Trademarks, Trademark Application, Foreign Trademark

MarkIt to Market® - August 2023: Happy to Wait! New Rules Allow for Suspension of Trademark Review Cases in China

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/5/2023

As we previously reported, in January of this year, the China National Intellectual Property Administration (CNIPA) published its Draft 5th Amendment to the Chinese Trademark Law. See here. One of the proposed amendments no...more

MarkIt to Market® - August 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/1/2023

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

Serving the USPTO Director in Actions Involving Non-US Companies: A Little-Known Provision of the Lanham Act

Seyfarth Shaw LLP on 4/28/2023

There is a little-known provision of the Lanham Act (the US Trademark Act) that packs a potentially big punch. 15 USC § 1051(e) provides that if a non-U.S. entity registers for a trademark in the United States without...more

Strategies to Deal with Bad Faith Trademark Rights Enforcement

Linda Liu & Partners on 2/3/2023

The trademark system in China follows the first-to-file rule. As long as the application meets the statutory application requirements, trademark registration can be obtained, resulting in a large number of bad faith...more

Signature Moves: Trademarked Poses Raise Questions in IP Law

Kohrman Jackson & Krantz LLP on 10/19/2022

A trademark, according to the United States Patent and Trademark Office (“USPTO”), can be “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” Can a body movement be...more

Spooky Season at the USPTO: Trademark Filings from Beyond the Grave Found in a Crackdown Against Fraud

Dorsey & Whitney LLP on 9/29/2022

In a recent Show Cause Order, the United States Patent and Trademark Office took on the ghost of trademark attorneys past or rather it took aim at a scary level of fraud. The USPTO has threatened sanctions against...more

Submitting a Trademark Application? Five Trademark Specimen Pitfalls and Best Practices

Gibney Anthony & Flaherty, LLP on 6/11/2021

Whether you are filing a new trademark application or looking to maintain a registration, understanding trademark specimen best practices is key. A common pitfall when filing your application is failing to provide an...more

U.S. Counsel Required for Foreign Applicants in Trademark Matters

Maynard Nexsen on 6/11/2021

While it has been almost two years since the United States Patent and Trademark Office (USPTO) changed its Rules of Practice to require representation by U.S. counsel, foreign applicants continue to file trademark...more

2021 Trends in Trademarks

Dechert LLP on 4/1/2021

Big challenges in clearing new brands - U.S. trademark applications skyrocket - China accounts for 25 percent of U.S. filings - Fraudulent applications abound - “Are We Running Out of Trademarks?” The authors of a Harvard Law...more

Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

Gibney Anthony & Flaherty, LLP on 1/22/2021

When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your...more

USPTO Trademark Trends

Fox Rothschild LLP on 12/4/2020

Thursday I attended the United States Patent and Trademark Office’s (USPTO) virtual webinar on trademark trends and current developments in the United States and in Israel. Among the speakers were Andrei Iancu, the Under...more

Trademark Office Deadlines and Coronavirus-Related Delays

Farella Braun + Martel LLP on 3/27/2020

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

USPTO Issues Guidelines Regarding February 15, 2020, Trademark Rule Changes

Haug Partners LLP on 2/11/2020

Beginning on February 15, 2020, with very few exceptions, submissions before the US trademark office will be required to be filed digitally. Also included in the rule changes and among the most significant change,...more

Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

Faegre Drinker Biddle & Reath LLP on 12/20/2019

Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada? After reading that question, are you wondering what on earth a Madrid Protocol application is?...more

Yes, CIPO really will be writing to your client instead of to you

Smart & Biggar on 12/9/2019

If you filed a Madrid application on behalf of your client, and designated Canada, you should have received a “Courtesy Letter” from the Canadian Intellectual Property Office (CIPO) advising you as follows...more

USPTO Updates Rules Regarding Proof of Use of Trademarks

Seyfarth Shaw LLP on 11/27/2019

Synopsis: Beginning December 21, 2019, trademark owners will face increased proof of use/trademark specimen requirements with respect to trademark applications before the US Patent and Trademark Office (“USPTO”)....more

Be Prepared: New Trademark Law in Myanmar Will Eliminate Cautionary Notices

ArentFox Schiff on 11/26/2019

Under Myanmar’s new law, any existing Cautionary Notices must be refiled as trademark applications within the first few months of 2020 or risk losing their priority....more

IP Update: Irish and Northern Irish Businesses Now Must Be Represented by a U.S.-Licensed Attorney on USPTO Matters

Arnall Golden Gregory LLP on 9/10/2019

As of early August, all Irish and Northern Irish persons and entities (whose permanent legal residence or principal place of business is outside the U.S.) are required to be represented by a licensed U.S. attorney in good...more

US Trademark Office addresses false or inaccurate filings

Eversheds Sutherland (US) LLP on 8/26/2019

According to the USPTO Commissioner of Trademarks, the United States Patent and Trademark Office (USPTO) has seen a significant increase in the number of applicants who are not fulfilling their legal and ethical obligations...more

You Got No Mail: Foreign Representatives Will Not Get Communications from CIPO on WIPO Applications

ArentFox Schiff on 8/19/2019

After its recent adoption of the Madrid Protocol, Canada’s Intellectual Property Office will send communications about applications filed under the Madrid Protocol to the applicant or an appointed Canadian trademark agent,...more

Foreign Applicants Must Now Appoint U.S. Counsel for USPTO Trademark Proceedings

Faegre Drinker Biddle & Reath LLP on 8/8/2019

In a significant shift from long-standing procedures, the U.S. Patent and Trademark Office (USPTO) recently revised its rules to require that all foreign-domiciled trademark applicants, registrants and parties to trademark...more

Client Alert: New USPTO Rule Requires Foreign Applicants, Registrants, and Parties to TTAB Proceedings to Be Represented by U.S....

Neal, Gerber & Eisenberg LLP on 8/1/2019

A new USPTO rule recently came into effect that impacts foreign applicants, registrants, and parties to proceedings before the Trademark Trial and Appeal Board (“TTAB”). The new rule requires all foreign applicants,...more

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