News & Analysis as of

Trademark Opposition Proceedings

Parrotheads Can Rejoice As Jimmy Buffett Prevails In Trademark Dispute

Jimmy Buffett won a trademark dispute and precluded the applications for “Marijuanaville” marks from registering due to a likelihood of confusion with his famous MARGARITAVILLE® mark for clothing (including shirts and caps),...more

The Battle of the Kylies Over the “Kylie” Trademark

In one corner, you have the 19-year-old breakout star of the Kardashian/Jenner clan, Kylie Jenner, who is making a name for herself with her cosmetics and fashion empire. In the other corner, you have the 48-year-old singer,...more

Just Like You and Me: Difficulties with Celebrity Trademark Applications

Under U.S. trademark law, any person (including a celebrity) can obtain a trademark registration for their name if they can establish that the public recognizes the name as a source identifier for certain products or...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

The Big Ten and the NCAA Tip Off for MARCH Marks

You don’t have to be a sports fan to be aware of MARCH MADNESS, the name associated with the annual tournament to determine the college basketball national champion. The tournament is organized by the National Collegiate...more

A March to Madness: Can the NCAA Claim Ownership of the Third Month of the Year?

by Dorsey & Whitney LLP on

The NCAA has a well-deserved reputation for being quite zealous when it comes to protecting its registered trademark “March Madness.” We previously blogged about this here at TheTMCA.com. But a recent opposition filed by the...more

Song Titles and Trademarks: The Eagle(s) Have Landed

Regardless of whether you’re a fan of “classic rock,” there are some songs that everybody knows. The song Hotel California by the Eagles is one of those songs. Not everyone likes the Eagles (looking at you, Dude), but most...more

Change is Coming: New Rules for TTAB Opposition and Cancellation Proceedings

by Dorsey & Whitney LLP on

The United States Patent and Trademark Office recently issued final rules amending the Trademark Trial and Appeal Board Rules of Practice and raising fees for many transactions involving trademarks. The new rules and fees...more

Jager Fears the Deer: Brand Refresh Turns Into Battle

by Winthrop & Weinstine, P.A. on

The word “Jägermeister” conjures up memories (or maybe lapses in memory) for many. I have only had the German liqueur in the beautiful blue-collar town of Milwaukee, WI – home of my college alma mater. While you would never...more

Choosing Owner Entities WISELY

In a recent precedential decision, the TTAB clarified whether a party filing an Opposition is entitled to allege a family of marks as a basis for a Section 2(d) claim when those marks are not all owned by a single legal...more

Sonic v. Supersonic Coffee v. AKA Coffee: Bullied to a better brand?

by Winthrop & Weinstine, P.A. on

A specialty coffee roastery in San Francisco, Supersonic Coffee, has decided to rebrand to the name AKA Coffee, as reported yesterday. The impetus for the rebrand was an opposition at the Trademark Trial and Appeal Board...more

New TTAB Rules Coming in January 2017

The USPTO has amended the rules for TTAB proceedings. A Notice of Final Rulemaking was published in the Federal Register on October 7, 2016. The effective date of the amended rules is January 14, 2017. ...more

Trademark Opposition In Mexico Entered Into Effect On August 30, 2016

by Ladas & Parry LLP on

Amendments to the Mexican Industrial Property Law introducing an opposition system for trademarks will enter into effect on August 30, 2016....more

Attorneys Getting Crafty About Firm Names

I consider myself to be, among other things, a craft beer attorney. I enjoyed speaking last week at the Midwest Craft Brewers Conference as part of a great panel on brand positioning, trademarks, and the use of social media...more

Practice Update: Publication of Mexican Bill for Trademark Opposition System

by Dorsey & Whitney LLP on

The Mexican Senate’s bill establishing a Trademark Opposition System in Mexico was approved by the Chamber of Deputies on April 28, 2016. The bill was approved by the President and will become effective August 30, 2016....more

A Mark Should be Considered a Whole, and not Dissected

In Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, [2016-1103] the Federal Circuit affirmed the TTAB’s finding that Oakville’s registered mark MAYA and Georgallis’s applied-for mark MAYARI are sufficiently...more

Beer Lawyers Rally to Stop Federal Registration of the Mark "CRAFT BEER ATTORNEY"

by Davis Brown Law Firm on

You know you’re in for a fight when 14 different law firms come together to launch an opposition--an administrative proceeding before the Trademark Trial and Appeal Board--against registration of your trademark application....more

U.S. Trademark Opposition/Cancellation Rule Change Proposals of Special Interest to Non-U.S. Companies

On April 4, 2016 the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking that details proposed changes to the USPTO’s rules of practice for trademark application opposition and...more

The Katten Kattwalk | Issue 09

The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. Please see full Newsletter below for more...more

What You Need to Know About U.S. Law: Trademark Opposition and Cancellation Primer

by Pierce Atwood LLP on

Similar to the laws of the EU and its member states, as well as other countries around the world, U.S. trademark law provides a mechanism through which parties with standing can oppose pending third-party applications or seek...more

TTAB Relents: Board Agrees to Vacate Likelihood of Confusion Finding at District Court’s Direction

by Proskauer Rose LLP on

Last week, the TTAB agreed to vacate a precedential decision at the direction of a district court judge putting an end (for now) to a stand-off between the administrative body and the federal judiciary. As we have previously...more

What Every Business Should Know About Coming Community Trade Mark Reform

by Foley & Lardner LLP on

Significant changes are coming to the Community Trade Mark or “CTM” starting in 2016. Since 1996, the CTM has provided a unitary trademark registration system to protect trademarks within the European Union, which now has 28...more

2015 U.S. Trademark Developments Every Food and Beverage Lawyer Should Know

by King & Spalding on

In 2015, U.S. courts provided trademark practitioners with several issues to discuss and debate. Identified and summarized below are the top five most discussed issues....more

Adoption of the ‘Trade Mark Package’ and practical implications

by Reed Smith on

On 23 March 2016, the European Union Trade Mark Regulation (dated 16 December 2015) comes into force. As part of the package of changes introduced by the Regulation, the ‘Community trademark’ will change its name to the...more

The Urock Network, LLC v. Umberto Sulpasso – Claim Preclusion Rocked Cancellation

In this opinion, the Board granted Respondent’s motion for summary judgment on the basis of claim preclusion based on the prior dismissal of an opposition involving the same parties due to Petitioner’s failure to prosecute....more

32 Results
|
View per page
Page: of 2
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!