A recent article in Marijuana Business Daily projected that the total economic impact of the cannabis industry will range from $39.2 billion to $48 billion in 2019. Despite this commercial potential, there remains little...more
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
On April 10, 2019, the United States Court of Appeals for the Federal Circuit redesignated as precedential its January 14, 2019 decision upholding the Trademark Trial and Appeal Board’s (TTAB) decision affirming refusal of...more
5/9/2019
/ Administrative Appeals ,
Displays ,
Point of Sale Terminals ,
Precedential Opinion ,
Trademark Litigation ,
Trademark Manual of Examining Procedure (TMEP) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Use in Commerce ,
Websites
Following the enactment of the 2018 Farm Bill [see related article1], the United States Patent and Trademark Office (USPTO) just this morning released a new Trademark Examination Guide for marks covering cannabis and...more
5/3/2019
/ Cannabidiol (CBD) oil ,
Controlled Substances Act ,
Farm Bill ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Goods or Services ,
Hemp ,
Marijuana ,
Marijuana-Infused Edibles ,
New Regulations ,
Trademark Application ,
Trademark Examination ,
Trademark Examination Guide ,
Trademark Registration ,
Trademarks ,
USPTO
The April 2019 issue of Sterne Kessler's MarkIt to Market® newsletter addresses the legal status of cosmetic products containing hemp-derived CBD and guidance on “point of sale” specimens sufficient to support...more
When examining trademark applications, the United States Patent and Trademark Office (USPTO) considers whether the applied-for mark is confusingly similar to any registered or prior-filed marks by applying the following...more
The October 2018 issue of Sterne Kessler's MarkIt to Market® newsletter discusses how the USPTO determines similarity to prior-filed marks, the considerations of protecting a mark in a foreign language, and the new gTLD...more
Design patents are often the go-to option for protecting the visual features, or design, of a product. But design patent protection is not always available, such as after the product has been on sale, offered for sale, or...more
10/3/2018
/ Acquired Distinctiveness ,
Adidas ,
Appeals ,
Design Patent ,
Fashion Branding ,
Fashion Design ,
Inherently Distinctive ,
Intellectual Property Protection ,
Nonfunctionality ,
Preliminary Injunctions ,
Sketchers ,
Trade Dress ,
Trademark Registration ,
Trademarks
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
Earlier this month the PTO announced the inception of its Trademark Specimen Protest Email Pilot Program; as the name suggests, the program encourages the public to report any specimens that do not appear to exhibit marks as...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
The holiday season in the United States starts around Halloween and extends for a two-month period until the beginning of January. The holiday marathon sparks a flurry of purchasing events – such as booking airline tickets,...more
The November 2017 issue of Sterne Kessler's MarkIt to Market® discusses another Ugg trademark dispute, pitfalls of holiday specific branding, "types" of protection for font and typeface designs, and lists the new gTLD Sunrise...more
In May of 2014, this newsletter discussed the prevalence of trademark and domain name scams, and offered tips on how to avoid being duped by fake service offerings (see "Scammers Still Be Scamming" here). Unfortunately,...more
The July 2017 issue of Sterne Kessler's MarkIt to Market® discusses trademark and domain name scams and lists the new gTLD Sunrise periods.
...more
It’s happened to the best of us -- the United States Patent and Trademark Office ("PTO") suspends action on an application based on a potential likelihood of confusion with a prior filed/pending application, essentially...more
The June 2017 issue of Sterne Kessler's MarkIt to Market® discusses bad word brands, strategies for dealing with trademark office suspensions, and lists the new gTLD Sunrise periods.
...more
When seeking particular services, consumers are often drawn into a business based on branding and advertising found near the location – whether by signage on or around the establishment, or by glimpses of the services being...more
The March 2017 issue of Sterne Kessler's MarkIt to Market® discusses using building signage to support service mark registration, navigating the lifecycle of an eponymous brand, and lists the new gTLD Sunrise periods.
...more
"In theory, there is no difference between theory and practice. But, in practice, there is.”
Although this quote is attributed as a remark overheard at a computer science conference in Walter J. Savitch’s Pascal: An...more
The November 2016 issue of Sterne Kessler's MarkIt to Market® includes practical tips for registering certification marks, a look at the Trademark Trial and Appeal Board's latest revisions to the Rules of Practice-its most...more
In today's marketplace, companies are constantly seeking their moment, day, or --if they are lucky--year on the top of the "best of" list for new, unique, and/or fabulously redesigned goods or services. The sheer number of...more
The August 2016 issue of Sterne Kessler's MarkIt to MarketTM newsletter explores the guidelines surrounding claims of "Made in the USA" and the use of scents to build strong brand identities.
...more
9/2/2016
/ Advertising ,
Brand ,
Domain Names ,
Federal Trade Commission (FTC) ,
gTLD ,
ICANN ,
Made in the USA ,
Marketing ,
Olympics ,
Product Labels ,
Sunrise Periods ,
Textiles ,
Trademarks ,
Uniforms
For use-based trademark applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), applicants must submit the application along with one specimen per Class showing use of the mark for the covered goods and...more
The June 2016 issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses the rise in additional specimen requests from the USPTO, examines the TTAB's decision in In re Florists' Transworld Delivery, Inc., and notes...more