Patent Infringement Panel Discussion in Atlanta

Presumption of Irreparable Harm in Requests for Injunctions After eBay

The Supreme Court, in its 2006 decision in eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), rejected the general rule favoring the granting of permanent injunctions against patent infringement, instead holding that the traditional four-factor analysis for permanent injunctive relief applied in patent infringement cases.

Below you can view a panel discussion examining the after-effects of the eBay decision. It is moderated by patent infringement attorney and Lilenfeld PC founder David M. Lilenfeld. The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.



David M. Lilenfeld

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Opposition to Minor League Team’s Trademark of MINERS Upheld

In a recent decision, the Trademark Trial and Appeal Board (“the Board”) sustained two Oppositions to registration of the mark Miners baseball finding the mark likely to cause confusion with an identical, previously registered trademark. The Applicant, a minor league baseball team in Marion, Illinois, plays in the Frontier League which consists of teams from six Midwestern states, including Illinois and Missouri. The Applicant applied to register the mark MINERS for use in connection with printed materials and “professional baseball imprinted clothing.” However, the mark was already registered and used by the University of Texas at El Paso for printed programs and college imprinted clothing. After evaluating the oppositions, and despite the University of Texas’s lack of a baseball team, the Board concluded that the minor league team’s use of the mark MINERS would likely be confused with the registered mark MINERS owned by the University of Texas. .

While the University of Texas at El Paso no longer fields a baseball team, it still makes good use of the mark MINERS though a licensing agreement with Missouri S&T. The Missouri S&T baseball team operates under the mark, and the University of Texas allows Missouri S&T to use the mark for college imprinted goods and entertainment services in seven Midwestern states, including Missouri and Illinois.

In analyzing the marks, the Board found that the minor league team’s mark MINERS was similar in sound, appearance, meaning and commercial impression to the University of Texas’s mark MINERS.

No shock there: it’s the same word.

The real issue before the Board was whether the goods and trade channels were similar enough to support a finding of likelihood of confusion as to the source of the goods.

When examining the goods themselves, the Board found that the University of Texas’s “media guides” bearing the mark MINERS were legally equivalent to the minor league team’s use of the mark in “printed guides in the field of professional baseball for media use.” The Board also found no distinction between the minor league team’s use of the mark for professional baseball imprinted clothing and Missouri S&T’s licensed use of the mark for college imprinted goods. The minor league team argued that “college imprinted” clothing was distinguishable from its “professional baseball imprinted” clothing because college clothing should bear the school name, be printed in school colors, or be accompanied by a sticker stating “Officially Licensed Collegiate Product.” But the Board rejected this argument, finding that the terms “college imprinted” and “professional baseball imprinted” did not distinguish the goods in any way. The Board noted that different types of imprinting, college or professional, could result in identical goods imprinted with identical marks.

Finally, the Board examined the trade channels through which the goods traveled to consumers. In so doing, the Board presumed that both the minor league and the University of Texas’s printed guides travel through similar trade channels to a similar class of consumers because the goods are so similar. The Board further reasoned that even if the word “collegiate” modified “media guides” in the University of Texas’s registration, the media guides would still be distributed in the same trade channels as the minor league team’s “printed guides in the field of professional baseball for media use.” As for the clothing, the minor league team argued that clothing items bearing the mark traveled through distinct trade channels to professional baseball fans sincethe minor league team’s clothing is sold primarily to Frontier League fans while the University of Texas’s clothing is often sold to fans in the Conference USA region. However, the Board found that no such restrictions on trade channels existed in the trademark applications and registrations.

Ultimately, the Board held that consumers familiar with the University of Texas’s mark MINERS would be likely to believe that printed goods or clothing bearing the minor league team’s mark MINERS originated from or are somehow associated with the same entity, even though the University’s goods are associated with college baseball while the minor league team’s goods are associated with professional baseball. The University of Texas’s opposition to the mark was sustained, and the minor league team’s registration was refused.

