James Hastings

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If U.S. Trademark Trial and Appeal Board rulings are any indication, the “force” is  apparently with those who invest substantial sums of money into advertising and promoting their brand names.

In a recent decision before the TTAB, Salesforce.com Inc. was successful in preventing Edataforce Consulting, LLC  from asserting its rights in and to the mark EDATAFORCE for registration on the Principal Register. One of the influencing factors supporting judgment in favor of Salesforce.com was its substantial investment in the marketing and advertising of its pleaded family of “FORCE” marks and corresponding sales associated with the subject marks.Continue Reading Salesforce® Flexes its Muscles before the TTAB

When a company discovers that a competitor has filed a trademark application for a brand name that may be deemed confusingly similar to its own, it has an effective alternative to expensive U.S. District Court litigation: oppose the trademark application by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board (“TTAB”).

Here are 3 considerations when considering to file a trademark opposition proceeding:Continue Reading Opposing a Trademark Application: Getting Started

Every in-house counsel knows the importance of protecting his or her client’s trademark portfolio from potentially confusingly similar trademarks.  So how do the best in-house counsel put their limited legal budgets to good use when considering when (or when not) to file a trademark opposition?

To quote the knight in Indiana Jones and The Last Crusade: they “choose wisely.”

Here are some tips on how to execute a simple and effective, U.S. trademark portfolio protection strategy.Continue Reading Trademark Opposition Strategies for In House-Counsel

Trademark enforcement programs, also known as trademark monitoring programs, provide an important and proactive means for companies to monitor the commercial marketplace and federal and state trademark registries for possible trademark infringement violations.

Companies should consider the following steps to properly protect their valuable trademarks rights in the United States:

1.  Conduct a Trademark Audit…

Trademark owners who are considering whether to bring a trademark opposition should keep in mind the Boy Scouts® motto: be prepared.  Not all trademark opposition cases are alike; therefore in assessing the strength of a particular case, it is wise to consider three elements that could have a significant impact on the likelihood of…

3M, the originator of the famous POST-IT® brand of adhesive notes, recently prevailed in opposing the trademark application of an applicant that attempted to register the mark “Flag-it” for similar labeling goods.

In the case, 3M Company v. Professional Gallery, Inc., the Applicant, had applied to register the mark FLAG-IT! in standard characters for “adhesive-backed…

The failure to protect valuable brand names can lead to loss of competitive advantage.  Since most companies intangible assets are valued greater than their physical assets and inventory, the importance of trademark protection is becoming more apparent to corporate leaders.

Case in point?  The highly competitive beverage industry.

As reported by the good folks at…

Take cover, a trademark gunfight is brewing!

The First Shot: Duke University

John Wayne, our matinee idol, the symbol of the American West, is being tested once again.  No, not on the silver screen, but before the U.S. Trademark Trial and Appeal Board.  His antagonist?  Duke University, best known for stellar academics, bucolic settings, and…