It is a basic tenet of trademark law that rights are jurisdictional. Trademark owners only have rights in the mark in the jurisdictions in which they have registered (or, in some cases, used) the mark....more
A long legal battle over the right to use the “UGG” mark has may result in the end of a company’s right to the word “UGG” in connection with sheepskin shoes and accessories outside of Oceania....more
When, if ever, is it okay to use a trademark in U.S. commerce that is identical to another company’s mark used outside the U.S.? Courts have struggled with this issue for years, and the U.S. Patent and Trademark Office...more
Join us for an insightful webinar with our trademark experts, who will guide you through the complexities of global trademark filing. Over this 45-minute session, you will learn how to protect and expand your brand...more
As we previously reported, in January of this year, the China National Intellectual Property Administration (CNIPA) published its Draft 5th Amendment to the Chinese Trademark Law. See here. One of the proposed amendments no...more
Thank you for reading the August 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we conclude our series that explores ways to lose trademark rights with an examination of naked licensing, discuss a...more
The U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the...more
U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more
On March 21, the United States Supreme Court heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc. over whether the infringement provisions of the United States Trademark Act impose liability for...more
There is a little-known provision of the Lanham Act (the US Trademark Act) that packs a potentially big punch. 15 USC § 1051(e) provides that if a non-U.S. entity registers for a trademark in the United States without...more
Circuit courts have struggled for decades to adopt a uniform approach for when to apply the Lanham Act extraterritorially. That struggle may end soon. In the Abitron Austria case, the Supreme Court is set to clarify the scope...more
A trademark, according to the United States Patent and Trademark Office (“USPTO”), can be “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” Can a body movement be...more
In a recent Show Cause Order, the United States Patent and Trademark Office took on the ghost of trademark attorneys past or rather it took aim at a scary level of fraud. The USPTO has threatened sanctions against...more
We reported here last summer the outcome of Coca-Cola Company’s petitions to cancel the registrations for the above-captioned marks owned by Meenaxi Enterprise, Inc. Meenaxi appealed the TTAB’s decision to cancel the...more
Whether you are filing a new trademark application or looking to maintain a registration, understanding trademark specimen best practices is key. A common pitfall when filing your application is failing to provide an...more
While it has been almost two years since the United States Patent and Trademark Office (USPTO) changed its Rules of Practice to require representation by U.S. counsel, foreign applicants continue to file trademark...more
As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the...more
From a German perspective, 2020 saw highly interesting developments that may well have an impact even beyond the borders of Germany. For example, the Federal Court of Justice (Bundesgerichtshof) in Sisvel v. Haier handed down...more
When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your...more
Thursday I attended the United States Patent and Trademark Office’s (USPTO) virtual webinar on trademark trends and current developments in the United States and in Israel. Among the speakers were Andrei Iancu, the Under...more
Attorney Elizabeth M. Sbardellati recently presented "Trademarks & Copyrights: How to Protect Your IP Without Breaking the Bank" to a group of women startup owners as part of the Women Founders Network organization. A summary...more
With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more
This article discusses the global developments for the registration of cannabis and cannabis-related trademarks in the United States, Canada, Mexico, and the European Union....more
Beginning on February 15, 2020, with very few exceptions, submissions before the US trademark office will be required to be filed digitally. Also included in the rule changes and among the most significant change,...more
Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada? After reading that question, are you wondering what on earth a Madrid Protocol application is?...more