David Lilenfeld

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College Football Stars Playing Defense with Trademark Rights

Although the NCAA prevents college athletes from profiting from their athletic success, an increasing number of college football stars are preparing for future deals by filing trademarks now. Gaining legal ownership of their names, nicknames, and catch phrases paves the way for licensing deals down the road. Trademark ownership also prevents others from exploiting and capitalizing on a young player’s fame.

For example, Ohio State running back Ezekiel Elliott recently filed an application with the U.S. Patent and Trademark Office to register his nicknames “Zeke” and “Eze” as trademarks for merchandise. Mississippi State quarterback Dak Prescott is also attempting to obtain trademark rights in his name as well as the phrases “Dak Attack” and “Who Dak.”

Professional players routinely trademark their names and fan phrases, and now, some universities and lawyers are encouraging college athletes to capitalize in the same way. By filing for a trademark registration, college players not only prepare for merchandising when they go pro, but also protect themselves against potential trademark poachers. Additionally, anyone can apply for a trademark, and if an athlete fails to secure legal ownership over his trademark(s), someone else might. Last year, Dak Prescott faced this issue when he discovered someone selling t-shirts with his name on them. In response, he secured a trademark and sued the t-shirt maker, who agreed to stop.

Critics argue that allowing college athletes to secure trademarks blurs the line between professional and amateur sports, and they may have a point. The line is increasingly becoming less clear, especially after a recent court ruling entitling college athletes to compensation when someone uses their likeness commercially. In the judgment, which was entered last fall, a U.S. District Judge ruled in favor of UCLA basketball star Ed O’Bannon and 19 others who sued the NCAA, allowing college players to put money received from television contracts into a trust to be paid to them after they leave school. The NCAA has appealed the decision.

The NCAA still prevents players from receiving commercial payment from their athletic performance, but by trademarking now, college players are certainly becoming savvier about their future interests and their earning potential.

David Lilenfeld

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Have You Considered A Trademark Audit

For those interested in a full review of their trademarks, a trademark audit is the best start. Our trademark audits offer many benefits, including:

Comprehensive inventory of your marks. Our team will take stock of your company’s house marks, word marks, slogans/taglines, logos, and non-traditional marks.

Protection analysis. We’ll check for marks that need to be registered (or need their registrations renewed). In addition, if we find you are maintaining registration for marks that aren’t being used, we’ll let you know. This can save you from paying unnecessary renewal fees and might create an opportunity for you to license a mark.

Examination of usage. Even if your marks are adequately protected, it’s still important to use the proper trademark symbols on your company’s materials (TM, SM, ®). Trademark symbols can potentially deter third parties from using your marks. In some situations, they can also prevent marks from becoming legally generic. Lilenfeld PC’s attorneys will fully review your company’s symbol usage as part of your audit.

Search for new revenue streams. There may even be opportunities to increase revenue by licensing your company’s trademarks to third parties. Our team can search for these opportunities, and we can also guide you through the licensing process if necessary.

Want to learn more about any of our trademark protection services? Just contact our team at (404) 201-2520. We would be happy to speak with you.

David Lilenfeld

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Michael Jordan Awarded $8.9 Million in Right of Publicity Case

Chicago jurors awarded the basketball legend $8.9 million on August 21, 2015 in a lawsuit over the Illinois Right of Publicity Act.  The case involved the now defunct grocery store, Dominick’s Finer Foods (“Dominick’s”), which used Jordan’s name without his permission in a steak ad in 2009. Surprisingly, the case only reached trial this August, after prolonged litigation and reassignment to several judges.  After examining the facts and allegations of the case, Northern District of Illinois Judge Milton I. Shadur ruled that Dominick’s violated Jordan’s right of publicity, and a jury trial on damages followed.

The right of publicity prohibits use of an individual’s identity, including his name and likeness, for commercial purposes without the individual’s consent.  The right of publicity is usually protected by state statute; however, only about fifty percent of states have statutes protecting the right.  Right of publicity statutes generally protect an individual’s identity during his lifetime and often extend that protection for a number of years after his death.

