News & Analysis as of

Trademark Registration Corporate Counsel

Seyfarth Shaw LLP

New Ruling Expands Trademark Owners’ Rights in Retail Space

Seyfarth Shaw LLP on

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

Womble Bond Dickinson

Trademark Insights: What the First Precedential TTAB Expungement Decision Means for You

Womble Bond Dickinson on

As a trademark applicant, encountering a prior registration that obstructs your path to registration is never a pleasant experience (nor for your attorneys who have to inform you about it). The frustration only intensifies...more

Smart & Biggar

Canadian Trademark Law 2023: A Year in Review

Smart & Biggar on

2023 was an active year in Canadian trademark law. Canadian Courts addressed a wide range of issues, from licensing to comparative advertising to co-branding.   Notable changes also emerged from the Canadian Trademarks...more

Fox Rothschild LLP

USPTO Debuts New Trademark Search System

Fox Rothschild LLP on

On November 30, 2023, the United States Patent and Trademark Office (USPTO) unveiled a new cloud-based trademark search system. According to the USPTO, the new system will provide a “more stable search environment with a...more

Haug Partners LLP

Federal Circuit Clarifies The Relevance Of Third-Party Trademark Registrations In Determining The Conceptual And Commercial...

Haug Partners LLP on

In a significant decision, the Federal Circuit has clarified the weight given to third-party registrations in determining the strength of the opposer’s mark and has firmly placed the burden of showing non-use of such marks on...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

Bradley Arant Boult Cummings LLP

Up In Smoke: USPTO Leaves Cannabis-Related Trademark Application in Ashes

After years of uncertainty, the USPTO has finally provided insight on how it views applications for cannabis-related marks, suggesting that the use of such marks will be heavily scrutinized.    In 2016, National Concession...more

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

MarkIt to Market® April 2023: Chinese Trademark Laws: Poised to Change With the Times

In January of this year, the China National Intellectual Property Administration (CNIPA) published its draft 5th Amendment to the Chinese Trademark Law (a translated version is posted...) The proposed amendments would...more

Seyfarth Shaw LLP

Serving the USPTO Director in Actions Involving Non-US Companies: A Little-Known Provision of the Lanham Act

Seyfarth Shaw LLP on

There is a little-known provision of the Lanham Act (the US Trademark Act) that packs a potentially big punch. 15 USC § 1051(e) provides that if a non-U.S. entity registers for a trademark in the United States without...more

Morrison & Foerster LLP

Lessons from Lizzo’s Precedential Trademark Win

American musician and rapper Lizzo recently scored a victory in the Trademark Trial and Appeal Board (the “Board”), reversing the Trademark Office’s refusal to register the “100% THAT BITCH” mark for “clothing, namely,...more

Hogan Lovells

China: Draft Amendments to Trademark Law foreshadow potential major changes

Hogan Lovells on

On 13 January 2023, the China National Intellectual Property Administration (“CNIPA”) published draft amendments to the PRC Trademark Law for public comment. This Draft marks the fifth time that the PRC Trademark Law is up...more

Polsinelli

100% That’s My Trademark: Common Terms Can Be Source Identifiers Under The Right Circumstances

Polsinelli on

A trademark is any word, phrase, symbol, design, or combination of these things that identifies a single source for certain products or services. Trademarks identify the source of certain products or services, provide legal...more

Sunstein LLP

The Long Arm of Trademark Law: Where do we draw the line?

Sunstein LLP on

Can a United States court really award tens of millions of dollars in damages for violation of US trademark law under the Lanham Act where the conduct at issue did not even take place in the United States? According to a...more

Fish & Richardson

USPTO Updates Deadline to Respond to Trademark Office Actions

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) has updated the deadline to respond to Office Actions for trademark applications. As of December 3, 2022, trademark applicants now have three months (instead of the...more

McDermott Will & Emery

Up in Smoke: TTAB Dismisses E-Cigarette Opposition, Provides Guidance for Effective Evidence and Testimony

McDermott Will & Emery on

In a precedential opinion, the Trademark Trial & Appeal Board (Board) dismissed an opposition filed against an application for registration of a logo mark containing the word “SMOKES,” finding no likelihood of confusion with...more

Seyfarth Shaw LLP

The Five Biggest Mistakes the USPTO is Seeing in Expungement and Reexamination Petitions—and How to Avoid Making Them Yourself

Seyfarth Shaw LLP on

The U.S. Patent and Trademark Office (“USPTO”) has received more than 170 petitions for expungement and reexamination since it began accepting these new filings late last year. And although the Office has issued guidance...more

BakerHostetler

Important Changes in USPTO Trademark Practices to Take Effect on Dec. 3, 2022

BakerHostetler on

As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond...more

Faegre Drinker Biddle & Reath LLP

The Ohio State University’s Federal Trademark Registration for “THE” – Can They Do That?

Graduates of The Ohio State University (“Ohio State”) are familiar with fans and supporters (and sometimes, Michigan fans) placing an emphasis on the “THE” when saying the school’s name. But the United States Patent and...more

Holland & Knight LLP

Federal Circuit Court Denies "Lehman Brothers" Trademark for Whiskey

Holland & Knight LLP on

The U.S. Court of Appeals for the Federal Circuit on June 1, 2022, issued an order in favor of Barclays Capital Inc. (Barclays) in relation to its opposition to a trademark application for LEHMAN BROTHERS. The court affirmed...more

Smart & Biggar

Trademark troll loses registration after appropriating well-known mark

Smart & Biggar on

The Federal Court of Canada, in a May 2022 decision,1 has ordered a B.C. man’s trademark registration to be expunged for “bad faith” after finding it was filed solely for the purpose of resale. This is the first decision in...more

BakerHostetler

Decentralized Domains: Metaverse Land Grab

BakerHostetler on

As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it...more

McDermott Will & Emery

It’s Not in the Bag: TTAB Refuses to Register Generic Handbag Design

McDermott Will & Emery on

Ending a hard-fought three-year campaign to secure registration of a popular handbag, the US Patent & Trademark Office (PTO) Trademark Trial & Appeal Board designated as precedential its decision refusing registration of the...more

Dickinson Wright

Trademark Modernization Act—What New and Upcoming Changes Could Mean for Your Trademarks

Dickinson Wright on

The Trademark Modernization Act (“TMA”) was signed into law on December 27, 2020. Among other things, the TMA created new procedures for challenging pending applications and registrations and updated several rules relating to...more

McDermott Will & Emery

“TRUMP TOO SMALL” Trademark Decision Leaves Big Questions

McDermott Will & Emery on

Revisiting jurisprudence touching on the Lanham Act and the First Amendment from the Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti, the US Court of Appeals for the Federal Circuit held that applying Sec....more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Refusal to Register Generic Top-Level Domain Trademarks

On February 2, in In re: Vox Populi Registry Ltd., the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) refusal to register a standard character mark and a stylized mark, both related to the “.sucks”...more

107 Results
 / 
View per page
Page: of 5

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide