When entrepreneurs and tech startup team begin the trademark selection and adoption process, many important legal and marketing considerations are on the table. A brand name, or trademark, is a word or symbol (or sound, or color in some cases), that consumers use to associate the services or goods provided under the mark with the business. For example, when consumers see the MCDONALD’S® trademark, or the FACEBOOK® logo, they immediately know the source of the sandwiches, or the social media website, that they are consuming.
But not all trademarks have a smooth trail to registration, and in many cases, new trademark applications filed in the United States Patent and Trademark Office (USPTO) face challenges in the Trademark Trial and Appeal Board (TTAB) by third parties.
What to Do when Trademark Dispute Begins in United States Patent and Trademark Office Trademark Trial and Appeal Board
A trademark dispute or trademark infringement claim can be started in several ways, including a cease and desist letter, and in some cases court action might be taken in the USPTO Trademark Trial and Appeal Board (TTAB) or perhaps a lawsuit in federal or state court.
Once a company or trademark owner receives notice of commencement of a trademark dispute, whether through a cease and desist letter or any court action, including action in the USPTO, it must consider its legal options immediately. Depending on the nature of the dispute, it may defend the infringement allegations, or in other cases it may reach a settlement with the other side.
Whether or not to defend a trademark infringement allegations in a trademark dispute depends largely on legal considerations such as likelihood of confusion, trademark priority in the USPTO or common law, trademark validity, abandonment, and other counterclaims or defenses under common law or statute, Title 15 of the United States Code (The Trademark Act).
Expert Trademark Attorney
Consultation with an experienced trademark attorney can help companies and brands owners consider legal options and marketing considerations when a trademark dispute is at issue. Because most trademarks are used in interstate commerce, trademark law is usually federal subject matter and most experienced trademark attorneys represent trademark owners nationwide. A trademark attorney can advise on legal options when facing a trademark dispute, draft and file motions, answers and counterclaims in the USPTO Trademark Trial and Appeal Board, or in a relevant state or federal court, and, can communicate with the attorneys of the other side to potentially settle the case without litigation.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; david@latml.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.
