Attorney challenges when responding to office actions

One of the most frequent substantive issues raised in office actions is a likelihood of confusion refusal under Section 2(d) of the Lanham Act. The examining attorney will cite one or more existing registrations or prior pending applications that they believe are confusingly similar to the applicant's mark.  Overcoming this type of refusal requires conducting research and crafting legal arguments to distinguish the marks and goods/services, often citing case law. Automating the first draft with AI still requires attorney review and customization. The software is a drafting aid, not a complete replacement for attorney analysis.

Top 3 Greenberg Traurig LLP Trademark Attorneys

A few top-ranked trademark attorneys from Greenberg Traurig and examples of why they are highly regarded:

U.S. trademark law summary judgments - Case Summaries

U.S. trademark law summary judgments - Case Summaries (third party use, colors, fair use) Here...

TMCase: Apple Corps Ltd.. & Subafilms Ltd.. v. Individuals, 2023 U.S. Dist. LEXIS 234673

Apple Corps Ltd.. & Subafilms Ltd.. v. Individuals, 2023 U.S. Dist. LEXIS 234673 Key Legal...

TMCase: World Champ Tech. LLC v. Peloton Interactive, Inc., 2024 U.S. Dist. LEXIS 27975

TMCase: World Champ Tech. LLC v. Peloton Interactive, Inc., 2024 U.S. Dist. LEXIS 27975. Summary judgement case.

• The defendant was entitled to summary judgment because there was no likelihood of confusion between its "Peloton Bike+" product and the plaintiff's "Bike+" app.
• The plaintiff's "Bike+" mark was descriptive as a matter of law.
• The plaintiff's 2021 app was a bona fide commercial use of its mark.

California Trademark - State trademarks in the Sunshine State

A California trademark is a distinctive sign, symbol, or phrase that identifies and distinguishes the goods or services of one party from those of others. In California, as in other states, trademarks are governed by both federal and state laws, and the process of securing a trademark can be complex.