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Trademark Application Corporate Counsel United States Patent and Trademark Office

Womble Bond Dickinson

Trademark Insights: What the First Precedential TTAB Expungement Decision Means for You

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As a trademark applicant, encountering a prior registration that obstructs your path to registration is never a pleasant experience (nor for your attorneys who have to inform you about it). The frustration only intensifies...more

Falcon Rappaport & Berkman LLP

Cannabis Rescheduling – A Look Towards the Future of the Industry

The Drug Enforcement Administration (DEA) will call for cannabis to be rescheduled according to a report by the Associated Press. The anticipated rescheduling follows the Department of Health & Human Services’ (HHS) August...more

Seyfarth Shaw LLP

Federal Circuit Overturns Fifty Years of TTAB Precedent

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The Federal Circuit recently released an eye-catching opinion in Great Concepts, LLC v. Chutter, Inc., — F. 4th –, Case No. 2022-1212, 2023 WL 6854647 (Fed. Cir. Oct. 18, 2023). The panel of three judges held, in a...more

Bradley Arant Boult Cummings LLP

Up In Smoke: USPTO Leaves Cannabis-Related Trademark Application in Ashes

After years of uncertainty, the USPTO has finally provided insight on how it views applications for cannabis-related marks, suggesting that the use of such marks will be heavily scrutinized.    In 2016, National Concession...more

Seyfarth Shaw LLP

Serving the USPTO Director in Actions Involving Non-US Companies: A Little-Known Provision of the Lanham Act

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There is a little-known provision of the Lanham Act (the US Trademark Act) that packs a potentially big punch. 15 USC § 1051(e) provides that if a non-U.S. entity registers for a trademark in the United States without...more

Buckingham, Doolittle & Burroughs, LLC

If a Good is not a Good, then a Trademark is not a Trademark

The Trademark Trial and Appeal Board (TTAB) adopted a new rule for evaluating whether non-syndicated news columns are “goods in trade” under the Lanham Act in In re The New York Times Company, a precedential opinion issued on...more

Polsinelli

100% That’s My Trademark: Common Terms Can Be Source Identifiers Under The Right Circumstances

Polsinelli on

A trademark is any word, phrase, symbol, design, or combination of these things that identifies a single source for certain products or services. Trademarks identify the source of certain products or services, provide legal...more

Fish & Richardson

USPTO Updates Deadline to Respond to Trademark Office Actions

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) has updated the deadline to respond to Office Actions for trademark applications. As of December 3, 2022, trademark applicants now have three months (instead of the...more

Seyfarth Shaw LLP

The Five Biggest Mistakes the USPTO is Seeing in Expungement and Reexamination Petitions—and How to Avoid Making Them Yourself

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The U.S. Patent and Trademark Office (“USPTO”) has received more than 170 petitions for expungement and reexamination since it began accepting these new filings late last year. And although the Office has issued guidance...more

Dorsey & Whitney LLP

Blood May be Thicker than Water, but is it Thicker than Federal Trademark Rights? One Family’s Relationship Tested at the USPTO

Dorsey & Whitney LLP on

​​​​​​​Slovenian-born Luka Doncic became a professional basketball player at the young age of sixteen years old and the towering height of 6’7”. He quickly made a name for himself, leading his Spanish team Real Madrid to the...more

Faegre Drinker Biddle & Reath LLP

The Ohio State University’s Federal Trademark Registration for “THE” – Can They Do That?

Graduates of The Ohio State University (“Ohio State”) are familiar with fans and supporters (and sometimes, Michigan fans) placing an emphasis on the “THE” when saying the school’s name. But the United States Patent and...more

McDermott Will & Emery

It’s Not in the Bag: TTAB Refuses to Register Generic Handbag Design

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Ending a hard-fought three-year campaign to secure registration of a popular handbag, the US Patent & Trademark Office (PTO) Trademark Trial & Appeal Board designated as precedential its decision refusing registration of the...more

Dickinson Wright

Trademark Modernization Act—What New and Upcoming Changes Could Mean for Your Trademarks

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The Trademark Modernization Act (“TMA”) was signed into law on December 27, 2020. Among other things, the TMA created new procedures for challenging pending applications and registrations and updated several rules relating to...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Refusal to Register Generic Top-Level Domain Trademarks

On February 2, in In re: Vox Populi Registry Ltd., the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) refusal to register a standard character mark and a stylized mark, both related to the “.sucks”...more

Chambliss, Bahner & Stophel, P.C.

Changes to Trademark Act Include New Procedure to Challenge Applications

On December 27, 2020, President Trump signed the bipartisan COVID-19 relief and government funding bill which includes the Trademark Modernization Act of 2020 (TMA). The TMA, which will become effective in one year,...more

Jones Day

Takeaways from Trademark Law in 2020 and Looking Ahead to 2021

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In this White Paper, we share observations on 2020's most significant developments in trademark law. This year, the U.S. Supreme Court penned three opinions concerning what constitutes a protectable trademark, available...more

Fox Rothschild LLP

The TTAB Continues Its Recent Trend Of Failure-To-Function Refusals

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On December 1, 2020, the TTAB continued its recent trend of decisions refusing to register marks on the ground of failure-to-function. In another precedential decision, the TTAB refused Applicant Lee Greenwood’s (“Greenwood”)...more

Fox Rothschild LLP

Want To Save Money? Address Your Trademark Issues Now.

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For the first time in nearly three years, the USPTO will be adjusting its fees for Trademark Registrations and for filing fees related to proceedings involving the Trademark Trial and Appeal Board (TTAB). Some fee increases...more

BakerHostetler

USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Applications Abandoned Because of...

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To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak...more

Tarter Krinsky & Drogin LLP

U.S. Patent And Trademark Office Changes The New Email Address Rule

In this Alert, we reported on the new email address rule. The U.S. Patent and Trademark Office (USPTO), based on objections from trademark attorneys throughout the U.S., has now modified the new email address rule to permit...more

Morrison & Foerster LLP

New USPTO Rule Likely To Increase Spam

The United States Patent and Trademark Office (USPTO) just issued new rules that directly affect trademark owners. Going forward, trademark applicants, registrants, and parties to a proceeding before the Trademark Trial and...more

Morgan Lewis

The Practical Impact of USPTO Rule Changes on Your Trademark Filings

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The US Patent and Trademark Office (USPTO) confirmed that new rules relating to email addresses required for trademark applicants and registrants and new specimens requirements will go into effect this week. A new examination...more

Akerman LLP - Marks, Works & Secrets

Cannabis Trademarks Redux

In a case affecting the fast-growing legal cannabis industry, the Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the United States Patent and Trademark Office’s (“USPTO”) refusal to register two trademarks for...more

ArentFox Schiff

USPTO Announces New Rule Requiring US-Licensed Attorneys to Represent Foreign Applicants and Registrants

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In response to the significant increase in fraudulent filings, effective August 3, 2019, all foreign-domiciled applicants, registrants, or parties to trademark proceedings must be represented by a US-licensed attorney....more

Mintz - Intellectual Property Viewpoints

Navigating the Legalization of Hemp under the 2018 Farm Bill Involves Changes to the Issuance of Federal Trademarks in the...

Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and...more

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