In an oral ruling, Judge Shadur held that Dominick’s misappropriated Jordan’s identity by featuring his name and jersey number in an ad published in a Sports Illustrated Commemorative Issue.  Sports Illustrated provided the ad space for free in exchange for a premium display of the issue in the grocery stores.  Below Jordan’s jersey, the ad read “you are a cut above” and featured a $2-off coupon for steak.  Only two coupons were ever redeemed.

Since Judge Shadur found Dominick’s liable for misappropriation of Jordan’s likeness, the jury trial focused solely on damages.  The court instructed the jury that damages should be measured by the fair market value of the plaintiff’s identity. Fair market value can be calculated based on how much the celebrity would have received for a comparable use of his identity.

Evidence of Jordan’s fair market value included the $480 million he earned from Nike between 2000-2012.  Jordan argued that his identity was worth $10 million, which Judge Shadur openly characterized as greedy.  Because of these comments, Jordan argued that Judge Shadur was biased, and the judge recused himself from the case before trial.  Dominick’s attorneys contended that Jordan should receive no more than $126,900.

After six hours of deliberation, the jury awarded Jordan $8.9 million in damages.  The jury based their award on testimony from both Jordan and his sports economist, who testified that Jordan’s fair market value for the ad was $10 million.  Jordan has stated that the award will be given to charities in Chicago.

David Lilenfeld

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Under Armour Tees Off Spieth Trademark and Logo

Jordan Speith logoi (1)

Under Armour took the right step toward protecting the new Jordan Spieth logo by filing several trademark registration applications with the United States Patent and Trademark Office.

The logo consists of two “J”s with an “S” residing in the negative space between the two “J”s.  Under Armour says in its applications that it intends to use the Spieth logo on footwear, golf gloves, headwear, eyewear, jackets and pants.

Under Armour signed Spieth in January 2013, when he was only 19 years old.  Spieth reportedly had two years remaining on his Under Armour deal, but the parties negotiated an extension, tying Spieth to the fast-growing brand until 2025.  If his current success continues, he’ll surely be one of the highest-paid golfers in the world, especially since he likely receives royalties from sales of his own gear.  Filing a trademark registration application could be the glue that holds things together.

David Lilenfeld

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“GOLF SPORT” Trademark and Design for Clothing Confusingly Similar to “GOLFINO” for Clothing

In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) found that the clothing mark GOLF SPORT and its “golfer” design is confusingly similar to the GOLFINO trademark and design for clothing.  You can access the full opinion for this decision here ( and commentary here (TTAB Blog:

Gady Desler (the “Applicant”) applied for a trademark registration for GOLF SPORT identifying the goods as “dress shirts; golf shirts; polo shirts; shirts; short- sleeved or long-sleeved t-shirts; short-sleeved shirts; sport shirts.”


Thereafter, Golfino AG (the “Opposer”) filed an opposition to the Applicant’s registration on the ground that the trademark resembled the GOLFINO trade name, and previously registered GOLFINO trademarks.  Opposer stated that allowing Applicant’s mark to obtain registration would likely cause confusion with its currently registered marks.

The Board’s main considerations in determining the likelihood of confusion were similarities between the marks and similarities between the goods.

For goods, the TTAB looked at the channels of trade and class of purchasers. The Board noted that the goods did not have to be identical for there to be a likelihood of confusion:

“The goods need not be identical or directly competitive in order for there to be a likelihood of confusion.  Rather, the respective goods need only be related in some manner or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.”

Because the Applicant’s listed goods of “golf shirts” and “shirts” were identical to the Opposer’s registered goods, the Board found that the goods of both the Applicant and the Opposer would be “sold in the same channel of trade and will be bought by the same class of purchasers.”

Additionally, due to Applicant’s admission in the record, the Opposer did not have to prove where the goods would be sold or that the goods would be sold in the same channel of trade (golf stores, golf pro shops, general merchandise stores, and department stores).

