Trademark Law

March 2014 Trademark Lunch Presentation

March 31, 2014

Topics covered in this month’s trademark prosecution luncheon include recent case law surrounding trademark cancellation in district court proceedings, the requirements for specimens of use, and a brief discussion of the enforceable scope of covenants not to compete. Download the presentation here.

February 2014 Trademark Prosecution Lunch Presentation

March 3, 2014

This month’s trademark prosecution presentation included practice updates regarding the use of the USPTO’s withdrawal form to withdraw from representation of an application, as well as discussion of several cases pertaining to use of class headers for an application’s description of goods/services, the use of phantom lines in applications, and requirement for section 1(a) applications for a service mark. You can download the presentation from here.

October 2012 Trademark Prosecution Group Luncheon

November 9, 2012

Topics covered in this month’s trademark group presentation include recent trademark statistics, examination guidelines on specimens, and recent changes to the federal dilution statute. To download a copy of this presentation click here.

July 2012 Prosecution Group Luncheon

August 6, 2012

Topics covered in this month’s Trademark Group Luncheon include balancing of first amendment interests and trademark rights as applied to sports uniforms as well as a licensing debacle between Apple and the owner of the “iPad” trademark in China. The group delved into the copyright realm by discussing the protectability of a hookah base shape when that shape is a useful article that cannot be separated from its utilitarian elements. To download a copy of this presentation click here.

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

Below is a presentation discussing 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. Click here to download a copy.

Charlie Meyer Presents on Intellectual Property Issues at Rotary Club of Indianapolis Luncheon

December 8, 2010

Woodard, Emhardt partner Charlie Meyer was the featured speaker at the November 30th, 2010 meeting of the Rotary Club of Indianapolis. Mr. Meyer’s presentation included a humorous and educational look at aspects of patent and trademark law, in addition to noting how aspects of intellectual property have affected local interests over the years.

Mr. Meyer’s presentation materials can be accessed by clicking here.

October 2010 Prosecution Lunch – Trademark

November 3, 2010

Topics covered in this month’s trademark prosecution presentation include discussions of a recent Federal Circuit case about contributory liability, a Ninth Circuit case about the first sale doctrine and copyright linceses, a Seventh Circuit case regarding standing and what is a commercial interest under the Lanham Act, and a Federal Circuit case addressing inherent disctinctiveness of trade dress.  Click here to download a copy of this presentation.

September 2010 Prosecution Lunch – Trademark

September 29, 2010

Topics covered in this month’s trademark prosecution presentation include a discussion of the latest Trademark Public Advisory Meeting, potential changes to the Trademark Electronic Search System (TESS), a Trademark Trial and Appeal Board (TTAB) update, case discussions concerning disclaimers as well as packaging that failed to function as a trademark, and a discussion of TTAB case that concerns discovery issues. Click here to download a copy of the presentation.

Charles J. Meyer Celebrates 15-Year Anniversary with Woodard, Emhardt

August 24, 2010

Congratulations to Woodard, Emhardt partner Charlie Meyer on his 15th anniversary with the firm. Charlie started with the firm in 1995 and was elected to the firm partnership in 2001.  He currently serves as Chairman of the firm’s Trademark Practice Group.  He is a graduate of DePauw University and Indiana University School of Law – Bloomington.  Charlie previously served on the 7th Circuit Bar Association Board of Governors and was the Indiana Chairman of the Technology Committee.  Congratulations, Charlie! 

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