Sivochek IP Law Center

08/26/2025

Beware of Unethical Trademark Solicitations!

Having worked at both a top national firm and now running my own boutique practice, I’ve seen the pressure small law firms face to stand out in a crowded market. Too often, some don’t rise to the challenge with better service—they resort to tactics that are not just unethical, but downright predatory.

I want to share two recent examples that illustrate the problem, and hopefully help small business owners and entrepreneurs recognize the red flags:

Example 1: The 48-Hour Ultimatum.
A company accidentally let its trademark lapse. The very next day, a lawyer called them claiming he had another client ready to file for the same mark—unless they hired him within 48 hours. If true, that’s a clear conflict of interest. If false, it’s a manufactured scare tactic. Either way, the behavior is highly unethical! Fortunately, the company recognized the red flags and sought proper legal guidance from us.

Example 2: The Scare Text.
My firm received a text about a mark we had intentionally abandoned for a client long ago. It warned that a “new applicant” was filing and urged us to “act within 24 hours” (see attached). This was nothing more than unethical, fear-based marketing—and when directed at a company already represented by counsel (in this case, me), it also violated additional core ethical rules.

Why this matters: These tactics create conflicts of interest, exploit fear, and pressure business owners into rushed, often harmful decisions.

If you receive a threatening email, call, or text about your trademark, pause before reacting. Outreach emails can be a legitimate and ethical way for lawyers to introduce their services. What crosses the line are scare tactics—ultimatums, false urgency, or claims of representing someone else as leverage.

A good lawyer offers clear guidance and real options, not pressure or fear.

08/12/2025

After more than 17 years of handling trademark disputes, I’ve seen enough curveballs to always remind my clients: litigation is unpredictable. This week was a perfect example.

Yesterday, the TTAB issued what should have been the final decision in an opposition proceeding we’ve been pursuing on Opposer’s behalf for over a year. After sustained effort and tough negotiations, the Applicant had expressly abandoned its application, making a decision sustaining our opposition all but certain.

Instead, when I opened the decision expecting a clear win, I was stunned to find an order terminating our opposition with prejudice, based on the mistaken premise that we had withdrawn it. In reality, it was the Applicant who had unilaterally abandoned the application — a fact the docket made unmistakably clear.

In situations like this, time is critical. The error was promptly brought to the Board’s attention, and today the TTAB acknowledged the mistake, vacated the prior order, and issued the correct judgment in our favor: opposition sustained.

It’s a reminder that even with the strongest case, unexpected turns can happen right up to the final step. In litigation, attention to detail and persistence to the very end can make all the difference.

02/08/2022

$99 For a Trademark? How Trying to Cheaply Register Your Trademark Can Ruin Your Business. A Valuable Lesson from a Trademark Lawyer.

There is a plethora of online nonlawyer companies offering to register trademarks for a song, all while promising a “fast and reliable” service and a “satisfaction guarantee.” A bargain hunter can easily find professionally looking websites that will eagerly proposition to register a trademark for $99 or less, and I have seen offers as low as $45.

I would normally spend no time commenting on the quality of services provided by such websites and whether and to what degree they can provide legal services in the first place. These types of questions are rather polarizing these days and can be debated hotly, and I am busy as it is assisting those clients who do understand the benefits of hiring a knowledgeable trademark lawyer. But something happened recently that made me change my mind.

The United States Patent and Trademark Office (“USPTO”) recently issued an Order for Sanctions against several rather notorious online companies that were claiming to provide inexpensive (99 dollars!) trademark registration services, while instead allegedly defrauding both their clients and the USPTO, thus causing tremendous harm to numerous businesses across the United States. The number of victimized businesses was in the thousands, and the victims suffered damages far in excess of the 99 dollars each of them paid for the services. It is simply shocking that so many businesses got duped by the scheme. Which is why I thought I should share a few notes that will hopefully help at least some businesses to stay out of danger while trying to protect their trademarks. And I will start with a true story I was a part of... Read More:

How to Avoid Problems when a trademark is owned by multiple owners

01/14/2022

The USPTO published a notice outlining its newly proposed “Trademarks Administrative Sanctions Process” and is asking for comments. The notice can be found on the Federal register: https://www.federalregister.gov/documents/2022/01/05/2021-28536/trademarks-administrative-sanctions-process

With this newly proposed process, the USPTO is beefing up its arsenal of tools to deal with fraudulent trademark applications. The draft regulation is intended to establish an administrative process for identifying, reporting and investigate improper submissions filed with the USPTO in trademark matters. According to the newly proposed rule, the administrative process “begins when the USPTO identifies or otherwise learns of a suspicious submission in connection with a trademark application or registration, based on information communicated by internal sources, such as examining attorneys and data analytics personnel, or through external sources, such as Letters of Protest, the [email protected] mailbox, law enforcement, or media reports.”

