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 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…

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…

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.

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.

Here’s another example of how the naming of trademarks is often influenced by references to pop-culture.

In a recent U.S. trademark opposition decision, the Trademark Trial and Appeal Board ruled that the mark SUNNY HAZE for beer was confusingly similar to PURPLE HAZE, for inter alia, beer, so as to prevent registration.  In the case, Abita Brewing Company LLC v. Mother Earth Brewing, LLC, the Board was faced with considering whether the Sunny Haze mark of Applicant for “beer, and brew malt-based alcoholic beverage in the nature of beer” was confusingly similar to Opposer’s Purple Haze mark for “beer, ale, lager, and malt liquor.”  In its Notice of Opposition, the Opposer also relied on two of its other registrations for the Purple Haze mark for “shirts, caps, headwear, and beverageware.”