Trademarks service marks problems

Winning a trademark case with an experienced trademark attorney in San Diego

Our Trademark attorneys in San Diego provide fast and affordable services to their clients. They have an expertise in evaluating and advising trademark searches, registering the applications at the USPTO, and protecting trademark rights. Please call us at (888) 636-4884 for a FREE consultation now! 

An Office Action can be a problem yet a trademark opposition or cancellation is a very serious matter that must be dealt with as if you are about to lose all uses of your name and potentially be sued for infringement as well since that’s what these generally mean.

I have read thousands of trademark case documents, oppositions, cancellations, appeals, motions, briefs, office actions and letters, settlement offer letters and settlement agreements, line by line, paragraph by paragraph, dissecting, looking for patterns, storing what I felt to be the ‘best and sweetest’ strategies and wording and arguments and defenses, analyzing strategies that worked, noting those that did not.

I read and studied the letters and other writings exchanged between leading attorneys from leading law firms like ProQuoLegal – Your On-Demand Attorney Marketplace, and relentlessly studied every other aspect relating in any way to overcoming trademark problems.

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The study combined with extensive brand experience, copywriting, and generally living quite a long time, is how I fell into this.

The problem-solving procedure and systematic approach required to resolve business and marketing problems are extremely similar to the unique way I resolve trademark problems.

The factors that cause trademark problems and help resolve them turn out to include all the things I’ve done in my life – for 30+ years.

Our trademark attorneys in San Diego have resolved trademark problems of our clients, doing research, analyzing cases, helping develop responses to Office Actions, and answers to oppositions and cancellations, and briefs as a result of investigating adversaries and developing strategies, options, alternatives and contingencies based on findings and trademark law.

Three very important things to understand about any trademark case problem:

  • Ignorance of trademark law or civil law is not an excuse
  • A trademark Opposition is a Federal Law Suit in a lower court (the TTAB)
  • The USPTO must treat those ‘Pro Se’ (on their own) the same as an attorney

This Site contains a great amount of information about trademark problems, however, I never recommend anyone take the risk of attempting to resolve any trademark problem without the help of experienced trademark attorneys who understand trademarks and branding.

Our services often augment yet are not intended as a substitute for advice from a knowledgeable and qualified trademark attorney licensed to practice trademark law.

I never considered serving as an expert witness, yet 30+ years as Cummings Design seems to qualify me to help in re-branding, trademarks, and trademark problems though I always recommend the oversight and participation of a qualified trademark attorney.

Contact an experienced trademark attorney in San Diego for a FREE consultation at (888) 636-4884.

Here’s the story of the trademark problem(s) I had (and resolved).

By August of 2004, I was able to successfully defend a trademark opposition ‘Pro Se’  in an interesting and unusual trademark inter partes [Latin: between parties] proceeding.

Prior to this, I had successfully reversed a USPTO final refusal Office Action in an ex parte [Latin: by or for one party or by one side] proceeding; involving a final refusal Office Action from the trademark examiner for which I filed an appeal and an appeal brief.

Before a trademark application is allowed to proceed to be published for opposition, the application is reviewed by a USPTO trademark examiner who may issue a non-final Office Action or a Final Office Action which is a final refusal of the trademark.

The response to a non-final Office Action is a formal letter addressing the concerns stated by the trademark examiner in the non-final Office Action. The response to a Final Refusal Office Action requires an appeal and an appeal brief.

Back to the opposition…

My trademark opposition involved a major International company represented by the senior partner of one of the world’s leading intellectual property law firms.

The trademark opposition began when I received an innocent looking Extension of time to oppose on April 8, 2003.

A Notice of Opposition on July 16, 2003, followed the extension of time to oppose.

As is customary, the Notice of Opposition named me (the trademark applicant) as a defendant, and the Opposer as the plaintiff.

Also customary, I was given 40 days to file an Answer.

You must file an Answer within the time specified by the USPTO if you receive a Notice of Opposition. If you fail to do so, you can lose the Opposition by default.

You must also carefully follow other USPTO and TTAB procedures.

Writing and properly filing the Answer may seem simple, though I highly recommend that you may need help from a top trademark attorney in San Diego in order to avoid further complications.

