News & Analysis as of

Trademark Registration Non-Use of Trademarks Trademarks

Linda Liu & Partners

How Do Trademark Registrants for OEM Production Respond to Cancellation based on Non-use for 3 Consecutive Years?

Linda Liu & Partners on

In recent years, the number of cancellations based on non-use of trademarks for 3 consecutive years has increased year by year. When submitting use evidence to the CNIPA in response to the cancellation, there is a situation...more

Seyfarth Shaw LLP

Spireon Decision Shifts Burden of Proving Non-Use to Opposer

Seyfarth Shaw LLP on

The Federal Circuit partially refuted the long held assumption that the trademark applicant has the burden of proving third party marks were in use when determining the strength of the applicant mark. The panel led by Judge...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

Jones Day

Trademark Revocation Actions for Non-Use: Who Bears the Burden?

Jones Day on

CJEU Decision  - In Maxxus Group GmbH v Globus Holding GmbH C‑183/21, the CJEU was asked whether German procedural rules were consistent with Article 19 of the Directive (EU) 2015/2436 on revocation of trademark rights for...more

Levenfeld Pearlstein, LLC

Modern Problems: Recent and Upcoming Changes to US Trademark Practices Could Impact Your Business

The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The TMA amended the federal trademark law (known as the Lanham Act) to provide new tools to address abuses of the US trademark...more

Dunlap Bennett & Ludwig PLLC

Trademark Alert: USPTO Announces Temporary Excusable Nonuse Exemption for Trademark Owners Impacted by COVID-19

In response to the protracted impact of COVID-19, the US Patent and Trademark Office (USPTO) has determined that the pandemic constitutes an extraordinary situation warranting several announcements over the past year that...more

International Lawyers Network

Can U.S. Trademark Registrations Be Cancelled for Non-Use?

Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if you file a federal trademark application and the U.S. Patent and Trademark Office refuses registration of...more

Bradley Arant Boult Cummings LLP

Overcoming TM Maintenance Filing Hurdles Amid Pandemic

As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create new obstacles for registrants. To maintain a federal trademark registration, registrants must periodically file an...more

Bradley Arant Boult Cummings LLP

As Pandemic Drags On, Trademark Registrants May Face Maintenance Filing Hurdles

Despite the black humor that March 2020 has never actually ended, time does keep marching on and presenting new challenges. As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create...more

Williams Mullen

PODCAST: Williams Mullen's Trending Now - Enforcing and Expanding Your Brand During the COVID-19 Pandemic

Williams Mullen on

On the latest episode of Williams Mullen's Trending Now - An IP Podcast, Ed White is joined by Janet Cho to discuss specific strategies to protect and enhance your brand during the COVID-19 pandemic....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

Fox Rothschild LLP

Excusable Nonuse Of A Trademark Due To Coronavirus

Fox Rothschild LLP on

With the closure of “non-essential” businesses throughout the country and the world, the use of trademarks on and in connection with products and services may be interrupted or altogether halted for a period of time. This...more

International Lawyers Network

Reviving a brand? A reminder to ensure it is put to genuine use

The case of Aiwa Co. Ltd v Aiwa Corporation is a useful reminder to brand owners, particularly those who are looking to revive a brand, of what amounts to “genuine use” of a registered trade mark. The case particularly...more

Dechert LLP

Brexit Manoeuvres: Brexit and Trade Marks

Dechert LLP on

With a “no-deal” scenario looking increasingly more likely, what should brand owners be doing to prepare for 31 October this year? EU trade marks in the UK - Once the UK leaves the EU, existing EU trade marks (EUTMs)...more

Hogan Lovells

EUIPO: Repeat trademark applications for the same classes can equate to bad faith

Hogan Lovells on

In July, the Second Board of Appeal of EUIPO declared the MONOPOLY trade mark invalid to the extent that the underlying application covered goods and services for which the trade mark was already registered. Such filings...more

Smart & Biggar

It’s the final countdown: Top 10 changes to Canada’s trademark law on June 17th

Smart & Biggar on

After five years of anticipation, sweeping changes to Canada’s trademark law will finally come into force on June 17, 2019. The changes, which are substantial, have been canvassed in previous IP Updates. The following briefly...more

International Lawyers Network

Case update: trade mark licensing and register formalities in the spotlight

The Federal Court recently handed down its decision in Calico Global Pty Ltd v Calico LLC. This decision highlights the potentially fatal consequences of not updating the IP Australia register to reflect a change in trade...more

Dorsey & Whitney LLP

Big Mac? What's That?

Dorsey & Whitney LLP on

When the European Union Intellectual Property Office (EUIPO) last week revoked the EU trade mark registration for the mark ‘BIG MAC’, following a challenge brought by an Irish fast-food chain, SUPERMAC’S, it was hailed by the...more

Bennett Jones LLP

AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

Bennett Jones LLP on

A recent decision involving an AT&T trademark demonstrates how the global reach of technology businesses can sometimes result in a blurring of markets and make documentation of trademark use in Canada difficult to retrieve...more

Foley Hoag LLP - Making Your Mark

Trademark Red Tape: Post-Registration Proof Pilot To Go Permanent

USPTO Red TapeRegular readers of the Trademark and Copyright Law Blog and our Trademark Red Tape™ column may recall our previous report on a pilot study by the United States Patent & Trademark Office (PTO) about...more

20 Results
 / 
View per page
Page: of 1

"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