Archives for Intellectual Property Attorney

Difference between Actual Use (1(a)) and Intent to Use Applications (1(b)) with the Trademark Office

By: Kennington Groff
Lilenfeld PC

So, what really is the difference between a Section 1(a) actual use application and a Section 1(b) intent to use trademark registration application? Is one application better than the other? Why would I file a trademark registration application if I am not actually using my mark? How do I protect this new name I thought of for by business/product? To learn more about the option that is right for you and the pros and cons of each application check out our comments below.

In order to file a Section 1(a) trademark registration application, referred to also as an Actual Use Application, a company/individual must be actively using its trademark in commerce in relation to the goods and/or services it offers or sells. The Trademark Manual of Examining Procedure § 901.01 defines what this “use in commerce” means:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  For purposes of this Act, a mark shall be deemed to be in use in commerce–

  • (1) on goods when—
  • (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
  • (B) the goods are sold or transported in commerce, and
  • (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

So, when an Applicant can show that it is actively using its mark in commerce in connection with the services/goods it offers, then a Section 1(a) Actual Use application for registration should be filed.

A Section 1(b) Intent to Use application is a way to protect a trademark before you start using it.

One of the greatest benefits of an intent to use application is the opportunity for a company/individual to “reserve” a mark and prevent others from registering a mark in the event they file an application after you. This “reservation” can save people from a rebrand and can make it costly for later filed trademark registration applicants to try and register their mark/ prevent you from using your mark. It can also serve as a deterrent for anyone searching the Trademark Office for marks already in use.

Once an intent to use trademark registration has gone through the process with the Trademark Office and a Notice of Allowance has been issued, this triggers the next steps in the process to show the Trademark Office you are using your mark. Applicants have two options at this time to either (1) convert their application to an in-use application by filing a statement of use showing the Trademark Office their mark is now in use in commerce in connection with their goods/ services or (2) filing an extension to buy more time to show the Trademark Office their mark is not yet in use. A total of 5 extensions are allowed and must be renewed every six months after the Trademark Office issues a Notice of Allowance.

All in all, determining which trademark registration application to file is critical to determining the validity of your mark. Further, waiting too long to file a trademark registration application can result in someone already having obtained a registration on your mark or a mark similar to yours that can costs you a significant amount of time and money down the road to try and obtain a registration for your mark.

If you are not sure when to file a trademark registration application or which application to file, contact Lilenfeld PC at (404) 201-2520 with any questions you may have regarding applying to register your trademark.

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Your Intellectual Property Attorney Can Be Located In A Different State

By: Robin Gentry
Lilenfeld PC

As more and more businesses transition to virtual workplaces and become more comfortable with virtual meetings and working from home, it is natural to wonder if your lawyer needs to be located in the same state as your business. For most intellectual property questions, your lawyer can be located anywhere in the United States. The reason is because most of the relevant intellectual property laws involving patents, trademarks, copyrights and trade secrets are federal laws which are the same throughout the United States. So unlike other types of attorneys who practice personal injury, estate planning, family disputes and criminal law to name a few, your intellectual property attorney is not confined by the boundaries of their state.

For example, the United States Patent and Trademark Office (“USPTO”) is responsible for rules governing how to obtain a federal trademark registration for product and service identification and for issuing patents to inventors for their inventions for all applicants, regardless of where the business is located. The same is true for the United States Copyright Office, which is a part of the Library of Congress. The Copyright Office maintains records of all copyright registrations throughout the US. Intellectual property attorneys can file these applications from anywhere. In fact, because copyright, trademark, and patent rights are governed by federal law and protection extends nationwide, intellectual property attorneys focus on broad spectrum protection of their clients’ interests that are not focused on any one particular state.

Prior to the 2020 shelter in place regulations and shutdown, intellectual property attorneys were accustomed to having clients that they rarely, if ever met in person. Telephone, email and video-conferencing were already existing powerful tools that allowed intellectual property attorneys to communicate with clients whose needs were able to be easily handled without the necessity of being located in the same city or even state.

At Lilenfeld PC, we work with you to protect your company’s trademarks, copyrights and inventions. If you have any questions or would like a consultation, please contact us at (404) 201-2520.

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New Trademark Modernization Act of 2020

By: Robin Gentry
Lilenfeld PC

You may have missed it if you were enjoying some much-needed time off between Christmas and the New Year, but on December 27, 2020, the Trademark Modernization Act of 2020 was signed into law as part of the coronavirus relief bill.

While the new law touches on a variety of different aspects of trademark law, there are two key provisions that were amended. These important new provisions include (1) powerful new tools to challenge trademark registrations at the United States Patent and Trademark Office (“USPTO”) when the trademark has not actually been used in commerce and (2) an important provision for trademark holders involved in litigation.

When an applicant applies for a trademark registration, the applicant is allowed to choose which goods and services are associated with the trademark. Further, the applicant must state whether these goods or services have been used in connection with the mark in interstate commerce or the applicant intends to use the mark in the future in connection with these goods and services. However, to qualify for a U.S. registration, the trademark must have been used in connection with those goods and services in interstate commerce. Unfortunately, some applicants list a number of goods and services that the applicant has never provided and has never used the trademark on. This creates a serious, and sometimes very costly, problem for other trademark users because it is possible that the same (or similar) trademarks can be used by different owners when the goods and services are very different, such as Delta airlines and Delta faucets.

First, the Trademark Modernization Act of 2020 now makes it easy for third parties to submit evidence in a letter of protest directly into the record of an application where such evidence provides a ground for refusal of the registration. Examples of such evidence include showing that the applicant does not use the trademark on a listed good or service.

Next, the Trademark Modernization Act of 2020 also provides an expedited process to remove any issued registrations if the trademark has not been used in interstate commerce in the United States for the listed goods and services. Anyone wishing to challenge a registered mark must submit a petition with evidence of a reasonable investigation regarding the challenged mark and specific goods or services that the petitioner alleges are not being used. The Director of the Trademark Office may then notify the registrant and open proceedings to expunge the registration upon a finding of a prima facie case. This new expedited process provides an alternative to a cancellation proceeding before the TTAB, but must be filed three years after a registration.

Lastly with regard to the TTAB, the Trademark Modernization Act of 2020 also provides new rules about the length of time for responses to Office Actions during the trademark application process. Now, an Examiner is allowed to set the time to respond to an Office Action from 60 days to 6 months. Traditionally, an applicant always had 6 months to respond. An applicant may request an extension for up to 6 months from the date of the Office Action so long as the applicant pays a fee for the extension.

Finally, on the trademark litigation side, the Trademark Modernization Act of 2020 provides that there is a rebuttable presumption of irreparable harm when a trademark is infringed. This is important because a showing of irreparable harm is necessary to obtain an injunction to prevent an infringer from using your mark. Courts have varied on whether harm could be presumed in the past, but this new Act clarifies that upon a finding of trademark infringement, irreparable harm can be presumed in a request for injunctive relief.

While this new Act has been signed into law, all of these changes are tentatively scheduled take effect by December 27, 2021.

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Should the United States Patent Trial and Appeal Board be appointed by the Director of the U.S. Patent Office or the President of the United States?

By: Robin Gentry
Lilenfeld PC

Back in 2011, the America Invents Act (AIA) created  the United States Patent Trial and Appeal Board (PTAB) to strengthen the U.S. Patent System by providing an efficient system for challenging patents. Recently, the United States Supreme Court heard oral arguments in a case dealing with the power of judges appointed to the PTAB. PTAB judges hear appeals by patent applicants who have had their claims rejected by a patent examiner and also conduct trials in cases brought by challengers to patent claims that have already been granted. In ruling on issues in these trials, PTAB judges have cancelled (invalidated) thousands of issued patents.

The problem, according to Arthrex is that PTAB judges are appointed by the Director of the U.S. Patent Office. They are not appointed by the President and confirmed by the Senate like other federal judges. According to Arthrex, this violates the Appointments Clause of the U.S. Constitution.

The Solicitor General’s Office counters that the U.S. Patent Office Director has sufficient authority and control over PTAB judges making them “inferior Officers” that do not need to be appointed by the President.

If the Supreme Court agrees with Arthrex, it is possible that a large number of previous PTAB decisions will be voided with cancelled patent claims potentially being revived. The Supreme Court could possibly find that PTAB judges should have been appointed by the President but may fashion a “fix” that would allow the previous decisions of the PTAB judges to remain in place.

A decision is expected during the current term of Supreme Court which ends in September 2021, so we will be monitoring this case closely to determine the effect it could have on not only our Clients, but registered and challenged patents moving forward.

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Avoiding Trademark Disputes

By: Kennington Groff

Lilenfeld PC

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. In simpler terms, a trademark is your brand identifier such as a name, slogan or logo. While choosing the right trademark can be overwhelming, the careful time devoted to selecting a protectable mark and registering it can be helpful when avoiding disputes as your business grows. Below are five tips to help you avoid trademark disputes and a potential costly rebrand.

Only Adopt A Trademark After It Is Cleared

Clearing your trademark is step one in avoiding trademark disputes. Before you adopt a new trademark, to the greatest extent you can, you should devote time and resources into making sure that your new mark will not infringe on another party’s trademark rights. While this may sound obvious, we see many trademark disputes occur that could have possibly been avoided if more time and effort was made in initial research about a potential trademark for your brand.

Once you identify a trademark you want to use for your brand, we generally suggest you do some digging around on the internet to see if you can find any marks that are identical or similar to marks in connection with your goods and/or services and any closely related goods and services. Then, if you do not find anything that appears to be problematic, your next step is to reach out to a trademark attorney to (1) conduct a formal, thorough “trademark availability search” through a vendor or (2) file your application for your trademark(s). While a clearance search through a vendor does not guarantee that no issues will pop up with your new trademark, it generally lowers the risk and gives your new trademark the best start at avoiding a dispute.

Register Your Trademark(s)

Trademarks should be registered in almost all cases. They can be registered with the federal government, specifically the United States Patent and Trademark Office, with individual states and internationally. While states allow you to secure a trademark registration, the federal registration of your mark affords more protection because it protects your mark throughout the country instead of just one state.

In order to obtain a federal trademark registration, the trademark owner must be using the mark in “interstate” commerce, which most marks are. A federal trademark registration will give the owner national rights to its mark, including preserving its right to expand into geographic regions throughout the United States not previously expanded into, which state registration will not allow.

A federal registration also serves as a deterrent to others seeking to use a mark similar to yours. The registration shows you are active in protecting your trademark rights, and once registered for five years of continuous use of your mark, your mark can also gain what is known as “incontestable” status which makes your mark even stronger.

Lastly, if a dispute over your trademark arises, your federal registration entitles you to a few things: (1) presumption from the court that your registration is valid, (2) additional damages in the event your mark is found to have been infringed and (3) easier working conditions with the United States Customs Service to prevent  the importation of unauthorized goods bearing your register mark into the United States

Actively Manage Existing Trademark Registrations

Once your mark is registered, to maintain exclusive rights to your mark, you are obligated to “police” the mark. This means that you need to take steps to stop others who are using the Mark or a similar Mark in connection with related goods or services. If you are aware of infringers you should contact your attorney. Failing to take action to protect your mark could cause your trademark rights to be weakened or lost.

