News & Analysis as of

International Trademark Protection

Offit Kurman

Navigating the USPTO’s New Trademark Fees

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It’s finally here. After months of warnings, announcements, and uneasiness about their application, the U.S. Patent and Trademark Office implemented a number of trademark-related fee changes in January 2025. These fees...more

Holland & Knight LLP

COGNAC, Hip Hop and Fame: A Trademark Showdown with a Twist

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You might be wondering what cognac, hip-hop and fame have in common. The answer, at least in a recent opinion by the U.S. Court of Appeals for the Federal Circuit, is certification trademarks. We have written in the past...more

Womble Bond Dickinson

What in the [Meta]World?: Abitron Creates More Questions than Answers

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At a glance, a unanimous Supreme Court, holding that two provisions of the trademark-governing Lanham Act (15 U.S.C. §§ 1114(1)(a) and 1125(a)(1)) do not apply extraterritorially and extend only to alleged infringement in...more

Seyfarth Shaw LLP

UGG(H), My Business Needs to Change its Name –A Cautionary Tale for International Trademark Strategy

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A longstanding Australian brand, UGG Since 1974, is fighting for the right to use its UGG trademark for footwear in the United States. Deckers Outdoor Corporation, a US-based shoe company, filed a lawsuit against the...more

Bond Schoeneck & King PLLC

Fee Changes for Trademark Matters

The United States Patent and Trademark Office (USPTO) has announced changes to trademark fees, all of which will take effect on Jan. 18, 2025, except for the fees for international applications filed under the Madrid...more

Smart & Biggar

[Webinar] Developing a sound global trademark filing strategy: key considerations and best practices - November 21st, 12:00 pm -...

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Join us for an insightful webinar with our trademark experts, who will guide you through the complexities of global trademark filing. Over this 45-minute session, you will learn how to protect and expand your brand...more

Troutman Pepper Locke

The Madrid Protocol - August 2024

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The United States is a party to the Madrid Protocol, an international treaty simplifying and centralizing the process for registering trademarks on an international basis. This treaty allows owners of U.S. trademark...more

Troutman Pepper Locke

The Madrid Protocol - July 2024

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The United States is a party to the Madrid Protocol, an international treaty simplifying and centralizing the process for registering trademarks on an international basis. This treaty allows owners of U.S. trademark...more

Kilpatrick

5 Key Takeaways | Recent Developments in United States Trademark and Unfair Competition Law

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Kilpatrick partner Ted Davis spoke recently at the American Intellectual Property Law Association’s Spring Meeting and at the International Trademark Association’s annual meeting on recent developments in United States...more

Womble Bond Dickinson

WIPO Publishes Madrid Yearly Review 2024: A WBD Summary

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The World Intellectual Property Organization (WIPO) recently published its annual Madrid Yearly Review, offering a comprehensive overview of the facts, figures, and analyses of the international registration of marks....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® – May 2024: INTA Annual Meeting Session: Using the USPTO’s Federal Trademark Search System

At last week’s INTA Annual Meeting, Sterne Kessler Counsel Lauriel Dalier moderated a discussion with Jason Lott, Managing Attorney for Trademarks Customer Outreach at the United States Patent and Trademark Office, on...more

Womble Bond Dickinson

WIPO Adopts New IP Treaty on Genetic Resources & Traditional Knowledge

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After nearly a quarter of a century, the World Intellectual Property Organization (WIPO) has approved the passage of a new IP treaty: the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional...more

ArentFox Schiff

Making Waves: Navigating the Tide of Artistic Freedom and Trademark Protections in the Vans v. MSCHF Case

ArentFox Schiff on

On December 5, 2023, the Second Circuit Court of Appeals issued a precedent-setting decision in favor of the prominent skateboarding footwear and apparel brand, Vans. The decision centered on the satirical art collective...more

Troutman Pepper Locke

The Madrid Protocol - January 2024

Troutman Pepper Locke on

The United States is a party to the Madrid Protocol, an international treaty simplifying and centralizing the process for registering trademarks on an international basis. This treaty allows owners of U.S. trademark...more

Morrison & Foerster LLP

Don’t Miss The Mark: Complying with New Address for Service Rules for UK Trade Marks

Morrison & Foerster LLP on

We would like to bring to your attention that there are new “address for service” rules coming into effect on 1 January 2024 at the UK Intellectual Property Office (UKIPO) which may have an impact on your trade mark...more

Katten Muchin Rosenman LLP

Inside, Outside, USA: Key Developments on the Boundaries of Injunctive Relief in Trademark Disputes - Katten Kattwalk | Issue 26

Does federal trademark law reach conduct outside of the United States? The Supreme Court addressed this question recently in Abitron Austria v. Hetronic International, Inc., which prompted us to revisit a related issue we...more

Fox Rothschild LLP

New USPTO Madrid Protocol Webpages

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The United States Patent and Trademark Office (USPTO) recently issued a bulletin on the New Madrid Protocol webpages for international trademark applicants (govdelivery.com). Specifically, the USPTO explains that its website...more

Quarles & Brady LLP

China Starts Registering Trademarks Filed for NFTs and Virtual Goods in the Metaverse

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The Trademark Office of the China National Intellectual Property Administration (“Chinese Trademark Office” or “the Office”) has recently approved a slew of marks filed for non-fungible tokens (“NFTs”) and other goods and...more

Tarter Krinsky & Drogin LLP

Search and File, Here and There!

There once was a company named Zotz, Which created toys for tots, It set up abroad, of course! But filing first is KnockOffSource, Can Zotz manufacture? Methink “notz!” First published in Inside magazine, NYSBA, Fall...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - August 2023: Happy to Wait! New Rules Allow for Suspension of Trademark Review Cases in China

As we previously reported, in January of this year, the China National Intellectual Property Administration (CNIPA) published its Draft 5th Amendment to the Chinese Trademark Law. See here. One of the proposed amendments no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - August 2023

Thank you for reading the August 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we conclude our series that explores ways to lose trademark rights with an examination of naked licensing, discuss a...more

McAfee & Taft

SCOTUS rules Lanham Act does not have extraterritorial reach

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In the United States, trademarks are governed on the federal level by the Lanham Act (also known as the Trademark Act of 1946), which was enacted on July 5, 1946, and is codified at 15 U.S.C. § 1051 et seq. The Lanham Act...more

Fenwick & West LLP

A Domesticated Lanham Act: Supreme Court’s Abitron Ruling Opens New Debate on Foreign Reach of U.S. Trademark Law

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The Supreme Court’s June 29, 2023, decision in Abitron Austria GMBH v. Hetronic Int’l, Inc., No. 21-1043, ended decades of circuit splits on the standard for determining the extraterritorial reach of the Lanham Act (see our...more

Sullivan & Worcester

Supreme Court Rules U.S. Trademark Law Does Not Apply to Foreign Conduct

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On June 29, 2023, in Abitron Austria GmbH v. Hetronic International, Inc., the U.S. Supreme Court ruled that the Lanham Act does not have an extraterritorial scope and applies only in cases where the alleged infringing “use...more

McDermott Will & Emery

Supreme Court Limits the Lanham Act’s Extraterritorial Reach

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In a decision that may make it more difficult for brand owners to enforce their marks against infringers located outside of the United States, the Supreme Court of the United States vacated the judgment of the US Court of...more

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