PracticePanther and Name Warden Announce Integration Partnership

Practice Panther for trademark lawyers just got a lot better.  Dead simple trademark docketing is now integrated.  We’re excited to announce a new integration partnership with PracticePanther and Name Warden, which will provide trademark attorneys around the world with a streamlined process to keep track of trademark applications and filing deadlines.  Once connected with a few clicks, Name Warden works easily and seamlessly within the Practice Panther law practice management platform.

The partnership allows attorneys access to all their important USPTO and international trademark deadlines (by state or country) within their PracticePanther calendar, agenda, and activities, powered by Name Warden.  PracticePanther combines time tracking, case management, billing, invoice, document management, and CRM for lawyers.

“This partnership couldn’t come too soon. Automation in the legal tech world is providing more convenience every day,”  says PracticePanther CMO David Bitton. “Letting the software take care of the reminders, keep track of deadlines, and being able to monitor the process from one platform, leaves far less room for error while increasing the attorney’s efficiency.”

“We are excited to help improve upon PracticePanther’s extreme ease of use with Name Warden’s no-data-entry trademark docketing.  For any lawyer with either a handful or several thousand trademarks to manage, practice management is now even easier,” said Chris Gatewood, Founder of Name Warden.  Name Warden offers flat fee annual or monthly subscriptions, at a single low rate regardless of a lawyer’s number of marks under management.

By streamlining procedures for intellectual property attorneys, with the user-friendliness of both software solutions at their core, PracticePanther and Name Warden are allowing attorneys to become more streamlined and efficient than ever.


Merely Ornamental? When a Decoration Is Not a Brand

‘Tis the season for merchandising! Your house, office, and yard may be full of holiday ornamentation but trademark applicants beware.  If something is deemed to be “merely ornamental,” that’s grounds for the USPTO to refuse your application to register your mark.  

Ornamentation is an issue that trips up a lot of applicants, especially for t-shirts, coffee mugs, bumper stickers, and other printable merchandise.  The issue comes down to whether the wording or logo is being used as a trademark.

“Merely Ornamental” Refusal 

A “merely ornamental” refusal happens when the USPTO refuses registration because the sample, or “specimen” is deemed merely as an “ornamental or decorative feature” on the goods rather than as a trademark to indicate the source of goods.

The basic concept here is this: just because you have shirts made up with your logo on it does not make you an apparel company. Say for example Name Warden had shirts made to go to a conference. Because Name Warden is not a t-shirt company, the mark on the shirt is merely ornamental.  We have not become an apparel company, so would not be able to get our mark registered in Class 25 for apparel.

Trademarks have to do with the brand of a product and its maker, and the real point of reference is not the front of the shirt but inside the back collar or on a tag hanging off of the sleeve. The size, location, dominance, and significance of your mark as applied to the goods are all factors in the USPTO’s determination of whether your mark functions as a trademark.

If, for example, you used a small insignia or shape on the breast pocket of your shirts, that could be considered a trademark because it creates the “commercial impression” of a trademark. If that same symbol was enlarged and placed across the front of the shirt, it could be considered ornamental.


How to Avoid a Refusal

The USPTO will refuse your mark if it is deemed merely ornamental or decorative. In their words, “when use of your mark does not clearly identify the source of your goods and distinguish them from the goods of others,” the mark is considered ornamental.

Examples of Ornamental use include:

  • A quote across the front of a t-shirt
  • An image on the main surface of a shirt, hat, or bag
  • Embroidery embellishments
  • Floral patterns
  • Everyday expressions or symbols

Remember, it’s all about the mark being perceived as an identifying mark of the manufacturer.

Quick tips

  • Consider the placement of your mark. Location plays a huge factor in the USPTO’s decision. Pockets, breast areas, and tags are places where trademark use is expected.
  • Size and dominance of the mark matters. Small wording or design features are usually an indication of a brand mark and not decoration.


What to do when it happens

If you receive an Ornamental refusal, all hope is not lost. You can use the Trademark Electronic Application System (TEAS) to respond in either a Non-final Office action or a Final Office action.

You can also submit a substitute specimen – basically an example of the product in a different, non-ornamental form. Here’s the thing: you need to be able to prove that the substitute specimen(s) “was/were in use in commerce at least as early as the filing date of the application, prior to the filing of the amendment to allege use, or prior to the expiration of the filing deadline for a statement of use,” according to the USPTO.

