Join Sterne Kessler’s Global Trademark & Brand Protection team for our mid-year review webinar, when we will take a closer look at the latest developments in trademark law. From recent court decisions to industry-trends, our...more
7/16/2024
/ Acquired Distinctiveness ,
Artificial Intelligence ,
Continuing Legal Education ,
False Association ,
First Amendment ,
Functionality ,
Intellectual Property Protection ,
Lanham Act ,
Right of Publicity ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Webinars
In 2019, the United States Patent and Trademark Office (USPTO) introduced Trademark Rule 2.189 (37 CFR § 2.189) as part of its larger efforts to combat fraudulent filings and unauthorized practices. Under the rule, all...more
6/28/2024
/ Administrative Procedure Act ,
Domicile ,
Intellectual Property Protection ,
Policies and Procedures ,
Primary Residence ,
Regulatory Requirements ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
October seems to be the inescapable Taylor Swift’s unofficial month of choice – 17 years after she released her self-titled first album in October 2006, the October 2023 news cycle is buzzing about her “Taylor Swift: The Eras...more
11/2/2023
/ Advertising ,
Brand ,
Business Strategies ,
Corporate Branding ,
Intellectual Property Protection ,
IP Portfolio ,
Marketing ,
Retail Market ,
Trademark Application ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...more
11/1/2023
/ Advertising ,
Brand ,
Corporate Branding ,
Declaration of Use ,
E-Signatures ,
Enforcement ,
Fraud ,
Incontestability Clauses ,
Intellectual Property Protection ,
Regulatory Requirements ,
Signatures ,
Trademark Application ,
Trademark Cancellation ,
Trademark Litigation ,
Trademark Ownership ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
As the 1.5 year anniversary of the Trademark Modernization Act’s implementation approaches in June, the United States Patent and Trademark Office now offers an array of helpful guidance on the requirements, format, and even...more
Thank you for reading the April 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss practice tips for the two new petition processes instituted by the Trademark Modernization Act and highlight...more
4/28/2023
/ China ,
CNIPA ,
Ex Partes Reexamination ,
Expungement ,
INTA ,
Intellectual Property Protection ,
Investigations ,
Proposed Amendments ,
Trademark Application ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademarks ,
USPTO
Join Sterne Kessler attorneys for our inaugural Trademark Year in Review webinar, where speakers will offer summaries and analysis of particularly noteworthy cases from 2022, along with updates on the latest in U.S. trademark...more
Trademark owners and practitioners have some extra reasons to celebrate this year, as the majority of the Trademark Modernization Act went into effect on December 18, 2021. Among other benefits for trademark infringement...more
12/24/2021
/ Brand ,
Cannabidiol (CBD) oil ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Ex Partes Reexamination ,
Expungement ,
Trademark Application ,
Trademark Infringement ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademarks ,
USPTO
The December 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses new enforcement tools courtesy of the Trademark Modernization Act; Pfizer's acquisition of Arena Pharmaceuticals; the latest developments in...more
12/23/2021
/ Acquisitions ,
Brand ,
Cannabidiol (CBD) oil ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Domain Name Registration ,
Domain Names ,
Ex Partes Reexamination ,
Expungement ,
gTLD ,
ICANN ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pfizer ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Sunrise Periods ,
Trademark Application ,
Trademark Infringement ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademarks ,
USPTO ,
Websites
Trademark practitioners were pleasantly surprised this month when the Trademark Trial and Appeal Board issued a rare reversal of a “failure-to-function” refusal, which has become an increasingly more common hurdle for...more
[co-author: Joseph Diorio, Law Clerk]
The November 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a rare failure-to-function refusal reversal at the TTAB, Google's efforts to combat counterfeit goods,...more
12/2/2020
/ Counterfeiting ,
Domain Names ,
Filing Fees ,
Google ,
gTLD ,
Online Marketplace ,
Reversal ,
Sunrise Periods ,
Trademark Application ,
Trademark Infringement ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Multinational investment bank and financial services company Goldman Sachs made headlines last month with the introduction of its proprietary, but free-to-use, “Goldman Sans” typeface. The royalty-free, nonexclusive, and...more
The July 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Goldman Sachs' proprietary font software license and the Federal Trade Commission's proposed new Rule regarding "Made in USA" claims.
In this...more
Over the past weeks, the world has been carefully monitoring news about a new strain of “coronavirus” respiratory infection, which has sickened thousands, caused dozens of deaths, and resulted in a virtual shut-down of...more
The January 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the following topics:
- The TTAB's affirmation to refuse a mark to distillery Jos. A. Magnus & Co.;
- Six trademark and copyright cases...more
Until recently, Texas skincare company Sunday Riley was one of the shining stars of the lucrative cosmetics market – its products were featured at high-end retailers such as Sephora and Nordstrom, high-profile influencers and...more
11/6/2019
/ Advertising ,
Consent Order ,
Cosmetics ,
Deceptive Intent ,
Failure To Disclose ,
Fake Reviews ,
False Advertising ,
Federal Trade Commission (FTC) ,
FTC Act ,
Marketing ,
Misleading Statements ,
Misrepresentation ,
Online Endorsements ,
Online Reviews
The October 2019 issue of Sterne Kessler's MarkIt to Market® newsletter discusses three "lawful use" cannabis trademark decisions, a recent FTC settlement with a cosmetics company, and the USDA's newly issued interim rules...more
11/1/2019
/ Cannabis-Related Businesses (CRBs) ,
Cosmetics ,
Domain Names ,
Fake Reviews ,
Federal Trade Commission (FTC) ,
gTLD ,
Hemp ,
Interim Rule ,
Online Reviews ,
Settlement Agreements ,
Sunrise Periods ,
Trademarks ,
USDA
U.S. trademark attorneys received a New Year’s surprise last month when the Supreme Court of the United States agreed to hear Iancu v. Brunetti, the case that should determine the availability of federal trademark...more
3/5/2019
/ Burden of Proof ,
Certiorari ,
Compelling Governmental Interest ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Lee v Tam ,
Petition for Writ of Certiorari ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Infringement ,
Trademark Invalidity ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The February 2019 issue of Sterne Kessler's MarkIt to Market® newsletter discusses IP protection for cannabis products, the fate of scandalous and immoral trademark registrations, and lists the new gTLD Sunrise Period.
In...more
3/2/2019
/ Cannabis Products ,
Domain Names ,
gTLD ,
ICANN ,
Intellectual Property Protection ,
Marijuana Related Businesses ,
Medical Marijuana ,
Scandalous/Immoral Marks ,
SCOTUS ,
Sunrise Periods ,
Trademark Application ,
Trademarks
The wait is over! The Canadian Privy Council Office recently announced that the long-anticipated changes to Canada’s trademark laws will officially go into effect June 17, 2019. ...more
The November 2018 issue of Sterne Kessler's MarkIt to Market® newsletter discusses IP protection for food products, the now-scheduled changes to Canadian trademark laws, and the new gTLD Sunrise Periods.
In this...more
Although small in stature, trademark symbols (™ and ®) are an important component of any brand’s trademark protection strategy – but making sure that the correct symbol goes in the right place can be confusing at times. ...more
The September 2018 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the use of trademark symbols as part of a brand's protection strategy, the use of trade dress to protect product design elements, and the new...more
BREXIT! A word that might have been unthinkable a mere two years ago now raises so many questions for today’s trademark professionals – but some of those key questions were recently answered, at least for now. ...more
The March 2018 issue of Sterne Kessler's MarkIt to Market® discusses the impact of Brexit on trademarks, the inception of the PTO's Trademark Specimen Protest Email Pilot Program, and lists the new gTLD Sunrise periods.
...more