News & Analysis as of

Regulatory Requirements Trademark Registration Intellectual Property Protection

McDermott Will & Emery

Rules Are Rules, Especially in Trademark Proceedings

The Commissioner for Trademarks recently issued a precedential decision terminating a reexamination proceeding for the registrant’s failure to respond within a statutory time period, where there was insufficient justification...more

Blake, Cassels & Graydon LLP

Marques de commerce : Des preuves d’emploi désormais exigées sous peine de radiation

Le registraire des marques de commerce (le « registraire ») peut désormais exiger des propriétaires de marques de commerce déposées auprès de l’Office de la propriété intellectuelle du Canada qu’ils présentent des preuves...more

Dorsey & Whitney LLP

Canada: Updates on Language Requirements for Trademarks in Quebec and Cancellation Pilot Project for Trademark Registrations

Dorsey & Whitney LLP on

Our friendly neighbors in the Great White North are implementing important changes in 2025 with respect to language requirements for trademarks and a new pilot project initiated by the Canadian Intellectual Property Office...more

Husch Blackwell LLP

Major Changes Ahead: New USPTO Trademark Filing Fees and Procedures

Husch Blackwell LLP on

Significant changes are coming to the United States Patent and Trademark Office (USPTO) on Saturday, January 18 with regards to trademark filing fees and procedures. These changes aim to improve the trademark application...more

Hogan Lovells

Overview on the functioning of the trademark system in Europe - Pharma Marks Insights series: Part II

Hogan Lovells on

As we have seen in the first article of our series, trademarks play an important role in the protection of your pharmaceutical and life science products and can add significant value. But to understand the benefits but also...more

BakerHostetler

USPTO Trademark Fee Increases May Help Reshape Examining Efficiency

BakerHostetler on

The U.S. Patent and Trademark Office’s (USPTO) biannual fee increase is now in effect. The USPTO anticipates the fee increases and the addition of new fees will significantly streamline the application process in addition to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® – September 2024: Expanding Horizons: Potential Expansion of IP Rights for High-THC Cannabis Varieties

In the United States, the intellectual property rights system for plants is multifaceted, encompassing utility patents, plant patents, trademarks, and Plant Variety Protection (PVP) Certificates. These mechanisms offer...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® – June 2024: Home Is Where the Domicile Address Requirement Is

In 2019, the United States Patent and Trademark Office (USPTO) introduced Trademark Rule 2.189 (37 CFR § 2.189) as part of its larger efforts to combat fraudulent filings and unauthorized practices. Under the rule, all...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - October 2023

Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - August 2023: Keeping It Real: The USPTO Implements New Trademark Applicant Address Verification Process

As part of its ongoing efforts to improve and maintain the accuracy of the Trademark Register, and combat trademark scams and bot-filed trademark applications, the USPTO has revised examination procedures for reviewing...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - August 2023

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

Bodman

Patent & Trademark Office to Begin Issuing Electronic Patent Grants

Bodman on

The U.S. Patent & Trademark Office (USPTO) announced that it will no longer issue patents in a printed “ribbon copy” form as of April 18, 2023. Instead, patents will now only be issued electronically in a digital form. This...more

Faegre Drinker Biddle & Reath LLP

The Ohio State University’s Federal Trademark Registration for “THE” – Can They Do That?

Graduates of The Ohio State University (“Ohio State”) are familiar with fans and supporters (and sometimes, Michigan fans) placing an emphasis on the “THE” when saying the school’s name. But the United States Patent and...more

Butler Snow LLP

Protecting Your Intellectual Property: Part II

Butler Snow LLP on

In our previous post, we discussed the importance of front-end intellectual property (IP) protection and seeking legal counsel to help build out a strategy to best navigate the intricate IP landscape. We delved into the...more

Hogan Lovells

Brexit - Changes to Address for Service Rules in the UK from 1 January 2021

Hogan Lovells on

An address for service (“AFS”) is required in order to correspond with the UKIPO and for the purposes of proceedings relating to IP rights in the UK. The AFS rules currently require that address to be in the UK, Channel...more

Seyfarth Shaw LLP

USPTO Updates Examination Guide for Proof of Trademark Use

Seyfarth Shaw LLP on

As we reported in November 2019, the USPTO has been making significant revisions to its rules to combat an influx of fraudulent trademark filings. Some of the biggest rule changes last year were to specimen requirements. ...more

Hogan Lovells

USPTO Alert – New fast track for certain COVID-19 trademark applications

Hogan Lovells on

The United States Patent & Trademark Office (“USPTO”) announces a new prioritized trademark examination program for certain trademark applications covering COVID-19 related products and services. ...more

Carlton Fields

You’ve Got Mail: USPTO Imposes New Applicant Email Requirement for Trademark Submissions

Carlton Fields on

Last summer, the U.S. Patent and Trademark Office (USPTO) approved a controversial rule regarding email addresses. In the past, when an applicant was represented by counsel, the attorney would provide an email address to be...more

Morgan Lewis

The Practical Impact of USPTO Rule Changes on Your Trademark Filings

Morgan Lewis on

The US Patent and Trademark Office (USPTO) confirmed that new rules relating to email addresses required for trademark applicants and registrants and new specimens requirements will go into effect this week. A new examination...more

Ladas & Parry LLP

Ladas & Parry Partners Object To New USPTO Guidelines Requiring Mandatory Disclosure Of Trademark Applicants’ Email Addresses

Ladas & Parry LLP on

The USPTO released long awaited guidelines on February 6, 2020 relating to a new requirement that trademark applicants publicly list their email addresses in each U.S. trademark application or registration....more

Hogan Lovells

China: implementing regulations for new Trademark Law published - Weapons against bad faith filings upgraded, but uncertainty...

Hogan Lovells on

On 11 October 2019, China's State Administration for Market Regulation ("SAMR") published the Regulations on the Registration of Trademarks, which will become effective on 1 December 2019. The Regulations are implementing...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

Lowndes

New Rule Requires U.S. Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants

Lowndes on

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

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

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