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Theodore Chiacchio

is the Founder and Owner of Chiacchio IP, LLC, a law firm that specializes in intellectual property law. Mr. Chiacchio has been practicing intellectual property law for over 15 years. He regularly prepares and prosecutes U.S. patent and trademark applications. Mr. Chiacchio counsels clients regarding a wide range of intellectual property issues, including patent, trademark, copyright, and trade secret issues. Mr. Chiacchio prepares cease-and-desist letters for clients whose intellectual property rights are being infringed or misappropriated. Mr. Chiacchio has also spent well over a decade litigating intellectual property disputes on behalf of his clients. He has served as lead trial counsel in federal trademark infringement, copyright infringement, and trade secret misappropriation litigation; and has played an integral role in five patent infringement trials.

For more information or to contact Mr. Chiacchio, please visit his Firm Profile Page.

Recent Articles by Theodore Chiacchio

Third-Party Trademark Usage and Likelihood of Confusion

When examining trademark applications, the U.S. Patent and Trademark Office (USPTO) assesses whether the applied-for trademark presents a likelihood of confusion among consumers as compared to other registered U.S. trademarks. In making this determination, the USPTO considers a list of factors first laid out in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357 (C.C.P.A. 1973), commonly referred to as the Du Pont factors. One of the Du Pont factors is the number and nature of similar marks in use by third parties on similar goods or services. Id. at 1361. This article examines the significance of third-party usage evidence to a likelihood of confusion analysis.

Guideposts for Determining Whether a Mark is Functioning as a Trademark

Under the Lanham Act, a trademark is any combination of words, names, symbols, or devices that are used to identify and distinguish goods or services and to indicate their source. Am. Express Co. v. Goetz, 515 F.3d 156, 159 (2nd Cir. 2008). Therefore, a trademark, in order to be deserving of protection as such, must be used in such a manner that it designates the source of the goods or services (even if that source is unknown). 15 U.S.C. § 1127. (Unless otherwise indicated, references to “trademarks” are intended to encompass “service marks” as well.)