The USPTO will then investigate suspicious submissions and the relevant application may be removed from examination “to ensure that it does not move forward to approval for publication or registration while the administrative process is ongoing”.

If, upon investigation, the USPTO identifies conduct that illustrates violations of the USPTO rules, the Office may issue an order to show cause why sanctions should not be imposed on individuals or entities involved. The order will require the parties to respond by a certain date to explain why the USPTO should not impose the proposed sanctions. The USPTO will consider any timely response and will then determine whether to impose sanctions and will issue a final decision that may include an order for sanctions, if appropriate. The USPTO may take additional actions to enforce orders for sanctions.

If you have any comments or suggestions about this newly proposed regulation, please send them to the USPTO by email at to [email protected] with the subject line “Trademarks Administrative Sanctions Process.” The USPTO will continue to accept comments regarding this proposed Process until January 20, 2022.

01/07/2022

"A Practical Introduction to the Trademark Modernization Act of 2020: Key Changes, New Procedures, and Innovative Tools for Trademark Practitioners."

The Trademark Act (also known as the Lanham Act) is the primary U.S. federal trademark statute. It was enacted back in 1946 and aged considerably by the end of the 20th century. There had been a need for the Lanham Act’s modernization for quite some time until Congress finally took action in December of 2020 and enacted the Trademark Modernization Act of 2020 (“TMA”). The full text of the new law can be viewed here.

The TMA modified the rules of practice of the United States Patent and Trademark Office (“USPTO”) in several important areas and introduced other significant updates to the Lanham Act. The TMA also tasked the USPTO with adopting regulations to properly implement the updates, and on November 17, 2021 the USPTO issued a final rule amending the rules of practice in trademark cases in compliance with the TMA’s provisions (the final rule can be accessed here). Except for several provisions that will become operative on December 1, 2022, the changes to the USPTO’s rules of practice went into full effect on December 18, 2021.

The most consequential changes introduced by the Trademark Modernization Act revolve around the following key points:

1. Clarification of the evidentiary burdens related to obtaining injunctions in trademark infringement cases and revival of the rebuttable presumption of irreparable harm.

2. Modernization of the USPTO’s trademark examination procedures by:

a. establishing flexible periods for responding to USPTO Office actions; and

b. changing and expanding the letter of protest procedure to make it more in line with similar procedures in place for patent applications.

3. Establishment of two new ex parte examination proceedings: expungement and reexamination; and

4. Introduction of a new “nonuse” ground for bringing cancellation petitions before the USPTO’s Trademark Trial and Appeal Board (“TTAB”).

These changes significantly affect trademark prosecution, protection and enforcement strategies and must be thoroughly understood. We will therefore review each of these points in detail and will discuss their practical value and significance. READ MORE:

How to Avoid Problems when a trademark is owned by multiple owners

10/01/2021

Amazon Smacks Social Media Influencers for Facilitating Counterfeiters.

Amazon has reached a settlement with two social media influencers (Kelly Fitzpatrick and Sabrina Kelly-Krejci) who were accused of promoting and facilitating the sale of counterfeit goods by others on Amazon. As part of the settlement, the influencers are “prohibited from directly or indirectly marketing, advertising, linking to, promoting, or selling any products of any kind on Amazon’s store in the future, without express written authorization from Amazon.” The influencers also apologized for their actions and agreed to make settlement payments to Amazon (which Amazon plans to donate to a consumer awareness campaign).

For those who are not monitoring Amazon’s enforcement efforts, back in January of 2020 Amazon launched its Counterfeit Crimes Unit, which was tasked with identifying, investigating and bringing to justice counterfeiters that violate the law and Amazon’s policies. The Unit wasted no time and has initiated legal actions against quite a few counterfeiters already. One of the actions is a lawsuit “Amazon.com Inc. v. Fitzpatrick et al” that was filed by Amazon in November of 2020 in the U.S. District Court for the Western District of Washington (Case: 2:20-cv-01662).

