News & Analysis as of

Intellectual Property Protection Intent-to-Use

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

Filings Up, Pendency Down – USPTO 2024 Year in Review (& Early Thoughts for 2025)

With 2024 now in the rearview mirror, it’s a great time to take a look at the past year’s U.S. trademark prosecution and examination numbers – and consider where the U.S. Patent and Trademark Office (“USPTO”) may be heading...more

Morris, Manning & Martin, LLP

… Ready for It? A Lesson on Intent-to-Use Trademark Filings Inspired by Taylor Swift

Taylor Swift’s upcoming trademark deadline has sparked speculation that she is gearing up to release Reputation (Taylor’s Version). In February 2021, Swift’s legal team filed an intent-to-use (ITU) trademark application for...more

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

Miller Nash LLP

Consider Protecting Your Brands Early in the Era of Artificial Intelligence

Miller Nash LLP on

Artificial Intelligence (AI) is the latest emerging technology that is overtaking news headlines and transforming the way we live, learn, and work. The term generally refers to content created or produced by artificial...more

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

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

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

The September 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a recent non-precedential Trademark Trial and Appeal Board decision regarding intent-to-use applications covering CBD products currently...more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

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

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

Rothwell, Figg, Ernst & Manbeck, P.C.

Intent-to-Use Applications: Pros and Cons

Owning a federal trademark registration provides the ability to exclude others from using a certain word or design in association with specific goods or services. In the United States this exclusivity of rights, however, can...more

Weintraub Tobin

The Briefing by the IP Law Blog: Let Russ Cook: An NFL-Sized Introduction to ITU Applications

Weintraub Tobin on

In this episode of The Briefing by the IP Law Blog, Josh Escovedo and Scott Hervey discuss NFL athlete Russell Wilson and ITU applications....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

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

Weintraub Tobin

Amarillo Natives Hold San Diego Padres’ Double A Affiliate Team Name Hostage

Weintraub Tobin on

The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a...more

Ladas & Parry LLP

Allegations of Use in U.S. Trademark Applications Based on Intent to Use

Ladas & Parry LLP on

“Intent to use” (“ITU”) trademark applications must be successfully amended to allege use in U.S. Commerce before proceeding to registration. The applicant has six months from the issuance of a Notice of Allowance (“NOA”) or...more

Baker Donelson

Dreaming Big: Broad Trademark Protection Requires an Actual Bona Fide Intent to Use

Baker Donelson on

Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark. Brand...more

Mintz

(Trade)Marking Your Territory in the US: A Guide for Non-US Companies

Mintz on

Trademark rights exist on a country-by-country basis, and the laws in the United States differ in a number of significant ways from other markets. As a result, it is critical that before any non-U.S. company seeks trademark...more

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