The bottom line is when it comes to trademarking consumer goods, it’s not about design or content, it’s about branding of the company that makes the goods. The mark needs to identify the manufacturer of the product, not boldly display a logo or design. If you’re a t-shirt manufacturer, add your mark to the tag, pocket, or other brand-communicating location. If you’re a trademark docketing and defense service, slapping your logo on a shirt does not make you an apparel company. And, if you have trademarks to file, don’t do it the hard way. Use Name Warden to automatically file, register, and monitor your marks.

Name Warden Goes Global

Name Warden is excited to announce this week that they are expanding their platform for the first time beyond the USPTO! Name Warden is a deadline tracking and automatic docketing service for trademark lawyers. Launched in 2015, the service offers powerful, time saving tools for trademark lawyers: the ability to capture all of a lawyer’s USPTO trademarks and deadlines in about three minutes, and to track that lawyer’s filings and deadlines over time with no additional data entry.

Name Warden’s founder, Chris Gatewood experienced two major problems trying to be efficient and lean while growing his trademark practice.

  1. Legacy docketing systems are expensive, clunky, and require manual data entry.
  2. Using Outlook or Google calendar as a docketing system is not only labor-intensive, it’s also porous and therefore risky.

Chris and co-founder Michael Lamberson had a hunch that they could solve those problems, and so they built Name Warden and launched it in 2015. The platform also offers low-cost defensive monitoring of client marks within its docketing service, and a separate “Client Finder” business development data subscription.

Users have loved the combination of powerful, time saving features and ease of use, and they have been expressing the desire to add their international and state applications as well.

“Name Warden has focused on our zero-data-entry trademark docketing on domestic applications and registrations. But we had some users who wanted to use Name Warden to manage their international marks. They asked, and we built it.” said Gatewood.

With the new features, Name Warden users have an extension of their docketing and defense monitoring that includes their global trademark practice, beyond Name Warden’s automatic finding and updating of USPTO activity. All marks for any part of the world and in any state or province can be seen and tracked within the Name Warden dashboard.

“For my firm’s multi-national clients, we wanted to be able to manage international applications and registrations easily, along with the USPTO marks that Name Warden already captures and tracks for us automatically.  The new ability to do that has made Name Warden even more central to our trademark practice,” said Anthony Wilkinson, Principal of Wilkinson Law LLC.

Name Warden is excited to expand its capabilities and will continue to listen to users and add features.

Are You Following These Intellectual Property Law Trends?

It’s 2017! We’ve got a new President, the same USPTO Director, new and emerging technologies, and we’re on the brink of what economists are calling the 4th Industrial Revolution. What does all of this mean for Intellectual Property Law? A lot actually.

We rounded up some of the biggest trends and topics in Intellectual Property to give you a picture of what the future looks like – and what your firm should be paying attention to this year. Download our report: The Future of Intellectual Property.

Is it time for some law practice spring cleaning?

The trees are getting their leaves back, everything is in bloom, and if you suffer from allergies, you’re Law-Office-Spring-Cleaningfeeling the pollen count rise. Spring is here! For most of us that means it’s time to spring clean the house. But what about your law practice?

Law practice spring cleaning means sprucing up processes, knocking things off to-do lists, fixing your law office filing systems, and increasing productivity. Here are five ways to spring clean your law practice. 


You know that stuff no one likes do? Documentation, filing, billing, accounting, bill pay… Make catching up on office items part of your law practice spring cleaning. You might actually find that desk of yours under everything that’s been piling up. You’ll also breathe a sigh of relief once you’ve accomplished those pesky admin tasks.

Tech tools

Speaking of admin tasks, did you know that on average, only 28 percent of a lawyer’s work is billable? That non-billable work mostly boils down to admin stuff.  A lot of it can be automated thanks to technology. Spend some time researching and setting up new legal tech tools that will make your practice run more efficiently.

For trademark lawyers, Name Warden can definitely save some time. With Name Warden, all your marks and deadlines are in one place, it’s easy to keep up with your filings, and the set-up is a breeze. Here are 20 Law Practice Technology Tools that are worth your attention.

Task triage

Another great way to approach law practice spring cleaning is to do some task triage. What’s on your to-do list? Isn’t it time to start knocking those things off? Maybe use a new tech tool to help! List all of the things you’ve been meaning to do, sort them by importance, and assign deadlines to hold yourself accountable. Which tasks are urgent, which need to be done next week and which can be done next month? You are more likely to get through your to-do list if you take the time to organize it.


