News & Analysis as of

Third-Party United States Patent and Trademark Office

Knobbe Martens

Minority Owners of a Trademark Registrant, Who neither Use nor Possess Ownership Rights in the Mark, Cannot Seek Cancellation of...

Knobbe Martens on

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: Parties that own minority shares in the trademark registrant, but do not separately use or possess an ownership right in...more

Tarter Krinsky & Drogin LLP

Search first!

There once was a company named Zotz, Which created toys for tots, The newest toy, named Ketter™, Recalled after a cease and desist letter, Oh my, no trademark search, CEO Zotz? First published in Inside magazine,...more

McDermott Will & Emery

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

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

MarkIt to Market® - August 2023: How to Lose a Mark in 3 Ways – Part 3: Naked Licensing

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

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

MarkIt to Market® - August 2023

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

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

MarkIt to Market® - July 2023

Thank you for reading the July 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we continue our three-part series that closely examines ways to lose trademark rights with a discussion of genericide. We...more

Faegre Drinker Biddle & Reath LLP

The Prior Registration Puzzle: Overcoming Registration Refusals Based on Intervening Third-Party Marks

It’s a frustrating situation, to be sure, but fortunately you’re not without options. One of those options is arguing to the Trademark Office that your client’s Anchor Registration should entitle it to registration of its...more

Mintz Edge

Do You Have the Rights? How to Maintain Investor Confidence When Using Third-party Intellectual Property

Mintz Edge on

Imagine the following scenario: You, as the founder of a business, have spent the past three years building your company. You have been bootstrapping until now, but the company is at a crossroads and in order to grow the...more

Faegre Drinker Biddle & Reath LLP

Someone Else’s Trademark in Your Way? Just Buy It.

Sometimes the quickest way out of something is straight through it. This advice holds true in life, and in trademarks. Those who deal with trademarks are familiar with obstacles to registration based on similar...more

Fox Rothschild LLP

The Trademark Modernization Act Of 2020 Is Enacted

Fox Rothschild LLP on

Trademark Modernization Act of 2020 Signed Into Law- On December 27, 2020, Congress signed the Trademark Modernization Act of 2020 (the “Act”), which had rare bipartisan support, into law. The Act makes substantive...more

McDermott Will & Emery

IP Implications of the Consolidated Appropriations Act, 2021

McDermott Will & Emery on

On December 27, 2020, Congress signed the Consolidated Appropriations Act, 2021, into law. The omnibus act includes new legislation affecting patent, copyright and trademark law. A brief summary of key provisions is provided...more

Polsinelli

Alert On New USPTO Trademark Email Scam

Polsinelli on

The United States Patent & Trademark Office (USPTO) issued a new alert this week concerning fraudulent email messages which appear to be sent by the USPTO directly to trademark owners but are, in fact, sent by third parties...more

Robinson & Cole LLP

GC Survivor Kit - Beware of Third-Party Solicitation Notices

Robinson & Cole LLP on

If you own issued patents or trademark registrations in the United States, you are required to make certain filings with the U.S. Patent and Trademark Office (USPTO) to keep your patents and trademark registrations alive....more

Ladas & Parry LLP

USPTO Pilot Program Facilitates Third Party Notification Of TM Specimens Which Appear To Be Fabricated

Ladas & Parry LLP on

The USPTO has launched a new pilot program as a means for third parties to lodge informal protests about applications with specimens that appear to be improper. This pilot program is the latest in a series of steps taken by...more

McDermott Will & Emery

Grrrr . . . Paw Print Trademarks Can Co-Exist - Jack Wolfskin Ausrustung Fur Draussen GmbH & Company KGAA v. New Millennium...

McDermott Will & Emery on

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

Morgan Lewis

A Solution for Evolution in the Trademark Arena

Morgan Lewis on

The USPTO’s Welcome Initiative for Technology-Driven Changes in Registered Trademark Use. Under a pilot program announced by the United States Patent and Trademark Office (USPTO) on September 1, 2015, trademark owners...more

McDermott Will & Emery

Battle of the ANDROIDS

McDermott Will & Emery on

Erich Specht, et al., v. Google, Inc. - In a decision that provides useful guidance on what constitutes abandonment, the U.S. Court of Appeals for the Seventh Circuit upheld a district court ruling that Google did not...more

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

Final Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act

The transition to the first-inventor-to-file (FITF) system occurs on March 16, 2013. To prepare for implementing the change to the FITF system, the United States Patent and Trademark Office (USPTO), on February 14, 2013,...more

Foley & Lardner LLP

A First Look at the Final First Inventor to File Rules

Foley & Lardner LLP on

The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are...more

BakerHostetler

Patent Watch: Pregis Corp. v. Kappos

BakerHostetler on

[A] third party cannot sue the PTO under the APA to challenge a PTO decision to issue a patent. On December 6, 2012, in Pregis Corp. v. Kappos, the U.S. Court of Appeals for the Federal Circuit (Prost, Clevenger,...more

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