Securing a $1.6 Million Summary Judgment for Our Client 21 Jan 2025, 10:58 am

At The Kinder Law Group, we are proud to share a significant trademark litigation win: a federal court order granting summary judgment in favor of our client, The M.I.B. Group, in a complex trademark infringement case. This decision not only highlights our client’s rights but underscores the careful strategy and expertise we bring to intellectual property disputes.

The Case: Protecting a Legacy Built Over Decades

The M.I.B. Group, owned and operated by Tyrone Wilkerson, has provided security services under the “M.I.B.” brand since at least 2002. With its distinctive crosshairs logo and a reputation for excellence, the brand was a cornerstone of Wilkerson’s business.

The Defendants, Steven R. Aguilar and his company MIB-Shield LLC, attempted to leverage the goodwill of the “M.I.B.” mark by using a strikingly similar name, “MIB Security Group.” This led to confusion among customers, misdirected inquiries, and a direct threat to our client’s established brand identity.

The case centered on two critical issues:

1. Ownership and Validity of the Trademarks: Our client holds registered trademarks for both the “MIB Security Group” word mark and the crosshairs logo, dating back to 2021. The defendants sought to invalidate these marks, alleging inaccuracies in the registration process.
2. Likelihood of Confusion: We argued that the defendants’ use of similar branding caused market confusion and unfairly capitalized on the reputation our client built over decades.

The Court’s Findings: A Victory on Multiple Fronts

The Honorable Judge Stephen V. Wilson delivered a detailed 47-page favorable ruling:

1. Trademark Validity: The court rejected the Defendants’ arguments for canceling our client’s trademarks, finding no evidence of fraudulent intent or material misrepresentation in the registration process. The decision affirmed that Wilkerson’s use of the marks predated the Defendants’ and established ownership.
2. Likelihood of Confusion: Applying the Sleekcraft factors, the court found overwhelming evidence supporting our claims:
   • The strength and inherent distinctiveness of the “M.I.B.” mark.
   • The similarity between the marks in sight, sound, and meaning.
   • The proximity of the parties’ services, both providing private security, leading to inevitable consumer confusion.

The court granted summary judgment on these pivotal issues, recognizing the undeniable strength of our client’s position.

Why This Case Stands Out

Summary judgment is rarely granted in trademark cases due to the fact-intensive nature of proving infringement. This win demonstrates not only the strength of our client’s claims, but also our ability to present complex legal and factual arguments in a clear, compelling manner.

What This Means for You

Intellectual property is a business’s most valuable asset.  This case underscores our ability to handle even the most challenging intellectual property disputes. Whether you’re seeking to protect your trademarks or facing a complex legal challenge, The Kinder Law Group is here to provide the expertise and dedication you need to succeed.  If you’re facing a trademark dispute or need guidance on protecting your intellectual property, our team is here to help.

Your brand is your identity. Let us help you protect it.

Download Copy of the Decision

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Can Intellectual Property Be Stolen? 19 Jan 2023, 3:41 pm

Intellectual property (IP) is considered a creation of the mind, and it’s one of the most valuable assets your business can have. IP can encompass anything from inventions to business and trade secrets. It’s crucial to protect your IP and prevent others from stealing your ideas for their own gain since IP represents great value to your business. Intellectual property attorneys work to protect your IP and ensure you’re not being taken advantage of. Intellectual property law can be difficult to navigate, especially if you own a start-up or small business. However, with the right legal team, you can prevent IP theft and protect your ideas.

What Is Intellectual Property?

Per California law, IP can be classified as any of the following:

• Inventions
• Ideas
• Symbols
• Trade secrets
• Software
• Logos
• Music
• Films
• and more

Whenever anyone creates a new idea, others may try to claim these works as their own. For this reason, IP law is enacted to protect IP from being stolen, and if someone were to try to use another’s IP without permission, they would receive strict consequences.

