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Trademark Application Trademark Opposition Proceedings Trademarks

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).

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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

Smart & Biggar

[Ongoing Program] Contentious trademark proceedings: What brand owners should know about defending and enforcing their rights in...

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This spring, join our Smart & Biggar trademark experts and gain new insights at our popular Canadian Trademarks webinar series. Each webinar provides practical tips and strategies for global brand protection in Canada, with a...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

Dunlap Bennett & Ludwig PLLC

Beyoncé Receives Big Win in “BLUE IVY CARTER” Trademark Opposition

Beyoncé, named by Forbes as the Most Powerful Woman in Entertainment, has built a business empire that stretches into entertainment, fashion, major product endorsements, as well as music production and streaming distribution....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

Smart & Biggar

Canadian Trademarks Office issues new limits on extensions of time for responding to office actions

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Prior to January 17, 2020, extensions of time were readily available during Canadian trademark prosecution.  A single six-month extension could be secured without providing any substantive reasons. Further six-month...more

International Lawyers Network

Is BURNS NIGHT OFF KILT-ER?: Scotch, Trademarks & Distilling American Meanings

On December 4, 2019, the Scotch Whiskey Association filed opposition to the trademark application of ASW Distillery LLC, an Atlanta distiller, that was seeking the mark BURNS NIGHT for an American malt whiskey, noticeably...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

When appealing bears fruit: Pear Technologies v EUIPO – Apple

Are apples different from pears? Or are they both just fruit? Or, as cockney rhyming slang would have it, are they stairs? These are the questions (excepting the last one) that the distinguished judges of the Court of Justice...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

Harris Beach PLLC

Beer Trademarks – Office Actions, Opposition, and Cancellation

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After you file a trademark application for your brewery name or a beer name there are a couple different paths the application could take, not all of them good. This article will focus on some of those paths....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

“No beer flow” – NHL sues seller of Stanley Cup-themed beer cups for trademark infringement

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Back in February, we covered the trademark dispute between the U.S. Army and the Las Vegas Golden Knights professional ice hockey team. As we predicted, the Army and the Golden Knights have now settled that matter by...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

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