Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Fourth...more
Children are all too familiar with parents telling them that everything they own is actually mom and dads. And as frustrating as this is to hear as a child, a recent opinion from the U.S. Patent and Trademark Office’s...more
Welcome to the April 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss why it’s important for businesses to think critically about who they are listing as their trademark owners, how the TTAB...more
In business, trademarks are everything. It's how consumers come to know, love and trust your brand. It's a valuable corporate asset, and many disputes can arise of name rights with the explosion of e-commerce and the...more
Trademarks help brand owners build and communicate their brand’s reputation and value with the relevant public. Once that valuable goodwill is linked between a mark and the owner’s products and services, trademark owners can...more
Thank you for reading the August 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we conclude our series that explores ways to lose trademark rights with an examination of naked licensing, discuss a...more
The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and...more
As highlighted by a recent Trademark Trial & Appeal Board (TTAB) decision, Clementvision, Inc. v. Robert Clement, expressly including intellectual property rights in an estate plan can prevent complicated issues from arising....more
The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (PTO) dismissed the oppositions of ARSA Distributing, Inc. to the applications of Salud Natural Mexicana S.A. de C.V. to register the...more
In theory, trademarks can last “forever.” Unlike copyrights and patents, which have finite durations defined by law, a trademark can last as long as its owner maintains it and continues to use it. As the US Patent and...more
TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. Before Lourie, Bryson, and Prost. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: A trademark associated with a...more
In the context of an opposition proceeding, the US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board (Board) refusal to register a trademark based on likelihood of confusion with a famous but...more
On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant...more
The Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by...more
In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its...more
In 2005, Christian Faith Fellowship Church, a Chicago-based church group, filed two trademark applications for the mark ADD A ZERO for use on clothing, including shirts and caps that they later sold to raise money for...more
Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more
The U.S. Supreme Court’s blockbuster rulings in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal represented a major shift in federal pleading standards. Resolution of motions to dismiss frequently turns on whether a...more
May 7 was no day at the beach for Multi-Media Tech. Ventures, Ltd., whose registrations for the mark GIDGET were cancelled in a precedential opinion by the Trademark Trial and Appeal Board. Yazhong Investing, Ltd. v....more
Addressing an opposition to the trademark registration of a band name, the Trademark Trial and Appeal Board (TTAB) found the opposer—the originator and continuous user of the name—to be the owner and prior user. Dave Brock v....more
An ongoing issue for the United States Patent and Trademark Office (USPTO) has been the number of trademark registrations where registrants do not actually use or intend to use their marks on all of the goods and services...more
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
On appeal from the Trademark Trial and Appeal Board (TTAB or Board), the U.S. Court of Appeals for the Federal Circuit reversed the Board’s decision on the issue of likelihood of confusion with regard to two parties’ paw...more
The TTAB Sets the Rules for Pleading Abandonment of a Section 66(a) Registration - VENM seeks registration of the mark VENM for dance costumes. Dragon Bleu opposed registration of VENM’s mark based on 3 earlier...more
Applicant Successfully Avoids Fraud Claim by Consenting to Judgment on Abandonment Claim - In a precedential opinion, the Trademark Trial and Appeal Board granted the Applicant’s motion for entry of judgment on the...more