News & Analysis as of

Trademark Infringement Foreign Trademark

Farella Braun + Martel LLP

In Limited Cases, Foreign Trademarks Can Affect U.S. Registration Rights

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

Dorsey & Whitney LLP

From the Gold Coast to the Golden State: A Trademark Battle Over Cozy Boots

Dorsey & Whitney LLP on

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

Fish & Richardson

USPTO Kicks “Hijacker” of Foreign Trademark Out the Door

Fish & Richardson on

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

Smart & Biggar

[Webinar] Developing a sound global trademark filing strategy: key considerations and best practices - November 21st, 12:00 pm -...

Smart & Biggar on

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

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

Seyfarth Shaw LLP

Courts and Brand Owners Struggling With SCOTUS Decision Limiting Ability to Police Against Foreign Trademark Infringement

Seyfarth Shaw LLP on

The U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the...more

Buckingham, Doolittle & Burroughs, LLC

U.S. Businesses Need Foreign Trademark Registrations in the Wake of Abitron

U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more

Jenner & Block

Supreme Court Hears Oral Argument over Extraterritorial Reach of U.S. Trademark Law

Jenner & Block on

On March 21, the United States Supreme Court heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc. over whether the infringement provisions of the United States Trademark Act impose liability for...more

Fenwick & West LLP

The Long Arm of the Lanham Act? Supreme Court to Consider Foreign Reach of US Law

Fenwick & West LLP on

Circuit courts have struggled for decades to adopt a uniform approach for when to apply the Lanham Act extraterritorially. That struggle may end soon. In the Abitron Austria case, the Supreme Court is set to clarify the scope...more

ArentFox Schiff

Be Prepared: New Trademark Law in Myanmar Will Eliminate Cautionary Notices

ArentFox Schiff on

Under Myanmar’s new law, any existing Cautionary Notices must be refiled as trademark applications within the first few months of 2020 or risk losing their priority....more

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

Global Patent Prosecution Newsletter - September 2018: Third Party Submissions in the U.S.: What You Need to Know

The America Invents Act provides an expanded process for a third party to submit prior art to the examiner concerning any U.S. patent application. The new process is aimed to encourage the public to submit relevant art as a...more

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