Types of IP

In California, there are four main types of IP:

1. Patents. Patents grant a business exclusive rights to monetize its idea or product for a limited time. Patents give the sole authority of an idea or invention to the person who created it, which prevents others from copying them. The three main types of patents for which companies can file are utility, design, and plant patents.
2. Trade secrets. As the name suggests, this type of IP is not public. Trade secrets have to have some sort of economic importance to a company that would affect the company if shared publicly. Secret recipes and formulas can be considered trade secrets, and these can be protected through IP law.
3. Trademarks. Trademarks protect specific types of IP, such as logos, phrases, and other designs. Trademarks are unique in that they can protect multiple ideas and designs simultaneously, whereas patents can only protect one idea, product, or design at a time.
4. Copyrights. Unlike patents and trademarks, copyrights cannot protect ideas and concepts. This type of IP can, however, protect music, films, books, and blueprints. Copyrighting a work gives the owner full authority over their work, which prevents others from using the work for their own profit.

Intellectual Property Theft

Unfortunately, stealing someone’s IP is easy and can severely damage the lives of the victims. In IP theft cases, someone simply has to copy a product or idea without permission from its creators. This can happen to a business of any size, and this crime can potentially cause millions of dollars to resolve. If you don’t have the proper legal protection for your IP, you run the risk of other companies easily using your work for their own gain.

In many cases, you can contact the company you believe has stolen your work asking for the production of the stolen IP to cease. In some cases, a company may not realize they are in breach of stealing and will stop immediately if they are made aware. However, if a company refuses, you may have to pursue legal action. This is why contacting an experienced law firm is important for protecting your rights and holding others accountable.

There are other methods people use to steal IP information from businesses. Using various methods, hackers can steal company data and secrets and sell the data to other companies. Sometimes, employees themselves will leak information to outside sources or sell company information to their employer’s competitors.

FAQs

Q: What Is Intellectual Property Theft?

A: Stealing or using an idea or work, such as logos, symbols, or trade secrets, without permission from the party holding rights to the IP constitutes intellectual property theft. For example, if one company copies another’s logo, this is considered IP theft. To prevent IP theft, companies use patents, copyrights, and trademarks to keep their works legally protected.

Q: Can You Lose Your Intellectual Property?

A: It is possible to lose your intellectual property outside of it being stolen. For example, patents only last for a certain amount of time, after which the IP in question will become available for others to use. Also, if you do not take the proper steps to fully protect your IP, you run the risk of losing your IP to other companies. To prevent losing your IP, consider speaking with an experienced legal team who can protect your rights.

Q: What Is the Most Commonly Stolen Type of Intellectual Property?

A: Most IP cases occur in the information technology field. Trade secrets are the most stolen type of IP due to how drastic this type of theft can be. These secrets, when in the hands of competitors and other businesses, can cause large-scale issues that can be incredibly taxing to resolve. All business owners, especially ones in the IT field, should have access to a strong legal team in case of any theft attempts.

Q: Is Intellectual Property Legally Protected?

A: Intellectual property is eligible for legal protection. However, you will need to register the IP to protect it and obtain exclusive rights to the work or idea. IP is not legally protected on its own, and if someone were to steal your ideas or works without permission, you will only be legally protected if you own a patent, trade secret, trademark, or copyright.

The Kinder Law Group Can Help

IP theft is not a victimless crime, and many businesses suffer severe consequences when their work is stolen. While not every case of IP theft is intentional, you will need a strong IP lawyer to protect against any potential instance of this crime. At The Kinder Law Group, we work with our clients efficiently and timely so we can best protect their rights. The legal system can be challenging to understand and navigate, but our team is equipped and ready to address any concerns.

Contact us today for more information about intellectual property theft or to schedule a consultation.

