Author Archives: Kinder Law

Brian Kinder Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California!

Posted on Tuesday 5, 2014

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.

 

The Kinder Law Group gets trademark infringement client $22k…..for being sued!

Posted on Wednesday 4, 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.

Can I have an ‘actual use’ application converted to an ‘intent to use’ application?

Posted on Tuesday 2, 2014

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?

Thank you!

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

When is an Alteration a “Material” Alteration

Posted on Thursday 1, 2013

I was handling an issue today involving a situation where a client had filed an application for a mark, but then made some changes to the mark and wanted to “update” the application. The Trademark Office issued a preliminary refusal to the requested amendment on the ground that the change allegedly constituted a “material alteration.” I have handled many of these types of changes and responded to many such refusals in the past, however, it had been about a year since the last one. Therefore, I decided to update my research records to prepare the argument. In doing my research, I noticed a profound lack of visual samples on the Internet. So, I consolidated as many cases (both precedent and non-precedent) that I could find and stuck them into a chart. In my opinion, it helps to visually perceive the alterations that have been allowed versus those that have been denied. Hope you enjoy and/or that it helps.

First, the law:

Trademark Rule 2.72, 37 C.F.R. § 2.72, prohibits any amendment of the mark that materially alters the mark on the drawing filed with the original application. Section 807.14 of the Trademark Manual of Examining Procedure (TMEP) discusses the “Material Alteration” test and states: “The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.”

As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986). However, while the question of whether a new search would be required is a factor to be considered in deciding whether an amendment would materially alter a mark, it is not necessarily the determining factor. In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990).

Each case must be decided on its own facts, and these general rules are subject to exceptions. The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression.

Now, the visual samples:

ORIGINAL MARK AMENDED MARK DECISION REFERENCE
NY JEWELRY OUTLET NEW YORK JEWELRY OUTLET  Allowed In re Finlay Fine Jewelry Corp., 41 USPQ2d1152 (T.T.A.B. 1996) (Binding Precedent)
 image001  image003 Allowed  
 image007 image005

(changing GRAN VINO to VINO DE)

Allowed In re Larios, 35 USPQ2d 1214(TTAB 1995)
 image010  image012 Allowed  
FREEDOMSTONE FREEDOM STONE Allowed   
 image014  image016 Allowed  
TURBO BLOWERS TURBO

(removing generic term BLOWERS for blowers)

 Allowed  In re CTB, Inc., App. No. 74136476 (Not Binding Precedent)
 image018  image020

 

Allowed  
       
 GOT STRAPS  GOT STRAPS?

(adding question mark)

 Denied  
LA PAULINA   image022

 

Denied  
 image024 TURBO

(standard characters)

Denied  
DISKBOOK CODA DISKBOOK Denied In re William Carroll, App. No. 74643905, T.T.A.B. June 8, 1999 (Not Binding Precedent)
KETTLE CLUB THE RED KETTLE CLUB  Denied In re Reese Brothers, Inc., App. No. 74668052 T.T.A.B. Mar. 8, 1999
 image026

 

 image027

 

 

 

 

 

(adding MR. SEYMOUR to hat)

Denied

 

In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990)
Researching image but desribed as: Addition of crown design and banner design bearing the words “IN VINO VERITAS” is a material alteration of typewritten word mark “THE WINE SOCIETY OF AMERICA”

 

  Denied In re Wine Society of America Inc., 12 USPQ2d 1139(TTAB 1989)
Researching image but desribed as: “addition of house mark, “PIERCE,” to product mark “Chik’n-Bake and design”

 

  Denied In re Pierce Foods Corp., 230 USPQ 307, 308-309(TTAB 1986)
 image029

 

 

 

 image030

 

Denied In re Dillard Department Stores Inc., 33 USPQ2d 1052 (Comr.Pats. 1993)
 image032

 

 

FYER-WALL 

 

Denied

 

In re Richards-Wilcox Mfg. Co., 181 USPQ 735(Comr.Pats. 1974)
 image034

 

 

 

 image036

 

Denied

 

In re Jen USA, Inc., App. No. 76652688, T.T.A.B. Oct. 7, 2008 (Non-Biding Precedent)
MT RAINIER

(standard characters)

RAINIER

(standard characters)

Denied

 

