussion of the parties claims and defenses, as well as potential settlement proposals.  Should the parties believe that a settlement proposal is promising, they may jointly agree to seek a suspension of the case for a brief period (usually 60 days) to determine whether a final settlement can be achieved without the need to escalate the litigation and associated legal costs.

4.  Discovery.  The discovery phase of the case involves comprehensive fact finding in an effort to support the legal burdens of the respective parties. Forms of discovery may include interrogatories, requests for production of documents, and requests for admissions. Depositions of key witnesses and parties are another form of discovery that are routinely utilized by litigants.

5.   Trial Phase.  Unlike litigation in federal and state courts where trial testimony is done in the courtroom, trademark oppositions are taken on the papers and all filings are submitted through paper or electronic means.  The merits of the case are adjudicated by Trademark Administrative Judges of the Trademark Trial and Appeal Board, who are empowered to hear such cases, including the nature and quality of the evidence and legal arguments, as well as render a final written decision on the case.

Trademark oppositions are complex legal proceedings that often require the skills of trademark attorneys that are experienced in this form of specialized litigation before the United States Patent and Trademark Office.  If a Notice of Opposition has been filed against your company’s trademark application, it is always advisable to contact a trademark opposition attorney to discuss your options.


In business, there are some secrets worth sharing – particularly if they can help maximize profits and mitigate risks.  And while many innovative ideas are not necessarily original, merely bringing oft-neglected ones into the light can do a lot of good for companies that wish to use them to their competitive advantage.  So with this in mind, let’s start the New Year with a provocative statement: your company’s most valuable assets most likely are not insured against theft, damage, or loss to a competitor.

Yes, that’s right — your intellectual property is showing.

Got IP Insurance?

It is now a well-accepted business valuation maxim that intangible assets such as brands, copyrights, patents, and trade secrets are often valued greater than tangible assets consisting of buildings, inventory, and equipment.  Despite this, a vast majority of businesses fail to carry stand-alone intellectual property insurance coverage.  Why the disconnect?  It begins with a lack of awareness and education of the need for intellectual property insurance products.  For example, in recent articles by Forbes and Entrepreneur that discussed over 10 types of business insurance coverage a company should carry, not one of them was intellectual property insurance.

Yet, consider the following trademark protection and litigation cost facts:

  • In 2012, over 243,000 new trademark applications were filed with the United States Patent and Trademark Office
  • According to the American Intellectual Property Association, the average cost of trademark litigation through trial for cases with the amount in controversy of $1 million or less is $373,000.  Where the amount in controversy is $1M to $10M, the average cost of litigation through trial is $710,000.

Trademark Insurance: Your New Year’s Resolution

Quite often, commercial general liability (CGL) policies specifically exclude claims for trademark infringement.  Now is the time to consider trademark insurance coverage to protect against the costs and expenses of trademark infringement and/or to mitigate the costs of trademark enforcement.  Specialty trademark insurance coverage may be found through insurers such as Intellectual Property Insurance Services Corporation, one of the pioneers in intellectual property insurance coverage in the United States.  Trademark protection insurance polices include coverage for trademark defense (including trademark infringement), abatement insurance, and multi-peril policies.

By having trademark insurance, companies can be confident that they are protecting their valuable brands in a sensible and cost-effective manner.

What’s wrong with trademark litigation today?  Well, in a word, economics.

A national law firm is hired to represent a consumer brand company in a trademark infringement matter and wants to show both the client and the opposing party that it means business.  A flurry of motion practice ensues, aggressive discovery tactics become the norm, and the law firm proudly establishes its very own “war room” to determine what part of the kitchen sink it intends to hurl over the ramparts next. Welcome to Legal Gladiators – Trademark Litigation Edition.

Trademark litigation is an expensive undertaking for trademark owners.  According to a recent survey by the American Intellectual Property Law Association (“AIPLA”), the average legal fees and costs for a case with the amount in controversy under $1 million is $202,000 through the end of discovery and $375,000 through trial.  Coupled with the fact that less than 5% of cases actually proceed to trial, it would seem to make economic sense for trademark attorneys to counsel their clients to consider settlement options as part of an overall trademark dispute strategy.

Continue Reading What Clients Really Want When Hiring a Trademark Law Firm for Litigation Matters

Each year, thousands of companies seek to register their trademarks with the United States Patent and Trademark Office.  But there is an interesting fact that nationally-advertised trademark registration services do not publish: over 33% of trademark applications get refused by the U.S. Trademark Office.

That’s right: obtaining a trademark registration is more complicated than LegalZoom would like you to believe.

Even after the U.S. Patent and Trademark Office has preliminarily approved a trademark application, any company or individual who believes that it may be injured by the registration has the right to object to the trademark application. This is done by preparing and filing a Notice of Opposition with the U.S. Trademark Trial and Appeal Board.

Continue Reading Receive a Notice Of Opposition? You’re not Alone.