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How Important Is Intellectual Property? 25 Nov 2021, 10:07 am

The digital landscape has transformed the way we interact with other people’s intellectual property. In the past few years, we have seen increasing numbers of companies sued for using someone else’s intellectual property without permission. We have also seen an increase in the number of patents and trademarks being filed protecting various ideas. It seems like everyone is claiming an idea or a concept as their own, but how important is intellectual property?

Some people would argue that intellectual property is fundamental to some businesses. For example, it could be argued that the patent on a new medical drug has saved lives and made big companies lots of money. Others will say that patents encourage competition between pharmaceutical companies because they constantly try to mimic each other’s products to make slightly different versions of the same thing.

However, many people do not think intellectual property is significant, and they think that intellectual property rights should be abolished. They will often argue that patents only help companies make more money because they increase prices on their products while simultaneously preventing other businesses from bringing out similar products that would affect sales. It’s a debate of what is more important, the inventor or the public need.

Regardless of what side you sit on in this debate, it goes without saying that intellectual property is an active component of modern society. But exactly how important can it be?

What Is Intellectual Property?

Intellectual property (IP) refers to any form of creative work that can be protected by law. It includes, but is not limited to:

• Product inventions
• Music, lyrics, and plays
• Artworks such as paintings, sculptures, or photography
• Literary works like poetry and novels
• Computer software and databases
• Inventions such as chemical formulas, industrial designs, and the commercial use of a composition or process.

Intellectual property is protected by the law to ensure that people who have done creative work can prevent others from using their ideas. There are different types of intellectual property, each one protecting a different type of creative work.

What Is a Trademark?

A trademark is an identifying name, phrase, or symbol that distinguishes a company’s products and services from those of another. A trademark can be a symbol, word(s), design, or combination that helps people recognize the source of goods or services.

Trademarks are essential as they help consumers identify who made their products. It is often easier for a consumer to select a well-known brand of a product than it is for them to try to determine the quality or nature of an unrecognizable brand of product.

Trademarks are not only limited to words or phrases, however. They can also be designs, symbols, and shapes that help distinguish a product from others.

What Is a Copyright?

A copyright is a legal protection extended to the owner of an original work that has been published or produced. A copyrighted work can be a book, painting, movie, or song.

Copyright protects original works such as poems and novels and artistic creations such as paintings, sculptures, and drawings.

Copyrights are very important as they prevent people from copying or using an original work without the creator’s permission. Copyright is not limited to published works. The moment an original work is created and fixed tangibly, copyright attaches to that work automatically.

What Is a Patent?

A patent is a grant that gives an inventor the right to exclude others from making, using, or selling their invention. A patent is valid for 20 years from filing and protects the inventor throughout much of the world.

Patents are granted to an inventor to protect their inventions, so they have the sole right of making, using, and selling the patented technology. The patent gives them a time-limited monopoly on the invention.

Patent protection is available for various technologies, including chemical and plant-related inventions, electrical and electronic systems, medical devices, machinery, and industrial equipment.

What Is a Trade Secret?

A trade secret is often defined as a piece of information that has value because it is not generally known and that is subject to efforts made by a business to keep it secret. Trade secrets are protected under state laws, not federal law.

A trade secret can be any form of information that provides the company with a distinct advantage over other competitors who do not know or use it. It can be a formula, process, device, or information about a customer list, price book, production techniques, and processes.

The Value of Intellectual Property

The birth of intellectual property was due to the immense value that it does provide to the economy; it:

• Drives economic growth by encouraging people to be more productive, make discoveries, and create things.
• Allows businesses to invest in developing new products and services.
• Fosters competition among businesses because it gives companies incentives to make new products, services, and technologies.
• Promotes global economic growth and provides consumers worldwide with a greater variety of products to meet their needs and solve their common problems.
• Creates more jobs that pay well, further fueling the economy.

What Should I Do When Someone Infringes on My Intellectual Property?

