Intellectual Property & Trade Secrets

Case Study

Trademarks

Trademarks are used to identify the source of specific product or service, and typically are brand or product names, logos, or slogans. Because they are among a company’s most valuable assets, businesses sometimes over-aggressively try to protect their trademark rights. For example, one of our clients (let’s call it “Recommend”) operates a website and mobile app that recommends restaurants based on your mood, the weather, the time, and your location, among other things. Another company (let’s call it “Recommend Tavern”) runs a single restaurant and bar in upstate New York.

After we filed an application to register RECOMMEND as a trademark with the United States Patent & Trademark Office, the restaurant filed a petition to oppose its registration. It claimed that consumers would be confused and our client’s app and website are operated by or associated with Recommend Tavern.

We reviewed the restaurant’s trademark opposition petition and determined that it lacked merit. Instead of engaging in a protracted petition process, we negotiated a mutually acceptable amendment to our client’s trademark application. The application specifically stated that our client did not operate a bar or restaurant using the RECOMMEND trademark.

Business owners handling their own trademarks might have given up and stopped using RECOMMEND after the restaurant filed its petition or, worse, engaged in lengthy and expensive litigation only to reach the same result. However, our client relied on our expertise, and now can continue using its trademark to grow its business.