News & Analysis as of

Trademark Registration Trademark Infringement Trademark Ownership

Pillsbury - Propel

Trademark Fundamentals: Likelihood of Confusion

Pillsbury - Propel on

A core concept in trademark law that every startup founder should understand is “likelihood of confusion.” This legal standard plays a pivotal role in both trademark registration and enforcement. It’s essential for protecting...more

Smart & Biggar

Five New Year resolutions for trademark owners in 2024

Smart & Biggar on

Trying some healthy habits in 2024? Your trademarks want you to do the same! A trademark has value when it is distinct and enforceable. Even registered marks can lose value if proper “trademark hygiene” is not followed...more

Ladas & Parry LLP

False Declaration of Incontestability Not Enough to Cancel US Trademark Registration

Ladas & Parry LLP on

Great Concepts has owned Registration No. 2929764 for DANTANNA’S, in association with “steak and seafood restaurant[s]”, since March 2005. In 2006 Chutter Inc’s predecessor-in-interest, Dan Tana, petitioned to cancel the mark...more

Troutman Pepper

High Stakes: Eight Tips (and One Bonus) for Cannabis Professionals on the Budding World of Trademarks

Troutman Pepper on

Apologies for the cannabis puns in the title, but they are required by law. Okay, you are correct. That is not true. But it is true that trademark protection is important for individuals in the cannabis industry. Earlier this...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

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

MarkIt to Market® - August 2023: How to Lose a Mark in 3 Ways – Part 3: Naked Licensing

Trademarks help brand owners build and communicate their brand’s reputation and value with the relevant public. Once that valuable goodwill is linked between a mark and the owner’s products and services, trademark owners can...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

Sheppard Mullin Richter & Hampton LLP

Takeaways from the Hermès Litigation over MetaBirkins NFTs

The highly anticipated jury verdict in the Hermès litigation over MetaBirkins NFTs has some important takeaways for both artists and sellers of NFTs as well as brand owners....more

UB Greensfelder LLP

The Trademark Modernization Act of 2020: What Trademark Owners Need To Know

UB Greensfelder LLP on

On December 27, 2020, the Consolidated Appropriations Act, 2021, was signed into law. Most famous for the inclusion of the $900 billion COVID-19 stimulus package, the bill also included the Trademark Modernization Act of 2020...more

McDermott Will & Emery

Trademark Owner’s Fate Sealed Tight After Finding of Fraud on PTO

Addressing the issue of collateral estoppel, the US Court of Appeals for the Eighth Circuit upheld a ruling dismissing a trademark owner’s second infringement lawsuit against the same defendant after a finding that the...more

Foley Hoag LLP - Making Your Mark

Smiles Like Teen Spirit: “Smiley Face” Copyright and Trademark Litigation

You may think the phrase “million-dollar smile” is just a metaphor, but a smile could cost you millions of dollars in litigation damages if you aren’t careful, at least according to Nirvana LLC, the legal entity that owns the...more

Akin Gump Strauss Hauer & Feld LLP

The Federal Circuit Vacates and Remands An International Trade Commission Final Determination in A Trademark-Based Investigation

• The Federal Circuit issued a rare precedential decision in an appeal from a trademark- and trade dress-based ITC investigation. • In its decision, the Federal Circuit reiterated that the act of trademark registration does...more

Smart & Biggar

Down, but not out – initial adverse decision not a bar to future recovery of .ca domain name

Smart & Biggar on

A pair of recent decisions under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy (“CDRP”) demonstrate that a trademark owner who fails to obtain a domain name transfer at a first...more

Foley Hoag LLP - Making Your Mark

U.S. Krispy Kreme Doughnuts Win 4-0 Over Spanish Donuts

A decision rendered by the European Court of Justice (ECJ) on March 2, 2017, affirming a General Court ruling and potentially ending a nearly twenty-year legal battle, is a reminder to trademark owners that what is generic in...more

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

MarkIt to Market® - October 2016

The October 2016 issue of Sterne Kessler's MarkIt to Market® newsletter provides an update on the Redskins trademark case, discusses a recent TTAB ruling regarding ownership of families of marks, and announces the new gTLD...more

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