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Third-Party Trademarks

Bricker Graydon LLP

What You Need to Know about Business Use of Third-Party Photos - Part 1

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You know it, instinctively if not empirically – there are many good reasons to use photos in your ads and print pieces and on your web pages – photos capture attention better than bold headlines and they add visual interest....more

Jones Day

Brand Protection and Enforcement Under the DSA: Opportunities and Challenges

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The Digital Services Act ("DSA"), which entered into force for all intermediary services and online platforms in February 2024, aims to modernize and harmonize the regulation of third-party content across the EU. It notably...more

Ropes & Gray LLP

Imitation Game: Legal Considerations with Dupes-Based Business Models

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Lower-cost products that are inspired by luxury or well-known branded products —often called “dupes”—have been a fixture in the consumer marketplace for decades. From store-brand pain relievers sold in similar packaging next...more

Lerman Senter PLLC

Broadcasts and Promotions Related to the MLB Postseason and World Series - 2024

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The Major League Baseball (MLB) Postseason is underway, and the World Series will start on October 25, 2024. Your radio or television station may want to be involved in promotions that are tied to the baseball...more

Farella Braun + Martel LLP

Careful What You Wish For: Demand Letters Can Result in Unintended Litigation

When seeing similar trademarks or trade dress employed by a third party, companies often immediately react with a demand letter requiring the target to “immediately cease and desist” its use of the IP and threatening...more

Farella Braun + Martel LLP

Certification Marks and Fame

Trademark owners have the right to stop third parties from using marks that could cause a likelihood of consumer confusion. Third-party use of a trademark that is the same or similar to the owner's trademark for goods related...more

Schwabe, Williamson & Wyatt PC

AI rise increases importance of IP audits

Having a clear view of your company’s patents, trademarks, copyrights and ‎trade secrets is a first step to protecting your intellectual property and ‎building a process to maximize new IP value.‎ It’s well known that a...more

Tarter Krinsky & Drogin LLP

Search first!

There once was a company named Zotz, Which created toys for tots, The newest toy, named Ketter™, Recalled after a cease and desist letter, Oh my, no trademark search, CEO Zotz? First published in Inside magazine,...more

McDermott Will & Emery

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

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

MarkIt to Market® - August 2023: Happy to Wait! New Rules Allow for Suspension of Trademark Review Cases in China

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

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

MarkIt to Market® - August 2023: How to Lose a Mark in 3 Ways – Part 3: Naked Licensing

Trademarks help brand owners build and communicate their brand’s reputation and value with the relevant public. Once that valuable goodwill is linked between a mark and the owner’s products and services, trademark owners can...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

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

MarkIt to Market® - July 2023: INFORM ACT: What Brands Need to Know

In today’s digital world, online marketplaces have become hotspots for organized crime, particularly relating to the sale of stolen and counterfeit goods by third-party sellers. These fraudulent sales mislead consumers, cost...more

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

MarkIt to Market® - July 2023

Thank you for reading the July 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we continue our three-part series that closely examines ways to lose trademark rights with a discussion of genericide. We...more

Holland & Knight LLP

Owner of Bored Ape NFTs Fends Off Challenges from Conceptual Artists

Holland & Knight LLP on

Yuga Labs Inc. (Yuga) – the creator and marketer of the well-known "Bored Ape Yacht Club" collection of nonfungible tokens (NFTs), referred to as Yuga Bored Ape images – filed a complaint in July 2022 against conceptual...more

Faegre Drinker Biddle & Reath LLP

The Prior Registration Puzzle: Overcoming Registration Refusals Based on Intervening Third-Party Marks

It’s a frustrating situation, to be sure, but fortunately you’re not without options. One of those options is arguing to the Trademark Office that your client’s Anchor Registration should entitle it to registration of its...more

Mintz Edge

Do You Have the Rights? How to Maintain Investor Confidence When Using Third-party Intellectual Property

Mintz Edge on

Imagine the following scenario: You, as the founder of a business, have spent the past three years building your company. You have been bootstrapping until now, but the company is at a crossroads and in order to grow the...more

DarrowEverett LLP

Naked Licensing: That’s Your Name, So Don’t Wear It Out

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From multinational corporations to franchises to non-profits, there is a lot that goes into building your brand and a positive brand association among consumers. As a company looks to growth strategies, it will consider...more

Weintraub Tobin

MSCHF Looks to the 2nd Circuit to Get Out of Trouble with Vans

Weintraub Tobin on

In May, skater shoe company, Vans, persuaded a district court judge in NY to halt the pre-sale of a pair of shoes called Wavy Baby, the result of a collaboration of rapper Tyga and MSCHF, a Brooklyn-based design studio that...more

Faegre Drinker Biddle & Reath LLP

Ho, Ho, Ho … Hold On … Did Legal Approve That?

The holidays are upon us — and so too are holiday advertising campaigns. With an unusual holiday season last year, many retailers are gearing up for what they hope to be a robust holiday season. Even with concerns over supply...more

ArentFox Schiff

Second Circuit Keeps a Close “Watch” on IP Owners Pursuing the Secondary Market 

ArentFox Schiff on

The United States Court of Appeals for the Second Circuit recently affirmed a decision by the District Court for the Southern District of New York, finding that refurbished antique watches retaining an original manufacturer’s...more

Weintraub Tobin

The Rogers Test Gets A Remake In Colorado

Weintraub Tobin on

In the 9th Circuit (as well as the 2nd, 5th, 6th, and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e., use of a brand within a movie, TV series, video game,...more

Faegre Drinker Biddle & Reath LLP

Someone Else’s Trademark in Your Way? Just Buy It.

Sometimes the quickest way out of something is straight through it. This advice holds true in life, and in trademarks. Those who deal with trademarks are familiar with obstacles to registration based on similar...more

Cole Schotz

When To File A Trademark Application

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One of the questions we hear the most from current and prospective clients is whether they should be filing a federal trademark application to protect a certain trademark. This question is often followed up with the question...more

Gibney Anthony & Flaherty, LLP

INFORM Consumers Act Introduced to Target Online Counterfeiters

The INFORM (Integrity, Notification, and Fairness in Online Retail Marketplaces) Consumers Act was introduced on the Senate floor on March 23, 2021. This bill would require greater accountability and transparency from the...more

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