News & Updates

What’s In A Name? The Intersection of Branding Rules and Trademark Practice / Policy

September 10, 2019

Join Woodard attorney, Christopher Brown, at the Indiana Medical Device Manufacturers Council’s Regulated World Post Market Workshop on Wednesday, September 11, 2019. Chris will address the question, “What’s In A Name? The Intersection of Branding Rules and Trademark Practice / Policy.”

This workshop is designed for regulatory professionals and lawyers in the medical device industry to give them insight into FDA regulations. This program has been developed to provide examples and regulatory information through interactive teaching methods, from experts in each field. Attendees will take a hypothetical device from pathways to market, through clinical trials, promotion and advertising and then work through recalls, QSR & MDR reporting and inspections, touching other areas of regulation along the way. For more information and to register, visit: Regulated World Post Market Workshop

The Indiana Medical Device Manufacturers Council (IMDMC)  is an association of medical device manufacturers and other associated companies, formed in 1991, to promote the medical device industry.


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


Take Down Provisions: Copyright First. Now Trademark. What Next?

September 16, 2010

Below is a presentation that discusses how the take down provisions of the Digital Millennium Copyright Act (DMCA) have been expanded to not only cover copyrights but other forms of intellectual property, such as trademarks, rights of publicity, patents, etc. The presentation compares the different take down procedures used by major websites as well as provides sample take down forms and policies. To view the presentation, visit: Take Down Provisions from Woodard, Emhardt, Henry, Reeves & Wagner, LLP


Trademark Office Consistency Program Extended

August 20, 2010

After assessing the Trademark Consistency Initiative Pilot Program, the United States Patent and Trademark Office (USPTO) has decided to extend and expand the program.  The USPTO is expanding the parameters of the program so that a Request for Consistency Review on substantive or procedural issues (excluding issues involving identifications of goods and services) may include registrations that have issued within the past five years.  Additionally, for at least a period of four months, commencing on June 23, 2010, the Office will accept Requests concerning inconsistency issues with respect to identifications of goods and services.  Please note that applications and registrations based on the Madrid Protocol are excluded and registrations relied upon must have issued within the two years prior to the Request.  Additionally, the pending application at issue must have a final identification or classification requirement outstanding.  

 If you would like more information on the Trademark Office’s Consistency Program, please contact us.


Case Law Update: Enforcing a Judgment by Levying a Domain Name

June 30, 2010

The Ninth Circuit issued an ironic ruling last month regarding levying domain names to satisfy a prior judgment. In Office Depot, Inc. v. Zuccarini (9th Cir., Feb. 2010), the Ninth Circuit ruled that a creditor can levy a domain name of a debtor to satisfy a judgment. 

John Zuccarini registered hundreds of domain names incorporating other individual’s trademarks, including “officedepot.com.” Office Depot successfully sued Zuccarini under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). The ACPA provides a cause of action for trademark owners against persons who register their mark(s) as domain name(s) to profit from the trademark. Office Depot obtained a judgment against Zuccarini, but was unable to collect and subsequently assigned the judgment to DS Holdings. 

DS initially sought to have 109 “.com” domain names that were registered to Zuccarini transferred directly to it. However, a California statue prohibited the court from ordering transfer of property held by a third party (a registrar maintains domain name registrations). DS then successfully had the court appoint a receiver to take possession of the domain names and sell them to satisfy the judgment. 

The irony is that this judgment arose from Zuccarini’s liability from registering these domain names to sell to trademark owners for profit. Now, DS will presumably sell the same domain names to the same trademark owners to satisfy the judgment. While this situation likely does not meet the definition of bad faith required under the ACPA, the end result is the same: a third party selling a domain name confusingly similar to another party’s trademark. 

In any event, this decision provides a roadmap to levying domain names to satisfy a judgment. In many cases, domain names would not be worth the effort to seize. But in other cases, domain names can have significant commercial value, making such efforts worthwhile.


Trademark Videos on Demand

June 30, 2010

In case you don’t have enough videos to watch, the United States Patent and Trademark Office (“USPTO”) launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos on its website that cover important topics and can teach you about the various phases of the trademark registration process. The site, which is not yet fully populated, will provide video walk-through of the entire trademark application process. Examples of the videos that will be available include:

Before You File – overview of the most important issues you should be aware of when filing a trademark application, including trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases.

Searching – use of the Trademark Electronic Search System (TESS) and an overview of the system and tips for how to use the system effectively.

Applicant Information – focuses on what is meant by the term “applicant.”

Drawing Issues – focuses on what is meant by the term “drawing” and how to comply with the requirements for submitting a drawing to the USPTO.

Goods and Services Issues – focuses on identifying the correct “goods and services” for filing in association with your application.

Basis Information – provides specifics about the filing requirements for both Section 1(a), Use-in-Commerce, and Section 1(b), Intent-to-Use-in-Commerce, filing bases.

Specimen Issues – provides examples of acceptable specimens and highlights the differences between a “drawing” and a “specimen.”

After You File – provides an overview of the most important issues you should be aware of after filing your application. It covers such topics as using the USPTO’s electronic resources to keep your application current, who to contact with questions, and what you must do to avoid abandonment.

Post-Registration Issues – provides an overview of the most important issues you should be aware of after your application has matured into a registration. The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration.

The Anchor in the videos is the Trademark Information Network’s Mark Trademan. We will leave it to you as to whether his name is either a great coincidence or an attempt at humor.

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