Trademark Registrations Can Be Amended to Adapt to New Technologies

By: Kennington Groff
Lilenfeld PC

Our Client’s federal registrations, which it originally secured in the 1990s, listed “printed charts” as the products used with its trademark. So when our Client switched from paper to digital products, its federal trademark registrations no longer provided the same protections for the updated product. What could be done to help the Client?

On September 1, 2015, the USPTO began a pilot program to allow, under limited circumstances upon petition to the Director, amendments to identifications of goods/services in trademark registrations that would otherwise be beyond the scope of the current identification, but are deemed necessary because evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers.

As an evolving pilot program, we were able to work with the Director to have Trademark Rule 2.173(e) waived. Trademark Rule 2.173(e) may only be waived “in an extraordinary situation, when justice requires, and no other party is injured.” In our situation, we were able to successfully convert our Client’s trademark registrations, that has been around for over 30 years, in connection with “printed charts,” into a trademark registration for “downloadable charts.” With ever changing technology, the printed materials had become dated. Our Client needed to evolve to stay competitive in a rapidly evolving industry.

In order to show that an extraordinary situation exists, for which for which justice requires a rule waiver, we declared, to the best of our knowledge, that (1) based on changes due to evolving technology in the manner or medium by which products and services are offered for sale and provided to consumers, our Client cannot show use on the original goods or services; (2) our Client still uses the mark on other goods or services reflecting the evolved technology, and the underlying content or subject matter remains unchanged; and (3) absent an amendment of the identification, our Client would be forced to delete the original goods or services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods or services.

In considering third-party harm in allowing the amendment, the USPTO performed a new search of the Trademark database of registered and pending marks and identified no marks that might be harmed by the acceptance of the amendment.  As an additional means of reducing the possibility of third-party harm and to provide a mechanism for interested parties to comment about proposed amendments prior to acceptance, the USPTO published the proposed amendment for public comment on the USPTO website and no comments were received.

Currently the pilot program does not have a termination date, but the results of the pilot will help the USPTO determine if it will continue to allow such amendments in the future. Rest assured though that all registration amendments granted under the pilot program are permanent, regardless of the outcome of the program.

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Is a Favicon a Trademark

By: Kennington Groff
Lilenfeld PC

What’s a “favicon”? Surprisingly, while not a popular term, you probably see a favicon every day.

A favicon is a small pixel icon that appears at the top of a web browser on the tab:

A favicon serves as a branding identifier for your website so that internet users can easily locate your page when they have multiple tabs open in their browser.  All of these icons act as source identifiers for the brand they are associated with.

The United States Patent and Trademark Office states that a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos.

As technology evolves, people are beginning to brand their products in different ways. Before it will allow a trademark to be registered, the Trademark Office requires proof that the trademark is actually being used in a public-facing way. So is a favicon sufficient to prove that you are using the trademark in a public-facing way? While not a guaranteed answer, in certain circumstances the answer is “yes.” For example if your Client is trying to register a trademark in connection with a website that sells certain products online, the favicon may very well be an acceptable specimen. Technically, in this situation the favicon is being used in commerce.

As more applicants begin to submit favicons as the proof of use of a trademark, the Trademark Office will likely issue more guidelines on the use of favicons.

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Dr. Dre v. Dr. Drai: Doctors Battle Over Trademark Rights

One “doctor” is known by his stage name, Dr. Dre, and is heavily involved in the music industry, a Grammy award winning-rapper, and known worldwide. The other, Dr. Drai, is a board certified osteopathic doctor and OB/GYN in Pennsylvania. Both “doctors” have been involved in a trademark dispute over the rights to use their name.


The Pennsylvania OB/GYN wanted to trademark his name Dr. Drai for medical educational and entertainment services, health care consulting, and related books. However, Dr. Dre, the music icon, was not happy with this and tried to prevent Dr. Drai from getting a trademark for his name because Dr. Dre believed consumers would be confused between to two doctors.


However, the Trademark Trial and Appeal Board (TTAB) dealt a blow to Dr. Dre. The TTAB evaluated various factors in determining the likelihood of confusion between the marks. Frist, TTAB found that the marks Dr. Dre and Dr. Drai were similar and weighed in favor of a finding of consumer confusion. Next, TTAB evaluated the strength or fame of the prior mark. However, Dr. Dre’s mark was found to only be famous in connection with music—not the medical field.


Crucial to the determination of different services was that Dr. Drai would use his mark in connection with osteopathic medicine, obstetrics and gynecology—areas that are completely different than Dr. Dre’s area—music. Therefore, the Board found that the goods were not related. So, this factor favored the Pennsylvania Dr. Drai.


The Board concluded that there is no likelihood of confusion between Dr. Dre and Dr. Drai. Even though the marks might be similar, the goods and services offered by Dr. Dre (music related) and Dr. Drai (medical related) are too different and outweigh any similarity in appearance.

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The Basics of Amazon’s Brand Registry for Trademarks

Amazon has a service called “Amazon Brand Registry” that helps your company protect its registered trademarks for products you sell on Amazon. To enroll in Amazon’s program, your company will need to have its trademark registered with the United States Patent and Trademark Office.


Once your trademark is enrolled in the Amazon Brand Registry, you will have access to Amazon’s search and report tools to help you find listings that make unauthorized use of your registered trademark. Content can be searched across various Amazon stores. Image searches where you can find listings on Amazon that use your company’s logo or image of your product on a listing that is not yours and bulk ASIN searches to search in bulk for potentially infringing content are available to you.


In addition, a feature called “Transparency” offers item-level tracing for products. You may assign unique codes to each product you manufacture that Amazon will then scan for at its fulfillment centers to ensure no counterfeit products are being sold to consumers. If you find infringement, Amazon will investigate and will most likely take action within eight hours.


Eligibility / Enrollment Requirements


In addition to your trademark being federally registered, your company will need a Vendor or Seller account on Amazon.


Once the necessary information is submitted to Amazon, Amazon will contact your trademark lawyer to complete the enrollment process.


Additional Features


Not only does being registered in the Amazon Brand Registry help prevent infringement, but you will gain greater access to your product detail pages to ensure accurate information is listed.


Contact us if you would like to discuss your company using Amazon’s Brand Registry.

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The Basics of Trademarks in Comparative Advertising

Do you have an advertisement for your goods or services (including trademarked goods/services) in which they are compared to those of a competitor? Is one of your competitors comparing your goods/services to theirs? That is comparative advertising, and it is generally permissible. However, all comparative advertisements must be truthful and must not be deceptive. Truthful comparative advertisements are beneficial to consumers and can help them make good purchasing decisions. In short, if you want to create a comparative advertisement and avoid any pitfalls, be honest, accurate, and truthful.


Comparative advertisements usually highlight measurable characteristics between goods/services, such as price. However, other metrics can be used, including comparing speed of service, better taste, quality of product, etc. in comparative advertisements.


Comparative advertisements are governed by a variety of regulations and laws. However, the main ones are The Federal Trade Commission Act (FTC Act) and Section 43(a) of the Lanham Act (15 U.S.C. 1125(a) (aka the “Trademark Act”)). Your advertisement may attack or criticize a competitor’s goods/services as long as your statements are truthful and not deceptive. So, your comparison could be literally true, but it cannot be deceptive. To avoid deceptive comparisons, do not omit facts that may mislead a consumer who then makes a decision based on your misleading statement. Truthful comparative advertisements can help maintain a strong brand in your trademark.


There are multiple avenues to take when another company is improperly comparing its goods/services in a comparative advertisement. Demand letters (including takedown requests) may be sent to both the company with the comparative advertisement and its web hosting provider or outlet where the advertisement is displayed. You may file a complaint with the FTC, but this is usually only beneficial if there is a large amount of consumer harm instead of just a dispute between two competitors. If you have national advertisements and meet certain criteria, you may file a complaint with the National Advertising Division of the Council of Better Business Bureaus, Inc. Finally, you may file a complaint in Federal Court under the Lanham Act (aka the “Trademark Act”). You may be entitled to injunctive relief (to stop the false advertiser from continuing to display the comparative advertisement during the case—and possibly even the display of your trademark) and/or for monetary damages to be awarded. In general, the party seeking monetary relief must prove that actual consumer deception or confusion occurred due to “material” statements or omissions in the comparative advertisement that caused actual harm.


At Lilenfeld PC, we can work with you to protect your company’s brand and trademark by getting an opposing company to stop using a deceptive comparative advertisement. We also can defend your comparative advertisement and trademark against another company if you received a demand letter or if a lawsuit was filed against you. If you have any questions or would like a consultation, please contact us.

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Court Awards Client Its Attorney’s Fees

Lilenfeld PC’s Client won attorneys’ fees that the opposing party (who lost at summary judgment) must pay in a copyright infringement case. Our Client, who was one of the Defendants, had the case dismissed without the need of a trial. (See our April 17, 2018 blog post, Lilenfeld PC Client Wins Complex Copyright Infringement Case Without Going to Trial).

