Tag: Trademark Cancellation


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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TTAB Decides: “Heavy Burden” in Proving Fraud on USPTO

Written by: Mark Terry The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the “heavy burden” in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client’s rights at the USPTO. The holding in this case illustrates how a “fraud on the USPTO” claim can and cannot be won. The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud.

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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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Rebutting a presumption of abandonment of a trademark due to “non-use” – Florida Patent Lawyer Blog

Written by Mark Terry    What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors. The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment.

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