The lawsuit named the total of 13 defendants, and Amazon alleged that the social media influencers Kelly Fitzpatrick and Sabrina Kelly-Krejci “conspired with sellers to evade Amazon’s anti-counterfeiting protections by promoting counterfeit products on Instagram and TikTok as well as their own website.” Amazon further alleged that the influencers were engaged in an elaborate scheme to promote counterfeit products on Amazon. Here is how Amazon described the scheme:

“Fitzpatrick and Kelly-Krejci posted side-by-side photos of a generic, non-branded product and a luxury counterfeit product with the text, ‘Order this/Get this.’ ‘Order this’ referred to the generic product falsely advertised on Amazon, and ‘Get this’ referred to the counterfeit luxury product. By posting only generic products on Amazon, Fitzpatrick and Kelly-Krejci – and the sellers they coordinated with – attempted to evade our anti-counterfeit protections while using social media to promote the true nature of these counterfeit products. Fitzpatrick and Kelly-Krejci also posted numerous videos describing the alleged high quality of the counterfeits they promoted.”

The settlement sends a strong message that Amazon is very serious about stopping counterfeiters and their facilitations. Hopefully, fewer influencers will choose to use their fame and social status to promote counterfeit goods. You can see Amazon’s press release with more details about this settlement here: https://press.aboutamazon.com/news-releases/news-release-details/amazon-counterfeit-crimes-unit-reaches-settlement-influencers

Scheme promoted counterfeit luxury brand products on Instagram, TikTok , and Facebook and directed customers to product listings in Amazon’s store that evaded counterfeit measures by appearing to be generic, non-infringing products, while the counterfeit items would, in fact, be shipped to

09/30/2021

Three Fatal Mistakes Commonly Made by Inexperienced Trademark Applicants.

A nationwide (federal) trademark registration can provide a very powerful tool for protecting any business across the United States. It can be used both as a sword (to successfully defeat unfair competitors and unscrupulous infringers) and as a shield (to protect against accusations of infringement directed at the trademark’s owner). But just like an improperly tempered sword can be week and brittle, mistakes in the trademark application process can make a trademark feeble and fragile.

There are numerous various mistakes that one can make during the trademark application process. Some of those mistakes can be remedied if caught early enough while others can never be rectified and can fatally damage and shatter one’s trademark protection efforts. We will discuss only three of the most dangerous (and often fatal) errors commonly made by inexperienced trademark owners. But first we should briefly recap the overall process for registering a U.S. federal trademark.

To protect a trademark nationwide, its owner must file a trademark application with the United States Patent and Trademark Office (“USPTO”), which is a federal agency tasked with accepting, reviewing, and examining such applications. If a trademark application meets certain statutory requirements, the USPTO will officially register the mark, thus granting it protection nationwide.

An initial trademark application can be filed with the USPTO online, by using the USPTO’s Trademark Electronic Application System (“TEAS”), and the application process itself appears rather simple: applicants just need to fill out an online form and provide certain seemingly straightforward information about the applied-for trademark, its owner, address, goods, etc. But this apparent simplicity is deceptive because behind the TEAS form’s seemingly easy questions hide complicated and highly technical legal concepts and doctrines. Submitting any erroneous or incorrect information to the USPTO can significantly (and sometimes irreparably) harm one’s trademark protection efforts.

Each trademark application is reviewed and examined by one of the USPTO’s numerous examiners, who are specially trained government lawyers. The USPTO’s examiners carefully examine all applications to determine availability for registration and compliance with all statutory requirements. Whenever examiners identify any inconsistencies or defects, they may ask various follow-up questions and, if unsatisfied with answers, may ultimately refuse to register a trademark. And if the USPTO somehow overlooks any falsities or errors in a trademark application and allows the mark to mature to registration, those errors can still serve as a basis for challenging the trademark’s validity by competitors even after registration.

Having briefly reviewed the trademark application process, let’s turn to some of the most dangerous errors that one can make during that process. Although by no means an exhaustive list, the most common critical errors made by inexperienced trademark owners include: (1) filing an application in the wrong owner’s name, (2) improperly claiming use of a trademark in commerce, and (3) applying for the wrong trademark (which is something that happens a lot, perhaps somewhat counterintuitively). These errors usually result from misunderstanding of core trademark law principles. Let us discuss each of those errors and how to avoid them.

