Nate Garhart on Trademarks

To Catch A Fashion Thief: Trend Chasing or IP Infringement?

Fighting knock-offs in the fashion industry is notoriously difficult. Copyright, trademark, and trade dress laws offer some protection for branding and marketing materials used to sell fashion products, as well as for...more

7/24/2025 / Copyright Infringement , Copyright Litigation , Enforcement Actions , Fashion Industry , Infringement , Intellectual Property Protection , Trade Dress , Trademark Infringement , Trademarks , Unfair Competition

IP Terminology: Accuracy Matters

In the linked article about a trademark dispute, the author notes that the plaintiff claimed the defendant used a “copyrighted name.” Just a reminder: one can patent inventions, copyright creative works of expression, and...more

7/14/2025 / Copyright , Copyright Infringement , Enforcement Actions , Entertainment Industry , Intellectual Property Protection , IP Litigation , Name and Likeness , Trademark Infringement , Trademark Litigation , Trademarks

Profits or Peers: Does Seeking an Accounting in Trademark Litigation Waive the Right to a Jury Trial?

In trademark infringement litigation, the form of monetary relief a plaintiff requests can determine whether the case is decided by a jury or a judge. This procedural distinction has real consequences, and a new request has...more

7/10/2025 / Certiorari , Damages , Judicial Authority , Jury Trial , Petition for Writ of Certiorari , SCOTUS , Seventh Amendment , Statutory Interpretation , Trademark Litigation , Trademarks

Two's A Crowd: The Pitfalls of Trademark Co-Ownership

Often, individuals joining together on a project believe they should each own the name they choose. Indeed, it only seems fair. But having multiple owners of a single trademark is a recipe for trouble, and the partners would...more

7/8/2025 / Business Entities , Business Ownership , Contract Terms , Corporate Governance , Intellectual Property Litigation , Joint Ownership , Lanham Act , Trademark Infringement , Trademark Litigation , Trademark Ownership , Trademarks

New TTAB Precedent Prohibits Incorporation By Reference

In a precedential decision issued June 6, 2025, the Trademark Trial and Appeal Board (TTAB) confirmed what has long been suggested in its procedural manual: Appellants in ex parte appeals may not incorporate arguments from...more

6/11/2025 / Appeals , Filing Requirements , Judicial Authority , Precedential Opinion , Statutory Interpretation , Trademark Litigation , Trademark Registration , Trademark Trial and Appeal Board , Trademarks , USPTO

Mad Max or a Brand Warrior: HBO's Experience In the Branding Thunderdome

After a two-year experiment under the MAX trademark, Warner Bros. Discovery is restoring HBO MAX as the brand for its flagship streaming platform. With so many name changes in recent years, it might seem like branding...more

6/10/2025 / Brand , Consumer Protection Laws , Corporate Branding , Entertainment Industry , Intellectual Property Protection , Marketing , Rebranding , Risk Management , Technology Sector , Trademarks

What's In a Name?: The Legal Landscape of Choosing Surnames as Trademarks

As noted in the linked article, many iconic brands, including Ford, Harley-Davidson, and JC Penney (yes, he was real), bear the surnames of their founders. These names often lend a sense of authenticity or legacy that...more

6/4/2025 / Acquired Distinctiveness , Brand , Lanham Act , Trademark Application , Trademark Litigation , Trademark Registration , Trademarks , USPTO

When Imitation is Neither Sincere Nor Flattering - Trademark Dilution

With changing laws and the ubiquity of cannabis and vaping product and service providers, leveraging the familiarity of established trademarks has become a common, albeit risky, marketing tactic. New brands often mimic...more

5/19/2025 / Cannabis Products , Dilution , Lanham Act , Trademark Litigation , Trademarks

Trademark Applications Filed on an Intent-To-Use Basis Can Be Vulnerable To Challenge

In filing to register a trademark on an “intent-to-use” basis, the applicant must verify that it has a good faith “bona fide intention to use the mark in commerce.” 15 U.S.C. § 1051(b). Assuming there is nothing on the face...more

5/15/2025 / Evidence , Good Faith , Intent-to-Use , Lanham Act , Trademark Application , Trademark Litigation , Trademark Registration , Trademark Trial and Appeal Board , Trademarks , USPTO