You don’t have to do everything. You shouldn’t try.  Anything that can’t be tasked to a robot should be delegated to an assistant. Take that list of tasks you triaged and see what can be delegated. Hiring help is a big step and always something of an overhead-expanding gut check.  We get it.  But we are willing to bet you’ll be very glad that you hired some support, whether it’s part time or full time.

Digital Check-up

An important item that law practices often forget about is their digital presence. If you haven’t looked at your website or social media channels in a while, make that part of your law practice spring cleaning project. Is everything on your website up-to-date? Are there changes that could be made? Have your WordPress plugins been updated? How about your blog? You should also take a look at your social media profiles. Make sure your LinkedIn profile is up-to-date and all other social media channels have proper descriptions and logos and look clean and professional.

You don’t have to tackle all of this in one weekend like you would a spring cleaning project at home. Go through each item, make checklists, delegate tasks, and assign yourself some deadlines. A little spring cleaning could get you on your way to increased efficiency and more time for billable hours.

A Timeline of the Epic Budweiser Trademark Dispute

Some trademark battles take years. Some decades. The trademark dispute between “The King of Beers”Budweiser trademark dispute and the “Beer of Kings”? Almost a century. The Budweiser trademark dispute has been going on for 77 years.

Budweiser Budvar Brewery was founded in 1895 by citizens of Budweis in the Czech Republic and is state-owned.

Anheuser-Busch, a brewery Americans all know very well, got its start in St. Louis in 1852. The Budweiser we all know and have likely sipped, however, was not a thing until after the 1870s when Adolphus Busch toured Europe to explore European brewing methods. He took exceptional notice of a Pilsener style beer that had become popular in Budweis, a city in the Czech Republic. In 1876, Anheuser-Busch introduced the United States to Budweiser. Because of the company’s early ability to refrigerate and transport bottled beer (something for they are known), the beer became a national beer brand. They registered Budweiser as an invented trademark with the U.S. Patent Office in 1878.

And thus began the dispute. In honor of the most recent ruling, here’s a timeline that shows just how long these two breweries have been fighting.

The Budweiser trademark dispute through the years


Once Budweiser Budvar catches wind that a company in the U.S. has successfully registered Budweiser as a trademark, Budvar  argues that the Budweiser trademark should have never been allowed, because Budvar has been brewing their beer for 500 years.

During that hearing, Adolphus Busch states, “The Budweiser beer is brewed according to the Budweiser Bohemian process… The idea was simply to brew a beer similar in quality, color, flavor and taste to the beer then made at Budweis, or in Bohemia.” This statement is one that has been brought up by Budvar in the many subsequent battles.

1939: Both sides agree that Anheuser-Busch was the first to trademark the Budweiser name and Budvar concedes all territory north of Panama to the American brewer.

1989: Anheuser-Busch begins expanding internationally while Budvar decides to focus on exports. Talks begin on a trademark agreement to divide up the territory around the world.

1994: Budvar decides not to sign the trademark agreement.

1996: Anheuser-Busch registers the Budweiser name with the European Commission and Budvar challenges.

2004: The European Commission grants Budweiser Budvar N.C. with the right to use Protected Geographical Indications “Budějovické pivo” and “Českobudějovické pivo”.

2009: The European Court of First Instance upholds a ruling refusing AB InBev permission to register the Budweiser brand as its trademark. AB InBev keeps the Budweiser or Bud name in 23 of 27 European countries, including the U.K., where courts have ruled both companies can call their beer Budweiser. Budvar is granted exclusive control of the name in Germany.

2010: Anheuser-Busch InBev NV loses their appeal to register its Budweiser beer brand as a European Union-wide trademark.

2010-2011: Budvar wins 88 of 124 disputes and holds exclusive rights in 68 countries, mostly in Europe, preventing AB Inbev from selling its Budweiser brand in some key markets, including Germany.

2012: Budvar rejects an AB InBev proposal for a global settlement.

2013: The UK Supreme Court confirms that both breweries can use the mark simultaneously in the UK.

2014: Budvar loses a decision in Portugal to register its beer under the Budweiser name in the country after AB InBev purchases Budweiser trademarks in Europe from Budweiser Brewery Samson.

2016: Tribunal da Propriedade Intelectual, a Portuguese court in Lisbon, upholds the 2014 ruling prohibiting Anheuser-Busch InBev from selling beer under the Budweiser name in Portugal.

So there you have it. A trademark war that has been going on for 77 years!

What does this mean for pilsner drinkers?  If you want to drink the American version of Budweiser in Europe, you’ll have to order a “Bud” due to trademark agreements. If you want to drink a Budweiser Budvar in America, you’ll need to order a Czeckvar.  Cheers!


