The Briefing by the IP Law Blog: Let Russ Cook: An NFL-Sized Introduction to ITU Applications
Protecting Your Brand in China
The US Court of Appeals for the Ninth Circuit affirmed in part a district court’s ruling in a trademark dispute, upholding its decision to invalidate trademark applications. The Ninth Circuit held that district courts have...more
Future Intentions Not Enough to Pave the Road to Registration - “Reduces pain,” “alleviates anxiety,” “improves sleep” – these are just some of the claims of the miraculous CBD. The surfeit of new CBD brands and products...more
The September 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a recent non-precedential Trademark Trial and Appeal Board decision regarding intent-to-use applications covering CBD products currently...more
If you recently filed a trademark application with the U.S. Patent and Trademark Office, you may have noticed that the average time to first action (initial examination) is about six months from the application’s filing date...more
The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more
After decades of mounting pressure from Native American groups, fans, activists and even corporate sponsors, the NFL’s Washington Redskins recently announced that it would be changing its team name and logo after 87 years of...more
The United States Trademark Trial and Appeal Board (TTAB) recently refused registration to two trademark applications for cannabis and marijuana vaporizers, finding no bona fide intent to lawfully use the marks in commerce...more
Trademarks protect distinctive marks, such as brand names, logos, and designs. This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important,...more
If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will...more
For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United...more
Earlier this month, a federal jury in North Carolina hit Walmart with a $95.5 million verdict for its willful infringement of Variety Stores, Inc.’s “BACKYARD” trademarks. The jury awarded $45.5 million as a reasonable...more
In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more
• The Federal Circuit held that the “immoral or scandalous” clause of Lanham Act § 2(a), which prohibits registration of a trademark that “consists of or comprises immoral or scandalous matter,” is unconstitutional under the...more
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
For a mobile application developer, clearing the Apple® App Store's® often lengthy approval process and seeing the mobile application available for purchase may seem like the last necessary step to establish use of the name...more
Staking an early claim to a brand has inspired many hasty (and sometimes ill-advised) trademark applications. For example, trademark applications representing political rallying cries and pop culture slogans such as JE SUIS...more
Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual...more
Nationstar Mortgage LLC v. Mujahid Ahmad - The United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB or Board) sustained an opposition on the basis of fraud, finding that Ahmad’s...more
Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications...more
Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at...more
For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at...more
The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications. In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section...more
In a precedential decision issued last week, the Trademark Trial and Appeal Board (TTAB) cancelled a registration because it was based on an intent-to-use (ITU) application that had been the subject of an intra-corporate...more
It is a basic principle of trademark law that a mark can only be assigned with the goodwill of the business to which the mark relates, for the good reason that the mark is in fact inseparable from the business. But what kind...more