Geoffrey  M.  McNutt

Geoffrey M. McNutt has been practicing trademark and unfair competition law for more than 25 years. Mr. McNutt handles a broad range of matters, including trademark litigation in federal and state courts and agencies, with a particular focus on opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB); domestic and international portfolio management; trademark clearance and prosecution; trademark licensing; coexistence and settlement agreements; and advertising issues.

Mr. McNutt began his career with the USPTO, where he worked as a trademark examining attorney and later as a staff attorney in the Office of the Commissioner for Trademarks. He then moved to the private sector, where he worked for over nine years as an attorney in the full-service trademark, advertising, and copyright law groups of AmLaw 100 and IP Specialty law firms, and as a sole practitioner.

Mr. McNutt then returned to government service as the first dedicated trademark attorney for the United States Navy, where he was the principal author of Secretary of the Navy Instruction 5870.7, which established the formal trademark and licensing program for the Department of the Navy. The revenue generated by the Navy’s trademark licensing program covers program costs, with profits going to the Navy’s Morale, Welfare, and Recreation (MWR) program. Mr. McNutt also managed the Navy’s trademark practice and portfolio, including trademark prosecution, enforcement, and litigation.

Most recently, Mr. McNutt served for over seven years as an Interlocutory Attorney with the TTAB, where he managed interlocutory matters in opposition, cancellation, and concurrent use proceedings before the TTAB. In this role, Mr. McNutt conducted conferences with parties regarding discovery, motions practice, Accelerated Case Resolution (“ACR”), and trial stipulations, and authored hundreds of orders deciding procedural and substantive motions.

Mr. McNutt offers clients the perspective of an attorney who has been on both sides of USPTO prosecution and litigation as a private sector attorney and former USPTO trademark examining attorney and a TTAB interlocutory attorney.

Representative Matters

• In re Navy Exchange Serv. Command, 2012 WL 4832272 (TTAB 2012) (successfully appealed USPTO refusals of the Navy’s applications for the design of the Navy Working Uniform).
• H & H Indus., Inc. v. LTG, Ltd., 2008 WL 853845 (TTAB 2008) (successfully petitioned for cancellation of competitor’s registration for a single-color mark, which registration had been asserted against the client).
• Sunbeam Products Inc, v 148977 Canada, Inc., 2004 WL 7198287 (VSCC 2004) (petition before the Virginia State Corporation Commission successfully cancelling state registrations for “MISTER COFFEE” marks on the ground of abandonment) (similar result obtained on summary judgment in the Circuit Court for Anne Arundel County, Maryland Case No. C-02-85666, cancelling Maryland state registrations for “MISTER COFFEE” marks).
• Bridgestone/Firestone N. Am. Tire, LLC v. Silverstone Berhad, 2003 WL 1559659 (TTAB 2003) (successfully opposed registration of SILVERSTONE marks based on client’s FIRESTONE marks and Bridgestone/Firestone names).

Education
College of William & Mary (B.A. History and English)
George Mason University School of Law (J.D.), Assistant Articles Editor, Law Review

Commendations
The Department of the Navy Meritorious Civilian Service Award (2015)
The Department of Commerce Bronze Medal Award (2021)

Membership and Affiliations
International Trademark Association (INTA)

Admissions
Virginia State Bar

Speaking Engagements

• TTAB Practice & Pitfalls – American Intellectual Property Law Association (AIPLA) 2019 Trademark Bootcamp, Arlington, Virginia, June 7, 2019.
• DON Trademark Licensing – Annual Conference, Department of Navy, Office of General Counsel, Arlington, Virginia, May 15, 2014.
• Trademark Law: Understanding Use in Commerce – Annual Conference, Department of the Navy, Office of General Counsel, Alexandria, Virginia, May 2, 2012.
• Trademarks: Litigation and Enforcement – Department of Defense, Technology Transfer Integrated Planning Team (TTIPT), 15th Annual Workshop, Philadelphia, Pennsylvania, November 17, 2010.
• Merely, Clearly, Suggestive, Descriptive – Advanced Trademark Registrability Seminar, Intellectual Property Institute of Canada, Ottawa, Toronto, Vancouver, April 5-7, 2006.

Publications

• Coauthor, “What Does ‘Willfulness’ Mean in the Trademark Context? And Why Does It Matter?” AIPLA 2006 Annual Meeting, October 2006.
• Coauthor, “Choosing Fame Over Family,” Akron Law Review, Intellectual Property Symposium Issue, 2004.