Challenge

For well over a decade, Harness IP represented a well-known global manufacturer and distributor of healthy breakfast foods and snacks regarding the ongoing protection and enforcement of its famous trademarks. Known for being extremely aggressive in safeguarding its trademarks, logos, brands, package designs and product mascots, the client frequently objected to various new trademark applications and filed Oppositions or complaints with the United States Trademark Trial and Appeal Board (TTAB) on the basis that these new trademark applications were confusingly similar to its own trademarks.

For several years, the client was the #1 filer of federal trademark Oppositions in the United States. Harness IP recommended that this client devise and execute a new strategy for enforcing its trademarks and valuable family of characters.

Solution

In the interest of reducing the cost of filing all of these trademark Oppositions, Harness IP recommended that its client create and implement a combined comprehensive filing strategy along with its Opposition practice to allow for the most effective overall enforcement of its valuable trademarks. Our team recommended that the client obtain trademark registrations that would allow trademark Examiners to stop or prevent many of the new filings that were confusingly similar rather than simply relying on Oppositions. This strategy also included a recommendation that they combine their enforcement efforts with additional copyright filings that would not only provide greater protection of the client’s valuable rights, but also include statutory sanctions against those who dared to copy the client’s characters and product packaging.

One of the biggest challenges associated with working on the client’s TTAB matters was not only the volume of claims in motion at any given time, but also the challenge of working through the ongoing management of so many deadlines. There are more procedural deadlines involved in a TTAB proceeding than even imaginable in a civil proceeding. Harness IP leveraged its specialized TTAB knowledge, experience and tracking software to effectively manage both the volume of claims and frequency of deadlines. Harness IP resolved literally hundreds of Oppositions over the years for this client and competently tracked and responded to Discovery requests that ranged from Interrogatories to Document Productions, and often resulted in applicants amending their pending application and drafting settlement agreements that needed to be effectively capable of being implemented in perpetuity.

During the time that Harness IP served as intellectual property counsel for this client, it was essentially the “David and Goliath” trademark era in the United States, where a fine line marked the difference between the duty of a trademark owner to engage in trademark enforcement and bullying tactics. Harness IP, throughout this decade, always took the high road. Despite the client’s repeated position as the #1 filer of Oppositions or its status as the Goliath, our team managed these enforcement efforts in such a manner so that the client was never held or found to have bullied other trademark owners or seekers. Rather, we worked with our client to define clear parameters around what its rights were and how such rights would be appropriately, professionally and steadfastly enforced. Our client appreciated that the Firm was able to conclude nearly every contested matter in an amicable manner before they ever went to trial before the TTAB. Most importantly, our team never lost an Opposition during it’s more than a decade of service to this global client while enforcing its famous trademarks — which were clearly its most valuable business assets.