First-To-File vs. First-To-Use

First-To-File vs. First-To-Use

First-To-File Trademarks In the United States, the right to use a trademark is based on the rights of the first party to use a mark. Under common law rights this means that if a restaurant opens on one end of the block, another restaurant can't open at the other end and call itself the same name. Allowing that would cause confusion and potentially harm consumers who would have difficulty knowing which restaurant is which. The same holds true for trademarks that are registered. The right to use and exclude others is based not on who is first-to-file, but on who uses it first. Racing to register a trademark. First-to-File This is not the way it is in every country, in fact in most countries a person can lose the right to use a mark in that country merely because they did not register it before someone else - even if they were using it in that country before...
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TTAB Issues Precedential Opinion Regarding Sanctions Against Petitioner for Fabricated Evidence

Citing Petitioner's Fraudulent Conduct, TTAB Dismisses Petitioner's Cancellation Petition Alexandria VA (September 11, 2019) – A three judge Trademark Trial and Appeal Board (TTAB) panel ruled in favor of Respondent Srills, LLC in a precedential trademark ruling dismissing a cancellation petition brought by Petitioner Optimal Chemical Inc regarding a series of Srills’ registered trademarks. The Petitioner filed the cancellation proceeding in February of 2016 alleging likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a claim of Petitioner’s alleged prior common law use of the marks. Following an extensive 20 month long review of the factual record as presented in the parties' trial briefs, the Panel found that "... Respondent has established by clear and convincing evidence that Petitioner participated in a pattern of submitting testimony and evidence which is inaccurate, fabricated, altered, and untruthful in order to demonstrate priority of use, an integral element of its claim of likelihood of confusion." Invoking the legal maxim...
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Minnetonka Based UnitedHealth Group Loses Domain Name Battle

Optum, Inc. v. Paul Mellen / Mellen Marketing Claim Number: FA1712001762046 Optum, Inc., a subsidiary of Minnetonka based UnitedHealth Group recently filed claims against Mellen Marketing who had registered the domains <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org>.  Optum's attorney (Kenneth L. Wilton of Seyfarth Shaw LLP, California) based their claim, in part, on an allegation that Mellen had specifically targeted Optum and had repeatedly offered to sell the domains  for two-million dollars.  Mellon responded by alleging that the domains were registered in relation to a prior business he was engaged in, and that Optum first approached him about purchasing the domains.  The Panel deciding the matter found that Optum didn't began using the HEALTHSAFE ID Mark in commerce until October 1, 2016, and Mellon registered the domains  on March 22, 2016. The ICANN Uniform Dispute Resolution Policy (UDRP) requires that a complainant prove three elements to obtain an order that a domain name should be cancelled or transferred: the domain name registered by Respondent is...
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Is this a Scam? – Invoices to Maintain your Registration

Is this Invoice from the Patent & Trademark Organization a Scam? If you are asking this, the answer is probably yes. Over the years there has been an ever increasing number of private companies that have taken it upon themselves to offer either non-existent services or services that have no benefit to businesses registering their trademarks. The trademark scam typically starts with a very official looking letter arriving in the mail with a very official name on it like the "Patent & Trademark Agency," Patent & Trademark Organization," or "TPP – Trademark & Patent Publications." The letter mentions a real trademark application and then states that some fee is due to put it on their registry, or to block someone else from registering it on their register. Even if their register or publication exists, it provides no legal protection - it is just a vanity publication. Sometimes these fees are higher than what the person paid for their original application. These documents...
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Trademark Application Timeline

Trademark Application Timeline

How long does the trademark application process take? Answer: While there is no absolute answer - for most applications the  trademark application process takes between 8-12 months and can be broken into several stages - each with its own variables. Step One - Trademark Clearance: The first step is the one before you file the trademark application.  Prior to filings any trademark application, you should take time to review prior registrations that might block your application from being accepted.  This can be done by you or by a trademark lawyer. When working with an attorney, this involves discussing the mark and your business, and it typically takes between 1-7 days depending on the type of trademark screening you decide to have done and the attorney's workload. Step Two - Preparation of Application: Assuming your trademark is cleared, an application is prepared based on the information you provide, and if working with a trademark attorney, the analysis of the lawyer.  You can count on 2-3 days for this...
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Halloween Trademarks 2017 Edition

Halloween Trademarks 2017 Edition

While no one asked for it - here it is - 2017 Edition of Spooky Trademarks.  SHRED BUNDY - Tasteless on so many levels   LIFE AND DEATH - That's just weird - listed services sound very sophisticated though - "Consultation and advice regarding musical selections and arrangements for sound recordings and live performances"   UNDEAD BETTYS - Roller Derby rocks!!!!!!    SN87504276 - I just like this one due to the cinematographic nature of the description of the image, which I find kinda scary: The mark consists of seven figures around a four-sided table; six of the figures are animals (from upper right proceeding clockwise: donkey, horse, boar, goat, duck, and lion); between the duck and the lion is a female human (an ale wife/barmaid) wearing a headscarf and holding two tankards that she is bringing to the table; she wears a long apron; on the far side of the table a lion wears a doublet which tied around his waist using a rope belt; the doublet...
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Contract Consideration – FAQ

What does it mean for a contract to be not enforceable because of a lack of consideration? Answer: In order for a contract to be enforceable, the mutual promises of the parties must be supported by "consideration." Considerations means each party gives something of value to the other.  The reason that the courts and legislatures generally require some form of consideration is to insure that the promises being made are not merely a casual statement, and accident, or gratuitous – in short – to make sure the people making the agreement really mean it. Consideration looks at whether the parties have assumed an obligation on the condition of an act or forbearance of another. Except in cases of employment matters, Minnesota courts generally do not look at the adequacy of the consideration being offered – only whether some consideration has been exchanged. For written agreements, the court presumes valid consideration. While adequacy of consideration is not usually analyzed, vague or indefinite terms...
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Trump’s Trademark Issues

How long has Trump been planning this? Apparently Mr. Trump decided he liked the sound of "Make America Great Again" as  far back as 2012, when he first filed an application for the phrase with the Trademark Office (Serial 85783371).   However, in the application he seems to be  anticipating using it for a Political Action Committee, rather than for his own candidacy. The required list of services he listed were as follows: Political action committee services, namely, promoting public awareness of political issues. (IC 035) Fundraising in the field of politics. (CIC 036) However he was apparently not ready to use it back then, as he did not finalize the registration until earlier this year - about a month before he formally announced. Trademark Issue #1 Subsequently, on August 13th two new filings  (86724115 , 86724213) were made by him for the phrase and include an exhaustive list of such items as   Bumper stickers; decorative decals for vehicle windows; stickers; advertising signs of papers; advertising signs of cardboard; placards and banners...
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Ten Cute Cat Trademarks

Ten Cute Cat Trademarks

Because cats make everything more entertaining.  (search using (03.01.04)[DD]  and  (2)[MD]).  A sample of 10 recent applications for cat related trademarks for your viewing pleasure. 1.  Content Kitty (such a peaceful face)   2.  Lethal Kitty (HiYA!!)   3.  Hello Kitty (one of many recently filed applications)   4. Butt Kitty (Ok -  this one creeps me out a little)   5. Knitted Kitty (this one is for "knitted underwear" -'nuff said -cool design)   6. Hipster Kitty (jeez - everyone knows cats prefer the chevron)   7. Creepy Kitty (with dog overlord)   8. Masked Kitty (what possible advantage would a cat have trying to pretend he's a dog?)   9. Anthropomorphic Kitty (why no shoes on the hands??)   10.  Plain old Cute Kitty (just because)   ...
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