There are several things you should do if someone is infringing on your intellectual property. First and foremost, talk to an attorney. If it’s a registered trademark, a U.S. Patent and Trademark Office can help you determine if your rights have been violated. If the infringement is not registered, it will be up to you and your attorney to prove that your rights have been violated. If the violation is intentional and willful, then damages can be increased, and you will likely be eligible for compensation.

Contact the Kinder Law Group for Legal Intellectual Property Support

The Kinder Law Group represents clients in intellectual property litigation and can help you determine your rights. If someone is infringing on your trademark, copyright, or patent, we can help you determine if your rights have been violated and what action to take. We are a dedicated team of Irvine, California, intellectual property attorneys that always fight for our client’s rights. If you need intellectual property support, contact us today to schedule an appointment with one of our experienced lawyers.

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What Are The 6 Types Of Intellectual Property? 26 Oct 2021, 10:42 am

Whether you are starting a business, developing a new product, creating art, or writing a story, your ideas are important. In fact, when you generate a good idea and begin to execute it, the results can be both thrilling and lucrative. Not only are you able to explore new avenues of creativity and revenue, but you may also have the opportunity to change the world or benefit others.

For this reason, when another party infringes upon or otherwise threatens your idea, it’s natural to become defensive. After all, you put significant thought and effort into your creation, and you should be the one to reap the rewards. Fortunately, intellectual property laws support this very belief, and lawmakers have created numerous avenues to protect your ideas and your future with intellectual property law.

What Is Intellectual property?

The term “intellectual property” can refer to a large variety of creations of the mind. As such, each type of IP comes with its own unique stipulations and laws. Whether you are looking to protect your intellectual property or are simply beginning to explore a new idea, it’s best to know as much as possible about the type of property involved and potential ways you can protect it.

Intellectual property can exist as one of six major types: patents, trademarks, copyrights, designs, databases, and trade secrets. Learn more about each below.

1. Patents The patent area of intellectual property law is dedicated to inventions and products. When you patent a product, you are preventing other people from making an identical product and selling it on the market. This means that you have a unique standing in the community as the product’s inventor and sole distributor. If other individuals or companies want to market and sell what you’ve patented, they must first obtain permission from you. You must apply for a patent through the US Patent and Trademark Office (USPTO). However, it is important to note that patents do not last forever. With few exceptions, patents last 20 years from the initial filing date. In addition, not all products and ideas can be patented. Mathematical methods, scientific discoveries, surgical procedures, game strategies, and business methods are among the ideas that cannot be placed under a patent.
2. Trademarks Trademarks are common in the United States, and most people are familiar with the US trademark symbol (). Trademarks protect visual aspects of a brand, such as a logo and packaging. However, almost anything that can be used to help a brand or service stand out from its competitors can be trademarked. For example, the world’s largest search engine company has distinctive colors and branding on its homepages, buildings, and products. These are trademarked, so this specific combination and style cannot be used by others.
3. Copyright Copyright law is applied to artistic and literary projects. Items like books, movies, paintings, and other types of art and entertainment are often copyright protected. This allows the creators to protect their ideas and the content that makes the final project unique. Copyrights are different from a trademark in that they apply specifically to the content, not the branding. For example, a well-known book series’ special font and logo might be trademarked, but the content and story are copyrighted instead. The copyright prevents others from writing books too similar to the famous series.
4. Design Design is a unique area of intellectual property law because it does not encompass the essential function of an object or its branding. Instead, it protects the intrinsic design of the object or the ways in which the object is aesthetically different from competitors. For example, famous tennis shoe companies secure design protections for their uniquely designed tennis shoes. This doesn’t mean no other shoe company can make tennis shoes; it just means that they cannot utilize the specific patented design that makes the original shoe unique to its creator.
5. Database This is a rather narrow aspect of intellectual property because it truly only applies to databases. Databases are collections of information that are stored in one place and accessed via computers—and many prove valuable for companies seeking contact information, demographic information, and other knowledge about another entity’s client base. When a database is created, its owner has sole control over its content and who can use it. These rights last for 15 years, at which time others may use the database.
6. Trade Secrets Trade secrets are items or services certain companies have created and customized to gain an advantage over their competitors. As you might expect, trade secrets are often found in restaurants and fast food companies. For example, a certain fried chicken chain’s secret blend of herbs and spices is considered a trade secret. The creators know that they have formulated an appealing seasoning for their product, and they have an edge over the competition by keeping the recipe a secret. There is no official process by which users must create an official trade secret. For example, if a business had to apply for the designation, they would need to divulge the trade secret to a governing body, which defeats the entire purpose of a secret. Instead, a business simply decides to keep the components of a competitive product or method to themselves. They must simply be able to present their case to an official panel to protect the secret from infringement or defend it if they are accused of trade secret appropriation. Similarly, it is the burden of the company to protect its own trade secret. For example, the aforementioned chicken restaurant might require employees to sign a nondisclosure agreement before learning the ingredients of the spice blend. This allows the company to take legal action if an employee or ex-employee spreads the secret recipe.

