What can you do if you have filed a trademark application that was rejected by an Examiner due to a registration that you learn is not in use with some or all of the goods/services identified in the registration?
Cynthia A. Moyer
“Cynthia has a background in litigation and is an excellent written and oral advocate who knows U.S. trademark law in all its intricacy.”
World Trademark Review 1000, 2021
Cindy serves as Chair of the Advertising, Marketing & Trademark Group where she actively partners with clients to develop, protect and enforce their trademarks, copyrights and other rights.
She has extensive experience advising clients on issues pertaining to domestic and international trademark registration and enforcement, and routinely handles all aspects of managing trademark portfolios, including clearance, use, prosecution, maintenance and enforcement. Cindy also maintains close relationships with counsel around the world, allowing her to assist clients in their global expansion strategies and protection of their intellectual property worldwide.
On the enforcement side, Cindy regularly appears in the Trademark Trial and Appeal Board (TTAB) and federal courts around the country. She has been lead counsel in trademark and copyright infringement cases, contract disputes, unfair competition claims and construction arbitration cases. She has argued appeals in the United States Court of Appeals for the Sixth and Eighth Circuits, and appeared in federal courts in Arkansas, California, Iowa, Louisiana, Minnesota, Ohio, Pennsylvania, South Carolina, South Dakota, and Wisconsin.
Cindy has held a number of leadership positions in the firm, including previously serving as Chair of the firm’s Pro Bono Committee and the firm’s Associate Development Committee.
In addition to her practice, Cindy is active in the Twin Cities pro bono community. She has served on the Board for the Fund for Legal Aid, the Children’s Law Center Board and is past President of the Boards of Volunteer Lawyers Network and the Legal Aid Society of Minneapolis.
- Manage domestic and international trademark portfolios for numerous clients.
- Assist in the selection, clearance and registration of trademarks for businesses, individuals and non-profits.
- Obtain trademark protection for trade dress and product configurations.
IP Litigation/Business Litigation
- Multiple representations of trademark owners in litigated and negotiated matters throughout the country.
- Handled all aspects of trademark opposition proceedings before the TTAB, and supervised similar proceedings in other countries.
- Won dismissal of copyright infringement case involving development of computer software program (W.D.Pa.).
- Successfully argued motion obtaining preliminary injunction on claims of copyright infringement and trademark infringement against former officer, director and shareholder of closely-held corporation (D.Minn.).
- Won multiple settlements for architect/builder client in copyright infringement litigation.
- Achieved court order to shut down website misdirecting Internet traffic to competitor’s website through “typo-squatting.”
- Defended international publisher in multiple copyright infringement lawsuits and achieved favorable settlements.
- Multiple representations of electrical substation contractor in litigated matters in state and federal courts.
- Multiple representations of pipeline owner in litigated and negotiated matters, including achieving a multi-million dollar settlement after one-week AAA arbitration in pipeline engineering design malpractice case.
- Defeated motion for TRO (temporary restraining order) brought against shareholders of a closely-held corporation seeking to stop a reverse-triangular merger, resulting in a favorable settlement (D.Minn.).
- Successfully settled commercial breach of contract case involving allegations of copyright infringement and work-for-hire doctrine (D.S.D.).
- Successfully represented parent corporation against claims of piercing-the-corporate veil and breach of fiduciary duty brought by trade creditors of subsidiary.
- Defeated motion for preliminary injunction in federal court, preventing competitor from obtaining valuable client information (D.S.C.).
Articles & Presentations
October 30, 2019
In July 2019, the U.S. Trademark Office announced it would implement new rules to clarify what constitutes an acceptable specimen to show use on goods.
August 5, 2019
Beginning August 3, 2019, all foreign-domiciled trademark applicants, registrants and parties will be required to have a U.S. attorney appear on their behalf in the U.S. Trademark Office.
U.S. Attorney Required? USPTO Proposes New Rule that Would Require Foreign Trademark Applicants to be Represented by a U.S. Attorney
March 15, 2019
The USPTO recently issued a Notice of Proposed Rulemaking, proposing to amend the Rules of Practice in Trademark Cases to require all applicants, registrants and parties to be represented by a U.S. attorney.
November 19, 2018
Major amendments to the Canadian Trademarks Act were passed in 2014.
April 17, 2018
Are trademarks “intellectual property” under the Bankruptcy Code? According to a recent decision from the First Circuit Court of Appeals, the answer is “no,” and Section 365(n) of the Code does not offer protection to trademark licensees when the licensor files for chapter 11.
February 3, 2017
Does your trademark registration identify multiple goods or services in a single class? If so, you could be subject to a random audit to make sure you are using your mark with all the goods and services claimed.
April 18, 2016
Important changes in the regulations governing European Union Community Trademarks (formerly CTMs, now called EUTMs) may affect the scope of your trademark protection for CTM applications filed before June 22, 2012.
100 Bottles of Beer on the Wall (All with the Same Name) – What’s Wrong with Co-Existence Agreements?
March 1, 2016
Are co-existence agreements no longer a surefire strategy for getting a trademark registration in the face of a likelihood of confusion refusal? That could be the takeaway from the Trademark Trial and Appeal Board’s (TTAB) recent decision in which it held that a co-existence agreement was insufficient to overcome a refusal based on likelihood of confusion. In re Bay State Brewing Co., Inc., Serial No. 85826258 (Feb. 25, 2016).