After concluding that the DuPont factors related to similarity of goods, similarity of the channels of trade, and similarity of the class of purchasers favored a finding of likelihood of confusion, the Board went on to consider the conditions of sale.

When analyzing the conditions of sale, the Board found that the risk of confusion increased.  Because the Applicant’s goods did not include any prices the Board had to consider that the clothing would include inexpensive as well as expensive items.  Inexpensive items require less purchaser sophistication and the exercise of a smaller degree of care when purchasing, which increases the likelihood of consumer confusion.  Therefore, this factor also weighed in favor of the Opposer.

Lastly, the TTAB considered the similarity or dissimilarity of the marks in their entirety. The Board noted that when the goods and services are identical “the degree of similarity necessary to support a conclusion of likely confusion declines.”

The Board found through the Applicant’s admissions that the marks were “virtually identical” in appearance, sound, and meaning.  The Applicant’s “Golfer” design was found to be descriptive and “predominated over the descriptive wording GOLF SPORT.” The Board also found that GOLF SPORT and GOLFINO were similar in sound and connotation because they both begin with the word GOLF.

Thus, after analyzing the DuPont factors, the Board ultimately found in favor of the Opposer. The Board agreed that the Opposer had priority and that the Applicant’s GOLF SPORT mark and design would likely be confused with the Opposer’s prior GOLFINO trademark for the same goods.

David Lilenfeld

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Trademark TENNIS INDUSTRY ASSOCIATION Merely Descriptive, but Not Generic

TENNISIn a recent decision ( The Trademark Trial and Appeal Board (the “Board”) reversed a refusal to register TENNIS INDUSTRY ASSOCIATION on the basis of genericness but affirmed the refusal after finding that the Applicant had failed to prove acquired distinctiveness.

Tennis Industry Assn. (the “Applicant”) filed an application to register TENNIS INDUSTRY ASSOCIATION as a trademark for the following good and services:

“association services, namely, promoting the interests of tennis facilities, tennis manufacturers, tennis retailers and tennis court contractors; providing market research services to track the economic vitality of the tennis industry”

Initially the Trademark Examiner (the “Examiner”) refused the registration under Section 2(e)(1) stating that the proposed trademark was merely descriptive of the services but, in a subsequent action, rejected the Applicant’s showing of acquired distinctiveness stating that the trademark was actually generic.

The Applicant filed a brief arguing that the Examiner should have raised the issue of genericness initially.  The Board held that the rules do not permit an initial refusal on the ground of genericness quoting the rule that “even if it appears the mark is generic, the proper basis for the initial refusal is Section 2(e)(1).”  Further, the Board noted that only when the Applicant raised the issue of proving distinctiveness in their response did the Examiner come back and say it was generic.

Merely Distinctive, Not Generic

The two issues on appeal were whether the mark TENNIS INDUSTRY ASSOCIATION was generic in relation to the goods and services and whether a Section 2(f) showing of acquired distinctiveness was satisfied.

The Board noted that the Applicant had already conceded that the proposed mark is descriptive by seeking registration pursuant to Section 2(f).

“A mark is a generic name if it refers to the class or category of goods and/or services with which it is used.”  The Board looked to the public’s recognition of the mark in order to determine genericness. The Board used the Applicant’s recitation of services and sought to find “whether the designation TENNIS INDUSTRY ASSOCIATION is understood by the relevant purchasing public primarily to refer to that genus of services.” It defined the “relevant purchasing public” as “those whose interests are promoted by the applicant’s identified services.”

Because the proposed mark is a phrase, the Board followed the court’s analysis in In re The Am. Fertility Society:

“Where the proposed mark is a phrase, the board cannot simply site definitions and generic uses of the constituent terms of a mark; it must conduct an inquiry into the meaning of the disputed phrase as a whole.”

The Board looked at the record of evidence for genericness submitted by the Examiner consisting of five examples of “tennis industry association” used in all lower case and where no particular source was identified. The Examiner also recorded third-party registrations that include the terms INDUSRTY and ASSOCIATION in which those terms are disclaimed in the registered marks.

