The determination of similar goods, as a constituent element in determining whether infringement exists in trademark infringement cases, has consistently garnered significant attention, and remains a contentious issue. This...more
Late last week, the USPTO issued Examination Guide 1-23 which establishes guidelines for USPTO Examining Attorney compliance with Section 2(c) of the Lanham Act. The Guide provides a framework for examining certain types of...more
Thank you for reading the February 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss Section 2(c) of the Lanham Act in relation to the Supreme Court's pending review of the TRUMP TOO SMALL...more
At the end of last month, the United States Patent and Trademark Office (“USPTO”) released a guide clarifying how they were approaching the refusals of applied-for marks that could be generic. In the past, examining attorneys...more
The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima...more
Is your trademark registered? Should you register it? Why should you register it? What do you have to do? What does the process look like? Can you do it yourself or do you need to hire an attorney? These are just a few of the...more
To apply for a federally-registered trademark with the United States Patent and Trademark Office (USPTO), an applicant is required under 15 U.S.C. § 1051 to, among other things, submit specimens of the mark and verify that it...more
USPTO News - ..USPTO releases report on artificial intelligence and intellectual property policy. ..Mary Critharis has been appointed the USPTO’s Acting Chief Policy Officer and Director for International Affairs. Ms....more
As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like...more
The USPTO issued a “Trademark Alert” on April 24, indicating that it is now masking trademark owners’ direct email addresses from being viewed on its public website. However, the masking applies only to the “owner” email...more
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
The U.S. Patent and Trademark Office (USPTO) has released Trademark Examination Guide 1-20, which goes into effect on February 15. The Exam Guide implements the Office’s final rule, published July 31, 2019, concerning...more
On February 7, 2020, the U.S. Trademark Office issued long-anticipated guidelines governing electronic filing and electronic communications with attorneys and trademark owners. Effective February 15, 2020, these new rules...more
Unlike patents and copyrights, obtaining a federally registered trademark requires (among other things) that applicants abide by the “lawful” use in commerce requirement. In other words, the United States Patent and Trademark...more
Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and...more
The U.S. Patent and Trademark Office ("USPTO") generally refuses to register marks that violate federal law. Hemp and hemp-derived CBD were previously classified as Schedule I controlled substances under the Controlled...more
The United States Patent and Trademark Office will now allow federal trademark registration for marks used on some hemp-based products, including those containing hemp-derived CBD, except for foods, beverages, dietary...more
The United States Patent and Trademark Office (USPTO or Office) issued an examination guide on Friday, May 2, 2019, regarding the examination of trademarks for cannabis and cannabis-related goods and services after the...more
Following the enactment of the 2018 Farm Bill [see related article1], the United States Patent and Trademark Office (USPTO) just this morning released a new Trademark Examination Guide for marks covering cannabis and...more