LOPRESTI PLLC Is Growing: Meet our newest team members, attorneys & consultants

LOPRESTI PLLC Team

LOPRESTI PLLC is growing.

We are pleased to announce several important additions to our team and capabilities as we continue building a different kind of law firm—one that combines sophisticated legal counsel with practical business insight, industry experience, and access to trusted professionals across multiple disciplines.

Nicholas R. Wallace — Of Counsel

Nico brings sophisticated corporate, governance and strategic counseling experience developed at leading international law firms, including Milbank and Jones Day. Nico advises businesses, entrepreneurs and organizations on corporate governance, transactions, emerging ventures and complex strategic matters, with experience spanning technology, sports, media, the arts and other industries.

Christian Rain Castañeda — Of Counsel

Rainy, a former prosecutor with the Brooklyn D.A.’s office, brings experience in investigation, litigation strategy, courtroom advocacy and trial preparation. Her addition strengthens LOPRESTI’s ability to represent businesses and individuals confronting complex disputes and other high-stakes matters.

Kevin Fox — Media & Entertainment Consultant

We are also delighted to welcome Kevin Fox as a consultant to our growing Media & Entertainment practice. Kevin brings decades of firsthand experience in film and television as a writer, producer, executive producer and showrunner. His career includes writing, producing and showrunning major film and television productions. Kevin’s addition reflects an important part of our approach to entertainment: creative clients benefit from advisors who understand not only the law, but also the business and creative realities of the industries in which they work.

READ Kevin’s latest article:
LOPRESTI PLLC Media & Entertainment Consulting: Why us? Why now?

Meet our Team

Expanding Our Resources Through HBK

LOPRESTI PLLC is also pleased to be working with our friends at HBK, a multidisciplinary financial services firm whose professionals provide tax, accounting, audit, business advisory, valuation, financial planning, wealth management and related services. The relationship expands our ability to help clients address business challenges that don’t stop at the boundaries of traditional legal advice.

More Capabilities. One Trusted Team.

With our expanded team and professional relationships, LOPRESTI PLLC can help clients across the lifecycle of a business or creative vision:

Business & Corporate

Corporate governance • Outside general counsel • Contracts • Transactions • Business formation and restructuring • Strategic counseling

Litigation & Dispute Resolution

Commercial litigation • Business and ownership disputes • Arbitration • Investigations • Employment disputes • Trial and appellate matters

Brands & Intellectual Property

Trademarks • Brand protection • Licensing • Intellectual property disputes • USPTO and TTAB matters

Media & Entertainment

Film • Television • Publishing • Content development • Production • Talent • Licensing • Intellectual property • Entertainment transactions and disputes

Our philosophy remains simple: understand our client’s vision first, then assemble the people and resources necessary to achieve it.

Whether you are building a company, protecting a brand, negotiating an important transaction, developing creative content, planning your next stage of growth, or confronting a serious dispute, our team is ready to help.     

Contact us now

Schedule a meeting for a free consult. Better yet, fly us out to your factory, studio, business or venture so we can see exactly “how the sausage is made” or what your vision is. The more we know, the better we can help. No charge unless and until we provide you with a strategy and you approve. Contact us to find out more.

Legal Strategy. Business Insight. Creative Vision.

LOPRESTI, PLLC (c) 2026

LOPRESTI, PLLC publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only.

LOPRESTI PLLC Media & Entertainment Consulting: Why us? Why now?

LOPRESTI PLLC media & entertainment

After spending over 30 years in the film and television industry and over 40 in entertainment (including the years I worked in physical production and security touring the music world with major rock stars), I have rarely seen consultants used to good effect.

I am aware that’s a strange thing to say as we launch an entertainment consultant business. I understand the hesitancy to engage consultants and the reasons for it.  Those reasons are valid.  Too often consultants are hired by one party with a specific vested interest to solve specific problems, from a specific point of view.

In entertainment they are hired to ‘improve the story’ without knowledge of financing or production issues; to improve the ‘budgetary problems’ without understanding the effect on story; to find cast and directors without understanding whether they are right for the vision of the project – often only seeing what will ‘add value’ on a balance sheet to get a green light.

The entertainment business employs brilliant people
who are limited by their own brilliance.

The problem with most consultants in the entertainment industry is that this business is ‘show business’ and both of those words do a lot of work in that phrase, and are often opposed to one another in the execution of a project. Is it art or is it commerce? Obviously, it is both, and the business relies on not only financial acumen and efficient money management, but also creativity, originality, and effective and efficient physical production. The business employs the most talented people from across the globe in all of those positions – and yet projects often have an unpredictable success and failure rate in spite of that.

