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Trademark Ownership Trademark Trial and Appeal Board Intellectual Property Protection

Seyfarth Shaw LLP

Bully for You: Cannabis Company Fails to Adequately Plead “Trademark Bullying” Defense Says the TTAB

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In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights. Door Dash, Inc....more

Seyfarth Shaw LLP

New Ruling Expands Trademark Owners’ Rights in Retail Space

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Trademark lawyers are often asked: “What’s the difference between a trademark and a service mark?” In general, a trademark refers to a brand name used in connection with goods, while a service mark is one that is used in...more

Farella Braun + Martel LLP

Certification Marks and Fame

Trademark owners have the right to stop third parties from using marks that could cause a likelihood of consumer confusion. Third-party use of a trademark that is the same or similar to the owner's trademark for goods related...more

Foley Hoag LLP - Making Your Mark

Trailblazers, OutKasts, and Iconic Brands: The INTA Annual Meeting in Atlanta

The INTA Annual Meeting is here! As one of the largest gatherings of trademark professionals from around the world, the INTA Annual Meeting offers opportunities for networking, education, and collaboration. Against the...more

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

Erise IP

What’s Trending in Trademarks, April 2024: Chile/Chili Crunch, Jelly Roll, and Seltzer Sales

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: David...more

ArentFox Schiff

Behind the Stage: The TTAB's “Non-Performing Band Member” Ruling on Disputed Ownership of SPLIT DECISION Trademark

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The world of music often sees as much drama in the courtroom as on the stage. One fight that frequently results in protracted, expensive, and bitter legal disputes is over ownership of a band or group name....more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

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

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

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

MarkIt to Market® - October 2023

Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...more

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

MarkIt to Market® - September 2023

Thank you for reading the September 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the significant revisions to the FTC's guidelines for endorsements and examine the benefits of design...more

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

MarkIt to Market® - August 2023: Keeping It Real: The USPTO Implements New Trademark Applicant Address Verification Process

As part of its ongoing efforts to improve and maintain the accuracy of the Trademark Register, and combat trademark scams and bot-filed trademark applications, the USPTO has revised examination procedures for reviewing...more

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

MarkIt to Market® - August 2023: Welcome to the USPTO!

Earlier this month, the USPTO announced that it intends to send a “Welcome Letter” to applicants or counsel of record who have filed new trademark applications. The letter, which should appear as shown here, will be sent...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

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

MarkIt to Market® - July 2023: How to Lose a Mark in 3 Ways – Part 2: Genericide

One of the signs of a healthy trademark is a certain level of distinctiveness. Distinctiveness is related to consumers’ love and recognition of a mark as an indicator of a product’s source, such that consumers trust the mark...more

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

MarkIt to Market® - July 2023

Thank you for reading the July 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we continue our three-part series that closely examines ways to lose trademark rights with a discussion of genericide. We...more

Fenwick & West LLP

Federal Circuit Turns the Burden on Trademark Owners to Prove Identical Third-Party Marks Are Not in Use

Fenwick & West LLP on

In Spireon, Inc. v. Flex Ltd., No. 2022-1578 (Fed. Cir. June 26, 2023), the Federal Circuit took a surprising turn in which it held that it is the trademark owner’s burden to prove that identical third-party marks put forth...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Clarifies Standard for Tacking Doctrine in Trademark Applications

On April 4, in Charles Bertini v. Apple Inc., the Federal Circuit held that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a...more

Bradley Arant Boult Cummings LLP

Comparing Apple to Apple

On April 4, 2023, jazz musician Charles Bertini emerged victorious in his legal battle against the tech giant Apple Inc. To provide some background, in 2015, Apple launched a streaming service and filed for federal trademark...more

Bradley Arant Boult Cummings LLP

How Lizzo Helped the USPTO Identify the Source of “100% THAT B---H”

Recently, Melissa Jefferson, known professionally as Lizzo, took on the USPTO in a battle to establish trademark rights to a popular lyric from her 2017, Billboard-topping song Truth Hurts. The phrase, “100% That B—h”, which...more

AEON Law

Patent Poetry: Trademark Board Rules 100% for Lizzo

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“File:200126 Lizzo on the 2020 Grammys Red Carpet.png” by Cosmopolitan UK is licensed under CC BY 3.0. The Trademark Trial and Appeal Board (TTAB) has approved the trademark registration of“100% THAT BITCH” by the musical...more

AEON Law

What happens to trademarks when companies die?

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In theory, trademarks can last “forever.” Unlike copyrights and patents, which have finite durations defined by law, a trademark can last as long as its owner maintains it and continues to use it. As the US Patent and...more

Knobbe Martens

Famous Trademark Not Abandoned After Original Owner’s Bankruptcy

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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. Before Lourie, Bryson, and Prost.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: A trademark associated with a...more

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