News & Analysis as of

Trademark Registration Trademark Application Trademark Cancellation

Seyfarth Shaw LLP

Marvel and DC Lose “Super Hero” Trademark Registration

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The U.S. Patent and Trademark Office (USPTO) has canceled long-standing trademark registrations for “Super Hero” and “Super Heroes,” which had been previously jointly owned by Marvel and DC Comics....more

Linda Liu & Partners

A Preliminary Analysis of the Strategies That Can Be Adopted in Trademark Refusal Appeal Cases Where Trademarks Are Identical or...

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China, which has enjoyed the reputation of being the “World’s Factory” and an “Important World Market” for many years, has also topped the global list in trademark applications for 20 consecutive years. Due to China National...more

Coblentz Patch Duffy & Bass

Trademark Trickery: Scams Are Surging—What Trademark Owners Should Watch Out For

Trademark scams are on the rise and include increasingly varied communications attempting to trick trademark applicants and registrants into paying fees. If you receive any communications regarding your trademarks from anyone...more

Pillsbury - Propel

Trademark Fundamentals: Opposition and Cancellation Proceedings

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For startup founders, navigating the complexities of trademark law is essential for protecting your brand. An important aspect of this process involves understanding opposition and cancellation proceedings. These are formal...more

Dorsey & Whitney LLP

The Ninth Circuit Addresses Judicial Power over Trademark Applications and the Lawful Use of Trademarks on Cannabis (I Mean,...

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The Ninth Circuit issued two opinions in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. finding judicial power over pending trademark applications and an exception shielding trademark registrations for marks used...more

Erise IP

What’s Trending in Trademarks, February 2024: Fruity Pebbles Denied Color Mark, Captain Cannabis Cancellation, Trader Joe’s vs....

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Fruity...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014...

In Great Concepts, the court addressed whether Section 14 of the Lanham Act, which permits cancellation of a mark’s registration if “its registration was obtained fraudulently,” permits cancellation due to the owner’s filing...more

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

MarkIt to Market® - October 2023

Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...more

McDermott Will & Emery

Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).

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The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more

Perkins Coie

CNIPA Issues Significant Draft Amendment to the PRC Trademark Law

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The China National Intellectual Property Administration (CNIPA) circulated a draft amendment to the PRC Trademark Law (TML Draft Amendment) for public comment on January 13, 2023. The TML Draft Amendment is the product of...more

International Lawyers Network

Can Trademark Applications and Administrative Proceedings Subject a Foreign Applicant to Service or Jurisdiction in Court...

Suppose that you are a foreign applicant who either files a trademark application, opposition proceeding, or cancellation proceeding with the USPTO. Can this act of filing subject the foreign applicant to service of process...more

McDermott Will & Emery

The Saddest Hour? Closing Time for Trademark Cancellation Petition

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In a precedential decision, the Trademark Trial & Appeal Board (Board) denied a petition to cancel a trademark registration based on priority. The Board explained that the petitioner bears a higher burden of proof to show...more

Dickinson Wright

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

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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

Orrick, Herrington & Sutcliffe LLP

New Proceedings under the Trademark Modernization Act of 2020: Expungement and Reexamination

As 2021 drew to a close, the United States Patent and Trademark Office (USPTO) introduced two new procedures pursuant to the Trademark Modernization Act of 2020 (the “Act”), providing new, streamlined avenues to seek...more

Sullivan & Worcester

The Trademark Modernization Act: New Procedures, New Deadlines and New Standards

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On December 18, 2021, the U.S. Patent and Trademark Office (USPTO) rules implementing the Trademark Modernization Act of 2020 (TMA) went into effect. The first major overhaul of the Lanham Act since 1998, the TMA introduced...more

Kilpatrick

Changes to Federal Trademark Law and Their Effective Dates Under the Trademark Modernization Act and its Implementing Regulations

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I. Introduction - On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) became law after it passed Congress and was signed by the President as part of the year-end Consolidated Appropriations Act for 2021....more

Haug Partners LLP

Changes to USPTO Procedures from the Trademark Modernization Act of 2020

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On December 7, 2020, Congress enacted the Trademark Modernization Act of 2020 (the “TMA”). The United States Patent & Trademark Office (the “USPTO”) recently promulgated rules implementing the TMA, which, in large part, took...more

Jones Day

New Year, New Trademark Proceedings

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This year kicked off with new tools to help brand owners protect and enforce their marks. The use of a trademark in commerce is an important aspect of U.S. trademark law; however, an increasing number of trademark...more

BakerHostetler

USPTO Implements Trademark Modernization Act

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Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks –...more

Hogan Lovells

BGH: Markeninhaber tragen Feststellungslast für Verkehrs-durchsetzung einer Marke

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Markeninhaber tragen sowohl im Anmelde- als auch im Löschungsverfahren die Feststellungslast für die Verkehrsdurchsetzung einer Marke. Der Inhaber einer Marke sei am besten in der Lage, Beweis dafür zu erbringen, dass sich...more

Knobbe Martens

The Battle of Brooklyn: Lack of Concrete Injury and Prior Collaboration Doom TTAB Actions

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BROOKLYN BREWERY CORPORATION V. BROOKLYN BREW SHOP, LLC - Before Judges Dyk, O’Malley, and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: A challenger must demonstrate an injury in fact to have...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: Persistence Pays Off – A Series of Monster Trademark Disputes

Monster Energy Co. (“Monster Energy”), frequent trademark plaintiff, recently found itself on the receiving end of a trademark infringement lawsuit brought by California company Outdoor Pro Shop, Inc. (“Pro Shop”). Pro Shop’s...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

Fenwick & West LLP

Check(ered) Mate?

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On March 18, 2021, Nike filed a cancellation action at the Trademark and Trial Appeal Board against Vans’ recently granted registration on the Supplemental Register for a checkerboard pattern that goes down the sleeve of...more

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