News & Analysis as of

Use in Commerce

PTO’s Rejection of Marks Related to Marijuana Should Be Found Unlawful

by Dorsey & Whitney LLP on

The United States Patent and Trademark Office rejects trademark applications when it determines that the use of the mark is unlawful under the Controlled Substances Act. See In re Brown, 119 USPQ.2d 1350 (TTAB 2016) In the...more

Changes to Canadian Trademark Law, Eh?

Those of us with clients who do business in Canada have been watching with interest as Canada prepares to implement significant changes to its trademark laws. The new Trademarks Act (no more Trade-hyphen- marks!) was enacted...more

What qualifies as acceptable Use in U.S. Commerce?

by Ladas & Parry LLP on

The mark must be used “in Commerce” and in good faith in the ordinary course of trade. While the USPTO will generally not conduct an inquiry, the applicant must claim use that qualifies as “Use in U.S. Commerce”. What...more

Trademarks: Use it or lose it – and prove it!

by Field Law on

You may be surprised to learn that even after your trade-mark is registered, it can be expunged from the Trade-marks Register. One way is through Section 45 of the Trade-marks Act (“Act”). Section 45 of the Act authorizes...more

Will TTAB’s First Precedential Decision of 2018 Lead to Better Quality Examination of Statements of Use?

by Dorsey & Whitney LLP on

In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more

Allegations of Use in U.S. Trademark Applications Based on Intent to Use

by Ladas & Parry LLP on

“Intent to use” (“ITU”) trademark applications must be successfully amended to allege use in U.S. Commerce before proceeding to registration. The applicant has six months from the issuance of a Notice of Allowance (“NOA”) or...more

You Have Goat to be Kidding Me

Billie Goat Tavern & Grill in Chicago has sued St. Louis-based The Billie Goat Chip Company for trademark infringement, claiming the sale of Billie Goat Chips in Illinois and elsewhere is causing confusion with their tavern....more

Ready to Release a New Pharmaceutical? What to Think About When Selecting Your Drug Name

by Foley & Lardner LLP on

Pharmaceutical name clearance in the United States can be complicated. This post aims to provide insight into the regulatory safety review process and the trademark registration process for candidate drug names. This...more

#TidalTuesday #UseInCommerce #RegistrationFail

by Dorsey & Whitney LLP on

A recent decision by the Trademark Trial and Appeal Board in Tidal Music AS v. The Rose Digital Entertainment LLC (Opp. No. 91232127) confirms the importance of ensuring proper use of a service mark before filing an...more

Use It or Lose It; What Breweries, Wineries and Distilleries Can Do To Protect Their Trademarks from Becoming Abandoned

by Mulcahy LLP on

Trademark abandonment can be an issue for breweries, wineries and distilleries who may offer certain products for limited periods of time or in discrete markets and then attempt to bring them back years later. Abandonment is...more

Three Point Shot - August 2017

by Proskauer Rose LLP on

Eastern District Heavyweight Bout Ends in Stunning Trademark Technical Knockout - Floyd Mayweather and Connor McGregor's late-August 2017 matchup may be the most highly anticipated boxing event in decades. But while "The...more

The Covfefe Kerfuffle and the Rush to Register Trending Terms

While many of us are working our way through the flood of thought-provoking analysis of Matal v. Tam, I’m taking a break with some lighter fare, namely, covfefe. In case you missed it, the viral non-word “covfefe” was born...more

The Devil Made Me Do It

by Dorsey & Whitney LLP on

On June 9, 2017, Gene Simmons of Kiss rock band fame applied with the United States Patent and Trademark Office (“PTO”) to register the following mark for “Entertainment, namely, live performances by a musical artist;...more

Ownership of a Trademark Follows Use

In Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation, [2016-2055](June 8, 2017), the Federal Circuit affirmed the decision of the TTAB cancelling Lyons’ registration of the mark THE AMERICAN...more

[Acapulco] Gold* Rush for California Cannabis Trademarks Countdown to January 1, 2018

Last week the California Assembly passed Assembly Bill 64 (AB 64), an omnibus bill regarding medical and recreational marijuana, sending it to the State Senate for review....more

USPTO Proposes Cheaper, Faster Cancellation Option

The U.S. Patent and Trademark Office register contains a lot of dead weight. In order to obtain a trademark registration and maintain the registration, the owner must use the mark in U.S. interstate commerce (as always, with...more

Pre-Sale Use of Data Storage Trademark Not Enough to Secure Priority Rights

A Massachusetts federal court recently found multiple early uses of a sought-after trademark insufficient to confer priority of rights. The dispute concerned two technology companies, Nexsan and EMC, each seeking to use the...more

Defend Trade Secrets Act Nears Year One: What Employers, Trade Secret Owners Need to Know

by Holland & Knight LLP on

An employer or trade secret owner can now assert a federal private cause of action for misappropriation of trade secrets under the Defend Trade Secrets Act (DTSA), 18 U.S.C. §1836(b), if “the trade secret is related to a...more

The Muddy Waters of Use for Beer Brands

The Craft Brewers Conference is an impressive affair. Between the number of brewers I’ve met from across the country as well as internationally, and the colossal trade show, the breadth and scope of the industry is probably...more

Opportunity May Not Knock Without the Right Door

When seeking particular services, consumers are often drawn into a business based on branding and advertising found near the location – whether by signage on or around the establishment, or by glimpses of the services being...more

Why Brand Owners Need to Keep a Paper Trail

by Bennett Jones LLP on

Good evidence wins cases. In a trademark opposition, evidence demonstrating how and for how long a mark has been used in commerce (for example, on hangtags, labels, packaging, signage, invoices and online platforms) can be...more

USPTO Tightens Requirements for Commercial Use of Trademarks

by Carlton Fields on

On March 21, 2017, the USPTO implemented changes to its requirements for continued use of trademarks in commerce that will require some trademark owners to provide additional materials and documentation when they renew their...more

New Trademark Office Audit May Result in Cancellation of Registrations

The United States Patent and Trademark Office (“USPTO”) announced a final rule that took effect on February 17, 2017. To assess and promote the accuracy and integrity of the trademark register, the USPTO amended rules...more

Use It or Lose It: USPTO to Conduct Post-Registration Trademark Use Audits

by Jones Day on

Trademark owners take note: Affidavits to renew your U.S. trademark registrations may be getting a closer look. On March 21, 2017, the United States Patent and Trademark Office ("USPTO") implemented a new rule aimed at...more

USPTO launches new proof of use audit program

by Thompson Coburn LLP on

The United States Patent and Trademark Office (USPTO) has launched a new program that will require some trademark owners to submit more “specimens” (i.e., proof of use) and information than was required in the past. As a...more

84 Results
|
View per page
Page: of 4
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.