1. Listing the Wrong Owner in a Trademark Application.

It is a rather common scenario when a company’s president or other senior officer decides to file a trademark application in his or her personal name while in fact the mark is being used by the company. And it usually comes as a shock to such a person when the USPTO determines the application to be null and void ab initio (from the beginning) on the basis that the application was not filed by the proper trademark owner. Why? Because according to the U.S. Trademark Act (“Lanham Act”), whoever is actually using a trademark in commerce (e.g., selling products) is the mark’s rightful owner. Only such an owner can file trademark applications, not the owner’s president or other officers or employees in their individual capacity. A company’s president acting individually is not the rightful owner and is not entitled to claim individual ownership of a trademark used by the company.

A similar mistake can happen whenever there are multiple sister companies, and a trademark application is filed in the wrong company’s name. Even if such companies share core leadership personnel and employees, a trademark application can be void if filed by the wrong sister company. Whenever there are multiple related companies, it is therefore imperative to pay close attention to which exactly company is using each particular trademark before filing any trademark applications.

Yet another common mistake occurs whenever ... READ MORE:

How to Avoid Problems when a trademark is owned by multiple owners

07/30/2021

LEGAL ASPECTS OF SELECTING AND ADOPTING A NEW TRADEMARK. What every entrepreneur must know when launching a new brand.

Any business that wants to launch a successful new product needs a good brand to succeed. Something that stands out, differentiates you from competition and can be used to build a successful business. But even if you come up with a brand that resonates with consumers, that does not guarantee your brand will succeed in the long term. Your brand also needs to be strong from the legal perspective. At the very minimum, you need to make sure that your new brand (a) is legally available (meaning it does not infringe on someone else’s rights) and (b) is legally protectable (meaning you can actually enforce your trademark against others if necessary).

A. Legal Availability.

Human minds work surprisingly alike, and even if you create a trademark that you think is completely unique, there is always a chance someone else already came up with the same or similar trademark before. It is therefore paramount to conduct a thorough trademark research and analysis to determine if your new mark is legally available before launching it. It is simply not a good idea to start investing time, money, and effort into a new trademark only to risk receiving a cease-and-desist letter a few months later and having to rebrand. ... Read more here: https://sivochek.com/article/LEGAL-ASPECTS-OF-SELECTING-AND-ADOPTING-A-NEW-TRADEMARK-/4

01/29/2021

The U.S. Patent and Trademark Office (USPTO) is organizing a series of free online trademark basic bootcamps for small business owners.

These events are organized by the U.S. Federal Government and are free for participants.

Full details: https://www.uspto.gov/about-us/events/trademark-basics-boot-camp

About these events:

A must for any small business or new entrepreneur learning to navigate trademarks for the first time, in this module, we’ll cover:

Definitions and types of trademarks
Benefits of federal registration
Selecting a trademark
Filing and registration
And more

Upcoming Events
FEB 2, 2021 - VIRTUAL
Trademark Basics Boot Camp, Module 1: Fundamentals
This event is a must for any small business or new entrepreneur learning to navigate trademarks for the first time. In this module, we’ll cover definitions and types of trademarks, benefits of federal registration, selecting a trademark, filing and registration, and how to find help.

FEB 9, 2021 - VIRTUAL
Trademark Basics Boot Camp, Module 2: Searching
This event is a must for any small business or new entrepreneur learning to navigate trademarks for the first time. In this module, we’ll cover important principles related to trademark searching and the effective use of TESS.

FEB 16, 2021 - VIRTUAL
Trademark Basics Boot Camp, Module 3: Application requirements
This event is a must for any small business or new entrepreneur learning to navigate trademarks for the first time. In this module, focus on the requirements for an initial trademark application.

FEB 23, 2021 - VIRTUAL
Trademark Basics Boot Camp, Module 4: Application filing walk-through
This event is a must for any small business or new entrepreneur learning to navigate trademarks for the first time. In this module, we focus on the Trademark Electronic Application System (TEAS), the required system for making any trademark submission to the USPTO.

MAR 2, 2021 - VIRTUAL
Trademark Basics Boot Camp, Module 5: Responding to an office action
This event is a must for any small business or new entrepreneur learning to navigate trademarks for the first time. In this module, we'll focus on responding to office actions.

This free USPTO event series provides a comprehensive overview of the process for federal trademark registration and maintaining a federal trademark.