News & Analysis as of

Trademark Registration United States Patent and Trademark Office Use in Commerce

Dunlap Bennett & Ludwig PLLC

A Very Demure, Very Mindful Trademark Problem: Prior-Filed Applications For Your Trademark

TikTok user Jools LeBron (@joolieannie) took the internet by storm when she posted a video encouraging people to be very demure and very mindful in applying their makeup. The post went viral and Jools’ following skyrocketed...more

Pillsbury - Propel

Trademark Fundamentals: Use in Commerce

Pillsbury - Propel on

Startup founders looking to protect their brands need to understand the concept of “use in commerce” to successfully register their trademarks with the U.S. Patent and Trademark Office (USPTO). This article will break down...more

Tarter Krinsky & Drogin LLP

Search and File, Here and There!

There once was a company named Zotz, Which created toys for tots, It set up abroad, of course! But filing first is KnockOffSource, Can Zotz manufacture? Methink “notz!” First published in Inside magazine, NYSBA, Fall...more

Tarter Krinsky & Drogin LLP

Search first!

There once was a company named Zotz, Which created toys for tots, The newest toy, named Ketter™, Recalled after a cease and desist letter, Oh my, no trademark search, CEO Zotz? First published in Inside magazine,...more

Fox Rothschild LLP

TM Registration Specimens

Fox Rothschild LLP on

To apply for a federally-registered trademark with the United States Patent and Trademark Office (USPTO), an applicant is required under 15 U.S.C. § 1051 to, among other things, submit specimens of the mark and verify that it...more

Seyfarth Shaw LLP

Yes, Really: The TTAB Affirms That the USPTO Will Not Register Marks for Illegal Goods

Seyfarth Shaw LLP on

Trademark owners in the cannabis field keep trying new ways to register their marks, and who can blame them? Branding is everything in an increasingly online world, and protecting your brand’s reputation is paramount to...more

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

MarkIt to Market® - September 2020: CB – Don'ts

Creativity abounds in the CBD industry – both in the wide variety of products infused with it, and in the efforts undergone by applicants trying to circumvent the Trademark Act to register per se unlawful CBD-infused...more

Williams Mullen

Ten Trademark Myths and How They Can Hurt Your Business

Williams Mullen on

U.S. trademark law is a nuanced subject governed by both federal and state laws, and determining the scope of a parties’ trademark rights can be complex and highly fact specific. Nearly every company has at least one...more

Knobbe Martens

Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Medical Device?

Knobbe Martens on

The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an “Intent to Use” basis to establish a priority date before the mark is actually “used in commerce.” However, such use in...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

Knobbe Martens

Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Product?

Knobbe Martens on

The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an “Intent to Use” basis to establish a priority date before the mark is actually “used in commerce.” However, such use in...more

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

MarkIt to Market® - September 2019: Perception is Everything: Use of Component Marks in Commerce

When it comes to proving use of marks in commerce, perception by consumers is everything. If consumers perceive a mark as identifying only a particular component or feature of the goods in a specimen, the PTO will likely...more

Jaburg Wilk

Why Register My Trademark? The Benefits of Trademark Registration

Jaburg Wilk on

A trademark is a word, name, or symbol used to identify and distinguish a seller’s product from those of others. A trademark is part of a company’s brand. It is the embodiment of the company’s reputation. Over time, a...more

Hutchison PLLC

Markedly Misunderstood: 4 Common Misconceptions About Trademarks

Hutchison PLLC on

Everyone is familiar with Trademarks. We are literally surrounded by them. Trademarks are the words, logos, packaging and other devices that we use to differentiate goods and services from each other and are how we can...more

Harris Beach PLLC

Despite Lawful Use in Commerce, Hemp and CBD Trademarks May Still Face Rejection

Harris Beach PLLC on

In a previous Legal Alert, we covered the removal of one impediment to federal trademark registration for hemp/CBD products: namely, that hemp/CBD products will no longer be outlawed by the Controlled Substances Act and will...more

McAfee & Taft

Weeded out?

McAfee & Taft on

Recently, Oklahoma joined the ranks of the 30 states that have legalized medical marijuana, but the state still has work to do on just how to implement its new law. As usual, the devil is in the details. Even though Oklahoma...more

Nutter McClennen & Fish LLP

Branding and Trademark Series: Federal Trademark Registration Benefits – Beyond the ®

You don’t need to register a trademark to establish and assert trademark rights in the U.S. Merely using a mark commercially so that consumers come to view the mark as an identifying a source is enough to qualify for...more

Ladas & Parry LLP

What qualifies as acceptable Use in U.S. Commerce?

Ladas & Parry LLP on

The mark must be used “in Commerce” and in good faith in the ordinary course of trade. While the USPTO will generally not conduct an inquiry, the applicant must claim use that qualifies as “Use in U.S. Commerce”. What...more

Foley & Lardner LLP

Ready to Release a New Pharmaceutical? What to Think About When Selecting Your Drug Name

Foley & Lardner LLP on

Pharmaceutical name clearance in the United States can be complicated. This post aims to provide insight into the regulatory safety review process and the trademark registration process for candidate drug names. This...more

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

Opportunity May Not Knock Without the Right Door

When seeking particular services, consumers are often drawn into a business based on branding and advertising found near the location – whether by signage on or around the establishment, or by glimpses of the services being...more

Carlton Fields

USPTO Tightens Requirements for Commercial Use of Trademarks

Carlton Fields on

On March 21, 2017, the USPTO implemented changes to its requirements for continued use of trademarks in commerce that will require some trademark owners to provide additional materials and documentation when they renew their...more

Spilman Thomas & Battle, PLLC

New Trademark Office Audit May Result in Cancellation of Registrations

The United States Patent and Trademark Office (“USPTO”) announced a final rule that took effect on February 17, 2017. To assess and promote the accuracy and integrity of the trademark register, the USPTO amended rules...more

Jones Day

Use It or Lose It: USPTO to Conduct Post-Registration Trademark Use Audits

Jones Day on

Trademark owners take note: Affidavits to renew your U.S. trademark registrations may be getting a closer look. On March 21, 2017, the United States Patent and Trademark Office ("USPTO") implemented a new rule aimed at...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

Roetzel & Andress

US Patent & Trademark Office Issues New Trademark Use Rule

Roetzel & Andress on

On January 19, 2017 the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register introducing new requirements for declarations of use in commerce filed pursuant to Sections 8 and 71 of the...more

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