Category: Trademarks

There are several hundred pages on the web site of Oppedahl Patent Law Firm LLC at https://www.oppedahl.com/.  For the first time in some months I clicked around a bit in our visitor statistics, and found that one particular page on our law firm web site is ten times more popular than any other page on our law firm web site.  (I am talking about www.oppedahl.com here, not blog.oppedahl.com.) Continue reading “Most popular page on OPLF’s web site?”

Readers will recall my posting on July 21 in which I complained about the USPTO’s post-registration division bouncing a specimen in the renewal of my own trademark registration.  I was trying to do an 8-and-15 for my mark “OPLF”.  The services were all drawn from the ID Manual, and it seemed to me that the words “Patent Attorney” on the card made clear that I was providing patent attorney services.  But that’s not how post-reg saw it.  The way they saw it, the business card supposedly failed to “reference” the services.  They bounced the specimen. Continue reading “I folded on the specimen rejection”

The USPTO bounced this specimen.  I wonder who agrees or disagrees with the USPTO bouncing this specimen?

Continue reading “Who agrees with the USPTO on this specimen bounce?”

(Trump files three more trademark applications:  followup blog post here.)

Today the USPTO granted US trademark registration number 4,773,272 to Donald Trump.  Yes, that Donald Trump.  You can see the registration certificate here.  (I blogged about the pending trademark application here.)  Oh to be a fly upon the wall, to hear whether the other presidential candidates are now being advised by their trademark counsel that from now until the November 2016 elections are over, they must avoid uttering those four words in sequence.

Prompted by a spirited discussion in the E-Trademarks listserv, I blogged the other day asking whether the signer of a bad-faith Cease-and-Desist letter might risk personal liability for it.  Here is a guest posting from listserv member Michael E. Hall about this.

Continue reading “Guest post: attorney liable for bad-faith C&D letter?”

A longstanding member of the E-trademarks listserv offered up an all-too-familiar fact pattern:

So can you go after the person who signed the letter? Continue reading “IP torts and natural persons as defendants”

(Trump files three more trademark applications:  followup blog post here.)

It turns out that Donald Trump filed a US trademark application in 2012 for the mark “Make America Great Again”.  In May of this year he filed a Statement of Use and barring some surprise, the USPTO will soon grant a trademark registration.

The identified services are “political action committee services, namely, promoting public awareness of political issues” and “fundraising in the field of politics”.

A member of the E-trademarks listserv asked:

Can anyone recommend a fixed-price provider of trademark clearance services?

Here’s what I think about that.

For mark clearances there’s at least a first part, a second part, and a third part.

The first part is finding out the business needs of the client with respect to the proposed mark or marks.  One metric for the business need is the number of dollars that would be down the drain if it were to turn out later that the mark turns out not to be available.  One extreme is the case where the consequences of failure are little more than the cost of reprinting business cards and letterhead.  The other extreme is the case where the choice of a new name is a “bet the company” kind of decision, and if it were to turn out the mark is unavailable the client loses every penny and every hour of time that has been invested in the company.

An example of a middle ground is the company that routinely rolls out ten new brands of prepaid long-distance calling cards per month, and very openly expects that one or cards will turn out to have names that cannot be used, and those two names are just quietly discontinued at minimal cost to the company.

Part of this counseling task is working out the geographic reach of the decision.  Is the client able to say that the to-be-adopted new trademark will never be used anywhere except in the US?  Or does the mark need to be available for other geographic areas?  Will the mark be used on services provided on a web site?  Will the web site be visible everywhere in the world?  Does the client need clearance everywhere in the world?

Part of this counseling task is learning whether there are particular candidate sources of trouble.  For example is the client’s business in an industry with clear boundaries and only a known and small number of competitors?  On the other hand is the client’s activity likely to attract attention of companies in a wide range of lines of business?  Is the client marketing to businesses, or to consumers?

Having worked out the first part, we then move on to the second part, which is the search.  This might be little more than a quick search in TESS for identical marks and a quick surf through Google.  Or might be a $600 search from Thomson & Thomson.  Do we care about phonetic equivalents?  What about a transliteration of the mark into Greek letters or Cyrillic?  Eventually the search is done and we have the search report in hand.  At a search firm the work might be done by attorneys but I’d guess most of the work is done by very experienced people who are not necessarily attorneys.

Now the third part, rendering an opinion.  Someone, presumably an attorney admitted to practice, studies the search report and draws upon the background accumulated in the first part.  And renders an opinion.

I’d guess it would be very difficult for any service provider to commit to doing parts one, two, and three in a general way for a fixed price.