Below are additional important items when, managing your existing registrations:

  1. Keep the registration ownership information up to date, including the company name, address and contact email address or important correspondence from the trademark office of someone trying to reach you about your mark may be missed.
  2. Ensure your registration renewal deadlines are met to show proof of your continued use of the mark.
  3. Review your registration to determine availability of incontestability status, and the potential to apply for the Principal Registerer for a mark that is currently registered on the Supplemental Register.
  4. Review the goods and services offered under your registration to determine if a new class of goods or services needs to be added to your mark to expand the protections of your mark.

Set Up A Watch Service

Once your clearance search is complete, trademark is registered and you are actively managing your registration(s), the next prudent step to protecting your brand is setting up a trademark watch service. A trademark watch service generally monitors sources such as the Trademark Official Gazette, and will alert you of newly-filed applications or applications that are in the publication period of the Unites States Patent and Trademark Office that may be confusingly similar or infringe upon your mark. This information can be invaluable to you as a trademark owner since it allows you to take action early through the Trademark Trial and Appeal Board in the form of an opposition.

While watch services costs can range depending on the type of services required, it is far better to pay these fees up-front than to try and stop infringement once it has started. Think of this as preventive care when protecting your registered mark.

Review the Trademark Official Gazette

Lastly, another preventive measure when it comes to protecting your mark is to regularly review the Trademark Official Gazette (TMOG). Every Tuesday, the TMOG provides bibliographic information and a drawing for each mark published, including a list of cancelled and renewed registrations. Reviewing the TMOG allows you to see any marks that may be confusingly similar to your mark, including actions the United States Patent and Trademark Office is taking with regard to those marks.

The 30-day publication period in the TMOG of new marks allows opposers, such as yourself, to file an opposition if you believe that mark will be damaging to your trademark registration. Remaining informed about these filings will arm you with the information you need to ensure your mark remains protected.

At Lilenfeld PC, we work we can work with you to protect your company’s brand and trademark. If you have any questions or would like a consultation, please contact us at (404) 201-2520.

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Intellectual Property 101

By: Kennington Groff

Lilenfeld PC

At the heart of any business is its distinctive brand and the ideas behind it that set it apart. Intellectual Property affects all individuals and businesses from entrepreneurs, start-ups, national and international companies in a variety of industries including technology, financial services, computer hardware and software, pharmaceutical, manufacturing, marketing, fashion and entertainment to name a few. No matter what stage your business is at, the most important thing is protecting your brand and ideas.

So you’ve heard the term Intellectual Property before, but what does it actually mean? The law defines Intellectual Property as “any product of the human intellect that the law protects from unauthorized use by others.” In simpler terms, it is defined online as “a work or invention that is the result of creativity….to which one has rights.” There are 4 types of Intellectual Property: (1) Trademark, (2) Copyright, (3) Patent and (4) Trade Secret.

How do you know which type of protection you need? Check out the below descriptions of each form to help you distinguish the protection that is best suited for you or your business.


The United States Patent and Trademark Office defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” The main goal of a trademark is to (1) prevent consumer confusion and (2) be a source identifier to allow a customer to quickly identify your goods/services. This helps businesses and inventors protect their reputations and investment so that consumers are not misled.

One of the biggest ways to protect your goods and/or services is to register your trademark with the United States Patent and Trademark Office. This puts infringers on notice that your brand is registered and allows you to include the registered trademark symbol, which is: ®

For example, the McDonalds golden arches, the Nike swoosh, Coca-Cola’s glass bottle and Apple’s apple logo are all examples of design trademarks aka logos and brands. These are all examples of excellent logos that have become so distinguishable that they don’t require words to be identifiable by a consumer. Further, when we hear words like Starbucks, FedEx, Mercedes-Benz, and Google to name a few, a logo or a description of the goods/services offered by these companies is not required because we immediately associate the word with the goods/services.

Now, you might be thinking what about brands that have the same name like “Delta” for planes and “Delta” for faucets? If two business operate in completely different market spaces, then they may have the same trademark. This is because ultimately the goal of trademarks is to prevent brand confusion, and consumers are not going to confuse an airplane with a faucet. Consumers are not going to mistakenly go to buy faucets at the airport.

Unlike copyrights and patents, trademark rights can potentially last indefinitely. Trademark rights are based on actual “use” so as long as a trademark owner continues to use its mark in commerce to identify its goods/services, the rights in that mark can last forever. However, in order to maintain a trademark owner’s exclusive rights to use its mark in connection with its goods/services, the owner is required to “police” its mark. This means that the trademark owner needs to take steps to stop others who are using the mark or a similar mark in connection with related goods or services. If you are aware of infringers you should contact an attorney to reach out to the potential infringer. Failing to take action to protect your mark could cause your trademark rights to be weakened or lost.


Copyright is a form of protection that extends to “original works of authorship fixed in a tangible medium of expression.” Copyrights protect works including “literary, dramatic, musical, and artistic works,” such as poetry, novels, stage productions, movies, songs, sculptures, photographs, sheet music, and elements of fashion design and architecture.” Copyright protection even extends to digital material such as computer software, video games, online videos, website content, and even social media content. Things such as ideas, facts and methods of operation are not copyrightable, but the expression of ideas are, which includes both published and unpublished works.

In order to be afforded copyright protection, the work of authorship must (1) meet the requisite levels of creativity and originality and (2) be “fixed in a tangible medium” that can be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” for more than a transitionary period of time.

The owner of a copyright has the right to reproduce the work, prepare derivative works, distribute, display and perform it, and license the work for a period generally extending for the life of the author plus 70 years after the authors death.

There is a common misconception that copyright registration isn’t really all that important since certain works are protected by copyright law once they’ve been created in a tangible form; however, you will not be able to enforce your rights in that work unless you have registered your work with the United States Copyright Office – or at least proven that you tried and were refused. Further, if you register your work after infringement has occurred, your recoverable damages will be limited.

Copyright protection is robust, but there is an important exception to copyright infringement that is known as “fair use.” Fair use allows someone to use copyrighted materials without the owner’s permission as long as the use is “fair.” Generally, examples of qualifying fair use include criticism, comment, news reporting, teaching, scholarship, and research. Under Section 107 of the Copyright Act fair use is evaluated through a four factor analysis: (1) purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational purposes, (2) nature of the copyrighted work, (3) amount and substantiality of what was taken, and (4) effect of the use upon the potential market for or value of the copyrighted work.

Overall, the main thing to remember for copyright protection is to make sure to register your work and do so early.


A patent is defined as “a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.” In simpler terms, a patent is the exclusive rights granted in an invention. It prevents or excludes others from making, using, offering for sale, selling or importing the invention, instead of granting the inventor the right to make, use, offer for sale, sell or import the invention.

There are three types of patents: (1) utility, (2) design and (3) plant. Utility patents may be granted to inventors who invent new or useful processes, machines, methods of manufacture or composition of matter, or new and useful improvements thereof. Design patents may be granted to inventors who invent a new, original, and ornamental design for an article of manufacture. Specifically, design patents are based on a product’s decorative, non-functional features. Lastly, plant patents may be granted to inventors who invent or discover and asexually reproduce any distinct and new variety of plant.

There are five basic requirements for patent eligibility. (1) The invention must be “patentable subject matter” which is broadly defined as “any process, machine, manufacture, or composition of matter, or improvement thereof.” (2) The invention must be useful (specific requirement only for utility patents). (3) The invention must be novel or new. (4) The invention must be non-obvious meaning its use must be sufficiently different from something that is considered the next logical step in a prior patent or from what has been used before to a person having ordinary skill in the area of technology related to the invention. (5) The invention must not have been disclosed to the public less than one year before the patent application was filed.

Generally, the term of a patent is 20 years from the date the application for the patent was filed with the United States Patent and Trademark Office. An inventor has the right to license or sell its patent to other parties until the patent expires. Once a patent expires, the invention enters the public domain and can be exploited for commercial use without infringing on the rights of the patent holder.

Trade Secret

In addition to trademarks, copyrights, and patents, the fourth and final type of intellectual property is trade secrets. A trade secret is defined as any business information which is intended to be kept secret. In order to qualify as a trade secret, that information must have economic value such that the business would be harmed if the information became public. Trade secrets are generally not known to the public and a reasonable effort must be made to ensure their confidentiality and secrecy.

Trade secrets protect certain information such as formulas, patterns, compilations, programs, devices, methods, techniques and processes that are not known to the public. The different types of trade secrets are very broad. For example, a trade secret can be a recipe, design, advertising strategy, client lists and sales methods to name a few. One of the most recognized and most valuable trade secrets is the formula for Coca-Cola.

As long as the trade secret provides economic value and remains a secret to the public, trade secrets can last indefinitely. Also, unlike the other forms of intellectual property, there is no procedure for registering a trade secret. It remains with the holder(s) of the secret.

As you can see from the above, each type of intellectual property serves a different purpose. While some items only qualify for one type of protection, some items will qualify for more than one.

To learn more about what type of intellectual property protection you need, please contact Lilenfeld PC at (404) 201-2520.

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New Copyright Law Provides A New Way to Sue on Small Claims

By: Robin Gentry

Lilenfeld PC

Good news for copyright holders seeking to enforce their creations! A new copyright law (the Copyright Alternative in Small-Claims Enforcement Act of 2020) has been passed and will come into effect by December 2021.

This new copyright law establishes an administrative agency to adjudicate small copyright claims. Before this law was enacted, copyright holders could only sue in federal court which is often very time consuming and expensive. With this new alternative, if someone has infringed your copyright, you can bring a claim before a three person panel board of copyright experts. In order to qualify for this alternative your damages must be no more than $15,000.00 per work and $30,000.00 per proceeding. The copyright holder then has to choose between either statutory damages or actual damages.

The new small claims act is directed to cases of infringement on the internet, such as when a copyrighted photograph is posted on the internet without permission of the artist. But anyone who has had their work copied in any form may bring a claim. This could be a powerful new method for artists and creators who have been harmed by copyright infringement, but can’t afford the attorney fees necessary to bring a case in federal court.

This new Board will be able to hear and rule on copyright infringement claims, award damages and issue an order that the infringer stop the infringement. The Board will also be able to hear cases involving false takedown notices and cases where an accused infringer asks for an order that she is not infringing the rights of another individual.

There are a few different procedural rules that are different from litigation in federal court. First, a defendant may opt out of having the case heard by the Board. If that happens, the plaintiff can bring the case in federal court. Second, attorneys’ fees are not available to the winning side, as they generally are in federal court. Third, while a party may be represented by an attorney, it is not necessary.

Also, a plaintiff need not have an issued copyright registration to file a case, which is required for suit in federal court. Instead of an issued registration, a plaintiff only needs to have applied for a copyright registration. Moreover, a plaintiff who files a copyright registration more than three months after the infringement begins may still recover a statutory damages award up to $7,500.00 which would not be available in a federal case.

Specific rules for how these cases will be conducted will be issued this year and the Board members will be named. Lilenfeld PC will continue to monitor the developing law and help its clients decide the best forum to stop infringement.

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Don’t Trust Your Brand To Just Anyone

By: Kennington Groff

Lilenfeld PC

Don’t trust your brand to just any lawyer – both enforcing and not enforcing your company’s trademark rights can damage your brand.

When you move to enforce your trademark rights, you are putting your trademark in the line-of-fire, where it will very likely be attacked by the opposing party. A trademark can be attacked in a variety of ways, most frequently through arguments that the mark is (1) generic, (2) has been abandoned for non-use, (3) misrepresentation to the Trademark Office, and (4) fair use.

