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
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
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
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
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
Synopsis: Beginning December 21, 2019, trademark owners will face increased proof of use/trademark specimen requirements with respect to trademark applications before the US Patent and Trademark Office (“USPTO”)....more
As of early August, all Irish and Northern Irish persons and entities (whose permanent legal residence or principal place of business is outside the U.S.) are required to be represented by a licensed U.S. attorney in good...more
After its recent adoption of the Madrid Protocol, Canada’s Intellectual Property Office will send communications about applications filed under the Madrid Protocol to the applicant or an appointed Canadian trademark agent,...more
Since August 3, 2019, all foreign-domiciled U.S. trademark applicants, registrants and parties to proceedings before the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board must be represented...more
In a significant shift from long-standing procedures, the U.S. Patent and Trademark Office (USPTO) recently revised its rules to require that all foreign-domiciled trademark applicants, registrants and parties to trademark...more
A new USPTO rule recently came into effect that impacts foreign applicants, registrants, and parties to proceedings before the Trademark Trial and Appeal Board (“TTAB”). The new rule requires all foreign applicants,...more
Earlier this month, the United States Patent & Trademark Office’s (USPTO) finalized and announced a rule requiring foreign trademark applicants to be represented by a United States licensed attorney when applying for a US...more
Effective on August 3, 2019, the United States Patent and Trademark Office (USPTO) will require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be...more