Contact Kinder Law Group

If you have created an idea, product, piece of art, or database that needs protection, an IP lawyer can help. The team at Kinder Law Group takes pride in protecting inventors, artists, and entrepreneurs from those who try to steal their hard-earned ideas and profit from them. We understand the hard work and dedication that goes into creating and developing a new idea, and we work hard to protect its future and your rights to your creation.

If you believe someone has violated your protected intellectual property, our Irvine intellectual property attorneys offer skilled representation. Infringement and misappropriation cases are a significant focus for our firm, and we are passionate about fighting those who try to profit from your property. For more information or to request a consultation, contact us online today.

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Top 20% Of Most Active Trademark Litigation Firms in the United States! 22 Jan 2021, 5:48 pm

You are trying to find a law firm that handles trademark infringement and other trademark legal needs.  Perhaps you are looking at other law firms who say they handle trademarks, but are concerned because they claim to specialize in just about every other area of the law as well.  Instinctively, you are probably thinking that it would difficult for someone to be good at everything (…you are correct!).

Perhaps you are talking to a large firm with hundreds of lawyers each of whom really do focus on their particular area of the law.  Yes, the firm could be a one-stop-shop for all your legal needs, but you just aren’t sold on paying several hundreds (sometimes thousands) of dollars per hour for the convenience they offer (….again, you are correct – you shouldn’t!).

With TKLG you can rest assured that we not only offer reasonable rates, but we are truly focused on the practice of trademark law.  Although we may be a smaller firm, we successfully litigate against some of the largest firms in the country.  You don’t have to take our word for it either because TKLG was recently ranked in the top twenty percent of the most active law firms in the entire United States for the area of trademark litigation.  That means you can rest assured that you will be working with a lawyer who knows the trademark laws backwards and forwards, yet incurring reasonable fees along the way.  So give us a call today – we would love to work with you.

* Top twenty percent ranking is based upon the records of the DocketNavigtor service from June 2020.  According to the DocketNavigtor website, the company has legal editors who curate litigation data by hand, recording up to 29 different types of data for each court document and up to 19 different types of data for each case resulting in the most detailed, most accurate, and most comprehensive litigation database available.

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Q & A: Can a name and a logo be filed under one trademark application? 21 Aug 2020, 11:19 pm

No, separate applications are required. One application would be directed to the words and the other to the logo. You will typically see the first type of application called a “standard character” or “word mark” application and the other a “stylized” or “design mark” application. Depending upon how you use your mark, it might also make sense to apply to register the design element of your logo alone – that is, if you use it separately and it has independent commercial value.

You obviously have to be practical because it can get expensive to file multiple applications since the Trademark Office charges a per class, per application filing fee. However, most law firms (The Kinder Law Group included) will give you a big break on total fees if you file multiple applications at the same time. Also, there are ways to file your applications to get more “bang for your buck.”