In Haughton Elevator Co v. Seeberger, 85 U.S.P.Q. 80 (1950) trademark rights were lost because the mark ESCALATOR had become generic and therefore lost its trademark status. The court found that Otis Elevator failed to protect the ESCALATOR mark and it became known to the general public as the name for a moving stairway. ESCALATOR was no longer used to identify the moving stairways created by its original founder, Otis Elevator, but rather it became the word to identify all moving stairways. Now anyone can use the word ESCALATOR to describe a moving stairway. Additionally, several of these famous brands lost their trademark rights due to genericide: Aspirin, Trampoline, Thermos, Dry Ice, Laundromat, App Store, Yo-Yo and Zipper.

Further, marks can become abandoned if the owner stops using the mark. Even a short period of nonuse may lead to abandonment in certain circumstances so its important to seek the advise of a lawyer before you even temporarily stop using a mark.

Trademark law permits others to use your mark if that use qualifies as fair use. Permitted uses include allowing a person to use a mark in 1) a non-trademark, descriptive sense to describe a trademark holders goods and/or services and 2) to refer to a trademark owner or its good and/or services. The owner of trademark rights must police this carefully in order to not lose their rights and prevent infringement.

Lastly, any misrepresentation to the Trademark Office, including fraud or misrepresented facts, when applying to register your mark can result in a loss of trademark rights.

This should make clear to everyone that only experienced (truly experienced) trademark lawyers should be used to enforce your trademark rights. As discussed elsewhere, many lawyers claim to have trademark law expertise, but they are actually novices with little to no experience. Make sure you hire a qualified trademark lawyer to brand your brand.

At Lilenfeld PC, we work 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 at (404) 201-2520.

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The Supreme Court Has Affirmed the Validity of the ‘’ Trademark

By: Robin Gentry

Lilenfeld PC

The Supreme Court has issued its opinion in a trademark case involving the mark “”  In that case, the Court refused to adopt a bright line test that any generic term when combined with “.com” is generic. Instead, the Court ruled that whether “any given ‘’ term is generic  . . . depends on whether consumers in fact perceive that term as the name of a class, or instead, as a term capable of distinguishing among members of the class.”

Both parties agreed that the term “booking” was generic for making travel reservations. argued that the combination of “booking” and “.com” was not generic, however, because consumers recognized the mark as descriptive for services involving booking hotel reservations.

The Trademark Office did not appeal the underlying decision regarding how consumers perceived “” but instead argued that the combination of a generic term with “.com” always produces a generic mark. The Trademark Office relied heavily on an 1888 decision that held that the combination of a generic term with a generic corporate designation, such as “Inc.” is always generic.

The Court rejected the Trademark Office’s argument.  In rendering its decision, the Court focused on the traditional test for determining whether a term is generic: whether the primary significance in the mind of consumers is a class of goods instead of a particular entity selling goods. Because the Trademark Office did not challenge the lower court’s findings regarding the primary meaning of the term, the Court affirmed the decision that could be registered.

Both J. Breyer (in dissent) and J. Sotomayor (concurring) raised concerns regarding the use of survey evidence when litigating whether a trademark is generic or distinctive. Such survey evidence has traditionally been considered the “gold standard” but courts and litigants have relied less upon survey evidence in recent years. The further evolution of surveys in trademark cases, is something that should be carefully watched by both attorneys and those holding trademark portfolios.

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Supreme Court Rules that “Willful” Trademark Infringement is Not Necessary for an Award of Profits in Infringement Cases

By: Robin Gentry

Lilenfeld PC

On April 23, 2020, the Supreme Court issued a ruling in Romag Fasteners, Inc, v. Fossil, Inc. that should make it easier for trademark owners to be awarded the defendant’s profits when someone infringes their mark. The Supreme Court took the case because some, but not all, appeals, or circuit courts, required that a trademark owner prove “willful” infringement before the Court would award profits. The Eleventh Circuit, which hears cases from Georgia courts, and the Second Circuit, which hears cases from New York, were two of the Circuits that required “willful infringement.” Willful infringement is hard to prove and is usually reserved for cases involving only the most premediated and calculated of defendants, or those that refused to stop infringement after being warned to do so. This meant that trademark owners could often stop the infringement but could not get a damages award.

In its Romag Fasteners decision, the Supreme Court ruled that a finding of willful infringement was not a necessary precondition for awarding a defendant’s profits. The Court focused on the text of the Trademark Act (called the Lanham Act).  The Court noted that the statutory language had “never required a showing of willfulness to win a defendant’s profits” for trademark infringement. In contrast, the Lanham Act explicitly required that a defendant’s infringement be willful to receive profits in a dilution case. According to the Supreme Court this meant that if Congress had intended to limit damages to cases of willful trademark infringement, it would have included specific language in the statute.

The Supreme Court rejected Fossil’s argument that the phrase “principles of equity” in the statute required that profits only be awarded in cases of willful infringement.  The Supreme Court examined the history of the statute and the general meaning of principles of equity and concluded that “it seem a little unlikely Congress meant ‘principles of equity’ to direct us to a narrow rule about a profits remedy within trademark law.” The Court also noted that while some courts had historically required willfulness for a profits award, the majority of cases did not.

Despite holding that a finding of willfulness was not required to award a trademark owner the defendant’s profits, the Court noted that it did “not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.” But, it refused to make that willfulness an “inflexible” requirement.

So, it is likely that a trademark owner will be more likely to receive a defendant’s profits if it can show willfulness. But in cases where it cannot, the trademark owner can make other arguments for why it should be awarded profits. We expect to see more awards of profits after this case and will watch to see how the law continues to develop.

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NCAA Board Recommends Allowing Student Athletes to Monetize their Name, Image or Likeness

By: Robin Gentry

Lilenfeld PC

The NCAA Board of Governors has not been idle while we await the restart of college athletics following the COVID-19 suspension of play. In late April, the Board announced that it would support rule changes to allow student athletes to make endorsement deals to take effect at the start of the 2021-22 academic year.

The Board noted specific “growth opportunities” for student athletes which include social media influencer opportunities and digital content creation, including videos, live stream of video games and podcasts. If the rules change based on the Board’s recommendations, student athletes would be allowed to make deals as social media influencers, appear in commercials and hold paid autograph sessions. The Board also recommended certain limitations, such as a prohibition against using school logos and referencing the student’s team/school affiliation.

Social media deals, commercials, blogs and other activities that student athletes may soon be able to monetize all raise intellectual property issues, including copyright and possibly the need to trademark the student’s logo. Plus, any endorsement deals should be memorialized in a written contract to ensure that the student athlete is protected.

As we look forward to cheering on our favorite college teams again, we will be watching to see if the NCAA adopts new rules.

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Georgia Production Best Practices To Reduce Contagion of COVID-19

By: Kennington Groff

Lilenfeld PC

With production beginning again around the State of Georgia, new practices are in place to reduce the contagion of COVID-19. The Georgia Film Office is encouraging all film and television companies to establish a game plan to support the health and safety of cast and crew as production resumes. Before production commences, all personnel and vendors should become familiar with strategic measures to maintain a healthy and clean set.

The Georgia Film Office recommends the below preventive measures to be taken throughout production offices, workspaces and filming locations:

  1. Frequent handwashing and the availability of hydroalcoholic gels;
  2. Disposable face masks need to be disposed of in a closed bin;
  3. Avoid sharing items like mobile phones, work tools, computers, pens, etc.;
  4. Use digital call sheets, contracts and production reports instead of printed copies;
  5. Avoid actions that encourage physical contact such as handshakes, hugs or kisses; and
  6. Use individual and private transportation when possible, but if public or shared transportation is used, then masks should be worn by everyone and social distancing should be maintained as much as possible.

In addition to the above recommendations, the Georgia Film Office also has specific guidelines for production offices, locations, shooting locations, casting, talent, background actors, catering, craft services, transportation, wardrobe department, art department, grip department, hair and make-up, camera department, sound department, on-set communications and the organization of the shooting spaces. The Office even recommends having an Occupational Risk Prevention specialist on set that ensures all protocols and actions are complied with.

Guilds, unions, production companies and studios may have their own regulations for filming as well, but make sure to consult with your local production attorney to ensure you are following any mandates specific to your filming area.

To learn more about our Entertainment Law services, please contact Kennington Groff at (404) 201-2520 or

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Coronavirus (COVID-19) Could Make Alternative Fee Arrangements the New Norm for Georgia Legal Community

By: Robin Gentry

Lilenfeld PC

Many individuals, small to medium sized companies and large corporations needing legal advice are now faced with a new dilemma due to this public health crisis known as Coronavirus (COVID-19): how do I ensure necessary legal services at an affordable price?

Fearing large legal costs, many people and companies that would benefit from an experienced lawyer’s advice, might choose not to bother during this time for fear that costs will be extravagant. This can lead to an even greater loss to the client based on infringement of their intellectual property rights, breaches of contract and the need to renegotiate existing contracts.

Fortunately, consumers are not locked into the traditional hourly fee billing model that so many people think of when viewing legal services. Instead, there are several alternative fee arrangements available.

Here are some alternative fee arrangements that are available:

1. Flat fee arrangements: When using a flat fee, lawyers offer various services at set, or “flat” rates. For example, do you need to register a trademark? A lawyer can charge a fixed rate for that application, no matter how long it takes the attorney to prepare it. Do you need to license your copyrighted artistic design? That can also be done for a flat rate. This type of alternative billing arrangement works best for services a firm is experienced providing. The firm’s expertise allows them to provide clients a low-cost option while still ensuring a quality work product.

2. Contingency fee arrangements: A contingency fee is an alternative to the traditional hourly billing model. When reviewing your case, an experienced attorney is likely to recognize the strength of the case and willing to gamble his time in order for a percentage of the case outcome. While this is often very attractive to clients, the downside is that the lawyer’s percentage is often significant and clients are often left with less than they expect. So how can the client and lawyer both win with a contingency?

3. Hybrid contingency arrangements: In hybrid, or partial, contingency fee arrangements, the client pays the lawyer on a monthly basis for the hours the firm works just like in the traditional model, but the lawyer’s normally hourly rate is reduced. Then, if the litigation is successful, the lawyer receives an additional sum (usually a percentage of the award, but at a lesser percentage than in a full contingency).

4. Fee caps: This is a variation of the flat fee arrangement that allows the lawyer to bill at her normal rate until they reach an agreed maximum amount or cap. Once the cap is reached, the attorney continues to work the case, but does not bill the client.

5. Retainers: Retainers are a fixed, monthly payment to the attorney who then performs the services you need that month. This is a great arrangement for a company that does not want to have an attorney as an employee but wants to make sure that a trusted attorney is available while knowing the cost up front.

If you have any questions about alternative fee arrangements, please contact David Lilenfeld at or (404) 201-2520.

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How Coronavirus (COVID-19) Impacts Force Majeure Clauses in Georgia Contracts

By: Kennington Groff

Lilenfeld PC

Globally, businesses are experiencing massive productivity issues due to Coronavirus (COVID-19) pandemic. Employees are working-from-home, self-quarantining and social distancing to prevent risk of exposure.

In addition to employee unavailability, manufacturing facilities are shut down or some have even converted their facilities to manufacturing different products in order to support the growing demand for certain products such as ventilators and face masks. Most of this is government mandated or strongly urged as steps to slow the spread of Coronavirus (COVID-19) pandemic.

Other issues arising in this context are does force majeure excuse a Company from paying employees severance if the Company was unable to maintain them on payroll due to the Coronavirus (COVID-19) pandemic?

