This year kicked off with new tools to help brand owners protect and enforce their marks.
The use of a trademark in commerce is an important aspect of U.S. trademark law; however, an increasing number of trademark...more
In this White Paper, we share observations on 2020's most significant developments in trademark law. This year, the U.S. Supreme Court penned three opinions concerning what constitutes a protectable trademark, available...more
Jones Day's Meredith Wilkes and Anna Raimer discuss 2020's most significant developments in trademark law and preview what's to come in 2021, including possible progress in Washington on the highly anticipated Trademark...more
12/10/2020
/ Acquired Distinctiveness ,
Appeals ,
Application Fees ,
Charge-Filing Preconditions ,
Claim Preclusion ,
Collateral Estoppel ,
Compensatory Awards ,
Counterfeiting ,
Defense Preclusion ,
Dilution ,
Domain Name Registration ,
Electronic Filing ,
Generic Marks ,
Issue Preclusion ,
Lanham Act ,
Legislative Agendas ,
Lucky Brand Dungarees v Marcel Fashion Group ,
Oral Argument ,
Oral Hearings ,
Registration Fees ,
Remedies ,
Res Judicata ,
Romag Fasteners v Fossil ,
SCOTUS ,
Split of Authority ,
Subsequent Litigation ,
Trade Dress ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO ,
Websites ,
Willful Infringement
Statistics from 2018 reveal that .03% of trademark applications were paper filed. As such, effective February 15, 2020, paper trademark filings are no longer an option. The United States Patent and Trademark Office ("USPTO")...more
2/20/2020
/ Electronic Filing ,
Email ,
New Rules ,
Trademark Application ,
Trademark Electronic Application System (TEAS) ,
Trademark Examination ,
Trademark Examination Guide ,
Trademark Ownership ,
Trademark Registration ,
Trademark Specimen ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The U.S. Supreme Court's recent 9-0 decision in Peter v. NantKwest, Inc., Case No. 18-801, informs strategic cost considerations in appeals challenging adverse decisions issued by the United States Patent and Trademark Office...more
12/17/2019
/ 35 U.S.C. § 145 ,
American Rule ,
Appeals ,
Attorney's Fees ,
Civil Claims ,
Fee-Shifting ,
Lanham Act ,
Litigation Fees & Costs ,
Patent Act ,
Patent Applicants ,
Peter v NantKwest Inc ,
Prevailing Party ,
SCOTUS ,
Section 145 ,
Trademark Application ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The Decision: The Federal Circuit vacated the Trademark Trial and Appeal Board's determination that "ZERO" is not generic and has acquired distinctiveness, and remanded.
The Reasoning: The Board erroneously framed the...more
Trademarks will no longer be refused registration on the basis that they constitute immoral or scandalous matter. On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit unanimously ruled in In re Brunetti...more
Asian rock band The Slants is no longer "The Band Who Must Not Be Named," as they titled their most recent album. On June 19, 2017, the United States Supreme Court decided Matal v. Tam, striking a provision of the Lanham Act,...more
6/24/2017
/ Constitutional Challenges ,
Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Government Speech Doctrine ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
NFL ,
Popular ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
Trademark owners take note: Affidavits to renew your U.S. trademark registrations may be getting a closer look. On March 21, 2017, the United States Patent and Trademark Office ("USPTO") implemented a new rule aimed at...more
On February 27, 2017, the Supreme Court of the United States denied certiorari in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, __ S. Ct. __, 2017 WL 737826 (U.S. Feb. 27, 2017) (No....more
3/7/2017
/ Appeals ,
Corporate Counsel ,
Denial of Certiorari ,
Foreign Persons ,
International Litigation ,
Lanham Act ,
Lexmark v Static Control Components ,
Mexico ,
Proximate Cause ,
Standing ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unfair Competition ,
Unfair or Deceptive Trade Practices