News & Analysis as of

Trademark Examination Trademark Application

Womble Bond Dickinson

Lowering Bar on Footboard Does Not Lower Burden for Proving Acquired Distinctiveness of Bed Frame, Says Trademark Office

Womble Bond Dickinson on

Charity seeking to register product designs as trademark icon not met the “very high burden” for showing acquired distinctiveness - On September 1, 2023 the Trademark Trial and Appeal Board (TTAB) issued a nonprecedential...more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

Whitcomb Selinsky, PC

The Descriptive Requirement of Trademark Law

Whitcomb Selinsky, PC on

The Trademark Trial and Appeal Board (TTAB) decided the  case of Yuzu Labs Public Benefit Corporation, 2017 WL 3102592. The TTAB is an administrative board that deals with issues arising out of the United States Patent and...more

Smart & Biggar

The Canadian Trademarks Office has backtracked on one of the options for accelerating examination of trademark applications

Smart & Biggar on

Earlier this week, we reported upon a new development for accelerating examination of Canadian trademark applications.  However, the Trademarks Office has backtracked, imposing the previous, more onerous requirements for...more

Smart & Biggar

[Ongoing Program] Fast track your trademark applications in Canada: Expediting Canadian trademarks examination - June 15th, 12:00...

Smart & Biggar on

This spring, join our Smart & Biggar trademark experts and gain new insights at our popular Canadian Trademarks webinar series. Each webinar provides practical tips and strategies for global brand protection in Canada, with a...more

Ladas & Parry LLP

USPTO Shortens Time for Tm Applicants to Respond to Office Actions Starting December 3, 2022

Ladas & Parry LLP on

The United States Patent & Trademark Office (USPTO) has announced that starting on December 3, 2022, those filing trademark applications will have three months (instead of the original six) to respond to office actions during...more

Verrill

Federal Trademark Registration - Part 2

Verrill on

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

Holland & Knight LLP

Trademark Office Continues Crack Down on Fraudulent Filers, Sanctions Issued

Holland & Knight LLP on

For many years, companies and individuals filing applications to register trademarks at the U.S. Patent and Trademark Office enjoyed a rather quick examination process. Examining attorneys at the Trademark Office reviewed...more

International Lawyers Network

Expanding a Brand into Canada: Trademark Registrations- The Basics

When a corporation expands its business into Canada, consideration should be given to whether it can register its brand as a trademark in this new market. While a corporation may operate in this market without registered...more

Jaburg Wilk

Congress Hands Trademark Owners New Tools to Fight Infringers and Challenge Fraudulent Registrations: The Trademark Modernization...

Jaburg Wilk on

The Trademark Modernization Act of 2020 (the “TMA”) was buried in the enormous COVID relief and stimulus bill (i.e., the Consolidated Appropriations Act for 2021), signed into law on December 27, 2020. The TMA amends federal...more

Weintraub Tobin

The Briefing: COVID 19 Bill Stimulates the Economy and Changes in the Intellectual Property Law

Weintraub Tobin on

In this episode, Scott and Josh discuss the changes in Intellectual Property Law stemming from the recently passed COVID-19 Stimulus Bill. The IP law blog is a publication of Weintraub Tobin (www.weintraub.com). The...more

Jones Day

Takeaways from Trademark Law in 2020 and Looking Ahead to 2021

Jones Day on

In this White Paper, we share observations on 2020's most significant developments in trademark law. This year, the U.S. Supreme Court penned three opinions concerning what constitutes a protectable trademark, available...more

Fenwick & West LLP

Trademark Modernization Act: Congress to Combat Fraudulent Trademark Applications

Fenwick & West LLP on

A bipartisan, bicameral group of legislators in the U.S. Congress recently published a draft Trademark Modernization Act to reform the trademark application process and the remedies for trademark infringement. The draft TM...more

McDermott Will & Emery

Announcement: USPTO COVID-19 Prioritized Examination Program

McDermott Will & Emery on

The United States Patent and Trademark Office (USPTO) has announced a new prioritized examination program to expedite the examination of applications for marks used to identify qualifying COVID-19 medical products and...more

Smart & Biggar

CIPO introduces new telephone amendments to increase efficiency of trademarks prosecution in Canada

Smart & Biggar on

On May 20th, 2020, in an attempt to improve the timeliness and efficiency of its services, the Canadian Intellectual Property Office formally allowed trademark examiners to enter amendments to trademark applications in...more

Jones Day

E-File or You'll Have to Refile: Trademark Filings Gone Digital - New USPTO rules make electronic filing mandatory and update...

Jones Day on

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

Hogan Lovells

USPTO's guidelines for electronic filing: applicant/ registrant/party email addresses required

Hogan Lovells on

Of particular interest, to receive a filing date after February 15, 2020, all new applications must include an email address for each applicant, even if represented by an attorney.  In addition, all applicants, registrants,...more

McDonnell Boehnen Hulbert & Berghoff LLP

New Trademark Exam Guide Effective February 15, 2020 Regarding Mandatory Electronic Filing, Owner Email Addresses, and Specimen...

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

Smart & Biggar

Canadian Trademarks Office issues new limits on extensions of time for responding to office actions

Smart & Biggar on

Prior to January 17, 2020, extensions of time were readily available during Canadian trademark prosecution.  A single six-month extension could be secured without providing any substantive reasons. Further six-month...more

Jaburg Wilk

The Path to Registering Certain Types of Cannabis Trademarks is Now a Little Less Hazy

Jaburg Wilk on

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

Mintz - Intellectual Property Viewpoints

Navigating the Legalization of Hemp under the 2018 Farm Bill Involves Changes to the Issuance of Federal Trademarks in the...

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

Ward and Smith, P.A.

2018 Farm Bill and Federal Trademark Protection for Hemp

Ward and Smith, P.A. on

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

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

Trademark Registration Sees a New High: Registration for trademarks for goods derived from "hemp" now allowed under USPTO rules

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

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

MarkIt to Market - January 2019: Korea Amends Various IP Rights Guidelines

The beginning of 2019 brought some notable amendments to Korea’s intellectual property rights guidelines. On the trademark side, effective January 1, 2019, Korea’s Trademark Examination Guidelines were amended to include...more

International Lawyers Network

New Trademark Laws – Canada | Part I

June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners?...more

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