In light of this, many companies are forced to seek relief from their contractual obligations, looking specifically at invoking a force majeure provision to excuse performance temporarily or even permanently. This article reviews force majeure law, focusing particularly on the State of Georgia. We also discuss the options available aside of force majeure.

Georgia Force Majeure Clauses

A force majeure clause is a contractual clause which excuses one or both parties to the contract from performing obligations if and when something occurs that is beyond their control and makes performance of those obligations impractical or impossible.

Events triggering a force majeure are often listed in the contract and frequently include the following:

1. acts of God, such as natural disasters including floods, fires, tornados, earthquakes, hurricanes, and other weather disturbances;

2. war, acts of warfare, terrorism, threats of terrorism and disease or medical epidemics and outbreaks;

3. strikes, civil disorder, labor disputes and disruptions; and

4. acts of government authorities such as the taking of one’s property, also known as eminent domain, censure, and changes in laws and governance; and

5. some accidents or mishaps. However, normally economic hardships on their own do not qualify as a force majeure circumstance.

The specific language in a contract will determine if a force majeure provision can be invoked. However, this requires a fact intensive analysis and force majeure clauses are narrowly interpreted.

Specifically, the provision is interpreted in light of its original purpose meaning that they are viewed with items of the same nature, such as the items mentioned throughout the contract. It limits damages where the obligations to perform have been frustrated and made impossible or impractical.

Georgia Law: Coronavirus (Covid-19)

Under Georgia law, two provisions stand out for those seeking to excuse performance due to the coronavirus under a commercial contract in the absence of words such as “epidemic,” “pandemic” or other similar variations: (1) the “act of God” clause in contracts and (2) the “act of God” defense to contractual breach (O.C.G.A. § 13-4-21). While the words “pandemic” and “epidemic” are not normally specified in contracts, “acts of God” and force majeure provisions usually make their way in as a means of contractual relief.

“Act of God” in Contract:

Frequently in contracts, the “act of God” provision is included in the force majeure clause and lays out when a party may cease its obligations to perform. Without the addition of words like “pandemic” and “epidemic,” the “act of God” provision might be your saving grace. However, don’t get too excited as Georgia case law is silent on whether something like the coronavirus counts as an “act of God.” Further, some “act of God” clauses limit even what qualifies as an actual “act of God.”

Even though Georgia case law is currently silent on this topic, as these cases start making their way through the courts, we are likely to see varying judicial outcomes and verdicts. Specifically, Georgia case law outlines an “act of God” as one that is not human caused and not reasonably predictable or avoidable. As the facts of this pandemic come to light, this test will be argued in many different ways. Moreover, the California Department of Public Health has stated that the source of the virus is not yet known.

Ultimately, the contract itself will first guide parties and courts regarding obligations to perform, but it is still unknown how these exact terms might be interpreted due to COVID-19.

“Act of God” Defense:

A contract does not have to include a force majeure clause in order to invoke the “act of God” defense.

O.C.G.A. § 13-4-21 of the Georgia Code states that “[i]f performance of the terms of a contract becomes impossible as a result of an act of God, such impossibility shall excuse nonperformance, except where, by proper prudence, such impossibility might have been avoided by the promisor” Additionally, O.C.G.A. § 1-3-3 defines “act of God” as “an accident produced by physical causes which are irresistible or inevitable, such as lightning, storms, perils of the sea, earthquakes, inundations, sudden death, or illness. This expression excludes all idea of human agency.” The real question due to this public health crisis will be how the words “irresistible or inevitable” and “excludes all idea of human agency” will be interpreted.

One item to note though is that the “act of God” defense requires the obligation to perform to be “impossible.”

Georgia Law: Recession

In 2008, the economic downturn that occurred and the consequential events that followed did not invoke the force majeure clause allowing Defendants’ to modify or cease their obligations under the Alliance Agreement. In the case of Elavon, Inc. v. Wachovia Bank, Nat. Ass’n, the court found no external force majeure thwarting Wachovia from performing its obligations under the Alliance Agreement. (841 F. Supp. 2d 1298, 1307–08 (N.D. Ga. 2011)). Even though the economic pitfalls facing the banking industry back in 2008 might have been beyond the reasonable control of Wachovia, Wachovia did have control over the decision to extend the Wells Fargo-First Data contract.

Other Options if No Force Majeure Clause or Unable to Utilize:

If you are unable to employ a force majeure provision to modify or cease your performance during this coronavirus pandemic or your contract does not contain one, there are other options that may be available to limit or excuse your performance.

If you don’t have a force majeure provision in your contracts, even if you do, you should not wait until this pandemic is behind us to state that the public health crisis prevented you from fulfilling your obligations of the contract. Even in the event of this crisis, if you do not make a timely claim, you might be waiving any relief you could have under the contract.

In common law, there are two doctrines known as the doctrine of impossibility and frustration of purpose. These are used in exceptional circumstances, which we are likely experiencing. The purpose of these doctrines is to provide relief when an event triggers a contract impossible to perform for reasons beyond the parties control. Typically when this occurs, the obligations under the contract are excused and not just extended. While not a perfect remedy, these doctrines can provide some sort of relief in the event your contract does not contain a Force Majeure provision.

Since many governments of numerous countries, with the United States being no exception as a national state of emergency has been declared, have enforced strict lockdowns, businesses should be arguing that their failure to perform their obligations in the contract have been made impossible/ impractical. To name a few states, California, Illinois and Washington governors have all ordered the closing of bars and restaurants, and some mayors of specific cities like Los Angeles and New York City have ordered the same thing in order to try and halt the spread of COVID-19. Some states have even issued “shelter in place” orders. These are all factors that reinforce the impossibility/impracticability defense.

Further, the frustration of purpose defense can be used when it doesn’t make sense anymore for the obligations of the contract to be followed. Stated differently, this occurs when the circumstances have changed making the obligations under the contract not even worth it for the other party. Even with the coronavirus though, businesses should be mindful that items like an increase in performance costs and other economic hardships typically are not enough to argue a defense of frustration of purpose.


At this time, the coronavirus is having a significant impact on businesses and their abilities to fulfill their contractual obligations. However, businesses requirements to perform under their contracts will have to be evaluated on a case-by-case basis due to the fact intensive analysis to determine if the force majeure provision applies or if an impossibility/impracticability or a frustration of purpose defense can be invoked. Contracting parties will have to review their specific language first and then applicable law in order to determine if their obligations can be modified or ceased.

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Protecting Intellectual Property with Employees Working from Home

By: Kennington Groff

Lilenfeld PC

How to Ensure Your IP Remains Safe

Offices, cubicles and community spaces are shifting to dining rooms, kitchen tables, bedrooms and home offices. Due to the severity of the Coronavirus (COVID-19) pandemic many of our clients have employees working, for the first time, from home, which has our Clients asking how to ensure their intellectual property remains safe.

Typically, employees must possess at least some of their employer’s intellectual property in order to perform their job duties, for example, pricing lists, vendor information and access to your CRM. This intellectual property might also include other trade secrets (formulas, R&D materials, financial information) and material protected by copyright, such as software, source code, manuals and publications.

Limit Intellectual Property Theft or Loss

Here is what you should do to limit the risk of the theft or unintentional loss of your intellectual property.

1. Partition your digital information – for example, if a particular employee does not need access to your CRM, set permissions so he/she cannot access it.

2. If you don’t already have one, employees should sign non-disclosure agreements.

3. Upon return to normalcy, employees should sign a “Return to Work Policy” that they do not have any non-disclosed copies of any of the company’s information.

4. Consider adopting a “work from home policy” which would include measures for protecting the company information.

5. Instruct employees to use a secure connection/ VPN, use strong passwords and have phone calls discussing sensitive information in private.

6. Remind employees in writing that your company’s intellectual property belongs exclusively to your company, no different than the company’s furniture, computers and other equipment.

7. Remind employees in writing that they may not share any company information with anyone outside the company without your permission.

8. Make sure to provide your employees with instructions and guidance in order to preserve and safeguard sensitive information such as maintaining a secure connection/ VPN, reinforcing strong passwords and having phone calls discussing sensitive information and topics in private if possible.

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Trademark Registration in 2020: What’s New?

By: Connor Edwards
Lilenfeld PC

The United States Patent and Trademark Office (USPTO) has made several changes to the trademark application requirements in the United States. This article discusses three need to know changes that are currently in effect.

Even though these changes have been in effect for some time now, many people are still unfamiliar with the changes, or are unaware that they even exist. Because the changes are critical to the success of a trademark application, it is important to understand each of the changes. The first two changes are relatively minor, but the third change requires a few additional items to consider and steps to take when completing your application.

The first change requires that all registrants must make an account on, which Lilenfeld PC has and maintains. In addition to this account, the user is required to login and provide proof of identity to file any trademark documents at the USPTO. In doing so the USPTO is able to keep registrants more accountable for their filings.

The second change only affects applicants, registrants, or parties to trademark proceedings who are not located within the United States. A person or an entity that fits this demographic is required to be represented by a US licensed attorney. The reason for this change is to ensure that the procedures and rules of the USPTO are more closely followed.

The third change and certainly the biggest change surrounds the specimen portion of a trademark registration. For those who might be unaware, in order to file a trademark, you must submit a specimen. A specimen is essentially a sample of your trademark being used in commerce. People used to be able to provide specimens very easily, and this allowed for many people to file using fake specimens. This new rule is intended to prevent these fraudulent specimens by having two big requirements. The first requirement is that a specimen that is a screenshot of a website, where the mark is being used in commerce, must contain the URL of the webpage as well as the date the screenshot was taken. The second new requirement states that product packaging specimens must also include an image or description of the product, either on the package or in addition to the packaging itself.

The reasons for the changes can be boiled down into two categories: (1) abuse of the system and (2) a lack of education around the rules and procedures of the USPTO. The USPTO perceived that many registrants, both foreign and domestic, seemed to be cutting corners and filing fraudulent trademarks.  The additional requirements are here to help crack down on fraudulent filings and maintain the integrity of the trademark registrar.

Contact us if you have any questions about applying to register your trademark.

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The 7 Contracts Needed For Your Short and Low Budget Films

By: Kennington Groff
Lilenfeld PC

So you’ve spent weeks, months, or even years writing the perfect script or combing through dozens of scripts to find the one that aligns with a story you have to tell. Now you are ready to turn that work into your new project. What do you do first?

Hire an entertainment attorney! Every project needs to be protected no matter how small or large the budget.

Creating a film is no small task. An entertainment attorney can assist you to ensure your project runs smoothly by helping you avoid the threat of a lawsuit or removal of certain footage later on down the road when potential conflicts may arise with contracts that were not in place (or poorly drafted), rights that were not obtained, and releases that were not signed.

Below are 7 contracts that at a minimum all short and low budget films should have in place:

  1. Location agreement: Gives you permission to enter a property and film there.
  2. Talent Agreement: Gives you permission to use someone’s image/ voice in your film.
  3. Crew Agreement: An employment contract outlining the work to be performed and rights (if any) to the film.
  4. Confidentiality & Non-disclosure Agreement: For use when discussing your film or script with third parties.
  5. Materials Release: For the intellectual property that might be used in the work, i.e. photos, artwork, audio/visual clips.
  6. Appearance Release: When a person is appearing in your film, specifically for privacy issues.
  7. Area Release: Notifies people and businesses that you are filming in their area.

