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 U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the...more
U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more
On March 21, the United States Supreme Court heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc. over whether the infringement provisions of the United States Trademark Act impose liability for...more
There is a little-known provision of the Lanham Act (the US Trademark Act) that packs a potentially big punch. 15 USC § 1051(e) provides that if a non-U.S. entity registers for a trademark in the United States without...more
Circuit courts have struggled for decades to adopt a uniform approach for when to apply the Lanham Act extraterritorially. That struggle may end soon. In the Abitron Austria case, the Supreme Court is set to clarify the scope...more
We reported here last summer the outcome of Coca-Cola Company’s petitions to cancel the registrations for the above-captioned marks owned by Meenaxi Enterprise, Inc. Meenaxi appealed the TTAB’s decision to cancel the...more
As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the...more
On Tuesday, July 2, 2019, the United States Patent and Trademark Office issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on August 3, 2019. ...more
On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States...more
On July 2, the United States Patent and Trademark Office (“USPTO”) published a final rule in the Federal Register requiring all non-U.S. individuals and businesses seeking a trademark registration be represented by a U.S....more
While it always has been advisable to seek the assistance of an experienced trademark attorney to handle trademark matters, beginning August 3, 2019 (Effective Date), federal trademark applicants, registrants, and parties to...more
Yesterday, the U.S. Patent and Trademark Office (USPTO) announced that, beginning August 3, 2019, an applicant, registrant, or party to a trademark proceeding whose domicile is not located within the United States or its...more
In today’s increasingly global economy, trademark owners are more frequently butting up against the territorial limitations of trademark law. It has long been a matter of black letter law that trademark rights are...more
Addressing the issue of standing in a cancellation action at the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB), the U.S. District Court for the Eastern District of Virginia reversed a TTAB...more