In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file. That being said, trademark ownership is not acquired by federal or state registration, although registration […]
Widerman Malek Law Blog
Pleading Inequitable Conduct
By: Tyler Hampy Rule 9(b) of the Federal Rules of Civil Procedure specifies that: “In alleging fraud or mistake, a party must state with particularity the circumstances constituting fraud or mistake. Malice, intent, knowledge, and other conditions of a person’s mind may be alleged generally.” The court in Exergen Corp. v. Wal-Mart Stores, Inc., […]
Irreparable Injury: Lost Market Share
By: Tyler Hampy Pursuant to the well-established principles of equity, a patentee seeking an injunction against an infringer must satisfy a four-factor test before a court may grant such relief. The patentee must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate […]
AMERICA INVENTS ACT – Limiting Joinder
By: Tyler Hampy Prior to the implementation of the Leahy-Smith America Invents Act (AIA), Federal Rule of Civil Procedure 20 governed permissive joinder of defendants in patent infringement suits. However, prior to the AIA, district courts were split on how they interpreted Rule 20 in patent infringement litigation. A few district courts interpreted Rule 20 […]
Trade Name v. Trademark
By: Widerman Malek Team Is a “trade name” the same thing as a “trademark?” This is a topic that seems to give people trouble. The Lanham Act offers some help to distinguish the terms. By definition, a “trade name” is any name used by a person to identify his or her business or vocation. […]
Judge, can you “friend” me?
By: Tyler Hampy Although you may think that Facebook “friends” aren’t really the same thing as real-life friends, the ethical guidelines for lawyers and judges do not make such a distinction. Even though different jurisdictions have taken slightly different approaches with respect to judges using online social networks, the trend is all the same… there […]
I have an idea for a trademark…am I ready to apply?
By: Tyler Hampy Before you commit to use and advertise a proposed new mark, you would be well advised to contact a trademark attorney and have them conduct a preliminary investigation as to any possible conflicts your new mark may have with previously used but unregistered marks, applied-for marks, and/or registered marks. You don’t […]
Trademark Law: Geographic Terms
In my last post, I discussed the ability to trademark generic terms. This post focuses on trademarking geographic terms. In the United States, geographic terms can be registered and protected as trademarks identifying a single commercial source if certain conditions are met. Geographic terms have traditionally been very important in identifying the source and […]
Trademark Law: Generic Terms
My next couple of posts are going to focus on the types of words that can and can’t be trademarked. This post centers on generic terms. In short, a generic name of a product can never function as a trademark to indicate origin. The terms “generic” and “trademark” are mutually exclusive. If a term […]
