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August 2011

Trademark Practice Continues to Expand Trademark Work throughout the U.S. during First Half of 2011

The trademark attorneys in Gordon & Rees’s Intellectual Property Practice handle all aspects of trademark related matters, including due diligence screening and clearance in the early stages of the trademark adoption process, securing registration for marks in the U.S. and abroad, and advising clients on the enforcement and prosecution through full litigation of trademark rights.  We also provide long-term strategic counsel regarding the management, maintenance, and acquisition and sale of trademark portfolios, including a substantial amount of national and international licensing transactions. 

During the first half of 2011, our trademark attorneys filed 50 new federal trademark applications and completed the registration of 34 previously-filed applications.  Examples of the wide range of industries we serve throughout the U.S. are included in the below summaries of a few new registrations that are noteworthy for both their complexity and innovative solutions.

Susan Meyer (San Diego and Denver) handled registrations for a family of marks for client MedImpact Healthcare Systems, Inc. that reflected the expanding focus of the client from being a pharmacy benefit management company to providing a variety of healthcare benefit and insurance services.  Because trademark examiners may only see a portion of a trademark portfolio, Susan worked closely with the multiple assigned trademark examining attorneys to discuss the portfolio as a whole, leading to a more consistent result from the Trademark Office.

Scott Austin successfully registered the mark GOLDMAN, overcoming a surname refusal after the examining attorney cited many examples from the Brooklyn, NY phonebook.  Scott argued that the specimen package label featured the photograph of a male model with skin of a handsome gold tone - an avowed result the cosmetic product was intended to produce.  The examiner withdrew the refusal and the mark proceeded to registration.

Neil Martin (San Diego) obtained a registration for the mark HYDROSAND for sandbags, which had been refused registration over the mark HYDRASAND for flood control products.  Neil’s successful argument was that HYDRA was a Greek Goddess.  Drawing on his years of experience, Neil also amended the identification of services to limit sales to government agencies because to qualify to sell to government agencies one must have a GSA registration number which keys to the identification of the source (supplier). 

John Haller (San Diego) handled two particularly challenging trademark registration matters.  First, client National University had a complex trademark ownership issue in that they have a number of separate businesses and each uses the formative “National University” in its name.  The separate businesses are part of an affiliate system which controls and oversees some business issues, but each affiliate is legally separate.  Therefore, the affiliate applications were rejected over the parent NATIONAL UNIVERSITY trademark registration.  To overcome the refusal, John assisted the client in assigning all the marks to the parent company and provided licenses to each of the separate educational affiliates under similar licenses granting each the right to use the NATIONAL UNIVERSITY name as a formative in their name.

Second, Quality Candy is an established candy company that has over the years acquired a number of candy businesses and their older marks.  During the process of confirming registrations, a number of inconsistencies were discovered and corrected.  John analyzed the portfolio and developed a strategy to get it back in order, including consolidating ownership of all marks in Quality Candy Company, recording transfer documents and memoranda, and filing new applications and necessary renewals.

The Intellectual Property practice group provides patent, trademark, and copyright prosecution, litigation, licensing, and portfolio management services. 

Susan B. Meyer



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