Tag: Lanham Act

Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and … Continue Reading

Matal v. Tam – Disparaging Trademarks are Registrable

It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world.  The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world. Morality Refusals Many jurisdictions have prohibitions against registration of marks … Continue Reading

U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits.  These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of … Continue Reading

SMOKE SIGNALS FROM SPECIMEN OF USE SUPPORT REGISTRATION REFUSAL FOR “HERB” SALES DESCRIBED IN APPLICATION

In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.”  Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of … Continue Reading

What Judith Grubner is Saying About the Next Big Thing in IP Law for 2016

ILN IP Insider is starting a new series – we’re featuring interviews with ILN IP lawyers, asking them questions on the state of IP Law in 2016. These will typically be one to two-question interviews with our practitioners from around the world. Our first interview is with Arnstein & Lehr lawyer, Judith Grubner: What’s the … Continue Reading

U.S. Federal Circuit Appeals Court sets standards for determining bona fide intent to use mark in commerce

A recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application … Continue Reading
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