The entertainment business employs brilliant people who are limited by their own brilliance: the director with a unique artistic vision, but no sense of budgetary limitations; the writer who can craft an emotional, engaging story, without a sense of scope, time constraints, or audience demographics; the studio executives who are brilliant at risk assessment, but overcompensate and limit originality; the financiers willing to invest, but without experience in what changes will save money while not compromising the vision that will engage an audience. Each of our brilliant people have different perspectives and goals – and aligning them when each group essentially speaks a different creative language may require a translator.

This is due to the fact that our brilliant people are siloed, with hard-earned knowledge and perspectives that are hard to communicate to other brilliant people involved in the same projects with different backgrounds and experience. Clearly, an MBA teaches very different skills than a lifetime of acting or writing; no creative person will have the knowledge a studio executive has; no creative executive will fully understand the financing or advertising needs; and understanding a story in-depth is a craft most can understand watching the finished product, but are unclear how to create the ‘lightning in a bottle’ that creates that product.

So what’s the solution?

The solution is a communication and translation strategy that is able to work with all parties, from the initial creation through financing, production, and marketing all the way through release. Each stage is important, and as we all know, any stage that fails can mean that the project fails.

As a collaborative, creative industry based on unique creations, the application of processes and procedures for creating, developing, and producing content that can generate profit has never been completely codified. In fact, it cannot be completely codified without losing originality. However, just because it cannot be completely codified does not mean that there are not processes and procedures that can be put in place to reduce risk.

One of the issues to putting these processes and procedures in place is the very nature of the business and the historical deal structures – deal structures that add expensive experts from every field with producer titles to solve each portion of an issue in isolation while driving up the very budgets that need to come down, or bringing the budgets down while undermining the story that would have made more money in the long run.

This is where our comprehensive consultation comes in – helping to design a successful project from the ground up, without taking ownership of the project or weighing it down with production fees, titles, and creative opinions that are unwanted.  Consultants can help engage a vision from the beginning in ways that encourage writers to keep financing and budgetary concerns in mind, prior to production, without us becoming involved in ways that take ownership.

Consultants can also observe and analyze films and shows in production to find efficiencies without compromising the visions of writers and directors. They can offer advice on the most appropriate actors for getting a greenlight, not just churning out lists of names that might be valuable – but not in these particular roles.

Our role is to minimize risk while maximizing collaboration to create a shared vision that can lead to success.  To do so, there are certain foundational strategies that can be applied to every project to maximize the chance of success.  Unfortunately, there are often structural and historical obstacles to these strategies, not the least of which is the almost superstitious belief that every success is ‘catching lightning in a bottle’.

This phrase, among others, is applied too often because the varied professionals in the industry with expertise do not understand the other professionals involved and view a successful collaboration as luck and not a strategic design. To remedy this, communication and education on one another’s area of expertise is important for a variety of reasons: to build respect for each so that the creative process can be improved; so that risk can be minimized; visions can be shared; budgets can be made more efficient; and audience reaction can be more predictable.

The collaboration in our collaborative art is too often treated as conflict and problematic rather than being a source of inspiring creativity. Yet, when the correct communication pathways are opened and a common vision can be facilitated, by consultants, if no one else, risks can be reduced.

The financial model is not the industry standard ‘attachments’, although that can be accommodated in certain circumstances as well – but a ‘pay as you go’ consultant model that will not weigh down the finished product.  Our in-house legal team can insure that NDAs are airtight, the expenses are predictable and finite, and that all elements of the process are legally protected as well.

Our role is to minimize risk while maximizing collaboration
to create a shared vision that can lead to success. 

How does this work and what are we, as consultants offering to solve these issues?  Let’s start at the beginning and how we might be effective in the creative process, for simple fees paid by the hour or particular portion of a project. Potential services for creators, writers, producers and directors might include:

