News & Analysis as of

Madrid Protocol Trademarks Trademark Trial and Appeal Board

Womble Bond Dickinson

TTAB Extends Time to Respond to a Complaint (With a Caveat)

Womble Bond Dickinson on

Per a Federal Register Notice today from the USPTO, the Trademark Trial and Appeal Board (TTAB) has extended the time period to respond to a complaint in a TTAB trial proceeding to sixty (60) days. ...more

Neal, Gerber & Eisenberg LLP

Client Alert: New USPTO Rule Requires Foreign Applicants, Registrants, and Parties to TTAB Proceedings to Be Represented by U.S....

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

Weintraub Tobin

Rule Change Requires U.S. Counsel For Foreign-Domiciled Trademark Applicants

Weintraub Tobin on

The United States Patent and Trademark Office (the “USPTO”) explains that- “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used...more

Womble Bond Dickinson

USPTO to Require US-Licensed Counsel for All Foreign-Domiciled Trademark Filers; New Rule Takes Effect Aug. 3

Womble Bond Dickinson on

The US Patent and Trademark Office recently announced that starting on August 3, 2019, all foreign-domiciled trademark applicants, registrants and participants in USPTO trademark proceedings must be represented by US counsel....more

Hahn Loeser & Parks LLP

USPTO Requires U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants

Earlier in July 2019, the United States Patent and Trademark Office (USPTO) issued a final rule amending the Rules of Practice in Trademark Cases, the Rules of Practice in Filings Pursuant to the Protocol Relating to the...more

Hogan Lovells

It’s Official: Foreign Trademark Applicants Will Need a U.S. Attorney

Hogan Lovells on

On July 2, the United States Patent and Trademark Office (“USPTO”) published a final rule in the Federal Register requiring all non-U.S. individuals and businesses seeking a trademark registration be represented by a U.S....more

Ballard Spahr LLP

Foreign Trademark Owners Now Will Need a U.S. Attorney

Ballard Spahr LLP on

While it always has been advisable to seek the assistance of an experienced trademark attorney to handle trademark matters, beginning August 3, 2019 (Effective Date), federal trademark applicants, registrants, and parties to...more

ArentFox Schiff

USPTO Announces New Rule Requiring US-Licensed Attorneys to Represent Foreign Applicants and Registrants

ArentFox Schiff on

In response to the significant increase in fraudulent filings, effective August 3, 2019, all foreign-domiciled applicants, registrants, or parties to trademark proceedings must be represented by a US-licensed attorney....more

Dorsey & Whitney LLP

Trademark Practice Tip: Make Extra Sure Your Cover Sheet Is Complete When Opposing a Madrid Protocol Application

Dorsey & Whitney LLP on

Late last year, in a decision that bears continued attention, the Trademark Trial and Appeal Board held that oppositions to Madrid Protocol applications filed under Section 66(a) are limited to the grounds set forth in the...more

Sheppard Mullin Richter & Hampton LLP

Intent To Use – It’s Not The Thought That Counts

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at...more

Foley & Lardner LLP

Full Class Heading Does Not Cover “All Services” in the United States

Foley & Lardner LLP on

Trademark owners outside the United States often find it useful to file U.S. applications based on priority from an application or registration in their home country, or as an extension of protection from an International...more

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