[co-author: Joseph Diorio, Law Clerk]
The January 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses: a recent non-precedential TTAB decision on background designs; the Trademark Modernization Act;...more
1/29/2021
/ Acquired Distinctiveness ,
Cannabidiol (CBD) oil ,
Color Marks ,
Domain Names ,
gTLD ,
ICANN ,
Lanham Act ,
Sunrise Periods ,
Trademark Application ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Utility Patents
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more
Why do most consumers prefer to purchase expensive goods in person? Do they value the trust factor of seeing and knowing what they are buying? Do they need to feel confident that the item is worth the price? As the pandemic...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
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more
In a complaint filed late last month in the Northern District of Illinois, Edible Arrangements, purveyors of fancy fruit bouquets, initiated a trademark infringement suit against cannabis company Green Thumb Industries Inc.,...more
The October 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a trademark litigation case in the cannabis consumer goods space and the open gTLD sunrise periods.
In this issue:
- Get in the Weeds:...more
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see...more
Creativity abounds in the CBD industry – both in the wide variety of products infused with it, and in the efforts undergone by applicants trying to circumvent the Trademark Act to register per se unlawful CBD-infused...more
10/3/2020
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Commerce Clause ,
Farm Bill ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Hemp ,
Intellectual Property Protection ,
Marijuana ,
Trademark Act ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
Use in Commerce ,
USPTO
The September 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the state of the CBD industry, including a recent non-precedential TTAB decision regarding CBD-infused supplements, as well as the open gTLD...more
PARMIGIANO-REGGIANO cheese and CHAMPAGNE sparkling wine. These are not only delicious products, welcome at any well-appointed summer picnic, but also geographical certification marks – a subset of trademarks limited to use by...more
We are excited to introduce the new look of Sterne Kessler's MarkIt to Market® newsletter! The August 2020 issue discusses a recent precedential TTAB case regarding an attempt to protect Gruyère cheese as a geographic...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
As of June 16, 2020, the U.S. Patent and Trademark Office has implemented a program to prioritize the examination of trademark applications that cover goods and services that help prevent, diagnose, treat, or cure COVID-19....more
The June 30th Supreme Court decision in Booking.com held that generic terms coupled with top-level domain names can be eligible for trademark registration. This decision is a win for brand owners as it reinforces how – in the...more
7/14/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Descriptive Trademarks ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
The June 2020 issue of Sterne Kessler's MarkIt to Market® newsletter leads with breaking news of today's Supreme Court's decision in favor of Booking.com. Other topics discussed include copyright applications covering a...more
7/8/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Cannabidiol (CBD) oil ,
Copyright Applications ,
Coronavirus/COVID-19 ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
Personal Protective Equipment ,
Prioritized Examination ,
Scams ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods...
As of May 29,...more
In a recent precedential opinion, the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB) tackled the often frustrating question of what it takes to acquire trademark rights in the title of a single...more
In a precedential decision earlier this month, the TTAB found that a disclaimer of a term is required as to all services in a Class if it is descriptive as to any services in that Class. This decision appears to contravene...more
The May 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses two recent precedential TTAB decisions – one regarding disclaimer scope and the other exploring how to successfully claim trademark rights in the...more
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see...more
On April 23, 2020, Justice Neil Gorsuch delivered a unanimous opinion in Romag Fasteners, Inc. v. Fossil, Inc., clarifying that a Lanham Act provision does not require a plaintiff to prove that acts of infringement are...more
5/10/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Disgorgement ,
Lanham Act ,
Lost Profits ,
Mens Rea ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement
Earlier this month, the Federal Circuit issued a precedential ruling on the question of whether a color mark for product packaging can ever be inherently distinctive, holding that the Trademark Trial and Appeal Board (TTAB)...more
5/6/2020
/ Appeals ,
Color Marks ,
Corporate Branding ,
Inherently Distinctive ,
Precedential Opinion ,
Product Packaging ,
Reversal ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The April 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a precedential Federal Circuit ruling about color marks for product packaging, takeaways from a recent Supreme Court decision regarding when an...more
5/5/2020
/ Burden of Proof ,
Color Marks ,
Damages ,
Dilution ,
Domain Names ,
gTLD ,
Lanham Act ,
Lost Profits ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Trial and Appeal Board ,
Trademarks ,
Willful Infringement
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see...more