The Board found that the Office had not shown by clear and convincing evidence that TENNIS INDUSTRY ASSOCIATION is generic for the services. The Board reasoned that even within the Examiner’s evidence, it is not clear that the mark without capitalization is intended to indicate source. The Board also acknowledged that one of the articles the examiner offered was actually a reference to the Applicant.

The Board ended stating that there is a difference between an apt name and a generic name stating that the Examiner’s evidence shows that TENNIS INDUSTRY ASSOCIATION is an apt name for an association of tennis industry members but not that the mark is generic for the recited associated services.”

No Acquired Distinctiveness

Unlike the determination for genericness, the Applicant had the burden of establishing acquired distinctiveness for its descriptive mark. To prove acquired distinction the Applicant submitted a press release, an annual report, and 500 articles in which the Applicant was identified as TENNIS INDUSTRY ASSOCIATION. The Applicant also submitted evidence of almost $500,000 spent in promotional expenses and $16.5 million in promotion for its grassroots tennis program.

The Board found the evidence did not provide proof of public recognition of TENNIS INDUSTRY ASSOCIATION as a source-identifier reasoning that sheer numbers alone are not necessarily enough to prove secondary meaning. The Board found that the articles were not very compelling because many of them were duplicates and outdated and that there was little evidence that “consumers to whom applicant’s services are directed view TENNIS INDUSTRY ASSOCIATION as a distinctive source indicator.”

In conclusion, although the Board reversed the Examiner’s refusal to register TENNIS INDUSTRY ASSOCIATION on the ground of genericness, it did find that the proposed mark was merely descriptive and affirmed the refusal on the ground that the Applicant failed to show acquired distinctiveness.

David Lilenfeld

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A Provisional Patent Application and a Non-Provisional Patent Application: What’s the Difference!?

On March 13, 2013, the United States, under the America Invents Act, moved from a first-to-invent patent system to a first-to-file system. In other words, the first person to file a patent application will have priority over another, regardless of who was the first inventor. Clearly, now more than ever, there is a great importance in getting your patent application filed as soon as your invention is ready to be filed. A great mechanism to do this is through the use of provisional patent applications.

A provisional patent application will never mature into a patent. Instead, a follow up non-provisional patent application will need to be filed based on the provisional, or the provisional itself can be converted to a non-provisional patent application. So if you still need to file a non-provisional patent application, why bother with a provisional?

One of the biggest values in filing a provisional patent application is gaining the benefit of an earlier filing date. The provisional patent application gets your foot in the door so to speak without some of the formalities required with a non-provisional patent application. The early filing date can put you in favorable position in relation to your competitors or others in general who might be working on a similar invention.

Another reason provisional patent applications can be a good idea is due to cost. The USPTO filing fee for a provisional patent application is, if you qualify for micro-entity status, as low as $65 (versus a $400 filing fee for a non-provisional patent application). Moreover, the cost of preparation of a provisional is generally much less due to the less formal filing requirements when compared to a non-provisional. For example, a provisional application does not require patent claims.

A provisional patent application also allows you to reveal your invention to the public without fear of loss of your patent rights. Without such filing, a public disclosure can result in the loss of your patent rights in the United States. However, in some situation where a public disclosure has already been made, you may have a one-year grace period to file a patent application depending on the circumstances. Many times, the Inventor is unaware of these public disclosure limitations, and in these situations, where that one-year grace period is approaching, filing a provisional patent application may be the best choice due to time constraints. Unfortunately, public disclosures will most certainly result in the loss of your patent rights in many foreign countries.

Upon filing of the provisional application, you are also free to conduct marketing campaigns and get a sense of what the demand for your invention may be. This can also help to develop cash inflow to fund down-stream patent related costs, not to mention cash to further develop your invention. You may also, at this point label your invention as “patent pending.”

