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Under Section 2(d) of the Lanham Act, the U.S. Patent and Trademark Office (“USPTO”) may refuse to register a trademark because of a likelihood of confusion with an existing registration. One possible response is to argue that consumers are likely to distinguish such marks from one another based ...

When founders leave their company, they often remain involved as consultants to ensure a smooth transition for the business. These consulting agreements also often include a patent assignment provision where any inventions developed during the consulting period are to be disclosed and assigned to...

The accused infringer in patent litigation will sometimes propose a negative claim construction that excludes a feature or aspect of the accused product, and thus avoid infringing the patent claim. But if the excluded feature does not have a uniform meaning in the art, then a more affirmative con...

The U.S. Patent and Trademark Office may require a disclaimer of an unregistrable component of an applied-for trademark that is otherwise registerable. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir. 2015); In re Stereotaxis Inc., 429 F.3d 1039 (Fed. Cir. 2005); In re Am. Furniture Ware...

Courts are reluctant to allow a deposition of opposing counsel where such questioning under oath could reveal attorney-client privileged information, attorney work product, or litigation strategy of the lawsuit, even though “the Federal Rules of Civil Procedure do not specifically prohibit the ta...

The test for deceptive misdescriptiveness of a trademark under Section 2(e)(1) of the Lanham Act has two parts. 15 U.S.C. § 1052(e)(1). First, whether the matter sought to be registered misdescribes the goods or services. In order for a term to misdescribe goods or services, “the term must be mer...

Typically, a district court decision is appealable only if there has been a “final decision” on all claims in the case. 28 U.S.C. §1291. For example, a summary judgment of all claims in the case is appealable, but a partial summary judgment of only some of those claims typically is not appealable...

To satisfy the definiteness requirement of Section 112(b), the claims of a patent must particularly point out and distinctly claim the subject matter of the invention. 35 U.S.C. § 112(b) (a patent's “specification shall conclude with one or more claims particularly pointing out and distinctly cla...

The Ninth Circuit recently revisited the contract formation question of when a website's terms and conditions are binding on an online user who interacts with that website in Berman v. Freedom Financial Network, LLC, No. 20-16900 (9th Cir. Apr. 5, 2022). Whether a website user legally assents to ...

When a trademark application is refused under Section 2(d) because of possible likelihood of confusion with another trademark registration for a similar mark for the same goods or services, one argument often made is that the cited registration is entitled to a narrow scope of protection because ...

To be registerable as a trademark, a slogan needs to be more than merely informational in nature, or to be more than common laudatory phrases or commonly expressed concepts or sentiments that would ordinarily be used in business or in the particular trade or industry. In re Texas With Love, LLC, ...

An applicant may seek to register any portion of a trademark, if that portion presents a separate and distinct commercial impression. In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006). That does not apply, however, where a trademark is considered “unitary”; that is, when the elements o...

When a trademark consists of the name or likeness of a particular living individual, or a deceased president of the United States during the life of his widow, then that mark can be registered only with their written consent. 15 U.S.C. §1052(c); see also T.M.E.P. 813. Consent may be presumed wher...

By James Juo. The academic debate as to whether artificial intelligence (“AI”) can be an “author” of  creative works for purposes of copyright is becoming less academic. Advocates of AI exceptionalism argue that AI is able to make functionally creative output in the absence of a traditional human...

By James Juo. Inter Partes Review (“IPR”) is an administrative process before the Patent Trial and Appeal Board (“PTAB”) which handles patent validity challenges as an alternative to litigation. A forum selection clause in a contract, however, might prohibit the filing of an IPR petition; dependi...

By James Juo. Gerry Spence, who describes himself as “one of the greatest trial lawyers of our times,” founded a program called The Trial Lawyers College in 1994 to trail trial lawyers; but recently split with the College's board which splintered into the Spence Group and the Sloan Group, with th...

By James Juo. In patent law, a patent is interpreted from the perspective of a hypothetical person of ordinary skill in the art, sometimes abbreviated as POSITA (and sometimes abbreviated as PHOSITA for a person having ordinary skill in the art). According to Professor Dennis Crouch, the abbrevia...

By James Juo. Famous trademarks are protected from dilution, regardless of the presence or absence of actual or likely confusion. 15 U.S.C. § 1125(c); see also Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications ...

Whether you're a contractor or property owner, there are a lot of things that can go wrong during construction projects. Property owners might refuse to pay; contractors might not perform to contractual standards; and projects may suffer lengthy delays. When should you hire a construction litig...

Many businesses have proprietary secrets that give them a competitive advantage, ranging from secret recipes, client lists and formulas to innovative know-how, algorithms and marketing strategies. Such a trade secret is a type of intellectual property protected by both federal and Colorado state ...

By James Juo. “Evidence of actual confusion, where it exists, would of course be highly probative of a likelihood of confusion” with respect to a trademark. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *19 (TTAB 2020), aff'd in relevant part, vacated in part, 17 F.4th ...

Our office in Louisville, Colorado, was spared in the Marshall fire that destroyed so many homes as it swept through our local community on December 30, 2021, although our office building is currently closed as heat and water were temporarily shut off as a result of the fire.  We hope that to be ...

By James Juo. The term “reverse confusion” has been used to “describe the situation where a significantly larger or more prominent newcomer ‘saturates the market' with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” In re Shell Oil C...

By James Juo. Trademark rights may extend beyond the specific goods or services offered in connection with a trademark to include a “natural zone of expansion” which grants a senior user of a mark superior rights as to “any goods or services which purchasers might reasonably expect to emanate fro...

By James Juo. In a use-based application under Section 1(a) of the Trademark Act, the applied-for the mark must be in use in commerce with all the goods and services listed in the application as of the application's filing date. See Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015) (“To ap...