To learn more about our Entertainment Law services, including our short/low budget film contract package, please contact Kennington Groff at (404) 201-2520 or

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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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Lilenfeld PC Client Wins Trademark Infringement Jury Trial

July 25, 2017

On July 18th, 2017, Lilenfeld PC, won a jury trial in a trademark infringement action. The trial was in the United States District Court for the Northern District of Georgia for Fronto King LLC, a marketer of whole tobacco leaves under the brand Fronto King. Fronto King sought an injunction and a monetary award against the Defendants (Five A Trading, Inc. d/b/a A to Z Wholesale and New Generation Imports, LLC), who used a product package design that was similar to the package design Fronto King began using years earlier.

David M. Lilenfeld and Kaitlyn A Haase conducted the two-day federal trial for Fronto King.

Fronto King is the leading brand of high-quality tobacco leaves used to wrap hand-rolled cigars – an increasingly popular hobby in the U.S.Fronto King Art

While the jury deliberated, Lilenfeld and team offered a settlement of $150,000 to the defense, in which no response was received.  Less than 45 minutes later, the jury came back with a verdict.

Having found that there was a likelihood of confusion between Fronto King’s package design and the package design adopted by the Defendants, the jury awarded Fronto King $21,400 in damages plus disgorgement of Five A Trading’s $250,000 in profits.

From Fronto King’s perspective, the most important part of the trial’s outcome is that the Defendants can no longer use their confusingly similar packaging.


66 Fronto King Verdict

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Tackling Tacking in Trademark Law by David Lilenfeld

The Supreme Court of the United States tackled trademark tacking in a recent case titled Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015).

When a company changes its trademark (for a example a rebrand), a new trademark is introduced. But what if the company only makes modest changes to its existing brand or logo — is the updated version a new trademark or just a refreshed version of the old one?

The answer is provided by the principle of “trademark tacking,” which allows the company to “tack on” the time it used the former trademark to the new trademark. “Tacking on” is good for the trademark owner because its gives the company the benefit of the Date of First Use of the older trademark, instead of starting over with the new trademark.

The Supreme Court ruled that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.” The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”

“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”

David Lilenfeld

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IPR Patent Proceedings May Get a Judicial Makeover

In early January 2016, the Supreme Court of the United States a writ of certiorari in a patent case, titled Cuozzo Speed v. Lee. In Cuozzo, is likely to have a major effect on Patent and Trademark Office’s post-grant patent proceedings. Two questions are presented to the Supreme Court:

No. 1. Does the Board have inviolate, unreviewable authority to initiate an IPR.

No. 2. Whether the Board, during those proceedings, may construe claims in an issued patent according to broadest reasonable interpretation or according to their plain and ordinary meaning.

“This one will be good to watch and can have significant impact on post-grant strategy,” said David Lilenfeld, founder of Atlanta-based Lilenfeld PC.

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Does Copyright Law Let a Monkey Sue Over His Selfie?

Monkey Selfie Blog pic

Naruto, the macaque, is a pioneer to the animal world because he is the first animal to take a selfie. Dating back to 2011, on the Indonesian island of Sulawesi, Naruto snatched photographer’s, David Slater’s, camera and took a selfie. This selfie has stirred widespread debate over who owns the rights to this photograph. People for the Ethical Treatment of Animals (PETA) sued on Naruto’s behalf claiming ownership rights to the selfie. Slater, on the other hand, claimed ownership of the selfie because it was taken with his camera. U.S. District Judge William Orrick III ruled that copyright law does not extend its protection to animals. Nevertheless, this is a landmark case because for the first time in history an animal’s right to sue for property rights, as opposed to being labeled as property, has arisen.

PETA, on behalf of Naruto since monkeys do not have standing to bring a lawsuit let alone the ability to talk, sued Slater. The organization asserted Slater could not hold copyright in the selfie because he was not involved in its creation. PETA sought monetary damages, claiming all money will go to Naruto, and a ban on the sale of the selfie.

Slater alleged he has a copyright interest in the selfie. This nature photographer owned the camera that the monkey grabbed in order to take the selfie. Furthermore, Slater argued the photograph was a result of his artistic creativity as he deliberately left the remote trigger for the camera accessible to Naruto with the hope that the monkey would take a picture.

Copyright laws provide that if there is an author, there is a copyright. This poses a problem for Naruto because works created by a non-human are not subject to copyright. According to Clause 313.2 from the United States Copyright Office, “This office will not register works produced by nature, animals or plants.” This clause specifically lists “a photograph taken by a monkey” as an example of a work that is not registerable because it lacks human authorship. Naruto, being an animal, foreseeably had difficulty acquiring a copyright in his selfie even though he arguably is the author of the work. Despite our sympathy for Naruto, United States copyright laws would need to be revised in order for courts to lawfully rule in favor of Naruto.

David Lilenfeld


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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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Six Essential Steps To Protect Your Brand and Trademark

Selecting and developing a strong trademark is often vital to the creation of a successful brand.  A trademark identifies your business and allows purchasers to quickly connect your products or services to their source.  A single word (e.g. Nike), symbol (e.g. McDonald’s Arch), color (e.g. Coca-Cola red), shape (e.g. iPod shape), sound (e.g. the NBC Chimes), or even smell, can enable a purchaser to identify the source of a product in just seconds.  But choosing the right trademark can be an overwhelming task.  The following six steps should provide a helpful list of things to consider when picking and registering a trademark.

1.    Is a trademark right for you?  Trademarks, copyrights, patents, and trade secrets are all different and unique forms of intellectual property. A trademark is often a brand name or logo that identifies the particular origin of goods or services.  Since trademarks identify source, trademarks must be placed on or used in connection with the products or services they identify.  For example, use of a domain name only as part of a web address does not qualify as source-indicating trademark use, but other prominent use of the mark, apart from the web address, near the goods or services, may qualify as trademark use.

2.    Select a trademark with care.  Not every mark may be registered and the strength of a trademark can vary widely.  While most businesses want to explicitly identify their products or services (e.g. Fried Chicken Kitchen), words used to describe an entire category of goods or services are known as “generic” and cannot be registered.  For that reason, when picking a trademark it is best to be creative.  Before you file a trademark application you should consider: (1) whether the mark you want meets the guidelines for registration, and (2) how difficult it will be to protect your mark based on the strength of the mark selected.

3.    Search the USPTO database.  Before 100% committing to your trademark, search the USPTO database to see if anyone else has already registered the word, symbol, color, shape, sound, or smell you like.  If other businesses have registered the same or similar marks for your goods or services, then there is strong chance your registration may be refused.

4.    File online.  The USPTO has an online system, the Trademark Electronic Application System (TEAS), which you can use to apply for your trademark.  You can access the online application from the USPTO website.  When filing your application, remember two things: (1) The processing fee is nonrefundable, so make sure you review everything before you press “submit”, and (2) all information included in your application will be publicly available, so you may want to stay away from including your home address.

5.    Consider Hiring a Trademark Attorney.  Selecting and registering a trademark is a complicated process, so you should certainly consider hiring an expert in the field.  trademark attorneys have professional insight and experience, which will simplify the application process and can end up saving you time and money in the end.  They can be particularly helpful during the trademark selection phase.  So before you go too far, consider whether you should consult a trademark attorney.  For more information on selecting a trademark attorney check out our blog post from January 19, 2015 “How to Choose a Trademark Attorney.”

6.    Monitor Your Application.  Once you file your application, it is important to check the status every 3-4 months and make sure you don’t miss a filing date. Applications may be monitored through the Trademark Status and Document Retrieval System (TSDR).  Just plug in the mark, owner’s name, or serial number to look up your file and check for any updates.

David Lilenfeld

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All Sporting Good Brands Should Aspire to Be a Lifestyle Brand

A growing number of our clients come from the sporting goods industry.

Brands are critical to a business’ success in every industry, but especially with sporting goods.  Strong brands in the sporting goods industry gain strong customer loyalty, which produces repeat buyers willing to pay premium prices.  At the heart of branding is the complex world of trademark law.

A trademark is a symbol of the origin of a product, which enables consumers to recognize the source of the product they are considering buying. Trademarks can be a word (e.g., Adidas), a symbol (e.g., Nike swoosh), a number (e.g., No. 2), a color, a shape, a sound, or even a smell.

Buyers rely on trademarks as a quick and reliable guide to assure the quality they seek, and to distinguish between products offered by competing companies.  Trademarks help companies build a reputation in the market and develop and retain a loyal clientele, by instilling consumer confidence and trust in the products they sell.  The goodwill associated with a successful sporting brand can be a tremendous commercial asset.

The association of trademarks at sporting events can benefit the brand by appealing to the aspirations and emotions of sports fans.  A well positioned brand will become a symbol of a specific sporting lifestyle.  Thus the brand becomes a way to live, not just a product to buy.

David Lilenfeld

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The Trademark Office Won’t Play Ball – Cancels REDSKINS Registration

In a 170-page ruling, the Trademark Office recently canceled the registration of the National Football League’s team, REDSKINS mark as disparaging to Native Americans.

The ruling should help educate the public that trademark rights are primarily based on use of a trademark, not on registration of a trademark.  For that reason, you do not need a registration to enforce rights in a trademark, but you must use the mark.  The decision does not mean that the team is required to change its name.  Nor does it mean the NFL is unable to prevent others from making commercial use of the name.

The Trademark Office made this distinction clear at the outset, stating, “[t]his decision concerns only the statutory right to registration under Section 2(a).  We lack statutory authority to issue rulings concerning the right to use trademarks.”

Owning a federal trademark registration has several benefits: nationwide constructive notice of rights; prima facie conclusive evidence of exclusive rights to use the mark for the identified goods or services; and the backing of the U.S. Customs and Border Protection minimize importation of counterfeit goods.  However, if a registration is cancelled, common law trademark rights can be relied upon in the territories the trademark was actually used.

To determine whether an owner has common law rights in a trademark, courts not only require continuous use of the trademark, but also consider how widespread the distribution is and the extent of the public’s association with the trademark.  An owner of common law rights – even one lacking a federal registration — can still sue for infringement in state or federal court and obtain both injunctive relief and monetary damages in appropriate cases.

David M. Lilenfeld

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How to Choose a Trademark Attorney

I am frequently disappointed with attorneys who hold themselves out as “trademark attorneys,” when, in reality, they have very little trademark experience.

If you are considering hiring a trademark attorney here are ways to see for yourself whether the attorney truly has trademark expertise:

1.         Use TESS for Filing Trademark Applications

If you are considering hiring an attorney to file a trademark application for you, use TESS.

Step #1:           Find the Trademark Office’s Trademark Electronic Search System (TESS) on the Internet and select “Word and/or Design Mark Search (Structured).”

Step #2:           Enter the attorney’s name in the “Search Term” box.

Step #3:           In the “Field” drop down menu, select “Attorney of Record” and click search.

A list will appear showing the applications in which the attorney is the Attorney of Record.  If the attorney’s name is a common one (e.g., Thomas Smith), make sure you only count those applications filed by the actual attorney you are considering hiring, not another attorney with the same name.

2.         Use PACER for Trademark Lawsuits

If you need to hire a trademark attorney for a lawsuit (also called a “trademark litigator”) you should ask the attorney for a list of trademark lawsuits he or she has handled.  An attorney should readily produce a list for you.  He or she can retrieve it from Public Access to Court Electronic Records (PACER).  Non-lawyers can also conduct their own limited searches on PACER.  Note that the federal courts code trademark lawsuits under the number “840” – so look for that code.

