News & Analysis as of

Trademark Registration Abandonment Intellectual Property Protection

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

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

MoFo Life Sciences

It Takes Two To Taco: Taco John’s Abandons “Taco Tuesday” Trademark Registration

MoFo Life Sciences on

On July 18, 2023, the phrase “Taco Tuesday” was returned to the public after Taco John’s submitted a notice of abandonment for its TACO TUESDAY trademark registration before the United States Patent & Trademark Office’s...more

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

MarkIt to Market® - June 2023: How to Lose a Mark in 3 Ways – Part 1

There are plenty of fish in the sea when it comes to trademarks: from word marks to service marks; from symbols to surnames; from product packaging to product design. When the time is right, and you feel like you have found...more

AEON Law

What happens to trademarks when companies die?

AEON Law on

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

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

Mintz - Intellectual Property Viewpoints

How to Maintain Your Trademark Rights When Your Business is Closed

Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to...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

Ladas & Parry LLP

Evaluating The USPTO’s Efforts To Clean Up The U.S. Trademark Register

Ladas & Parry LLP on

An ongoing issue for the United States Patent and Trademark Office (USPTO) has been the number of trademark registrations where registrants do not actually use or intend to use their marks on all of the goods and services...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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