The Court evaluated the factors relating to whether attorneys’ fees should be awarded and found that the Plaintiff’s copyright infringement claims were frivolous and not objectively reasonable, partly because we succeeded in convincing the Court that the Plaintiff failed to produce actual blueprint/house plans. This failure made it impossible for the Court to determine what part, if any, of the Plaintiff’s plans deserved copyright protection. Also, the Plaintiff could not prove that our Client’s plans were “substantially similar” to its own plans.

The Court also found that the Plaintiff had at least questionable motivations due to the lack of merits of its copyright infringement claim and the fact that only a single homeowner and contractor were involved, suggesting small actual damages.

Finally, the Court concluded that awarding our Client its attorneys’ fees would serve the goals of compensation and deterrence under copyright laws. Thus, the Court found that our Client is entitled to recover its attorneys’ fees from the Plaintiff


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Lilenfeld PC Client Wins Complex Copyright Infringement Case Without Going to Trial

Lilenfeld PC’s Client prevailed in a complex copyright infringement lawsuit.

Our Client was able to win be prevailing on “summary judgment,” meaning the copyright infringement case did not need to go to trial. After reviewing the evidence and the legal issues, Judge Story of the Northern District of Georgia, decided our Client should prevail as a matter of law.

David M. Lilenfeld and Kaitlyn A. Haase conducted oral arguments on our Client’s motion for summary judgment in November 2017.

The opposing party had accused our Client of infringing the copyright in blueprints/house plans. However, the opposing party had not properly registered its plans with the United States Copyright Office.

Lilenfeld PC convinced the Court that the opposing party could not prevail in its copyright infringement claim as a result of the blueprints/house plans not being properly registered.

Lilenfeld PC was also able to convince the Court that our Client’s blueprint/house plan was not “substantially similar” to the blueprint/house plan the opposing party claimed was infringed. The Court agreed with us that there were so many differences between the respective plans that they could not be “substantially similar” under United States Copyright law.

In addition to dismissing the lawsuit, the Court has ordered the opposing party to pay the costs our Client incurred to defend this lawsuit.

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Kaitlyn A. Haase Selected for 2018 Georgia Rising Leaders

Kaitlyn A. Haase has been selected to the 2018 Georgia Rising Stars list. Each year, no Kaitlyn Haase Headshotmore than 2.5 percent of the lawyers in the state are selected by the research team at Super Lawyers to receive this honor. Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys. The Super Lawyers lists are published nationwide in Super Lawyers Magazines and in leading city and regional magazines and newspapers across the country. Super Lawyers Magazines also feature editorial profiles of attorneys who embody excellence in the practice of law.  Congratulations Kaitlyn!!

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David “Light ‘Em Up” Lilenfeld is LITERALLY Fighting for Food

David Lilenfeld will be fighting (literally . . . he’ll be in a boxing match) on May 3 in Downtown Atlanta to raise money for Open Hand Atlanta, which delivers meals and nourishment to Atlanta-area homebound individuals (

He has never boxed before and is 4 weeks into an intense, 10 week fight camp, working hard to win his bout!

To benefit Open Hand Atlanta, tickets may be purchased to sit ringside at Corporate Fight, Night, sponsoring David:  For those unable to join on May 3rd, Money donations are also accepted.

Make sure to check out the event here:

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How to Hire a Trademark or Copyright Lawyer

How to Hire a Trademark or Copyright Lawyer

I constantly see companies being misled into hiring the wrong lawyers for trademark and copyright disputes. Trademark and copyright are highly specialized areas of the law and can easily be mishandled. Unfortunately, many lawyers mislead clients into thinking they have more trademark or copyright dispute experience than they actually have. As of today, I have four different cases in which the opposing parties’ attorneys are mishandling their cases. While this is good for my clients, the opposing parties are unknowingly in jeopardy – not only will they lose their cases but they may end-up being responsible for paying my clients’ attorney fees.

If a lawyer tells you he/she has trademark or copyright litigation experience, you should ask for a list of all trademark or copyright cases they have handled. A lawyer who has been honest with you about his or her experience will not be insulted by this request. You should also use the below steps to verify the lawyer has sufficient experience.

Use PACER for Trademark And Copyright Lawsuits

If you need to hire a trademark or copyright lawyer for a lawsuit (aka a trademark or copyright litigator) you should ask the lawyer for a list of trademark lawsuits he or she has handled.  A lawyer can easily produce a list for you by accessing PACER (the Public Access to Court Electronic Records). If a lawyer will not do this for you, be careful. Non-lawyers can also conduct their own limited searches on PACER.  Note that the federal courts code trademark lawsuits are under the number “840” and copyright lawsuits under “820” – so look for those codes.

If you need help assessing your lawyer’s trademark or copyright experience, feel free to email me:

David M. Lilenfeld

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