Author Archives: John DiGiacomo

How Coexistence Agreements Work

How Coexistence Agreements Work

Trademarks

In trademark law, coexistence agreements are contracts whereby two trademark owners agree to use their similar marks, but agree to limitations. For example, the two owners might agree that their respective goods or services will be offered in different geographic areas. A consent agreement is a type of a coexistence agreement that is usually shorter […]

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Do I Need To Trademark Under State Law?

Do I Need To Trademark Under State Law?

Trademarks

Many are familiar with trademark registration under federal law. Some may not know that trademark registration is also available under state laws. In general, registering a trademark under state law is unnecessary, but there are some circumstances in which state trademark registration has value – when federal registration is not allowed and when your trademark […]

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Stronger Patents Act: 5 Significant Proposed Changes to Inter Partes Reviews

Stronger Patents Act: 5 Significant Proposed Changes to Inter Partes Reviews

patents

Recently, Senator Christopher Coons (D-Del) introduced the STRONGER Patents Act of 2017. So far, this is the only legislation introduced in this Congress addressing any sort of patent reform. The proposal would significantly change inter partes review proceedings before the Patent and Trademark Appeal Board (“PTAB”). What is an Inter Partes Review? An inter partes […]

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Tips for Avoiding Disparagement of a Competitor

Tips for Avoiding Disparagement of a Competitor

defamation

What is Commercial Disparagement? In the broadest sense, commercial disparagement involves advertising or other public statement including  false or misleading information about a business that discourages consumers from buying from or dealing with that business. There is no requirement that the other business be your competitor, although that is the context in which problems most […]

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International Trademark Classes: The Nice Agreement

International Trademark Classes: The Nice Agreement

Trademarks

What is the Nice Agreement and what are international trademark classes? Filing for a trademark through the United States Patent and Trademark Office (“USPTO”) is probably a mysterious process for most people. There are several types of trademark applications, including international trademark classes, and many different filing bases.   Given the importance of a brand […]

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PCT Filings: One Method to Seek International Patent Protection

PCT Filings: One Method to Seek International Patent Protection

patents

Filing for patent protection with the USPTO is probably somewhat familiar to inventors and businesses here in the United States. However, the options for seeking international patent protections are probably less well known. Consequently, it is important to seek the help of skilled and dedicated patent attorneys to help you evaluate the pros and cons […]

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Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

Trademarks

Parties file oppositions against pending trademark applications for a wide variety of reasons. Often, a party filing an opposition or requesting an extension of time to do so will contact the Applicant before filing or at the same time.  Whether an opposition is expected or not, there are often win-win scenarios that savvy parties can […]

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Managing an International Trademark Portfolio

Managing an International Trademark Portfolio

Trademarks

Because trademark protection is territorial in nature, managing an international trademark portfolio is complex. Your company may have one trademark or hundreds, in either  case you need experienced and skilled trademark legal counsel who will help you prioritize and protect your portfolio. The general issues for managing any trademark portfolio are: Creation (or discovery) of […]

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