If you have ever dealt with the founder of the firm, Brian P. Kinder, you know he is always busily working on something trademark-related for one of his clients – whether it be a trademark application or a trademark infringement matter. Well, The Kinder Law Group (TKLG) is pleased to report that with hard work comes recognition.
You may recall that, in 2012, TKLG proudly announced that Mr. Kinder had been ranked in the top 10 of all trademark application lawyers and trademark infringement lawyers for the Orange County, California area. A year later, in 2013, TKLG proudly announced that Mr. Kinder was honored to be ranked in the top 10 of all trademark application lawyers and trademark infringements for not just the Orange County area, but for the entire State of California. This year, in 2014, TKLG is thrilled to announce that Mr. Kinder is now ranked as the number one trademark application lawyer and the number one trademark infringement lawyer in both the Orange County, California area, but also for the entire State of California.
The rankings appear in one of the leading online lawyer rating websites – www.avvo.com. As explained on the company’s website (see link below), the Avvo® rating system is completely unbiased (i.e., unlike other attorney ranking sites, you can’t pay to increase your rank on Avvo), there is no favoritism, and the company takes a number of factors into consideration, including, years in practice, disciplinary history, professional achievements and industry recognition of the lawyer. The Kinder Law Group is highly honored by this credible and prestigious ranking.
For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon searches for “Trademark Application” lawyers located in “California” and “Trademark Infringement” lawyers located in “California” both performed on May 13, 2014.
Given the multi-million (or billion) dollar judgments headlining these days, it isn’t often that you see somebody bragging about getting a client only $22,000. However, when the client is the Defendant in a trademark infringement lawsuit and you force the other side to pay $22,000 just to be let out of their own lawsuit – then that is cause for discussion and celebration (and perhaps even little bragging!).
These days, we are increasingly seeing intellectual property being used as an anti-competitive tool. Because trademark infringement is so complex, and there are many factors that must be analyzed to determine infringement, it is easy to get into court and force your opponent to spend many thousands of dollars defending an otherwise frivolous action. Fortunately for the clients of The Kinder Law Group, however, we specialize in helping clients to defend against frivolous actions.
In a recent victory, The Kinder Law Group, APC helped a mom and pop day spa operating under their trademark since December 2005 defend against a trademark infringement claim by a large destination resort and spa that owned a trademark registration which issued in 2009 (the filing date of the underlying intent-to-use application was March 2006).
After a substantial amount of litigation, including competing motions for summary judgment, The Kinder Law Group persuaded the other side to resolve the matter by paying the Defendants to let the Plaintiffs out of their own suit. So, although the amount of the payment was not headline shattering, it is a meaningful amount for defendant to receive for being sued.
Q: Can I have an ‘actual use’ application converted to an ‘intent to use’ application?: I filed an ‘actual use’ trademark application, thinking that the way I used the trademark was sufficient to be considered actual use. (Yes, I know I should have had a trademark attorney file the application.) Anyway, as it turns out, I have found out that I am not yet using it in a way that qualifies to be considered ‘actual use.’
So the question: Is it possible for a trademark attorney to have my ‘actual use’ application converted to an ‘intent to use’ application? Or do I have to start over, just filing a new intent to use application?
Asked 33 minutes ago in Trademark Application
A: Brian’s answer: Yes, you can convert a use based application (Section 1a) to an intent-to-use application (Section 1b). Look up the Trademark Manual of Examining Procedure (TMEP) online and then look at Section 806.03(c) Amendment From §1(a) to §1(b). It explains everything in detail and I have copied and pasted it below. Keep in mind, however, that this often times does not solve the problem because the issue is usually more substantive. You really should speak with a tm lawyer to sort this out. It takes many months to get an application through to registration and if you have to start over you want to do it sooner rather than later. Best of luck and here is the text of TMEP Section 806.03(c):
If a §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. 2.35(b)(3).
When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. 1051(b)(3)(B); 37 C.F.R. 2.34(a)(2).
See TMEP §806.03(j) regarding amendment of the basis after publication.
See exchange at: http://www.avvo.com/legal-answers/can-i-have-an–actual-use–application-converted-t-1615466.html?utm_campaign=answer_notify_pro&utm_content=question_legal&utm_medium=email&utm_source=notification