News & Analysis as of

Trademark Application Trademarks Abandonment

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

MarkIt to Market® – April 2024: Trademarks are for Parents, Not Children

Children are all too familiar with parents telling them that everything they own is actually mom and dads. And as frustrating as this is to hear as a child, a recent opinion from the U.S. Patent and Trademark Office’s...more

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

MarkIt to Market® – April 2024

Welcome to the April 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss why it’s important for businesses to think critically about who they are listing as their trademark owners, how the TTAB...more

Vondran Legal

Proper grounds to cancel another companies trademark

Vondran Legal on

In business, trademarks are everything. It's how consumers come to know, love and trust your brand. It's a valuable corporate asset, and many disputes can arise of name rights with the explosion of e-commerce and the...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: 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

Holland & Knight LLP

Don't Forget IP Rights When Planning an Estate

Holland & Knight LLP on

As highlighted by a recent Trademark Trial & Appeal Board (TTAB) decision, Clementvision, Inc. v. Robert Clement, expressly including intellectual property rights in an estate plan can prevent complicated issues from arising....more

Dorsey & Whitney LLP

First a Meme, Then a Cryptocurrency, and Now an $80 Billion Brand? Dogecoin Continues Its Rollercoaster Journey into the USPTO.

Dorsey & Whitney LLP on

What first started as a meme featuring a fluffy dog with poor grammar has now resulted in a trademark fight over the ownership of an estimated $80 billion brand. If the progression of this Internet sensation has left your...more

Akerman LLP - Marks, Works & Secrets

Lehman Brothers is Gone but Not Abandoned

On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant...more

Akerman LLP - Marks, Works & Secrets

When Abandonment Isn’t Abandonment: Use of an “Abandoned” Mark by a Subsidiary

The Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by...more

Akerman LLP - Marks, Works & Secrets

Unitary Design Mark Rescues a Phrase Which Failed To Function As A Trademark

In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its...more

Dorsey & Whitney LLP

Adidas’ All-In Dispute with Church Sheds Light on Trademark Abandonment and Failure to Function as a Trademark

Dorsey & Whitney LLP on

In 2005, Christian Faith Fellowship Church, a Chicago-based church group, filed two trademark applications for the mark ADD A ZERO for use on clothing, including shirts and caps that they later sold to raise money for...more

Dorsey & Whitney LLP

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

Dorsey & Whitney LLP on

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

Smart & Biggar

Year-end Round-up: Notable Trademark Case Law From 2018

Smart & Biggar on

There were many interesting trademark cases coming out of 2018, a few of which are discussed below. The scope of Canada’s anti-dilution remedy (section 22 of the Trademarks Act) is not limited to a defendant’s use of a...more

Knobbe Martens

Trademark Review | May 2016

Knobbe Martens on

Surname Not Registrable Absent Substantially Exclusive Use - As a result of various third-party uses of the surname “Ayoub” for similar services, Applicant’s use of AYOUB did not meet the requirement of Section (f) that...more

McDermott Will & Emery

Grrrr . . . Paw Print Trademarks Can Co-Exist - Jack Wolfskin Ausrustung Fur Draussen GmbH & Company KGAA v. New Millennium...

McDermott Will & Emery on

On appeal from the Trademark Trial and Appeal Board (TTAB or Board), the U.S. Court of Appeals for the Federal Circuit reversed the Board’s decision on the issue of likelihood of confusion with regard to two parties’ paw...more

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