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Trademark Application Use in Commerce Trademark Registration

Pillsbury - Propel

Trademark Fundamentals: Use in Commerce

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Startup founders looking to protect their brands need to understand the concept of “use in commerce” to successfully register their trademarks with the U.S. Patent and Trademark Office (USPTO). This article will break down...more

Tarter Krinsky & Drogin LLP

Search and File, Here and There!

There once was a company named Zotz, Which created toys for tots, It set up abroad, of course! But filing first is KnockOffSource, Can Zotz manufacture? Methink “notz!” First published in Inside magazine, NYSBA, Fall...more

Fox Rothschild LLP

TM Registration Specimens

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To apply for a federally-registered trademark with the United States Patent and Trademark Office (USPTO), an applicant is required under 15 U.S.C. § 1051 to, among other things, submit specimens of the mark and verify that it...more

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

MarkIt to Market® - September 2020: CB – Don'ts

Creativity abounds in the CBD industry – both in the wide variety of products infused with it, and in the efforts undergone by applicants trying to circumvent the Trademark Act to register per se unlawful CBD-infused...more

International Lawyers Network

What happens to EU trade marks after Brexit?

A mere three and a half years after the 2016 referendum on membership of the European Union, the UK looks set to “leave” the EU on 31 January 2020. Instead of exiting without a deal (which at one stage looked distinctly...more

Knobbe Martens

Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Medical Device?

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The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an “Intent to Use” basis to establish a priority date before the mark is actually “used in commerce.” However, such use in...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

Knobbe Martens

Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Product?

Knobbe Martens on

The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an “Intent to Use” basis to establish a priority date before the mark is actually “used in commerce.” However, such use in...more

Ladas & Parry LLP

What Qualifies As Acceptable Use In U.S. Commerce? (UPDATED)

Ladas & Parry LLP on

The mark must be used “in Commerce” and in good faith in the ordinary course of trade. While the USPTO will generally not conduct an inquiry, the applicant must claim use that qualifies as “Use in U.S. Commerce”. ...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

McDermott Will & Emery

Website Printout: Acceptable Specimen of Use or Advertising?

Addressing whether a webpage printout showed use of a mark in commerce, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s (TTAB’s) decision denying registration of the mark and...more

Hutchison PLLC

Markedly Misunderstood: 4 Common Misconceptions About Trademarks

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Everyone is familiar with Trademarks. We are literally surrounded by them. Trademarks are the words, logos, packaging and other devices that we use to differentiate goods and services from each other and are how we can...more

Smart & Biggar

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

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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

International Lawyers Network

New Trademark Laws – Canada | Part I

June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners?...more

Foley & Lardner LLP

Ready to Release a New Pharmaceutical? What to Think About When Selecting Your Drug Name

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Pharmaceutical name clearance in the United States can be complicated. This post aims to provide insight into the regulatory safety review process and the trademark registration process for candidate drug names. This...more

Gray Reed

Back to Basics: Trademarks – Part 3

Gray Reed on

Have you used your mark in commerce and what is the impact of that? If you are already selling your product or service with the mark on it, you are “using” your mark in commerce. As a result, you will need to provide...more

Knobbe Martens

Trademark Review | May 2016

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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

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