Brexit Right… to the Trademark Office, as Applicants Vie for Brexit Trademark Rights

Anytime there’s a catchy new buzzword making headlines, you can bet there will be a slew of trademark filings. More and more, we’ve seen the trend of someone or multiple someones trying to register a trademark for some news item, meme, or new buzzword.  Brexit, the term dubbed for Britain leaving the European Union, is no exception. A number of players in the US have filed to register the Brexit trademark, and it’s already registered in its native UK.

Over in the UK, the term has already been registered by Mark Kingsley-Williams, founder and director BREXIT-Trademarkof Trademark Direct, a UK trademark services company. But Mark isn’t using it for a cheeky new product, he told Trademark Review that he secured it in order to protect it from others who might try and stifle debate. According to Mark, “I have an interest in politics, and I noticed that the term Brexit was out there and would become widely used as the debate moved forward. I thought the term should be free for anyone to use during the referendum campaign, and so I registered it without the intent of using it for my own commercial ends, but to protect the referendum debate so it couldn’t be stifled by someone else potentially registering the term and having an agenda in their enforcement of it.”

Well it’s different story here in the U.S. While there is no clearly senior user of Brexit in commerce for their particular goods, several applications have been filed to register a BREXIT trademark. Here’s what we found:

Word Mark: BREXIT

Goods and Services: IC 033. US 047 049. G & S: Hard cider


Filing Date: June 24, 2016

Current Basis: 1B

Original Filing Basis: 1B

Owner: (APPLICANT) Boston Beer Corporation CORPORATION MASSACHUSETTS 1 Design Center Pl., Ste. 850 Boston MASSACHUSETTS 02210


Word Mark: BREXIT



Filing Date: June 24, 2016

Current Basis: 1B

Original Filing Basis: 1B

Owner: (APPLICANT) Quicksilver Scientific, LLC LIMITED LIABILITY COMPANY COLORADO Ste. 101 1376 Miners Drive Lafayette COLORADO 80026


Word Mark: BREXIT

Goods and Services: IC 025. US 022 039. G & S: Clothing, including t-shirts and hats


Filing Date: June 24, 2016

Current Basis: 1B

Original Filing Basis: 1B

Owner: (APPLICANT) Vivek Jayaram INDIVIDUAL UNITED STATES 33 N. LaSalle Street Suite 2900 Chicago ILLINOIS 60602

We’ve got a hard cider, a dietary and nutritional supplement, and a clothing line. What’s next? It will be interesting to see in late September whether the USPTO cites any of them against the other. We’ll keep you updated!

Should IP Attorneys Use Flat Fee or Hourly Fee Billing?

The number of hours you bill per week is a common concern in the life of a lawyer – especially if youfees work in a law practice with other lawyers. It can be a pain to always watch the clock and tricky to estimate costs to clients. Billing by the hour and watching the clock is easy and safe for the lawyer, but causes clients a whole lot of heartburn. It is not the only way! For some attorneys (like Intellectual Property Attorneys), it can be easier on the client and the attorney to use a flat fee for legal services. If you’re on the fence about how to charge, here are some things to consider in the flat fee vs. hourly fee debate.

The Pros of Flat Fees

Charging flat fees has a lot of pros, and for IP Attorneys, it can make more sense than billing hourly rates.

For one, there’s a matter of tracking time. Who wants to constantly monitor their time for each and every task they perform? It makes the work seem robotic and it’s easy to make a mistake. Forget an email here and a phone call there… those .1 and .2 hours add up eventually.

Flat fees also force you to be more efficient – leaving more time to work on other projects and perhaps end up billing more than you would have.

Time is also not a great indicator of value. After your first hundred trademark registrations (or if you use NameWarden), the time it takes you is not equal to the value you are providing the client. It’s the same for other tasks like portfolio management or monitoring marks.

Let’s move past time and onto client perception. Let’s face it – no one wants to enter into an agreement with no idea of how much the work is going to cost. In your client’s eyes, they are purchasing services, not time. They do not actually care about renting your afternoon. They want you to answer a thorny question or drive a business result. Flat fee pricing makes it easy for a client to know what they are about to spend and it removes the barrier of worrying about time and the uncertainty of cost.

The Pros of Hourly Fees

Hourly fees are how many law firms base their compensation structure. Charging flat fees also means you need to change how you assess promotions, compensation, and bonuses.

In terms of trademark office actions, enforcement, and litigation, it may be hard to asses a flat fee for a process that could go on longer than expected. Can you really calculate all of the time spent meeting, emailing, calling, and researching before the case even happens?