  • Project Development: from start to finish, focusing on brand development and expansion.
    • Exploring your established brand/ known strengths/ audience and demographics/ reach and ways to use those to expand and grow your business based on that foundation.
  • Brainstorming Concepts: Using foundational strengths, we can identify areas for growth and expansion, interests and passions. Once identified, we will align you with possible markets and formats – in other words, we will guide you to help create what the markets are interested in buying.
  • Development of Scripts: From the initial brainstorming concept, we will refine the exact format that best suits your project and the market from character development, format, structure, tone, visual and sound style will be analyzed and applied as we develop story, them and everything from a full pilot to seasons long arcs.
    • In the development phase we can also advise on how the development might also affect future production financing. How many times have we seen a brilliant script that is deemed ‘unmakeable’ due to budget and production constraints? For example, a visionary ‘locked room mystery’ that is set on a sailboat, at night, in the middle of the Pacific during a storm may be exciting – but does it need all of those elements to retain its essence?  Can we lose the storm? Set it on an island instead?
    • In examining this process, it is important to retain the elements most important to the creators that will also be important to buyers.
  • Development of Pitch Deck: With current pitching standards, we recognize that pitching is an art form and the pitch deck is the foundation of that. We will ensure that your deck is formatted according to industry standards and is ready to present to the industry.
  • Creating the Leave Behind: A more ‘text-heavy’ version of the pitch deck, the Leave Behind is the summary of your project with both visuals and the full pitch, which will include a large portion of your format (which we can also develop with you).
  • Sizzle: If necessary, we will brainstorm, organize and help develop your 2–5-minute sizzle reel, from concept through editing, music, and final cut.
  • Pitch Performance Coaching: Pitching is performance and is a sales skill that is very different from writing, directing or producing. This is one of those areas where knowing the skills of other professionals (actors) can aid in your delivery, while knowing the needs of buyers will ensure that you are selling what they are looking to buy. The framing of your pitch deck as a sales tool and the performance are make or break to getting to the next step of development.
  • Targeting Buyers: Once the pitch and material are ready, we will help advise on potential buyers and partners in this ever-changing business.
  • Packaging: In a competitive market, packaging can help sell your project as long as the elements (actors, directors, pods, and producers) are added value. We can help determine which elements will actually add value at which targets so that the project does not get weighed down with elements that do not add value everywhere.
  • After Sale: Whether it is a script sale, a pilot sale, a development deal (studio or independent) or a greenlight, our legal terms can advise on contracts and paths to production.

In the next stages of development, we can advise not only creators, writers, producers and directors, but also PODs, producers, and studios:

In Development – once a deal is made, a project is far from completion and we can help advise on next steps, whether hired by individuals, producers, or studios. The translation of notes between executives and creatives is often a challenge and can lead to ‘development hell’ – not because of problematic notes, but because of the interpretation of notes. A third party whose only job is to facilitate a common vision can be priceless in this process. We can also:

  • Interpret and take notes from all parties involved while maintaining a common vision for the project. Implementing those notes for production to accommodate the input of physical producers, schedule, actors, time and budget constraints is also possible.
  • Guide creatives and the studio through the process hiring a writers’ room, gathering writing samples, analyzing strengths against potential needs and deciding which writers will use their strengths to support the potential deficits of others in the room: Who is strong in the room? Who is strong with structure? With character? What levels will support a strong staff?
  • Demonstrate how to run a writers’ room – once hired, we can analyze both staff and story to guide you in how to run the room efficiently, from brainstorming to breaking a season and episodes, outlines and scripts. Scheduling and deadlines will be discussed as well as how to assign scripts, do rewrites and guarantee the scripts maintain the vision of the show.
  • Implement procedures to write for production, including establishing standing sets, days in/days out, night shoots, cast size, number of locations, etc.

In Production – The best scripts do not guarantee a successful show, as every step is a step to potentially add value or undermine the vision of the show. Focusing on studio, producer, creator, showrunner and director support, we can advise on:

  • Casting: There are various strategies to casting, depending on the project. It can provide financing and marketing opportunities, but can also backfire and make projects too expensive, or wrest the control of the vision from the creators. Depending upon budget and buyer, the casting will be very different in intent.  All of this must be taken into account as casting is a key element to maintaining the vision on screen and too often is rushed or short-sighted resulting in poor screen chemistry, compromising success.
  • Hiring & Managing: Hiring and managing key relationships in production, as a well-run set can save time and money that is hard to calculate. We can advise on how to establish a set culture, including defining roles and boundaries.
  • Managing directors: What specific styles will add value to the show? How well does the director work with showrunners? Actors? Crew? Are they working inside their established genre or is a talented director available that wants to stretch their vision – and is that worth it? Does the writer/ producer understand the distinctly different roles of a director in film versus episodic television? 

The same analysis and keys to managing personnel holds true for editors; department heads and crew; actors and actor relationships with the departments; establishing processes and procedures for producing, including establishing meeting schedules and timelines for all departments and episodes; examining production for waste and efficiencies (too many company moves, too many locations) and suggesting solutions. If already in production, we can take time on set to diagnose issues from crew discontent to budget overruns etc.

