For more than 20 years, Texas personal injury lawyer Jim Adler has called himself The Texas Hammer® and more recently El Martillo Tejano®.  After spending millions in television, print, and billboard advertising, Jim Adler with his iconic sledgehammer has become one of the most recognizable personal injury attorneys in Texas.

Adler also uses these trademarks in internet advertisements. He purchases Google “keyword ads” using the phrases JIM ADLER, THE HAMMER, TEXAS HAMMER, and EL MARTILLO as search terms. When a consumer performs a Google search using any of these trademarks as a search term, Adler’s advertisements appear.

A legal marketing firm also began purchasing these same phrases as keyword ads so that the firm’s click-to-call ads would appear alongside Adler’s ads.  The click-to-call ads caused the user’s phone to make a call to the firm’s call center rather than visiting the website.  When the firm’s call center answered the telephone, they used a very generic greeting in what Adler claimed was a clever bait-and-switch effort to convince the consumer to engage lawyers referred through the marketing firm and not Adler’s firm.Continue Reading Using an Invisible “Texas Hammer” May Cause Trademark Confusion

The last trademark-centric article posted, entitled, “Just a Picture on a T-Shirt: The Basics of the Most Common Trademark Application” was intended to be a two-parter.  The article revealed a hole in the trademark regulation discussed later, and the second part of the article needed to await a solution to that hole, which also appears below.  Let me explain . . . .
Continue Reading Just a Picture on a T-Shirt (Part 2): The Solution

If trademark applications were Chinese food, the logo on the front of a shirt would be General Tso’s chicken.  It’s what “Piano Man” is to the bar crooner—a fan favorite, a crowd pleaser.  So it would make sense that familiarity with filing of trademarks would necessarily include familiarity with this particular process.  After all, you wouldn’t open a pizza restaurant without access to pepperoni.
Continue Reading Just a Picture on a T-Shirt (Part 1): The Basics of the Most Common Trademark Application

 “Empire Records” (1995), A conversation between Ethan Embry (“Mark”) and Rory Cochrane (“Lucas”):

Mark: Oh! I’ve decided I’m going to start a band.

Lucas:  Really?  [Leaning in], the first thing you need, is a name.  Then you’ll know what kind of band you’ve got.

Mark: Yeah. I know.  I know.  I was kinda thinking about, umm, “Marc”.  What do you think of that?

Lucas:  Is that with a “C” or with a “K”?

Mark: Well, my name is with [checking his nametag], a “K”, so I was thinking maybe my band could be with a “C”.  So that way, its kinda like that psychedelic, you know, trip thing.

So Mark, in an effort to know what type of band he has, goes to the Trademark Electronic Search System and conducts a search of *Ma{“r”1:2}{“ckqxh”1:2}*[bi,ti] in International Classes 009 (downloadable music sound recordings) and 041 (Live performances by a musical group).  He believes the results to be promising and decides to move forward with his trademark application.
Continue Reading Bona Fide Intent to Use as Applied to “Empire Records” (1995)

If you make your living from selling or performing your original works of authorship, it is good practice to register that work of authorship with the United States Copyright Office.  Registration creates a public record of your ownership, and if done within 3 months of publication or prior to infringement, it gives the author the right to seek statutory damages and attorneys’ fees from an infringer in a lawsuit.  Most importantly, though, registration is prerequisite to bringing a copyright infringement lawsuit in federal court.

Many authors, however, don’t bother to register their works until after an infringement occurs. 
Continue Reading Do You Have to Register Your Copyright Before Filing Suit? The US Supreme Court Will Soon Decide.

When the Texas Uniform Trade Secrets Act (TUTSA) was enacted, it removed trade secret theft as a possible basis for asserting a Texas Theft Liability Act (TTLA) claim. One of the biggest impacts of this change was the recovery of attorneys’ fees for trade secrets cases. Under the TTLA, attorneys’ fees were available to prevailing parties. Under TUTSA, attorney’ fees were only available to a prevailing party if (1) the claim for misappropriation was made in bad faith; (2) a motion to terminate an injunction is made or resisted in bad faith; or (3) willful and malicious misappropriation exists. Thus, with the enactment of TUTSA, attorneys’ fees became much more difficult to recover.

Importantly, though, litigants must remember that the TTLA still applies to misappropriations that took place before TUTSA’s September 1, 2013 enactment date. The Fifth Circuit case of Automation Support, Inc. v. Humble Design, LLC, No. 17-10433, 2018 WL 1474937 (5th Cir. Mar. 26, 2018) provides a good reminder of this.
Continue Reading Don’t Forget about the Texas Theft Liabilty Act When Analyzing a Trade Secrets Claim

Companies often debate as to whether their software code should be treated as a trade secret or should be registered as a copyright. There are many variables to consider, but perhaps the most important is whether the company wants its source code to remain a secret. The Fifth Circuit Court of Appeals provided this recent breakdown of the intellectual property considerations for software code:
Continue Reading What is the Best Intellectual Property Protection for Software?