An Opposition and the appropriate answer are not as they may first appear. In an answer, a boilerplate solution is definitely not the answer.

Filing the proper Answer to the Notice of Opposition is the first step to winning in a trademark opposition, and the step the Opposer hopes you do not take.

Developing a strong Answer (not typical boilerplate), based on knowledge of the Opposer, the industry, and the specifics of the situation, can set the stage to win.

The time and effort and thought put into the answer set the foundation for all that follows. Many attorneys fail at this critical stage.

The opposition dismissed – ‘with prejudice’ – the best possible outcome.

In the end, not only was the opposition to my mark dismissed, it was dismissed ‘with prejudice’, meaning that the plaintiff can never bring it up again (the best outcome in a trademark opposition).

This opposition never made it to the tribunal of judges at the Trademark Trial and Appeal Board since, after much consideration and research, I successfully convinced the Opposer to withdraw the opposition, with prejudice. This took a great deal of strategy, due diligence, and research.

The Opposing party’s Attorney had much earlier offered a settlement (which I refused) and offered to withdraw the opposition ‘without prejudice’ (which I also refused). Once an answer is filed, the opposition cannot be withdrawn ‘without prejudice’ unless the Opposer has the consent of the other party (which I refused to consent to).

The decision reversed in a prior ex parte Trademark Appeal.

Prior to the Opposition, I was successful ‘pro se’ in an ex parte appeal where I was able to convince the Trademark Trial and Appeal Board to reverse its final refusal and allow my trademark to proceed to registration.

I filed the ex parte appeal on October 30, 2002, and it was terminated and the decision reversed in my favor on May 23, 2003. My response to a non-final action resulted in a final refusal, at which time I filed the appeal to the Trademark Trial and Appeal Board. The appeal brief I filed December 27, 2002, was the document that convinced the trademark examiner to reverse the decision. The examiner allowed my application to proceed.

As is normal in the process, proceeding to registration allows your trademark to be published for opposition, and, as can happen, a Notice of Opposition was then filed (which I successfully defended).

All in all, in every respect, I won… with prejudice – the best way.

As it turned out, my 30+ year background in advertising, marketing, and promotion enables me to develop the argument.

Trademarks are brands – sold in commerce – marketed, promoted, advertised.

With brand knowledge, tenacity, and investigation, I help win trademark cases.

Winning is certainly possible with the best trademark attorney in:

  • a trademark opposition
  • responding to a trademark office non-final office action
  • reversing a trademark office final refusal
  • formal Answer to a Notice of Opposition or Petition to Cancel
  • overcoming other trademark problems
  • … and even more possible with my help, coaching, writing, analysis.

Chances of winning are even more greatly increased when you hire an experienced trademark attorney in San Diego.

  • I always recommend, invite and encourage the advice and close participation of qualified trademark attorneys and intellectual property specialists.
  • You have more chances of winning a case with a Trademark Attorney  however, the only way I was able to win was by learning the hard way… by reading 100’s of cases, diligently studying trademark law, gaining insight into how other cases were won (and lost), and spending a tremendous amount of time and effort (i.e. years).
  • I now help others with trademark problems including issues related to a non-final office action, final refusal or final office action, appeal to the Trademark Trial and Appeal Board, Notice of Opposition and/or Petition for Cancellation, and understanding trademark law and trademark-related concepts in general.
  • Most of the individuals hire me to help settle, win and/or avoid simple as well as extremely complex, intricate trademark problems.
  • I have read or glanced 1000’s of trademark cases and all the related letters and associated documents.
  • I assess trademark problems from a business and marketing perspective with legal guidance from an experienced lawyer.
  • The Dupont Factors used to determine the likelihood of confusion, are directly related to brand marketing principles and concepts which are how it clicked.
  • I help by email worldwide, prefer all in writing and documented for review.
  • No phone calls required.
  • I help in the background to make better decisions in documents you submit as well as in strategy.
  • My goal is to help resolve trademark problems as well as provide a greater level of assurance that the issues raised will never be raised again in the future.

For more info about our trademark services, please call us at (888) 636-4884. 

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