Hire a trademark attorney with real trademark experience, not just one who calls himself or herself one.  The above tips can help you verify that the attorney has the real experience you need.

David M. Lilenfeld

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POM Wonderful LLC v. The Coca-Cola Company in Trademark Fight

A recent Supreme Court ruling sided with Pom Wonderful in a case claiming that The Coca-Cola Company’s “Pomegranate Blueberry” beverage offered by its Minute Maid unit is misleading. The 8-0 ruling allows Pom Wonderful to go forward with its lawsuit against Coke alleging that the “Pomegranate Blueberry” label is misleading because 99 percent of the drink is apple and grape juice. Only 0.3 percent is pomegranate juice and 0.2 percent is blueberry juice. Pom filed its lawsuit against Coke in 2008 after it began losing market share to Minute Maid’s “Pomegranate Blueberry Flavored Blend of 5 Juices” drink. The drink’s label shows the words “Pomegranate Blueberry” in much larger type than the rest of the phrase and emphasizes the pomegranate with a large picture of the fruit.

The Supreme Court’s ruling reversed the lower courts’ decisions in favor of Coke, which were based on Coke’s defense that the label conforms to the Food and Drug Administration (FDA) rules. The Supreme Court’s reversal is important because it sets a precedent that a food label could technically comply with FDA rules but still be misleading to the consumer demographic. Justice Kennedy wrote that the law governing regulation of food and drug labels does not preclude a competitor from suing under the Lanham Act for unfair competition based on false or misleading claims. The Court also ruled that federal food and trademark laws complement each other in the regulation of misleading labels – they are not interpreted as one or the other.

This decision is interesting as it could open the door to more litigation by competitors against food makers for deceptive labeling. On an interesting note, the federal government has filed a separate and unrelated deceptive advertising case against Pom for claiming that its pomegranate juice can treat or prevent heart disease, prostate cancer, and other illnesses. The Federal Trade Commission’s action is pending at the U.S. Court of Appeals for the D.C. Circuit.]

David Lilenfeld

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Keep This in Mind Next Time You Leave an Online Review

Often when we experience bad service, our first inclination is to leave a negative review for the company on a website such as Amazon, Yelp, or TripAdvisor. However, recently some companies have begun threatening to bring suits for defamation against customers who leave negative reviews about their businesses.

What is even more concerning is that a Virginia court recently ordered Yelp to turn over the names of seven people who left negative reviews for a carpet cleaning company. One of the main reasons people feel comfortable speaking openly online is that their identities are protected by user names, which is now compromised by rulings such as this one.

So what is the best way to protect yourself? You must act in good faith and not lie in your review. Truth is a defense against libel (the defamation of a party in written form). To prove a case of libel in court, a plaintiff (here, the company) must prove that the defendant (here, the individual) made a statement that the defendant knew to be false, injurious, and unprivileged. In basic non-legal terms, this means that, as long as you tell the truth in your review, you are probably safe.

David Lilenfeld

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Lilenfeld PC attends IP Section’s CLE and 50th Anniversary Event

On May 22, 2014, we attended a CLE called “Policing and Enforcing Intellectual Property in Social Media” hosted by the IP Section of the State Bar of Georgia. The panel featured Lindsey Corbin (Z5 Consulting), Bakari Brock (Lyft, formerly Twitter, Google, and YouTube), and Todd Williams (Turner Broadcasting). It was moderated by Joe Staley (Kids II, Inc.) and Matt Smith (Innovolt).

The panelists spoke on a variety of issues, including protection in foreign countries, gTLD’s, and  how the law is trying to catch up to how quickly technology is changing. It was a great event followed by the IP Section’s 50th Anniversary Event.pic for blog entry

David M. Lilenfeld

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USPTO Proposes Reduction in Trademark Fees

We have good news for current and future clients! The United States Patent and Trademark Office (USPTO) has released proposed reductions for the fees it charges to file trademark applications and renewals. As we have discussed in previous blog entries, there are numerous advantages to filing for federal registration of your trademark. Some of these include: public notice of your claim of ownership of the mark; a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide; and the ability to bring an action concerning the mark in federal court.

The USPTO issued a notice of proposed rulemaking on May 9, 2014. In that notice, the USPTO proposed reducing its trademark fees from $325 to $275 for most applications. There are two conditions that must be met. First, the applicant must use the USPTO’s Trademark Electronic Application System (TEAS). Second, the applicant must agree to receive all correspondence by e-mail, and use TEAS to file Office Action Responses and all other documents through TEAS as well. This option would be known as a TEAS Reduced Fee application.

The fee for a TEAS Plus application is also proposed to be reduced from $275 to $225 if both of the above conditions are met. A TEAS Plus application is one in which an applicant selects its description of goods/services from the USPTO’s Acceptable Identification of Goods and Services Manual, rather than entering free-form text.

Lastly, the USPTO’s notice proposed reducing the fee from $400 to $300 per class for renewal of an existing registration.

We hope this motivates our readers to file trademark applications for their company names, product or service names, and logos. Remember, you must have a federal registration to sue another party in federal court for trademark infringement. Please contactDavid Lilenfeld at or Sonia Lakhany at if you would like more information on registering a trademark.

David M. Lilenfeld

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Happy Birthday, Batman: 75 Years of the Batman Trademarks

With the recent announcement of Ben Affleck being cast as Superman in the upcoming sequel to “Man of Steel”, we thought it would be the perfect time to recognize Batman and celebrate his 75th birthday this year. This widely known comic character has become an important part of our pop culture history and, for the first time on the big screen, will appear next to Superman, who will be played again by Henry Cavill. The much-anticipated film is scheduled for release in May 2016.

In the meantime, from a trademark perspective, the graphic below shows an interesting and fun evolution of the Batman logos over the last 75 years. Happy Birthday, Batman!

(Of course, being intellectual property lawyers, we must say thank you to Happy Birthday Roboto for the graphic).

batman logo

David M. Lilenfeld

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Corporate Names versus Trademarks

Even savvy attorneys get confused between a corporate name and a trademark. We thought we would lend a helping hand and clarify the differences.

Let’s start with corporate names. A corporate name is the name of the actual business entity – the name that gets registered with the Secretary of State at the time of incorporation. This is the company’s “official” name. Incorporating with a Secretary of State gives the company the right to use its name for official purposes, such as banking, on legal documents, and as a tax payer.

A trademark, on the other hand, is a particular word, phrase, symbol, design, or a combination thereof (such as a logo) that is the name shown to the public – the public-facing name the company uses in the stream of commerce to identify its goods or services. Trademark registrations are applied for through the United States Patent and Trademark Office (for federal registration), state offices (for state registration), or internationally.

An easy illustration of the difference between corporate names and trademarks is TJ Maxx. TJ Maxx is a trademark for retail department store services, but that is not its corporate name. The corporate name is TJX Operating Companies, Inc., which most of us do not recognize.

A common misconception – among both business owners and lawyers – is that when a Secretary of State allows a company to incorporate with a particular name, the company thereby has permission to use that corporate name as a trademark. The truth is that when incorporation is allowed with a certain name, this does not necessarily mean use of that corporate name does not infringe someone else’s trademark.

Following the example above, let’s say you or your client wanted to incorporate the name TJ Maximum, Inc. A secretary of state is likely to allow that. However, if you or your client began using that name in connection with retail clothing, the owner of the TJ Maxx trademark would likely have a strong trademark infringement claim.  The fact that a Secretary of State allowed incorporation with the name TJ Maximum, Inc. is not a defense to trademark infringement.

The bottom line is that corporate names and trademarks are two different things and shouldn’t be confused.  If you have any questions, please contact David Lilenfeld at or Sonia Lakhany at

David Lilenfeld

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Recent Eleventh Circuit decision mirrors State of Washington case on IP addresses

In a recent blog post (see here), I discussed a recent case in the State of Washington where the judge ruled that an IP address connected with infringing activity does not prove that an account holder is guilty of copyright infringement.  The judge further ruled that evidence consisting only of an IP address is insufficient to plead a claim of copyright infringement.

I had stated that Lilenfeld PC would be keeping an eye on this issue for precedent in the Eleventh Circuit and it arose just a couple of weeks ago in Florida. Malibu Media, a pornography distributor that filed more than 1,000 suits in 2013 alone, asked the judge to issue a subpoena against a suspected pirate known only by an IP address. The user, “,” was accused of sharing Malibu Media content without the company’s permission. In response to the judge inquiring how Malibu Media obtained the evidence against, the company explained that its software was able to determine that the downloader was in at a residential address and not using a WiFi hotspot. This meant that the infringer had to be guilty of downloading the content. However, the judge’s perspective was that even if the company could prove that a specific internet connection was used, it would not be definitive as to who was sitting at the keyboard. Dismissing the case, the judge wrote, “There is nothing that links the IP address location to the identity of the person actually downloading and viewing Plaintiff’s videos, and establishing whether that person lives in this district.”

While this case does not necessarily mean all IP address cases will be ruled similarly, it is certainly the latest in a trend shifting toward more stringent requirements in piracy cases. Regardless, even if their suits are ultimately dismissed, companies like Malibu Media are intimidating people into paying thousands of dollars, even if they’re innocent of copying or uploading movies illegally. A digital rights group called Electronic Frontier Foundation explained that these lawsuits often list embarrassing titles, which then become public record. Copies of the court filings are sent to the subscriber along with a demand for money, to which most people’s response is to pay, rather than be elect to pay named in a public lawsuit as a habitual user of hardcore porn.

David M. Lilenfeld

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Example of possible trademark infringement at a local Atlanta grocery store

As consumers with busy lives, we often hastily do our grocery shopping and don’t think much of products we don’t use or purchase. As a trademark attorney, I am consistently interested in blatant examples of trademark infringement I come across and thought to share one on today’s blog post.

The photo below was taken recently at a local grocery store here in Atlanta. It looks rather similar to a popular brand we all know (second picture), doesn’t it? The familiar bee was even on the side of the box. Just goes to show that the standard for trademark infringement (which is likelihood of confusion) can be as simple as a consumer shopping for cereal and doing a double-take when reaching for a box before realizing it’s the wrong product.


photo (26)


David Lilenfeld

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The “Good Times, Bad Times” of Works Made-for-Hire

Have you ever hired anyone to create something for you or your business? If so, read on. Under United States law in the majority of instances, the person who created a work is its author for purposes of copyright protection. However, one exception is when an independent contractor is specially ordered or commissioned to produce a work under a properly drafted written agreement. This specific circumstance constitutes a work made-for-hire, where the person or entity who hired the independent contractor (not the independent contractor herself) is then the owner of the work.

Of course, determining whether a work is one made for hire can be tricky. The first step is to establish whether the person who prepared the work is an employee or an independent contractor. If it was an independent contractor, then under Section 101 of the Copyright Act, the work must have been specially ordered or commissioned for use and there must have been an express written agreement between the parties that the work was made-for-hire. Such an agreement is typically called a “work-for-hire” agreement.

An example of the complications with works made-for-hire is the recent suicide of Mick Jagger’s girlfriend, L’Wren Scott, which resurfaced Jagger’s longstanding feud with artist Ruby Mazur. In the 1970’s, Jagger paid Mazur $10,000 for Mazur to create the original “mouth and tongue” artwork for the Rolling Stones’s “Tumbling Dice” album. Since then, the image has become an iconic piece and one of the most recognizable logos in pop culture. Perhaps taking things too far, Mazur said (referencing Scott’s suicide), “I feel for [L’wren]…Had I not been as strong, with great friends, I might have hung myself too.”