PLATFORMING — As projects come to fruition, we can advise on how to launch the next project from the platform established on the current one, including leveraging the already established deals with talent, collaborators, financiers, and studios, etc.

As a third party, hired solely to solve problems and not take ownership, we as consultants can translate, advise and help maintain a common vision for every project you undertake without friction. We can fill the gaps without complicating the deal structure or compromising the vision.

Combined with the legal framework provided by the attorneys at LOPRESTI, PLLC, we can work towards protecting and securing your IP and projects from becoming overburdened by producers whose expertise may only be needed for limited periods of time. The firm brings years of legal and practical experience in media, publishing, entertainment, intellectual property, licensing, brand negotiation and development (including as litigation and trial attorneys), offering a keen hindsight to every media and entertainment opportunity.

So why engage LOPRESTI Media & Entertainment Consulting?
Tell us what your vision is and let’s see how our team can help. We can be valuable at any stage of production – or all stages of production.
Contact us, and let’s discuss options.

Kevin Fox (Consultant | Writer | Producer) is a consultant to LOPRESTI, PLLC’s growing Media & Entertainment practice. Kevin brings decades of firsthand experience in film, television, and publishing as a writer, producer, executive producer and showrunner. For over 35 years Kevin has been writing, producing and showrunning major film and television productions. Kevin has also written novels, and as a playwright, he currently has two plays in development, one in the UK and another in Los Angeles.

LOPRESTI, PLLC (c) 2026

LOPRESTI, PLLC publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only.

JK Shields, LLC v. Smyth Tavern, LLC, et al. – Case of Interest

Smyth Tavern, LOPRESTI PLLC

LOPRESTI, PLLC defends Smyth Tavern Tribeca restaurant in trademark dispute.

New York / Chicago – Feb. 25, 2026 – LOPRESTI, PLLC has appeared for New York City neighborhood restaurant Smyth Tavern, located in the Smyth Tribeca hotel, in a trademark dispute filed by the owners of the restaurant Smyth, which operates in Chicago.  The lawsuit (JK Shields, LLC v. Smyth Tavern, LLC, et al., 1:25-cv-14182 [JCD][BWJ]), was filed in the U.S. District Court for the Northern District of Illinois. Lead counsel Anthony A. LoPresti appeared for the firm and filed the defendants’ Answer with Affirmative Defenses today (viewable here).

The lawsuit gained some media attention recently, via Eater and the NY Post.

The Complaint can be found here.

Follow this space for updates.

LOPRESTI, PLLC (c) 2026

LOPRESTI, PLLC publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only.

Curt Meltzer v. Kentucky High-Tech Greenhouses, et al. – Case of Interest

Curt Meltzer v. Kentucky High-Tech Greenhouses lawsuit

LOPRESTI, PLLC successfully opposes motion for summary judgment by former executive seeking over $1M in alleged compensation.

LOPRESTI, PLLC has successfully opposed a motion for summary judgment filed by Curt Meltzer, a former executive at Kentucky Fresh Harvest, LLC and Kentucky High-Tech Greenhouses, LLC, companies that build and operate high tech commercial greenhouses in Kentucky.  Meltzer, a New York attorney, claimed he is owed over $1M in deferred compensation earned prior to his resignation, and that the greenhouse companies breached their agreement by refusing to pay him.  Meltzer filed his action in New York Supreme Court, New York County. [Curt Meltzer v. Kentucky High-Tech Greenhouses, et al., Index No. 652396/2022].

In opposition to the motion the defendant companies submitted 11 affidavits refuting Meltzer’s claims, which “shed light on Meltzer’s malfeasance, waste, mismanagement and sheer ineptitude”.  Witnesses allege that representations and promises made by Meltzer “to effectively, efficiently and cost-effectively design, build and operate a successful greenhouse facility” were “pure BS”.  Witnesses also claim that Meltzer was either a party to a scam that cost the defendants tens of millions of dollars, or that he “enabled it, and/or that he willingly or recklessly turned a blind eye to it.” According to papers filed, “Plaintiffs cannot avoid the fact that Meltzer’s abysmal performance, if any, was reckless, wasteful, and fraudulent, that it cost the Defendants millions of dollars, and that in just about every way, Meltzer materially breached any agreement.”

The defendants have counterclaimed against Meltzer alleging claims sounding in Breach of Contract, Breach of Implied Duty of Good Faith and Fair Dealing, Gross Negligence and Wanton and Reckless Misconduct, and Breach of Fiduciary Duty.

Click here to view a copy of the Decision + Order

Click here to view a copy of the Defendants’ Memorandum of Law in Opposition

Click here to view a copy of the Defendants’ Answer with Counterclaims

Kentucky Fresh Harvest, LLC and Kentucky High-Tech Greenhouses, LLC are represented by lead counsel Anthony A. LoPresti of LOPRESTI, PLLC who also argued the motion.

John Sjoholm, LOPRESTI, PLLC head of Logistics and Investigation, assisted in the investigation of this matter.

LOPRESTI, PLLC (c) 2023

LOPRESTI, PLLC publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only.

NY Whistleblower Claim – Duffy v. Monroe Free Library, et al.

Plaintiff seeks relief under New York’s whistleblower law (NY Labor Law § 740) alleging retaliation for reporting health and safety concerns related to COVID-19.

LOPRESTI, PLLC has filed a lawsuit in New York State Supreme Court (Orange County) on behalf of an employee against the Monroe Free Library,  the Board of Trustees of the Monroe Free Library, and individual defendants Marilyn J. McIntosh, Patricia C. Shanley and Carol Bezkorowajny, alleging that the defendants (i) violated N.Y. Lab. Law § 740’s prohibition against retaliation for disclosing an illegal practice of an employer that presents a substantial and significant danger to the public health (NY Whistleblower Law); (ii) violated New York State Human Rights Law prohibitions against age discrimination; (iii) engaged in, enabled and/or conspired to disseminate malicious and defamatory statements about the plaintiff; and (iv) breached rights of employment, contract and duties of care, and failed to comply with governing procedures and applicable federal and state statutes. Click here to view a copy of the Complaint.

UPDATE 10/6/2022:  Decision and Order granting in part and denying in part Defendants’ motion to dismiss.

LOPRESTI, PLLC (c) 2022

LOPRESTI, PLLC publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only.

Protect Your Company’s Most Valuable Asset – Its Brand

Protecting your company’s brand and trademarks should be a top priority. Failure to do so will cost you.

It goes without saying that a company’s brand identity in the marketplace is extremely important. In fact, a company’s brand, or trademark, can be its most valuable asset. What consumers associate with a brand can determine not just whether they will purchase a product or service, but also how much they are willing to pay for a product or service, how likely they are to enjoy a product or service, and whether they will recommend the product or service to others. A well-known brand’s recognition value can be worth millions. Thus, protecting a company’s brand is integral to its success. And safeguarding a company’s trademarks is integral to protecting and building its brand.

In general, a trademark is a word, phrase, symbol, or design (or a combination of those), that identifies a product or service with a particular source, e.g. your company. A trademark thus distinguishes the source of goods from others in the marketplace. Trademarks indicate both origin and quality, and they represent the goodwill from the public that a company enjoys. Since a word mark combined with a design mark often constitutes the essence of a brand, to any company trademarks are an asset to be protected.

To this end, trademarks can be registered with the United States Patent and Trademark Office (USPTO), either on its principal register—where distinctive marks are registered— or on its supplemental register—where inherently descriptive marks capable of acquiring distinctiveness are registered. A mark is considered distinctive if it is unlikely to confuse consumers as to the source of its respective product or service. Trademarks can also be registered at the U.S. state level, or internationally, on a country-by-country basis, or via an international trademark registration system, such as the Madrid System – subjects for a future article.

The rights afforded USPTO registrations between the principal and supplemental registers differ. Among other things, registration on the principal register provides the registrant with the legal presumption of the validity of the mark, prima facie evidence of ownership of the mark, notice to the public of a claim to ownership of the mark, the right to use the ® symbol in connection with the mark, and acknowledgment of its continuous and exclusive use. Registration on the supplemental register allows a registrant to use the ® symbol in connection with the mark, provides protection against the registration of a confusingly similar remark, and serves as a basis for registration in foreign counties. A key disparity in the registers is that on the principal register a trademark can attain incontestable status after five years of continuous use, whereas on the supplemental register there is no such possibility of achieving incontestable status.

[USPTO – “Protecting Your Trademark”]

In the U.S., the rights you may have to a trademark are not limited to those gained from registering with the USPTO. That is, you may have rights to a trademark even if the mark is not registered with the USPTO, which is not mandatory. These rights are called “common law rights” and are based on the use of a mark in commerce. Common law rights can even outweigh registration rights if the use supporting the common law rights predates that of the use supporting the registration. However, the benefits of registering with the USPTO, rather than just relying on common law rights, are many, including the ability to pursue statutory damages against an infringer.

