Archives: Trademarks

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Precedential TTAB Ruling Vaporizes Marijuana-Related Trademark Registrations

After the Patent and Trademark Office’s (PTO) youthful experimentation with allowing trademark registrations for “processed plant matter for medicinal purposes, namely medical marijuana” in 2010, the Trademark Trial and Appeal Board (TTAB) has now made it clear that neither it nor the PTO is going to allow registration of cannabis-related trade or service marks, at least … Continue Reading

U.S. Trademark Office Fees Go Up, Effective January 14, 2017

Back in June, we shared that the U.S. Trademark Office announced a fee increase and it was intended to go into effect October 1, 2016. Well, the U.S. Trademark Office fees did not go up on October 1, 2016, but will go up (as previously announced) on January 14, 2017. All those filing with the U.S. Trademark … Continue Reading

Free Speech and Functionality

The Founding Fathers ensconced intellectual property rights into the fabric of the original Constitution. Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and … Continue Reading

Deadwood on the U.S. Trademark Register: Random Audit Pilot Program Proposed to be Made Permanent

The U.S. Patent and Trademark Office (USPTO) has long been concerned about so called “deadwood” on its register — registrations granted where the registration is not being used or not used on all goods/services identified in the registration, but the registration’s existence keeps others from obtaining registration protection for similar goods/services. This is particularly an … Continue Reading

U.S. Patent and Trademark Office Announces an Adjustment to Trademark Fees taking effect October 1, 2016

On May 27, 2016, the U.S. Patent and Trademark Office (USPTO) announced an adjustment to trademark fees that will take effect October 1, 2016 (the beginning of fiscal year 2017 for the U.S. Government). 81 Fed. Reg. 33619 (May 27, 2016). The good news for electronic filers using the USPTO’s TEAS and ESTTA filing systems, the fees are … Continue Reading

The Proposed TTAB Rules Package – What You Need to Know

On April 4, 2016, the U.S. Trademark Office announced the long-awaited proposed Trademark Trial and Appeal Board (TTAB) rule changes. The TTAB hears appeals from denial of trademark registrations (ex parte appeals) and holds trials between parties involving oppositions of pending trademark applications, cancellations of registered trademark, applications for concurrent use of a registered trademark, and interference proceedings … Continue Reading

Government Concedes that Recent Federal Circuit Ruling on Registration of “Disparaging” Trademarks Applies to “Scandalous and Immoral” Marks As Well

Here’s an update to my comment on In re Tam published a couple of weeks ago. In a letter to a clerk for the Court of Appeals for the Federal Circuit in the pending Trademark Office appellate case In re Brunetti (CAFC No. 2015-1109), the U.S. Department of Justice concedes that the CAFC’s recent decision in In re Tam forecloses enforcement … Continue Reading

Proposed European Trademark Rules Change: Eliminating the Kitchen Sink Fee Structure

After several years of negotiation, a provisional agreement concerning a number of changes to European Community trademark practice was reached by the European Commission, Parliament, and Council in April 2015. One key change is a proposal to do away with the current application and renewal fee structure. Currently, the application filing fee includes three trademark … Continue Reading

To Tack or Not To Tack, that is the (Trademark) Question

A month ago, the U.S. Supreme Court came down with its first pure trademark matter opinion in many years (false advertising cases are in a separate category for the purposes of this article). The trademark bar was all a twitter—literally (tweeting through Twitter) and figuratively. But for the average consumer, and even sophisticated business executive, … Continue Reading

Supreme Court Hears Two Important Trademark Cases This Week

This week, the U.S. Supreme Court heard oral arguments on two important trademark cases: Hana Financial, Inc. v. Hana Bank and B&B Hardware v. Hargis Industries. In Hana, the Court considers the “tacking” doctrine, whereby mark owners attempt to “tack” the priority of an earlier-used mark onto a later-adopted mark in order to extend back in time the priority … Continue Reading

Trademark Purchasers in Bankruptcy and Existing Licensees: Buyer Beware!

