Consequently, it’s important to determine exactly when your client first sold his or her product with the mark and when your client first used the mark in commerce. For example, in a trademark infringement dispute, a judge who is considering ruling a motion to dismiss under 12(b)(6) can look outside of the pleadings to the trademark document records. Getting the facts right as to the first use and first use in commerce date is crucial. With rapidly evolving technology, practitioners need to keep in mind that some social media platforms could be obsolete in the future, and therefore, some specimens may not be appropriate evidence later on to show actual use of a mark. While these types of specimens will likely be useful years from now, MySpace, for example, might not be. In recent years, social media specimens have found a place in many applications, as trademark applicants frequently include screenshots of Facebook, Instagram, and LinkedIn in their application for registration. This will prevent an opposer from claiming that your client’s mark is not used with a good or service.Ĭaroline also advised that when determining which specimen to use, it’s important to consider what specimens are going to be useful in the future. Moreover, by including many specimens in the application, you’re making a strong case for your client that the applied-for mark is actually in use with every good and service listed in the application. Caroline recommended including as many specimens for as many products as possible to avoid receiving an office action, which hinders the application process. Trademark attorneys know that when filing a trademark application, specimens are essential to prove to a USPTO examiner that a trademark is used in commerce. Being proactive can help an attorney prepare for the worst-case scenario and be more productive to obtain the best outcome for clients. Typical defenses include standing, preclusion, functionality, fair use, parody, laches, and so on. This means that they need to think about the possible defenses that a defendant may use in litigation for trademark infringement. Accordingly, Caroline provided helpful tips on how trademark attorneys can effectively file trademark applications and advise their clients to best position their trademarks against potential litigation.Ĭaroline explained that when attorneys draft their clients’ trademark applications, they need to begin with the end in mind. On Wednesday, October 28, Caroline Fox, of CJ Fox Law, presented the session, “Filing Trademarks with an Eye Towards Litigation.” During this session, Caroline discussed how transactional trademark attorneys can file applications and advise clients to best position marks against potential litigation.Ĭaroline began her discussion by pointing out that as a trademark attorney, “You’re not serving your clients well if you’re just going for registration.” It’s also important to protect your client from ever having to go to litigation. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Thank you to Alexandra Sandler for participating as a Law Student Reporter at Alt Legal Connect! Alexandra is a 3L at Cardozo School of Law.
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