Trademark

CBD Products & USPTO

By Al Mohajerian | May 14, 2019

The United States Patent and Trademark Office recently issued a new Examination Guide relating to trademarks for cannabis and cannabis-related goods and services.

This guide comes after the December 20, 2018 enactment of the Farm Bill.

Filed Under: Trademark

Tips and Strategies on Litigating and Settling Trademark Cases Before the TTAB and in Federal Courts

By Al Mohajerian | October 10, 2017

Join as as we take a look at cases involving the trademarks LIFEGUARD and SHAPE (magazine) and earn CLE credit.

When:    October 26th
Time:     12:00-1:00pm

Where:  Noor – Paseo Colorado

$35 – PBA Members
$45 – Non-members

RSVP to: Niria Arvizu

Al Mohajerian from Mohajerian, A Professional Corporation, will explain litigation and settlement strategies before the TTAB and in Federal Courts.

http://Tips and Strategies on Litigating and Settling Trademark Cases Before the TTAB and in Federal Courts. Join as as we take a look at cases involving the trademarks LIFEGUARD and SHAPE (magazine) and earn CLE credit. When:    October 26th Time:     12:00-1:00pm Where:  Noor – Paseo Colorado $35 – PBA Members $45 – Non-members   RSVP to: Niria Arvizu Al Mohajerian from Mohajerian, A Professional Corporation, will explain litigation and settlement strategies before the TTAB and in Federal Courts.

http://mailchi.mp/5b53475d1c00/tips-and-strategies-on-litigating-and-settling-trademark-cases-before-the-ttab-and-in-federal-courts-1075093?e=7707211ef9

Filed Under: Intellectual PropertyTrademark

Protect Your Work—Questions for Your Intellectual Property Attorney

By Al Mohajerian | June 8, 2017

The rapid pace and constant evolution of the world economy can make it a real challenge to carve out a niche that’s both profitable and reliable. Forging your own path can be an exciting way to achieve that goal, but if your intellectual property is at risk, you might find yourself behind before you ever get a chance to get started. The law can be on your side, but you have to be willing to bend it to your will.

Below, you’ll find a guide to some questions you should be sure to ask your intellectual property and patent attorney. Having the answers to these questions can help guarantee that you’re in a position to defend and protect your property rights, and it can allow you to be proactive on your own behalf. Without staying engaged, the world might continue to pass you by and you may be frustrated to see someone else profit from your hard work.

Ask About International Protections

As mentioned above, the economy is no longer limited to national borders. The exchange of goods and services is truly an international enterprise, so it’s vital that you act to make sure your property rights follow across those borders. Without a commitment to that goal, you might find yourself swamped by knock-offs of your work originating in places beyond your reach.

Make sure that you sit down with your attorney and discuss the international rules and regulations that might apply to your intellectual property as well as the steps that can be taken to enforce them. In some cases, this enforcement may even require the cooperation of the legal services of a foreign country, so it’s important that you work with your attorney to develop a more thorough understanding of the hoops to jump through and the ways in which they may differ from what you’re used to.

Ask About Technical Experience

When it comes to determining the veracity of copyrights and patents, the specific technical details of products and concepts will be called into question. Your protections may be limited if a competing product differs widely enough from a creation standpoint, even if the end result is practically the same. This point is especially relevant to cases involving software and other technical data, as a careful eye may have to pour over countless lines of source code.

Even if your expertise in your field is unparalleled, it’s unlikely that you’ll have the legal knowledge necessary to act in your own defense. Therefore, it’s absolutely critical that you have confidence that your attorney can comprehend and process the technical aspects of your trademark claim. Working with them to find out their technical background and explain some specific parts of your claim can go a long way toward a successful outcome.

Ask About Documentation

Ultimately, your intellectual property claims may come down to determining who has better documentation covering the dawn of their discovery. Making sure that you’ve clearly outlined your creation process and your attempts to secure copyright claims is very important, as it can show strong intent on your part to secure those rights.

Every piece of correspondence or idea that you scratched out on a napkin may be useful in establishing your timeline and asserting your claim. Gather as much of that documentation as possible, and then have a conversation with your lawyer about how he or she plans to use it.

The experienced attorneys at Mohajerian can work with you to secure your internet and intellectual property rights and guarantee that you receive the intellectual and financial credit that you’re due. Turning to proven and trusted lawyers is the best decision you can make to take charge of securing what belongs to you.

Filed Under: Intellectual PropertyTrademark

International Brand Owner’s Standing to Sue In U.S.

By Al Mohajerian | July 24, 2016

Bayer vs. Belmora: Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria.  Gerald Bruce Lee, District Judge.  (1:14-cv-00847-GBL-JFA)

In this unfair competition case, the court considered whether the Lanham Act permits the owner of a foreign trademark and its  sister company to pursue false association, false advertising, and trademark cancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG (“BCC”) owns the trademark “FLANAX” in Mexico and has sold naproxen sodium pain relievers under that mark in Mexico (and other parts of Latin America) since the 1970s.  Belmora LLC owns the FLANAX trademark in the United States and has used it here since 2004 in the sale of its naproxen sodium pain relievers.  BCC and its U.S. sister company Bayer HealthCare LLC (“BHC,” and collectively with BCC, “Bayer”) contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC’s product. BCC successfully petitioned the U.S. Trademark Trial and Appeal Board (“TTAB”) to cancel Belmora’s registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB’s decision to the district court.  In the meantime, BCC filed a separate complaint for false association against Belmora under § 43 of the Lanham Act, 15 U.S.C. § 1125, and in conjunction with BHC, a claim for false advertising.  

After the two cases were consolidated, the district court reversed the TTAB’s cancellation order and dismissed the false association and false advertising claims.

Bayer appeals those decisions.   In its decision, the district court focused on a key question related to Bayer’s Lanham Act § 43(a), 15 U.S.C. § 1125(a), claim: “Does the Lanham Act allow the owner of a foreign mark that is not registered in the United States and further has never used the mark in United States commerce to assert priority rights over a mark that is registered in the United States by another party and used in United States commerce?” The district court held that the answer was no, based on the district court’s interpretation of the Supreme Court’s analysis in Lexmark International, Inc. v. Static Control Components, Inc.

The 4th Circuit held the answer was yes. The court found that the plain language of the Lanham Act § 43(a) does not require the plaintiff to possess or have used the trademark in U.S. commerce. The court found that it is not the plaintiff’s use, but rather the defendant’s use in commerce—of an offending “word, term, name, symbol, or device,” or of a “false or misleading description of fact”—that creates injury under the terms of the statute. The court thus held that it was Belmora’s use of FLANAX in commerce that grounded the injury.

 AL MOHAJERIAN

Filed Under: TrademarkUnfair Competition