Clients also tend to be more considerate of your time when they know they have to pay for every minute of it. That means less frequent emails, phone calls, and requests – all of which can be time consuming.

Which to choose

The beauty is that it doesn’t have to be one or the other. You can decide to charge flat fees for things like copyright, trademark, and patent registration and then bill hourly for office actions and adversarial matters.  You can your clients which they prefer and figure out what makes the most sense for your practice.

One note: If you decide to go entirely flat fee based, spend the little bit of time it takes to get specific in the scope of each project. This will prevent you from losing your shirt on an indecisive client or a case that blows up.

Hey Bartender, There’s a Tire in My Beer: New Beer Trademark Filings That Amuse Us

As beer aficionados, we love looking at trademark filings for new beer names. They say naming the beer is the funnest part of the process. We just love discovering the new names before they hit the shelves. In this installment of our New Beer Brands round-up, we have the usual beer lingo word play, but also love, death, references to the good book, and some weird animals. Cheers!

New Beer Trademark Filings


But first, as we head into Memorial Day, we have to give a shout out to Budweiser’s bold move. This year to help inspire Americans everyone to celebrate all things American, they’ve changed their name to America. The “America cans” will be sold through Memorial Day, Labor Day, Independence Day, and the presidential election. Yep, if you’re a Budweiser drinker, you’ll be drinking America until the Presidential election is over.

One side note is that owner AB InBev is not actually an American company, it’s Belgian. But here’s the trademark question: Are they looking to register “America” for beer?  Apparently not.  They are just putting it on the cans.  In addition to the name America, they are replacing “King of Beers” with “E Pluribus Unum”; the Anheuser-Busch logo will now read “US”; and “Trademark Registered” on the can is being changed to “Indivisible Since 1776.”


This has never been trademarked? 

Some of you may not know that the Maryland brewery National Bohemian is actually owned by Pabst Brewing Company. It was kind of a surprise to see this one come through, as we would have thought it’d been registered a long, long time ago.

Company: Pabst Brewing Company, LLC

Serial Number: 87013564


Beer lingo word play

  • SO IT GOSE (Serial Number: 87021731) – Boston Beer Company
  • THE HOPNIPOTENT (Serial Number: 87011834) – Hunga Dunga Brewing Company
  • WITTE CHICKS DIG ME (Serial Number: 87021659) – Gino’s East Services

Biblical References 

Sometimes beer names can get biblical…

  • CANE AND EBEL (Serial Number: 87017859) – Two Brothers Brewing Company
  • BREW UNTO OTHERS (Serial Number: 87021848) Yards Brewing Company

Weird animal references

  • IGUANA BAIT (Serial Number: 87020611) – FLORIDA KEYS BREWING CO
  • TWISTED HIPPO (Serial Number: 87018858) – Twisted Hippo
  • POMPOUS PELICAN (Serial Number: 87019247) – Southern Craft Brewing Company
  • RIGHT SIDE AMBER (Serial Number: 87021914) – Post Brewing Company


At first glance we thought this one might be related to the exceptional brewery Firestone Walker. But upon further review we think it’s somehow related to tires. Check out the name of the company who trademarked it. No tires in our beer! 

Company: Bridgestone Brands, LLC

Serial Number: 87004115


A morbid one

And some amorous references to round out this round-up

  • LOVEY DOVEY (Serial Number: 87021954) – Post Brewing Company

Google Delivery Drones?

Google’s recent trademark filings provide an interesting window into what the tech giant is thinking about.  Recently, it’s been drones!

As a multi-national technology company, Google always has (seemingly) a million projects in the works. Beyond the large array of services we all use and love (Gmail, Google Docs, Google Ads), Google also works on larger scale technology projects like Google Fiber and Google’s self driving car. It’s really no surprise that Google is getting into the drone business. But the delivery business? Look out Amazon! Check out Google’s new mark registration for drone management.

Google is working on a thing called “Project Wing” not just for drone-related software, but also as branding for its own drones and for drone-based delivery services.Delivery Drones

Here is the recent USPTO filing:


Description: Class 009 : Software for browsing and purchasing consumer goods for delivery; navigation apparatus for autonomous aircrafts and drones ; Class 012 : Drones; autonomous aircraft ; Class 039 : Transportation and delivery services of goods by air; management of autonomous aircraft and drone navigation; routing of autonomous aircraft and drones; aeronautic navigation services; expedited shipping service of goods for others