Under Crumbs Bake Shop, Inc., (“Crumbs“), the warning of caveat emptor applies to purchasers of trademarks pursuant to a sale under 11 U.S.C. Sections 363(b) and (f), where the trademarks are subject to existing licensing agreements. The Chapter 11 debtors obtained an order approving the sale of substantially all of their assets, including trademarks (but specifically excluding trademark … Continue Reading

Portland-Owned Gilt Boutique Files Lawsuit Against Gilt Groupe, Inc.

Press Release-10.13.14 PORTLAND, Ore. – Miller Nash LLP announced today that it has filed a trademark-infringement lawsuit against online retailer Gilt Groupe, Inc., a $500 million company based in New York. Miller Nash filed the suit on behalf of northwest Portland boutique Gilt and its founder, Paula Bixel. Gilt, which sells local, sustainable and unique … Continue Reading

Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Competition

In my previous posts (September 25: Use, September 29: Costs & Complexities), we discussed how use and cost considerations affect the development of a global branding strategy. Since there is no ‘bar date’ for applying for a trademark, a sensible approach is to apply only in the country (or countries) where your mark is being used, and … Continue Reading

Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Costs and Complexities

In my September 25th post (Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Use), we discussed the use requirements for filing at the local, national, and international level. While use is perhaps the biggest factor in determining where you can legally seek trademark protection, cost is certainty the … Continue Reading

Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Use

You’ve done the hard work in selecting an incredible brand name that will promote your business and bring it success (and hopefully, you’ve also cleared it to make sure no one else beat you to that great name). Now, it’s time to protect your investment by registering for trademark protection, but where to begin? Trademarks … Continue Reading

Lessons from INTA: For Brands, Think Globally

I was in Hong Kong attending the International Trademark Association (INTA) annual meeting a couple of weeks ago. This was the first annual meeting held in Asia. And the new INTA executive director made it clear that INTA is taking seriously the “international” aspect, with every 3rd year meeting being held outside of North America. … Continue Reading

Do You Have a Well-Established Brand? What Are You Doing to Prevent Your Trademark from Becoming Generic and Unenforceable?

Most people know Tiffany and Company (or “Tiffany & Co.”) and associate that company and the word “Tiffany” with high-end jewelry. But a recent ruling out of the Southern District of New York indicates that “Tiffany” as a term to describe engagement ring settings may have become generic (and therefore no longer a protectable trademark … Continue Reading

If You Want to Abandon a Trademark, Mean It!

It is a provocative title. Typically, brand (trademark) owners would not want to abandon their trademarks. Why would they unless there is a really good reason to voluntarily abandon a mark (such as an action taken to settle a dispute)? But what about brand name changes where the owner is still using the historic brand? … Continue Reading

First Use in Illegal Commerce? State-Sanctioned Marijuana Sales Raise Difficult Trademark Issues

Colorado announced this week that it earned about $3.5 million in taxes and fees from its legalized-marijuana industry in its first month of sales, which translates into about $14 million in gross sales revenue in January. Retail sales of state-sanctioned marijuana are set to start in Washington later this year. And of course, cannabis consumers will want … Continue Reading

Ninth Circuit: There is No Independent Basis for Cancelling a Registered Trademark Apart from an Ongoing Action

Section 37 of the Lanham Action provides that cancellation is available “in any action involving a registered mark.” Many attorneys have interpreted that section to mean that cancellation of a registered mark can be an independent basis for claim. But the Ninth Circuit Court of Appeals ruled last week that is not the correct interpretation … Continue Reading

Developing a Trademark Brand: Three Dangers to Avoid

When starting a business or launching a new product, one of the first critical decisions is adopting a name. Often, this name is then registered to protect its intellectual property rights (its branding) and prevent copying. Sometimes, however, what seems like a great business name turns out to be a poor choice for a trademark, … Continue Reading

Does the Real 12th Man Live in Texas?

Here in Seattle, “12th Man” pride has exploded in the last month, capped by the Seattle Seahawks’ dominating win over the Denver Broncos in the Super Bowl. But does flying the “12th Man” flag actually signify support for the Seahawks? According to the U.S. Patent and Trademark Office, it does not. Instead, that trademark has … Continue Reading