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Avoiding Trademark Disputes: Only Adopt a New Trademark After it is Cleared (1/5)

Before you adopt a new trademark you should devote resources to making sure, to the greatest extent you can, that using that trademark will not infringe on some other party’s rights. This sounds obvious, but we see many trademark disputes occur because not enough effort was made before a new trademark was adopted.

Once you’ve identified the trademark you would like to use, we generally suggest that you look for the same and similar trademarks in your industry and related industry on the Internet. If you do not find anything that looks problematic, step two is to forward your results to a trademark lawyer and retain that lawyer to conduct a formal search. Most trademark lawyers, including us at Lilenfeld PC, will engage a vendor to conduct what is often called a “trademark availability search.”

The results from the trademark availability search are listed in a report, which consists of trademarks which are the same or similar to the trademark you are considering. The report itself does not offer any opinions about whether it is safe to adopt the trademark or not.  Instead, your trademark lawyer will review the report and provide a legal opinion about the risks, if any, associated with adopting the trademark. Following this process will not guarantee that no one claims that your new trademark creates an issue, but it should greatly lower the risk and give your trademark the best start.

Clearing your trademark is step one in avoiding trademark disputes. We’ll post Part 2 of 5 next week.  Take care.
David M. Lilenfeld
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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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