The May 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses two recent precedential TTAB decisions – one regarding disclaimer scope and the other exploring how to successfully claim trademark rights in the...more
Earlier this month, the Federal Circuit issued a precedential ruling on the question of whether a color mark for product packaging can ever be inherently distinctive, holding that the Trademark Trial and Appeal Board (TTAB)...more
5/6/2020
/ Appeals ,
Color Marks ,
Corporate Branding ,
Inherently Distinctive ,
Precedential Opinion ,
Product Packaging ,
Reversal ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The April 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a precedential Federal Circuit ruling about color marks for product packaging, takeaways from a recent Supreme Court decision regarding when an...more
5/5/2020
/ Burden of Proof ,
Color Marks ,
Damages ,
Dilution ,
Domain Names ,
gTLD ,
Lanham Act ,
Lost Profits ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Trial and Appeal Board ,
Trademarks ,
Willful Infringement
The January 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the following topics:
- The TTAB's affirmation to refuse a mark to distillery Jos. A. Magnus & Co.;
- Six trademark and copyright cases...more
The December 2019 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Pantone's color of 2020, a recent precedential decision about descriptive word marks in patent applications, and the new gTLD sunrise period....more
On April 10, 2019, the United States Court of Appeals for the Federal Circuit redesignated as precedential its January 14, 2019 decision upholding the Trademark Trial and Appeal Board’s (TTAB) decision affirming refusal of...more
5/9/2019
/ Administrative Appeals ,
Displays ,
Point of Sale Terminals ,
Precedential Opinion ,
Trademark Litigation ,
Trademark Manual of Examining Procedure (TMEP) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Use in Commerce ,
Websites
U.S. trademark attorneys received a New Year’s surprise last month when the Supreme Court of the United States agreed to hear Iancu v. Brunetti, the case that should determine the availability of federal trademark...more
3/5/2019
/ Burden of Proof ,
Certiorari ,
Compelling Governmental Interest ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Lee v Tam ,
Petition for Writ of Certiorari ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Infringement ,
Trademark Invalidity ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The August 2018 issue of Sterne Kessler's MarkIt to Market® newsletter discusses requirements for registering a scent mark, the U.S. Trademark Trial and Appeal Board's confirmation on whether hashtags add distinctiveness to a...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
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
The January 2017 issue of Sterne Kessler's MarkIt to Market® includes an overview of the TTAB's recent surname decisions, the changes made by the USPTO to their trademark processing and services fees, and lists the new gTLD...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
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
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
In a recent (non-precedential) decision , the TTAB refused to register the mark MEAT CANDY as being merely descriptive of Applicant's restaurant services. To anyone who is not a meat connoisseur, a 2(e)(1) refusal seems to be...more
The December issue of Sterne Kessler's MarkIt to Market TM newsletter discusses key takeaways as a result of a recent TTAB case in which a trademark was found to be laudatory, sends seasons greetings from the firm, and...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
The August issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses consent agreements and how to avoid naked consent, suggests 5 steps for protecting shrinking trademarks, and provides an updated list of the Sunrise...more
When used effectively, brand and merchandise licensing can increase the value of a brand by extending it into new, relevant product categories and by further monetizing brand equity. And when seeking to protect a brand in...more
Just in time for the holiday shopping season, the Trademark Trial and Appeal Board's recent decision in Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC is a good reminder of why, when...more
The Trademark Trial and Appeal Board's recent decision in In Re The Franchise Group, (TTAB July 2, 2014) reiterates that marks in use in the marketplace, not just on the Register, help determine whether trademarks in the U.S....more
In This Issue:
- Scammers Still Be...Scamming
- Contests – Check Rules Before Offering!
- Catalogs as Specimens
- gTLD Sunrise Periods Now Open
- Excerpt from Scammers Still Be...Scamming:
Based...more
6/12/2014
/ Advertising ,
Brand ,
Contests & Promotions ,
Domain Names ,
Fees ,
gTLD ,
ICANN ,
Registration ,
Scams ,
Sunrise Periods ,
Sweepstakes ,
Trademark Clearinghouse ,
Trademark Trial and Appeal Board ,
Trademarks ,
Use in Commerce
As U.S trademark owners know, the U.S. is unique among jurisdictions in that those who wish to federally register their marks are required to show that they are using a mark “in commerce” in connection with the goods/services...more