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Trademark Representation Matters

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When Hiring A Trademark Attorney Experience Matters

prior results do not guarantee a similar outcome

  • Won summary judgment in a precedent-setting trademark opposition proceeding at the Trademark Trial and Appeal Board concerning the enforceability of rights under an international trademark treaty.  Franpovi, S.A. v. Rosalinda Wessin and Daniel Pena, 89 U.S.P.Q.2d 1637, 2009 WL 353299 (T.T.A.B. 2009)
  • Obtained settlements for clients whose applications were opposed at the Trademark Trial and Appeal Board, resulting in the withdrawal of the oppositions and the registration of the trademarks
  • Successfully defended client’s applications at the Trademark Trial and Appeal Board against Opposer’s motions for summary judgment on ground that a word in the mark is descriptive and should have been disclaimed
  • Successfully petitioned the Trademark Trial and Appeal Board for cancellation of trademark registration resulting in the cancellation of the registration
  • Successfully opposed applications in opposition proceedings at the Trademark Trial and Appeal Board resulting in the abandonment of the applications
  • Overcame likelihood of confusion refusals for marks used in connection with various goods and services, including: computer software, advertising services, telephone calling cards, prepared food items, camps, polyethylene plastic pressure pipe, dietary supplements, custom engraving services, online retail store services, jewelry.
  • Overcame merely descriptive refusals by arguing the mark was not descriptive and submitting proof of acquired distinctiveness for marks used in connection with various goods and services, including: building stone, books, consulting services, retail market analysis software, text scanning software
  • Overcame failure to function as a trademark refusal for trademark that was refused on grounds it constituted an unregistrable political slogan
  • Overcame various other refusals including primarily geographically deceptively misdescriptive refusal; refusal on grounds that the services identified in the application are not a “service” as contemplated by the Trademark Act; refusal on grounds that the mark does not function as a trademark
  • Successfully petitioned the Commissioner of Trademarks for reinstatement of a trademark application for which an express abandonment had been fraudulently filed by an unauthorized third party.
  • Successfully prosecuted trademark applications in a wide range of industries.

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