A Law Firm in Montgomery County, MD – Focused on Your IP Challenges & Business Innovation Protection

Barbara Berschler

The Law Office of Barbara I. Berschler is a well-established intellectual property and business law firm. Our office is dedicated to help our clients protect and expand the reach of their businesses and brands. We offer a wide range of services to handle matters concerning copyrights, trademarks, licenses, contracts, general business, entity formation and administration. Ms. Barbara I. Berschler can also serve as a USPTO Domestic Representative and Maryland Resident Agent.

The Berschler Law Office, located in Rockville, MD, can be easily reached by clients from Montgomery County, Prince George’s County, Bethesda, North Bethesda, Rockville, the District of Columbia, Alexandria and Arlington Counties of Northern Virginia. Consultations by telephone are always welcome.

A leader in intellectual property law in Maryland

Barbara I. Berschler, as a business lawyer and intellectual property attorney, has built a reputation for excellence by providing high-quality legal services to her business clients. Throughout Maryland, Northern Virginia and Washington, D.C., Barbara Berschler brings more than 30 years of experience looking out for the needs of her business clients, whether they operate in the continental United States or internationally.

Why Copyright is Important to Protect Your Business Intellectual Property

IP News & Other Musings

Is there a “Proof of Use in Commerce” test for Purposes of Proving Trademark Infringement?  The Federal Circuit in Versatop Support Systems v. Georgia Expo (2018-1208), examined another aspect of the “proof of use in commerce” requirement in federal trademark law under the Lanham Act. Unlike the conclusion it reached in the Simy Corp case that I recently mused upon (i.e., an applicant must provide the USPTO with sufficient evidence of its “the bona fide use of the mark in the ordinary course of trade, and not a use made merely to reserve rights in a mark.”   15 USC §1127).  Here the Federal Circuit considered whether a similar “use in commerce” test applies when a trademark owner alleges infringement of its mark by another.  The resounding answer was “No.”

What Works as “Proof of Use in Commerce” for Trademark Registration with the USPTO? Frequently my clients are puzzled as to what kind of specimen to submit to the USPTO when trying to prove their “ bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 USC §1127.  A big question to resolve is whether the specimen you wish to submit will be rejected as mere advertising or be accepted as a point of sale display?

Supreme Court clarifies when copyright registration occurs. What now?  The Effective Date of copyright registration is important to know because without it (17 USC §411(a) of the Copyright Act), a court does not have jurisdiction to hear a copyright infringement case.   In Fourth Estate Public Benefit Corp. v Wall-Street.Com, the Supreme Court unanimously ruled that registration of a work exists when the Copyright Office registers the copyright in the work, not when an applicant submits an application.  While it is great to have clarity, this answer does not solve the dilemma of a copyright owner wanting to request the special relief of statutory damages and attorney fees (17 USC §504(c)) against an infringer because such remedies are available only if registration precedes the infringement.

How can a musical act limit the use of its name by a former band member? The 1st Circuit Court of Appeals in Scholz vs Goudreau examined a settlement agreement (“the Agreement”) signed by the remaining band members and Mr. Goudreau which sought to limit his future use of the band’s name “BOSTON.” With a change in the makeup of a musical act, as well as any business, defining the ways in which a former member may and may not use a band’s name is a serious matter. In this case the band tried to resolve the question by way of the Agreement. However, their problem was that the Agreement’s language was not broad enough to encompass all Mr. Goudreau’s possible uses. By way of example, the Agreement limited his use of the phrase “formerly of BOSTON” to when he provided biographical information. However, Mr. Goudreau allowed marketing information for his new band to use the phrase “original and founding member of the band BOSTON.” The takeaway from this case is: Definitely have a written agreement. But also, carefully choose the language describing use limitations so as to cover unforeseen situations.

Before adopting a new mark, a business owner should consider the Trademark Trial & Appeal Board (“TTAB”) ruling in Rebel Wine Co., LLC vs Piney River Brewing Company. The TTAB found that the registered mark “Masked Bandit” used in association with beer should be cancelled in light of the earlier registration of the mark “Bandit” which is used in association with alcoholic beverages except beer.  The similarity of the marks weighed heavily on the side of Bandit.  This, coupled with the similarity of the products and the channels of trade, clinched the decision. This example speaks volumes as to the care that should be taken by a business owner before choosing their mark to avoid a similar fate either during the USPTO application stage or even after obtaining a registration. For the full opinion click here.

Play-Doh hit the jackpot and became one of 13 active registrants who have successively registered a smell with the USPTO. The description of the scent reads like a review for wine, i.e., “slightly musky,” “overtones of cherry.”  USPTO Registration Certificate

Not all trademarks need to be registered with the USPTO to obtain protection from infringement.  According to a 5th Circuit decision, Viacom can claim common law trademark rights in the name “The Krusty Krab,” a fictional restaurant portrayed in Viacom’s animated TV series “SpongeBob SquarePants.” The Circuit Court affirmed a summary judgment against IJR Capital Investments which had adopted the same name for its seafood restaurants. More Details