Tracy-Gene G. Durkin

Tracy-Gene G. Durkin

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

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MarkIt to Market - February 2015

The February issue of Sterne Kessler's MarkIt to MarketTM newsletter provides takeaways from the Supreme Court's Hana Financial decision, identifies a new anti-counterfeiting tool for owners of Canadian trademarks and...more

3/2/2015 - Canada Counterfeiting Domain Names gTLD Hana Financial v Hana Bank SCOTUS Sunrise Periods Tacking Trademarks

MarkIt to Market - January 2015

The January issue of Sterne Kessler's MarkIt to MarketTM newsletter comments on the trend of seeking to register popular slogans as trademarks, supplies a template for auditing your trademark rights, and gives an updated list...more

2/2/2015 - Audits Brand gTLD Sunrise Periods Trademarks

USPTO Takes on Deadwood

For several years now, the U.S. Patent and Trademark Office (USPTO) has been concerned about the amount of "deadwood" on the U.S. trademark Register – registrations that remain in force, but cover marks that are not actually...more

12/30/2014 - Trademarks USPTO

USPTO Fees Reduced for 2015

Effective January 17, 2015, the USPTO has announced a number of fee reductions for 2015, including a $50 reduction in the cost to file electronic applications ...more

12/29/2014 - Electronic Filing Filing Fees Trademarks USPTO

Generic Top Level Domains - Current Sunrise Periods Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more

12/24/2014 - Brand Domain Names gTLD ICANN Sunrise Periods Trademarks

Good(s) Intentions – What's Enough to Establish Bona Fide Intent to Use?

When used effectively, brand and merchandise licensing can increase the value of a brand by extending it into new, relevant product categories and by further monetizing brand equity. And when seeking to protect a brand in...more

12/3/2014 - Bona Fide Intent Brand Effective Filing Date Intent-to-Use Licenses Merchandising Rights Trademark Trial and Appeal Board Trademarks

Look Beyond the Registration to Determine Likelihood of Confusion

Just in time for the holiday shopping season, the Trademark Trial and Appeal Board's recent decision in Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC is a good reminder of why, when...more

12/2/2014 - Cosmetics Likelihood of Confusion Popular Registration Trademark Searches Trademark Trial and Appeal Board Trademarks

Generic Top Level Domains - Current Sunrise Periods Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more

12/1/2014 - Domain Names gTLD ICANN Sunrise Periods Trademarks

MarkIt to Market - November 2014

The November issue of Sterne Kessler's MarkIt to MarketTM newsletter includes a case study on bona fide intent to use, a resolution to Anthropologie's opposition to the mark, and an updated list of the Sunrise periods...more

11/26/2014 - Anthropologie gTLD Intent-to-Use Likelihood of Confusion Sunrise Periods Trademarks

Oktoberfest Special: Störtebeker, What’s in a Beer Name?

We brand geeks at MarkIt to Market occasionally like to explore the history of interesting trademarks. A recent visit to Germany inspired a look into the history of the Störtebeker beer brand, which derives its name from one...more

11/14/2014 - Brand Trademarks Wine & Alcohol

Generic Top Level Domains - Current Sunrise Periods Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more

11/12/2014 - Domain Names gTLD ICANN Sunrise Periods Trademarks

Generic Top Level Domains - Current Sunrise Periods Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more

10/14/2014 - Domain Names gTLD ICANN Registration Sunrise Periods Trademarks

European Community Trademarks – Why it Now Matters if They’re Black and White (or Grayscale)

Whether it’s black or white may not have mattered to Michael Jackson (at least that's how the song goes), but it does seem to matter now to the Office for Harmonization in the Internal Market (OHIM) and other trademark...more

10/13/2014 - Color Marks ETDN EU Logos OHIM Trademarks

Renewal Deadline – 1 Year Trademark Clearinghouse Registrations

If your company was an early registrant in the Trademark Clearinghouse, it is likely your registrations had an effective date of November 5, 2014, the date the Clearinghouse went “live.” If so, the deadline to renew one-year...more

10/10/2014 - Deadlines Registration Trademark Clearinghouse Trademarks

MarkIt to Market - September 2014

The September issue of Sterne Kessler's MarkIt to MarketTM newsletter contains an explanation of new guidelines on the treatment of color logos in the European Community, a reminder of the upcoming renewal deadline for the...more

10/9/2014 - EU gTLD Internet Sunrise Periods Trademark Clearinghouse Trademarks Websites

Why FLYING MONKEY WINE Never Got Off the Ground

Continuing our primate theme for this month's newsletter, we thought this would be as good a time as any to remind our readers as to the important distinction between copyrighted artistic works, and use of elements from those...more

9/8/2014 - Copyright Public Domain Trademarks Warner Brothers Entertainment Wine & Alcohol

Generic Top Level Domains - Current Sunrise Periods Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more

9/5/2014 - Domain Names gTLD ICANN Sunrise Periods Trademarks

Markit to Market - August 2014

The August issue of Sterne Kessler's MarkIt to MarketTM newsletter is all about monkey business, including an analysis of the copyright debate between British photographer David Slater and Wikimedia Commons over "selfies"...more

9/3/2014 - Copyright Domain Names gTLD Photographs Public Domain Sunrise Periods Trademarks

Generic Top Level Domains - Current Sunrise Periods Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more

8/7/2014 - Domain Names gTLD ICANN Sunrise Periods Trademarks

Registrability and Enforceability -- Look Beyond the Register to Determine Scope of Trademark Rights

The Trademark Trial and Appeal Board's recent decision in In Re The Franchise Group, (TTAB July 2, 2014) reiterates that marks in use in the marketplace, not just on the Register, help determine whether trademarks in the U.S....more

8/6/2014 - Appeals Ex Parte Trademark Trial and Appeal Board Trademarks

An Expensive Reminder to Secure Trademark Rights Prior to Foreign Expansion

Electric car manufacturer Tesla Motors was recently sued in China by businessman Zhan Baosheng. Baosheng registered the TESLA trademark in China in 2006, prior to Tesla's entry into the Chinese market....more

8/5/2014 - China International Trademark Protection Tesla Trademark Litigation Trademarks

MarkIt to Market - July 2014

The July issue of Sterne Kessler's MarkIt to MarketTM newsletter contains an analysis of the TESLA trademark lawsuit in China, a reminder to look beyond the register to determine whether trademarks in the U.S. are both...more

8/4/2014 - gTLD Sunrise Periods Tesla Trademark Litigation Trademarks

gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our December...more

7/3/2014 - Domain Names gTLD ICANN Sunrise Periods Trademarks

FDA Draft Guidance - Best Practices for Developing Drug Trademarks

In late May, the FDA released a draft guidance document detailing its best practices for developing trademarks for drugs. The draft guidance, entitled Best Practices in Developing Proprietary Names for Drugs, can be found...more

7/2/2014 - Brand Draft Guidance FDA Pharmaceutical Manufacturers Prescription Drugs Trademarks

Markit to Market - June 2014

In This Issue: - FDA Draft Guidance: Best Practices for Developing Drug Trademarks - U.S. Patent and Trademark Office Proposes Fee Reductions - gTLD Sunrise Periods Now Open - Excerpt from U.S. Patent and...more

7/1/2014 - FDA Filing Fees gTLD Prescription Drugs Sunrise Periods Trademarks USPTO

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