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  But there is an interesting fact that nationally-advertised trademark registration services do not publish: over 33% of trademark applications get refused by the U.S. Trademark Office.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.

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.”Continue Reading Purple Haze is a Strong Trademark for Beer but Apparently not for Hendrix

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