Category: Trademark Enforcement


Similarity in Advertising and the Trademark Infringement Analysis

Written by Mark Terry Does the type of advertising employed by a defendant in a trademark infringement case matter? Yes it does. In fact, it is one of several key factors that are central to a trademark infringement case. As a Miami Trademark Attorney currently representing litigants in multiple trademark infringement cases in the Southern District of Florida, advertising and its relation to the trademark infringement analysis are subjects that have come up more than once in a dispute. It is standard in a trademark infringement case to discover information about advertising employed by the defendant, since similarity in advertising media is one of

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Can You Get Punitive Damages for Trademark Infringement?

Written by Mark Terry Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages. Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of

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TTAB Finds No Fraud on the USPTO in Burrito Case

Written by Mark Terry The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) issued another decision evidencing how enormously difficult it is to invalidate a trademark registration on the basis of fraud on the USPTO. In the decision of MCI Foods, Inc. v. Brady Bunte (TTAB 92046056), the TTAB found that a knowingly overly-expansive description of goods and services did not constitute fraud on the USPTO. As a Miami Trademark Lawyer with a full docket of trademark disputes, this case is instructive in its exposition of the law surrounding fraud on the USPTO. The registrant owned a federal trademark

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Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act?

Written by Mark Terry Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I’m often asked about. As the prevailing party under the Lanham Act, a party is entitled to an award of attorney’s fees in “exceptional cases.” 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an “exceptional case.” See, e.g., Playboy

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TTAB Hears the Manufacturer-Importer Trademark Issue … Again

Written by: Mark Terry It’s an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer’s trademark registration. As a Florida Trademark Lawyer, this is a situation I’ve seen more than once and I’m constantly looking for the courts’ and the Trademark Trial and Appeal Board’s (TTAB’s) take on this issue. The TTAB’s recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it’s usually the registrant that wins. As

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Is the Registrant’s Financial Data Relevant to Damages in a Trademark Infringement Case?

Written by: Mark Terry How do you calculate damages in a Trademark Infringement case? Is the financial data of the Plaintiff relevant when calculating damages in a trademark infringement case? This is an issue that often comes up during the discovery phase of a trademark infringement case. As a Miami Trademark Attorney currently involved in multiple trademark infringement cases in the Southern District of Florida, the subject of calculating damages is always in the forefront of my mind. With regard to a federal trademark infringement claim under the Lanham Act, a Plaintiff can elect to recover actual or statutory damages pursuant to 15 U.S.C.

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How do you respond to a copyright takedown notice?

Written by: Mark Terry “I just received a copyright takedown notice. What do I do?” As a Board-Certified Specialist in Intellectual Property Law, this is a common question I hear– at least several times a month. Usually, the item in dispute is a document or photo that is being used on a client’s website. And usually, the copyright takedown notice includes a scary letter that threatens to sue for copyright infringement and hundreds of thousands of dollars. It ca instill fear in your typical law-abiding citizen who has never been involved in a lawsuit. Don’t panic – this is what you

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Foursquare Encounters Problems with Trademark Prosecution

Written by: Mark Terry As a Florida Patent Lawyer, I keep up with recent happenings at the U.S. Patent and Trademark Office (USPTO) to stay abreast on the latest in trademark law. Recently, the difficulties encountered at the USPTO by NYC-based Foursquare, which offers a location-based social networking website, has come to light. First off, the trademark application for the company’s main mark – FOURSQUARE – has been rejected because an improper specimen was submitted (see trademark application number 77956808). Apparently the attorney for Foursquare submitted an advertisement for the web site and not an actual web page where the applied-for services are

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Update on the Aftermath of In re Bose and Fraud on the Trademark Office

Written by Mark Terry  What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow. You are well aware that last year’s Bose decision – In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) – has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: “in order to prove fraud, [the charging party] must show that [1] a statement was false, [2]

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The Standing Requirement in Cancellation Proceedings before the U.S. Trademark Office – Florida Patent Lawyer Blog

Written by Mark Terry  Can anyone commence a trademark cancellation proceeding before the U.S. Patent and Trademark Office? Must you have a tie or other relation to the mark being canceled? As a Trademark Lawyer practicing in Miami, Florida, I’ve been asked this question more than once by a client who desires to cancel a U.S. trademark registration. On the issue of standing to institute a cancellation proceeding, 15 U.S.C. § 1064 [Section 14 of the Trademark Act] states that a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be

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