News & Analysis as of

Intent-to-Use

The Covfefe Kerfuffle and the Rush to Register Trending Terms

While many of us are working our way through the flood of thought-provoking analysis of Matal v. Tam, I’m taking a break with some lighter fare, namely, covfefe. In case you missed it, the viral non-word “covfefe” was born...more

Pre-Sale Use of Data Storage Trademark Not Enough to Secure Priority Rights

A Massachusetts federal court recently found multiple early uses of a sought-after trademark insufficient to confer priority of rights. The dispute concerned two technology companies, Nexsan and EMC, each seeking to use the...more

Dreaming Big: Broad Trademark Protection Requires an Actual Bona Fide Intent to Use

by Baker Donelson on

Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark. Brand...more

Lack of Bona Fide Intent to Use and Its Consequences According to the 6th Circuit

by Dorsey & Whitney LLP on

The Sixth Circuit Court of Appeals recently issued an important decision about the bona fide intent requirement when filing an intent to use (“ITU”) application and the consequences when there is a lack of bona fide intent as...more

Improper Assignment of THE EMERALD CITY Mark – Registration Cancelled in Toto

by Dorsey & Whitney LLP on

Assignment of an intent-to-use trademark application can be fraught with risk. To deter “trafficking” in ITU applications, Section 10 of the Lanham Act prohibits the assignment of an ITU application before an amendment to...more

Copyright and Trademark Case Review: Copyright Preemption, Software-as-a-Service and Popularity on the Internet

by WilmerHale on

Copyright Decisions - Claim for Copying of Useful Article Design Preempted by Copyright Act: Ultraflo Corp. v. Pelican Tank Parts, Inc., No. 15-20084 (5th Cir. Jan. 11, 2017)...more

Fictional restaurant wins trademark battle: The Krusty Krab

Who lives in a pineapple under the sea? If you know the answer to that theme-song question, you’ve probably seen, or at least heard of, the popular cartoon SpongeBob SquarePants. It is one of the highest-rated and...more

The Chargers leave San Diego, but will they leave the brand too?

According to recent reports, the Chargers will announce this week that they are leaving sunny San Diego for also sunny Los Angeles. Over a short two year span, Los Angeles will have gone from zero NFL teams to two NFL teams,...more

CAFC: Improper Assignment Voids Trademark Registration

by Morgan Lewis on

The US Court of Appeals for the Federal Circuit underscored the importance of being mindful of the prohibition against assigning intent-to-use applications and of carefully constructing agreements for future assignment of...more

Is Your Intent-to-Use Trademark Application Vulnerable?

by Winthrop & Weinstine, P.A. on

A common misunderstanding about trademark law involves what is actually necessary in order to “own” a trademark. There are a number of requirements that many companies miss if the company doesn’t do its research or hire an...more

A new NHL team: The Las Vegas Silver (or Desert) (or Golden) Knights

Have you heard about the NHL’s newest, not-yet-fully-named hockey team, based in Las Vegas? Although the team’s inaugural season will not begin until October 2017, season tickets have already sold out. This exciting news was...more

Welcome to the Hotel Chicago Dispute

Although not the title to an Eagles’ song like “Hotel California,” Hotel Chicago is in the news as it is at the heart of a trademark dispute. As I was booking a room at the Fairmont in Chicago for next month, I must admit I...more

Brexit? I Hardly Drinxit!

The British Broadcasting Corporation may be tired of Brexit, but another “B.B.C.” isn’t. On June 24, 2016, the day after the Brexit vote, the Boston Beer Company filed an intent-to-use application to trademark the term...more

(Trade)Marking Your Territory in the US: A Guide for Non-US Companies

by Mintz Levin on

Trademark rights exist on a country-by-country basis, and the laws in the United States differ in a number of significant ways from other markets. As a result, it is critical that before any non-U.S. company seeks trademark...more

LEAFS BY SNOOP May Be Blocked by Another Leaf Logo

Snoop Dogg’s LEAVES BY SNOOP design mark application may be in trouble. The owners of the Toronto Maple Leafs filed a request for extension of time to oppose the mark with the Trademark Trial and Appeal Board, citing the need...more

When One Specimen Per Class May No Longer Be Enough

For use-based trademark applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), applicants must submit the application along with one specimen per Class showing use of the mark for the covered goods and...more

Is BETTER BURGER a Done Deal for Chipotle?

When it comes to a big company’s trademark filings, the publicly available and freely searchable Trademark Office database can provide great fodder for the media. But don’t believe everything you read: an intent-to-use...more

Drumpf or Trump: The Name or The Brand?

by Fish & Richardson on

Campaign season makes ripe political commentary. On February 28, 2016, comedian John Oliver featured a segment on his show “Last Week Tonight” about the Republican frontrunner, Donald Trump....more

NaturaLawn Attempts to Clip the Competition, brings Trademark Suit against Naturescape

On February 23, 2016, Signum, LLC and NaturaLawn of America, Inc. (collectively, “NaturaLawn”), Maryland-based companies, filed a complaint in the Northern District of Georgia alleging trademark infringement, false...more

Primarily Merely a Drumpf

This presidential election cycle has been nothing if not entertaining. Mr. Trump has been a particular favorite among late night T.V. hosts. In one particular 20-minute monologue, Last Week Tonight host John Oliver...more

Katy Perry, Last Year’s Super Bowl, and a Shark with a Mark

by Dorsey & Whitney LLP on

With Super Bowl 50 quickly approaching, it’s a perfect excuse to check in on one of the IP issues that made big waves at last year’s “Big Game.” You may recall that the Super Bowl halftime show last year featured Katy Perry...more

What’s in Your Tagline, a Strong Trademark?

Last year, in my post entitled What’s in Your Wallet, a Cafe?, I had this to say about the iconic Capital One tagline: “Since 2000, Capital One Financial — the nation’s largest direct bank — has been promoting its credit card...more

BUY NOW: Use in Commerce for Mobile Applications

For a mobile application developer, clearing the Apple® App Store's® often lengthy approval process and seeing the mobile application available for purchase may seem like the last necessary step to establish use of the name...more

Trademark Review | October 2015

by Knobbe Martens on

Barbeque Manufacturer Feels the Burn after TTAB Ruling - The Trademark Trial and Appeal Board sustained the opposition to an application to register SWISS GRILLS for lack of bona fide intent at the time of filing and for...more

Conflicting State and Federal Laws May Result in Crippling Blows to Business in the Marijuana Industry

by Davis Brown Law Firm on

As of October 2015, four states have legalized marijuana for recreational use: Alaska, Colorado, Oregon and Washington. The recreational marijuana movement—although slow in terms of states following by legalizing use—has had...more

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