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Trademark Registration Intent-to-Use

McDermott Will & Emery

ITU Applicants Beware: Federal Courts Have Jurisdiction Over Pending Trademark Applications

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The US Court of Appeals for the Ninth Circuit affirmed in part a district court’s ruling in a trademark dispute, upholding its decision to invalidate trademark applications. The Ninth Circuit held that district courts have...more

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

MarkIt to Market® - September 2021: Watching the Pot™

Future Intentions Not Enough to Pave the Road to Registration - “Reduces pain,” “alleviates anxiety,” “improves sleep” – these are just some of the claims of the miraculous CBD. The surfeit of new CBD brands and products...more

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

MarkIt to Market® - September 2021

The September 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a recent non-precedential Trademark Trial and Appeal Board decision regarding intent-to-use applications covering CBD products currently...more

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

MarkIt to Market® - August 2021: Tips for Navigating the Current Landscape at the USPTO

If you recently filed a trademark application with the U.S. Patent and Trademark Office, you may have noticed that the average time to first action (initial examination) is about six months from the application’s filing date...more

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

MarkIt to Market® - August 2021

The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Intent-to-Use Applications: Pros and Cons

Owning a federal trademark registration provides the ability to exclude others from using a certain word or design in association with specific goods or services. In the United States this exclusivity of rights, however, can...more

Weintraub Tobin

The Briefing by the IP Law Blog: Let Russ Cook: An NFL-Sized Introduction to ITU Applications

Weintraub Tobin on

In this episode of The Briefing by the IP Law Blog, Josh Escovedo and Scott Hervey discuss NFL athlete Russell Wilson and ITU applications....more

Womble Bond Dickinson

Intellectual Property Considerations and Guidance for Start-Ups: Trademarks

Womble Bond Dickinson on

Trademarks protect distinctive marks, such as brand names, logos, and designs. This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important,...more

Weintraub Tobin

Allegiant Airlines Tips Its Hand Regarding Las Vegas Stadium Rights

Weintraub Tobin on

If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will...more

Bennett Jones LLP

It’s Finally Happening—Major New Trademark Law Takes Effect in Canada on June 17, 2019

Bennett Jones LLP on

After five years of uncertainty and speculation, a date has been set for Canada’s drastic new trademark laws to come into force. Five months from today, on June 17, 2019, brand owners and local, national and global companies...more

Foley Hoag LLP - Making Your Mark

Under the Sea: Sneaky Trademark Filings for Cautious Companies

The general rule of thumb for trademarks in the U.S. – and everywhere else, for that matter – is “the earlier, the better.” It’s almost always the right move to file a trademark application as early as possible, and well in...more

Weintraub Tobin

Amarillo Natives Hold San Diego Padres’ Double A Affiliate Team Name Hostage

Weintraub Tobin on

The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Strikes Down Statute Banning Scandalous and Immoral Trademarks

• The Federal Circuit held that the “immoral or scandalous” clause of Lanham Act § 2(a), which prohibits registration of a trademark that “consists of or comprises immoral or scandalous matter,” is unconstitutional under the...more

Baker Donelson

Dreaming Big: Broad Trademark Protection Requires an Actual Bona Fide Intent to Use

Baker Donelson on

Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark. Brand...more

WilmerHale

Copyright and Trademark Case Review: Copyright Preemption, Software-as-a-Service and Popularity on the Internet

WilmerHale on

Copyright Decisions - Claim for Copying of Useful Article Design Preempted by Copyright Act: Ultraflo Corp. v. Pelican Tank Parts, Inc., No. 15-20084 (5th Cir. Jan. 11, 2017)...more

Morgan Lewis

CAFC: Improper Assignment Voids Trademark Registration

Morgan Lewis on

The US Court of Appeals for the Federal Circuit underscored the importance of being mindful of the prohibition against assigning intent-to-use applications and of carefully constructing agreements for future assignment of...more

Mintz

(Trade)Marking Your Territory in the US: A Guide for Non-US Companies

Mintz on

Trademark rights exist on a country-by-country basis, and the laws in the United States differ in a number of significant ways from other markets. As a result, it is critical that before any non-U.S. company seeks trademark...more

Fish & Richardson

Drumpf or Trump: The Name or The Brand?

Fish & Richardson on

Campaign season makes ripe political commentary. On February 28, 2016, comedian John Oliver featured a segment on his show “Last Week Tonight” about the Republican frontrunner, Donald Trump....more

Knobbe Martens

Trademark Review | July 2015

Knobbe Martens on

Applicant’s Application for Concurrent Use Registration of DELMONICO’S is Denied Due to Likelihood of Confusion with Other Restaurants - The Trademark Trial and Appeal Board (TTAB) refused Southwestern Management’s...more

Stoel Rives LLP

Filing a New ITU Trademark Application? Be Prepared to Prove Your Intent

Stoel Rives LLP on

Staking an early claim to a brand has inspired many hasty (and sometimes ill-advised) trademark applications. For example, trademark applications representing political rallying cries and pop culture slogans such as JE SUIS...more

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