News & Analysis as of

Trademark Registration United States Patent and Trademark Office Abandonment

Dunlap Bennett & Ludwig PLLC

Trademark Ownership And What Happens To Your Trademark When You Die?

As folks prepare their estate documents, they need to consider who they want to receive their assets, house(s), vehicle(s), or that Bob Ross painting they found at a garage sale 20 years ago. What many people don’t think...more

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

MarkIt to Market® – April 2024: Trademarks are for Parents, Not Children

Children are all too familiar with parents telling them that everything they own is actually mom and dads. And as frustrating as this is to hear as a child, a recent opinion from the U.S. Patent and Trademark Office’s...more

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

MarkIt to Market® – April 2024

Welcome to the April 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss why it’s important for businesses to think critically about who they are listing as their trademark owners, how the TTAB...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

MoFo Life Sciences

It Takes Two To Taco: Taco John’s Abandons “Taco Tuesday” Trademark Registration

MoFo Life Sciences on

On July 18, 2023, the phrase “Taco Tuesday” was returned to the public after Taco John’s submitted a notice of abandonment for its TACO TUESDAY trademark registration before the United States Patent & Trademark Office’s...more

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

MarkIt to Market® - June 2023: How to Lose a Mark in 3 Ways – Part 1

There are plenty of fish in the sea when it comes to trademarks: from word marks to service marks; from symbols to surnames; from product packaging to product design. When the time is right, and you feel like you have found...more

Akerman LLP - Marks, Works & Secrets

Unitary Design Mark Rescues a Phrase Which Failed To Function As A Trademark

In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its...more

Dorsey & Whitney LLP

Trademark Practice Tip: How to Settle a Trademark Opposition Proceeding and Obtain Judgment Against the Applicant After an...

Dorsey & Whitney LLP on

Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more

Dorsey & Whitney LLP

Trademark Abandonment – Round Up Your Trademark Use Intentions

Dorsey & Whitney LLP on

A trademark will be deemed abandoned under Section 1127 of the Lanham Act when the mark’s use has been discontinued “with intent not to resume such use.” Proof of non-use for three consecutive years will give rise to a...more

Dorsey & Whitney LLP

Gidget Goes Abandoned (the trademark registrations, that is)

Dorsey & Whitney LLP on

May 7 was no day at the beach for Multi-Media Tech. Ventures, Ltd., whose registrations for the mark GIDGET were cancelled in a precedential opinion by the Trademark Trial and Appeal Board. Yazhong Investing, Ltd. v....more

Bowditch & Dewey

Trick or Treat? “Zombie” Trademarks Can Be Frightening

Bowditch & Dewey on

Coming up with unique beer names can be a frightening prospect. With so many brewers cranking out so many outstanding beers, it can sometimes seem like all of the best names are already taken. Brewers can let out shrieks of...more

Ladas & Parry LLP

Evaluating The USPTO’s Efforts To Clean Up The U.S. Trademark Register

Ladas & Parry LLP on

An ongoing issue for the United States Patent and Trademark Office (USPTO) has been the number of trademark registrations where registrants do not actually use or intend to use their marks on all of the goods and services...more

McDermott Will & Emery

Grrrr . . . Paw Print Trademarks Can Co-Exist - Jack Wolfskin Ausrustung Fur Draussen GmbH & Company KGAA v. New Millennium...

McDermott Will & Emery on

On appeal from the Trademark Trial and Appeal Board (TTAB or Board), the U.S. Court of Appeals for the Federal Circuit reversed the Board’s decision on the issue of likelihood of confusion with regard to two parties’ paw...more

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