The September 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a recent non-precedential Trademark Trial and Appeal Board decision regarding intent-to-use applications covering CBD products currently...more
10/1/2021
/ Banking Reform ,
Banking Sector ,
Cannabidiol (CBD) oil ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Controlled Substances Act ,
Criminal Penalties ,
Decriminalization of Marijuana ,
Domain Name Registration ,
Domain Names ,
Drug Possession ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Financial Institutions ,
Financial Services Industry ,
gTLD ,
ICANN ,
Intellectual Property Protection ,
Intent-to-Use ,
Marijuana ,
Marijuana Cultivation ,
Marijuana Related Businesses ,
Schedule I Drugs ,
Sunrise Periods ,
Trademark Act ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see...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
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
8/30/2021
/ Brand ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Domain Name Registration ,
Domain Names ,
gTLD ,
ICANN ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Intent-to-Use ,
Monster Energy Drinks ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Sunrise Periods ,
Trade Dress ,
Trademark Application ,
Trademark Cancellation ,
Trademark Electronic Application System (TEAS) ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Modernization Act (TMA) ,
Trademark Opposition Proceedings ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The USPTO issued an alert earlier this week reporting that as of June 17, 2021, U.S. trademark application filings had increased 63% over the prior year, translating into about 211,000 more applications. And, while this...more
The June 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses recent litigation surrounding copyright registration invalidation and implications of the increase in trademark application filings at the USPTO....more
6/29/2021
/ Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Office ,
Copyright Registration ,
Evidence ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Intent to Defraud ,
Marijuana ,
Marijuana Related Businesses ,
Patents ,
The Copyright Act ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
USPTO
Revenge for Infringing Candy Trademarks? So Sweet.
Two recent court decisions highlight that there may still be a bit of a disconnect when it comes to branding cannabis products. In other words, even if your product is...more
6/2/2021
/ Brand ,
Business & Professions Code ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Disgorgement ,
Intellectual Property Protection ,
Lanham Act ,
Marijuana-Infused Edibles ,
Permanent Injunctions ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
[co-author: Sahar A. Ahmed, Law Clerk]
The May 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the USPTO's new Native American Tribal Insignia Database and two recent trademark litigation cases...more
5/28/2021
/ Brand ,
Business & Professions Code ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Confusingly Similar ,
Databases ,
Disgorgement ,
Heritage & Culture ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Lanham Act ,
Marijuana-Infused Edibles ,
Native American Issues ,
Permanent Injunctions ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Searches ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more
It was hard to escape news last month of the “Satan Shoes” collaboration between Lil Nas X and Brooklyn art collective MSCHF Product Studio (“MSCHF”). The limited (666 pairs) release of custom red and black Nike Air Max...more
5/3/2021
/ Consumer Confusion ,
Damages ,
Declaratory Relief ,
Dilution ,
False Designation of Origin ,
First Amendment ,
First Sale Doctrine ,
Freedom of Expression ,
Injunctive Relief ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Nike ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
TRO ,
Unfair Competition
[co-author: Joseph Diorio, Law Clerk]
The April 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the suit filed by Nike over MSCHF's "Satan Shoes"; the latest PTAB decision in the ongoing battle...more
4/30/2021
/ Consumer Confusion ,
Damages ,
Declaratory Relief ,
Dilution ,
Domain Name Registration ,
Domain Names ,
False Designation of Origin ,
First Amendment ,
First Sale Doctrine ,
gTLD ,
ICANN ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Lanham Act ,
Likelihood of Confusion ,
Nike ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Philip Morris ,
Restraining Orders ,
RJ Reynolds ,
Sunrise Periods ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Unfair Competition ,
Vaping
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see...more
As has been the case in recent years, trademark filings in 2020 again increased over the previous year. While at first glance this may seem to indicate that the U.S. economy continues to grow and innovate, at least some of...more
2/2/2021
/ Ex Partes Reexamination ,
Expungement ,
Intellectual Property Protection ,
Lanham Act ,
Trademark Application ,
Trademark Cancellation ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
[co-author: Joseph Diorio, Law Clerk]
The January 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses: a recent non-precedential TTAB decision on background designs; the Trademark Modernization Act;...more
1/29/2021
/ Acquired Distinctiveness ,
Cannabidiol (CBD) oil ,
Color Marks ,
Domain Names ,
gTLD ,
ICANN ,
Lanham Act ,
Sunrise Periods ,
Trademark Application ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Utility Patents
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more
Following the United Kingdom’s withdrawal from the European Union in February of 2020, the EU will soon be revoking any .eu domain names owned by UK registrants who fail to comply with new EU requirements that owners of such...more
[co-author: Joseph Diorio, Law Clerk]
The December 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the implications of Brexit on .eu domain names owned by UK registrants, recent cannabis legislation,...more
12/28/2020
/ Cannabidiol (CBD) oil ,
Cannabis-Related Businesses (CRBs) ,
Controlled Substances Act ,
Decriminalization of Marijuana ,
Domain Name Registration ,
Domain Names ,
EU ,
gTLD ,
Hemp ,
Legislative Agendas ,
Marijuana ,
Marijuana Related Businesses ,
Medical Marijuana ,
Sunrise Periods ,
UK ,
UK Brexit
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more
Why do most consumers prefer to purchase expensive goods in person? Do they value the trust factor of seeing and knowing what they are buying? Do they need to feel confident that the item is worth the price? As the pandemic...more
[co-author: Joseph Diorio, Law Clerk]
The November 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a rare failure-to-function refusal reversal at the TTAB, Google's efforts to combat counterfeit goods,...more
12/2/2020
/ Counterfeiting ,
Domain Names ,
Filing Fees ,
Google ,
gTLD ,
Online Marketplace ,
Reversal ,
Sunrise Periods ,
Trademark Application ,
Trademark Infringement ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see our...more
In a complaint filed late last month in the Northern District of Illinois, Edible Arrangements, purveyors of fancy fruit bouquets, initiated a trademark infringement suit against cannabis company Green Thumb Industries Inc.,...more
The October 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a trademark litigation case in the cannabis consumer goods space and the open gTLD sunrise periods.
In this issue:
- Get in the Weeds:...more
As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please see...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
10/3/2020
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Commerce Clause ,
Farm Bill ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Hemp ,
Intellectual Property Protection ,
Marijuana ,
Trademark Act ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
Use in Commerce ,
USPTO