News & Analysis as of

United States Patent and Trademark Office › Trademarks › Intent-to-Use

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
McDermott Will & Emery

ITU Applicants Beware: Federal Courts Have Jurisdiction Over Pending Trademark Applications

McDermott Will & Emery on

The US Court of Appeals for the Ninth Circuit affirmed in part a district court’s ruling in a trademark dispute, upholding its decision to invalidate trademark applications. The Ninth Circuit held that district courts have...more

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

MarkIt to Market® - September 2021: Watching the Pot™

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

Future Intentions Not Enough to Pave the Road to Registration - “Reduces pain,” “alleviates anxiety,” “improves sleep” – these are just some of the claims of the miraculous CBD. The surfeit of new CBD brands and products...more

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

MarkIt to Market® - September 2021

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

The September 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a recent non-precedential Trademark Trial and Appeal Board decision regarding intent-to-use applications covering CBD products currently...more

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

MarkIt to Market® - August 2021: Tips for Navigating the Current Landscape at the USPTO

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

If you recently filed a trademark application with the U.S. Patent and Trademark Office, you may have noticed that the average time to first action (initial examination) is about six months from the application’s filing date...more

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

MarkIt to Market® - August 2021

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

The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more

Foley & Lardner LLP

The Washington TBDs: Has a Trademark Hog Muddied the Washington Football Team’s Name Change Plans?

Foley & Lardner LLP on

After decades of mounting pressure from Native American groups, fans, activists and even corporate sponsors, the NFL’s Washington Redskins recently announced that it would be changing its team name and logo after 87 years of...more

ArentFox Schiff

Hope of Trademark Registration for Cannabis Vaporizer Goes Up in Smoke

ArentFox Schiff on

The United States Trademark Trial and Appeal Board (TTAB) recently refused registration to two trademark applications for cannabis and marijuana vaporizers, finding no bona fide intent to lawfully use the marks in commerce...more

Womble Bond Dickinson

Intellectual Property Considerations and Guidance for Start-Ups: Trademarks

Womble Bond Dickinson on

Trademarks protect distinctive marks, such as brand names, logos, and designs. This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important,...more

Weintraub Tobin

Allegiant Airlines Tips Its Hand Regarding Las Vegas Stadium Rights

Weintraub Tobin on

If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will...more

Hogan Lovells

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

Hogan Lovells on

For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United...more

UB Greensfelder LLP

Walmart Burned by the Jury in Trademark Infringement Suit

UB Greensfelder LLP on

Earlier this month, a federal jury in North Carolina hit Walmart with a $95.5 million verdict for its willful infringement of Variety Stores, Inc.’s “BACKYARD” trademarks. The jury awarded $45.5 million as a reasonable...more

Dorsey & Whitney LLP

Will TTAB’s First Precedential Decision of 2018 Lead to Better Quality Examination of Statements of Use?

Dorsey & Whitney LLP on

In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Strikes Down Statute Banning Scandalous and Immoral Trademarks

Akin Gump Strauss Hauer & Feld LLP on

• The Federal Circuit held that the “immoral or scandalous” clause of Lanham Act § 2(a), which prohibits registration of a trademark that “consists of or comprises immoral or scandalous matter,” is unconstitutional under the...more

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

When One Specimen Per Class May No Longer Be Enough

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

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

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

BUY NOW: Use in Commerce for Mobile Applications

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

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

Stoel Rives LLP

Filing a New ITU Trademark Application? Be Prepared to Prove Your Intent

Stoel Rives LLP on

Staking an early claim to a brand has inspired many hasty (and sometimes ill-advised) trademark applications. For example, trademark applications representing political rallying cries and pop culture slogans such as JE SUIS...more

Mintz - Trademark & Copyright Viewpoints

Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US?

Mintz - Trademark & Copyright Viewpoints on

Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual...more

McDermott Will & Emery

Trademark Trial and Appeal Board Sustains Opposition on the Basis of Fraud

McDermott Will & Emery on

Nationstar Mortgage LLC v. Mujahid Ahmad - The United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB or Board) sustained an opposition on the basis of fraud, finding that Ahmad’s...more

Pillsbury Winthrop Shaw Pittman LLP

Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.

Pillsbury Winthrop Shaw Pittman LLP on

Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications...more

Sheppard Mullin Richter & Hampton LLP

Intent To Use – It’s Not The Thought That Counts

Sheppard Mullin Richter & Hampton LLP on

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at...more

Mintz - Trademark & Copyright Viewpoints

How Much “Intent” is Enough to Support an “Intent to Use” Trademark Application?

Mintz - Trademark & Copyright Viewpoints on

For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at...more

Mintz - Trademark & Copyright Viewpoints

Oops! Assignment Of Intent-To-Use Trademark Applications: Easy But Not Simple

Mintz - Trademark & Copyright Viewpoints on

The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications. In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section...more

Foley & Lardner LLP

TTAB Cancels Registration Due to Improper Assignment of Intent-to-Use Application

Foley & Lardner LLP on

In a precedential decision issued last week, the Trademark Trial and Appeal Board (TTAB) cancelled a registration because it was based on an intent-to-use (ITU) application that had been the subject of an intra-corporate...more

Foley Hoag LLP - Trademark, Copyright &...

Court Finds No Business In This Show Business Trademark Dispute

Foley Hoag LLP - Trademark, Copyright &... on

It is a basic principle of trademark law that a mark can only be assigned with the goodwill of the business to which the mark relates, for the good reason that the mark is in fact inseparable from the business. But what kind...more

24 Results
 / 
View per page
Page: of 1

"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 Log in
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide