News & Analysis as of

Trademark Registration Foreign Trademark

Smart & Biggar

[Webinar] Developing a sound global trademark filing strategy: key considerations and best practices - November 21st, 12:00 pm -...

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Join us for an insightful webinar with our trademark experts, who will guide you through the complexities of global trademark filing. Over this 45-minute session, you will learn how to protect and expand your brand...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

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

Seyfarth Shaw LLP

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

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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

Linda Liu & Partners

Strategies to Deal with Bad Faith Trademark Rights Enforcement

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The trademark system in China follows the first-to-file rule. As long as the application meets the statutory application requirements, trademark registration can be obtained, resulting in a large number of bad faith...more

Kohrman Jackson & Krantz LLP

Signature Moves: Trademarked Poses Raise Questions in IP Law

A trademark, according to the United States Patent and Trademark Office (“USPTO”), can be “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” Can a body movement be...more

Dorsey & Whitney LLP

Coca-Cola - “Thums Down” on Evidence of Damages in Misrepresentation of Source in Cancellation Proceeding with Unresolved...

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We reported here last summer the outcome of Coca-Cola Company’s petitions to cancel the registrations for the above-captioned marks owned by Meenaxi Enterprise, Inc. Meenaxi appealed the TTAB’s decision to cancel the...more

Gibney Anthony & Flaherty, LLP

Submitting a Trademark Application? Five Trademark Specimen Pitfalls and Best Practices

Whether you are filing a new trademark application or looking to maintain a registration, understanding trademark specimen best practices is key. A common pitfall when filing your application is failing to provide an...more

Maynard Nexsen

U.S. Counsel Required for Foreign Applicants in Trademark Matters

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While it has been almost two years since the United States Patent and Trademark Office (USPTO) changed its Rules of Practice to require representation by U.S. counsel, foreign applicants continue to file trademark...more

Dechert LLP

2021 Trends in Trademarks

Dechert LLP on

Big challenges in clearing new brands - U.S. trademark applications skyrocket - China accounts for 25 percent of U.S. filings - Fraudulent applications abound - “Are We Running Out of Trademarks?” The authors of a Harvard Law...more

Gibney Anthony & Flaherty, LLP

Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your...more

Fox Rothschild LLP

USPTO Trademark Trends

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Thursday I attended the United States Patent and Trademark Office’s (USPTO) virtual webinar on trademark trends and current developments in the United States and in Israel. Among the speakers were Andrei Iancu, the Under...more

Greenberg Glusker LLP

Trademarks & Copyrights: Frequently Asked Questions

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Attorney Elizabeth M. Sbardellati recently presented "Trademarks & Copyrights: How to Protect Your IP Without Breaking the Bank" to a group of women startup owners as part of the Women Founders Network organization. A summary...more

Farella Braun + Martel LLP

Trademark Office Deadlines and Coronavirus-Related Delays

With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more

Haug Partners LLP

Global Developments and Considerations for Registering Cannabis and Cannabis-Related Trademarks

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This article discusses the global developments for the registration of cannabis and cannabis-related trademarks in the United States, Canada, Mexico, and the European Union....more

Haug Partners LLP

USPTO Issues Guidelines Regarding February 15, 2020, Trademark Rule Changes

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Beginning on February 15, 2020, with very few exceptions, submissions before the US trademark office will be required to be filed digitally. Also included in the rule changes and among the most significant change,...more

Seyfarth Shaw LLP

USPTO Updates Rules Regarding Proof of Use of Trademarks

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Synopsis: Beginning December 21, 2019, trademark owners will face increased proof of use/trademark specimen requirements with respect to trademark applications before the US Patent and Trademark Office (“USPTO”)....more

Arnall Golden Gregory LLP

IP Update: Irish and Northern Irish Businesses Now Must Be Represented by a U.S.-Licensed Attorney on USPTO Matters

As of early August, all Irish and Northern Irish persons and entities (whose permanent legal residence or principal place of business is outside the U.S.) are required to be represented by a licensed U.S. attorney in good...more

ArentFox Schiff

You Got No Mail: Foreign Representatives Will Not Get Communications from CIPO on WIPO Applications

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After its recent adoption of the Madrid Protocol, Canada’s Intellectual Property Office will send communications about applications filed under the Madrid Protocol to the applicant or an appointed Canadian trademark agent,...more

International Lawyers Network

United States Licensed Attorney Required for Foreign-Domiciled U.S. Trademarks

Since August 3, 2019, all foreign-domiciled U.S. trademark applicants, registrants and parties to proceedings before the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board must be represented...more

Faegre Drinker Biddle & Reath LLP

Foreign Applicants Must Now Appoint U.S. Counsel for USPTO Trademark Proceedings

In a significant shift from long-standing procedures, the U.S. Patent and Trademark Office (USPTO) recently revised its rules to require that all foreign-domiciled trademark applicants, registrants and parties to trademark...more

Neal, Gerber & Eisenberg LLP

Client Alert: New USPTO Rule Requires Foreign Applicants, Registrants, and Parties to TTAB Proceedings to Be Represented by U.S....

A new USPTO rule recently came into effect that impacts foreign applicants, registrants, and parties to proceedings before the Trademark Trial and Appeal Board (“TTAB”). The new rule requires all foreign applicants,...more

Fox Rothschild LLP

New Rule For Foreign TM Applicants

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Earlier this month, the United States Patent & Trademark Office’s (USPTO) finalized and announced a rule requiring foreign trademark applicants to be represented by a United States licensed attorney when applying for a US...more

Lowndes

New Rule Requires U.S. Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants

Lowndes on

Effective on August 3, 2019, the United States Patent and Trademark Office (USPTO) will require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be...more

Weintraub Tobin

Rule Change Requires U.S. Counsel For Foreign-Domiciled Trademark Applicants

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The United States Patent and Trademark Office (the “USPTO”) explains that- “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used...more

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