February 10, 2016
In a precedential decision issued by the Trademark Trial and Appeal Board (TTAB), the TTAB affirmed the examining attorney’s refusal to register SMART SERIES because the mark was merely descriptive. In re Cannon Safe, Inc., Serial No. 85651960 (TTAB Sept. 24, 2015). This raises two questions: how is SMART SERIES descriptive? And, what is wrong with being descriptive?
February 2, 2016
A recent decision by the Trademark Trial and Appeal Board serves as a good reminder that the title of a single work cannot be a trademark. Independent Media Corporation (PVT) Ltd. v. BOL Enterprise (PVT) Ltd., decided January 14, 2016.
January 22, 2016
In Hollywood Casino LLC v. Chateau Celeste, Inc., Opposition No. 91203686 (December 14, 2015), Applicant Chateau Celeste filed a trademark application to register the mark Hollywood Hotel. A problem arose, however, when Applicant’s President and CEO testified in a deposition that the Applicant was only a licensee – not the owner – of the mark. The Opposer, Hollywood Casino, seized on this testimony and moved for summary judgment, saying the Applicant could not apply to register a mark it did not actually own.
March 26, 2015
In a decision released March 24, 2015, the Supreme Court held that the U.S. Patent and Trademark Office Trademark Trial and Appeal Board’s (TTAB) determination of likelihood of confusion in an opposition proceeding can bind federal courts in trademark infringement litigation. The case is B&B Hardware, Inc. v. Hargis Industries, Inc., ___ U.S. ___ (No. 13-352 March 24, 2015).
PUBLICATIONS & PRESENTATIONS
- Co-Presenter, “Tips and Best Practices for Responding to Trademark Office Actions,” ABA Landslide CLE, June 16, 2020
- Co-author, “2 Big Recent Changes at the U.S. Patent and Trade Office,” Fargo INC!, October 2019
- Author, “TTAB Considers Three SERIAL Applications, Refusing One and Allowing Two to Proceed,” INTA Bulletin, Vol. 73 No. 12, July 15, 2018
- Author, “Untimely Motion for Summary Judgment Accepted,” INTA Bulletin, Vol. 73, No. 7, April 15, 2018
- Author, “TTAB Cancels Registration for TAO VODKA,” INTA Bulletin, Vol. 73, No. 4, March 1, 2018
- Author, “TTAB Rejects Bid to Register the Color Yellow for Cheerios Box,” INTA Bulletin, Vol. 72, No. 19, November 1, 2017
- Author, “Live Cross-Examination Must Be in Reasonable Location,” INTA Bulletin, Vol. 72, No. 19, November 1, 2017
- Author, “TTAB Finds TEQUILA Not Generic, Allows Certification Mark to Register,” INTA Bulletin, Vol. 72, No. 7, April 15, 2017
- Author, “Lessons in Pleading Marks, and Related Entities Can Own a Family of Marks,” INTA Bulletin, Vol. 72, No. 1, January 2017
- Presenter, “Advertising Hot Spots Swirling Around Online Sales,” MCLE Webinar, August 2016
- Author, “USPTO Issues Guidance on Compliance with Section 2(a) Provisions,” INTA Bulletin, Vol. 71, No. 10, June 2016
- Author, “Only Issue in Dismissal Motion Is Sufficiency of the Pleading at Issue,” INTA Bulletin, Vol. 71, No. 6, April 2016
- Presenter, “Advertising Hotspots Swirling Around Online Sales,” MCLE Live Seminar, March 2016
- Presenter, “You Love it, You Hate it. Now you Have to Live With it,” William Mitchell College of Law e-Discovery Conference, October 4, 2013
- Co-author, “Spoliation of Electronic Evidence: A Judicial Boiling Point?,” Pretrial Practice & Discovery, Volume 18, Number 4, Summer 2010, American Bar Association
- Author, “Off-Label Use and the Medical Negligence Standard Under Minnesota Law,” 31 Wm. Mitchell L. Rev. 927 (2005)
Honors & Education
- Harvard Law School, J.D.
- University of Minnesota, B.S., summa cum laude
- U.S. District Court for the District of Minnesota
- U.S. District Court for the Western District of Wisconsin
- U.S. Court of Appeals for the Sixth Circuit
- U.S. Court of Appeals for the Eighth Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. Supreme Court
- World Trademark Review 1000, Ranked as a leading trademark attorney, 2019-2022
- World IP Review Leaders selection, 2021
- Transaction of the Year, 2018, Turnaround Management Association – Minnesota Chapter
- Minnesota State Bar Association, North Star Lawyer, 2013, 2015, 2018
- Super Lawyer Rising Star Awards, 1998-1999, 2001-2002
- International Trademark Association (INTA), Bulletins Committee
- American Bar Association, Business Law Section, Intellectual Property Law Section, Litigation Section
- Minnesota State Bar Association, Bankruptcy Section
- Hennepin County Bar Association, Civil Litigation Section
- Turnaround Management Association, Minnesota Chapter, Board Member
- International Women’s Insolvency and Restructuring Confederation (“IWIRC”), Minnesota Chapter, Board Member
- Founder, Minnesota E-Discovery Working Group
- Former Board Member, Fund for the Legal Society of Minneapolis
- Former Board Member and Former Chair, Hennepin County Volunteer Lawyers Network
- Former Board Member and Past President, Legal Aid Society of Minneapolis
- Former Board Member, Children’s Law Center of Minnesota