The Kinder Law Group happily provides free consultations if you have any questions.

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Brian Kinder Continues to Be Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California! 23 Jun 2020, 5:49 pm

After practicing exclusively in the field of intellectual property since 2001, Mr. Brian P. Kinder founded The Kinder Law Group (TKLG) in 2011.  Just a year later, 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 after that, in 2013, TKLG proudly announced that Mr. Kinder was honored to be ranked in the top 10 of all trademark application lawyers and trademark infringement lawyers for not just Orange County, but the entire State of California. 

It wasn’t until 2014, however, until TKLG had the privilege to announce that Mr. Kinder had been ranked as the number one trademark application lawyer and the number one trademark infringement lawyer for the entire State of California.  Today, over six years later, TKLG is proud to confirm that Mr. Kinder continues to be ranked as the number one trademark application lawyer and the number one trademark infringement lawyer 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 (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 June 10, 2020.

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When is an Alteration a “Material” Alteration 24 Apr 2020, 9:47 pm

The Kinder Law Group was handling an issue today for a client who had filed a trademark application, but had made changes to the underlying trademark and wanted to “update” the application. The Trademark Office issued a preliminary refusal to the request to amend on the ground that the change allegedly constituted a “material alteration.”  The Kinder Law Group has 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, we decided to update our research records to prepare the argument. In doing the research, we noticed a profound lack of visual samples on the Internet.  Therefore, we decided to consolidate as many cases (both precedent and non-precedent) that we could find and stick them into a chart.  We believe it helps to visually perceive the alterations that have been allowed versus those that have been denied.  We 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 USPQ2d 1152 (T.T.A.B. 1996) (Binding Precedent)
		Allowed	Visa Int’l Service Assoc. v. Life‑Code Systems, Inc., 220 USPQ 740 (TTAB 1983)
	(changing GRAN VINO to VINO DE)	Allowed	In re Larios, 35 USPQ2d 1214 (TTAB 1995)
		Allowed	Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974) (Approving deletion of “[p]icture of a 1905 garbed man walking across the corner of a rug in a comparatively barren room” and alteration to “block letters in a straight line”) (Citing Ex parte The Hanna Paint Mfg. Co., 103 USPQ 217 (Commr., 1954).
		Allowed
FREEDOMSTONE	FREEDOM STONE	Allowed	In re Innovative Cos., LLC, 88 USPQ2d 1095 (TTAB 2008)
		Allowed	Paris Glove of Can., Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007)
TURBO BLOWERS	TURBO (removing BLOWERS)	Allowed	In re CTB, Inc., App. No. 74136476 (Not Binding Precedent)
		Allowed
		Allowed	Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015)
GOT STRAPS	GOT STRAPS?(adding question mark)	Denied
LA PAULINA		Denied
	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
	(adding MR. SEYMOUR to hat)	Denied	In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990)
Researching image but described 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 described 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)
		Denied	In re Dillard Department Stores Inc., 33 USPQ2d 1052 (Comr.Pats. 1993)
	FYER-WALL	Denied	In re Richards-Wilcox Mfg. Co., 181 USPQ 735(Comr.Pats. 1974)
		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)
(black and white)	(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)
	(background border and moon removed)	Denied	In re Space Adventures, Ltd., App. No. 76391912, T.T.A.B. May 26, 2005 (Non-Binding Precedent)
	(Removal of “Amera” and “Rizk”)	Denied	In re Amera Wildflower Rizk, App. No. 75537891, T.T.A.B. Mar. 25, 2004 (Non-Binding Precedent)
	(adding elephant and tiger elements)	Denied

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Can you convert an ‘actual use’ trademark application to an ‘intent to use’ trademark application? 2 Jan 2020, 10:48 am

Since this question comes up quite a bit, we thought we would post our answer to an online submission from a ways back. 

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!

TKLG’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

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Brian Kinder Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California! 5 May 2014, 9:50 pm

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.

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