In Limited Cases, Foreign Trademarks Can Affect U.S. Registration Rights

It is a basic tenet of trademark law that rights are jurisdictional. Trademark owners only have rights in the mark in the jurisdictions in which they have registered (or, in some cases, used) the mark....more

5/13/2025 / Corporate Counsel , Foreign Trademark , Intellectual Property Litigation , Intellectual Property Protection , International Trade , Jurisdiction , Trademark Cancellation , Trademark Infringement , Trademark Litigation , Trademark Registration , Trademarks

With Trademark Claims Against Gray Market Goods, the Devil Is in the Details

When a third party purchases a manufacturer's goods intended for distribution outside of the U.S., and then imports those goods into and sells them to consumers in the U.S., the products are authentic, and so trademark...more

5/9/2025 / Goods or Services , Imports , International Trade , Lanham Act , Manufacturers , Parallel Imports , Regulatory Requirements , Trademark Infringement , Trademark Litigation , Trademarks

FAQs: Wine Industry Intellectual Property Protection

For wineries, managing intellectual property (IP) is crucial to maintaining brand identity and protecting creative investments. While general IP principles apply across many sectors, wineries face unique challenges and...more

1/14/2025 / Confidentiality Agreements , Copyright , Copyright Infringement , Employee Training , Enforcement , Intellectual Property Protection , Non-Disclosure Agreement , Patent Applications , Patents , Trade Dress , Trade Secrets , Trademark Litigation , Trademark Registration , Trademarks , USPTO

Careful What You Wish For: Demand Letters Can Result in Unintended Litigation

When seeing similar trademarks or trade dress employed by a third party, companies often immediately react with a demand letter requiring the target to “immediately cease and desist” its use of the IP and threatening...more

9/17/2024 / Cease and Desist , Demand Letter , Enforcement , Third-Party , Trade Dress , Trademark Litigation , Trademarks

Certification Marks and Fame

Trademark owners have the right to stop third parties from using marks that could cause a likelihood of consumer confusion. Third-party use of a trademark that is the same or similar to the owner's trademark for goods related...more

6/10/2024 / Appeals , Certification Marks , Goods or Services , Inherently Distinctive , Intellectual Property Litigation , Intellectual Property Protection , Likelihood of Confusion , Third-Party , Trademark Litigation , Trademark Ownership , Trademark Trial and Appeal Board , Trademarks

Bay Bridge Series Second Inning: Oakland Doubles to Right With Countersuit in "San Francisco" Airport Trademark Dispute

After being sued for trademark infringement, Oakland has hit back at San Francisco with a countersuit for declaratory relief. The declaratory relief decision will similarly answer the question of whether Oakland's use of the...more

5/13/2024 / Counterclaims , Declaratory Relief , Intellectual Property Protection , Negotiations , Noninfringement , Settlement , Trademark Infringement , Trademark Litigation , Trademarks

Another Chapter in the Bay Bridge Series? San Francisco Sues Oakland Over Airport Name, Nate Garhart

Even with the A's leaving the Bay Area, we're getting an extra SF-Oakland matchup. This trademark infringement case will have some interesting issues to be decided (if it gets that far)...more

4/19/2024 / Intellectual Property Litigation , Intellectual Property Protection , Trademark Infringement , Trademark Litigation , Trademarks

Court Discounts Confusion Evidence in Trademark Infringement Action: Is the Confusion Actual?

Actual confusion is considered the sine qua non of trademark infringement. The presence of actual confusion can carry the day in proving a likelihood of confusion entitling the claimant to summary judgment. But not all...more

3/4/2024 / Consumer Confusion , Likelihood of Confusion , Summary Judgment , Trademark Infringement , Trademarks

[Webinar] Cannabis IP: Using Intellectual Property to Protect Your Assets and Grow Your Business - January 26th, 10:00 am - 11:30...

Intellectual property (IP) is a critical issue in the cannabis industry. Creating and protecting cannabis products, processes, and brands comes with unique challenges, and certain IP laws may apply differently to cannabis...more

1/13/2021 / Brand , Cannabis Products , Cannabis-Related Businesses (CRBs) , Continuing Legal Education , Copyright , Intellectual Property Protection , Misappropriation , Patents , Trade Secrets , Trademarks , Webinars