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Trademark Application Trademark Opposition Proceedings Trademark Registration

Pillsbury - Propel

Trademark Fundamentals: Opposition and Cancellation Proceedings

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For startup founders, navigating the complexities of trademark law is essential for protecting your brand. An important aspect of this process involves understanding opposition and cancellation proceedings. These are formal...more

McDermott Will & Emery

Word From on High: Provide Reasoned Explanation When Departing From Established Practice

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In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its...more

McDermott Will & Emery

Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).

McDermott Will & Emery on

The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more

Perkins Coie

CNIPA Issues Significant Draft Amendment to the PRC Trademark Law

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The China National Intellectual Property Administration (CNIPA) circulated a draft amendment to the PRC Trademark Law (TML Draft Amendment) for public comment on January 13, 2023. The TML Draft Amendment is the product of...more

International Lawyers Network

Opposing A Trademark Application In Colombia Based On A U.S. Trademark

Exclusive rights over a trademark in Colombia arise solely from registration. Therefore, the general rule is that a trademark registered or protected under the legislation of a different country may not be used as valid...more

International Lawyers Network

Can Trademark Applications and Administrative Proceedings Subject a Foreign Applicant to Service or Jurisdiction in Court...

Suppose that you are a foreign applicant who either files a trademark application, opposition proceeding, or cancellation proceeding with the USPTO. Can this act of filing subject the foreign applicant to service of process...more

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

MarkIt to Market® - August 2021: Tips for Navigating the Current Landscape at the USPTO

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

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

MarkIt to Market® - August 2021: Persistence Pays Off – A Series of Monster Trademark Disputes

Monster Energy Co. (“Monster Energy”), frequent trademark plaintiff, recently found itself on the receiving end of a trademark infringement lawsuit brought by California company Outdoor Pro Shop, Inc. (“Pro Shop”). Pro Shop’s...more

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

MarkIt to Market® - August 2021

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

Farella Braun + Martel LLP

Trademark Office Deadlines and Coronavirus-Related Delays

With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more

International Lawyers Network

Harry and Meghan’s trade mark problem – third party jumps on the bandwagon and applies to register same mark in the EU to cover...

The Duke and Duchess of Sussex submitted a trade mark application with the World Intellectual Property Office last year to register “SUSSEX ROYAL” in the UK, EU, Australia, Canada and the US. The application covers a range of...more

Dorsey & Whitney LLP

Wine Dispute Has No Legs: Trademark Opposition Alone Insufficient to Create a Justiciable Controversy for Declaratory Judgment...

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Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement...more

Dorsey & Whitney LLP

Trademark Practice Tip: How to Settle a Trademark Opposition Proceeding and Obtain Judgment Against the Applicant After an...

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Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more

International Lawyers Network

Simon Cowell picks bone with “The Pets Factor” UK trade mark

When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when...more

International Lawyers Network

Understanding Trademarks Act Changes

On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement,...more

Foley Hoag LLP - Making Your Mark

Law Students Seek to “Free Rapunzel from The Trademark Tower” by Opposing RAPUNZEL as a Trademark for Dolls

In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark...more

Neal, Gerber & Eisenberg LLP

Client Alert: #FreeRapunzel: Trademark Trial and Appeal Board Loosens Standing Requirements

In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real...more

Akerman LLP - Marks, Works & Secrets

Rapunzel May Be Released From Trademark Monopoly Tower

Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin....more

Dorsey & Whitney LLP

Vegas Hockey Team Faces Off Against The U.S. Army Over Trademark Dispute

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The Vegas Golden Knights, an expansion team based in Las Vegas that joined the National Hockey League (NHL) earlier this year, have had a surprisingly successful “rookie year,” both on the ice and at the box office. This...more

Knobbe Martens

Just Like You and Me: Difficulties with Celebrity Trademark Applications

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Under U.S. trademark law, any person (including a celebrity) can obtain a trademark registration for their name if they can establish that the public recognizes the name as a source identifier for certain products or...more

Foley & Lardner LLP

What Every Business Should Know About Coming Community Trade Mark Reform

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Significant changes are coming to the Community Trade Mark or “CTM” starting in 2016. Since 1996, the CTM has provided a unitary trademark registration system to protect trademarks within the European Union, which now has 28...more

Knobbe Martens

Getting The Deal Through - Trademarks 2016: United States

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1. Ownership of marks - Who may apply? An application may be filed by any person or legal entity that uses or intends to use a mark in connection with goods sold or distributed, or services transacted, in United...more

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