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MarkIt to Market® – July 2024: Where, What, and How – Trademarks & the Olympic Games (Part 2)

Part 2: WHAT - Last month, we reviewed where the U.S. Olympic & Paralympic Committee (USOPC) derives its trademark rights—if you missed last month’s article, catch up here: June 2024 Article. This month, we are exploring...more

MarkIt to Market® – June 2024: Where, What, and How – Trademarks & the Olympic Games (Part 1)

Part 1: WHERE - Like the rest of the world, we will have our eye on Paris this summer, breaking down trademark issues associated with the Olympic Games in a three-part series. Over the course of the next three months, we...more

MarkIt to Market® -The Emperor Has No…Agreement? The USPTO’s Recent Update on “Clothed” Consent Agreements

As any good trademark practitioner knows, a “naked” consent agreement is one in which one party provides consent to the registration of another party’s mark without an explanation of why confusion is unlikely, or what the...more

MarkIt to Market® - December 2023

Thank you for reading the December 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the USPTO's new guidance on "clothed" consent agreements, three ways to protect your identify and avoid...more

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

MarkIt to Market® - October 2023

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

MarkIt to Market® - August 2023: How to Lose a Mark in 3 Ways – Part 3: Naked Licensing

Trademarks help brand owners build and communicate their brand’s reputation and value with the relevant public. Once that valuable goodwill is linked between a mark and the owner’s products and services, trademark owners can...more

MarkIt to Market® - July 2023: How to Lose a Mark in 3 Ways – Part 2: Genericide

One of the signs of a healthy trademark is a certain level of distinctiveness. Distinctiveness is related to consumers’ love and recognition of a mark as an indicator of a product’s source, such that consumers trust the mark...more

MarkIt to Market® - June 2023: How to Lose a Mark in 3 Ways – Part 1

There are plenty of fish in the sea when it comes to trademarks: from word marks to service marks; from symbols to surnames; from product packaging to product design. When the time is right, and you feel like you have found...more

MarkIt to Market® - June 2023

Thank you for reading the June 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we begin a three-part series that closely examines ways to lose trademark rights; share an article that examines the...more

MarkIt to Market® - October 2021: Ignorance is NOT Bliss: Reckless Disregard for the Truth Supports a Finding of Fraud

In a recent precedential TTAB case, Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 21 USPQ2d 1001 (TTAB 2021), the Trademark Trial and Appeal Board found that reckless disregard for the...more

MarkIt to Market® - October 2021

The October 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a precedential TTAB decision regarding fraud; the DEA's proposal to increase production quotas for several schedule I controlled substances,...more

MarkIt to Market® - January 2021

[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

MarkIt to Market® - November 2020: PTO Gives Thanks for... Increasing Trademark Fees in 2021

Effective January 2, 2021, the U.S. Patent and Trademark Office (PTO) will be adjusting – or introducing – a number of Trademark and Trademark Trial and Appeal Board (TTAB) fees. This increase has been a long time coming: the...more

MarkIt to Market® - November 2020

[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

MarkIt to Market® - May 2020: One of These Things is Not Like the Other: Limiting Disclaimers Within Classes of Services

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

MarkIt to Market® - September 2019: Perception is Everything: Use of Component Marks in Commerce

When it comes to proving use of marks in commerce, perception by consumers is everything. If consumers perceive a mark as identifying only a particular component or feature of the goods in a specimen, the PTO will likely...more

Beyond Mere Consent: It's All in the Details

Consent agreements - in which a prior U.S. Patent and Trademark Office (USPTO) rights-holder provides consent to registration of a later-filed trademark - can be an efficient path to registration in situations where the...more

MarkIt to MarketTM - June 2016

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

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