Mazur stated he asked Jagger repeatedly to give him trademark rights in order to reap fair earnings for his work, but Jagger refused. Indeed, Mazur tried to sue Jagger for trademark infringement in the 1990’s, but too much time had elapsed. Mazur now claims that the experience drove him to depression and suicidal thoughts.

While this was an unfortunate outcome for Mazur, Jagger structured the deal correctly, having an express written agreement with Mazur to create the image and paying Mazur for his work. Mazur was an independent contractor and the transaction was a work made-for-hire squarely within the Copyright Act’s definition.

David Lilenfeld

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7 Reasons to Conduct a Proper Trademark Search

As trademark attorneys, we are often asked what the rationale behind the search process is and why we stress its importance prior to filing an application for registration. We thought it might be helpful to provide a short list of seven reasons why you should take the time to conduct a proper trademark search:

  1. The United States trademark laws are based upon the “first to use has priority” system. As such, if someone already is using a particular trademark, they have superior rights to it.
  2. You don’t want to knowingly (this includes the “should have known” standard) infringe on someone’s trademark. This can result in possibly having to pay damages such as: (1) disgorgement of profits; (2) damages caused by the infringement, which can be trebled; (3) costs of bringing the lawsuit; (4) attorney’s fees; and (5) destruction of inventory.
  3. A trademark owner can use your failure to search as a willful attempt to “blind yourself” to readily available information.
  4. You don’t want to waste time, money, or resources in developing your product, the packaging, and advertising only to have to change the name or logo later after being accused of infringement.
  5. Searching prior to applying for registration may help you identify potential obstacles to registration, such as those encountered by a similar trademark. You can even see how the applicant responded to the Office Actions under the TSDR tab on the USPTO website.
  6. Similarly, you can see which types of trademarks tend to be accepted or rejected by the USPTO and design your trademarks accordingly, thereby optimizing your chances of approval.

While search reports for a comprehensive search do cost a few hundred dollars, it is much better to spend a small amount of money up front than to potentially spend a lot of money later in litigation. See #2! Please contact David Lilenfeld or Sonia Lakhany for more information on trademark searching or clearance.

David M. Lilenfeld

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Recent ruling in State of Washington makes identifying copyright infringers more challenging

Often in copyright infringement cases, particularly those that deal with piracy, copyright owners seek to not only determine an Internet Protocol (IP) address, a numerical value that identifies a computer, behind the infringing activity, but also the actual, individual person behind the computer. The source for the identifying information is usually the Internet Service Provider (ISP), such as Comcast, AT&T, or RCN. Attorneys for copyright owners in these cases often serve subpoenas on the ISP to obtain the account holder’s name, address, and other contact information. Once the ISP responds to the subpoena, the copyright owners names those account holders personally in suits for infringement.

However, a recent copyright infringement case in the United Stated District Court for the Western District of Washington at Seattle may change that practice. This case addressed a claim of copyright infringement by the makers of the movie Elf-Man against hundreds of users pirating the firm using BitTorrent. The movie studio alleged that the IP address assigned to each alleged infringer shared a single pirated version of the film, stating that the defendants either downloaded the pirated film themselves or permitted, facilitated, or promoted the use of their Internet connections by others to download the film.

Ruling on a motion to dismiss by one of the defendants, the judge ruled that IP address evidence does not prove that an account holder is guilty of copyright infringement. The judge added that evidence consisting only of an IP address is insufficient to plead a claim of copyright infringement. Further, the judge stated, “[The movie studio] has actually alleged no more than that the named defendants purchased Internet access and failed to ensure that others did not use that access to download copyrighted material…While it is possible that the subscriber is the one who participated in the BitTorrent swarm, it is also possible that a family member, guest, or freeloader engaged in the infringing conduct.”

This decision has important implications for identifying future infringers, particularly for firms such as Lilenfeld PC, which focus only on intellectual property. It is something we will be keeping our eyes on for precedent in our home jurisdiction. If you have any questions about a potential copyright infringement claim, please contact David Lilenfeld or Sonia Lakhany.

David Lilenfeld

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Event at Emory Law School

On February 26, 2014, Lilenfeld PC Attorney Sonia Lakhany spoke on a panel of small- and medium-sized firm lawyers at Emory Law School. The event, hosted by the Emory Center for Professional Development & Career Strategy, discussed various options for a job search outside of the on-campus interviewing process.

Sonia shared her job search as a 1L that turned into a 2L summer position, as well as her post-graduate experiences working in litigation. The other panelists were Randy New (Kitchens New Cleghorn, LLC), Melissa Perignat (Holt Ney Zatcoff & Wasserman, LLP), and Taylor Statfeld (Emory ‘14L). Other topics discussed by the group included items to highlight on a resume, how to take the initiative, and strategies to secure a job offer as an intern.

It was a pleasure for Sonia to meet Emory students and provide advice from the perspective of a recent alum. She looks forward to future events at the law school.

David M. Lilenfeld

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Because we think it is important, we are re-posting an email from the State Bar of Georgia. Please get involved – it will only take a few minutes:

From the President: Voice Your Opposition to SB 209
Dear Bar Member,
The State Bar of Georgia urges you to contact your state House representative to voice your opposition to SB 209.
SB 209 provides immunity from UPL lawsuits for entities such as LegalZoom that provide online legal self-help products, so long as the website “conspicuously” disclaims that its products do not substitute for the advice of an attorney.
The Bar opposes this bill for three reasons:
(1) These websites warrant that their forms meet the specific legal requirements of the consumer’s state law. Whether or not they do is a legal interpretation best left to be determined by the finder of fact.
(2) Many of these websites offer “hands on attention from attorneys,” yet the consumer doesn’t know which states these attorneys are licensed from the face of website itself.
(3) The bill does not define what constitutes a “conspicuous” disclaimer and most disclaimers on these websites are in tiny print and difficult to find.
The State Bar of Georgia’s paramount principal is ensuring easy access to justice for all people, but SB 209 does not do so. In fact, it protects entities that may be impermissibly practicing law in this state and putting our citizens at risk of harm. Please contact your state House representative and urge them to vote NO on SB 209 on Thursday, March 6.
To find your representative, please click here. If you have any questions, please visit the State Bar’s legislative program page. If you have any questions related to the Bar’s legislative agenda, please contact Thomas Worthy, the State Bar of Georgia’s Director of Governmental Affairs, at
Charles L. Ruffin
President, State Bar of Georgia
David M. Lilenfeld
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The latest in Georgia on combating patent trolls’ bad faith assertions

Patent trolls have recently become more of a concern in the context of enforcing patents. A patent troll is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question. Needless to say, a need has arisen to combat patent trolls’ meritless assertions which are often in bad faith.

To that end, recent proposed legislation in Georgia, House Bill 809, serves to prevent bad faith assertions (BFA) of patent infringement. The legislation is split into two parts – factors that a court may consider as evidence of BFA and factors that a court may consider as evidence that an individual has not made a BFA.

With regard to the first category, here are the factors that can indicate a BFA:

  • Prior to sending the demand letter, the plaintiff failed to conduct an analysis comparing the claims in the patent to the product, service, or technology. Or, if an analysis was done, it failed to identify the specific areas that are covered by the claims in the patent.
  • The demand letter doesn’t contain the patent number, name and address of patent owner(s) and/or assignee(s), or factual allegations regarding the specific areas that the allegedly infringing product, service, or technology infringes upon the patent, or is covered by the claims in the patent. If omitted and the defendant requests this information and plaintiff still does not provide it within a reasonable period of time, the court may also consider this as a factor.
  • The demand letter demands payment of license fee or response within an unreasonably short period of time.
  • The plaintiff offers to license the patent for an amount that is not based on a reasonable estimate of the value of the patent.
  • The claim or assertion of infringement is meritless and the plaintiff knew, or should have known, that it is meritless.
  • The claim or assertion of infringement is deceptive.
  • The plaintiff (or its subsidiaries or affiliates) previously filed or threatened to file one or more lawsuits based on the same or similar claim of patent infringement, and those threats or lawsuits lacked the above information, or the individual attempted to enforce the claim of patent infringement in litigation and a court found the claim to be meritless.

With regard to the second category, here are the factors that can indicate there was not a BFA:

  • The demand letter contains the above information, or if it does lack the above information and the defendant requests it, the plaintiff provides the information within a reasonable period of time.
  • The plaintiff engages in a good faith effort to establish that the defendant has infringed the patent and to negotiate an appropriate remedy.
  • The plaintiff makes a substantial investment in the use of the patent or in the production or sale of a product or item covered by the patent.
  • The plaintiff is the inventor or joint inventor of the patent, or in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventor, is the original assignee or an institution of higher education or a technology transfer organization owned or affiliated with an institution of higher education.
  • The plaintiff has demonstrated good faith business practices in previous efforts to enforce the patent, or a substantially similar patent, or successfully enforced the patent, or a substantially similar patent, through litigation.

The legislation also discusses remedies and enforcement. For the full text of the legislation, click here.

David M. Lilenfeld

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Avoiding Trademark Disputes: Review the Trademark Official Gazette (TMOG) (Part 5 of 5)

Part Five of our Five-Part series (See Part 1, Part 2, Part 3, and Part 4) addresses another preventative measure trademark owners can take, which is to regularly review the Trademark Official Gazette (TMOG). The TMOG is published every Tuesday and is available on the United States Patent and Trademark Office (USPTO)’s website in both an electronically searchable format as well as in PDF format. Its main purpose is to provide bibliographic information and a drawing for each mark that has been published through the USPTO. Also included is a list of cancelled and renewed registrations for each mark.

You may be thinking, “What is the relevance of the TMOG to me as a trademark owner?” The answer is that it gives you notice of actions that are being taken by the USPTO with regard to certain marks that may be of interest to your portfolio, such as those that are confusingly similar to your marks. This allows you to take action early rather than be blindsided by the mark later on.

As discussed in Part Four, the publication of a mark in the TMOG allows for a period of opposition by any party who believes he or she will be damaged by the registration of the trademark. That party has 30 days to either file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB) or request an extension of time to file a notice of opposition. The cost to file a notice of opposition is $300 for each class of goods or services, but it is free to file a request an extension of time to file a notice of opposition.

The TMOG is an excellent source of information about marks as they become registered. Keeping abreast of these filings will arm you with the information you need to ensure that the marks you have worked so hard to maintain will stay protected. Contact David Lilenfeld or Sonia Lakhany at Lilenfeld PC to help you evaluate your options for opposing a mark, or for any other intellectual property need you may have.
David Lilenfeld

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USPTO May Possibly Revoke Redskins’ Trademarked Nickname

Trouble may be on the horizon for the Washington Redskins trademark. In correspondence dated December 29, 2013, the United States Patent and Trademark Office (USPTO) rejected a request to register “Redskins Hog Rinds” as a trademark for a pork rind product.  The USPTO stated, “Registration is refused because the applied-for mark REDSKINS HOG RINDS consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols.”  While the “Redskins Hog Rinds” product is not affiliated with the football team, the implications of the USPTO’s letter will certainly affect the team’s intellectual property protection, including its iconic REDSKIN trademark.

