David Lilenfeld Blog The intellectual property blog of David Lilenfeld


Reasons to Conduct a Proper Trademark Search

Why do we recommend a trademark clearance search?  I hear that question fairly often.

As trademark attorneys, we are asked that question often.  Here is our answer, at least a summary of our answer.

The United States trademark laws are based upon the “first to use” – in other words, whoever uses the trademark first for particular goods or services, generally speaking, has the best rights to that trademark for those goods or services.

You don’t want to knowingly (this includes the “should have known” standard) infringe on someone’s trademark. This can result in possibly having to pay damages such as: (1) disgorgement of profits; (2) damages caused by the infringement, which can be trebled; (3) costs of bringing the lawsuit; (4) attorney’s fees; and (5) destruction of inventory.

A trademark owner can use your failure to search as a willful attempt to “blind yourself” to readily available information.

Searching prior to applying for registration may help you identify potential obstacles to registration, such as those encountered by a similar trademark. You can even see how the applicant responded to the Office Actions under the TSDR tab on the USPTO website.

A report also shows the types of trademarks which tend to be accepted or rejected by the USPTO and design your trademarks accordingly, thereby optimizing your chances of approval.

While a trademark search report costs a few hundred dollars, it is obviously preferable to spend a small amount of money up front rather than a lot of money later in litigation.

David Lilenfeld



Before You Leave an Online Review, Consider This

When we experience bad service or a bad product, an immediate reaction is often to leave a negative review for the business online.  In a fury, a review can exaggerate what happened, and certainly only show one side’s perspective.  Such reviews can proliferate online and be very impactful.  Some companies have responded by threatening lawsuits for defamatory reviews – that is, for reviews that are not entirely truthful.

What is even more concerning is that not long ago, a court in the Commonwealth of Virginia ordered Yelp to turn over the names of seven of its users who left negative reviews for a carpet cleaning company.  Historically, people felt comfortable speaking critically online because their identities were hidden behind screen or user names.  But this ruling can change that.

The best way to protect yourself is to act in good faith and not exaggerate in your review.  Truth is always the best defense against a defamation claim.

David Lilenfeld



Nestlé Can’t Get a Trademark Break for its Kit Kat Bar

Kit Kat, the iconic chocolate-covered wafer candy, was first produced in Great Britain in 1935.  Nestlé understandably wanted to register the Kit Kat’s four-finger shape as a trademark, filing an application there in 2010.

In arguing for registration of the trademark, Nestlé’s relied heavily on a survey its experts conducted.  In administering the survey, Nestlé presented a photograph of the four-finger shape to consumers and asked them – to describe what they saw.  According to Nestlé, more than 90% of those surveyed made a reference to the Kit Kat bar, upon viewing the four-finger shape.  

However, the British courts were not enticed and cooked up another bad break for Nestlé.  The European Court of Justice Court refused to acknowledge the four-finger anatomy of the Kit Kat bar as a protectable trademark.  The rejected trademark, described in the case as the “shape of a four finger chocolate-coated wafer," likely leaves wide-open the market for other four finger chocolate covered candies, undoubtedly leaving a bad taste in Nestlé’s mouth.

First up to explore that wide-open market could be Nestlé’s rival, Cadbury, who led the charge to ensure the high court rejected Nestlé’s four-finger trademark application.

By the way, David Lilenfeld's research into this story revealed the Kit Kat is made by a division of Hershey, under a license from Nestlé and taste great.


Cuozzo Speed v. Lee — IPR Patent Proceedings

Late last week, the @SCOTUS granted cert. in Cuozzo Speed v. Lee. The case will have a significant impact on post-grant patent proceedings before the Patent and Trademark Office.  Two questions are presented to the Supreme Court:

Question 1. Whether, even if the Board exceeds its statutory authority in initiating an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable.

Question 2. Whether in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

"This one will be fun to watch," said David Lilenfeld, founder of Lilenfeld PC.



Supreme Court Tackles Trademark Tacking

Trademark tacking – not a term you’ll hear very often.  But the Supreme Court of the United States tackled the topic earlier this year in Hana Financial, Inc. v. Hana Bank, (9th Cir. 2013) 735 F.3d 1158, 1163-1164, cert. granted, 134 S. Ct. 2842 (2014) and aff’d, 135 S. Ct. 907 (2015).

When a trademark owner re-brands, a brand new trademark is typically introduced.  But what if a trademark owner tweaks its brand – is it a new youthful trademark, or just a freshened-up version of the old trademark?  This is where “trademark tacking” comes into play.  Trademark tacking allows a trademark owner to “tack on” the period of time it used the older trademark to the new youthful trademark, so that the new trademark has the benefit of the Date of First Use of the older trademark. The Supreme Court reiterated that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.”  The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”

“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”



David Lilenfeld — “Legal Elite” Honor

David Lilenfeld, founding partner of Lilenfeld PC, was named Georgia Trend’s 2012 Legal Elite in Intellectual Property law.  "Legal Elite" are  based on votes cast by thousands of Georgia attorneys.


David Lilenfeld — Equity Crowdfunding Leader

In this article, David M. Lilenfeld comments about being one of the first equity crowdfunding portals in Georgia.


David Lilenfeld Comments on New Crowdfunding Rules

David Lilenfeld comments on new crowdfunding rules released by the Securities and Exchange Commission.


David M. Lilenfeld Interviewed About Crowdfunding

Here is an article and video showing David Lilenfeld talking about the importance of crowdfunding for the State of Georgia.


Story About David Lilenfeld Discussing Crowdfunding — Hunter College

Here is an article about David Lilenfeld and a speech he gave about the future of crowdfunding.  The article appeared on the website of Hunter College.

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