Find Lawyers in Louisville, Kentucky for Trademark Law
Practice Area Overview
A mark is deemed protectable if it is distinctive, meaning that it is capable of identifying the source of a particular good. In determining whether a mark is distinctive, trademark law uses four separate classifications based on the relationship between the mark and the associated product: (1) arbitrary or fanciful (marks such as KODAK® and APPLE® that bear no inherent relationship to their associated products); (2) suggestive (marks such as COPPERTONE® that evoke a characteristic of the associated products); (3) descriptive (marks such as HOLIDAY INN® that directly describe a characteristic or feature of the associated products); or (4) generic (terms that describe the general category of the associated products, e.g., “phone,” “keyboard,” etc.). The first two categories of marks are protectable without proof that they have acquired distinctiveness in the minds of consumers, while descriptive marks require evidence that the consuming public has come to associate the term with its specific source. Generic terms are never protectable as trademarks, as they are necessary for general identification of a particular product category.
Once a trademark owner has acquired protectable rights in a mark, it may enforce its rights by preventing the use and/or registration of all subsequent infringing marks. The standard for infringement in the United States is “likelihood of confusion,” which means that consumers viewing the respective marks on their associated products are likely to be confused as to the source of those products or as to the sponsorship or approval of such products. In other words, determining infringement is not as simple as merely comparing the marks to see if they are identical; rather, courts will employ a multifactor test. While the precise factors vary slightly by jurisdiction, courts generally consider the following elements: (1) the strength of the plaintiff’s mark; (2) the relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of care exercised by the typical purchaser; (7) the defendant’s intent; and (8) the likelihood of expansion of the product lines.
Protecting and enforcing trademarks is critical to the success of any company. Trademarks allow consumers to distinguish a company’s products and services from those of its competitors, and also serve as indicators of the quality of such products and services. Indeed, many companies’ trademark portfolios constitute the majority of the value of their businesses. Please consult with an experienced trademark lawyer to explore how to best to protect your company’s trademarks.
With more than 25 years of Intellectual Property experience, Joel actively tries cases in both state and federal courts. A founding member and former co-chair of the firm's Intellectual Property and Technology Service Group, he manages all aspects of infringement litigation for both federal and state courts, including trial and appellate practice. He has also prepared and prosecuted trademark and copyright applications, prosecuted and defended trademark opposition and cancellation proceedings...
Mandy Wilson Decker is a Patent Attorney and member of the Intellectual Property & Technology Service Group. Her practice focuses on intellectual property protection strategy, including counseling clients on infringement, validity and patentability, transfer of intellectual property, patent drafting, and patent prosecution. Contributing to her practice is a scientific background in chemistry and experience with academic and commercial research in the areas of biochemistry, biotechnology, ...
Scot Duvall is an intellectual property attorney in the firm's Louisville, Kentucky office. He has practiced in the fields of trademarks and intellectual property for over 25 years, including representing Top Fortune 500 companies. His practice includes brand development and clearance, and trademark registration in the U.S. Patent & Trademark Office (USPTO). His transactional experience includes licensing, contracting, due diligence, and IP-related aspects of business transfer and franchi...
David Nagle is a Registered Patent Attorney who has been with the Intellectual Property & Technology Service Group since its inception. He holds an advanced engineering degree, and his technical knowledge consistently allows him to better understand his clients' business needs and processes. David has extensive experience prosecuting domestic and foreign patent applications covering a wide range of subject matter, including consumer goods, mechanical devices, software and business methods...
Terry Wright is a Registered Patent Attorney whose practice focuses on designing and implementing intellectual property protection strategies. Terry has extensive experience advising clients ranging from small, privately held companies to multi-national, publicly traded companies. He regularly prepares protection plans for intellectual property associated with consumer goods, medical and other mechanical devices, and life sciences-associated technologies. As part of his practice, Terry routin...
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