The Briefing: The Supreme Court Limits the Reach of The Lanham Act
The U.S. Trademark Use Requirement and Associated Risks and Strategies for Chinese Applicants
Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: 9th Cir....more
In response to reports that some registrants use fraudulent specimens to prove continued use in commerce, the US Patent & Trademark Office (PTO) proposed an update to its post-registration audit process. Changes in...more
Small business owners should consider securing a federal trademark registration as a means of safeguarding their business identity and distinguishing themselves from competitors. Although you are not required to register a...more
Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Third...more
Startup founders looking to protect their brands need to understand the concept of “use in commerce” to successfully register their trademarks with the U.S. Patent and Trademark Office (USPTO). This article will break down...more
There once was a company named Zotz, Which created toys for tots, It set up abroad, of course! But filing first is KnockOffSource, Can Zotz manufacture? Methink “notz!” First published in Inside magazine, NYSBA, Fall...more
There once was a company named Zotz, Which created toys for tots, The newest toy, named Ketter™, Recalled after a cease and desist letter, Oh my, no trademark search, CEO Zotz? First published in Inside magazine,...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
Trademark owners in the cannabis field keep trying new ways to register their marks, and who can blame them? Branding is everything in an increasingly online world, and protecting your brand’s reputation is paramount to...more
Creativity abounds in the CBD industry – both in the wide variety of products infused with it, and in the efforts undergone by applicants trying to circumvent the Trademark Act to register per se unlawful CBD-infused...more
U.S. trademark law is a nuanced subject governed by both federal and state laws, and determining the scope of a parties’ trademark rights can be complex and highly fact specific. Nearly every company has at least one...more
The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an “Intent to Use” basis to establish a priority date before the mark is actually “used in commerce.” However, such use in...more
In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its...more
A recent article in Marijuana Business Daily projected that the total economic impact of the cannabis industry will range from $39.2 billion to $48 billion in 2019. Despite this commercial potential, there remains little...more
When it comes to proving use of marks in commerce, perception by consumers is everything. If consumers perceive a mark as identifying only a particular component or feature of the goods in a specimen, the PTO will likely...more
A trademark is a word, name, or symbol used to identify and distinguish a seller’s product from those of others. A trademark is part of a company’s brand. It is the embodiment of the company’s reputation. Over time, a...more
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
Everyone is familiar with Trademarks. We are literally surrounded by them. Trademarks are the words, logos, packaging and other devices that we use to differentiate goods and services from each other and are how we can...more
In a previous Legal Alert, we covered the removal of one impediment to federal trademark registration for hemp/CBD products: namely, that hemp/CBD products will no longer be outlawed by the Controlled Substances Act and will...more
Recently, Oklahoma joined the ranks of the 30 states that have legalized medical marijuana, but the state still has work to do on just how to implement its new law. As usual, the devil is in the details. Even though Oklahoma...more
In Tommie Copper IP Inc v Gcool-Tech Usa LLC (Opposition No 91223768 (9 May 2018) [not precedential]), the Trademark Trial and Appeal Board (TTAB) has dismissed an opposition where the applicant did not have use in commerce...more
You don’t need to register a trademark to establish and assert trademark rights in the U.S. Merely using a mark commercially so that consumers come to view the mark as an identifying a source is enough to qualify for...more
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
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