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Lanham Act United States Patent and Trademark Office Trademark Ownership

Seyfarth Shaw LLP

The Legal Dance Off Over the “MJ” Trademark

Seyfarth Shaw LLP on

Before we start the show, the casts of characters may drive you Off the Wall, so here’s a little primer to help you: Triumph International, Inc. (“Triumph”) is a merchandise licensing company for the estate of Michael...more

Ladas & Parry LLP

False Declaration of Incontestability Not Enough to Cancel US Trademark Registration

Ladas & Parry LLP on

Great Concepts has owned Registration No. 2929764 for DANTANNA’S, in association with “steak and seafood restaurant[s]”, since March 2005. In 2006 Chutter Inc’s predecessor-in-interest, Dan Tana, petitioned to cancel the mark...more

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

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

McDermott Will & Emery

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

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

MarkIt to Market® - August 2023: Keeping It Real: The USPTO Implements New Trademark Applicant Address Verification Process

As part of its ongoing efforts to improve and maintain the accuracy of the Trademark Register, and combat trademark scams and bot-filed trademark applications, the USPTO has revised examination procedures for reviewing...more

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

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

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

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

MarkIt to Market® - July 2023

Thank you for reading the July 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we continue our three-part series that closely examines ways to lose trademark rights with a discussion of genericide. We...more

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

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

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

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

Bradley Arant Boult Cummings LLP

How Lizzo Helped the USPTO Identify the Source of “100% THAT B---H”

Recently, Melissa Jefferson, known professionally as Lizzo, took on the USPTO in a battle to establish trademark rights to a popular lyric from her 2017, Billboard-topping song Truth Hurts. The phrase, “100% That B—h”, which...more

Proskauer Rose LLP

Three Point Shot - November 2022

Proskauer Rose LLP on

NBA Properties Lands Slam Dunk in Intellectual Property Win Heard Around the Globe - NBA Properties, Inc. (“NBAP”), the exclusive licensee of the National Basketball Association (“NBA”) and NBA teams’ distinctive trademarks,...more

McDermott Will & Emery

Thee I Dismiss: No Love for Failure to Add Necessary Party

After concluding that a trademark owner’s case for failure to add a necessary party was untenable, the US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of the case because the necessary party...more

Sheppard Mullin Richter & Hampton LLP

Trademark Modernization Act Strengthens Rights of Brand Owners

Trademarks are the heartbeat of all businesses that rely on brand identity to reach their audience. Nowhere is this more important than for entertainment and media companies that constantly struggle through the often...more

Sheppard Mullin Richter & Hampton LLP

Trademark Modernization Act Strengthens Rights of Trademark Owners

The Trademark Modernization Act (TMA) was signed into law on December 27, 2020. The Act introduces significant amendments to the Lanham Act designed to strengthen the rights of legitimate trademark owners. The Act makes it...more

McDermott Will & Emery

Special Report - 2020 IP Law Year in Review: Trademarks

McDermott Will & Emery on

2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable...more

McNees Wallace & Nurick LLC

Clarity on Manufacturer – Distributor Trademark Ownership in Third Circuit

On April 18, 2017, the Third Circuit issued an opinion in Covertech Fabricating, Inc. v. TVM Building Products, Inc., clarifying the test for determining trademark ownership between a manufacturer and distributor, where no...more

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