is a partner in Ulmer & Berne’s Chicago office, where he litigates trademark and false advertising disputes on behalf of a number of the world’s largest and most sophisticated brands. He also manages prosecution and maintenance of trademark portfolios. He is a member of the International Trademark Association (INTA), where he serves on the Trademark Enforcement Committee.
For more information or to contact Tom, please visit his Firm Profile Page.
Climate activist Greta Thunberg is reportedly planning to register her name as a trademark based on her fears that third parties will exploit her identity for commercial gain. While registering a trademark has many advantages under U.S. law, she can likely accomplish her goal of protecting her name without the cost, delay, and uncertainty associated with the trademark registration process. As an initial matter, a trademark does not exist in the abstract. It is only protectable in connection with particular identified goods and services. Consequently, her trademark (or service mark) application would need to identify the goods or services she offers or intends to offer under the mark. To obtain registration, she would ultimately need to provide specimens showing technical trademark (or service mark) use. 15 U.S.C. § 1051.
On October 30, the Federal Circuit Court of Appeals reversed a decision from the International Trade Court invalidating the Converse Chuck Taylor sneaker design trade dress. Converse Inc. v. ITC, No. 2016-2497, 2018 WL 5536405 (Fed. Cir. Oct. 30, 2018). At first glance, this appeared to be great news for Converse. However, the decision highlights multiple obstacles that Converse, and other brand owners, will continue to face as they seek to enforce product design trade dress in the US.