In re Thor Tech, App. No. 78717682, T.T.A.B. Aug. 12, 2010 (Non-Binding Precedent)
SILENT FIREMAN

(standard characters)

YOUR SILENT FIREMAN

(standard characters)

Denied

 

In re No-Burn Investments, L.L.C., App. No. 76629397, T.T.A.B. Nov.29, 2007 (Non-Binding Precedent)
image038

 

 

 

 

 

(black and white)

 image039 

 

 

 

 

(color claimed and removal of “De Chene POLSKA”)

Denied

 

In re Debowa Polska De Chêne Polska, App. No. 76612005, T.T.A.B. Feb. 6, 2007 (Non-Binding Precedent) 
 image042

 

 image044

 

 

 

(background border and moon removed)

Denied

 

In re Space Adventures, Ltd., App. No. 76391912, T.T.A.B. May 26, 2005 (Non-Binding Precedent)
 image046

 

 

 

 

 

 image047

 

 

 

 

 

(Removal of “Amera” and “Rizk”)

Denied

 

In re Amera Wildflower Rizk, App. No. 75537891, T.T.A.B. Mar. 25, 2004 (Non-Binding Precedent) 
 

image050

 image051

 

 

 

 

 

(adding elephant and tiger elements)

Denied  

Top 10 Trademark Registration Lawyer for the Entire State of California!

Posted on Wednesday 1, 2013

The Kinder Law Group is pleased and honored to announce that the founder of the firm, Brian P. Kinder, has been ranked in the top 10 of all trademark application lawyers for the entire State of California. He was previously ranked in the top 10 for the Orange County, California area. The ranking appears 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) and 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 couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon a search for “Trademark Infringement” lawyers located in “California” performed on January 30, 2013.

Brian Kinder – Top 10 Trademark Infringement Lawyer in All of California

Posted on Wednesday 1, 2013

The Kinder Law Group is pleased and honored to announce that the founder of the firm, Brian P. Kinder, has been ranked in the top 10 of all trademark infringement lawyers for the entire State of California. He was previously ranked in the top 10 for the Orange County, California area. The ranking appears 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) and 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 couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon a search for “Trademark Infringement” lawyers located in “California” performed on January 30, 2013.

European Union Court Decides Trademark Case Involving L’Oreal’s BOTOCYL and Irvine-Based Allergan’s BOTOX – The Outcome….

Posted on Thursday 5, 2012

The Highest Court in the European Union decided a trademark case today that has been pending for some time. L’Oreal was attempting to obtain a trademark registration for the trademark BOTOCYL for a cosmetic treatment and had been refused registration based upon the well-established brand name BOTOX for products sold by Irvine’s own Allergan, Inc. The high court affirmed the refusal to register the trademark. So it looks like L’Oreal has lost it bid to register the mark.

Looking for a Trademark Registration Lawyer in Orange County – How Does Top 10 Sound?

Posted on Monday 12, 2011

The Kinder Law Group is honored to announce that the founder, Brian P. Kinder, has received yet another top 10 ranking – this time he was ranked in the top 10 of all Trademark Registration lawyers in Orange County, California. There are many websites that allow lawyers to buy their way to the top of the rankings. However, this ranking is particularly coveted because lawyers ranked in the top 10 on the www.avvo.com website are there for one reason and one reason only – reputation! As the company explains on their website (see link below), the Avvo® rating system is completely unbiased and 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 couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon a search for “Trademark Registration” lawyers located in “Orange County, California” performed on December 12, 2011.

Brian P. Kinder – Top 10 Orange County Trademark Infringement Lawyer!

Posted on Monday 12, 2011

The Kinder Law Group is pleased and honored to announce that the founder of the firm, Brian P. Kinder, has been ranked in the top 10 of all trademark infringement lawyers in Orange County, California. The ranking appears 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) and 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 couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon a search for “Trademark Infringement” lawyers located in “Orange County, California” performed on December 12, 2011.

Brian P. Kinder – No. 2 Franchise Lawyer in Orange County

Posted on Monday 9, 2011

The Kinder Law Group is pleased and honored to announce that the founder of the firm, Brian P. Kinder, has been ranked as the No. 2 franchising lawyer in all of Orange County, California.  The ranking appears 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) and 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 couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating.  This report is based upon a search for “Franchising” lawyers located in “Orange County, California” performed on September 12, 2011.