Another benefit of filing a provisional patent application is that you can combine multiple provisional into one non-provisional application. This is useful in situations where you file a first provisional application and then you subsequently develop another variation or embodiment that was not disclosed in the original. You can quickly file another provisional application to protect the new embodiment, and as long as you filed the new provisional application before the one-year filing date of the first provisional application, you can combine them into one all-encompassing non-provisional patent application.

Still, there are some important caveats here. Importantly, just because the provisional application filing requirements are less formal does not mean that the invention disclosure can be incomplete. You must completely describe your invention as it stands at the time in the provisional application. Put another way, a provisional patent application is only as good as the level of detail of the disclosure found within. A poorly written provisional application can do more harm than good.

It is also of note that a provisional patent application has a lifespan of 12 months from the filing date. In order to take advantage of the provisional application filing date, you must file a non-provisional patent application based off of the provisional application before the 12-month anniversary, after which it will become abandoned.

Whether or not you file a provisional or non-provisional patent application is up to you. As you can see, there are many benefits to in using provisional patent applications.

David Lilenfeld


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Trademark Office Rejects Sporting Goods Game Face Mark for Sports Masks

In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) affirmed a refusal to register GAME FACE for sports masks after finding that the trademark is likely to be confused with the registered GAME FACE marks used with paintball masks.

Figure 1: Applicant’s Sports Mask

Markwort Sporting Goods Company (the “Applicant”) filed an application to register the trademark GAME FACE for use on sports face masks for baseball, softball, soccer, flag football, lacrosse and field hockey.

Initially the Trademark Office refused registration on the ground that the mark was confusingly similar to a trademark that had already been registered (the “Registrant”).

The Registrant used the GAME FACE trademark in connection with “paintball sporting articles, namely protective masks”.  However, the Applicant’s application did not list paintball as one of the sports and specifically noted that its facemask is “incapable of protecting the eyes from liquid contaminates as in paintball activities”.

Figure 2: Registrant's Paintball Mask

Figure 2: Registrant’s Paintball Mask

The Trademark Office used webpages from three major sporting goods stores as evidence that the marks are likely to cause confusion:

“A purchaser who encounters the Applicant’s GAME FACE protective mask would also encounter the Registrant’s GAME FACE protective mask in the same store, leading him to be confused into believe the two products emanate from the same source.” The Trademark Office asserted “the goods are similar because they are used in the same way and have the same purpose”. The Board agreed and focused on the fact that both the Applicant and the Registrant’s goods have the same purpose of protecting the face by preventing balls from causing injury.

Applicant argued that its sports masks are different because the masks do not prevent liquids or paintballs from striking the face. Applicant also refuted the use of the web pages as evidence of related trade channels.

The Trademark Trial and Appeal Board held that the Trademark Office had not established that the trade channels were related, and that the webpages were not persuasive evidence. The Board reasoned that there is no evidence that “such goods are ever located in the same section of the store or near one another” and that “the mere fact goods can be found in the same stores of a large retailer does not mean the goods are related”.

Although the Board rejected the webpages as evidence, it found that “a consumer who has a lacrosse mask and then is considering a paintball mask would likely consider the goods as emanating from the same source even if they are offered for sale in different sections of the same store or on different web pages”.

For the Board, the only necessary determination was whether a “viable relationship” existed between the applicant’s sports mask and the registrant’s paintball mask. “Where at least one of the cited marks is identical to the applicant’s mark, in order to find the goods related, there need only be a viable relationship between the respective goods”. In this case, the Board concluded the viable relationship requirement was satisfied.

It’s worth noting that the TTAB also disagreed that GAME FACE is a weak mark when applied to the goods involved. The Board also disagreed that consumers would take heightened care in purchasing the masks, stating the face masks were not expensive enough to justify heightened care.

Due to the “identical function” of the applicant’s sports mask and the registrant’s paintball mask, the TTAB affirmed the refusal to register applicant’s mark GAME FACE for sports mask. You can read more about this decision and the opinion here.

David Lilenfeld


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