News & Analysis as of

Trademark Office Trademark Registration

Woods Rogers

Recipients Beware: Trademark Omega Email Marketing Ploy

Woods Rogers on

Numerous clients are receiving unsolicited emails from a company called Trademark Omega. Future versions may originate from companies with different names. For your protection, we advise you to read the fine print....more

Dunlap Bennett & Ludwig PLLC

International Trademark Registration: The Madrid System (WIPO)

The blog post, “What are the Types of Trademarks,” explained the distinction between Trademarks, Service Marks, State Marks, Federal Marks, and Common Law Marks, which are common types of protection for marks in the United...more

Linda Liu & Partners

New Changes in the Suspension of Trademark Refusal Review Cases and the Pre-registration of Administrative Litigation

Linda Liu & Partners on

The number of existing valid registered trademarks in China is large, and the annual number of trademark applications is also large, which makes it difficult for enterprises to successfully register trademarks. According to...more

International Lawyers Network

Rejection Of A Registration Based On Possible Unfair Competition In Colombia

Decision 486 of 2000 of the Andean Community sets forth several events that may give rise to the rejection of trademark registration. Said events intend to protect the general interest that is involved in ensuring that no...more

International Lawyers Network

Criteria To Avoid Cancellation For Lack Of Use Of A Trademark In Colombia

Exclusive rights over a trademark in Colombia arise from registration. Also, when holding a trademark registration in Colombia, the obligation arises for its owner to use the trademark in commerce, beginning three (3) years...more

International Lawyers Network

Opposing A Trademark Application In Colombia Based On A U.S. Trademark

Exclusive rights over a trademark in Colombia arise solely from registration. Therefore, the general rule is that a trademark registered or protected under the legislation of a different country may not be used as valid...more

Erise IP

Trademark Turnaround: Strategies for Applicants Facing Shorter USPTO Response Deadline

Erise IP on

In an effort to speed up its slowing trademark registration turnaround times, the United States Patent and Trademark Office has shortened the deadline to respond to initial reviews of applications. Trademark applicants now...more

Faegre Drinker Biddle & Reath LLP

The Prior Registration Puzzle: Overcoming Registration Refusals Based on Intervening Third-Party Marks

It’s a frustrating situation, to be sure, but fortunately you’re not without options. One of those options is arguing to the Trademark Office that your client’s Anchor Registration should entitle it to registration of its...more

Faegre Drinker Biddle & Reath LLP

Top Twelve Trademark Transfer Tips (For Portfolio Intake, That Is)

Congratulations!  Your company just acquired a batch of trademarks from a third party.  There are a lot of minutiae to manage, so how do you decide what to do first?  Here are some suggestions for actions you may want to...more

Lippes Mathias LLP

United States Patent and Trademark Office Reduces Trademark Office Action Response Deadline

Lippes Mathias LLP on

The United States Patent and Trademark Office (“USPTO”) announced that beginning on December 3, 2022, trademark applicants will have three months to respond to office actions issued by the USPTO. The current deadline is six...more

Dorsey & Whitney LLP

Important Trademark Development from China for 2022: What US Brand Owners Need to Know

Dorsey & Whitney LLP on

China has been speeding up its legislative efforts in protecting trademark rights and improving its trademark administration. In 2021, China issued a number of new rules and regulations on trademark practice....more

International Lawyers Network

Expanding a Brand into Canada: Trademark Registrations- The Basics

When a corporation expands its business into Canada, consideration should be given to whether it can register its brand as a trademark in this new market. While a corporation may operate in this market without registered...more

Farella Braun + Martel LLP

Trademark Office Deadlines and Coronavirus-Related Delays (Update #3)

With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more

Mintz - Trademark & Copyright Viewpoints

The Masters’ Green Jacket is Now a Registered Trademark

Since 1949, a green jacket has been awarded to the winner of the Masters Tournament, one of golf’s four major championships. Although Augusta National, Inc. had successfully registered the word mark GREEN JACKET as a...more

Faegre Drinker Biddle & Reath LLP

BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office

As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark...more

BakerHostetler

Important Change to the US Trademark Office Rules – How It Affects Your Business

BakerHostetler on

As of Dec. 21, 2019, the U.S. Trademark Office will require that owners of applications and registrations provide a valid email address for communication. ...more

Sheppard Mullin Richter & Hampton LLP

The U.S. Trademark Office Opens The Door to Registering Certain Cannabis Trademarks

On May 2, 2019, the United States Trademark Office issued new Examination Guidelines for goods and services associated with cannabis and cannabis-derived products and services legalized under the 2018 Farm Bill. This crack in...more

Fenwick & West LLP

Is ‘Zero’ Generic or Descriptive? Coca-Cola Loses Battle on Appeal to Federal Circuit

Fenwick & West LLP on

If you have ever had a Coke Zero, what do you understand ZERO to mean – “zero calories,” “zero sugar,” “zero carbohydrates” or some combination of each? If your friend who never had a Coke Zero asked you what the difference...more

Mintz - Trademark & Copyright Viewpoints

Company “Branding” and the Benefits of Federal Trademark Registration

Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or...more

Fish & Richardson

U.S. Trademark Office Clarifies Filing Deadlines for Resurrecting Dead Applications and Registrations

Fish & Richardson on

It has long been possible to resurrect trademark applications and registrations that were inadvertently allowed to lapse. Effective July 8, any petition to revive an abandoned application or request to reinstate a trademark...more

Fish & Richardson

What Does The “In” in “Incontestable” Mean?

Fish & Richardson on

After the fifth year of issuance of a U.S. trademark registration, the registration is eligible for “incontestable” status if the owner files a declaration with the U.S. Trademark Office confirming that (1) the mark has been...more

Kilpatrick

Is Discovery That Section 8 Affidavits Were Not Filed By The Owner Of The Registration Grounds For Cancellation? N.D.Cal Rules...

Kilpatrick on

CASE SUMMARY - Every trademark lawyer knows that between the fifth and sixth year after registration the trademark owner must file an affidavit of use. If the mark has been in continuous use, the owner may also file an...more

McDonnell Boehnen Hulbert & Berghoff LLP

What Trademark Owners Need to Know About the New Trademark Rules

Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due....more

Fish & Richardson

Update: Implementation of USPTO Rule Change on Audits of Maintenance Declarations Effective March 21, 2017

Fish & Richardson on

As we discussed in our blog post earlier this month, U.S. Trademark Office Sharpens Machete for Pruning Deadwood, the USPTO is implementing a new practice of randomly auditing maintenance declarations to request additional...more

Fish & Richardson

U.S. Trademark Office Sharpens Machete for Pruning Deadwood

Fish & Richardson on

Effective February 17, 2017, examiners at the U.S. Trademark Office may require trademark owners to submit more than one specimen of use per class of goods/services when registering a mark or maintaining a registration. The...more

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