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Tips to Avoid Trademark Disputes – Five Part Series

Every year my law firm realizes considerably more revenue from trademark disputes than from work that will help clients avoid disputes. It’s good for business, but bad for clients, so we want that trend to change. Starting this Wednesday, we’ll be posting a five-part series on steps to take to minimize the risk of being in a trademark dispute.  Part 1 is about what to do before you adopt a new trademark.
David Lilenfeld
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Why Big Companies are Hiring Small Law Firms – David M. Lilenfeld, Lilenfeld PC

More and more, legal departments are moving their work from large, big-name law firms to small, boutique firms like Lilenfeld PC.  While the recession prompted much of this movement, I am now observing that this is a lasting practice for efficiency-minded in-house counsel.

Boutique law firms such as ours are flourishing because clients are turning to different law firms for different tasks.  This practice allows legal departments to match specific tasks to the right lawyers. For example, a new client came to us recently specifically because most of the litigation we handle involves trademark infringement claims.

Legal departments are recognizing the benefits of splitting work between firms with different focuses and using small, boutique firms that offer the right fit for each individual matter.  In-house attorneys also acknowledge that the work produced by small firms is as good as (or better than) what they receive from large, big-name law firms.  Small firms like ours also have far fewer conflicts, can make decisions regarding representation in hours instead of days and are equipped to provide personalized service.

Technology has also made small firms more competitive with large ones.  Software, for example, speeds up document production and review, while, cloud computing makes sharing documents, invoices and case developments fast and efficient.

Lilenfeld PC focuses entirely on intellectual property, and its highest hourly billing rate is $325, a rate 40 to 50 percent lower than that of large-firm counterparts.  Our clients receive the same level of expertise as clients of large firms but at a lower price.  Since we have less overhead, we have lower rates, which helps our clients manage budgets and increases the volume of business we receive.

Consider talking with us about your intellectual property needs.

David M. Lilenfeld

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Ninth Circuit Reinstates Levi’s Trademark Suit Against Abercrombie & Fitch.

The Ninth Circuit no longer requires that marks be identical or nearly identical for federal dilution claim.  Here is the opinion.

Levi Strauss & Co. filed a federal trademark dilution claim against Abercrombie & Fitch for infringing Levi’s back pocket stitch design for Levi jeans.  The case made it to a jury trial during which the trial court (Northern District of California) asked the jury to make advisory rulings on fact issues, including whether the two designs were “identical or nearly identical.”  The jury answered that they were neither, from which the District Court entered judgment in A&F’s favor on the dilution claim.  Levi appealed.

The Ninth Circuit observed that the “identical or nearly identical” standard has origins in state law and was incongruous with the federal Trademark Dilution Revision Act’s (15 U.S.C. § 1125(c)) scheme.  The TDRA allows for relief when there is similarity between defendant’s mark and plaintiff’s famous mark which impairs the distinctiveness of the famous mark.  Given that, the Court ruled that all three previously used dilution standards – identicalness, near identicalness and substantial similarity – were too strenuous under TDRA.

Now, at least in the Ninth Circuit, a TDRA plaintiff must only show that the marks are similar and that the junior mark is likely to impair the distinctiveness of the famous mark.

David Lilenfeld

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Is Your Name Also a Trademark?

This blog entry was inspired by Sarah Palin and her daughter, Bristol.  No, I am not about to get political, so keep reading.  Instead, the famous Alaskans have given me an opportunity to write about trademark law’s treatment of  personal names.

Sarah and Bristol Palin have applied to the United States Patent and Trademark Office to register their names as trademarks.  Ms. Palin claims she uses SARAH PALIN in connection with providing “[i]nformation about political elections” and “motivational speaking services in the field of politics, culture, business and values.”  Bristol says she uses BRISTOL PALIN in connection with “motivational speaking services in the field of life choices.”  Here are their applications: Sarah/Bristol.

Will the Palins have a hard time obtaining these registrations — “you betcha”!

A person cannot register her name as a trademark without a showing of “secondary meaning.”  Secondary meaning is a high standard to meet.  In connection with personal names, it is achieved when the public has come to recognize the personal name as a symbol that identifies the service (or good), in contrast to identifying the person.

The mark SARAH PALIN is used to identify a person, not a service.  In other words, the public does not connect the name SARAH PALIN with a particular service, but rather with a particular person, at least not yet.  The same reasoning applies to Bristol, perhaps even more so since she does not have same level of notoriety as her mother.

Secondary meaning tends to grow out of a long association of the name with a particular business.  Secondary meaning requires that, in the public mind, the primary meaning of the name as a word identifying a person has been lost in favor of identifying the business.  Examples of personal names which have acquired secondary meaning – and therefore are protected as trademarks — are RONALD MCDONALD, HOWARD JOHNSON and, to a lesser extent, MARTHA STEWART. Indeed, it takes time before the name and the business become synonymous in the public mind.

So, if you hear a loud “doggone it” coming from Wasilla, that means the Palins just received a final refusal to register their names as trademarks.  It’s on the way.

David Lilenfeld

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