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Lanham Act Trademark Registration Corporate Counsel

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

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In a rare precedential decision involving Section 2(a) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit recently upheld a denial by the Trademark Trial and Appeal Board (TTAB) of applications filed for US...more

Harris Beach Murtha PLLC

Fourth Circuit Confirms: Physical Distance Does Not Avoid Trademark Confusion

The Fourth Circuit Court of Appeals recently issued a decision confirming that using similar names for businesses in the same industry can result in a likelihood of confusion despite the physical distance of the entities. In...more

Seyfarth Shaw LLP

Serving the USPTO Director in Actions Involving Non-US Companies: A Little-Known Provision of the Lanham Act

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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

Polsinelli

100% That’s My Trademark: Common Terms Can Be Source Identifiers Under The Right Circumstances

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A trademark is any word, phrase, symbol, design, or combination of these things that identifies a single source for certain products or services. Trademarks identify the source of certain products or services, provide legal...more

Sunstein LLP

The Long Arm of Trademark Law: Where do we draw the line?

Sunstein LLP on

Can a United States court really award tens of millions of dollars in damages for violation of US trademark law under the Lanham Act where the conduct at issue did not even take place in the United States? According to a...more

BakerHostetler

Important Changes in USPTO Trademark Practices to Take Effect on Dec. 3, 2022

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As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond...more

McDermott Will & Schulte

“TRUMP TOO SMALL” Trademark Decision Leaves Big Questions

Revisiting jurisprudence touching on the Lanham Act and the First Amendment from the Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti, the US Court of Appeals for the Federal Circuit held that applying Sec....more

Mintz - Trademark & Copyright Viewpoints

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. Among other changes, the Act includes important amendments to the Lanham Act...more

Chambliss, Bahner & Stophel, P.C.

Changes to Trademark Act Include New Procedure to Challenge Applications

On December 27, 2020, President Trump signed the bipartisan COVID-19 relief and government funding bill which includes the Trademark Modernization Act of 2020 (TMA). The TMA, which will become effective in one year,...more

Jones Day

Takeaways from Trademark Law in 2020 and Looking Ahead to 2021

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In this White Paper, we share observations on 2020's most significant developments in trademark law. This year, the U.S. Supreme Court penned three opinions concerning what constitutes a protectable trademark, available...more

Kilpatrick

Trademark Modernization Act Becomes Law: Establishes New Procedures to Remove Deadwood Registrations, Restores Presumption of...

Kilpatrick on

Introduction - On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) became law after it passed Congress and was signed by the President as part of the year-end Consolidated Appropriations Act for 2021.1 The...more

McDermott Will & Schulte

Eye Don’t: No Counterfeiting Without Likelihood of Confusion

McDermott Will & Schulte on

Referring to the act of counterfeiting as “hard core” or “first degree” trademark infringement, the US Court of Appeals for the Ninth Circuit for the first time confirmed that the Lanham Act requires a likelihood of confusion...more

Tarter Krinsky & Drogin LLP

Significant 2019 Trademark Developments

In the past calendar year, we saw several significant decisions from the Supreme Court pertaining to trademarks. In Iancu v. Brunetti, 139 S. Ct. 2294, the Supreme Court took another step in dismantling the prohibitions on...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Strikes Down Ban on Offensive Trademarks

On June 24, 2019 the U.S. Supreme Court issued an opinion in Iancu v. Brunetti, No. 18-302, finding that the Lanham Act prohibition against registration of scandalous or immoral trademarks violates the First Amendment of the...more

Weintraub Tobin

Unprotectable Generic Trademarks + Top-Level Domains = Protectable Trademarks

Weintraub Tobin on

Generic trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks,...more

Cooley LLP

Alert: US Appeals Court Strikes Ban on Registering ‘Immoral’ or ‘Scandalous’ Trademarks

Cooley LLP on

In a much-anticipated and yet unsurprising outcome, the US Court of Appeals for the Federal Circuit on December 15 struck the law barring registration of "immoral" or "scandalous" trademarks as unconstitutional in violation...more

Dorsey & Whitney LLP

Tea Rose, Swiss Cheese and Slam Dunk Evidence of Infringement – The 9th Circuit Weighs in on Remote Geographic Trademark Users

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When two different companies adopt confusingly similar trademarks and use them in different parts of the United States, complications ensue. The adjudication of the respective rights of the parties will depend on the...more

Jones Day

Standing to Enforce Foreign Trademark Rights After Belmora v. Bayer Certiorari Denial

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On February 27, 2017, the Supreme Court of the United States denied certiorari in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, __ S. Ct. __, 2017 WL 737826 (U.S. Feb. 27, 2017) (No....more

Foley Hoag LLP - Making Your Mark

A Tale Of Two Hats: Trademark “Use In Commerce” Expanded In A Potentially Game-Changing Decision

Our readers no doubt understand that trademark use is the basis for trademark protection in the U.S. But all use is not created equal, and sometimes it’s not so easy to tell whether a trademark is actually used in a manner...more

Dorsey & Whitney LLP

Who Should Own a Trademark Registration? The Case of the Not-So-Related Parent Company

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A recent precedential Trademark Trial and Appeal Board decision provides valuable guidance on the proper allocation of trademark registration ownership as between a corporate parent and a subsidiary, highlighting the perils...more

Dorsey & Whitney LLP

Federal Judge vs. TTAB – Trademark Battle over Bear Bryant’s Houndstooth Hat

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The case of The Board of Trustees of the University of Alabama and Paul W. Bryant, Jr. v. Houndstooth Mafia Enterprises LLC et al. showcases an unusual clash between a federal judge and the Trademark Trial and Appeal Board...more

Akerman LLP - Marks, Works & Secrets

TTAB Makes Double Brown Ale Open to Nut Sack Mark

In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character...more

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