Jacques L. Etkowicz – Trademark Expertise
Mr. Etkowicz’s focus on trademarks includes responsibility for hundreds of foreign and domestic marks from the portfolios of a number clients, including large corporations to individuals. Mr. Etkowicz understands that no matter how large a client is their trademarks are an important aspect of their business and “who they are.” As such, he devotes a significant portion of his time to various aspects of trademark matters, including prosecuting domestic and international trademark registrations, client counseling (such as coordinating trademark searches and providing trademark “right-to-register” and “right-to-use” opinions), litigation, and inter-partes matters (such as oppositions and cancellations).
Mr. Etkowicz has advised numerous clients on the proper use of their trademarks to establish the greatest level of protection. He has prosecuted countless trademark and servicemark registration applications, and has helped many clients, both large and small, understand that their trademarks must be used in certain ways in order to maximize the protection available under state and federal laws.
Mr. Etkowicz understands the complex laws that apply to trademark use and registration and uses this knowledge to overcome the various challenges to registration that may be faced by his clients. Mr. Etkowicz has also written many opinions which address both use and registerability of a client’s potential mark. Mr. Etkowicz has saved his clients valuable time and significant expense in helping them early on in selecting a mark which not only serves their business needs but also can be registered and used free of real liability risk.
Mr. Etkowicz has been involved in several oppositions/cancellations before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB), and has assisted his clients in developing agreements to co-exist with owners of other trademarks, both for the purpose of settling or avoiding oppositions/cancellations and for help in securing trademark registrations. A portion of Mr. Etkowicz’s trademark litigation experience is detailed in his Litigation biography.
Among the inter partes proceedings (i.e., oppositions and cancellations) for which Mr. Etkowicz acted as counsel before the PTO Trademark Trial and Appeal Board (TTAB) are the following (successful client highlighted in bold):
Kleerdex Company v. TC Millwork, Inc., Cancellation Proceeding 32,098 (TTAB 2001) (petition granted to cancel Registration No. 2,400,181 for VIDEX)
Kleerdex Company v. TC Millwork, Inc., Cancellation Proceeding 91-150013 (TTAB 2001) (petition granted to cancel application Serial No. 76/079,580 for VYDEX)
Kleerdex Company v. Skydex Technologies, Inc ., Opposition Proceeding Opposition Proceeding 91-153029 (TTAB 2002) (dismissed per agreement of the parties)
Kleerdex Company v. Skydex Technologies, Inc ., Opposition Proceeding Opposition Proceeding 91-153297 (TTAB 2002) (dismissed per agreement of the parties)
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