News & Analysis as of

Trademark Registration Trademark Act

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

MarkIt to Market® - March 2024: Piling Up Successes by Avoiding Descriptive Dangers

Joining a series of precedential decisions about descriptiveness, the Trademark Trial and Appeal Board recently affirmed a refusal to register Sheet Pile, LLC’s (“Applicant”) mark ZPILE on the Principal Register, on the...more

AEON Law

Patent Poetry: TTAB: No Bright-Line Rule against Trademarks for Characters

AEON Law on

The Trademark Trial and Appeal Board (TTAB) has reiterated that there is no “strict or bright-line rule against registration of characters.” The case is In re Joseph A. Stallard, 2023 USPQ2d 1009 (TTAB 2023)....more

AEON Law

Foreign Equivalents Doctrine May Not Apply to Trademarks that Combine English and Foreign Words

AEON Law on

The US Patent and Trademark Office’s (USPTO’S) Trademark Trial and Appeal Board has ruled that the “doctrine of foreign equivalents” is a guideline rather than an absolute rule and may not apply to trademarks that combine...more

McDermott Will & Emery

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

AEON Law

Patent Poetry: Trademark Board Rules 100% for Lizzo

AEON Law on

“File:200126 Lizzo on the 2020 Grammys Red Carpet.png” by Cosmopolitan UK is licensed under CC BY 3.0. The Trademark Trial and Appeal Board (TTAB) has approved the trademark registration of“100% THAT BITCH” by the musical...more

International Lawyers Network

Parmesan or Parmigiano Reggiano? The answer is more complicated than just Geographical Indication

One of the ways that a “Geographical Indication”, or a “GI” can be protected in Australia is by registration of a ‘certification trade mark’. Certification trade marks are a specific type of trade mark registration designed...more

Willcox & Savage

Application for Mark US SPACE FORCE Crashes at Trademark Board

Willcox & Savage on

An application to register US SPACE FORCE as a trademark crashed at the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (PTO) when the TTAB ruled that the mark caused a false suggestion of a...more

International Lawyers Network

Trademarking a Name and the Right of Publicity

Suppose that you want to register a trademark that incorporates a name of a person to identify the source of goods or services for your business. Should you register your trademark with the U.S. Patent and Trademark Office...more

Ballard Spahr LLP

Trademark Office Shortens Deadline to Respond to Office Actions

Ballard Spahr LLP on

The United States Patent and Trademark Office (USPTO) is amending the rules of practice in trademark cases to implement provisions of the Trademark Modernization Action of 2020 (TMA). Effective December 3, 2022, the period to...more

Faegre Drinker Biddle & Reath LLP

College T-shirts and Trademarks – Ornamental, or Protectable?

As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen;...more

McDermott Will & Emery

If You Come for the Prince, You Best Not Miss

McDermott Will & Emery on

In a precedential decision, the Trademark Trial & Appeal Board (Board) granted two opposers’ motions for partial judgment on their claim of false suggestion of a connection under Section 2(a) of the Trademark Act based on a...more

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

MarkIt to Market® - July 2022: How to Ensure Your Trade Dress Doesn't Go to Hell in a Handbasket

In a recent precedential1 opinion, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jasmin Larian, LLC’s handbag design mark for “handbags” in Class 18, on the grounds...more

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

MarkIt to Market® - July 2022

Thank you for reading the July 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss a recent precedential TTAB decision regarding product configuration marks. We also highlight recent...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

Weintraub Tobin

Podcast: The Briefing by the IP Law Blog - Prince Estate Wants Winery's 'Purple Rain' Trademark Back in the Bottle

Weintraub Tobin on

In this week’s episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a legal dispute between the Prince estate and an Ohio-based winery over the rights to the trademark “Purple Rain.”...more

Weintraub Tobin

The Briefing by the IP Law Blog: Prince Estate Wants Winery's 'Purple Rain' Trademark Back in the Bottle

Weintraub Tobin on

In this week’s episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a legal dispute between the Prince estate and an Ohio-based winery over the rights to the trademark “Purple Rain.”...more

Knobbe Martens

Suede Timbs on My Feet Make [Nas’s] Cipher Complete, but Timberland’s Section 2(f) Evidence Was Slacking and Acquired...

Knobbe Martens on

The TTAB has affirmed a refusal to register the trade dress configuration mark (see below) of the popular Timberland boot, a wardrobe staple in hip-hop culture (see The World is Yours by Nas), stating the configuration failed...more

Dunlap Bennett & Ludwig PLLC

NCAA Calls a Hard Foul on VASECTOMY MADNESS Trademark Registration

National Collegiate Athletic Association v. Virginia Urology Center, P.C. - (TTAB Proceeding No.: 92076376) - The National Collegiate Athletic Association, better known as the NCAA, filed a petition before the...more

Fox Rothschild LLP

TTAB Cautions Applicants: Change Of Conditions Or Circumstances Is Necessary To Excuse Application Of Res Judicata

Fox Rothschild LLP on

On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a...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

Smith Gambrell Russell

Trademark and Copyright Implications of the Consolidated Appropriations Act, 2021

Smith Gambrell Russell on

On December 27, 2020, Congress passed the Consolidated Appropriations Act, which in addition to providing stimulus relief for the COVID pandemic, it includes important changes to trademark and copyright law. TRADEMARK...more

Chambliss, Bahner & Stophel, P.C.

Changes to Trademark Act Include New Procedure to Challenge Applications

On December 27, 2020, President Trump signed the bipartisan COVID-19 relief and government funding bill which includes the Trademark Modernization Act of 2020 (TMA). The TMA, which will become effective in one year,...more

Gibney Anthony & Flaherty, LLP

Year-End IP Legislation

Shortly before midnight on December 21, 2020, Congress passed a 1.4 trillion omnibus spending package in order to avoid a federal government shut down. Included in the 5,593 page legislation were significant alterations to...more

Fox Rothschild LLP

PTO Offers Guidance Following The Decision In USPTO v. Booking.com

Fox Rothschild LLP on

Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more

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