The Supreme Court recently ruled in Abitron Austria GmbH v. Hetronic International, Inc. that Lanham Act (Act) remedies for trademark infringement do not extend to infringing conduct that takes place outside the United...more
7/13/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Extraterritoriality Rules ,
Foreign Entities ,
Foreign Sales ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademarks ,
Use in Commerce
Supreme Court Rules in Favor of Jack Daniel’s Over ‘Spoofed’ Bad Spaniels Dog Toy -
The Second Circuit’s 1989 Rogers test sets an elevated standard for proving trademark infringement, for the purpose of protecting First...more
6/16/2023
/ Dilution ,
First Amendment ,
Intellectual Property Protection ,
Jack Daniels Properties Inc v VIP Products LLC ,
Lanham Act ,
Likelihood of Confusion ,
Parody ,
Rogers Test ,
SCOTUS ,
Spoofing ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
As the holiday season is now upon us, one may wonder: Are general sayings about Christmas, Hanukkah, and other holidays protectible as trademarks? Or are these sayings free for anyone to use on things like sweatshirts and...more
The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima...more
As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it...more
6/1/2022
/ Copyright ,
Corporate Counsel ,
Cryptocurrency ,
Digital Marketplace ,
Digital Wallets ,
Dispute Resolution ,
Domain Names ,
ICANN ,
Intellectual Property Protection ,
Metaverse ,
Non-Fungible Tokens (NFTs) ,
Popular ,
Trademark Registration ,
Trademarks ,
UDRP
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
Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners,...more
Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020. The...more
Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications,...more
On Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief package, Congress passed the Trademark Modernization Act, which President Trump is expected to sign....more
The Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V., holding “A term styled ‘generic.com’ is a generic name for a class of goods or services...more
7/2/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V. Because of COVID-19, the arguments were...more
5/6/2020
/ Acquired Distinctiveness ,
Appeals ,
Descriptive Trademarks ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
gTLD ,
Lanham Act ,
Oral Argument ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
The United Kingdom withdraws from the European Union today. The implementation period runs for the next 11 months, through Dec. 31. During this time, European Union trademark filings (“EUTMs”) will continue in full force in...more
We have been alerted by the United States Patent and Trademark Office (USPTO) of unauthorized attempts by unknown parties to amend our clients’ trademark registration records. ...more
ICANN will make its Trademark Clearinghouse available for trademark recordation on March 26, 2013. All companies who value protection of their brands on the Internet should consider recording their brands in the...more
Taking the proactive step to register trademarks, whenever possible, is vital in today's online world.
Given the proposed release of countless new generic top level domains by ICANN (the governing...more