News & Analysis as of

Trademark Ownership Lanham Act

DarrowEverett LLP

Trademark Rights Explained: Common Law vs. Federal Registration

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Whether a business is launching a new product or rebranding an existing company, selecting a name, logo, or slogan is a crucial decision. Trademarks are powerful tools that identify the source of goods or services and protect...more

Farella Braun + Martel LLP

Two's A Crowd: The Pitfalls of Trademark Co-Ownership

Often, individuals joining together on a project believe they should each own the name they choose. Indeed, it only seems fair. But having multiple owners of a single trademark is a recipe for trouble, and the partners would...more

Quarles & Brady LLP

Trademark Fee Changes at the USPTO: Increased Costs for New Application Filing Fees

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We previously reported that on January 18, 2025, the USPTO implemented its new fee schedule, setting certain new fees and raising some existing ones. Now that the fees have been in place for a while, this Client Alert is to...more

Weintraub Tobin

(Podcast) The Briefing: Trademark Smoked: The Fall of General Cigar’s COHIBA Registration

Weintraub Tobin on

After nearly 30 years of litigation, a federal court has canceled General Cigar’s U.S. trademarks for COHIBA cigars — all because of a little-known treaty and a Cuban brand once favored by Fidel Castro. What does this mean...more

Weintraub Tobin

The Briefing: Trademark Smoked: The Fall of General Cigar’s COHIBA Registration

Weintraub Tobin on

After nearly 30 years of litigation, a federal court has canceled General Cigar’s U.S. trademarks for COHIBA cigars — all because of a little-known treaty and a Cuban brand once favored by Fidel Castro. What does this mean...more

Hogan Lovells

Legal 500 United States: Trademark Disputes Q&A

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To represent a client before Court in respect of a potential trademark infringement matter, do you require a Power of Attorney – and if so, what are the execution formalities required by your courts? No. A specific power of...more

McGlinchey Stafford

The #1 Reason to Register Your Trademark

McGlinchey Stafford on

There are many valuable benefits of registering one’s trademark with the United States Patent and Trademark Office (USPTO). A cursory Internet search will yield dozens of articles on the “Top 10” or “Top 5” reasons to...more

Fish & Richardson

Trademark Owners May Play Only Zone Defense at the TTAB

Fish & Richardson on

In a precedential decision invoking the “zone of natural expansion” doctrine, on March 19, 2025, the Federal Circuit upheld a decision by the U.S. Trademark Trial and Appeal Board (TTAB) cancelling in part registrations for...more

Offit Kurman

Trademark Registration Misconceptions: What Brand Owners Should Know

Offit Kurman on

Many business owners view trademark registration as a smart investment—and they’re right. A federal registration gives you valuable legal advantages, including nationwide priority, a presumption of ownership, and stronger...more

Willcox & Savage

Trump Too Small: The Lanham Act Names Clause

Willcox & Savage on

To guide potential trademark owners and to foster strong protection for trademarks under U.S. law, the Lanham Act; 15 U.S.C. §1052, defines the types of trademarks and service which marks can be registered by whittling away...more

Seyfarth Shaw LLP

Bully for You: Cannabis Company Fails to Adequately Plead “Trademark Bullying” Defense Says the TTAB

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In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights. Door Dash, Inc....more

Kohrman Jackson & Krantz LLP

The Perils of Not Awarding Profits in Lanham Act Cases Against Counterfeiters

The wild west of the e-commerce landscape keeps many trademark owners up at night trying to protect their brand. In the ever-expanding online marketplace, counterfeiters pop-up daily trying to make a quick buck passing off...more

Seyfarth Shaw LLP

The Legal Dance Off Over the “MJ” Trademark

Seyfarth Shaw LLP on

Before we start the show, the casts of characters may drive you Off the Wall, so here’s a little primer to help you: Triumph International, Inc. (“Triumph”) is a merchandise licensing company for the estate of Michael...more

Holland & Knight LLP

Toss It in the Trash: Uptick in Scams Relating to Trademark Rights

Holland & Knight LLP on

Holland & Knight's Intellectual Property Group has seen an escalation in emails to clients in which the sender applies the scare tactic of "react quickly or lose your rights to your trademark." These are very often scams....more

Ladas & Parry LLP

False Declaration of Incontestability Not Enough to Cancel US Trademark Registration

Ladas & Parry LLP on

Great Concepts has owned Registration No. 2929764 for DANTANNA’S, in association with “steak and seafood restaurant[s]”, since March 2005. In 2006 Chutter Inc’s predecessor-in-interest, Dan Tana, petitioned to cancel the mark...more

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

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

McDermott Will & Schulte

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: 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: 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

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

McDermott Will & Schulte

Supreme Court Limits the Lanham Act’s Extraterritorial Reach

In a decision that may make it more difficult for brand owners to enforce their marks against infringers located outside of the United States, the Supreme Court of the United States vacated the judgment of the US Court of...more

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

MarkIt to Market® - June 2023: How to Lose a Mark in 3 Ways – Part 1

There are plenty of fish in the sea when it comes to trademarks: from word marks to service marks; from symbols to surnames; from product packaging to product design. When the time is right, and you feel like you have found...more

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

MarkIt to Market® - June 2023

Thank you for reading the June 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we begin a three-part series that closely examines ways to lose trademark rights; share an article that examines the...more

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

Supreme Court Vacates and Remands 10th Circuit's Decision in "Abitron"

The US Supreme Court ruled today in the closely watched Abitron Austria GmbH v. Hetronic International, Inc. case, which considered whether a party could recover in US courts for trademark infringement that occurred outside...more

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