Earlier this month the PTO announced the inception of its Trademark Specimen Protest Email Pilot Program; as the name suggests, the program encourages the public to report any specimens that do not appear to exhibit marks as...more
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
News recently hit the wires that Grumpy Cat Ltd., the company behind the Grumpy Cat Internet “person”ality, was awarded over $700,000 in a trademark and copyright infringement lawsuit. The defendant was a licensee who was...more
2/17/2018
/ Contract Terms ,
Copyright ,
Copyright Infringement ,
Damages ,
Intellectual Property Protection ,
IP License ,
Marketing ,
Trademark Infringement ,
Trademark Registration ,
Trademarks ,
YouTube
On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit held that the Lanham Act’s prohibitions on registering scandalous and immoral marks discriminated based on content, and violated the First Amendment (In...more
1/3/2018
/ Appeals ,
Constitutional Challenges ,
Corporate Branding ,
Counterfeiting ,
Customs and Border Protection ,
First Amendment ,
Free Speech ,
Lanham Act ,
Scandalous/Immoral Marks ,
Trademark Registration ,
Trademarks
The December 2017 issue of Sterne Kessler's MarkIt to Market® discusses how ultra violet is the new black, a trademark practice update, and lists the new gTLD Sunrise periods.
...more
The holiday season in the United States starts around Halloween and extends for a two-month period until the beginning of January. The holiday marathon sparks a flurry of purchasing events – such as booking airline tickets,...more
Earlier this month, Unilever made headlines by accidently naming its new soap after Kim Jong Un. The shower gel line, created by a Korean designer and aimed at urban millennials in China, is called KJU....more
Consent agreements - in which a prior U.S. Patent and Trademark Office (USPTO) rights-holder provides consent to registration of a later-filed trademark - can be an efficient path to registration in situations where the...more
In May of 2014, this newsletter discussed the prevalence of trademark and domain name scams, and offered tips on how to avoid being duped by fake service offerings (see "Scammers Still Be Scamming" here). Unfortunately,...more
The Supreme Court’s June 19, 2017 decision in the Matal v. Tam case has been burning-up the news wires all week. The decision struck down a 70-year-old ban on federally registering disparaging trademarks, finding that the...more
7/5/2017
/ Brand Registry ,
Disparagement ,
First Amendment ,
Free Speech ,
Matal v Tam ,
SCOTUS ,
Trademark Act ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
The April 2017 issue of Sterne Kessler's MarkIt to Market® discusses navigating the lifecycle of an eponymous brand and lists the new gTLD Sunrise periods.
...more
The November 2016 issue of Sterne Kessler's MarkIt to Market® includes practical tips for registering certification marks, a look at the Trademark Trial and Appeal Board's latest revisions to the Rules of Practice-its most...more
The October 2016 issue of Sterne Kessler's MarkIt to Market® newsletter provides an update on the Redskins trademark case, discusses a recent TTAB ruling regarding ownership of families of marks, and announces the new gTLD...more
11/2/2016
/ Appeals ,
Disparagement ,
Domain Names ,
Federal Trademark Register ,
gTLD ,
Lanham Act ,
Petition for Writ of Certiorari ,
Redskins ,
Sunrise Periods ,
Trademark Infringement ,
Trademark Ownership ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
Last month, Federal Express announced that all of its logos moving forward would use the brand's recognizable purple and orange color scheme. Before this change, each division of the company used different colors paired with...more
In today's marketplace, companies are constantly seeking their moment, day, or --if they are lucky--year on the top of the "best of" list for new, unique, and/or fabulously redesigned goods or services. The sheer number of...more
When you create a social media profile on a platform such as Twitter, and engage with other Twitter users, are you creating your own online community? This question was at the heart of the TTAB's recent precedential decision...more
The June 2016 issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses the rise in additional specimen requests from the USPTO, examines the TTAB's decision in In re Florists' Transworld Delivery, Inc., and notes...more
Brexit - What You Need to Know Today -
1. No immediate change: The UK's vote last week to leave the EU after 43 years marks the beginning of a legal procedure whereby the UK may start the formal process of withdrawing...more
6/27/2016
/ Community Designs ,
EU ,
European Union Intellectual Property Office (EUIPO) ,
Intellectual Property Protection ,
Member State ,
Referendum Votes ,
Referendums ,
Trademark Registration ,
Trademarks ,
UK ,
UK Brexit
On April 30, 2016, the USPTO issued the April 2016 Trademark Manual of Examining Procedure ("TMEP"), the latest update to the go-to resource for how to prosecute applications to register trademarks with the USPTO.
This...more
The May 2016 issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses the April 2016 revisions to the USPTO's Trademark Manual of Examining Procedure ("TMEP") and notes currently open gTLD Sunrise Periods.
...more
When IKEA opened its first store in Indonesia in late 2014, it wasn't the only IKEA in town. Indonesian furniture company PT Ratania Khatulistiwa registered its IKEA mark (presumably an acronym for Intan Khatulistiwa Esa...more
Benny and Rafi Fine, also known as the Fine Brothers, are well-known YouTube® content producers – they publish videos that show groups of people watching and reacting to things. Some recent examples include Elders React to...more
The February issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses the trademark implications of so-called "zombie" brands, examines Reddit reactions to the Fine Brothers' attempts to register and monetize the...more
The start of a new year is a natural time to audit your company's brand assets to make sure they are being appropriately used and protected. These audits can take different forms, but the core analysis involves a review of...more
The beginning of a new year is often the impetus for change. For companies, this may mean a rebranding initiative involving an update to a company's house mark or logo. In 2015 several companies, including Google, Facebook,...more
2/23/2016
/ Corporate Branding ,
Equivalency Determinations ,
Facebook ,
Goodwill ,
Google ,
IHOP ,
Logos ,
Tacking ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks