NATOLI-LEGAL, LLC
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(212) 537-4436

Noteworthy Trademark Cases


Below is a Sample of our Firm's Successful TTAB Trademark Dispute and USPTO Office Action Matters.

The following should not be considered a guarantee nor predictive of your own legal outcomes. Any trademark matter will have its own very unique factors and merits that should be weighed carefully by a trademark professional. As always, we welcome your inquiries and will be happy to offer a free initial phone consultation to discuss your matter in private and offer our insights.  


Trademark Dispute with Time, Inc.

Situation:
Time, Inc. instituted opposition proceedings against client at the Trademark Trial and Appeal Board (TTAB) based on its InStyle trademark to prevent the registration of client’s trademark

Services Provided and Result:
Negotiated with Time, Inc. to reach a resolution acceptable to both parties under which Time, Inc. agreed to compensate client for rebranding cost.


Trademark Dispute with Apple, Inc.

Situation:
Apple, Inc. instituted opposition proceedings at the Trademark Trial and Appeal Board (TTAB) to prevent the registration of client’s trademarks. Client’s trademarks contained the term “Apple."

Services Provided and Result:
Negotiated with Apple, Inc. and reached a resolution allowing client to retain and register its trademarks.


Trademark Dispute with Blackberry (Research In Motion Limited)

Situation:
Research In Motion Limited instituted opposition proceedings at the Trademark Trial and Appeals Board (TTAB) to prevent the registration of client’s trademark.


Services Provided and Result:
Filed Answer, negotiated with opposing counsel, and successfully obtained a settlement in which Research In Motion Limited would withdraw its opposition and our client was permitted to pursue its trademark without interference. 



USPTO Refusal to Register (Office Action  Matters)

  VIP TV v. VIP Television

Situation:
USPTO Examiner refused registration of VIP Television due to a conflict with VIP TV, both in Class 41.


Result:
Submitted Office Action response and successfully overcame the Examiner’s refusal.

Integer v. Integer Comfab

Situation:
USPTO Examiner refused registration of Integer Comfab due to a conflict with Integer, both in Class 35.

Result:
Submitted Office Action response and successfully overcame the Examiner’s refusal.



Peekabra v. Peek-a-Panty

Situation:
USPTO Examiner refused registration of Peekabra due to a conflict with Peek-a-Panty, both in Class 25.


Result:
Submitted Office Action response and successfully overcame the Examiner’s refusal.



Fanatic Digital v. Fanatic Records 

Situation:
USPTO Examiner refused registration of Fanatic Digital due to a conflict with Fanatic Records, both in Class 09.

Result:
Submitted Office Action response and successfully overcame the Examiner’s refusal.


Fallen Angelz v. Fallen Angel

Situation:
USPTO Examiner refused registration of Fallen Angelz due to a conflict with Fallen Angel, both in Class 41.


Result:
Submitted Office Action response and successfully overcame the Examiner’s refusal.


Mobizou v. Mobizzo

Situation:
Canadian Examiner (Canadian Intellectual Property Office) refused registration of Mobizou due to a conflict with Mobizzo, both in related classes.

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal.


Alix v. Alix


Situation:
USPTO Examiner refused registration of Alix (our Client's clothing brand) due to a conflict with Alix (a registered trademark in the related class for jewelry).

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal.


SpongeBuddy v. SpongeBuddy


Situation:
USPTO Examiner refused registration of SpongeBuddy (our Client's brand of sponge gloves) due to a conflict with SpongeBuddy (a registered trademark in a related class for sponge holders).

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal.


Cheer Collection v. Cheer Athletics
(Collection and Athletics both disclaimed)

Situation:
USPTO Examiner refused registration of Cheer Collection (our Client's brand of towels) due to a conflict with Cheer Athletics both in Class 24 (a registered trademark in the same class also for towels).

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal.


Layla New York v. Leila

(New York disclaimed)

Situation:
USPTO Examiner refused registration of Layla New York (our Client's brand of leather purses and handbags) due to a conflict with Leila  both in Class 18 (a registered trademark in the same class also for handbags).

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal.


YUMAMI v. UMAMI Café
(Café disclaimed)

Situation:
USPTO Examiner refused registration of YUMAMI (our Client's brand of food products) due to a conflict with UMAMI Café both in Class 29 (a registered trademark in the same class also for food related products).

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal.


Poof It! v. Poof Itza Gift

Situation:
USPTO Examiner refused registration of Poof It! (our Client's brand of hair ribbons) due to a conflict with Poof Itza Gift both in Class 26 (a registered trademark in the same class also for decorative ribbons).

Result:
Submitted legal brief in response and successfully overcame the Examiner’s refusal



Please visit the following pages to learn more about our trademark services and check out our Test Your Trademark feature to see just how strong your mark really is:

Trademark Clearance & Filing Services
Help Choosing a Trademark
USPTO Office Action and TM Dispute Services
TM Due Diligence Explained
Legal Reading Room


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