Sharpen Your Sword: Adduce Proof When Claiming Prior Copyright to Challenge a Trademark in China
For startup founders, navigating the complexities of trademark law is essential for protecting your brand. An important aspect of this process involves understanding opposition and cancellation proceedings. These are formal...more
In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its...more
The Canadian Intellectual Property Office (CIPO) implemented significantly reduced deadlines and more limited extensions of time in trademark opposition and section 45 proceedings. These changes, effective December 1, 2023,...more
The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more
The China National Intellectual Property Administration (CNIPA) circulated a draft amendment to the PRC Trademark Law (TML Draft Amendment) for public comment on January 13, 2023. The TML Draft Amendment is the product of...more
Exclusive rights over a trademark in Colombia arise solely from registration. Therefore, the general rule is that a trademark registered or protected under the legislation of a different country may not be used as valid...more
Suppose that you are a foreign applicant who either files a trademark application, opposition proceeding, or cancellation proceeding with the USPTO. Can this act of filing subject the foreign applicant to service of process...more
In theory, trademarks can last “forever.” Unlike copyrights and patents, which have finite durations defined by law, a trademark can last as long as its owner maintains it and continues to use it. As the US Patent and...more
The U.S. Court of Appeals for the Federal Circuit on June 1, 2022, issued an order in favor of Barclays Capital Inc. (Barclays) in relation to its opposition to a trademark application for LEHMAN BROTHERS. The court affirmed...more
TTAB Cancellation Actions: Terminating an Infringing Trademark Registration - You learn that another person or entity has a registered trademark at the United States Patent and Trademark Office (the “USPTO”) that is...more
Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. What can you do? One option is to institute an opposition with the...more
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
Monster Energy Co. (“Monster Energy”), frequent trademark plaintiff, recently found itself on the receiving end of a trademark infringement lawsuit brought by California company Outdoor Pro Shop, Inc. (“Pro Shop”). Pro Shop’s...more
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
Earlier this month, the Trademark Trial & Appeal Board (TTAB) issued a precedential ruling that the term “Gruyere” for cheese is generic. In 2015, Swiss and French industry groups sought a certification mark for the term,...more
With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more
The case of Aiwa Co. Ltd v Aiwa Corporation is a useful reminder to brand owners, particularly those who are looking to revive a brand, of what amounts to “genuine use” of a registered trade mark. The case particularly...more
The Duke and Duchess of Sussex submitted a trade mark application with the World Intellectual Property Office last year to register “SUSSEX ROYAL” in the UK, EU, Australia, Canada and the US. The application covers a range of...more
Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement...more
Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more
When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when...more
On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement,...more
2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark...more
In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark...more
In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real...more