Licensing is another key aspect to leveraging trademarks. Owning the rights to a trademark empowers a company to license its use to other parties for a profit (monetary or otherwise). When licensing agreements are drafted skillfully, they can benefit companies in a myriad of ways, such as: the collection of revenue from licensing fees, further proliferation of a mark in the marketplace with minimal effort, and exposure to new markets. However, when handled poorly, licensing a trademark could compromise the goodwill attached to it, open a company to dispute liability, or even dilute the distinctiveness of the mark. This is why it is important to seek the expertise of an attorney when licensing a trademark.

Filing Your Trademark

Unfortunately, the filing process can be met with inconsistency from USPTO examiners. Hence, knowing ways to maneuver around unfavorable decisions is integral to successfully navigating the federal trademark system. Obviously, there are too many reasons for refusal to register a mark to cover in one article, so let us focus on just one of the most common.

Refusal Based on Likelihood of Confusion

One of the most common reasons trademark applications are refused is because the examining attorney determines that there is a likelihood of confusion between the proposed mark and an existing trademark on the register. An examining attorney must refuse an application which conflicts with a registered mark, so if your proposed mark is confusingly similar to a registered mark, it could be refused. Importantly, the issue is not whether the marks themselves are likely to be confused with each other, but rather whether it is likely that consumers will be confused as to the source of the goods or services because of the marks used on them.

The tricky part about responding to an office action declaring a likelihood of confusion exists is that it is more difficult to prove the absence of something than it is to prove its presence. Thus, it can be challenging to demonstrate that two marks are unlikely to be confused. That said, it is best to focus a response to a refusal on the factors considered to determine a likelihood of confusion that were set out in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Dubbed the Du Pont factors, they are as follows:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
  2.  The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
  5. The fame of the prior mark.
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used.
  10. The market interface between the applicant and the owner of a prior mark.
  11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  12. The extent of potential confusion.
  13. Any other established fact probative of the effect of use.

While the weight given to each of the Du Pont factors varies case to case, the USPTO Trademark Manual of Examining Procedure states that factors 1 and 2 are “key” in any likelihood of confusion determination. So, often the best ways to respond to refusals based on likeliness of confusion are to either a) determine that the goods and services of the marks in question are not related or b) establish that the marks themselves are dissimilar—either in appearance or in commercial impression— or both.

Another way to help resolve a conflict with a registered mark is to enter into a Coexistence Agreement with the owner of the already registered mark. The parties of coexistence agreements agree that their marks are not confusingly similar to one another, and hence, pursuant to express terms, agree to use their respective marks concurrently. This agreement will likely contain a consent section, wherein the registered party gives its consent to the applying party to use and register the mark, in addition to other provisions regarding the use of marks belonging to the parties (including marks not yet in use). Alternatively, parties may enter into a simple Consent Agreement which provides consent for registration only. The USPTO considers such agreements as a factor in their determinations of likelihood of confusion.

Consent agreements must be drafted carefully to be of any use. In recent years the USPTO has been cracking down on “naked” consent agreements—agreements which contain little more than the registrant’s consent for the applicant to register their mark. Generally, naked consent agreements are not sufficient for overcoming a refusal based on likelihood of confusion.

However, the Trademark Trial and Appeal Board (TTAB) has clarified that significant weight should be given to consent agreements in which “competitors have clearly thought out their commercial interests”. In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018)(internal quotations omitted). In In re American Cruise Lines the TTAB reversed a refusal to register, noting that the consent agreement at issue provided “several credible reasons [the parties] consider confusion unlikely.” Hence, consent agreements should at a minimum include such reasons.

Trademarks are an incredibly valuable asset to a business, and protecting them should be a high priority. LOPRESTI, PLLC has experience in all branding matters, and has successfully registered numerous trademarks, litigated trademark conflicts, and crafted lucrative licensing and branding agreements. The advice of an expert can make or break your efforts to protect and utilize your company’s trademarks, and hence your valuable brand. To learn more about how LOPRESTI, PLLC (lopresti.one) can make the most of your brand and trademarks, please contact us.

Article by Ashley Bogdan

LOPRESTI, PLLC (c) 2020

LOPRESTI, PLLC publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please contact us at info@lopresti.one. This publication is not intended to create and does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.