News & Updates

Trademark Board Sustains Opposition, ruling in favor of AEROTREK aircraft

October 22, 2021

The Trademark Trial and Appeal Board found that our client, Aerotrek IP Holdings, LLC, had established by a preponderance of the evidence that AeroTrek Applicant’s mark for its identified services so resembles Opposer’s AEROTREK mark in block letters for its goods as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act. The Trademark Trial and Appeal Board found that the marks at issue are similar; that Opposer’s goods are related to Applicant’s services; that they would move in overlapping trade channels; and that they are offered to the same or overlapping classes of purchasers. Therefore, the opposition is sustained as to the likelihood of confusion claim and registration to our adversary is refused. Woodard Emhardt attorney, Dan Lueders, represented Aerotrek IP Holdings, LLC in their opposition to Aerotrek Flight Academy, LLC’s trademarks.


Athletes & Trademarks – What should athletes do to protect their name and logo?

October 4, 2021

Veteran Sports Attorney, Jill McBride Baxter, and Charlie Meyer discuss what athletes should do to protect their name or logo in the the context of NIL.  They talk about the ability (or inability) to use university marks in everything from pitches to content production, how/why a copyright lawsuit could be brought, and more in the podcast, Trademark Considerations for College Athletes. A helpful listen for athletes and agents alike.


Trademark Owners Beware of Fraudulent Solicitations

September 20, 2021

Entities such as Patent and Trademark Office, LLC, and Patent and Trademark Bureau, LLC give a false impression that they are the United States Patent and Trademark Office (USPTO), scamming more than 2,900 U.S. trademark registrants out of millions of dollars for inflated, and often fake, renewal fees. If you receive suspicious correspondence, check the USPTO scam alert webpage, contact the Trademark Assistance Center, and contact one of the attorneys at our firm to help evaluate the validity of the correspondence. Remember, the USPTO will never ask you for social security numbers or credit card numbers in general correspondence.

For more information and to learn more about the steps the USPTO is taking to combat scams, visit: USPTO


The Impact of BREXIT and EU Trademark Registrations

December 22, 2020

As you likely know, due to the United Kingdom leaving the European Union (Brexit), current European Union (EU) Trademark Registrations will no longer cover the territory of the United Kingdom. However, existing EU Registrations will continue to cover the remaining EU countries.

There is no cause for concern since the United Kingdom Intellectual Property Office (UK IPO) is automatically “cloning” all EU trademark registrations into new UK trademark registrations. The UK Registrations will retain the same filing date and renewal date as the EU registrations. The Registration Numbers for the new UK Registration will be the EU Registration Number with the prefix 009.

The UK trademark registrations will be fully independent registration governed by UK law—with the ability to be challenged, assigned, and/or licensed separately from the original EU trademark. In the event of a challenge to a UK registration, proof of use of the trademark in the UK will be necessary. Conversely, to defend an EU Registration, evidence of use will be needed in at least one of the other EU countries.

If the EU Registration is a Designation of an International Registration, the cloned UK Registration will be an independent UK Registration which will need to be managed and renewed separately from your International Registration. Alternately, the UK can be Subsequently Designated in an existing International Registration to allow for renewals, assignments, changes of name, etc. to be made in one place. Please contact us if you are interested in incorporating the UK into an existing International Registration.

If you have EU Designs, they will be similarly cloned in the UK. However, Brexit will not affect any European patent applications or patents since the European Patent Organization is established under the European Patent Convention (EPC), which is an international treaty independent of the EU. The UK will continue as an EPC member state.

Please contact us if you have any questions about your trademark, design or patent coverage.


Obtaining and Enforcing Patents and Trademarks for Flavor Burst

October 15, 2020

Flavor Burst is a leading manufacturer of flavor and candy delivery equipment for frozen confections. The company designs and manufactures self-serve dispensing systems that increase a restaurant and retail establishments’ menu flavor offerings for soft service ice cream, shakes, slushies, frozen coffee, smoothies, frozen carbonated beverages, and frozen cocktails. Since Flavor Burst released its first product in 1992, it has expanded to more than 40 countries worldwide.

Flavor Burst executives have worked with the Woodard firm for decades to obtain and enforce patents and trademarks for its unique flavor blending and dispensing systems, syrups, mixes, and candies. Recently, Woodard attorneys Mike Morris and Andrew Nevill helped Flavor Burst prepare and file new patent applications on the next generation of flavor blending and dispensing systems that will increase efficiency for restaurants and retail establishments and provide patrons with even more enjoyable products.

For more information on Flavor Burst Company, please visit: https://www.flavorburst.com/


Charlie Meyer quoted in The Indiana Lawyer, “Say what?: Trademark case tests ‘scandalous,’ ‘immoral’ standards”

April 25, 2019

Charlie Meyer was quoted in The Indiana Lawyer article, “Say What?: Trademark Case Tests ‘Scandalous,’ ‘Immoral’ Standards.”

What’s more, the scandalous and immoral clause seemingly gives the government permission to treat some businesses differently than others based on the trademark they choose to use, said Charlie Meyer, a partner at Indianapolis IP firm Woodard, Emhardt, Henry, Reeves & Wagner, LLP. But such unequal treatment would seem to be unconstitutional, Meyer said.

“Is it the government’s job to treat people differently on this basis?” Meyer said, pointing to a question he thinks is an important issue for the justices to resolve. Further, if Tam stands for the proposition that the government cannot determine what is “disparaging,” then Meyer questioned why the government would still be allowed to decide what is scandalous or immoral.

Click here to read the full article.


