Trademark Act

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

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

TTAB Precedential Decision: Time Limit for Adding Claims Is Tolled by Filing of Cancellation Within Registration’s Fifth...

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) held that the filing of a cancellation petition before the five-year anniversary mark of a registration tolls Trademark Act Section 14 for purposes of...more

The Effect of The Brexit (UK Departure from EU) on IP Rights

In a June 23, 2016 referendum, the combined electorates of the United Kingdom and Gibraltar voted in favor of the United Kingdom, and consequently Gibraltar, leaving the European Union (EU). According to Article 50 of...more

Dilution Update: NYC BEER Is Not Diluted, But The Empire State Building Is

Trademark dilution is a concept not easily understood. Although, we have written about this topic in previous posts, a recent decision by the Trademark Trial and Appeal Board, ESRT Empire State Building, L. L. C. v. Michael...more

Filing of Cancellation Prior to Registration’s Fifth Anniversary Allows Later Addition of Otherwise Time-Barred Non-use Claim

Ashland Licensing & Intellectual Property LLC (“Ashland”) petitioned on June 6, 2013, to cancel two registrations owned by Sunpoint International Group USA Corp. (“Sunpoint”). Following discovery, Ashland moved to amend to...more

Trademark Series: Words in a Foreign Language

A word that clearly describes a particular product or service cannot function as a trademark for that product or service. The Trademarks Act phrases this idea in a more formal way: section 12(1)(b) says that a trade-mark is...more

Spotlight on the Highlights -- Clarifications and Changes in the April 2016 TMEP

On April 30, 2016, the USPTO issued the April 2016 Trademark Manual of Examining Procedure ("TMEP"), the latest update to the go-to resource for how to prosecute applications to register trademarks with the USPTO. This...more

Trademark Review | May 2016

Surname Not Registrable Absent Substantially Exclusive Use - As a result of various third-party uses of the surname “Ayoub” for similar services, Applicant’s use of AYOUB did not meet the requirement of Section (f) that...more

Brandmarking - Volume 5, Number 1 - May 2015

THEY CAN’T REGISTER THAT AS A TRADEMARK -- CAN THEY? Ronda Rousey, the famous Mixed Martial Arts fighter has filed several applications to register a trademark that presumably reflects her feelings about her detractors....more

Trademark Review | April 2016

Broad JAWS Registration Devours JAWS Cooking Channel - Mr. Recipe’s applications to register the marks JAWS and JAWS DEVOUR YOUR HUNGER were refused based on the earlier registration for JAWS, the movie. Mr. Recipe’s...more

Although Healthy Hemp May do Many Things, It Does Not Function As a Trademark

In a non-precedential decision in In re French Meadow Organic Bakery LLC, Serial No 86243820 (February 4 2016), the Trademark Trial and Appeal Board (TTAB) held that HEALTHY HEMP was merely descriptive of “bakery goods;...more

Trademark Series: What is “use” of a trademark?

This is a story of what “use” really means. In the internet context, a trademark can be displayed on a website by a Canadian company, and that website can be accessed anywhere in the world. Similarly, a foreign company can...more

Why You Should Act Now to Protect Your Intellectual Property in Canada

Significant amendments to Canada’s Trademarks Act (the “Act”) have been passed, but are not yet in effect. The legislative changes are rumored to come into effect sometime in early 2018, which – if filed soon - may be...more

Thinking Outside Section 2(d) Refusals

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in...more

TTAB Makes Double Brown Ale Open to Nut Sack Mark

In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character...more

How May We Help You? When is a Service Not a Service?

Brand owners seeking federal protection for their service marks from the U.S. Patent and Trademark Office ("USPTO") often struggle with how to define their services in the application. While the Trademark Act defines...more

The Clinton Trademark Clause?

At this early stage in the 2016 election cycle, it’s difficult to predict much of anything, but if Hillary Clinton wins the Democratic nomination and, ultimately, the presidency, I can say for certain it will have an...more

Earning Trademarks with Every Coupon? How Johnson & Johnson Secured The Mark: Earning Trust With Every Bottle

A recent ruling from the Trademark Trial and Appeal Board (“the Board”) found a coupon to be an acceptable specimen for the U.S. Trademark Office (“Office”) showing proper trademark use. Johnson & Johnson submitted the coupon...more

From Phonograph Records to Musical Sound Recordings: USPTO’s Pilot Program May Bring Life to Outdated Registrations

Own a trademark registration covering goods or services that have become obsolete due to technological advances? Does your trademark registration cover content delivered by floppy discs that are now provided as on-line...more

Caveat Opposer: Preclusion Lurks at the TTAB

Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different...more

The Katten Kattwalk - Issue 07

Happy summer! We are seeing some great new styles this summer here on Madison Avenue, and of course, there are a number of hot legal issues to consider as we head into the fall. Our latest issue discusses the applicability of...more

“The Donald” Trumps Condo Buyers by Avoiding Trade-mark Licensor Liability

United States presidential candidate Donald Trump avoided liability for alleged misrepresentations of the attributes of purchased hotel condominium units by a developer that is licensed by one of Mr. Trump’s corporate...more

In re Tam – Federal Circuit Orders En Banc Review of Trademark Act’s Ban Against Registration of Disparaging Marks

The Slants is a Portland-based band composed of musicians of Asian-American descent who characterize their genre as “Chinatown Dance Rock.” The band’s bassist, Simon Tam, filed a trademark application for THE SLANTS for...more

Appealing a Trademark Registration Refusal? Win or Lose, You May Have to Pay the USPTO’s Legal Fees

The federal Trademark Act (the Lanham Act) instructs that if an unsuccessful trademark applicant appeals a refusal to register in federal district court, the applicant must name the Director of the U.S. Patent & Trademark...more

Protection Of Slogans Under Turkish Trademark Law

Slogans are commonly used by companies in marketing and promotion activities to draw public attention to goods and services. Through widely promoted commercials, certain slogans have become well-known: “Just do it”, “Because...more

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