The USPTO initially held a hearing on the team’s nickname in March 2013, in the wake of a lawsuit led by Amanda Blackhorse, a Native American issues advocate, and members of the Oneida Indian Nation, all of whom criticize the use of the REDSKIN trademark. A representative of the Oneida Indian Nation, referring to the Redskins nickname as the “R-word”, stated that the term is a “dictionary defined slur designed to demean and dehumanize an entire group of people.”

Daniel Snyder, owner of the team, has refused to change the REDSKIN trademark despite a growing movement through media outlets and advocacy groups, defending it in a recent letter to fans as a “symbol of everything we stand for: strength, courage, pride, and respect — the same values we know guide Native Americans and which are embedded throughout their rich history as the original Americans.” The Oneida Indian Nation criticized Snyder’s letter as “an attempt to re-write history.”

What the USPTO ultimately decides regarding the Redskins mark remains to be seen and we will post an update once that the decision is released.

David M. Lilenfeld

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Avoiding Trademark Disputes: Set Up a Watch Service (Part 4 of 5)

Once you have performed a thorough clearance search, registered your trademarks, and are actively managing your registrations, the next prudent step is to set up a trademark watch service. This is an imperative component of protecting your brand and something no trademark owner should neglect. Part Four of our Five-Part Series will provide an overview of what a watch service is and why you should consider one.

As you may know, the process of registration of a trademark includes a period of publication of the mark in the Trademark Official Gazette (TMOG) (to be discussed further in Part Five), allowing watch services to track trademark filings and inform trademark owners so they can act within the allotted opposition period. Essentially, a watch service monitors sources both domestically and internationally, alerting you of newly-filed applications with the United States Patent and Trademark Office (USPTO) or applications that are in the publication period that may be confusingly similar or even infringing upon a mark in your portfolio. This can include all types of trademarks – word marks, logos, and slogans. Having this information is invaluable to you as a trademark owner, since you can take action early in the form of an opposition through the Trademark Trial and Appeal Board (TTAB).

Watch services allow you to specify which marks and which classes to monitor. They will send you a report that can be customized to your preference to include cases, notes, and opinions if you choose. You can specify certain countries or territories, as well as expand the report to include domain name registrations and common law uses. Some services may even review the watch notices for you and recommend what action you should take.

The cost for watch subscriptions can range depending on the type of services you require, but as with other trademark costs, it is far better to pay these fees up front than to try to stop infringement once it has started. Think of it as preventative care for your portfolio. Contact David Lilenfeld or Sonia Lakhany at Lilenfeld PC to help arrange and set up a watch service for your marks.

David M. Lilenfeld

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GoDaddy Off The Hook for Contributory Trademark Infringement

Good news came recently in the intellectual property world for GoDaddy, as well as other domain name registrars.  In a recent trademark case, the United States Court of Appeals for the Ninth Circuit ruled that GoDaddy is not liable for contributory trademark infringement by cybersquatters.  If you aren’t familiar with cybersquatters, they are third parties who register domain names similar to well-known trademarks and redirect their websites to alternative, and often offensive, content.

The appellate case, Petronas v., came after a federal district court’s dismissal on the same facts.  The facts, though relatively simple, serve as a large victory for domain name registrars since cybersquatting is becoming more common with so many recent technological. A third party registered the domain names <> and <> using GoDaddy, thereby infringing or diluting the trademark PETRONAS, owned by the Malaysian oil and gas company Petroliam Nasional Berhard.  The third party’s domains, via GoDaddy’s domain-forward service, led users who visited the websites to adult content instead. GoDaddy declined to penalize the cybersquatter, asserting that under the Uniform Domain Name Dispute Resolution Policy promulgated by ICANN (the Internet Corporation for Assigned Names and Numbers), a domain registrar cannot get involved in trademark disputes involving domain names.

Petroliam Nasional Berhard brought suit, alleging contributory trademark infringement by GoDaddy for hosting the infringing websites and providing a forwarding service to adult content.  The district court declined to hold GoDaddy liable for refusing to take action.

On appeal, Petroliam Nasional Berhard requested that the Ninth Circuit allow a claim under the 1999 Anticybersquatting Consumer Protection Act (ACPA), a law that allows trademark owners to contest infringing domain names, against a domain name registrar if the registrar’s conduct contributed to the cybersquatter’s trademark infringement.  The Ninth Circuit ruled against Petroliam Nasional Berhard, referring to the need to “spare neutral third party services providers from divining the intent of their customers” who registered or redirected domain names.

While GoDaddy is the world’s largest domain name registrar, hosting approximately 50 million registered domain names in its database, the ruling extends to smaller domain name registrars as well.  Considering the vast number of domain names registered through GoDaddy, the Court pointed out that it would be nearly impossible for GoDaddy to track which domain names were legitimate and lawful and which were being used for cybersquatting.

David M. Lilenfeld

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Victory for Baltimore Ravens over “Flying B” Trademark/Logo

A battle lasting longer than fifteen years over the Baltimore Ravens’ “Flying B” logo has finally come to an end, after multiple lawsuits by the owner of the copyrighted work, Frederick Bouchat.  Affirming the lower court’s decision, the United States Court of Appeals for the Fourth Circuit ruled that the NFL’s use of the logo in three videos and in certain historical displays in the team’s stadium was Fair Use.  The three videos Bouchat challenged were produced by the NFL for display on the NFL network, and were also featured on websites including and Two of the videos were part of the film series Top Ten, each episode of which features a countdown of ten memorable players, coaches, or events in NFL history. The third video is part of the Sound FX series, which provides viewers with an inside look at the sights and sounds of the NFL through players who wear microphones.  The historical displays Bouchat challenged were a timeline, a highlight reel, and a significant plays exhibit, all of which were located on the Club Level section of the Ravens’ stadium.

The Court analyzed each alleged infringing use using each of the four Fair Use factors. With regard to the three videos, the Court found that the first factor, whether the use was transformative, was met.  Rather than the initial use of serving as the brand symbol for the team, the Flying B is now used in the videos as part of the team’s historical record.  The infrequent appearance of the logo supports the finding of transformative use, as the logos appear only for a few seconds.  Also part of the analysis under this factor was the commercial nature of the use.  Indeed, the NFL’s use of the logo is largely commercial, but the Court found that this was outweighed by the highly transformative and limited nature of the uses.

The second factor, the nature of the copyrighted work, was found to be neutral. Citing its own decision in a prior Bouchat case, the Court stated that the second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.

The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was also found to be neutral.  Here, the NFL had no choice but to film the whole logo in order to fulfill its “legitimate transformative purpose” of creating the historical videos at issue, so the factor has limited influence.

The fourth factor is the effect of the use upon the potential market for or value of the copyrighted work.  This involves assessing whether the NFL’s use of the logo would materially impair the marketability of the work and whether it would act as a market substitute for it. A transformative use renders market substitution less likely and market harm more difficult to infer. Due to the transient and fleeting use of the Flying B logo, as well as the factual (as opposed to expressive) content, the Court concluded that the logos served a different purpose in the videos than they do standing alone.

Bouchat also challenged the incidental use of the Flying B logo in certain historical displays located on the Club Level of the Baltimore Ravens’ stadium – a timeline, a highlight reel, and a significant plays exhibit.  The Court undertook a similar analysis as that above and again concluded Fair Use, stating: “It would force those wishing to create videos and documentaries to receive approval and endorsement from their subjects, who could ‘simply choose to prohibit unflattering or disfavored depictions’…This regime…would chill the very artistic creation that copyright law attempts to nurture.”

David M. Lilenfeld

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Avoiding Trademark Disputes: Actively Manage Existing Trademark Registrations (Part 3 of 5)

In our last blog we discussed the importance of registering your trademarks as a means for avoiding trademark disputes. We continue here by explaining why and how to tend to those registrations once acquired. This tending to is referred to as “portfolio management” or “portfolio maintenance.”

1.         This first point seems obvious but it is often overlooked. Ensure that the ownership information in the registration is up-to-date. If there have been any changes to key information since the original registration, the registration needs to be updated. Company name, address, contact email are examples of information that often change and need updating. Otherwise, correspondence from the trademark or someone trying to reach you about your trademark might be missed by you.

2.         Periodically, the trademark owner must prove that it is still using the trademark. For federal registrations, renewals are under “Section 9” and proof of your continued use of a mark is made through a Declaration of Continued Use under “Section 8.”

3          Registrations should be reviewed to determine the availability of the mark for incontestability status.  Incontestable status shields the trademark from certain (but not all) challenges – making your trademark somewhat bulletproof.  Similarly, a mark registered on the Supplemental Register may be appropriate for transfer to the Principal Register, which also strengthens the registration.

4.         Registrations should be reviewed to make sure that the goods or services listed in the registration are consistent with your actual use of that trademark. For example, if you began using the mark in connection with plumbing services, that will be reflected in your trademark registration.  If you later expand your services to HVAC equipment, you may need to apply to add that new service to your registration.

5.         Existing registrations might also not cover all geographic areas where you use your mark. For example, if you registered the mark with the State of California because you only used the mark there, you might need to register the mark elsewhere if you are now using the mark outside California. Another example, perhaps a more common situation, is a mark being initially registered in the United States with the mark later also being used outside the United States. A foreign registration may be appropriate in such circumstances.

6.         Also, I’ve seen disclaimers in trademark registrations that may have been appropriate at the time of the initial registration, but are no longer appropriate.  (A disclaimer is a declaration from the Trademark Office that the trademark owner does not have the exclusive right to the disclaimed portion of a registered trademark.)  For example, in its registration for Google PLACES, Google was required to disclaim “places.” Removal of a disclaimer can strengthen the registration.

It is much easier to address these trademark portfolio issues in advance and not while under time pressure, rather than in response to a crisis created by a third party’s unauthorized use of your trademark or some other external event.

**** Remember, that none of our posts are or can substitute for legal advice. Our posts address general legal matters, while “legal advice,” on the other hand, is tailored by an attorney to fit your particular situation.****

David M. Lilenfeld


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Avoiding Trademark Disputes: Register Your Trademarks (2/5)

In almost all cases, trademarks should be registered. They can be registered with the federal government – more specifically, with the United States Patent and Trademark Office – if you, as the trademark owner, use the mark in “interstate” commerce (most marks are used in “interstate” commerce). Most of the 50 states also allow for registration of trademarks if the trademark is used in the state where registration is sought.  State and federal trademark registrations is a service provided by Lilenfeld PC.

Federally registering a trademark gives you national rights to it.  Such a registration preserves your right to expand your use of the mark into geographic regions of the United States where you have not previously used the trademark.  Without a federal registration, you will be hard-pressed to establish trademark rights in states you have not yet used the trademark.

A federal registration will also assist you in the event someone uses your trademark in a domain name, without your permission.  Such a registration will make it easier to persuade the person who registered the infringing domain name to relinquish the domain name registration to you.

A federal registration will also serve as a deterrent to others who might be thinking about using a trademark similar to yours.  A trademark registration shows that you are aware of and active in protected your trademark rights.  And, after five years of continuous use of a trademark your registration may become even stronger, gaining what is called “incontestable” status.

Finally, if a dispute over your trademark does arise, a federal registration entitles you to a presumption from the court that your registration is valid.  Your registration also entitles you to additional damages in the event it is found that your mark was infringed.  And a federal registration makes it easier to work with the United States Customs Service to stop the importation into the United States of unauthorized goods bearing your registered trademark.

As you can see, registering your trademarks greatly strengthens your rights and will likely help you avoid disputes.  We’ll post Part 3 of this 5 part series next week.  Please check back!

David M. Lilenfeld

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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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