Using a Webpage as a Specimen for Products Associated with a Trademark

April 18, 2019

When registering a trademark, the Patent and Trademark Office requires the submission of a specimen to show that a trademark is being used in interstate commerce.  It is often tempting to simply submit a screenshot of a webpage showing the trademark and the products associated with that trademark as a specimen.  However, as shown in a recent Federal Circuit decision made precedential, care must be taken when using a webpage as a specimen for goods associated with a trademark to ensure that the webpage is likely to be acceptable.

In the case, In re Siny Corp., 2019 U.S. App. LEXIS 10499 (Fed. Cir. Apr. 10, 2019), the Applicant filed an application for the mark CASALANA for a knit fabric used to make outerwear, gloves, and apparel.  The specimen submitted for this trademark was a screenshot of a webpage that included the trademark along with a picture and a description of the fabric, as well as a phone number and an email address to contact for sales information.  The Federal Circuit affirmed the Examining Attorney and the TTAB’s decision to refuse registration, stating that the webpage was just advertising material and failed to show use of the mark in commerce for the listed products.  It is important to note that this decision specifically pertains to a specimen for goods and that webpages are more readily accepted as specimens for services.

A trademark is used in commerce when it is placed directly on goods or placed on the containers, displays, tags or labels associated with the goods.  A trademark included on a webpage may qualify as a “display” associated with goods shown on the webpage.  However, a webpage simply advertising the goods used in connection with the trademark is not sufficient to qualify as a display, and is therefore not an acceptable specimen.  In order to be an acceptable specimen, the webpage must act as a point of sale location for the products.

As shown by the decision in Siny, showing only a phone number or an email address as contact information for ordering products associated with the trademark may not be enough to make the webpage a point of sale location.  Instead, a webpage submitted as a specimen should either make the goods available for purchase directly through the webpage or display additional information other than just contact information that would be considered essential to a purchasing decision.  Examples of this additional information include prices or a range of prices for the goods, sizing information, the quantity of the goods that may be ordered, how to pay for the product, and how the product will be shipped.

This decision by the Federal Circuit doesn’t mean that webpages cannot be used as a specimen for a trademark application covering goods.  Instead, an Applicant should make sure that when using a webpage as a specimen for a trademark application, the webpage includes as much information as possible about the nature of the goods and includes specific information on how to purchase the goods associated with the trademark.  Following these guidelines should lead to an acceptable specimen.


Ambush Marketing and Clean Zone Ordinances for the Super Bowl

February 1, 2012

With Super Bowl week already in full swing in Indianapolis, we wanted to remind you of some of the legal issues surrounding ambush marketing in view of the clean zone ordinance put in place by the City of Indianapolis.  Ambush Marketing is when one brand pays to become the official sponsor of an event (e.g., the Olympics, the NFL, the World Cup) and another competing brand connects itself with the event without paying sponsorship fees.

This presentation discusses ambush marketing and ways to combat it.  The presentation also covers similar laws used to prevent ambush marketing, such as the Olympics Symbol Act in relation to the 2012 Olympics in London, and the clean zone ordinances, adopted by Dallas for the 2011 Super Bowl.

To view the presentation, visit: Ambush Marketing from Woodard, Emhardt, Henry, Reeves & Wagner, LLP


Building the Strength of Your Trademark

May 4, 2011

So, you can rest easy now that you have a federal trademark registration, right?  No! 

Federal trademark registrations provide many protections and advantages to trademark owners.  Nevertheless, even with federal trademark registrations in hand, trademark owners will benefit from active efforts to build and maintain the strength of their trademarks.

A trademark owner can lose trademark rights by not using the trademark, by not using the trademark correctly, by failing to enforce the trademark against third-party infringers and/or by failing to object to generic misuse of the trademark.  Ironically, in some instances trademarks can be become so famous (think, GOOGLE®, VELCRO® and STYROFOAM®) that trademark owners must switch gears from heavily promoting their trademarks to limiting how people use their trademarks.  Like failing to enforce a trademark against known infringers, improper use of a trademark by the public may diminish the trademark’s value. 

It is important to keep in mind that one major rule in using a trademark properly is to use the trademark as an adjective, not a noun or a verb.  In other words, the trademark is the brand name (an adjective) describing the associated goods or services. 

Trademarks can become generic if the public starts using the trademark to refer to what something is, rather than as a brand name.  Therefore, some trademark owners develop branding campaigns to educate consumers on how to properly use their marks.  For example, the companies behind the XEROX® and KLEENEX® trademarks have devoted considerable resources in such campaigns to keep these trademarks from becoming the generic nouns for photocopies and tissues.  A trademark owner is wise to monitor the trademark’s usage on the internet, in the media and in dictionaries, and should object to improper treatment, such as generic misuse, if necessary.        

With respect to enforcement of trademark rights against third-party infringers, trademark owners must act with reasonable diligence in enforcing their trademarks rights.  However, courts do recognize the expense and potential business considerations involved in bringing a trademark infringement lawsuit, and as such, a trademark need not be enforced against every nameless John Doe who misuses the mark through a random comment on Facebook.  On the other hand, if the trademark is not enforced against the owner’s arch nemesis who is stealing sales, there is a risk that the mark will be found to have lost strength, or worse, that the trademark has become abandoned and therefore completely unenforceable. 

Please contact is if you would like to learn more about recommended protection efforts for your trademark.


Maintaining Trademark Rights: Policing and Educational Efforts

April 8, 2011

This presentation discusses the various ways courts have evaluated a trademark owner’s efforts (or lack thereof) to police its mark, as well as efforts that should be taken to prevent a trademark from becoming generic. To view the presentation, visit: Maintaining Trademark Rights: Policing and Educational Efforts from Woodard, Emhardt, Henry, Reeves & Wagner,  LLP

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